United States Postal Servicev.RPost International Ltd.

Trademark Trial and Appeal Board

Feb 7, 2014

No. 91158431re (T.T.A.B. Feb. 7, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: February 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

United States Postal Service
v.
RPost International Ltd.
_____

Consolidated Opposition Nos.
91158431 to application Serial No. 76437188;
and
91158514 to application Serial No. 76438606.

Consolidated Cancellation Nos.
92044260 to Registration No. 2928365;
and
92043665 to Registration No. 2867278.

On Reconsideration
_____

Sean D. Garrision and Shane E. Olafson of Lewis and Roca LLP
for United States Postal Service.

Henry Ben-Zvi of Ben-Zvi & Associates for RPost
International Ltd.
______

Before Cataldo, Taylor and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

RPost Int’l. Ltd. (“RPost” or “defendant”) filed
applications to register in standard characters on the
Principal Register the following marks:
(R)ETURN RECEIPT
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
2
with a disclaimer of “RETURN RECEIPT” for “delivery of
electronic messages to a designated recipient on a basis
equivalent to registered receipt mail;”1 and
(R)EGISTERED RECEIPT
with a disclaimer of “REGISTERED RECEIPT” for “delivery of
electronic messages to a designated recipient on a basis
equivalent to registered receipt mail.”2
In addition, RPost owns registrations for the following
marks:
REGISTERED E-MAIL
on the Supplemental Register with a disclaimer of “E-MAIL”
for “delivery of messages by electronic transmission to a
designated recipient to provide results on a basis
equivalent to the results obtained by registered mail;”3 and
(R)EGISTERED E-MAIL
on the Principal Register with a disclaimer of “REGISTERED
E-MAIL” for “delivery of messages by electronic transmission
to a designated recipient on a basis equivalent to
registered mail.”4
United States Postal Service (“USPS” or “plaintiff”)

1 Application Serial No. 76437188 was filed August 2, 2002, based
upon applicant’s assertion of a bona fide intent to use the mark
in commerce.
2 Application Serial No. 76438606 was filed August 7, 2002, based
upon applicant’s assertion of a bona fide intent to use the mark
in commerce.
3 Registration No. 2928365 issued on February 22, 2005. Section
8 affidavit accepted.
4 Registration No. 2867278 issued on July 27, 2004. Section 8
affidavit accepted.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
3
opposed registration of the involved applications and
petitioned to cancel the involved registrations, alleging
the following grounds:
Opposition Nos. 91158431 to Serial No. 76437188 and
91158514 to Serial No. 76438606 - false suggestion of a
connection under Trademark Act Section 2(a), and mere
descriptiveness under Trademark Act Section 2(e)(1);
Cancellation No. 92044260 of Registration No. 2928365
(Supplemental Register) - likelihood of confusion under
Trademark Act Section 2(d), and false suggestion of a
connection under Trademark Act Section 2(a);
Cancellation No. 92044265 of Registration No. 2867278 -
likelihood of confusion under Trademark Act Section 2(d),
false suggestion of a connection under Trademark Act Section
2(a), and mere descriptiveness under Trademark Act Section
2(e)(1).
On June 17, 2013, the Board issued a final decision in
the above-captioned, consolidated proceeding:
granting plaintiff’s claim of likelihood of confusion
as to both of defendant’s challenged registrations;
dismissing the petitions to cancel on the ground of
false suggestion of a connection;
dismissing the petition to cancel Registration No.
2867278 on the ground of mere descriptiveness; and
dismissing the notices of opposition to registration of
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
4
application Serial Nos. 76437188 and 76438606 on the grounds
of false suggestion of a connection and mere
descriptiveness.
On July 16, 2013, defendant timely filed a motion for
partial reconsideration of that decision, solely as to the
Board’s granting plaintiff’s claim of likelihood of
confusion as to both of defendant’s challenged
registrations. See Trademark Rule 2.129(c). Plaintiff
timely filed a brief in opposition thereto.5 See Id.
In its motion for reconsideration, defendant asserts
that our June 17, 2013 decision is in error for failure to
“address two critical aspects of the proof submitted at
trial:
(1) USPS does not operate and is legally
forbidden from operating in the commercial
electronic message transmission trade
channel; and
(2) USPS’s own expressed view – including within
its senior executive suite – was there was no
possibility (much less likelihood) of
confusion between the USPS and RPost marks.”6

5 We note that the applicable Trademark Rules of Practice make no
provision for the filing of a reply brief on a request for
reconsideration of a decision issued after final hearing. See
Trademark Rule 2.129(c). Accordingly defendant’s reply brief on
its motion for partial reconsideration will be given no
consideration.
6 Request for Reconsideration, p. 1.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
5
It has often been stated that the premise underlying a
request for rehearing, reconsideration, or modification
under Trademark Rule 2.129(c) is that, based on the evidence
of record and the prevailing authorities, the Board erred in
reaching the decision it issued. See TBMP §543 (3d ed.
rev.2 2013) and authorities cited therein. The request may
not be used to introduce additional evidence,

nor should it
be devoted simply to a reargument of the points presented in
the requesting party's brief on the case. See Amoco Oil Co.
v. Amerco, Inc., 201 USPQ 126 (TTAB 1978). Rather, the
request should be limited to a demonstration that based on
the evidence properly of record and the applicable law, the
Board's ruling is in error and requires appropriate change.
See, for example, Steiger Tractor Inc. v. Steiner Corp., 221
USPQ 165 (TTAB 1984), different results reached on reh’g, 3
USPQ2d 1708 (TTAB 1984). Cf. In re Kroger Co., 177 USPQ
715, 717 (TTAB 1973).
We address defendant’s arguments in turn. With regard
to defendant’s first contention, in our June 17, 2013
decision we noted that, based upon the testimony and
evidence of record, plaintiff provides mail delivery
services with additional security and proof of delivery and
defendant provides email delivery services featuring
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
6
security in the form of encryption and proof of delivery.7
We observed that the parties
argue at length regarding the nature of certain
electronic services offered by plaintiff; whether
such services may be considered electronic
messaging services; and the extent to which
plaintiff has been prohibited by Congress from
entering or expanding into the electronic
messaging service.8

We then went on to find that the parties’ services are
related, noting that
it is unnecessary for us to determine the extent
of plaintiff’s presence in the electronic
messaging market. First, plaintiff’s evidence of
use of REGISTERED MAIL as a common-law mark is
overwhelmingly directed toward paper mail delivery
with additional security and proof of delivery.
Second, plaintiff made of record fifteen use-based
third-party registrations reciting both paper mail
and package delivery and related services and
electronic mail delivery and related services.9

Thus, it is clear from the June 17, 2013 decision that we
considered defendant’s arguments with respect to plaintiff’s
asserted absence from electronic messaging and found the
parties’ services to be related based upon plaintiff’s
presence in the field of paper mail delivery.10

7 August 18, 2011 decision, p. 20.
8 Id.
9 Id. at 20-21.
10 Furthermore, we note that the trade channels in which the
parties’ services may be encountered is merely one of many
factors to be considered in a likelihood of confusion
determination. See In re E. I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 562 (CCPA 1973). There is no requirement
that the parties’ services be directly competitive or move in the
same trade channels to support a finding of likelihood of
confusion. See In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
7
In its second contention, defendant essentially argues
that prior to the instant litigation between the parties,
they pursued a joint venture during which time plaintiff did
not anticipate or object to defendant’s REGISTERED E-MAIL
and (R)EGISTERED E-MAIL marks on the basis of likelihood of
confusion with plaintiff’s marks. Defendant further points
to statements made by a former employee of plaintiff (Peter
Jacobson) who asserted his belief that confusion would be
unlikely between the parties’ marks.11 Defendant asserts
that plaintiff’s “pre-litigation admissions that there is no
likelihood of confusion are of particular and significant
importance in assessing whether there is in fact likelihood
of confusion.”12
However, defendant cites to no authority for its
position that plaintiff’s previous attempts to enter into a
joint venture with defendant involving the services
identified by the marks at issue herein precludes plaintiff
from prevailing on its subsequent cancellation proceedings
based upon likelihood of confusion. Nor do we find that the
statements of a former employee of plaintiff regarding his
recollection that no one objected to defendant’s involved
marks during the parties’ discussions regarding their joint
venture constitute an “admission” preventing plaintiff from
prevailing on its likelihood of confusion claim. Even

11 Jacobson Testimony, p. 27-28; 32-43.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
8
considering Mr. Jacobson’s statements in this regard in our
consideration herein, the balance of the du Pont factors
still favor a finding of likelihood of confusion.
In short, defendant points to no error on the part of
the Board in our June 17, 2013 decision but rather expresses
disagreement with the result reached therein and reargues
positions raised in its brief on final decision. As a
result, we remain of the opinion that our June 17, 2013
decision is correct.
Accordingly, defendant’s motion for reconsideration is
denied.13

12 Id. at 18.
13 The parties will note that neither Trademark Rule 2.129(c) nor
any of the other rules of practice applicable to Board
proceedings contemplate a second request for reconsideration of a
final decision in a Board inter partes case.