American Airlines, Inc.

Trademark Trial and Appeal Board

Mar 15, 2005

No. 76409236 (T.T.A.B. Mar. 15, 2005)

Mailed: 3/15/05

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Airlines, Inc.
________

Serial No. 76409236
_______

Linda J. Nowlin of Dineff Trademark Law, Ltd. for
applicant.

Christopher Wells, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Bucher and Holtzman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by American Airlines, Inc. to
register the mark shown below

for “in flight magazines.”1

1 Application Serial No. 76409236, filed May 17, 2002, alleging a
date of first use anywhere and first use in commerce of March
1999. The registration includes the following statement: “The
word ‘nexos’ translates to ‘connections’ in English.”
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76409236
2
The examining attorney refused registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark shown below

for “printed matter, namely magazines in the field of arts,
literature, science, politic analysis, and cultural issues”2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant contends that the marks, when considered in
their entireties, are different in sound, appearance,
connotation and overall commercial impression. In
connection with this argument, applicant distinguishes the
marks in a detailed side-by-side comparison, with
significant reliance on what it perceives to be the

2 Registration No. 2403968, issued November 14, 2000.
Ser No. 76409236
3
dominant portion of its mark, namely the words “AMERICAN
AIRLINES.” Applicant points to these words and other
design features in its mark, and states that the most
significant addition to NEXOS in its mark is the “AMERICAN
AIRLINES” feature which, according to applicant, “give[s]
the mark a whole new commercial impression and connotation
because those words are not simply random letters, but have
come to represent one of the most famous marks in the
country.” (Brief, unnumbered p. 6). Applicant claims that
the fame of the “AMERICAN AIRLINES” mark and consumer
recognition of the mark as indicating source in applicant
ensures against the likelihood of confusion with the cited
mark. With respect to the goods, applicant argues that its
“inflight magazines” are completely different from regular
magazines like those of registrant, and that applicant’s
goods “are narrowly tailored so that they are only provided
to defined customers, that is, those who travel via
airplane on American Airlines.” (Brief, unnumbered p. 10).
According to applicant, its magazines are provided to
travelers on flights and are not sold or marketed to the
general public. More specifically, applicant’s customers
are “well-educated, affluent Latin Americans who travel by
air on flights to and from Central and South America.”
(Response, July 7, 2003). Applicant further points to the
Ser No. 76409236
4
coexistence of the marks for over five years without any
known instances of actual confusion.
The examining attorney maintains that the test of
likelihood of confusion is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks create the same overall
commercial impression. The examining attorney views the
term “NEXOS” as the dominant portion of each mark, and
contends that the addition of applicant’s “house mark” does
not distinguish the marks. According to the examining
attorney, “[i]t is likely not only that the two products
sold under these marks would be attributed to the same
source but also that purchasers would mistakenly assume
that both were products of applicant by virtue of its use
of American Airlines with the shared term NEXOS.” (Brief,
unnumbered p. 4). As to the goods, the examining attorney
asserts that registrant’s magazines include subjects (e.g.,
arts, literature and culture) that might appear in an
inflight magazine, and that air travelers are accustomed to
being offered general circulation magazines while flying.
Under such circumstances, the examining attorney concludes
that consumers aware of registrant’s magazine would
believe, upon encountering applicant’s mark for its
magazine, that applicant’s magazine is an edition of
Ser No. 76409236
5
registrant’s NEXOS magazine made available on airplanes.
The examining attorney discounts applicant’s mere statement
of no actual confusion, and further states that any doubt
must be resolved in registrant’s favor.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We first turn to the du Pont factor regarding the
similarity or dissimilarity of the parties’ respective
goods. In comparing the goods, it is not necessary that
they be identical or even competitive in nature in order to
support a finding of likelihood of confusion. It is
sufficient that the circumstances surrounding their
marketing are such that they would be likely to be
Ser No. 76409236
6
encountered by the same persons under circumstances that
would give rise, because of the marks used in connection
therewith, to the mistaken belief that the goods originate
from or are in some way associated with the same source.
In re International Telephone and Telegraph Corp.,
197 USPQ 910 (TTAB 1978). The issue of likelihood of
confusion must be determined on the basis of the goods as
set forth in the application and the cited registration.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.
4 (Fed. Cir. 1993); and Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815-16 (Fed. Cir. 1987).
Applicant’s goods are identified as “inflight
magazine,” while registrant lists its goods as “magazines
in the field of arts, literature, science, politic
analysis, and cultural issues.” When the cited
registration describes goods broadly, and there is no
limitation as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registration
encompasses all goods of the type described, that they move
in all normal channels of trade, and that they are
available to all classes of purchasers. See, e.g., In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); and In re Diet
Center Inc., 4 USPQ2d 1975 (TTAB 1987). Thus, in the
Ser No. 76409236
7
present case, we must presume that registrant’s magazines
would be sold in airports or would be made available to
passengers for reading on a commercial airliner. In this
connection, it is common knowledge that general circulation
magazines are routinely offered by airlines to their
passengers while traveling. Although applicant may be
correct in stating that its magazines are “narrowly
tailored to defined consumers,” namely passengers on
American Airlines, these same passengers may be exposed to
registrant’s magazines, either while in the air or on the
ground. Further, applicant’s inflight magazines do not
include any limitation as to subject matter, and it is
reasonable to presume that these magazines would include,
at one time or the other, articles on art, literature,
science, politics or culture.
Accordingly, we find that applicant’s and registrant’s
magazines are related for purposes of our likelihood of
confusion analysis. The magazines travel in the same
channels of trade to the same classes of purchasers.
We next turn to consider the marks. The marks are
substantially similar in sound, appearance and meaning.
Although we have compared the marks in their entireties,
there is nothing improper in giving more weight to a
particular feature of a mark. In re National Data Corp.,
Ser No. 76409236
8
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the
present case, the identical NEXOS portion dominates each
mark. The NEXOS portion in applicant’s mark is much larger
in size than the AMERICAN AIRLINES portion, and NEXOS would
be the portion used in calling for the magazine. As for
registrant’s mark, NEXOS is the only literal feature of the
mark. The stylization of the letters comprising the NEXOS
portions of the respective marks is similar in that lower
case letters are used. Moreover, the design features of
the marks are clearly insufficient to distinguish them in
appearance. Insofar as meaning is concerned, NEXOS would
convey the same meaning in each mark, that is,
“connections.” This term appears to be arbitrary when used
for magazines or is, at worst, only slightly suggestive.
In this regard, we note that the record is devoid of any
evidence of third-party uses or registrations of the same
or similar mark in the printed publication field.
In sum, the marks, when considered in their
entireties, are similar in sound, appearance and meaning,
and convey similar overall commercial impressions.
One of applicant’s main arguments is that the marks
are distinguishable due to the presence in applicant’s mark
of its famous house mark AMERICAN AIRLINES. In response,
we note the general rule that the addition of a house mark
Ser No. 76409236
9
to one of two otherwise confusingly similar marks will not
serve to avoid a likelihood of confusion. See, e.g.: In
re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986).
Exceptions are made to this general rule, however, if (1)
there are some recognizable differences in the conflicting
product marks, i.e., the marks being used for the specific
goods, or if (2) the product marks are merely descriptive
or highly suggestive or play upon commonly used or
registered terms, so that the addition of the house mark
may be sufficient to render the marks as a whole
distinguishable. See: In re Christian Dior, S.A., 225
USPQ 533 (TTAB 1985) and the cases cited therein.
In the present case, the addition of the purportedly
famous AMERICAN AIRLINES mark does not sufficiently
distinguish the marks. The AMERICAN AIRLINES portion, as
noted above, is dwarfed by the much larger font of the term
NEXOS. In addition, neither of the exceptions is
applicable herein. Firstly, the NEXOS portions are
identical in sound and meaning, and the stylization of the
NEXOS portions is similar. Further, the differing design
features in the respective marks are hardly a basis upon
which to distinguish the marks. Secondly, NEXOS is not
merely descriptive or highly suggestive when applied to
magazines.
Ser No. 76409236
10
In finding that the marks are confusingly similar, we
have kept in mind that consumers for magazines include
ordinary consumers who, due to the normal fallibility of
human memory over time, retain a general rather than a
specific impression of trademarks encountered in the
marketplace. Thus, applicant’s side-by-side, detailed
comparison of the marks, which is not how consumers will
encounter and analyze the marks, is not persuasive.
Although applicant’s attorney has represented that
there have been no instances of actual confusion over five
years of contemporaneous use, such unsubstantiated
statement is entitled to little weight. In re Majestic
Drilling Co., supra at 1205 [“With regard to the seventh
DuPont factor, we agree with the Board that Majestic’s
uncorroborated statements of no known instances of actual
confusion are of little evidentiary value.”]. In any
event, we have no information of record concerning the
nature and extent of applicant’s and registrant’s use so as
to accurately gauge whether there has been a meaningful
opportunity for actual confusion to have occurred. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992).
We conclude that consumers familiar with registrant’s
magazines in the field of arts, literature, science,
Ser No. 76409236
11
politic analysis and cultural issues sold under its mark
NEXOS and design would be likely to believe, upon
encountering applicant’s AMERICAN AIRLINES NEXOS and design
mark for an inflight magazine, that the magazines
originated with or are somehow associated with or sponsored
by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra; and
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.