Amvescap PLC

Trademark Trial and Appeal Board

Feb 19, 2004

No. 76214007 (T.T.A.B. Feb. 19, 2004)

Mailed: February 19, 2004
Hearing: Paper No. 19
October 29, 2003 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Amvescap PLC
________
Serial No. 76214007
_______
Lesley S. Craig and Ian L. Saffer of Townsend and Townsend
and Crew LLP for Amvescap PLC.
Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______
Before Hairston, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Amvescap PLC has filed a trademark application to
register the mark INVESCO FIELD AT MILE HIGH for “providing
facilities for sporting events, namely football games and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76214007
2
soccer matches; providing facilities for entertainment
events, namely music concerts.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the mark MILE HIGH STADIUM previously registered
for “providing stadium facilities for sports and
recreational activities,”2 as to be likely to cause
confusion, mistake or deception, if applicant’s mark is
used in connection with the identified services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing
was held. We reverse the refusal to register.
Preliminarily, we must discuss an evidentiary matter.
The Examining Attorney has objected to the portion of
applicant’s brief relating to the “history” surrounding
1 Serial No. 76214007, filed February 21, 2001, based on a bona
fide intention to use the mark in commerce. The word “FIELD” has
been disclaimed apart from the mark as shown. The application
originally included goods in a number of classes, but the classes
to which no objection were raised, were subsequently divided out
of the application so that they could proceed to publication
without waiting for disposition of the present appeal.
2 Registration No. 2,291,174 issued November 9, 1999. The word
“STADIUM” is disclaimed apart from the mark as shown.
Ser No. 76214007
3
MILE HIGH STADIUM and INVESCO FIELD AT MILE HIGH. The
material is derived from websites and applicant included
the website addresses. However, the Examining Attorney has
objected thereto contending that the material may not be
considered in the absence of actual printouts from the
websites. We note that applicant included this same
historical information, along with the website addresses,
in its request for reconsideration and the Examining
Attorney made no objection at that time. Under the
circumstances, we consider the Examining Attorney to have
waived any objections.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. duPont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering
the evidence of record on these factors, we keep in mind
that the “[f]undamental inquiry mandated by Section 2(d)
goes to the cumulative effects of differences in the
essential characteristics of the goods and the differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the services, applicant does not
dispute that its services, i.e., “providing facilities for
Ser No. 76214007
4
sporting events, namely football games and soccer matches;
providing facilities for entertainment events, namely music
concerts,”3 are essentially identical to the services in the
cited registration, i.e., “providing stadium facilities for
sports and recreational activities.” Thus, our inquiry in
this case focuses on the marks of applicant and registrant.
With respect to the marks, the Examining Attorney
maintains that:
The registered mark consists of the term MILE HIGH
in connection with the generic term for stadium
services, STADIUM. The applicant has merely
added the name of the field to the registered
stadium name and omitted the generic term
for the services. It is well settled that the
mere addition of a term to a registered mark
is not sufficient to overcome a likelihood of
confusion under Section 2(d). [citations
omitted]. The impression of the applicant’s
mark when used in connection with its services
is INVESCO FIELD AT MILE HIGH STADIUM services,
which has a highly similar commercial impression
to MILE HIGH STADIUM stadium services. Merely
adding the field name and omitting a generic word
is insufficient to obviate the likelihood of
confusion.
(Brief, page 5.)
Further, while the Examining Attorney acknowledges
that Denver is located approximately a mile above sea
level, she disagrees with applicant that users of
applicant’s services would view the “AT MILE HIGH” portion
3 Although the application was filed as an intent-to-use
application, applicant states that it commenced use of its mark
in 2001.
Ser No. 76214007
5
of applicant’s mark as suggesting that the stadium is
located a mile above sea level.
In support of the 2(d) refusal, the Examining Attorney
made of record excerpts from the NEXIS database. The
excerpts fall into two categories, the first set of which
contain references to “Invesco Field at Mile High Stadium.”
According to the Examining Attorney, these are references
to applicant’s services, and they demonstrate the manner in
which applicant’s mark is perceived. The following are
representative examples:
Yes, Graham rallied Washington from a 10-point
deficit to a 17-10 upset of Denver in the wintry
mix yesterday at Invesco Field at Mile High
Stadium.
(The Washington Times, November 19, 2001);
CoCal has done work at the U.S. Olympic Complex,
Palomino Park, Rock Creek Ranch, Interlocken,
Invesco Field at Mile High Stadium, and
Mountain View Corporate Center.
(Northern Colorado Business Report,
November 2, 2001);
In Colorado, voters approved the sale of $260
million of sales tax revenue bonds in 1998 to
finance construction of Invesco Field at Mile
High Stadium for football’s Denver Broncos.
(The Bond Buyer, October 9, 2001); and
As Denver owner Pat Bowlen took yet another
tour of his new Invesco Field at Mile High
Stadium, he knew something was missing.
(The Houston Chronicle, September 16, 2001).
Ser No. 76214007
6
The second set of excerpts assertedly contain
references to registrant’s services as simply “Mile High”.
According to the Examining Attorney, because these excerpts
show that persons commonly refer to registrant’s services
as simply “Mile High”, when MILE HIGH is used in
applicant’s mark, it will be perceived as referring to MILE
HIGH STADIUM. The following are representative examples:
Elway has not lost a home game since January
1997. He has won 17 in a row at Mile High since
then.
(The Dallas Morning News, January 17, 1999);
For 16 of the past 17 games at Mile High,
Richard Stewart, Broncos media relations
assistant, has shaved his head the morning
before each home game.
(The Denver Post, December 27, 1977); and
96: Head coaches and assistant coaches for
Broncos who prowled the sidelines at Mile High
since 1960.
(Denver Rocky Mountain News, December 23, 2000).
Applicant, in urging reversal of the refusal to
register, argues that the marks differ significantly in
sound, appearance and commercial impression; that in
comparing the marks the Examining Attorney has improperly
dissected the marks; that the common element MILE HIGH is a
weak term such that the cited mark is entitled to a limited
scope of protection;, and that the history surrounding
Ser No. 76214007
7
registrant’s services and applicant’s services demonstrates
that there is no likelihood of confusion.
Applicant submitted a number of exhibits in support of
its position. Specifically, applicant submitted Denver
“Yellow Pages” listings of businesses and organizations
with “Mile High” in their names; the results of a GOOGLE
search of businesses, organizations, and events with “Mile
High” in their names; printouts of the websites of
businesses with “Mile High” in their names; and copies of
third-party registrations for marks which include the
phrase “MILE HIGH.”
The test for confusing similarity is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impressions
that confusion as to the source of the services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well settled that one feature of a mark may be more
significant than another, and it is not improper to give
Ser No. 76214007
8
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Although the respective marks have the element MILE
HIGH in common, we agree with the applicant that INVESCO
FIELD AT MILE HIGH and MILE HIGH STADIUM convey different
commercial impressions. We find the Examining Attorney’s
analysis of the marks to be far too formulaic. This
analysis ignores the significance of the term INVESCO in
applicant’s mark and the fact that the phrase MILE HIGH has
geographic significance as used in connection with
applicant’s and registrant’s services.
Because of the highly descriptive if not generic
nature of the word STADIUM, users of registrant’s services
will look to MILE HIGH as the source-identifying component
of registrant’s mark. They are also likely to use just
MILE HIGH when calling or referring to the place where
registrant’s services are provided, as it is this term they
will note and remember. Indeed, the evidence submitted by
the Examining Attorney demonstrates that the place where
registrant’s services have been provided has been referred
to as just MILE HIGH. We note, at this point, that we
refer to MILE HIGH and MILE HIGH STADIUM as the place where
Ser No. 76214007
9
registrant’s services have been provided rather than are
provided. This is because it is abundantly clear from the
record that that particular stadium no longer exists, the
significance of which we discuss, infra.
The applicant’s mark INVESCO FIELD AT MILE HIGH
contains the highly descriptive, if not generic word FIELD,
in addition to MILE HIGH, but because the mark begins with
the term INVESCO, it is this term that is the more dominant
portion of applicant’s mark. It is often the first part of
a mark that is most likely to be impressed upon the mind of
a purchaser and remembered. See Presto Products Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988);
and Mine Safety Appliances Co. v. Management Science
America, Inc., 212 USPQ 105, 108 (TTAB 1987). Moreover,
because consumers have a propensity to shorten names with
which they have become familiar, many are likely to use
INVESCO FIELD to refer to applicant’s services.
When the marks are compared in their entireties,
giving appropriate weight to the dominant portions of both
marks, they differ in sound, appearance, connotation and
overall commercial impression.
In reaching this conclusion, we acknowledge that the
phrase MILE HIGH is present in both applicant’s and
registrant’s marks, and indeed is the dominant portion of
Ser No. 76214007
10
registrant’s mark. However, MILE HIGH is not an arbitrary
term. Rather, the phrase has a geographic significance
because Denver’s elevation has led to it being known as the
“Mile High City”. The evidence submitted by applicant
shows that there are many businesses, organizations, and
events located in the Denver area with “Mile High” in their
names. Thus, the inclusion in each mark of this phrase is
an insufficient basis upon which to base a finding of
likelihood of confusion, because Denver area consumers can
differentiate one “Mile High” facility from another.
Finally, in reaching our conclusion, we cannot
overlook the fact that MILE HIGH STADIUM itself has been
demolished; a fact that users of applicant’s facility are
likely to be aware of. Moreover, as the material made of
record by applicant shows, the construction/naming of the
new stadium INVESCO FIELD AT MILE HIGH has been the subject
of numerous articles in the Denver press and a good deal of
controversy. In fact, the record reveals that prospective
Denver area attendees of outdoor sporting or entertainment
events would be well aware that the facility where
registrant’s services are offered is different from the now
demolished facility where registrant’s services were
previously provided. Likewise, they would be well aware
that applicant’s facility includes the term MILE HIGH in
Ser No. 76214007
11
its name as a method of paying homage to the former
facility of registrant. The duPont factors include a
catch-all factor of “[a]ny other established fact probative
of the effect of use.” The circumstances under which
applicant obtained the naming rights for a new stadium
built adjacent to a former stadium, and adopted the
dominant portion of the old stadium’s name is such a factor
in this case. Any likelihood of confusion is de minimis.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed.