Delta Air Lines, Inc.

Trademark Trial and Appeal Board

Aug 27, 2014

No. 85196441 (T.T.A.B. Aug. 27, 2014)

This Opinion is not a
Precedent of the TTAB

Hearing: July 9, 2014 Mailed: August 27, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Delta Air Lines, Inc.
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Serial No. 85196441
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David Landau, Mariana Paula Noli, Fred W. Meyers and Chloe A. Hecht of Ladas &
Parry LLP, for Delta Air Lines, Inc.

Toby Ellen Bulloff, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Bucher, Kuhlke and Adlin,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Delta Air Lines, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark Atlanta’s Hometown Airline (in standard character format) for the
“transportation of goods, passengers and travellers by air” in International Class
39.1

1 Application Serial No. 85196441 was filed on December 13, 2010, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined
that Applicant’s mark so resembles the previously registered mark CHICAGO’S
HOMETOWN AIRLINE2 registered for “transportation of persons, property and
mail by air,” that use of Applicant’s mark in connection with Applicant’s services is
likely to cause confusion, to cause mistake, or to deceive. In addition, while
Applicant agreed to disclaim the word “Airline,” the Trademark Examining
Attorney has made final the requirement that Applicant also disclaim the word
“Atlanta’s.”
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the request for
reconsideration, the appeal was resumed. Both Applicant and the Trademark
Examining Attorney have fully briefed the issues. We affirm both refusals to
register.
Preliminary Matter
The Trademark Examining Attorney has objected to new evidence that
Applicant submitted with its appeal brief, namely evidence that a number of third-
party airlines refer to themselves as the “hometown airline” of different named
cities. The record in an application should be complete prior to the filing of an

2 Registration No. 2804686 issued to United Airlines, Inc. on January 13, 2004; Section 8
affidavit (six-year) accepted and Section 15 affidavit acknowledged. This registration issued
under the provisions of Section 2(f), with Registrant claiming distinctiveness for the
composite. No claim is made to the exclusive right to use the word “Airline” apart from the
mark as shown.
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appeal. 37 C.F.R. § 2.142(d); TBMP §§ 1203.02(e), 1207.01. Because this new
evidence was untimely submitted during the appeal, we have not considered it. See
In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011); In re Giovanni Food
Co., 97 USPQ2d 1990, 1990-91 (TTAB 2011); In re Van Valkenburgh, 97 USPQ2d
1757, 1768 n.32, 1769 (TTAB 2011).
Likelihood of Confusion Analysis
Our determination under Section 2(d) is based upon an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the relationship
between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). We discuss each of the
du Pont factors concerning which Applicant or the Trademark Examining Attorney
submitted argument or evidence.
A. Relationship of the Services and Channels of Trade
The Trademark Examining Attorney contends that Applicant’s services are
legally identical to those of Registrant. In fact, the evidence shows that they are and
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Applicant does not argue otherwise. Accordingly, the second and third du Pont
factors strongly favor a finding of likelihood of confusion.
B. The conditions under which and buyers to whom sales are made
As to whether consumers of airline passenger transportation services are
sophisticated and knowledgeable, Applicant’s counsel argues that purchasers of
airline tickets “are generally intelligent [and] savvy,” and given the requisite
investment of time and money, the details of each such purchase will be planned,
discussed and “investigated in detail.” However, we find no evidence in this record
supporting a conclusion that airline passengers, as a class, are sophisticated
consumers. Accordingly, we find this to be a neutral du Pont factor.
C. The Similarity of the Marks
We turn then to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of “the marks in their entireties as to appearance, sound,
connotation, and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). We also keep in mind that when, as here, marks would be used in
connection with identical services, “the degree of similarity necessary to support a
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conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life
of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v.
Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Applicant argues that because these taglines will each be used in connection
with the owner’s house mark (e.g., “United: Chicago’s Hometown Airline” or “Delta:
Atlanta’s Hometown Airline”), it is highly unlikely that the respective marks will be
confused. However, neither Registrant’s nor Applicant’s drawing includes its house
mark/airline name, and therefore neither Registrant nor Applicant would be
required to use their slogans in this restrictive manner.
Registrant’s mark is simply CHICAGO’S HOMETOWN AIRLINE, and
Applicant’s mark is Atlanta’s Hometown Airline. Applicant argues that inasmuch as
the initial words in the marks do not look alike or sound alike, the marks are
readily distinguishable. While we agree with Applicant that these city names
neither sound alike nor do they look alike, that is not the end of our inquiry –
especially where Applicant and Registrant fly in and out of many cities in addition
to Chicago and Atlanta.
As applicant also points out, the respective marks must be considered in their
entireties – not dissected or split into component parts and each part compared with
other parts. It is the impression created by the involved marks – each considered as
a whole – that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d
161, 23 USPQ2d 1945 (Fed. Cir. 1992). Accordingly, even where marks may have
dissimilarities as to their appearance and sound, they may still be confusingly
similar if they convey the same idea, create the same mental imagery, or have the
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same overall connotation. Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 164
USPQ 301, 304 (CCPA 1970) (holding MISTER STAIN likely to be confused with
MR. CLEAN on competing cleaning products); see Ralston Purina Co. v. Old
Ranchers Canning Co., 199 USPQ 125 (TTAB 1978) (holding TUNA O’ THE FARM
for canned chicken likely to be confused with CHICKEN OF THE SEA for canned
tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973)
(holding UPTOWNER for hotel and restaurant services likely to be confused with
DOWNTOWNER for substantially identical services).
Here, the structure of Registrant’s cited mark is identical to that of Applicant’s
applied-for mark. The first word of each is the possessive form of a major United
States city. This is followed by the identical phraseology, “Hometown Airline.”
Nonetheless, Applicant argues that purchasers will be inclined to focus on the
first words of each of these marks, namely “Chicago” and “Atlanta.” Applicant is
correct in pointing out that these two U.S. cities are quite different in many
respects. However, the crux of the issue before us is not whether Chicagoans or
Atlantans or even United States consumers in general are likely to confuse the city
of Chicago with the city of Atlanta. Rather, the question is whether the sources of
the respective airline passenger services doing business under these similar
taglines are likely be confused.
The term “Airline” is clearly generic for air transportation services and has no
source indicating capability. Applicant has correctly disclaimed this term, and does
not argue otherwise.
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However, Applicant takes the position that the terminology, “Hometown
Airline,” shared by these two marks is inherently weak. As discussed below, when
we focus on the number and nature of similar marks in use, we find that not to be
the case as applied to the relevant services. Applicant argues “competitive need” in
support of its position on the weakness of this term, namely, that as a matter of
competitive fairness, Registrant is not entitled to a monopoly on the tagline,
“Hometown Airline.” Inasmuch as Applicant’s mark identifies a different city in a
different geographic region of the country, Applicant argues that these two marks
should be able peacefully to coexist. By contrast, the Trademark Examining
Attorney treats the ending terminology, “Hometown Airline,” within the larger
phrase “ _______’s Hometown Airline,” as an advertising tagline having source-
indicating capability apart from the city named.
Based upon the dictionary definition of the word “hometown” that Applicant has
submitted for the record, when used in connection with individuals, the meaning
points to the location where one was born or lived during one’s formative years. For
an entity, it is the location of either its present or historic headquarters. Applicant
looks at “hometown” from the standpoint of the airline, and argues that an airline
can have headquarters in only one location, its “hometown.” Hence, Applicant takes
the position that as soon as the allegedly weak term, “Hometown Airline,” is paired
with two very distinct cities, Registrant’s and Applicant’s composite phrases serve
to distinguish the services of United Airlines (Registrant, with its home in Chicago)
from the services of Delta Air Lines (Applicant, with its home in Atlanta).
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In assessing the overall connotations presented by two dissimilar marks, we
must determine how the individual components within a composite mark function
together to create a particular commercial impression. In the face of continued
airline industry mergers in an already concentrated market, we cannot be sure that
consumers make a factual connection between a named airline and, for example,
the city name of that airline’s historic headquarters. In this context, as noted above,
this record does not support a finding that airline passengers as a class are
“sophisticated” consumers. Based upon the whole of this record, we cannot be sure
that airline passengers know or care, for example, that United is headquartered in
Chicago, Delta in Atlanta, American in Fort Worth and Southwest in Dallas. Hence,
we agree with the Trademark Examining Attorney that the respective marks,
despite their different cities, could well create for prospective consumers the
impression that a single anonymous source had chosen the same laudatory or
nostalgic tagline for multiple cities.
While not necessary to our determination herein, we also find that in the context
of these marks, the term “hometown” could well be seen as referring to the
hometown of the airline customers who live in the named city. In the event that the
referenced airline with a hub-and-spoke model has a hub airport in a major city
where it is the dominant carrier, then arguably that airline could be seen as the
“hometown airline” for customers residing in that city. With this interpretation, a
single airline could have a number of “hometowns” spread around the country.
In assessing the similarities of the marks, we agree with the Trademark
Examining Attorney that despite the difference in city names, these two marks
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create substantially the same connotations and commercial impressions, and hence,
we find that this critical first du Pont factor supports a conclusion that confusion is
likely.
D. The number and nature of similar marks in use on similar services
Applicant argues that the cited mark is a weak mark entitled to a narrow scope
of protection. Applicant argues that the cited mark is made up of “descriptive and
common terms” and therefore it is not entitled to the broad scope of protection
accorded it by the Trademark Examining Attorney.
As support for this position, Applicant has shown that the term “Hometown”
alone is used in composite marks in registrations covering services in a variety of
industries, of which the following are representative examples:
Banking Services:
YOUR HOMETOWN
BANK3
HOMETOWN
HELPFUL4
HOMETOWN BANKING5
YOUR HOMETOWN
ADVANTAGE6
CHICAGOLAND’S
HOMETOWN BANK7
HOMETOWN HEROES8

3 Registration No. 1414498 issued on October 21, 1986; renewed. Owned by Graystone
Tower Bank of Lancaster, PA. No claim is made to the exclusive right to use the word
“Bank” apart from the mark as shown.
4 Registration No. 2226251 issued on February 23, 1999; renewed. Owned by Sterling
Savings Bank of Spokane, WA.
5 Registration No. 2651172 issued on November 19, 2002; renewed. Owned by TNBank of
Oak Ridge, TN. No claim is made to the exclusive right to use the word “Banking” apart
from the mark as shown.
6 Registration No. 2819440 issued on March 2, 2004; renewed. Owned by United Bank of
Atmore, AL.
7 Registration No. 3818740 issued on July 13, 2010. Owned by Wintrust Financial
Corporation of Lake Forest, IL. No claim is made to the exclusive right to use the words
“Chicagoland’s” or “Bank” apart from the mark as shown.
8 Registration No. 4001385 issued on July 26, 2011. Owned by First Reliance Bank of
Florence, SC.
Serial No. 85196441
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Newspaper Services:
AMERICAN
HOMETOWN
PUBLISHING9
NEW YORK'S
HOMETOWN
NEWSPAPER10
AMERICAN
HOMETOWN
MEDIA11

Grocery Store Services:
HOMETOWN
PROUD12
HOMETOWN
HEROES13
HOMETOWN
FRIENDLY14
HOMETOWN FRESH15 “Your Hometown
Grocery Store”16
Your Arizona
Hometown grocer17

We do not find these third-party registrations to be especially relevant. The
weakness of a particular cited mark is generally determined in the context of the
number and nature of similar marks in use in the marketplace in connection with

9 Registration No. 2960465 issued on June 7, 2005. Owned by American Hometown
Publishing, Inc. of Franklin, TN. No claim is made to the exclusive right to use the words
“American” or “Publishing” apart from the mark as shown.
10 Registration No. 4093176 issued on January 31, 2012. Owned by Daily News, L.P. of New
York, NY. No claim is made to the exclusive right to use the words “New York’s” or
“Newspaper” apart from the mark as shown.
11 Registration No. 4292876 issued on February 19, 2013. Owned by American Hometown
Media, Inc. of Franklin, TN. No claim is made to the exclusive right to use the words
“American” or “Media” apart from the mark as shown. This appears to be owned by the
same entity associated with Registration No. 2960465, supra.
12 Registration No. 1824727 issued on March 1, 1994; renewed. Owned by IGA, Inc. of
Chicago, IL.
13 Registration No. 3877908 issued on November 16, 2010. Owned by Unified Grocers, Inc.
of Commerce, CA.
14 Registration No. 3881228 issued on November 23, 2010. Owned by Unified Grocers, Inc.
of Commerce, CA.
15 Registration No. 3881229 issued on November 23, 2010. Owned by Unified Grocers, Inc.
of Commerce, CA. We note that these three registrations are owned by the same party.
16 Registration No. 3027836 issued on December 13, 2005. Owned by Eureka Discount
Foods, Inc. of Kirkwood, MO. No claim is made to the exclusive right to use the term
“Grocery Store” apart from the mark as shown.
17 Registration No. 3993185 issued on July 12, 2011. Owned by Bashas’ Inc. of Chandler,
AZ. No claim is made to the exclusive right to use the words “Arizona” or “Grocer” apart
from the mark as shown.
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similar goods and/or services. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991). In this
context, we note that Registrant’s cited mark is the only one on the federal
trademark register that has this “ _______’s Hometown Airline” tagline registered in
connection with these services.
We do note that inasmuch as the cited mark registered under Section 2(f) of the
Trademark Act, this is a concession that this mark was merely descriptive of the
recited services, at least at the time of application. 15 U.S.C. § 1052(f); Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
Although the cited mark (at least at the time of adoption) was not as strong as
would be a totally arbitrary or coined term, we agree with the Trademark
Examining Attorney that it is nonetheless currently entitled to protection against
the registration by a subsequent user of a highly-similar mark for closely-related
services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); see King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974).
In support of its position, Applicant points to In re Hartz Hotel Services, Inc., 102
USPQ2d 1150, 1153-54 (TTAB 2012), where the Board found that GRAND HOTEL
NYC was not confusingly similar to the cited mark GRAND HOTEL. Of course, in
addition to describing that cited mark in its entirety as being “highly suggestive,”
the Board reviewed evidence in the file demonstrating multiple third-party
registrations, third-party websites, and a declaration containing the result of an
investigator’s telephone contacts with third-party hotels using the word “Grand” in
Serial No. 85196441
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their name. With all this evidence, the Board concluded that in the case of the term
“Grand Hotel,” the addition of a geographic location created sufficient distinctions to
avoid confusion. That panel noted that evidently “the owner of the cited registration
did not have a problem with the registration of these third-party marks, as they all
issued after the registration of the cited registrant's registration without challenge
by the registrant.” Id.
Similar to the term “Grand Hotel,” we reviewed above third-party registrations
having marks incorporating the word “Hometown” within the fields of newspapers,
grocery markets and banking. Like frequent third-party uses of “Grand Hotel,”
these registrations point to factual situations where, for example, similar banking
services are offered nationwide by an extremely large number of small “hometown”
banks (viz., YOUR HOMETOWN ADVANTAGE banking services offered by the
United Bank of Atmore, AL). By contrast, the record in this case portrays a mere
handful of major domestic airlines.
As to the overall strength of the cited mark, we find no probative evidence in
Applicant’s allegation that the cited mark coexisted on the register for several years
with a now-cancelled registration for LAS VEGAS’ HOMETOWN AIRLINE. A
cancelled or expired registration is not evidence that the mark listed therein is
currently in use in the marketplace; it is evidence only that the registration once
issued. See In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006);
Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1654 n.6 (TTAB 2002); In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1048 n.2 (TTAB 2002); Sunnen Prods.
Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1746-47 (TTAB 1987); TBMP
Serial No. 85196441
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§ 704.03(b)(1)(A) (2014). Furthermore, we are not bound to approve for registration
an Applicant’s mark based solely upon the registration of other assertedly similar
marks for other goods or services based on unique evidentiary records. See In re
Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re
Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014). In any event, in spite of Applicant’s
repeated arguments that the term “hometown airline” is prevalent in the airline
industry, we find that the record does not support this conclusion.
Hence, we find this to be a neutral du Pont factor.
E. Determination on Likelihood of Confusion
With legally identical services that are presumed to travel through the same
trade channels to the same classes of ordinary consumers, and where the respective
marks are structured identically – the first word of each being the possessive form
of a major U.S. city, followed by the identical phraseology, “Hometown Airline,” we
find a likelihood of confusion should Applicant’s applied-for mark be used in
connection with Applicant’s services.
Disclaimer
The Trademark Examining Attorney has taken the position that Applicant must
disclaim the geographically descriptive wording “Atlanta’s” (as well as the
descriptive wording “Airline”) apart from the mark as shown because it merely
describes the location of Applicant’s headquarters in Atlanta, GA, and the air
transportation services performed by the airline. See 15 U.S.C. §§ 1052(e)(1),
1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
Serial No. 85196441
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USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415
F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005). She argues that Atlanta is a
generally known geographic location, and Applicant’s website shows that the
involved services originate in this city. We agree that absent a showing of acquired
distinctiveness for the entire composite mark,18 “Atlanta’s” is a geographically
descriptive term and must be disclaimed along with the generic term “Airline.”19 An
appropriately-worded disclaimer would read as follows: “No claim is made to the
exclusive right to use the words ‘Atlanta’s’ or ‘Airline’ apart from the mark as
shown.”
Decision: Both refusals to register Applicant’s mark Atlanta’s Hometown Airline
are hereby affirmed.

18 This was the case in the cited registration, for example, which issued under the
provisions of Section 2(f) of the Lanham Act. With Registrant claiming distinctiveness for
the entire composite, it made unnecessary a disclaimer of the word “Chicago’s.”
19 Finally, we note that this requirement fits well the pattern of disclaimers seen in third-
party registrations placed into the record by Applicant, supra, such as CHICAGOLAND’S
HOMETOWN BANK, AMERICAN HOMETOWN PUBLISHING, NEW YORK’S
HOMETOWN NEWSPAPER, AMERICAN HOMETOWN MEDIA, and Your Arizona
Hometown grocer. In each of these cases, the leading geographical term and the trailing
generic term for the services are separately disclaimed while the intervening word,
“Hometown,” remains in each as the element of the combined term providing a requisite
measure of distinctiveness to carry the composite mark to registration.