BCD N.V.v.Viajes Beda S.A. de C.V.

Trademark Trial and Appeal Board

Aug 6, 2021

91227047 (T.T.A.B. Aug. 6, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

BCD N.V.
v.
Viajes Beda S.A. de C.V.
_____

Opposition No. 91227047
_____

William M. Bryner of Kilpatrick Townsend & Stockton LLP,
for BCD N.V.

Jeffrey M. Furr of Furr Law Firm,
for Viajes Beda S.A. de C.V.
_____

Before Zervas, Greenbaum and Lebow,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Viajes Beda S.A. de C.V. (“Applicant”), filed four single-class applications seeking
registration on the Principal Register of the mark BD TRAVELSOLUTION (in
standard characters, TRAVEL SOLUTION disclaimed) for the following travel-
related services:
Advertising services, namely, promoting and marketing
the goods and services of others in the fields of cultural
events, restaurants, shopping and travel via print and
electronic media; providing information on marketing,
advertising and promoting the goods and services of others
Opposition Nos. 91227047
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in the fields of travel and tourism via email and electronic
mail; providing travel management services, in
International Class 35 (Application Serial No. 86727157);
Arranging travel tours; Booking of seats for travel;
Coordinating travel arrangements for individuals and for
groups; Organisation of travel; Providing a website
featuring information on travel; Providing an on-line
computer database in the field of travel information
services; Providing an on-line searchable computer
database featuring information on travel; Travel agency
services, namely, making reservations and bookings for
transportation; Travel information services, in
International Class 39 (Application Serial No. 86727148);
Providing a web site featuring technology that enables
internet users to book travel, in International Class 42
(Application Serial No. 86727134); and
Providing personalized information about hotels and
temporary accommodations for travel via the Internet;
Providing travel lodging information services and travel
lodging booking agency services for travelers; Travel
agency services, namely, making reservations and booking
for temporary lodging; Travel agency services, namely,
making reservations and booking for temporary lodging for
other travel agencies, travel suppliers, and corporations,
via on-line computer networks; Travel agency services,
namely, making reservations and bookings for restaurants
and meals, in International Class 43 (Application Serial
No. 86727183).1
BCD N.V. (“Opposer”) opposes registration of Applicant’s marks under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting a likelihood of confusion
with Opposer’s previously used and registered BCD and BCD-formative marks,

1 Applicant filed the applications on August 17, 2015, based in each instance on Applicant’s
allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Opposition Nos. 91227047
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including BCD TRAVEL, for travel agency and travel-related services.2 In its Brief
(57 TTABVUE 14-15, 18 et seq.; see also Reply Brief, 59 TTABVUE 5-6), Opposer
limited its Section 2(d) claim to the marks and services in the following three
registrations:
 BCD and Design, displayed as , for
Travel agency services, namely, making reservations and
bookings for transportation; arranging of tours and
sightseeing; vehicle rental; and providing information with
respect to the aforementioned services, in International
Class 39 (Reg. No. 2666810, issued on December 24, 2002,
renewed);3
 BCD TRAVEL (in standard characters, TRAVEL disclaimed), for
Transport of passengers and goods; transportation
reservation services; travel agency services, namely, the
organization of trips, excursions and guided tours;
escorting of travelers; organization of business travel,
group travel and holiday travel and intermediary services
therefor, namely, taxi transport; rental of cars and vehicles
for transport; reservation of transport seats; advisory
services with respect to transport and traveling; travel
advisory services, in International Class 39, and
Reservation and rental of temporary housing, namely,
guest houses, hotels and holiday homes, in International

2 1 TTABVUE (in each proceeding). The Board previously consolidated Opposition Nos.
91227047, which involves the four BD TRAVELSOLUTION applications, with Opposition
No. 91239934, which involves the BD EXPERIENCE application, and deemed Opposition No.
91227047 the “parent” proceeding. 26 TTABVUE. However, we issue separate decisions in
each opposition because the differences between Applicant’s two marks result in analyses
which focus on different registrations. All references to the record are to the TTABVUE file
for Opposition No. 91227047.
3 The registration includes the following lining and stippling statement: “The drawing is lined
for the colors red and blue.” There is no description of the mark, but the design search codes
listed in the “Other Information” section of the registration indicate that the design is coded
as 26.09.02 (Plain single line squares; Squares, plain single line) and 26.09.21 (Squares that
are completely or partially shaded).
Opposition Nos. 91227047
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Class 43 (Reg. No. 3373193, issued on January 22, 2008,
Section 71 declaration accepted); and
 BCD TRAVEL and design (TRAVEL disclaimed), displayed as
, for
Transport of persons and goods; services of a travel agent,
namely, arranging of trips, excursions and guided tours;
escorting of travelers; arranging of business travel, group
travel and tourist travel, and intermediary services related
thereto, namely, taxi transport; rental of cars and other
means of transport; booking of seats for passengers;
providing information on transport and travel; travel
advice, in International Class 39; and
Rental and reservation of temporary accommodation,
including boarding houses, hotels and holiday homes, in
International Class 43 (Reg. No. 4307293, issued on March
26, 2013, Section 71 declaration accepted).4
In its Answer, Applicant admitted that it filed the involved intent-to-use
applications, and denied all other allegations. 4 TTABVUE 3, ¶6.
I. Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s involved application files.
During its assigned testimony period, Opposer filed a Notice of Reliance (40
TTABVUE) on TSDR printouts showing current status and title of four of Opposer’s
pleaded registrations, including the three on which Opposer limits its Section 2(d)

4 The registration includes the following description of the mark: “The mark consists of the
wording ‘BCD TRAVEL’ in stylized blue lettering with the design of six shaded circles in
increasing size, with the first appearing within the center of the letter ‘C’ and the remaining
five forming an arch design over the letter ‘D’ in ‘BCD.’ The first four circles ranging from a
light orange to orange and the fifth and sixth are red.” The colors blue, various shades of
orange and red are claimed as a feature of the mark.
Opposition Nos. 91227047
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claim in its Brief (40 TTABVUE 7-27), and Applicant’s answers to Opposer’s
Interrogatories and Requests for Admission.5
Opposer also filed the Testimony Declarations, with exhibits, of (1) Allan Conlan,
the Chief Financial Officer, Americas Division at BCD Travel (47 TTABVUE,
confidential version at 48 TTABVUE), and (2) Thad Slaton, Senior Vice President,
Global Marketing & Communications at BCD Travel (50 TTABVUE, confidential
version at 49 TTABVUE).6
During its assigned testimony period, Applicant filed Notices of Reliance on
printouts from Applicant’s websites, including one for “BD Travelsolution” (53
TTABVUE), TSDR printouts showing the status of the four involved applications for
BD TRAVELSOLUTION (54 TTABVUE),7 and on the Testimony Declaration, with
exhibits, of Lisette Anahi Morales Hernandez, Applicant’s legal representative (55
TTABVUE).8

5 The latter consists solely of admissions as to the authenticity of certain documents produced
by Applicant. 40 TTABVUE. See Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i)
(admissions and interrogatory answers may be made of record under notice of reliance).
Confidential produced documents are located at 41 TTABVUE.
6 Mr. Slaton explains that BCD Travel “is part of a group of companies that includes Opposer
BCD N.V.” 50 TTABVUE 2, ¶1.
7 This was unnecessary as the application files, and thus their prosecution histories and
current statuses, are of record by operation of Trademark Rule 2.122(b).
8 The submission of Ms. Hernandez’s testimony declaration under a notice of reliance rather
than under separate cover is not the preferred approach, but it is harmless. Ricardo Media
Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *3 (TTAB 2019). See Trademark
Trial and Appeal Board Manual of Procedure (TBMP) (2021) § 703.01(k) (“The submitting
party should file the testimony affidavit or declaration with the Board under separate cover,
rather than under notice of reliance.”). In addition, the two exhibits attached to her
declaration appear to be duplicates of the website printouts separately submitted under
notice of reliance at 52 and 53 TTABVUE.
Opposition Nos. 91227047
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The opposition is fully briefed.
II. Objections
Opposer objects to the printouts from Applicant’s websites on grounds of hearsay,
relevance and failure to produce the documents during discovery, and Applicant
objects to two printouts from Opposer’s website on grounds of hearsay and relevance.
Turning first to Opposer’s objection to the printouts for Applicant’s alleged failure
to produce them during discovery, Opposer does not allege that it served document
requests, and it did not make any document requests of record. Because we cannot
tell whether Opposer requested such documents (or any documents), we have no basis
on which to strike the printouts, and decline to do so. Cf. Brooklyn Brewery Corp. v.
Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *4 (TTAB 2020) (declining to
strike spreadsheets detailing “press mentions” of the defendant because the plaintiff
did not explain which of its document requests, if any, requested spreadsheets of
press mentions).
There is no compelling need to discuss any of the other objections specifically. The
Board is capable of assessing the proper evidentiary weight to be accorded the
testimony and evidence, taking into account the concerns raised by the objections.
Suffice it to say, we have considered all of the testimony and exhibits submitted. In
doing so, we have kept in mind the various objections raised by each party and we
have accorded whatever probative value the subject testimony and evidence merit.
See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479
(TTAB 2017).
Opposition Nos. 91227047
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III. Statutory Entitlement to Oppose and Priority9
Entitlement to a statutory cause of action must be established in every inter
partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied 981 F.3d 1083
(Dec. 4, 2020), petition for cert. filed, No. 20-1552 (Apr. 28, 2021) (citing Lexmark Int’l,
Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26, 109 USPQ2d 2061, 2067
n.4 (2014)). A party in the position of plaintiff may oppose registration of a mark
where such opposition is within the zone of interests protected by the statute, 15
U.S.C. § 1063, and the party has a reasonable belief in damage that is proximately
caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, 2021 WL 2044561 (May
24, 2021). Opposer’s entitlement to oppose registration of Applicant’s marks is
established by its three pleaded, valid and subsisting registrations, which Opposer
has entered into the record. 40 TTABVUE 7-27. See, e.g., Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (party’s ownership of
pleaded registration establishes standing).
Because Opposer’s pleaded registrations are of record and Applicant has not filed
a counterclaim to cancel them, priority is not at issue as to the marks and services
covered by the registrations. King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496

9 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain
equally applicable.
Opposition Nos. 91227047
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F.2d 1400, 182 USPQ 108 (CCPA 1974); see also Massey Junior Coll., Inc. v. Fashion
Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior use need
not be shown by a plaintiff relying on a registered mark unless the defendant
counterclaims for cancellation”); Itell Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB
1988) (“because of the existence of opposer’s valid and subsisting registration, it need
not prove prior use as to the services recited therein”).
Accordingly, Applicant’s argument that Opposer has not proved its entitlement or
priority because Opposer has not proved its use of the pleaded marks is unavailing.
Applicant’s Brief, 58 TTABVUE 17. Moreover, because Applicant did not challenge
Opposer’s ownership of the pleaded registrations by filing a counterclaim (or a
separate petition to cancel), Applicant’s argument that Opposer might not own the
marks (id.) is an impermissible collateral attack on the pleaded registrations and is
given no further consideration. Contour Chair-Lounge Co. v. The Englander Co., 324
F.2d 186, 139 USPQ 285, 287 (CCPA 1963) (“[T]his is an opposition only and in an
opposition, this court has always held that the validity of the opposer’s registrations
are not open to attack.”). See also Trademark Rules 2.106(b)(3)(i) and 2.106(b)(3)(ii).
IV. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We must consider
Opposition Nos. 91227047
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each DuPont factor for which there is evidence and argument. See In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods and services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). These factors and others
are discussed below.
Opposer bears the burden of proving its claim of likelihood of confusion by a
preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.
A. Focus on Reg. No. 3373193 (BCD TRAVEL)
In our likelihood of confusion analysis, we focus on the mark and services in Reg.
No. 3373193 for BCD TRAVEL in standard characters. We consider this mark to be
the most relevant of Opposer’s three registrations for our DuPont analysis because it
most closely resembles Applicant’s mark BD EXPERIENCE. Consequently, we do not
consider Opposer’s marks BCD and design or BCD TRAVEL and design, which
include additional visual differences and marks that are limited to particular
depictions. See, e.g., Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913,
1917 (TTAB 2015); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
B. Similarity or Dissimilarity of the Services and Channels of Trade
Under the second and third DuPont factors, we base our evaluation on the services
as they are identified in the applications and Opposer’s registration. See Stone Lion
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Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997).
Opposer may establish likelihood of confusion as to a class of identified services in
an opposed application by showing the relatedness of its own services to any item
within that class of identified services. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In addition, contrary to Applicant’s
argument (Applicant’s Brief, 58 TTABVUE 20), the parties’ services need not be
identical to support a finding of likelihood of confusion. See On-line Careline Inc. v.
Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (the goods
and services need not be identical or even competitive to find a likelihood of
confusion). Rather, “likelihood of confusion can be found ‘if the respective products
[or services] are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they
emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). The issue is whether there is a likelihood of
confusion as to the source of the services, not whether purchasers would confuse the
services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel
Inc., 223 USPQ 830 (TTAB 1984).
Opposition Nos. 91227047
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1. Relatedness of Services
Here, both parties identify travel agency and travel-related services that include
many legally identical and otherwise closely related travel services. We address each
application in turn.
We start with application Serial No. 86727148 for the Class 39 services, as the
services recited therein overlap most significantly with the registration. For example,
the application covers “booking seats for travel” and “travel agency services, namely,
making reservations and bookings for transportation,” which are legally identical to
the “transportation reservation services” and “reservation of transport seats” recited
in the registration. The application also covers “coordinating travel arrangements for
individuals and groups” and “organisation of travel,” which are legally identical to
“organization of business travel, group travel and holiday travel” services identified
in the registration. And the “travel information” services identified in the application
are very closely related, if not legally identical, to the “advisory services with respect
to transport and traveling” and “travel advisory services” covered in the registration.
Application Serial No. 86727183 identifies services in Class 43 that overlap with
the Class 43 services identified in the registration. In particular, the “travel agency
services, namely, making reservations and booking for temporary lodging” recited in
the application are legally identical to the “reservation and rental of temporary
housing” services covered by the registration.
Application Serial No. 86727157 identifies services in Class 35. The services
include “providing information on marketing, advertising and promoting the goods
and services of others in the fields of travel and tourism via email and electronic
Opposition Nos. 91227047
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mail,” which covers information travelers would expect to receive when they research
and book travel tours, and when they research and reserve transport and lodging,
such as information about specialty tours, tour guides, and various temporary
housing options (e.g., inns, B&Bs, hotels). Such services – particularly the promotion
of the services of others in the field of travel via email and electronic mail - therefore
are closely related to the various Class 39 and Class 43 travel services covered by
Opposer’s registration, as discussed above.
Application Serial No. 86727134 identifies “providing a web site featuring
technology that enables internet users to book travel” in Class 42. This service allows
users to book their own travel through a website which, in essence, functions an
electronic travel agent, rather than using a human travel agent, and therefore is
complementary on its face to the Class 39 “travel agency services” identified in
Opposer registration, as discussed above.
2. Channels of Trade
As to trade channels and classes of purchasers, given the legal identity of the
services, in part, in application Serial Nos. 86727148 (for Class 39) and 86727183 (for
Class 43) and the registration, we presume that the services move through the same
channels of trade (e.g., travel agencies) and that they are offered to the same potential
purchasers (e.g., ordinary consumers interested in travel). See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are
presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
Opposition Nos. 91227047
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are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same).
Because the services identified in application Serial No. 86727134 (for Class 42)
and application Serial No. 86727157 (for Class 35) are not identical to the services
identified in the registration, and there are no restrictions as to trade channels in the
applications or the registration, we “must deem the [services] to travel in all
appropriate trade channels to all potential purchasers of such [services].”
Cunningham, 55 USPQ2d at 1846. Based on the very close relationship between the
services, as discussed above, “appropriate channels” clearly include travel agencies,
and the “potential purchasers” would include business travelers as well as leisure
travelers.
These DuPont factors therefore weigh in favor of finding a likelihood of confusion.
C. Similarity or Dissimilarity of the Marks
Next, we compare Applicant’s mark BD TRAVELSOLUTION and Opposer’s mark
BCD TRAVEL, both in standard characters, “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve
Clicquot 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, 122 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516
(Fed. Cir. 2019); accord Krim-Ko Corp. v Coca-Cola Bottling Co., 390 F.2d 728, 156
Opposition Nos. 91227047
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USPQ523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling
or sound alone is likely to cause confusion.”) (citation omitted).
“The proper test 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). Further, the marks “must be considered … in light of the
fallibility of memory …” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085
(Fed. Cir. 2014) (quotation omitted). We focus on the recollection of the average
consumer, here an ordinary consumer who is interested in travel, who normally
retains a general rather than a specific impression of trademarks. Id.; Geigy Chem.
Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971).
We must consider the marks in their entireties, and not dissect them into their
various components. Stone Lion, 110 USPQ2d at 1161; see also Franklin Mint Corp.
v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic
that a mark should not be dissected and considered piecemeal; rather, it must be
considered as a whole in determining likelihood of confusion.”). Nonetheless, “there
is nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Opposition Nos. 91227047
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In addition, and of particular relevance for application Serial Nos. 86727148 (for
Class 39) and 86727183 (for Class 43), where the parties use their marks in
connection with legally identical services, the similarity between the marks necessary
to support a determination that confusion is likely declines. Bridgestone Ams. Tire
Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.”).
Looking at Applicant’s mark BD TRAVELSOLUTION and Opposer’s Mark BCD
TRAVEL in their entireties, the literal terms BD and BCD stand out as the most
prominent elements, conveying the strongest commercial impression, in each mark.
There is no evidence that either literal term has any meaning or significance when
applied to travel agencies or travel-related services, and there is no evidence of use
by third parties of similar marks in association with similar services that might dilute
the source identifying capacity of “BD” or “BCD” for those services. We therefore find
unpersuasive Applicant’s argument that
BCD is not unique nor is it a set of arbitrarily arranged
letters. The mark consists of the second though fourth
letters in the alphabet. It is not fanciful or unique. Opposer
has not argued that there is any specific meaning to it.
Since it is not unique or arbitrary and very common it
should not be given a lot of weight for protection purposes.
It is like trying to claim a trademark ownership over part
of the alphabet.
Applicant’s Brief, 58 TTABVUE 19.
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On the other hand, the trailing terms “TRAVELSOLUTION” and “TRAVEL” are
highly descriptive, if not generic, of travel services, and appropriately have been
disclaimed in the application (as “TRAVEL SOLUTION”) and registration,
respectively. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997). Descriptive matter typically is less significant or less dominant when
comparing marks. See Cunningham, 55 USPQ2d at 1846 (quoting Nat’l Data Corp.,
224 USPQ at 752 (the “descriptive component of a mark may be given little weight in
reaching a conclusion on likelihood of confusion”)). We find that to be the case here,
where consumers likely will view the terms TRAVELSOLUTION and TRAVEL in
their descriptive senses, rather than as source-distinguishing elements.
The prominence of the terms BD and BCD are further enhanced by their
placement as the initial literal element in each mark. See Palm Bay Imps., 73
USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed
in the mind of a purchaser and remembered”); see also Century 21 Real Estate Corp.
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the identical lead word).
Applicant’s contention that “BD” is an acronym for “Best Day,” which was part of
Applicant’s original name (Applicant’s Brief, 58 TTABVUE 8), does not affect our
analysis. To the extent the record shows any derivational meaning of the letters in
Applicant’s mark, the derivations of letter marks and acronyms are of no particular
significance absent evidence that consumers would make that connection. See
Opposition Nos. 91227047
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Aerojet-Gen’l Corp. v. Comput. Learning & Sys. Corp., 170 USPQ 358, 362 (TTAB
1971) (fact that acronyms are derived from different words unimportant because
average purchasers probably unaware of derivation); see also Edison Bros. Stores,
Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530, 533 (TTAB 1986) (“It should
be noted that the lettered marks in almost all of the cited decisions were, as in the
case before us, derived from the trade or corporate names of the involved parties, but
these facts had no negative influence upon the likelihood of confusion conclusions
which were reached.”).
Accordingly, we find that “BCD” is the dominant element in Opposer’s mark and
“BD” is the dominant element in Applicant’s mark. We now turn to the required
comparison of the marks in their entireties, giving greater weight in that comparison
to the letters BCD and BD than to the other elements of the marks. Nat’l Data, 224
USPQ at 751.
Applicant argues that the marks look and sound “very different” due to “a ‘C’ in
the middle of the mark for BCD” and “the BCD of the Opposer’s marks has three
syllables compared to two syllables in the first part of the Applicant’s marks.”
Applicant’s Brief, 58 TTABVUE 19.
As stated above, we must consider the marks “in light of the fallibility of human
memory” rather than by comparing them side-by-side, St. Helena Hosp., 113 USPQ2d
at 1085 (Fed. Cir. 2014), and many consumers “may have but dim recollections from
having previously seen or heard one of the other of the involved marks.” Neutrogena
Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1977). The
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recall of marks “among ordinary purchasers is often hazy and imperfect.” Edison
Bros., 230 USPQ at 536.
These principles apply with special force to arbitrary letter combinations, such as
those at issue here, because it is inherently difficult for consumers to distinguish
between marks involving similar letters. Crystal Corp. v. Manhattan Chem. Mfg. Co.,
75 F.2d 506, 23 USPQ 5, 6 (CCPA 1935) (“We think that it is well known that it is
more difficult to remember a series of arbitrarily arranged letters than it is to
remember figures, syllables, words, or phrases. The difficulty of remembering such
lettered marks makes confusion between such marks, when similar, more likely.”);
see also Weiss Assoc. Inc. v. HRL Assoc. Inc., 902 F.2d 1540, 14 USPQ2d 1840, 1841
(Fed. Cir. 1990) (“Because it is hard to distinguish between these letters, the mark
TMM is confusing with TMS.”); Dere v. Inst. for Sci. Info., Inc., 420 F.2d 1068, 164
USPQ 347, 348 (CCPA 1970) (“it is more difficult to remember a series of arbitrarily
arranged letters than it is to remember figures, syllables, or phrases,” and “the
difficulty of remembering such multiple-letter marks makes the likelihood of
confusion between such marks, when similar, more probable.”); Edison Bros., 230
USPQ at 533 (EB and EBS for shoes are likely to cause confusion because “confusion
is more likely between arbitrarily arranged letters than between other types of
marks.”).
We find it highly unlikely that a consumer with a general rather than a specific
impression or recollection of Opposer’s mark BCD TRAVEL who is exposed to
Applicant’s mark BD TRAVELSOLUTION, or vice-versa, for closely similar and
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identical in part services, will recall or recognize that one of the marks includes the
letter “C” and the other does not, and/or that one of the marks includes the suggestive
word SOLUTION while the other does not.
There are some specific differences between the marks, but these differences are
outweighed by the common presence of the dominant letters BCD and BD, which as
discussed above, are the key source-identifying elements of the marks, followed by
the shared term TRAVEL (in Applicant’s TRAVELSOLUTIONS). Considering the
marks as a whole, we find them more similar than they are different. See, e.g., Cities
Serv. Oil Co. v. A.W. Chesterton Co., 127 USPQ 459, 460-61 (TTAB 1960) (finding
“DCS” and “D-C” for industrial oils confusingly similar).
This DuPont factor also weighs in favor of a finding of likelihood of confusion.
D. Strength of Opposer’s Mark
In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and its commercial strength, based on
marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-
72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent
strength and its commercial strength); Tea Bd. of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1899 (TTAB 2006). Marketplace strength is the extent to which the
relevant purchasing public recognizes a mark as indicating a single source. Joseph
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Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 22 USPQ2d 1733,
1734 (Fed. Cir. 2017) (per curiam). In the likelihood of confusion context, commercial
strength is not an “all-or-nothing measure,” but a continuum between obscurity and
fame. Id. The stronger the mark, the greater the scope of protection. Kenner Parker
Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992) (“[S]trong marks enjoy a wide latitude of legal protection.”).
Opposer’s mark BCD TRAVEL is registered on the Principal Register with a
disclaimer of TRAVEL, but without a showing of acquired distinctiveness, and
therefore is presumed to be inherently distinctive under Section 7(b) of the
Trademark Act. See Tea Bd. of India, 80 USPQ2d at 1899. And as discussed above,
there is no evidence that BCD has any meaning or significance when used in
connection with travel agency and travel-related services, or evidence of third-party
use or registrations for travel agency or travel-related services for marks that include
the term “BCD,” thus rendering the term fanciful. “Fanciful marks are referred to as
the "strongest" of all marks, in that their novelty creates a substantial impact on the
buyer's mind.” 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 11:6 (5th ed.).
Opposer also contends that its “BCD Marks” are commercially strong, but this
argument, and all of the supporting evidence, pertain to the plural “BCD Marks,”
without differentiating among them. Opposer’s Brief, 57 TTABVUE 35-38. We
therefore cannot tell how much, if any, of the impressive sales and advertising
figures, and the numerous awards, are attributable to Opposer’s BCD and design
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mark as opposed to either (or both) of Opposer’s BCD TRAVEL marks (in standard
character and with design).
On this record, we find Opposer’s mark inherently distinctive and conceptually
strong, and thus entitled to a slightly broader than normal scope of protection.
E. Other DuPont Factors
We address Applicant’s other arguments (Applicant’s Brief, 58 TTABVUE 20-23)
collectively and in short order, given the lack of evidence presented by Applicant.
“Attorney argument is no substitute for evidence.” Cai, 127 USPQ2d at 1799.
The fourth DuPont factor considers purchasing conditions. Because there is no
evidence that Applicant’s purchasers are “sophisticated” and “not impulse buyers,”
this factor is neutral. 58 TTABVUE 20.
The seventh DuPont factor considers the nature and extent of any actual
confusion, and the eighth DuPont factor considers the length of time and conditions
under which the parties concurrently have used their marks without evidence of
actual confusion. Pointing to the testimony of Ms. Morales Hernandez, Applicant
contends that there has been no evidence of actual confusion despite concurrent use
of the parties’ marks for at least five years.10 58 TTABVUE 22-23. However, Applicant

10 Ms. Morales Hernandez testified that she is “knowledgeable about [Applicant’s] use of the
trademarks as defined as applications for registration of Applicant’s trademark BD
TRAVELSOLUTION, Serial Numbers 86727183, 86727157, 86727148 and 86727134
(‘Marks’),” and that “[Applicant] has no recorded record or any incidents of any actual
confusion between the Marks and any of Opposer’s (‘BCD N.V.’) marks.” 55 TTABVUE 4-5,
¶¶2-3. She also testified that she has “knowledge” of the “exhibits which show [Applicant’s]
usage which includes screen shots of [Applicant’s] website https://www.bdtravelsolution.com
(Exhibit 1) and https://www.bdexperience.com/en websites.” 55 TTABVUE 5, ¶ 4. Paragraph
4 of her testimony authenticates the exhibits, but neither the testimony nor exhibits provide
details about Applicant’s use of the BD TRAVELSOLUTION mark, such as when such use
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has not shown that it has actually used the BD TRAVELSOLUTION mark in
connection with the identified services, let alone the nature and extent of such use.
The record therefore does not support a finding that there has been any opportunity
for confusion to have occurred. See, e.g., Top Tobacco, 101 USPQ2d at 1174-75
(absence of actual confusion may be probative where there has been a reasonable
period of time and opportunity for confusion to have occurred); accord Wella Corp. v.
Cal. Concept Corp., 558 F.3d 1019, 194 USPQ 419, 422-23 (CCPA 1977); cf. G.H.
Mumm & Cie v. Desnoes & Geddes, Ltd., 9 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed.
Cir. 1990) (lack of actual confusion in over a decade was significant factor showing
that confusion was unlikely). Accordingly, the seventh and eighth DuPont factors are
neutral.
The ninth DuPont factor considers the variety of goods or services on which a mark
is used. Because there is no evidence to support a finding that either party uses its
mark on a wide variety of goods and services, this factor is neutral. 58 TTABVUE 21-
22.
The tenth DuPont factor requires us to consider evidence pertaining to the
“market interface” between the parties, including evidence of any past dealings
between the parties which might be indicative of a lack of confusion. Because there
is no evidence that the parties have had any past dealings, this DuPont factor is
neutral. 58 TTABVUE 21.

began, what is offered at any particular destination, or pricing and booking information, and
thus the testimony and exhibits are not probative of Applicant’s use of the mark in association
with the travel agency and travel-related services identified in the applications.
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The eleventh DuPont factor considers any evidence that Opposer has a right to
exclude third parties from using its mark. Because Opposer has not provided any
significant information about the advertising and sales of its services sold under the
BCD TRAVEL mark (as opposed to the BCD and design mark), and because there is
no evidence that Opposer has successfully asserted its rights so as to “exclude” third
parties from using its mark, this DuPont factor also is neutral. See, e.g., DeVivo v.
Ortiz, 2020 USPQ2d 10153 at *15 (TTAB 2020) (citing McDonald’s Corp. v. McSweet
LLC, 112 USPQ2d 1268, 1284-85 (TTAB 2014) (“Applicant’s sales figures and
Applicant’s advertising and promotional expenditures are not sufficient to establish
an appreciable level of consumer recognition.”) (internal citation omitted). 58
TTABVUE 23.
F. Conclusion
Having considered all the evidence and arguments bearing on the relevant
DuPont factors, we conclude that Opposer has proven its claim of likelihood of
confusion.
Decision: The opposition is sustained against each application.