American Automobile Association, Inc.

Trademark Trial and Appeal Board

Mar 30, 2021

88371115 (T.T.A.B. Mar. 30, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 30, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re American Automobile Association, Inc.
_____

Serial No. 88371115
_____

Lawrence E. Laubscher, Jr. of Laubscher & Laubscher, P.C.,
for American Automobile Association, Inc.
Joseph Greene, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____

Before Zervas, Cataldo, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
American Automobile Association, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark AAA TRAVELS WITH YOU (in standard characters)
for:
Travel agency services, namely, making reservations and
bookings for transportation; travel agency services,
namely, making reservations and bookings for cruises, in
International Class 39; and
Travel agency services, namely, making reservations and
bookings for restaurants and meals; providing travel
Serial No. 88371115
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lodging information services and travel lodging booking
agency services for travelers, in International Class 43.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the travel agency services identified in the application, so resembles the mark
INSURANCE THAT TRAVELS WITH YOU for “insurance agency services in the
fields of travel, life, and health,” in International Class 36,2 on the Principal Register
as to be likely to cause confusion, to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In its appeal brief, Applicant requests the Board take judicial notice of 79 prior
registrations which it implies are owned by Applicant, particularly Registration Nos.
0829265, 1327400, and 2120266 which were identified, and of which Applicant
claimed ownership, in the original application.3 The Examining Attorney “objects to
the Board’s consideration of any of Applicant’s previous registrations aside from those

1 Application Serial No. 88371115 was filed on April 4, 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as July 1, 2018.
2 Registration No. 5701926, issued March 19, 2019.
3 Appeal Brief, pp. 6-7 (7 TTABVUE 7-8); April 4, 2019 Application TSDR 2.
Citations to the briefs in the appeal record refer to the TTABVUE docket system. Citations
to the prosecution file refer to the .pdf version of the TSDR system record.
Serial No. 88371115
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[three] mentioned in the original application” because Applicant did not submit copies
of the prior registrations during prosecution of the application nor did it request
remand of the application to introduce the registrations for further examination.4 In
reply, Applicant argues that the objection is “irrelevant” because the registrations are
Applicant’s own, and not third-party registrations.5
The objection is sustained. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The
record in the application should be complete prior to the filing of an appeal.”). It is
the Board’s well-established practice not to take judicial notice of registrations that
reside in the USPTO. This practice includes “registrations owned by the applicant . . .
that are not the subject of the appeal.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (TBMP) § 1208.02 (2020).
Although Registration Nos. 0829265, 1327400, and 2120266 were claimed as
active prior registrations in the application,6 these registrations were not made of
record during examination. Nonetheless, because these registrations are not subject
to the Examining Attorney’s objection, and Applicant mentions Registration Nos.
0829265, 1327400, and 2120266 in its appeal brief, we will treat these three
registrations as though they are of record. See In re Olin Corp., 124 USPQ2d 1327,
1335 n.22 (TTAB 2017) (although registrations owned by applicant were not made of
record, Board considered them because applicant and examining attorney addressed

4 Examiner’s Statement, unnumbered p. 17, (9 TTABVUE 18)
5 Reply Brief, p. 7 (10 TTABVUE 8).
6 April 4, 2019 Application, TSDR 2.
Serial No. 88371115
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them without objection). However, because none of the registrations was submitted,
we do not know what the actual registered marks are other than they may “include”7
the term AAA either as “the entirety of a mark [or] a portion of a mark”;8 and we do
not know what the registered services are, but we presume they include “automobile
clubs”9 and/or “travel agency services.”10
Similarly, while the declaration of James G. Brehm, Applicant’s General Counsel,
states that Applicant “and its affiliates own at least 79 U.S. federal service mark
registrations . . . that include AAA,”11 none of these registrations was made of record.
We do not know which registrations are owned by Applicant and which are owned by
“its affiliates,”12 and how many may be cancelled or expired, nor do we know what the
registered services are, but we presume they, too, include automobile clubs and/or

7 Declaration of James G. Brehm ¶ 7, July 28, 2020 Request for Reconsideration TSDR 8; 7
TTABVUE 7.
8 10 TTABVUE 7.
9 Brehm Decl’n ¶¶ 3-5, 8, July 28, 2020 Request for Reconsideration TSDR 8.
10 7 TTABVUE 7.
11 Brehm Decl’n ¶ 7, July 28, 2020 Request for Reconsideration TSDR 8.
12 While Mr. Brehm stated that Applicant’s marks “are used by the affiliated independent
automobile clubs under license agreements with [Applicant],” id. at ¶ 8, he also stated that
the 79 registrations are owned by “[Applicant] and its affiliates.” Id. at ¶ 7. We cannot
determine the probative value of any of the registrations – except Registration Nos. 0829265,
1327400, and 2120266, the three definitively claimed by Applicant – because of the question
of ownership. Applicant has not explained if its “affiliates” are “related companies.” See 15
U.S.C. § 1055 (legitimate use controlled by owner of the mark inures to the benefit of the
owner). “The term ‘related company’ means any person whose use of a mark is controlled by
the owner of the mark with respect to the nature and quality of the goods or services on or in
connection with which the mark is used.” Trademark Act Section 45, 15 U.S.C. § 1127.
However, a mere licensee is not the owner of a mark and is therefore not entitled to
registration. See Marcon Ltd. v. Avon Prods. Inc., 4 USPQ2d 1474, 1477 (TTAB 1987) (“[A]
licensee is not the owner of a mark and only the owner (the licensor here) may register a
trademark.”).
Serial No. 88371115
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travel agency services. We will consider the information in the Brehm Declaration
relating to Applicant’s registrations for whatever evidentiary value it may have.
II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is
evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d
1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern
is not only to prevent buyer confusion as to the source of the services, but also to
protect the registrant from adverse commercial impact due to use of a similar mark
by a newcomer. In re Country Oven, 2019 USPQ2d 443903, *2-3 (TTAB 2019) (citing
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)).
In any likelihood of confusion analysis, varying weights may be assigned to each
DuPont factor depending on the evidence presented, see Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011), and Shell Oil,
26 USPQ2d at 1688, but two key considerations are the similarities between the
marks and the similarities between the services. See In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); In re Ox Paperboard, LLC, 2020
USPQ2d 10878, *3 (TTAB 2020). Applicant focuses on these two key factors.
Serial No. 88371115
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A. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ
at 567). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F.
App’x 516 (Fed. Cir. 2019).
When comparing Applicant’s AAA TRAVELS WITH YOU mark to Registrant’s
INSURANCE THAT TRAVELS WITH YOU mark, the proper test regarding
similarity “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed.
Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks and citation omitted)).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of trademark marks. In re St. Julian Wine Co., 2020
USPQ2d 10595, *4 (TTAB 2020). Consumers may not necessarily encounter the
marks in close proximity and must rely upon their recollections thereof over time. In
re Mucky Duck Mustard, 6 USPQ2d 1467, 1468 (TTAB 1988). Here, the respective
Serial No. 88371115
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services are rendered to the average consumers who seek to travel and to insure their
trip investments and themselves against unexpected emergencies while traveling.
The Examining Attorney argues that the marks share the identical and distinctive
phrase “travels with you,” which, he argues, is the dominant feature of each mark.13
The Examining Attorney posits that the phrase “travels with you” engenders the
same connotation and overall commercial impression when considered in connection
with the respective services, specifically that “the customer may utilize the associated
services at any time during a trip or vacation,”14 and the “services are always
available to consumers while they are on a trip or vacation.”15
“[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). Because the
similarity or dissimilarity of the marks is determined based on the marks in their
entireties, “our analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on a comparison of the entire
marks, not just part of the marks.” Ox Paperboard, 2020 USPQ2d 10878 at *4 (citing
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014)). However, “there is nothing improper in stating that . . .
more or less weight has been given to a particular feature of a mark, provided the

13 Examiner’s Statement, unnumbered p. 5, (9 TTABVUE 6).
14 9 TTABVUE 7.
15 9 TTABVUE 10.
Serial No. 88371115
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ultimate conclusion rests on consideration of the marks in their entireties.” Stone
Lion, quoting In re Nat'l Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant
on the one hand accuses the Examining Attorney of dissecting the marks by focusing
on the common wording TRAVELS WITH YOU, but then Applicant itself appears to
dissect its mark by focusing on the AAA portion and virtually ignoring the common
wording.
The marks are similar in sound and appearance to the extent that they are
structured similarly and are unitary slogans which both end with the wording
TRAVELS WITH YOU. We find that the TRAVELS WITH YOU phrase gives each
mark its overall meaning, connotation, and commercial impression, with each mark
suggesting the same concept: travel-related services and their providers that
metaphorically accompany the customer while traveling – in Registrant’s case it is
insurance, in Applicant’s it is reservations, bookings, and information services. This
accompaniment is a desirable feature, as travelers are not left on their own but may
be comforted, achieving peace of mind, by knowing they have purchased a service
(and its source) that will accompany them while traveling. Indeed, one of Applicant’s
specimens explains: “With the largest full-service leisure travel agency behind you,
your trip is easy to plan, easy on the wallet, and easy on the mind. AAA Travels With
you.”16 Similarly, Registrant’s website explains: “[W]e make sure that you are always
protected [under] the insurance umbrella so that you can focus on what is important

16 December 18, 2019 Specimen TSDR 3.
Serial No. 88371115
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to you and your family. . . . [We] evaluate your specific needs, find the best plan that
will give you complete protection and peace o[f mind.]”17
Applicant argues that the leading term AAA in its mark is “independently
registered” as “the subject of multiple registrations owned by” Applicant, “inherently
distinctive,” and “famous in the travel agency industry” due to long-term use and
multiple registrations;18 and that Applicant has created a AAA “family of marks.”19
Therefore, Applicant posits, the leading AAA portion of its mark is the dominant
portion of its mark,20 and consumers will immediately associate AAA with
Applicant.21
The presence of AAA in Applicant’s does not sufficiently alter the shared
connotation or commercial impression. Each mark is a whole, unitary phrase
endowed with a single commercial impression: Registrant’s INSURANCE THAT
TRAVELS WITH YOU suggests that insurance protection remains with the customer
while traveling, and Applicant’s AAA TRAVELS WITH YOU suggests that AAA and
its services remain with the customer while traveling. It is this latter point that
Applicant emphasizes in suggesting its mark is significantly different from
Registrant’s; specifically, Applicant argues that its separate AAA mark (or nickname)

17 July 28, 2020 Request for Reconsideration TSDR 12 (visitorplans.com).
18 7 TTABVUE 7.
19 7 TTABVUE 9.
20 7 TTABVUE 10.
21 7 TTABVUE 9
Serial No. 88371115
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is so famous that consumers in the relevant travel fields will know the source of
Applicant’s services is, in fact, Applicant – and not any other entity.22
There is no per se rule as to how the addition of a house mark to similar service
marks affects the analysis of whether marks are similar or dissimilar. See In re Fiesta
Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007). The Board has described the
different effects the addition of a house mark or designer name to a registered mark
can have in a likelihood of confusion case:
[S]uch addition may actually be an aggravation of the
likelihood of confusion as opposed to an aid in
distinguishing the marks so as to avoid source confusion.
On the other hand, where there are some recognizable
differences in the asserted conflicting product marks or the
product marks in question are highly suggestive or merely
descriptive or play upon commonly used or registered
terms, the addition of a housemark and/or other material
to the assertedly conflicting product mark has been
determined sufficient to render the marks as a whole
sufficiently distinguishable.”
Id. (quoting In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations
omitted) (addition of house mark DIOR found in applicant’s mark LE CACHET DE
DIOR for shirts does not obviate likely confusion with CACHET for dresses and
toiletries)).
The Examining Attorney argues that AAA is Applicant’s house mark, and
“including a house mark in an otherwise confusingly similar mark will not obviate a
likelihood of confusion under Section 2(d).”23 Even assuming Applicant’s arguments

22 7 TTABVUE 8; 10 TTABVUE 8.
23 9 TTABVUE 7.
Serial No. 88371115
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that its AAA mark is well-known within the United States, such fame may engender
reverse confusion with the mark of the cited registration. See Shell Oil, 26 USPQ2d
at 1690 (“The term ‘reverse confusion’ has been used to describe the situation where
a significantly larger or prominent newcomer ‘saturates the market’ with a
trademark that is confusingly similar to that of a smaller, senior registrant for related
goods or services.”). Use of a house mark does not generally obviate confusion, as it is
likely that services sold under Registrant’s and Applicant’s marks would be
attributed to the same “house” source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-
49 (TTAB 2007); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216
USPQ 168 (TTAB 1982) (finding likelihood of confusion between SKIN SAVERS for
face and throat lotion and MENNEN SKIN SAVER for cosmetic and toilet
preparations, namely, hand and body lotion). The addition of even a famous house
mark by the junior party does not obviate a finding of likelihood of confusion. See
DuPont, 177 USPQ at 567 (DuPont factors only list fame of the prior mark as
relevant to the analysis). “[E]ven if [the fame of Applicant’s house mark, AAA] had
been shown to be the case, it would only serve to aggravate the likelihood of confusion
that would arise from the contemporaneous use of the marks on the respective
[services].” Christian Dior, 225 USPQ at 535. That is, if an applicant’s fame were to
be considered, a newcomer could unfairly wrest ownership of a prior user’s mark
merely by spending more on advertising. Thus, “[a] junior party’s fame cannot excuse
likelihood of confusion created by its use of a mark similar to one already in use.”
Serial No. 88371115
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Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1602 (TTAB
2011).
Applicant argues that the cited mark “is highly suggestive and potentially
descriptive” and thus should be afforded “a narrow scope of protection and reach”
such that the presence of the distinctive AAA portion of Applicant’s mark will avoid
confusion with the cited mark.24 Applicant submitted no evidence that the registered
mark, or the TRAVELS WITH YOU element of the mark, is commonly adopted by
many different parties so as to indicate the common element has some non-source
identifying significance that undermines its conceptual strength as an indicator of a
single source. See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA
v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015); Palm Bay Imps., 73 USPQ2d at 1693. Cf. Knight Textile Corp.
v. Jones Inv. Co., 75 USPQ2d 1313 (TTAB 2005) (NORTON MCNAUGHTON
ESSENTIALS for ladies’ sportswear not confusingly similar to ESSENTIALS for
women’s clothing because ESSENTIALS is highly suggestive for clothing based on 23
third-party registrations owned by 21 different owners of marks with ESSENTIALS
and dictionary definition of “essentials”). Instead, Applicant merely argues that
Registrant’s services are specifically for use with travel and therefore the cited mark
“identifies insurance products that apply to, and are intended for, issues that may

24 7 TTABVUE 12.
Serial No. 88371115
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arise during travel.”25 Given the nature of the services, we find the cited mark, as
well as Applicant’s mark, both evoke travel, and the memorable commercial
impression is the metaphorical suggestion that the source and its services, once
purchased, will travel with the consumer. While both Applicant’s mark and
Registrant’s mark are suggestive of travel, we do not find either mark to be highly
suggestive or merely descriptive on this appeal record.26
While the cited mark is suggestive, it nonetheless remains inherently distinctive
as applied to Registrant’s services. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
U.S. 205, 54 USPQ2d 1065, 1068 (2000) (word marks that are suggestive are “held to
be inherently distinctive.”); Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23
USPQ2d 1081, 1083 (1992) (suggestive marks are deemed inherently distinctive).
And “if the mark is inherently distinctive, it is presumed that consumers will view it
as a source identifier.” Chippendales USA, 96 USPQ2d at 1685. Applicant has not
demonstrated that the cited mark is commercially or conceptually weak. We therefore
accord it a normal scope of protection.
Moreover, we note that the cited mark “is registered on the Principal Register
[and] is entitled to all Section 7(b) presumptions, including the presumption that the
mark is distinctive and moreover, in the absence of a Section 2(f) claim in the

25 7 TTABVUE 12.
26 See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010)
(“In general, trademarks are assessed according to a scale formulated by Judge Friendly in
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 764 (2d Cir.
1976), which evaluates whether word marks are ‘arbitrary’ or ‘fanciful,’ ‘suggestive,’
‘descriptive,’ or ‘generic.”’).
Serial No. 88371115
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registration, that the mark is inherently distinctive for the [services].” Tea Bd. of
India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). The registration
did not issue on the basis of a showing of acquired distinctiveness under § 2(f), and
Registrant’s INSURANCE THAT TRAVELS WITH YOU mark is thus presumed to
be inherently distinctive. Id. Despite Applicant’s protestation that “it is not
challenging the validity of the registered mark,”27 Applicant’s claim that the cited
mark is “potentially descriptive” is an impermissible collateral attack on the validity
of the registration, which we cannot entertain in the absence of a petition to cancel
it. See, e.g., Fiesta Palms, 85 USPQ2d at 1363, and cases cited therein.
We find that the commercial impression of the marks considered as a whole is
highly similar, if not the same, in connection with travel-related services. See In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004)
(“The Board must, of course, determine the commercial impression of a mark in the
proper context of the goods or services associated with that mark.”) (citation omitted).
The leading differences in the marks (i.e., AAA for Applicant’s mark and
INSURANCE THAT for Registrant’s) do not change the commercial impression when
the marks in their entireties are considered in relation to the respective travel-related
services. Cf., Coach Servs. v. Triumph Learning, 96 USPQ2d 1600 (TTAB 2010), aff’d,
101 USPQ2d 1713 (Fed. Cir. 2012) (COACH for educational software does not dilute
or create likelihood of confusion with COACH for handbags, luggage, etc.); In re Sears,

27 10 TTABVUE 8.
Serial No. 88371115
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Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) (CROSSOVER for brassieres creates a
different commercial impression from CROSSOVER for ladies’ sportswear).
Once again, even assuming the notoriety of AAA in Applicant’s mark and that
AAA may point to Applicant as the source of the travel agency services, the
commercial impression of Applicant’s mark remains the same as the commercial
impression of Registrant’s mark. With the addition of AAA to the term “travels with
you,” it likely that consumers already familiar with Registrant’s INSURANCE THAT
TRAVELS WITH YOU mark for travel-related insurance services would, upon
encountering Applicant’s AAA TRAVELS WITH YOU mark on related travel
services, would likely mistakenly believe that the TRAVELS WITH YOU element
refers to the same service provider. See, e.g., In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic
apparatus, and TITAN for medical ultrasound device, likely to cause confusion, where
addition of applicant’s “product mark” VANTAGE to the registered mark would not
avoid confusion because “[i]t is more likely to be considered another product from the
previously anonymous source of TITAN . . . medical ultrasound devices.”); In re
Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant’s mark,
SPARKS BY SASSAFRAS (stylized), for clothing, and registrant’s mark, SPARKS
(stylized), for footwear, likely to cause confusion, noting that “[t]hose already familiar
with registrant’s use of its mark in connection with its goods, upon encountering
applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some
sort of house mark that may be used with only some of the ‘SPARKS’ goods”); In re
Serial No. 88371115
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Riddle, 225 USPQ 630, 632 (TTAB 1985) (holding RICHARD PETTY’S ACCU TUNE
and design for automotive service stations, and ACCU-TUNE for automotive testing
equipment, likely to cause confusion).
In sum, although we have pointed to the identical portions of the marks, we
acknowledge the fundamental rule that the marks must be considered in their
entireties. See Jack Wolfskin, 116 USPQ2d at 1134 (Fed. Cir. 2015); Massey Junior
Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 273-74 (CCPA
1974). We note the specific differences pointed out by Applicant. These differences,
however, are outweighed by the similarities of the marks, especially their highly
similar commercial impressions. Thus, when comparing the marks overall, we find
that they are similar in sound, meaning, connotation, and overall commercial
impression due to their similar structure and common wording.
The first DuPont factor weighs in favor of finding a likelihood of confusion.
B. The Services, Channels of Trade, and Classes of Customers
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont,
177 USPQ at 567), while the third DuPont factor considers “the similarity or
dissimilarity of established, likely-to-continue trade channels.”’ Id. at 1052 (quoting
DuPont, 177 USPQ at 567). See also Stone Lion Capital Partners v. Lion Capital, 110
USPQ2d at 1161-63.
Serial No. 88371115
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Applicant’s identified services, once again, are “travel agency services, namely,
making reservations and bookings for transportation[,] . . . cruises[,] . . . restaurants
and meals; providing travel lodging information services and travel lodging booking
agency services for travelers.” Registrant’s identified services are “insurance agency
services in the fields of travel, life, and health.”
To support his position that the services are related, complementary, emanate
from the same source, and are sold and marketed through the same channels of trade
to the same or overlapping classes of customers, the Examining Attorney adduced
evidence from Applicant’s websites showing that Applicant itself “provides travel
agency services related to transportation and restaurant and lodging reservations, as
well as life, health, and travel insurance services.”28 We further observe that one of
Applicant’s substitute specimens shows the AAA TRAVELS WITH YOU mark on the
same page on which Applicant advertises both travel insurance services and lodging
and transportation travel agency services.29
The Examining Attorney also adduced third-party evidence from Superior Travel,
BlueWalk, Cruise Planners, and American Express establishing not only that
Applicant’s travel agency services and Registrant’s travel insurance services are
complementary, but that the same entity commonly provides and markets those

28 9 TTABVUE 12. See June 19, 2019 Office Action TSDR 9-10 (flight, hotel, rental car, and
cruise booking), 11 (travel insurance), and 13 (life & health and travel insurance).
29 December 18, 2019 Specimen, TSDR 1 (hotels, car rentals, and “[t]ravel insurance
purchased through AAA Travel can free you to make the most of your vacation with greater
peace of mind.”).
Serial No. 88371115
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services under the same mark, through the same trade channels, and to overlapping
classes of consumers.30
While Applicant concedes that the services “may be related to the extent that there
are some businesses that offer travel agency services and also offer travel insurance
products related to the travel agency services,”31 it argues that the “degree of
relatedness [of the services] is minimal”32 and “not sufficiently similar in
consideration of the differences between the marks.”33 Applicant then attempts to
limit Registrant’s services to “stand-alone medical and life insurance products” and
claims that “Registrant does not offer the travel services as recited in [the]
application.”34 Because the travel agency services in the application and the travel
insurance agency services in the registration have been shown to be complementary,
commonly offered by the same entity, and marketed under the same mark, through
the same trade channels, and to the same or overlapping classes of consumers, there
is no need for the Examining Attorney or the Board to further consider the
relatedness of Applicant’s services with the life and health insurance services
identified in the registration. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may

30 See February 3, 2020 Office Action TSDR 9-23 ( travel insurance, air
transportation and cruise booking), 33-44 ( cruise, air, and hotel booking;
travel insurance), 45-50 ( cruise booking, travel insurance), 51-56
( travel booking, travel insurance).
31 7 TTABVUE 13.
32 7 TTABVUE 14.
33 7 TTABVUE 13.
34 7 TTABVUE 13.
Serial No. 88371115
- 19 -
sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must
be found if there is likely to be confusion with respect to any item that comes within
the identification of goods or services in the application).
Further, while the record does not reveal if Registrant also offers travel agency
services, the record demonstrates that Applicant and several third-parties offer travel
agency and travel insurance services. The issue is not whether travel agency and
travel insurance services are likely to be confused; it is “whether ‘the consuming
public may perceive [the respective goods or services of the parties] as related enough
to cause confusion about the source or origin of the goods and services.”’ St. Helena
Hosp., 113 USPQ2d at 1086 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)). Applicant notes that its services
and Registrant’s services “are not identical.”35 However, it is not necessary that the
respective services be identical or competitive, or even that they move in the same
channels of trade, to support a holding of likelihood of confusion. Rather, it is
sufficient that the respective services are related in some manner, or that the
conditions and activities surrounding the marketing of the services are such that they
would or could be encountered by the same persons under circumstances that could
give rise to the mistaken belief that they originate from the same source. DeVivo v.
Ortiz, 2020 USPQ2d 10153, *11 (TTAB 2020) (citing Coach Servs. v. Triumph

35 7 TTABVUE 14.
Serial No. 88371115
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Learning, 101 USPQ2d 1713 at 1722); In re Thor Tech Inc., 90 USPQ2d 1634, 1635
(TTAB 2009).
The record establishes that the respective travel services are related,
complementary, emanate from the same source, and are sold and marketed through
the same channels of trade to the same or overlapping classes of customers. In view
thereof, the second and third DuPont factors also weigh in favor of finding a likelihood
of confusion.
C. Summary
We have considered the record and the relevant likelihood of confusion factors,
and all of Applicant’s arguments relating thereto. We find the cited mark to be
suggestive but inherently distinctive, and entitled to a normal scope of protection.
When comparing in their entireties the cited INSURANCE THAT TRAVELS WITH
YOU mark with Applicant’s AAA TRAVELS WITH YOU mark, we find that while
there are obvious differences, they marks are nonetheless more similar than
dissimilar in sound, meaning, connotation, and overall commercial impression due to
their similar structure and common wording. We also find the respective services to
be related because they are complementary, commonly emanate from the same
source, and are sold and marketed through the same channels of trade to the same
or overlapping classes of ordinary customers. As such, we conclude that Applicant’s
mark AAA TRAVELS WITH YOU, as used in connection with “travel agency services,
namely, making reservations and bookings for transportation[,] . . . cruises[,] . . .
restaurants and meals; providing travel lodging information services and travel
Serial No. 88371115
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lodging booking agency services for travelers,” so resembles the cited mark
INSURANCE THAT TRAVELS WITH YOU for “insurance agency services in the
fields of travel . . . ,” as to be likely to cause confusion or mistake, or to deceive under
Section 2(d) of the Trademark Act.
Finally, we note that if there were any doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior registrant. In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010); In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
III. Decision
The refusal to register Applicant’s mark AAA TRAVELS WITH YOU is affirmed.