American Automobile Association, Inc.v.Diamond Tours, Inc.

Trademark Trial and Appeal Board

Dec 29, 1997

No. 92022491 (T.T.A.B. Dec. 29, 1997)

Oral Hearing: Paper No. 44
May 7, 1997 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 29, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
American Automobile Association, Inc.
v.
Diamond Tours, Inc.
_____
Cancellation No. 22,491
_____
Lawrence E. Laubscher, Jr. of Laubscher & Laubscher for American
Automobile Association, Inc.
John M. Rannells and Steven L. Baker of Baker & Friedman for
Diamond Tours, Inc.
_____
Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The American Automobile Association, Inc. has petitioned
to cancel the registration owned by Diamond Tours, Inc. for the
service mark "DIAMOND TOURS, INC." for "arranging travel tours and
providing transportation therefor".1 As grounds for cancellation,

1 Reg. No. 1,611,579, issued on August 28, 1990 from an application
filed on October 23, 1989, which sets forth a date of first use
anywhere of December 9, 1987 and a date of first use in commerce of
January 7, 1988; affidavit §8 filed. The language "TOURS, INC." is
disclaimed.
Cancellation No. 22,491
2
petitioner (hereinafter sometimes referred to as "AAA") alleges
that it is the owner of registrations for the following marks:
(i) the certification mark "FIVE DIAMOND
AWARD," which is registered for "hotel[s],
motels, resorts and restaurants";2
(ii) the certification mark "FIVE
DIAMOND AWARD" and design, which is
registered, as reproduced below,
for "hotels, motels, resorts and
restaurants";3
(iii) the certification mark illustrated
below,
which is registered for "hotels, motels, resorts, and
restaurants";4 and

2 Reg. No. 1,577,121, issued on January 9, 1990 from an application
filed on December 20, 1988, which sets forth dates of first use of
1977; combined affidavit §§8 and 15. The word "AWARD" is disclaimed.
3 Reg. No. 1,579,622, issued on January 23, 1990 from an application
filed on December 20, 1988, which sets forth dates of first use of
1977; combined affidavit §§8 and 15. The word "AWARD" is disclaimed.
4 Reg. No. 1,769,025, issued on May 4, 1993 from an application filed
on August 19, 1992, which sets forth dates of first use of December
1986.
Cancellation No. 22,491
3
(iv) the service mark depicted below,
which is registered for "hotels, motels,
resorts, and restaurants";5
that, for many years, petitioner has published an informational
guide which contains listings of properties in geographically
limited areas which are rated by diamond symbols; that petitioner
"promotes its diamond ratings through its travel agencies to its
members"; that "many properties advertise their diamond rating
from Petitioner to the general public to such an extent that the
diamond ratings are synonymous with Petitioner"; that "[t]he
diamond marks used by Petitioner have acquired substantial
goodwill, distinctiveness, and secondary meaning in the travel and
hotel accommodations field"; that the diamond ratings, which were
first used by petitioner in 1977, "serve to identify Petitioner as
the source of origin for travel related services, including
arranging tours and transportation"; that the travel tour and
transportation services provided by respondent are related to the
certification and rating services with which petitioner uses its
diamond marks; that the respective services of the parties are
commonly used by the same class of purchasers; and that "use ...
of Registrant’s mark for its travel tour and transportation
services is likely to confuse and deceive the trade and purchasing

5 Reg. No. 1,772,066, issued on May 18, 1993 from an application filed
on August 19, 1992, which sets forth dates of first use of February
1977.
Cancellation No. 22,491
4
public into believing that Registrant’s services originate with or
are otherwise authorized, licensed, or sponsored by Petitioner."
Respondent, in its answer, has denied the salient
allegations of the petition to cancel.
The record includes the pleadings and the file of the
involved registration. Petitioner, as its case-in-chief, has
submitted the testimony, with exhibits, of its managing director
and corporate counsel, James G. Brehm, and has filed a notice of
reliance covering various official records of the Patent and
Trademark Office ("PTO") and respondent’s answers to certain of
petitioner’s interrogatories.6 Respondent, as its case-in-chief,

6 Respondent, in its brief, has moved to strike portions of
petitioner’s evidence. In particular, respondent requests that we
"strike/disregard" those of petitioner’s registrations and/or
applications for its marks for which petitioner assertedly lacks
priority, claiming that such evidence lacks any relevance to this
proceeding. (Incredibly, we further note, the evidence which
respondent seeks to strike includes some of the same evidence which it
subsequently introduced, by a notice of reliance, as an admission
against interest by petitioner.) While, of course, petitioner cannot
fully succeed on its claim of priority and likelihood of confusion
absent proof of priority for each of the marks for which it asserts
that contemporaneous use of respondent’s mark is likely to cause
confusion, we will not strike or disregard evidence which, as here,
has been properly introduced and is relevant to one or more issues in
this case, such as, whether petitioner has priority for its marks and
their natural zone of expansion.
Respondent also moves, on the basis of the hearsay objection it
interposed at trial, that we "strike and/or disregard ... Mr. Brehm’s
testimony regarding [petitioner’s] alleged use of the diamond rating
system prior to 1992," the year in which Mr. Brehm joined petitioner
and assumed his present duties. While respondent is indeed correct
that Mr. Brehm testified, on cross-examination, that the sole basis
for his knowledge of petitioner’s continuous use of its diamond rating
system since 1977 was "conversations I’ve had with persons in our
marketing and inspections departments who have been employed by AAA
since 1977 or prior thereto" (Brehm dep. at 56), it is plain from the
transcript that his knowledge was also based upon information
contained in published articles (in particular, petitioner’s exhibits
3, 4 and 10) which were extracted from petitioner’s archived business
records. Inasmuch as such information is considered to fall within
the hearsay exception provided by Fed. R. Evid. 803(6) of records kept
Cancellation No. 22,491
5
has furnished the testimony, with exhibits, of its president and
sole shareholder, Thomas Ferraro, and has submitted several
notices of reliance relating to a variety of PTO official records
and petitioner’s responses to certain of respondent’s discovery
requests.7 However, after completion (except for the submission
of a supplemental notice of reliance) of respondent’s testimony
period, petitioner withdrew as an exhibit the copy of its pleaded
registration for its five diamond design service mark, choosing

in the course of regularly conducted business activities, we decline
to strike the testimony of Mr. Brehm based thereon.
Accordingly, respondent’s motion to strike portions of
petitioner’s evidence is denied.
7 Petitioner, in its main brief, has reiterated the objection it made
at trial that respondent is estopped from introducing the documents
which constitute exhibits 1 through 37 to Mr. Ferraro’s deposition due
to their late production. Specifically, petitioner asserts that
respondent is precluded from introducing such evidence inasmuch as it
falls within the subject matter covered by certain of petitioner’s
document production requests but was "not produced until the night
before and the day of the Ferraro deposition, despite the attempts of
Petitioner’s counsel to work out an agreement regarding ...
production". However, as petitioner acknowledges in its main brief
and as respondent points out in its brief, respondent not only raised
timely objections to certain of the document production requests on
the grounds that they were overly broad and unduly burdensome, but
also asserted a blanket objection to all of such requests on the basis
that they required respondent to produce documents at the offices of
petitioner’s counsel. Respondent, without waiver of its objections,
further indicated in response, however, that representative documents
responsive to petitioner’s document production requests would be
produced and that since, "[f]or the most part, those documents are
kept at the offices of Registrant," they would be available for
inspection and copying "where kept upon proper notice at a mutually
convenient date and time." We find that respondent’s objections are
well taken and note, in particular, that respondent’s sole obligation
under Trademark Rule 2.120(d)(2) was to produce the requested
documents "at the place where the documents ... are usually kept,"
unless the parties had agreed otherwise or the Board, upon motion, had
ordered. Although petitioner’s attorney, in a subsequent letter to
respondent’s counsel, suggested that if the requested documents were
not voluminous, copies thereof should simply be provided by the latter
to the former, there is no indication that respondent’s counsel agreed
thereto and the Board has not ordered such production pursuant to a
motion to compel. Consequently, petitioner’s objection to the
admissibility of the exhibits to Mr. Ferraro’s deposition is overruled
and we have given consideration to such exhibits.
Cancellation No. 22,491
6
to rely solely upon its common law rights in the mark.8 Briefs
were filed9 and an oral hearing, attended by counsel for the
parties, was held.
Priority is not in issue as to petitioner’s pleaded
"FIVE DIAMOND AWARD" and "FIVE DIAMOND AWARD" and design
certification marks since, in addition to petitioner’s
establishing by the testimony of its witness that its
registrations therefor are subsisting and owned by petitioner,
the record shows that the filing dates of the applications which
matured into such registrations are earlier than the filing date
of the application which resulted in respondent’s involved
registration for its "DIAMOND TOURS, INC." mark. Petitioner, as
respondent concedes in its brief, therefore has priority vis-à-
vis such marks. See, e.g., Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423, 1428-29 (TTAB 1993) at
n. 13; and American Standard Inc. v. AQM Corp., 208 USPQ 840,
841-42 (TTAB 1980). Priority is in issue, however, with respect
to some of the other marks upon which petitioner relies and, as
to those marks for which petitioner has demonstrated priority,
there is the issue of whether respondent's "DIAMOND TOURS, INC."
mark, when used in connection with its services of arranging

8 Petitioner, in order not to delay this proceeding, elected to take
such action after it discovered that the PTO had mistakenly issued
Reg. No. 1,772,066 as a service mark registration when, in fact,
petitioner had applied to register the subject five diamond design as
a certification mark.
9 Inasmuch as good cause therefor has been shown, the uncontested
request filed by respondent for a third extension of time to file its
brief is approved. Trademark Rule 2.127(a).
Cancellation No. 22,491
7
travel tours and providing transportation therefor, is likely to
cause confusion with one or more of such marks of petitioner.
According to the record, petitioner is a Connecticut
not-for-profit corporation and, as such, has no stockholders.
Instead, petitioner is composed of its member automobile clubs,
of which there are approximately 115 covering the United States
and Canada. All but three of the affiliated automobile clubs are
independently owned corporations; the remaining three clubs are
wholly owned by petitioner and are referred to by it as its
"divisions". The clubs and divisions have their own individual
members. Collectively, membership therein totals approximately
35 million in the United States.
Petitioner’s certificate of incorporation and bylaws
provide that its affiliated clubs and divisions may use various
marks which it owns in accordance with the rules and regulations
governing their use which have been promulgated by petitioner’s
board of directors. Among other things, such provisions direct
member clubs to report any unauthorized use of petitioner’s marks
to the office of its general counsel, which is headed by Mr.
Brehm and is responsible for policing petitioner’s marks and
taking appropriate action to stop unauthorized use thereof.
In early 1977, petitioner adopted and has continuously
used a rating system, consisting of from one to five diamond
symbols, for certifying that hotels, motels, resorts and
restaurants which serve the traveling public meet certain
standards of cleanliness, staff professionalism, promptness,
courtesy, food quality and reservation capabilities. Mr. Brehm,
Cancellation No. 22,491
8
testifying from his knowledge of petitioner’s business activities
and archived records, stated in particular that:
The diamond rating system is a system
AAA uses to evaluate hotels, motels, and
other accommodations, as well as restaurants.
AAA employs several dozen field inspectors
who go throughout the country each year,
inspect accommodations and restaurants,
determine whether they meet AAA’s minimum
criteria to be approved by AAA and if so,
establish a rating for that accommodation or
restaurant.
Since 1977, the rating system we have
used is a system of one to five diamonds.
One diamond being the lowest rating, five
diamonds being the highest. We’ve used that
five-diamond rating system continuously since
1977.
(Brehm dep. at 14-15.)
Previously, petitioner had employed a simple "good,
fine, excellent type of rating system." (Id. at 16.) Diamonds
were selected as the symbols for its revised rating system since,
not only was 1977 the 75th or diamond anniversary of petitioner’s
founding in 1902, but petitioner wanted "the notion of quality
that is associated with diamonds" to attach to the facilities
which passed its certification inspections. (Id. at 15.) As to
the actual generation of the diamond ratings assigned to specific
properties, Mr. Brehm noted that:
It is a cooperative effort between [AAA]
headquarters and the clubs, that is, in most
states the inspections are done by field
inspectors employed by headquarters, the
national organization. There are a few
states, notably California, in which field
inspectors employed by the local club do the
inspections. But regardless of whether the
inspector is employed by the national
organization or by the club, they use the
Cancellation No. 22,491
9
same guidelines and criteria in establishing
the ratings.
(Id. at 16.)
The implementation of its diamond rating system was
first publicized by petitioner in the March 1977 issue of it’s
AAA News Review, a publication which petitioner distributed to
its member clubs, and in the first quarter 1977 edition of
HostMark, another of petitioner’s publications which was
distributed to its member clubs and approved properties (i.e.,
those accommodations and restaurants which have been rated). The
diamond ratings assigned to various approved properties and an
explanation of the diamond symbols used in petitioner’s rating
system have been set forth in petitioner’s TourBook publications
since 1977. Such publications, which list by state or states all
properties that have been approved by petitioner, are provided
free of charge to all AAA members nationwide. Petitioner’s
diamond rating system and associated ratings for various
properties also appear in its TravelBook publications, which
cover properties in regions outside of the United States and
Canada and are available for free to all AAA members at any club
office, and in its PetBook publications, which describe
accommodations which permit pets and is available for a fee to
members of petitioner nationwide. Other publications issued by
petitioner, such as the Four Diamond Days newsletter, which it
sends to member clubs to encourage them to conduct promotional
events in recognition of those properties which have been awarded
a four diamond rating, and the AAA Interchange magazine, which it
Cancellation No. 22,491
10
distributes to its employees and member clubs, also publicize
petitioner’s diamond rating system and, in particular, the two
highest categories thereof.
Petitioner advertises the properties which have
received its four and five diamond ratings through the issuance
of brochures and press releases, such as those pertaining to its
annual awards dinners for properties which have achieved a five
diamond status. Such events are in turn publicized to its
members and the general public by their frequent coverage in
national newspapers. In 1994, which is the only year for which
expenditures were given, petitioner spent $394,062 to promote its
four and five diamond rating awards program. In addition, the
properties which petitioner refers to as "official appointments,"
in that they are licensed by petitioner to use its certification
marks, are authorized to display and otherwise advertise their
diamond rating, such as in their yellow pages ads.
A June 1991 survey of petitioner’s members regarding
their awareness and use of its diamond rating system concluded
that "nearly all" of those questioned indicated that they utilize
petitioner’s TourBook publications "in planning trips and that
they use the diamond rating system to select hotels and motels."
(Id. at 33.) Also, as a result of the survey, petitioner has
used the mark "DIAMOND DESTINATIONS" since about November 1991 to
refer to certain travel packages offered by petitioner and its
clubs and divisions. According to Mr. Brehm, petitioner "decided
to capitalize on the fame of the diamond rating system by
Cancellation No. 22,491
11
structuring tour packages to various destinations which are
popular among AAA members and calling those tour packages Diamond
Destinations". (Id. at 34.) Such packages, which include only
those properties which have received one of petitioner’s diamond
ratings, also feature tickets to local attractions as well as, in
some cases, discounts on restaurants and/or other types of
entertainment. Currently, tour package offerings include the
cities of Boston, Orlando, Phoenix, San Diego and Williamsburg.
All of petitioner’s clubs have their own travel
agencies which serve members of the general public as well as
club members. However, in the case of petitioner’s "DIAMOND
DESTINATIONS" tour packages, it is optional with each club’s
travel agency as to whether such packages are restricted to club
members or whether members of the general public are also
eligible. Promotion of petitioner’s "DIAMOND DESTINATIONS" tour
packages is done through brochures distributed to potential
customers by its club travel agencies; by articles appearing in
its Travel News publication, which petitioner sends to the
personnel at such agencies; and in bulletins, which petitioner
issues to such personnel in order to update information on its
tour packages.
Although petitioner has filed an application to
register its "DIAMOND DESTINATIONS" mark for services identified
as "arranging travel tour packages,"10 the application has been
refused registration in light of respondent’s mark and currently

10 Ser. No. 74/233,491, filed on December 26, 1991, which alleges dates
of first use of September 5, 1991.
Cancellation No. 22,491
12
is suspended pending the outcome of this proceeding. Petitioner,
in fact, commenced this case after submitting the following
argument, based upon a list of third-party registrations and its
prior registrations for its "FIVE DIAMOND AWARD" and "FIVE
DIAMOND AWARD" and design certification marks, which failed to
convince the Examining Attorney that confusion was not likely:
[T]here are a number of prior marks
containing the term diamond, [and thus] the
field is rather crowded. Bearing in mind
that marks are to be viewed in their
entireties, it becomes clear that no prior
marks ... should bar registration.
The trademark attorney contends that
DIAMOND is the salient feature of the marks
in issue. Yet such a view ignores the other
portions of the respective marks, namely
TOURS, INC. ... and DESTINATIONS. To focus
on the common word of the marks is not the
proper analysis. It is well settled that
marks are to be considered in their
entireties and not broken up into their
component parts. .... Furthermore, a
disclaimer does not remove the disclaimed
matter from the mark so that the mark must
still be regarded as a whole, including the
disclaimed matter, in evaluating similarity
to other marks. ....
When regarding the marks as a whole, it
is apparent that they differ in sound,
appearance, and meaning. This, taken
together with the number of other "diamond"
marks on the register, establishes that there
is no likelihood of confusion.
Petitioner, "[i]n the last two or three years,"
additionally "has begun to promote the service provided by its
employees to AAA members as five diamond quality service." (Id.
at 41.) Petitioner selected the mark "FIVE-DIAMOND" for use in
Cancellation No. 22,491
13
connection therewith11 because it wished "to relate the level of
service provided by AAA employees to that provided by five
diamond hotels or restaurants." (Id.) Petitioner, furthermore,
plans to begin using the mark "DIAMOND CLASS" to refer to the
"official appointments" properties which license the use of its
diamond rating system in their promotional efforts.12 Petitioner
decided upon such action so as "to take advantage of the fame and
recognition that the diamond symbol has acquired among AAA
members and the public in general." (Id. at 42.)
Plain copies of petitioner’s pleaded registrations for
its certification marks are of record and, as noted previously,
Mr. Brehm’s testimony establishes that such registrations are
subsisting and owned by petitioner. Petitioner also has
introduced plain copies of its registrations for (i) the
certification mark "AAA FIVE DIAMOND AWARD" and design, which is
registered, as shown below,

11 While petitioner, by a notice of reliance, also submitted a plain
copy of Reg. No. 1,908,907, which issued to it on August 1, 1995 from
an application filed on June 2, 1994, for the mark "FIVE-DIAMOND" for
"training services, namely, providing instructions in customer
relations and customer services by means of courses and seminars," no
testimony was presented concerning the current status of and title to
such registration, although Mr. Brehm did state that the April 27,
1988 dates of first use set forth therein for the mark are correct.
12 Petitioner, in addition, has pending an intent-to-use application,
Ser. No. 74/565,576, filed on August 25, 1994, for the mark "DIAMOND
CLASS" for "promoting lodging locations and restaurant services by
preparing and placing distinctive advertising signage and listings in
travel guides for others," which was published on August 25, 1995 and
received a notice of allowance on November 21, 1995.
Cancellation No. 22,491
14
for "hotels, motels, resorts, and restaurants,"13 and (ii) the

13 Reg. No. 1,709,022, issued on August 18, 1992 from an application
filed on March 22, 1991, which sets forth dates of first use of
November 9, 1990. The word "AWARD" is disclaimed.
Cancellation No. 22,491
15
certification mark "AAA FOUR DIAMOND AWARD" and design, which is
likewise registered, as reproduced below,
for "hotels, motels, resorts, and restaurants".14 While Mr.
Brehm testified that such marks, like its pleaded certification
marks, are in use and that the registrations thereof are
subsisting and owned by petitioner, the record shows that the
filing dates of the applications which matured into such
registrations are subsequent to the filing date of the
application which resulted in respondent’s involved registration
for its "DIAMOND TOURS, INC." mark. Moreover, there is nothing
which indicates that the certification marks "AAA FIVE DIAMOND
AWARD" and design and "AAA FOUR DIAMOND AWARD" and design were in
use, in the registered format, by petitioner prior to the use, as
discussed later in this opinion, by respondent of its mark.
Other than respondent’s use of its mark for its
services, petitioner concedes that it is not aware of any use of
the term "DIAMOND" either as a mark or a rating system for travel
services. Petitioner, in fact, insists that it had never even
heard of respondent until respondent’s involved registration was

14 Reg. No. 1,714,558, issued on September 8, 1992 from an application
filed on March 22, 1991, which sets forth dates of first use of
November 9, 1990. The word "AWARD" is disclaimed.
Cancellation No. 22,491
16
cited as a bar to petitioner’s application to register its
"DIAMOND DESTINATIONS" mark. Petitioner admits, moreover, that
it is unaware of any incidents of actual confusion; specifically,
petitioner knows of no instances in which a AAA member or member
of the general public has mistakenly thought that the services
respondent provides under its "DIAMOND TOURS, INC." mark were
instead provided by petitioner. Furthermore, petitioner concedes
that it does not own any hotels, motels, resorts or restaurants,
nor does it provide any hotel, motel, resort or restaurant
services.
Respondent "is a tour operator" which, in particular,
"is in the business of arranging travel package tours." (Ferraro
dep. at 6.) Respondent, through telemarketing, began offering
its services in late 1987 and, in June 1988, arranged and
provided transportation for its first packaged travel tour, which
it conducted under the mark "DIAMOND TOURS, INC." Such tour,
like the vast majority (at least 90 percent) of those which it
has continuously conducted under its mark, consisted principally
of a group tour of Atlantic City, New Jersey casinos with
overnight hotel accommodations at the nearby Hampton Inn.15
According to Mr. Ferraro, it is his understanding that, while
such hotel has received a diamond rating from petitioner, he does
not know what that rating is but, in any event, he does know that

15 Mr. Ferraro is a shareholder in the corporation which owns such
hotel.
Cancellation No. 22,491
17
the hotel’s rating is not used in the promotion of respondent’s
tour packages.
Respondent’s tours, which are primarily directed to
church, veterans, fraternal order, social club and senior
citizens groups and usually last from two to three days,
typically involve motor coach transportation to and from
destinations in New Jersey, New York and Pennsylvania. However,
since about late 1994 or early 1995, respondent in conjunction
with Celebrity Cruises has arranged and provided Caribbean cruise
trips, which depart from Florida, as well as cruise trips to
Bermuda. Since about 1989, respondent has booked and conducted
approximately 300 to 400 tours annually.16 Many of its tours,
including an expanding number of destinations in recent years,
are the result of repeat business from customers who have taken
its Atlantic City, New Jersey tours. Thus, while respondent
deals primarily with a customer base drawn from the middle
Atlantic and Northeastern states (i.e., Virginia, Maryland,
Delaware, Pennsylvania, New Jersey, Connecticut and New York), it
intends to expand the geographic reach of its services.
Respondent primarily markets its services by telephone,
starting with a call to the leader of a group or organization.
Such telemarketing is done in-house by respondent’s sole
salesperson who, after telling a group leader who respondent is
and what it does, inquires about whether the group travels

16 Although, as noted previously, respondent conducted its first tour
in June, 1988, Mr. Ferraro testified that he did not recall how many
tours were arranged and provided by respondent in 1988.
Cancellation No. 22,491
18
together and, if so, what types of trips the group takes.17 In
addition, respondent solicits business through the mailing of
advertising flyers and brochures, which feature its "DIAMOND
TOURS, INC." mark.18 Respondent also utilizes its mark on its
tour itineraries, stationery, and promotional materials, such as
fanny packs and baseball caps, which it gives to group leaders.
Respondent, like petitioner, is unaware of any
instances of actual confusion between the use of petitioner’s
marks, including its diamond rating system, for the certification
of hotels, motels, resorts and restaurants and respondent’s use
of its "DIAMOND TOURS, INC." mark for the services of arranging
travel tours and providing transportation therefor. Respondent
is also unaware of any incidents of actual confusion between its
mark for its services and petitioner’s "DIAMOND DESTINATIONS"
mark for the services of arranging travel tour packages.
Finally, while respondent has not submitted any
evidence of third-party uses of "DIAMOND" terms or diamond
symbols as marks or components thereof, respondent has introduced
PTO records showing that such terms and/or symbols have been the
subjects of numerous registrations for a wide variety of goods
and services, including a number of certification marks.
Although most of such registrations involve diamond designs used
as background elements or vehicles for display of word features

17 Respondent identifies potential clients by, among other things,
contacting municipalities for the telephone numbers of senior citizen
centers and through referrals from its existing customers.
18 As of the February 12, 1996 date of his testimony deposition, Mr.
Ferraro stated that respondent has a mailing list of approximately 600
Cancellation No. 22,491
19
and pertain to unrelated goods or services, the registrations
nevertheless serve like dictionary definitions to demonstrate the
laudatory significance of a diamond symbol or the word "DIAMOND"
as indicative of high quality or prestige. Moreover, the
following marks are particularly pertinent since they cover
services or certifications thereof which are the same or closely
related to those of the parties in this proceeding: (i) the mark
"VACATION BONUS" and design, shown below,
which is registered for arranging travel tours and vacation
plans; (ii) the mark "THE GRAY LINE" and design, displayed below,
which is registered for sightseeing services conducted by bus,
boat and airplane; (iii) the mark "THE SAFE LINE FLEET" and
design, illustrated below,

group-leader customers, which list it generates as the result of
previous customer contacts and referrals.
Cancellation No. 22,491
20
which is registered for providing transportation services
consisting of buses for students and others; (iv) the mark "K"
and design, illustrated below,
which is registered for the certification of restaurant, catering
and hotel services; and (v) the mark "DIAMOND CLUB and design,
reproduced below,
which is registered for hotel, restaurant and bar services.
As noted previously, respondent concedes that
petitioner has priority with respect to its pleaded "FIVE DIAMOND
AWARD" and "FIVE DIAMOND AWARD" and design certification marks.
Respondent also admits in its brief, and the record confirms,
that petitioner has priority as to its use, beginning in early
1977, of its diamond rating system of certification marks. Such
marks, consisting of from one to five solid or block diamond
shapes, have been continuously used by petitioner since long
prior to respondent’s first actual use, in June 1988, of its
"DIAMOND TOURS, INC." mark in connection with providing its
packaged travel tour services. Moreover, a five diamond symbol
mark with faceted diamonds, identical to the one shown in
petitioner’s pleaded registration for such a certification mark
(see footnote 4), appears in petitioner’s HostMark publications,
Cancellation No. 22,491
21
the distribution of which includes petitioner’s approved
properties, for the years 1985, 1986 and 1988 as part of the
composite certification marks respectively shown below:
Especially when so used in articles which describe hotels and
resorts which have won petitioner’s certification as "FIVE
DIAMOND AWARD" properties, it is clear that the faceted five
diamond symbol makes a separate commercial impression and, in any
event, such a symbol would be regarded by the consuming public
and the approved properties alike as the legal equivalent of
petitioner’s five solid or block diamonds certification mark
since the former creates the same continuing commercial
impression as the latter. See Jimlar Corp. v. Army & Air Force
Exchange Service, 24 USPQ2d 1216, 1221-22 (TTAB 1992), citing Van
Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d
1866, 1868 (Fed. Cir. 1991). Petitioner, therefore, also has
priority as to its pleaded five faceted diamonds certification
mark.19
We agree with respondent, however, that petitioner has
not established priority with respect to its two additionally
registered certification marks, namely, the mark "AAA FIVE

19 Respondent, we observe, essential concedes such fact in its brief by
stating that, with respect to the issue of likelihood of confusion,
the use by petitioner of its "Five Stylized Diamond Symbols as a
certification mark certifying the award of AAA’s highest rating to a
lodging or restaurant" is one of "[t]he real marks in issue in this
proceeding".
Cancellation No. 22,491
22
DIAMOND AWARD" and design and the mark "AAA FOUR DIAMOND AWARD"
and design. Not only are the filing dates of the underlying
applications for such registrations subsequent to the filing date
of the application which resulted in respondent’s registration,
but it cannot be said that petitioner’s "AAA FIVE DIAMOND AWARD"
and design mark, due to the presence of the arbitrary term "AAA"
therein, is the legal equivalent of either of petitioner’s
registered "FIVE DIAMOND AWARD" marks. Furthermore, as mentioned
previously, there simply is no testimony or other evidence that
petitioner’s "AAA FIVE DIAMOND AWARD" and design mark or its "AAA
FOUR DIAMOND AWARD" and design mark, in the particular format in
which each is registered, has been in use by petitioner prior to
the actual first use by respondent of its "DIAMOND TOURS, INC."
mark in June 1988.
Likewise, there is no satisfactory proof that
petitioner’s "FIVE-DIAMOND" mark has been in use since the
claimed dates of first use of April 27, 1988 and, in fact, what
testimony there is indicates that, as of the December 13, 1995
date of Mr. Brehm’s deposition, it was only in the past two or
three years that petitioner even began to promote the services
provided by its employees to its members as "FIVE-DIAMOND"
services. The record additionally reveals that, as to its
"DIAMOND DESTINATIONS" mark, petitioner did not commence actual
use thereof until November 199120 and, with respect to its

20 Petitioner, while admitting in its initial brief that it first "used
its DIAMOND DESTINATIOMS mark for arranging travel tour packages in
1991," further asserts that, for priority purposes, it is nevertheless
Cancellation No. 22,491
23
"DIAMOND CLASS" mark, for which petitioner has pending an intent-
to-use application filed on August 25, 1994, it has yet to make
actual use thereof. Plainly, therefore, petitioner lacks
priority as to such marks. Petitioner, in fact, so concedes in
its reply brief21 and, as respondent points out in its brief, the
record fails to demonstrate that such marks are merely latter
additions to a previously existing family of "DIAMOND"-based
marks.22
Turning, next, to consideration of the pertinent
factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), for determining whether
a likelihood of confusion exists, we find that, on this record,
petitioner has failed to satisfy its burden of demonstrating that
confusion as to source or sponsorship is likely to occur.
Petitioner, in this regard, argues among other things that its

entitled to "tack onto [such use] its prior use of DIAMOND in
connection with its certification services to defeat any intervening
rights" possessed by respondent inasmuch as "arranging for travel and
tour services are sufficiently related to certification of hotel,
motel, resort and restaurant services". However, irrespective of the
question of relatedness, none of petitioner’s prior marks is the legal
equivalent of or indistinguishable from its "DIAMOND DESTINATIONS"
mark and neither the traveling public nor the travel industry would
consider any of the former to be the same mark as the latter inasmuch
as the same, continuing commercial impression necessary for tacking
has not been created. See Van Dyne-Crotty Inc. v. Wear-Guard Corp.,
supra at 1868. In particular, due to the differences in overall
sound, appearance and connotation created by the presence of the word
"DESTINATIONS" in petitioner’s "DIAMOND DESTINATIONS" mark, such mark
materially differs from each of the prior marks which it seeks to
tack.
21 Specifically, petitioner states therein that the "relevance" of its
"FIVE-DIAMOND," "DIAMOND DESTINATIONS" and "DIAMOND CLASS" marks "is
not for the priority issue" but, instead, "is to show the Petitioner’s
expansion of its ’diamond theme’ certification service."
22 Petitioner, we further note, has not made such contentions in either
of its briefs nor did it so argue at the oral hearing.
Cancellation No. 22,491
24
certification of hotels, motels, resorts and restaurants as
meeting certain standards established by petitioner and
respondent’s services of arranging travel tours and providing
transportation therefor are "species of the same genus, namely,
the travel industry." This is especially so, petitioner insists,
because "[m]ost tour groups require overnight accommodations, and
most accommodations are rated by AAA." In addition, petitioner
maintains that the fact that it has expanded its activities into
the packaging of travel tours "is further evidence of the close
relationship between [its]... accommodations certification
services and Registrant’s tour services."
We concur with respondent that just because
petitioner’s certification marks, including its diamond symbol
ratings, are marketed to its individual members through such
publications as its TourBook, TravelBook and PetBook guides and
are promoted to the general public by travel agencies and through
signage and other advertising by its approved properties does
not mean that the general public, to which respondent also
promotes its packaged tour services through telemarketing, direct
mail flyers and other brochures, would be likely to believe that
the same entity is the source or sponsor of public accommodations
featuring various diamond ratings or awards and travel packages
rendered under the mark "DIAMOND TOURS, INC." The record, in
fact, confirms that while various public facilities, including
restaurants and hotels, are indeed included as part of
respondent’s travel tour packages, petitioner does not own or

Cancellation No. 22,491
25
operate any hotels, motels, resorts, restaurants or other public
accommodations and, instead, simply certifies such establishments
if they meet its standards of quality.23
Moreover, even if the certifications of pubic
accommodations provided by petitioner and the travel tours and
transportation therefor arranged by respondent may broadly be
considered as part of the "travel industry" which is directed to
the general public, the mere fact that a term may be found which
encompasses the parties’ activities does not mean that consumers
will view such activities as related in the sense that they will
assume that they emanate from or are associated with a common
source. See, e.g., General Electric Co. v. Graham Magnetics
Inc., 197 USPQ 690, 694 (TTAB 1977) and Harvey Hubbell Inc. v.
Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975). Here,
respondent’s services basically consist of arranging and
providing travel tour packages, a service which petitioner does
not rate and has shown no intention to do so, while petitioner
furnishes ratings which certify that a particular level of its
quality standards for hotels, motels, resorts and restaurants has
been met. Merely because the parties’ activities are subsumed
under the broad rubric of "travel industry" services does not

23 The mere fact that petitioner, in connection with the prosecution of
its application to register its "DIAMOND DESTINATIONS" mark, brought a
cancellation proceeding against a third-party’s registration of the
mark "DIAMOND" for hotel services which was settled by the defendant’s
voluntarily surrendering the registration for cancellation and
agreeing not to use such mark in the United States does not establish
that the traveling public would regard the provision of travel tours
under a "DIAMOND" mark as related to public accommodations which have
received a diamond symbol rating and/or won certification as a "FIVE
DIAMOND AWARD" property.
Cancellation No. 22,491
26
mean, in the absence of supporting evidence, that such diverse
activities as providing packaged travel tours, on the one hand,
and certifying levels of quality for hotels, motels, resorts and
restaurants, on the other, would be regarded by members of the
general public or those in the tourism business as coming from or
being sponsored by the same source.
With respect to petitioner’s contention that
respondent’s services of arranging travel tours and providing
transportation therefor are related to petitioner’s certification
program because respondent’s services fall within the natural
area of expansion for petitioner’s activities as evidenced by its
subsequent entry into the travel tour field under its "DIAMOND
DESTINATIONS" mark,24 the mere fact that such an expansion took

24 As the Board explained in Sheller-Globe Corp. v. Scott Paper Co.,
204 USPQ 329, 333-34 (TTAB 1979):
The theory of natural expansion is, in a sense, a
legal fiction. It treats the use of a trademark by an
opposer [or petitioner] on particular goods [or services],
commencing after an applicant [or respondent] has entered
the field with a mark on its own goods [or services], as
though opposer’s [or petitioner’s] use had begun prior to
the use by applicant [or respondent]. As indicated above,
the rationale of the theory is that the purchasing public,
through education or experience, would have thought at the
time of applicant’s [or respondent’s] initial appearance on
the scene that applicant’s [or respondent’s] mark signified
a connection of its goods [or services] with opposer [or
petitioner] notwithstanding that the goods [or services]
sold at the time by opposer [or petitioner] and applicant
[or respondent] were not so related as to support an
opposition [or cancellation proceeding] on traditional
grounds of likelihood of confusion. When the doctrine of
the natural expansion of use of a mark is applicable, it is
not even necessary that opposer [or petitioner] actually be
in its extended business; the possibility that opposer [or
petitioner] may wish to enlarge the use of its mark into the
trade served by applicant [or respondent] may be enough.
....
Cancellation No. 22,491
27
place and was even driven by a June 1991 survey showing a very
high level of awareness and utilization of petitioner’s diamond
rating system by its members does not suffice to establish that
the expansion was within the natural scope of petitioner’s
previous activities. Nothing herein is persuasive that
respondent’s travel tour and transportation services constitute
any type of extension, as opposed to an entirely new line of
activity, of petitioner’s business as it existed prior to the
establishment, over three years earlier, of respondent’s
business. In particular, merely because petitioner’s member
clubs operate their own travel agencies does not demonstrate that
petitioner or its clubs’ travel agencies would package travel
tours, as opposed to selling existing packages offered by tour

Before the doctrine of natural expansion may be
invoked by opposer [or petitioner], it must be shown that
the new goods [or services], i.e., the extension of the line
of business from that which pre-existed applicant’s [or
respondent’s] arrival, evolved from the manufacturing and
marketing activities of opposer [or petitioner] and did not
result from the acquisition of a new business by a
diversifying company. .... The burden is on opposer [or
petitioner] to present evidence that is persuasive of the
fact that the new business represents an expansion of, and
not merely an unrelated addition to, the business that
opposer [or petitioner] conducted prior to the first use of
applicant’s [or respondent’s] mark on the goods [or
services] for which applicant [or respondent] is seeking [or
has] a registration. Without such evidence of a natural
expansion, opposer [or petitioner] would be asserting the
dreaded right in gross to a mark, a right to prevent the
registration of any similar mark regardless of the
dissimilarities of the parties’ goods [or services] .... A
right in gross cannot be granted because it would violate
not only established principles of common law but also the
intent of §2(d) of the Trademark Act, which makes a
determination of likelihood of confusion, mistake or
deception dependent upon the goods [or services] of
applicant [or respondent] and, by necessary inference, upon
a comparison of those goods [or services] with the goods [or
services] of opposer [or petitioner], each set of goods [or
Cancellation No. 22,491
28
operators like respondent. In addition, there is no showing that
petitioner ever previously conducted any business in the sale of
its own tour packages, nor is there any proof that, for instance,
a competitor of petitioner has sold such packages. Petitioner’s
later entry into the same kind of services as those provided by
respondent must, on this record, be regarded as a diversification
of--rather than a natural addition to--petitioner’s business,
including its certification program for public accommodations, as
that business existed at the time respondent entered the
marketplace with its services. Nothing, in short, even remotely
suggests that the purchasing public, prior to the commencement of
respondent’s services, has an awareness of even a single entity
which certified public accommodations as to certain standards of
quality and also conducted travel tours under the same or similar
marks. Petitioner, therefore, has not met its burden of
demonstrating that a business which certifies various public
facilities would normally or reasonably be expected to expand
such business to include the provision of its own travel tours
and related transportation therefor.
Nevertheless, even if we were to find that petitioner’s
certification program and respondent’s travel tour and associated
transportation services would be regarded by the general public
as closely related activities, we agree with respondent that, due
to the highly suggestive nature of the respective marks and the
overall differences therein, confusion as to origin or

services] being considered in conjunction with the mark used
thereon. ....
Cancellation No. 22,491
29
affiliation is not likely to occur. As petitioner concedes, it
adopted a system of from one to five diamond symbols as
certification marks for its revised rating program in 1977
because of the notion of quality and prestige that is associated
with diamonds. The same image or impression is likewise conveyed
not only by its five faceted diamonds certification mark, but
also by its "FIVE DIAMOND AWARD" mark and its "FIVE DIAMOND
AWARD" and design mark, since in the context in which such marks
are used a diamond symbol and the word "DIAMOND" possess
essentially identical significance. Respondent’s "DIAMOND TOURS,
INC." mark, which it frequently uses with a diamond design as
displayed below,
similarly engenders the notion of a prestigious or quality travel
tour operator.
Petitioner maintains, therefore, that the respective
marks are likely to cause confusion. In particular, petitioner
contends that, due to the descriptiveness of the words "AWARD"
and "TOURS, INC." in some of the marks (as evidenced by the
disclaimers thereof in their respective registrations), "[t]he
common and characterizing feature of all of Petitioner’s [prior]
marks is the term DIAMOND," while "[t]he characterizing feature
of Registrant’s mark is also the term "DIAMOND." We concur with
respondent, however, that petitioner’s assertions fail to give
adequate consideration to the respective marks in their
Cancellation No. 22,491
30
entireties. As respondent correctly points out, "even words
which are disclaimed must be considered, as the consumer is
unaware of the existence of such disclaimers." See, e.g.,
Industria Espanola De Perlas Imitacion, S.A. v. National Silver
Co., 459 F.2d 1049, 173 USPQ 796, 798 (CCPA 1972) ["It is well
settled that the question of likelihood of confusion is to be
resolved upon a consideration of the marks in their entireties.
Disclaimed material forming part of a trademark cannot be ignored
in determining whether the marks are confusingly similar"].
Plainly, even though the words "AWARD" and "TOURS,
INC." are in turn descriptive of petitioner’s certification
program and respondent’s travel tour services, when respectively
used as part of petitioner’s "FIVE DIAMOND AWARD" marks and
respondent’s "DIAMOND TOURS, INC." mark such words create marks
which, notwithstanding the shared presence of the word "DIAMOND,"
are on the whole appreciably different in sound, appearance,
connotation and commercial impression. Similarly, none of
petitioner’s diamond rating symbols, including its five faceted
diamond mark, look at all like respondent’s mark, nor do they
create substantially the same overall connotation or commercial
impression. Given the high degree of suggestiveness inherent in
the laudatory word "DIAMOND" and in diamond symbols, respondent’s
mark is readily distinguishable, and not likely to cause
confusion, with any of petitioner’s prior marks.
Our conclusion in this regard finds further support in
petitioner’s prior inconsistent position with respect to its
application to register its "DIAMOND DESTINATIONS" mark for the
Cancellation No. 22,491
31
same type of packaged travel tours as offered by respondent under
its mark. Although not a binding evidentiary admission,
petitioner’s arguments, in an ex parte context, that confusion is
not likely when such marks are used in connection with identical
travel tour services are relevant "as merely illuminative of
shade and tone in the total picture confronting the decision
maker." Interstate Brands Corp. v. Celestial Seasonings, Inc.,
576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). If, as petitioner
formerly urged, such highly similar but suggestive marks are not
likely to cause confusion when used in connection with the same
kind of travel tour services, then clearly, as applied to marks
as disparate overall as those at issue herein for use in
connection with different activities, confusion is also unlikely
between respondent’s "DIAMOND TOURS, INC." mark for its travel
tour services and any of petitioner’s "FIVE DIAMOND AWARD" marks
or its various diamond symbol marks for its certification of
hotels, motel, resorts and restaurants as to quality standards.
Petitioner nevertheless insists that its certification
marks are famous. While Mr. Brehm did indeed express his opinion
as to the fame of such marks, petitioner has offered very little
in terms of the extent of the promotion of its marks, basically
indicating only an advertising expenditure of $394,062 in 1994
with respect to promoting the awards given to the very small
number of properties which were recipients of its four and five
diamond ratings. As respondent points out, "[t]here was no
testimony as to what the promotional expenses [actually] related
to, how they were used and whether or not they were used to
Cancellation No. 22,491
32
promote the same in any manner to the general public or even to
AAA Auto Club members." At best, it appears that such
expenditures went to sponsoring award dinners for the recipients
and that those events received a degree of coverage in the media.
Still, even if we were to find, as petitioner argues,
that "the DIAMOND ratings symbol as applied to accommodations and
restaurants has become synonymous with AAA," it remains the case
that the respective marks herein are highly suggestive due to the
laudatory impression of quality or prestige projected by diamond
symbols and the word "DIAMOND". Prospective customers,
accordingly, would look to the appreciable differences in the
respective marks of the parties and, especially in view of the
context in such marks are used, would distinguish the ratings of
quality signified by petitioner’s certification marks from the
image of a quality tour operator projected by respondent’s mark.
Finally, our conclusion that confusion is not likely is
bolstered by the lack of any instances of actual confusion during
a period of approximately eight years of contemporaneous use in
which respondent has conducted a significant amount of business.
Plainly, providing between 300 to 400 group tours a year since
1988 is not insubstantial. Moreover, while respondent chiefly
promotes its services through telemarketing and limited direct
mail advertising to customers primarily located in the mid-
Atlantic and northeastern states, conditions have nevertheless
been such that, if confusion were likely to happen, it would be
expected to have occurred.
Cancellation No. 22,491
33
The record in this regard shows that the vast majority
of respondent’s travel tours have been motor coach trips to
Atlantic City, New Jersey with overnight accommodations at the
nearby Hampton Inn. Although there is nothing in the record
which specifically indicates that such hotel is one which has
received one of petitioner’s two highest ratings, Mr. Ferraro’s
testimony is uncontradicted that the Hampton Inn has received a
diamond rating of some kind from petitioner, even though that
rating is not used in respondent’s adverting of its tour
packages. Undoubtedly, with a membership base of 35 million
people in the United States, some of petitioner’s members would
also be potential customers of respondent and, prior to booking
one of respondent’s Atlantic City tours, would check petitioner’s
TourBook publication to see if the Hampton Inn listed on the tour
itinerary has been approved by petitioner and, if so, what its
diamond rating is. The absence of any known incidents of actual
confusion is thus a factor which favors respondent and which
strengthens our conclusion that respondent’s use of its "DIAMOND
TOURS, INC." mark for arranging travel tours and providing
transportation therefor is not likely to cause confusion with
petitioner’s previously used "FIVE DIAMOND AWARD" mark, its "FIVE
DIAMOND AWARD" and design mark, its five faceted diamond symbols
mark, or any of its other diamond symbol(s) marks for the
certification of quality standards for hotels, motels, resorts
and restaurants.
Decision: The petition to cancel is denied.
Cancellation No. 22,491
34
T. J. Quinn
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board