AssociatedCouriers, Inc.

Trademark Trial and Appeal Board

May 24, 2006

No. 76543954 (T.T.A.B. May. 24, 2006)

Mailed:
24 May 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Associated Couriers, Inc.
________

Serial No. 76543954
_______

Annette P. Heller, Esq. for Associated Couriers, Inc.

Giselle M. Agosto, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Bucher, Drost, and Cataldo, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 28, 2003, applicant Associated Couriers,
Inc. applied to register the mark ASSOCIATED COURIERS, INC.
in the stylization shown below for “courier services,
namely the pickup, delivery and storage of medical supplies
for use in nuclear medicine” in Class 39.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76543954
2
The application contains an allegation of a date of first
use anywhere and a date of first use in commerce of March
1977 and a disclaimer of the term “Couriers, Inc.”1
The examining attorney2 has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of twelve registrations owned
by the same entity, Associated Global Systems, Inc., for
the following marks.
I.
Reg. No. 2,132,367
Issued: January 27, 1998

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: September 12, 1983 (both)
Disclaimer: Courier Express
Status: Section 8 and 15 affidavits accepted or
acknowledged

II.
Reg. No. 1,722,538
Issued: October 6, 1992

1 Serial No. 76543954.
2 The current examining attorney was not the original examining
attorney in this application.
Ser No. 76543954
3

for: air and surface transportation and storage of goods
Class: 39
Dates of first use: June 1989 (both)
Disclaimer: Logistics
Status: Renewed

III.
Reg. No. 2,128,521
Issued: January 13, 1998

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: December 1, 1995 (both)
Disclaimer: Systems
Status: Section 8 and 15 affidavits accepted or
acknowledged

IV.
Reg. No. 2,127,265
Issued: January 6, 1998
Dates of first use: March 15 1982 (both)
Mark: ASSOCIATED INBOUND (typed)
for: air and truck transportation and the storage of goods
Class: 39
Disclaimer: Inbound
Status: Section 8 and 15 affidavits accepted or
acknowledged

V.
Reg. No. 2,128,871
Issued: January 13, 1998

Ser No. 76543954
4

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: October 1, 1958 (both)
Disclaimer: Air Freight Inc.
Status: Section 8 and 15 affidavits accepted or
acknowledged

VI.
Reg. No. 2,128,872
Issued: January 13, 1998

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: August 1, 1983 (both)
Disclaimer: Same Day
Status: Section 8 and 15 affidavits accepted or
acknowledged

VII.
Reg. No. 2,128,880
Issued: January 13, 1998

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: October 1, 1958 (both)
Disclaimer: Air Freight
Status: Section 8 and 15 affidavits accepted or
acknowledged

Ser No. 76543954
5
VIII.
Reg. No. 2,127,269
Issued: January 6, 1998

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: September 12, 1978 (both)
Disclaimer: Priority Overseas
Status: Section 8 and 15 affidavits accepted or
acknowledged

IX.
Reg. No. 2,127,273
Issued: January 6, 1998
Mark: ASSOCIATED SECOND DAY (typed)
for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: August 1, 1983 (both)
Disclaimer: Second Day
Status: Section 8 and 15 affidavits accepted or
acknowledged

X.
Reg. No. 2,127,274
Issued: January 6, 1998
Mark: ASSOCIATED OVERNIGHT (typed)
for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: August 1, 1983 (both)
Disclaimer: Overnight
Status: Section 8 and 15 affidavits accepted or
acknowledged

XI.
Reg. No. 2,171,163
Issued: July 7, 1998
Ser No. 76543954
6

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: March 30, 1987 (both)
Disclaimer: Parts Stock3
Status: Section 8 and 15 affidavits accepted or
acknowledged

XII.
Reg. No. 2,172,683
Issued: July 14, 1998

for: air and truck transportation and the storage of goods
Class: 39
Dates of first use: November 1, 1993 (both)
Disclaimer: International
Status: Section 8 and 15 affidavits accepted or
acknowledged

The examining attorney’s position is that:
“Applicant’s mark and registrant’s marks comprise the word
ASSOCIATED followed by disclaimed terms that are
descriptive or generic for the respective services. As
such, the marks are nearly identical.” Examining
Attorney’s Brief at unnumbered p. 3. Furthermore, the

3 We note that the word in the mark is “Partstock” and the
disclaimer is for the words “Parts Stock.”
Ser No. 76543954
7
examining attorney (Brief at unnumbered p. 10) argues that
the "identification of registrant's services is very broad,
[and] it is presumed that the registration encompasses all
goods and/or services of the type described, including
those in the applicant's more specific identification."
Specifically, the examining attorney concludes that we
“must proceed under the assumption that registrant’s
transportation and storage of goods services [do] indeed
include medical supplies for use in nuclear medicine.”
Examining Attorney’s Brief at unnumbered p. 11.
Applicant argues that although it “agrees that
ASSOCIATED has not been frequently adopted or diluted in
the courier industry, it is of no relevance because the
question is not whether ASSOCIATED has already been
diluted, but rather whether ASSOCIATED is capable of being
diluted due to its highly suggestive connotations.” Reply
Brief at 2. Applicant also argues that “shipping of
nuclear medicine requires a courier to obtain a special
license” and that purchasers of these services would
“perform some careful research.” Reply Brief at 5.
Finally, applicant maintains that there has been no actual
confusion between the marks of applicant and registrant
despite the fact that applicant has been ranked 48th among
Ser No. 76543954
8
carriers and the parties have co-existed for nearly three
decades. Reply Brief at 7.
Before we begin our analysis of the likelihood of
confusion issue, we first must address an evidentiary
question. In its brief (p. 9), applicant asserts that its
“conclusion is buttressed by the fact that there are
approximately 100 registered marks incorporating the term
ASSOCIATED that, in fact, co-exist and are used in
association with many types of goods and services.” The
examining attorney objects to applicant’s attempt to
introduce new evidence on appeal. The examining attorney
also notes that the term “Associated” is “neither
descriptive of the identified services in the application
or in the registrations, nor is it ‘diluted’ in the sense
that there are other ASSOCIATED marks in use for related
services. To the contrary, the only ASSOCIATED marks in
the relevant field that were identified by the examining
attorney were registrant’s family of twelve ASSOCIATED
marks.” Examining Attorney’s Brief at unnumbered p. 5. In
its reply brief (p. 2), applicant agrees that “Associated
has not been frequently adopted or diluted in the courier
industry.”
Ser No. 76543954
9
Regarding the examining attorney’s objection to
applicant’s attempt to introduce new evidence on appeal,
applicant responds (Reply Brief at 4) as follows:
Although Trademark Examining Attorney may be
technically correct in her statement of TTAB
procedure, to exclude the evidence in this case would
be somewhat unreasonable considering that Applicant,
Trademark Examining Attorney, and the Board all have
equally easy access to the electronic search records
of the USPTO. In addition, Applicant did not want to
burden the record with over 100 pieces of paper
listing each registration containing the term
ASSOCIATED since the purpose of Applicant’s reference
was to simply give Trademark Examining Attorney and
the Board notice of these registrations rather than to
make any specific comparison between Applicant’s mark
and the marks in the registrations.

We sustain the examining attorney’s objection. As the
USPTO’s rules indicate, the record on appeal should be
complete prior to appeal. 37 CFR § 2.142(d). To make
third-party registrations of record, applicant or the
examining attorney must submit a copy of the registration
or a printout from the USPTO’s electronic database prior to
the briefing stage of the case. In re Duofold, Inc., 184
USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record”).
See also In re First Draft Inc., 76 USPQ2d 1183, 1192 (TTAB
2005) (“Submission of the TARR printout with its appeal
brief, however, is an untimely submission of this
evidence”). Furthermore, the “Board does not take judicial
Ser No. 76543954
10
notice of third-party registrations.” In re Carolina
Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998). In its
brief in this case, applicant has simply referred generally
to other registrations that are registered in the USPTO.
As the cases above indicate, this does not make them of
record nor has applicant explained why it did not provide
this information sooner. Therefore, we will not consider
these references in its brief as evidence. We add that the
examining attorney has asserted that these third-party
registrations are for unrelated goods or services and
applicant has not disputed this point.
We now turn to the question of likelihood of
confusion. When there is a question of likelihood of
confusion, we analyze the facts as they relate to the
relevant factors set out in In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See
also In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
Ser No. 76543954
11
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin in this case by looking at the similarities
and dissimilarities of applicant’s and registrant’s marks.
Applicant seeks to register the mark:
ASSOCIATED COURIERS, INC. (stylized)
The examining attorney has cited the following marks
as a bar to the registration of applicant’s mark:
ASSOCIATED COURIER EXPRESS (and design)
ASSOCIATED DISTRIBUTION LOGISTICS (and design)
ASSOCIATED GLOBAL SYSTEMS (and design)
ASSOCIATED INBOUND
ASSOCIATED AIR FREIGHT INC. (and design)
ASSOCIATED SAME DAY (and design)
ASSOCIATED AIR FREIGHT (and design)
ASSOCIATED PRIORITY OVERSEAS (and design)
ASSOCIATED SECOND DAY
ASSOCIATED OVERNIGHT
ASSOCIATED PARTSTOCK (and design)
ASSOCIATED INTERNATIONAL (and design)

All the cited registrations and applicant’s mark begin
with the same word “Associated.” Applicant and one of the
cited registrations (No. 2,132,367) have the word
“Courier(s)” as the next word. While applicant uses the
plural form of the word “courier” and registrant uses the
singular, this minor difference is not significant. Wilson
v. Delauney, 245, 877, 114 USPQ 339, 341 (CCPA 1957) (“It
is evident that there is no material difference, in a
trademark sense, between the singular and plural forms of
Ser No. 76543954
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the word "Zombie" and they will therefore be regarded here
as the same mark”). Another registration (No. 2,128,871)
also ends with the same abbreviation (“Inc.”) as
applicant’s mark. Most of the wording in the registrations
other than the word “Associated” has been disclaimed.
We concentrate on registrant’s ASSOCIATED COURIER
EXPRESS mark. Applicant’s mark, ASSOCIATED COURIERS, INC.,
is very similar to the mark ASSOCIATED COURIER EXPRESS.
The marks would be pronounced identically except for the
third word, the disclaimed terms INC. and EXPRESS,
inasmuch as “Inc.” simply designates applicant’s legal
status and “Express” describes “a rapid method of
delivery.” U.S. Express Inc. v. U.S. Express Inc., 799 F.
Supp. 1241, 25 USPQ2d 1061, 1063 (D.D.C. 1992) (The term
“U.S. Express” held to be descriptive). It would be
unlikely that these additional terms at the end of the
marks would be used by potential purchasers to distinguish
the marks. In addition, while applicant argues (Brief at
3) that “registrant’s marks are weak and deserving of only
a narrow scope of protection,” as noted earlier, there is
nothing in the record to support this argument. Indeed,
applicant agrees that “Associated has not been frequently
adopted or diluted in the courier industry.” Whether the
term “Associated” is weak for other goods and services,
Ser No. 76543954
13
something that has not been shown, is not relevant to
whether the term is weak for registrant’s services. While
we can agree that the term “Associated” is not arbitrary or
fanciful, we simply cannot conclude that it is weak and
entitled to only a narrow scope of protection.
Regarding the stylization or design elements of the
marks, “design elements such as those appearing in
applicant's mark are generally less important than the word
portion of the mark in creating an impression.” In re Code
Consultants Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). In
addition, we observe that the stylization of the letters in
the two marks is actually very similar for the last two
words in the marks and the differences in stylization for
the word “Associated” is minimal.

When viewed in their entireties, the similarities in
sound, appearance, meaning, and commercial impression
between applicant’s and registrant’s marks far outweigh the
differences created by the different ending terms and the
slight differences in stylization. To the extent that
Ser No. 76543954
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customers notice the difference in the final term, it is
unlikely to lead to a conclusion that the terms refer to
different entities if the services are related. They are
simply likely to assume that it describes an attribute of
the courier services, i.e., that it offers “express”
delivery. Potential customers are simply likely to assume
that ASSOCIATED COURIERS, INC. is the name of the express
delivery services that are known as ASSOCIATED COURIER
EXPRESS.
Reinforcing our conclusion that the marks ASSOCIATED
COURIERS, INC. and ASSOCIATED COURIER EXPRESS are similar
is the fact that registrant also owns registrations for the
marks ASSOCIATED DISTRIBUTION LOGISTICS, ASSOCIATED GLOBAL
SYSTEMS, ASSOCIATED INBOUND, ASSOCIATED AIR FREIGHT INC.,
ASSOCIATED SAME DAY, ASSOCIATED AIR FREIGHT, ASSOCIATED
PRIORITY OVERSEAS, ASSOCIATED SECOND DAY, ASSOCIATED
OVERNIGHT, ASSOCIATED PARTSTOCK, and ASSOCIATED
INTERNATIONAL for similar services. The registrations all
include the term “Associated” and registrant also owns
registrations for the term “Courier” and “Inc.” Most of
the words in the registrations are descriptive words for
delivery services, e.g., air freight, second day,
overnight, etc. Customers would have virtually no basis to
distinguish applicant’s mark from the registrant’s marks.
Ser No. 76543954
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Therefore, we conclude that the marks in this case are very
similar.
Second, we address the question of whether the
services of applicant and registrant are related.
Applicant’s services are “courier services, namely the
pickup, delivery and storage of medical supplies for use in
nuclear medicine.” Registrant’s services are “air and
truck transportation and the storage of goods.” One
registration substitutes the word “surface” for “truck.”
No. 1,722,538 (“air and surface transportation and storage
of goods”). Pickup, delivery, and storage of medical
supplies for use in nuclear medicine services are a subset
of registrant’s air and truck (or surface) transportation
and storage of goods services. Indeed, “Applicant admits
that there is the possibility that Registrant transports
and stores nuclear medicine supplies as a small part of its
shipping, storage, and delivery operations.” Reply Brief
at 5. In fact, regardless of whether registrant is
actually shipping and storing nuclear medicine supplies, we
must assume for our analysis that these services are
included within its identification of services. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
Ser No. 76543954
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basis of the respective descriptions of goods [or
services]”). Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific
limitation and nothing in the inherent nature of Squirtco’s
mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”). We
conclude that the services are in part identical inasmuch
both applicant and registrant are presumed to be involved
with the pickup, storage, and delivery of medical supplies
for use in nuclear medicine.
Even if the services were not overlapping, we would
have to conclude that they are highly related to the extent
that a source of medical supplies or a medical institution
that uses a general delivery and storage service is likely
to believe that courier and storage services involving
nuclear medicine supplies would be related to services
involving the delivery and storage of non-nuclear medical
supplies to the extent that they are marketed with very
similar trademarks. We add that even if the purchasers of
these services are careful and sophisticated purchasers,
“even careful purchasers are not immune from source
confusion.” In re Total Quality Group Inc., 51 USPQ2d
1474, 1477 (TTAB 1999). For example, a sophisticated
Ser No. 76543954
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purchaser at a medical supplier that uses registrant’s
delivery services for some supplies would likely assume
that applicant’s courier services for nuclear medical
supplies originate from related or associated sources.
Applicant also argues (Reply Brief at 7) that its
“mark has coexisted with some of Registrant’s marks for
nearly three decades without a single known instance of
actual confusion. As Applicant mentioned in its Appeal
Brief, this is quite extraordinary considering that
Applicant has been ranked #48 in the Top Carriers listed by
operating ratio.”4
Recently, the Federal Circuit has addressed the
question of the lack of evidence of actual confusion,
particularly in an ex parte context:
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. See In re Bissett-
Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529
(CCPA 1973) (stating that self-serving testimony of
appellant's corporate president's unawareness of
instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence
of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d

4 The list actually says “The Other Top 100 Couriers.” (Emphasis
added).
Ser No. 76543954
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960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.

Majestic Distilling Co., 65 USPQ2d 1201, 1205. The absence
of actual confusion does not mean there is no likelihood of
confusion. Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991).
Here, the only evidence of a lack of actual confusion
consists of the application, the arguments of applicant’s
attorney that applicant has used the mark for more than
three decades and that there has not been any actual
confusion, and a single page from the Commercial Carrier
Journal, August 2004. The page is entitled “The Other Top
100 Carriers listed by operating ratio.” In that list,
“Associated Couriers, Maryland Heights, Mo.” is listed 48th.
Applicant relies heavily on the case of In re General
Motors Corp., 23 USPQ2d 1465 (TTAB 1992). In that case,
the applicant provided evidence not only that it used its
mark for almost thirty years, but also that it sold
2,695,434 automobiles under the mark GRAND PRIX during that
time. This evidence showed that the yearly sales of
vehicles under the mark during that period ranged from a
low of 16,542 to a high of 288,430 vehicles. In addition,
Ser No. 76543954
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the applicant included sample advertising and
representative stories that demonstrated that the mark had
“achieved a degree of renown.” Id. at 1470. Furthermore,
the applicant presented affidavits from two employees that
explained that there have been no complaints of confusion
from either the registrant or the public.
Even a cursory comparison of the facts of this
application with the General Motors case demonstrates the
inadequacy of applicant’s evidence. First, the goods in
the General Motors case were not identical (automobiles and
tires) as opposed to the overlapping services in this case.
More importantly, there is no indication of applicant’s
sales or market penetration besides the list that for a
single year, 2003, applicant is identified as #48 in the
“Other Top 100 Couriers” list. Besides this list, there is
no evidence of renown or advertising on applicant’s part.
In the General Motors case, it was fair to assume that the
registrant had significant opportunities to understand that
General Motors was using the mark GRAND PRIX on its
vehicles for a long period of time on a national scale.
Based on applicant’s single piece of evidence, it would be
sheer speculation on our part to conclude that registrant
is even aware of applicant much less that there has been a
significant opportunity for actual confusion to occur.
Ser No. 76543954
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Based on the record in this case, we cannot conclude that
the lack of evidence of actual confusion in this case is
sufficient.
Therefore, when we considered that the marks are very
similar and the services overlap as well as the other
factors, we conclude that confusion is likely.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registered marks used in
connection with the identified services under Section 2(d)
of the Trademark Act is affirmed.