Beyond Boundaries Travel, Inc.v.FanTrip LLC

Trademark Trial and Appeal Board

May 4, 2012

No. 91189499 (T.T.A.B. May. 4, 2012)

Mailed: May 4, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Beyond Boundaries Travel, Inc.

v.

FanTrip LLC
_____

Opposition No. 91189499

to Application Serial No. 77376164

_____

John L. Welch of Lando & Anastasi LLP for Beyond Boundaries
Travel, Inc.

Jeffrey M. Drake and John S. Mortimer of Wood Phillips Katz Clark
& Mortimer for FanTrip LLC.
______

Before Quinn, Kuhlke and Taylor, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

FanTrip LLC (“applicant”) seeks registration on the
Principal Register of the mark FANTRIP (in standard character
format) for “[t]ravel agency services, namely, making
reservations and bookings for transportation and temporary
lodging for fan-themed destinations” in International Class 39.
The application was filed on January 20, 2008 based on an
allegation of a bona fide intent to use the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91189499

2
Opposer, Beyond Boundaries Travel, Inc. has opposed
registration of the mark on the alternative grounds of
priority and likelihood of confusion under Section 2(d) of
the Trademark Act, and mere descriptiveness under Section
2(e)(1) of the Act. Opposer specifically alleges with
regard to its Section 2(d) claim that it has used the trade
name Fan Trips and the service mark FAN TRIPS continuously
in connection with travel agency services, including making
reservations and bookings for transportation and temporary
lodging for fan-themed destinations, since at least 2003,
and long prior to applicant’s filing date; that on December
19, 2008, the USPTO issued an Office action in its pending
application Serial No. 77574519, for the mark FAN TRIPS
(standard characters) for “travel services, including
organizing all components for travel as an event, as multi-
day, and single day tours for fans of movies, books,
theater, music and similar themes,” stating that
registration may be refused under Section 2(d) because the
filing date of applicant’s involved application Serial No.
77376164 precedes opposer’s filing date; that applicant’s
mark is essentially identical to opposer’s mark and
applicant’s services are identical or closely related to
those recited in opposer’s pending application; and, thus,
applicant’s FANTRIP mark is likely to cause confusion with
opposer’s trade name and trademark FAN TRIPS.
Opposition No. 91189499

3
With regard to opposer’s alternative claim under
Section 2(e)(1), opposer alleges that applicant’s mark is
merely descriptive of the recited services.
Applicant, in his answer, has denied the salient
allegations in the notice of opposition.
PRELIMINARY MATTERS
Evidentiary Matters
On April 5, 2011, the Board deferred consideration of
opposer’s motion to strike Exhibits 6, 8 and 9 from
applicant’s first notice of reliance. We now consider that
motion which opposer renewed in its brief. Opposer objects
to these items, comprising applicant’s own answers to
opposer’s first request for admissions, opposer’s request
for production of document and things and opposer’s first
set of interrogatories, arguing that applicant should not be
permitted to take this short-cut to submit its evidence.
Opposer also stated that it submitted into evidence only
Responses 7, 11-14, and 24 of applicant’s responses to
Opposer’s first and second requests for admissions, and that
applicant has failed to explain why it should be permitted
to rely on the additional responses.
Applicant responded to the motion, arguing that it
explained why the documents at issue are relevant to the
issue of non-descriptiveness of Applicant’s mark FANTRIP.
Opposition No. 91189499

4
Trademark Rule 2.120(j)(5) provides that an answer to
an interrogatory or a response to a request for admission
may be submitted and made part of the record by only the
inquiring party, except in limited circumstances. The rule
further provides that the notice of reliance must be
supported by a written statement explaining why the
responding party needs to rely on each of the additional
interrogatory answers or admissions, not whether the
responses are relevant. Inasmuch as applicant failed to
explain why it needed to rely on these additional responses,
and noting especially that opposer did not make any of
applicant’s interrogatory or document request responses of
record, we decline to consider the additional responses.
See TBMP §704.10 (3d ed. 2011). Accordingly, opposer’s
motion is granted and Exhibits 6, 8 and 9 are hereby
stricken from applicant’s notice of reliance. We add that,
even if considered, this evidence would not mandate a
different result in this proceeding.
Opposer, in its brief, also objects to Exhibit 10 of
applicant’s notice of reliance, comprising opposer’s
responses to applicant’s document requests, arguing that
“[t]here is no provision in the rules for submission of such
responses by way of notice of reliance.” This objection is
not well taken, although not for the reasons asserted by
applicant – i.e., relevance and provided for by Trademark
Opposition No. 91189499

5
Rule 2.120(j)(8). While documents produced in response to
document requests cannot be made of record by notice of
reliance, see Trademark Rule 2.120(j)(3)(ii), applicant did
not submit any documents with the notice of reliance, only
opposer’s responses consisting of objections or
representations that there were no documents, the documents
had been produced or the documents would be produced. As
such, the responses are properly of record and opposer’s
objection is overruled. Cf. L.C. Licensing Inc. v. Berman,
86 USPQ2d 1883, n.5 (TTAB 2008).
Applicant, in turn, objects to opposer’s reliance on
opposer’s responses to applicant’s interrogatory requests
that were made of record by applicant, arguing that opposer
failed to verify any of the responses. When an
interrogatory answer, or an admission, has been made of
record by one party in accordance with Trademark Rule
2.120(j), it may be referred to by any party for any purpose
permitted by the Federal Rules of Evidence. See Henry
Siegel Co. v. M & R International Mfg. Co., 4 USPQ2d 1154,
1155 n.5 (TTAB 1987); Beecham Inc. v. Helene Curtis
Industries, Inc., 189 USPQ 647, 647 (TTAB 1976) (where party
relies on all of adversary’s answers to interrogatories, the
adversary need not file its own notice of reliance thereon).
As such, opposer may rely on these responses for whatever
probative value they may have. However, the responses are
Opposition No. 91189499

6
not signed (under oath) by opposer and, accordingly, they
have no probative value for either party.
We next address additional evidentiary matters that
were not addressed by either party and comment that a party
seeking to make evidence of record by notice of reliance
must follow the rules and case law. If material cannot be
made of record by notice of reliance it will not be
considered even if the adverse party does not specifically
object to it, as long as the adverse party does not
specifically treat it as of record such that we can say it
has been stipulated to in the record. With this in mind, we
now consider opposer’s rebuttal notice of reliance. By the
rebuttal notice, opposer seeks to make of record: (i) a
copy of its motion, filed October 1, 2009, for summary
judgment and the declaration supporting the motion (Exhibit
10); (ii) the declaration of its counsel, John Welch, in
support of opposer’s opposition to applicant’s motion for
Rule 56(f) discovery, filed October 28, 2011 (Exhibit 11);
and (iii) documents produced by opposer in response to
applicant’s first set of document requests (Exhibit 12). In
each instance, opposer claims that the information is
necessary for completeness and to give full context to
applicant’s submissions. With respect to two declarations,
they are not admissible by notice of reliance in the absence
of a written agreement between the parties. See Trademark
Opposition No. 91189499

7
R. 2.123(b). Notably, the parties were advised, in the
Board’s April 13, 2010 order denying opposer’s motion for
summary judgment, that to be considered at final hearing,
any evidence supporting the motion must be properly
introduced into evidence during the appropriate trial
period. With respect to the produced documents, they are
not admissible solely by notice of reliance, except to the
extent that they are admissible by notice of reliance under
the provisions of Trademark Rule 2.122(e), see Trademark
Rule 2.120(j)(i), or otherwise admissible under Safer, Inc.
v. OMS Investments, Inc. 94 USPQ2d 1031 (TTAB 2010). See
TBMP § 704.08(b).
With further regard to opposer’s rebuttal notice,
instead of submitting the documents referenced in Exhibits
10 and 11, opposer “refer[red] the Board to the electronic
file.” Neither the Trademark Rules nor Board practice
provides for the submission of evidence by such reference.
For the reasons stated, opposer’s rebuttal notice of
reliance has been given no consideration, except to the
extent that some of the documents attached as Exhibit 12,
i.e., portions of the opposition file and the files of
applicant’s involved application Serial No. 77376164 and
opposer’s application Serial No. 77574519, and properly
Opposition No. 91189499

8
identified Internet materials, are otherwise admissible via
a notice of reliance.1
THE RECORD
By operation of Trademark Rule 2.122 the record
includes the pleadings and the file of application Serial
No. 77376164. In view of the foregoing, the record also
includes opposer’s Notices of Reliance 1-6 on Exhibits 1-9;
applicant’s notice of reliance on Exhibits 1-5, 7, 10 and
11; and Opposer’s Rebuttal Notice of Reliance on portions of
Exhibit 12.
Both opposer and the applicant filed briefs and opposer
filed a reply brief.2
STANDING
To establish standing in an opposition proceeding,
opposer must show both “a real interest” in the proceeding
as well as a “reasonable” basis for its belief of damage.
See Richie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). Through a notice of reliance, opposer
introduced evidence of its pending application Serial No.
77574519, filed September 19, 2008, to register the mark FAN

1 We point out that much of the admissible material is already
of record, either by operation of rule or via another notice of
reliance. The duplication was unnecessary.
2 Opposer, in its reply brief, observed that applicant filed its
brief two days late, but indicated that “it does not move to
strike the brief.” Inasmuch as opposer did not contest the late
filing, and because a final brief serves as a roadmap for the
Board to a party’s arguments and evidence, we have considered
applicant’s brief.
Opposition No. 91189499

9
TRIPS, which potentially has been refused registration under
Section 2(d) of the Trademark Act on the basis of a
likelihood of confusion with the mark in applicant’s
previously-filed involved application. This is sufficient
to show that opposer has a real interest in this proceeding
and, therefore, has standing. Life Zone Inc. v. Middleman
Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (“The filing of
opposer’s application and the Office’s action taken in
regard to that application provides opposer with a basis for
pleading its standing…”). Opposer also claimed standing by
virtue of its being a competitor in the same field as
applicant, as evidenced by opposer’s response to applicant’s
interrogatory request No. 1. However, as discussed above,
opposer’s unsigned responses have no probative value and,
therefore, cannot serve to establish opposer’s standing.
Nonetheless, since opposer has established its standing as
to the asserted ground of likelihood of confusion, opposer
is entitled to assert its mere descriptiveness claim. See
e.g., Jewelers Vigilance Committee Inc. v. Ullenberg Corp.,
823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
We must address one final matter before considering the
merits of this case. Applicant argues that “opposer has set
forth a new ground for opposition, namely that Applicant’s
mark is ‘merely descriptive’ irrespective of a finding by
the TTAB that Opposer’s purported mark is ‘merely
Opposition No. 91189499

10
descriptive.’” Applicant’s br. p. 8, emphasis supplied. We
find this argument unavailing given that applicant has been
on notice of opposer’s claim of mere descriptiveness since
day one of this proceeding; opposer’s notice of opposition
included both a claim of priority and likelihood of
confusion and an alternative claim of mere descriptiveness.
The fact that opposer has primarily pursued its
“alternative” claim of mere descriptiveness is of no moment.
As opposer points out, Rule 8(d)(3) of the Federal Rules of
Civil Procedure allows “[a] party to state as many separate
claims or defenses as it has, regardless of consistency.”
Moreover, there is no requirement that an opposer pursue all
of the stated claims or that they be pursued in any
particular order.
MERE DESCRIPTIVENESS
We first consider opposer’s claim that the term FANTRIP
is merely descriptive of applicant’s identified services. A
term is deemed to be merely descriptive of services, within
the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
Opposition No. 91189499

11
and every specific feature of the applicant’s services in
order to be considered merely descriptive; it is enough that
the term describes one significant attribute, function or
property of the services. See In re H.U.D.D.L.E., 216 USPQ
358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
1973). Whether a particular term is merely descriptive is
determined not in the abstract, but in relation to the
services for which registration is sought, the context in
which it is being used or is intended to be used on or in
connection with those services, and the possible
significance that the term would have to the average
purchaser of the services because of the manner of its use
or intended use. In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002) (“The question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods and services are will understand the
mark to convey information about them.”).
“On the other hand, if one must exercise mature thought
or follow a multi-stage reasoning process in order to
determine what product or service characteristics the term
indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363,
364-365 (TTAB 1983). Even where individual terms are
Opposition No. 91189499

12
descriptive, combining them may evoke a new and unique
commercial impression. If, however, each component retains
its merely descriptive significance in relation to the
goods, without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. Tower Tech, 64 USPQ2d at 1317-1318.
While applicant contends that its applied-for mark is,
at best, suggestive of its services, it is opposer’s
position that “[o]n its face, the applied-for mark FanTrip
merely describes the focus of applicant’s services –
arranging trips for fans – and is therefore unregistrable
absent a showing of acquired distinctiveness.” Br. p. 3.
Opposer further contends that because applicant has never
used the mark for the recited services, applicant cannot
prove (nor has it claimed) acquired distinctiveness.3
Opposer submitted the following evidence to demonstrate
that FANTRIP is merely descriptive in connection with
applicant’s identified services.
i. Dictionary definitions4, in relevant part,
FAN: “an enthusiast”5

3 Because the involved application is based on applicant’s
intent to use the mark in commerce, applicant did not, and could
not, assert acquired distinctiveness of the applied-for mark,
FanTrip. Accordingly, that issue is not before us.
4 Opposer proffered six definitions for the word “fan” and five
for the word “trip.” We have listed two definitions for each
word and note that those not repeated here are the same as or
similar to the ones listed above.
Opposition No. 91189499

13
“a person who has a strong interest in or
enthusiasm for a particular sport, art form, or
famous person”6

TRIP: “a going from one place to another; a journey”7
“an act of going to a place and returning; a
journey or excursion, especially for pleasure”8

ii. Numerous excerpts from a variety of widely
distributed printed publications in which the term “fan
trip(s)” is used to describe fan-themed trips, a sampling
of which is set forth below (emphasis supplied in part,
added in part):
300 Oilers faithful plan Buffalo trip

“Hotel accommodations and airline space are in short
supply over the New Year’s weekend, said travel
agents who regularly book Oilers fan trips.”
(Houston Chronicle, December 30, 1988)9

CUBS FAN TOUR

“Departure date is March 16 for a 10- or 14-night
Cubs’ Spring TrainingFan Trip [sic] to Scottsdale,
Ariz., being organized by Chicagoan Phoebe Medow
inconjunction [sic] with N.E.W.S. Travel. It will
be Medow’s 22nd annual springtraining [sic] fan trip.
(Chicago Tribune, February 10, 1991)10

BEARS FAN TRIPS

5 The American Heritage Dictionary of the English Language (4th
ed. 2000), retrieved December 12, 2009. (Opposer’s NOR 1- Exh.
1-A).
6 Oxford Dictionaries Online, retrieved November 29, 2010.
(Opposer’s NOR 1- Exh. 1-B).
7 The American Heritage Dictionary of the English Language (4th
ed. 2000), retrieved December 12, 2009. (Opposer’s NOR 1- Exh.
2-A).
8 Oxford Dictionaries Online, retrieved November 29, 2010.
(Opposer’s NOR 1- Exh. 2-B).
9 Opposer’s NOR 3- Exh. 6-B.
10 Opposer’s NOR 3- Exh. 6-F.
Opposition No. 91189499

14
“A fan trip to Berlin to watch the Chicago Bears
take on the San Francisco 49ers Aug. 3 is available
from AAA-Chicago Motor Club Travel Agency. The Aug.
1-8 Berlin tour features round trip air fare,
lodging (five nights in Berlin, one in Copenhagen),
transfers, sightseeing and, of course, a ticket to
thegame [sic].
The company also has fan trips to regular season
games.”
(Chicago Tribune, July 14, 1991)11

Strike could be a long foul for some/Walkout by
baseball players would hurt many workers and
businesses worse than losing the Reds

“Drake Miller, president of Ace Travel House, says
the travel agency may have to cancel fan trips it
has planned to Astros games in Atlanta, Montreal and
Denver.”
(Houston Chronicle, August 7, 1994)12

HOW I ALMOST GOT A DATE WITH A CHARGERS CHEERLEADER

“… They don’t perform at away games, but a half
dozen of them are coming to Pittsburgh this weekend
with two local tour operators who are running fan
trips.”
(Pittsburgh Post-Gazette (PA), January 13, 1995)13

STUDENTS GET LESSONS IN TRAVELING ABROAD

“* If you have always wanted to attend the Super
Bowl or the Indy 500, meet Sports Tours, Inc., of
Massachusetts. It puts together fan trips for just
about any major sporting event.”
(Fresno Bee, February 16, 1997)14

Rivermen get breathing room

“In addition, the Rivermen front office has put
together a fan trip for those wishing to follow the
team to Johnstown.”
(PANTAGRAPH BLOOMINGTON, IL, April 11, 2000)15

11 Opposer’s NOR 3- Exh. 6-I.
12 Opposer’s NOR 3- Exh. 6-N.
13 Opposer’s NOR 3- Exh. 6-O.
14 Opposer’s NOR 3- Exh. 6-T.
15 Opposer’s NOR 3- Exh. 6-V.
Opposition No. 91189499

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Carolina’s run in playoffs good for Everblades

“If the Hurricanes can have a squad that includes
former Everblades players, Carolina officials could
build a fan base in Southwest Florida.
Possibilities could include fan trips here for
training camp or for a trip for local fans to
Raleigh, N.C., during the season.”
(The News-Press (Fort Meyers, FL), May 25, 2002)16

BIG BLUE FAMILY PACKING BAGS FOR BLUE HAWAII

“The trip is ‘completely sold out – and has been for
three months,’ said Peggy Meece, an owner of
Commonwealth Travel, which runs fan trips in support of
the university’s athletic programs.”
(Lexington Herald-Leader (KY), November 17, 2002)17

Salina, Kan., Travel Agent Gets Busy after Kansas
State’s Win Alters Bowl Bid

“As a travel consultant at World Travel, 1827 S. Ninth,
she’s organized fan trips to several recent Kansas
State bowl appearances, and the Wildcats were on their
way to the Fiesta Bowl following their 35-7 walloping
of then No. 1-ranked Oklahoma Sooners on Saturday.”
(Salina Journal (KS)(KRT), December 9, 2003)18

French revolutions; Cycling trips let fans be more than

“I’d pedaled up this beast of a mountain the day before
on a Trek Travel biking vacation. Our group of 14
cycling enthusiasts was on the ultimate fan trip,
following the Tour as it swung through the slopes of
the Pyrenees all the way to the cobblestones of Paris.”
(Chicago Sun Times, Inc., August 4, 2010)19

iii. Numerous excerpts from a variety of Internet sites
demonstrating that the term “fan trip” is used in connection
with travel to fan-themed destinations, including music,

16 Opposer’s NOR 3- Exh. 6-BB.
17 Opposer’s NOR 3- Exh. 6-DD.
18 Opposer’s NOR 3- Exh. 6-EE.
19 Opposer’s NOR 3- Exh. 6-XX.
Opposition No. 91189499

16
sports and other events, a sampling of which is set forth
below (emphasis supplied in part, added in part):
Set Sail with the Carolina Panthers in 2010!
AAA presents the Fifth Annual Panthers’ Fan Trip.
(http://www.aaagameday.com/Panthers/2009_panthers-fan-
trip.htm, retrieved August 31, 2010)20

Rock’ N’ Roll
Will Never Die

BUDDY’S 73rd Birthday
FAN TRIP 2009
(http://buddyhollylives.info/526962/192610.html,
retrieved August 31, 2010)21

Canucks Fan Trip to New York! Watch our Canucks in New
York & Washington

“I’m currently organizing a Canucks Fan Trip to New
York. I was initially going to just organize it for me
and a group of friends & co-workers, but I thought why
not see if any other Canucks fans would be interested
in coming…”
(http://forum.canucks.com/topic/282107-canucks-fan-
trip-to-new-york/, retrieved August 31, 2010)22

Provident Travel
See the world through our web
Cincinnati Red Rooters’ Tours

“Waite Hoyt, Hall of Fame pitcher and Reds Radio
Broadcaster, urged his friend Barney Rapp to promote a
fan trip to Milwaukee to help root the Reds on to
victory.”
(http://www.providentvacations.com/baseballtours.html?
verifyZip=45202…, retrieved August 31, 2010)23

Keith Henderson
“Illusions of The King” Live!

Keith Henderson Fan Trip 2007

20 Opposer’s NOR 4- Exh. 7-A.
21 Opposer’s NOR 4- Exh. 7-E.
22 Opposer’s NOR 4- Exh. 7-F.
23 Opposer’s NOR 4- Exh. 7-H.
Opposition No. 91189499

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Nancy Cabe Tours
Atlantic City, NJ
(http://www.keithillusions.com/showdetails.asp?show=
141, retrieved August 31, 2010)24

Savory Adventures

Dolce Debbie Fan Trip Piemonte, Italy
“Join Dolce Debbie and Barry Frangipane on this fan
trip to Piemonte! October 5, 2010”
(http://www.savoryadventures.com/piemonte/docedebbie
fantrippiemonte.html, retrieved August 31, 2010)25

XL
Soccer Tours

Real Madrid Fan Trip 2009-2010 Coming soon
(http://www.xltravel.com/sfw/rm/index_E.html, retrieved
August 31, 2010)26

Aquatic Gardeners Association

Re: AGA 2010 Convention-November 11-14 Ft. Lauderdale
***
“2) … Is there a car pool list for the FAN trip where
we can pitch-in for gas and stuff?”
(…aquatic-gardeners.org/viewtopic.pho?..., retrieved,
November 12, 1010)27

Jaye Albright’s Breakfast Blog

Thursday, December 09, 2010
Fan Trip To Opry: Meet Keith Urban
(… blogspot.com/…/fan-trip-to-opry-meet…, retrieved
December 10, 2010)28

Cubs Destinations is your passport for fun

“How fun it is to travel with the Cubs? In November,
several Cubs players including Aramis Ramirez, Carlos
Marmol, Sean Marshall and Hall of Famer Billy Williams,
took part in a weeklong fan trip in the Dominican

24 Opposer’s NOR 4- Exh. 7-N.
25 Opposer’s NOR 4- Exh. 7-X.
26 Opposer’s NOR 4- Exh. 7-CC.
27 Opposer’s NOR 4- Exh. 7-TT.
28 Opposer’s NOR 4- Exh. 7-YY.
Opposition No. 91189499

18
Republic. That trip was organized by Apple
Vacations….”
(Chicago.cub.mlb.com/news/article.jsp…, retrieved
December 24, 2010)29

iv. Copies of use-based, third-party registrations
showing that the word “trip” has been disclaimed in
connection with travel-related services.30
Registration No. 3158419 for the mark TRIP COACH
(TRIP disclaimed) for “travel information services;
providing links to web sites of others featuring
travel”;

Registration No. 2980063 for the mark SPEEDWAY SPEEDY
TRIP (TRIP disclaimed) for “providing online
automotive travel information, namely, maps, travel
routes, travel distances, travel time, locations of
vehicle service stations and their amenities, and
fuel costs”;

Registration No. 3102038 for the mark TRIP CONNECT
and design (TRIP disclaimed) for “travel information
services”;

Registration No. 3798812 for the mark TRIP FIT (TRIP
disclaimed) for “travel agency services, namely,
making reservations and bookings for transportation”

Registration No. 3549127 for the mark TRIP STUFF.com
and design (TRIP disclaimed) for “making referrals in
the field of travel”;

Registration No. 3397522 for the mark TRIP DOGS
TRAVEL (TRIP disclaimed) for “travel agency services,

29 Opposer’s NOR 4- Exh. 7-AAA.
30 Opposer also submitted copies of several third-party
applications and expired registrations for marks including the
term “fan” and additional copies of third-party expired, or non-
use-based, registrations for marks including the term “trip.”
These additional applications and registrations have no probative
value. See Action Temporary Services Inc. v. Labor Force Inc.,
870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989)(“[A]
cancelled registration does not provide constructive notice of
anything”); Interpayment Services Ltd. v. Docters & Thiede, 66
USPQ2d 1463 (TTAB 2003)(applications show only that they have
been filed).

Opposition No. 91189499

19
namely, making reservations and bookings for
transportation”;

Registration No. 3084146 for the mark TRIP COACH
(TRIP disclaimed) for “printed publications, namely
magazine columns about travel”;

Registration No. 3064797 for the mark TRIP MATE YOUR
PARTNER IN TRAVEL (TRIP disclaimed) for “Insurance
administration for travelers, namely insurance for …
pre-departure trip cancellation; post departure trip
interruptions, travel delay; loss or damage to
baggage and personal effects, baggage delay; and
accidental death and dismemberment while on trip”;
and

Registration No. 3025356 for the mark TRIP LOGICS
(TRIP disclaimed) for “travel agency services,
namely, making reservations and bookings for
transportation, namely, airline tickets, cars,
cruises and tours.”

With particular regard to the third-party
registrations, while they are not evidence that the
registered marks are actually in use, they may be given some
weight to show the meaning of a mark, or a term in the mark,
in the same way that dictionaries are used. In re Box
Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-
party registrations can be used in the manner of a
dictionary definition to illustrate how a term is perceived
in the trade or industry”). See also In re J.M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird [-] party
registrations are of use only if they tend to demonstrate
that a mark or a portion thereof is suggestive or
descriptive of certain goods and hence is entitled to a
narrow scope of protection. Used in this limited manner,
Opposition No. 91189499

20
‘third-party registrations are similar to dictionary
definitions showing how language is generally used.’”)
(Internal citations omitted) “Such third [-] party
registrations show the descriptive significance as applied
to certain goods or services.” Institut National Des
Appellations I’Origine v. Vinters International Co., 958
F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)(third-party
registrations found to be persuasive evidence”).
We note, first, that applicant’s applied-for mark is a
compound mark which, in this case, consists of two words
combined to create a single term. A compound mark is merely
descriptive if (1) the individual words are descriptive and
retain their descriptive meaning within the compound mark,
and (2) the compound mark has no unique or incongruous
meaning as applied to the services. See Cox Enterprises, 82
USPQ2d 1040, 1043 (TTAB 2007). Here, applicant has combined
the descriptive term “fan,” previously defined as “a person
with a strong interest in or enthusiasm for a particular
sport …,” and the descriptive word “trip,” previously
defined as “a journey or excursion, especially for
pleasure.” The compound term FANTRIP has no different
meaning apart from its constituent words. Noticeably,
applicant, on its promotional website, displays its mark in
a manner that highlights the combination of two separate and
distinct terms “fan” and “trip,” by capitalizing the first
Opposition No. 91189499

21
letter of each word, i.e., FanTrip. See, Opposer’s Second
Request for Admissions No. 34 and Exhibit 1 to the
Admissions Request, and Applicant Response to Opposer’s
Second Request for Admissions No. 34.31
Moreover, the Internet evidence also establishes that
the term “fantrip” (“fan trip”) is used in the travel
industry to describe fan-themed trips or travel
destinations.
Based on the evidence of record, we find that the term
“fantrip,” when viewed as a whole, would be understood in
the context of applicant’s identified services to merely
describe, without conjecture or speculation, or the
gathering of additional information, a significant feature
or purpose of applicant’s identified travel agency services,
namely that applicant’s making reservations and bookings for
transportation and lodging are for trips for fan-themed
trips.
We find unpersuasive applicant’s contention that
there is no evidence to support this finding because “the
hundreds of pages of Internet printouts” using the terms
“fan” and “trip” do not show use of the unitary term
“fantrip.” While applicant is correct in its observation
that none of the evidence submitted by opposer shows use of
“fantrip” as a single term, it is not necessary that the

31 Opposer’s NOR 2- Exhs. 3 and 4.
Opposition No. 91189499

22
evidence show use by others in the exact manner in which it
is displayed as a mark. See In re SPX Corp., 63 USPQ2d 1592
(TTAB 2002). The evidence herein clearly shows use of the
very combination of terms applicant is seeking to register.
Moreover, this type of minor variation, i.e., the
telescoping or merger of terms, in the display of a
descriptive designation has frequently been held to be
legally insignificant. See, e.g., In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987)
(FIRSTIER, the equivalent of "first tier," merely
descriptive of banking services); Cox Enterprises, 82 USPQ2d
at 1043 (THEATL, the equivalent of THE ATL, a common
nickname for the city of Atlanta, merely descriptive of
publications featuring information about Atlanta); and In re
BankAmerica Corp., 229 USPQ 852 (TTAB 1986) (PERSONALINE
[understood as “personal line”], merely descriptive of
consumer loan services in which a personal line of credit is
provided). It is apparent, here, that the term FANTRIP
would be recognized as the combination of the words “fan”
and “trip” and the merger of the terms, if noticed at all,
does not transform the merely descriptive term “fan trip”
into one that is registrable.
We further find unpersuasive applicant’s argument that
opposer improperly dissected applicant’s mark in the
descriptiveness analysis. As explained, applicant’s
Opposition No. 91189499

23
applied-for mark, as a whole, merely describes the purpose
of applicant’s services.
Applicant also argues that its applied-for mark FANTRIP
is, at most, “suggestive” because applicant’s services are
for the making of reservations and bookings relating to fan-
themed destinations and “not” the actual trips. We find
this argument is unavailing. As previously explained, a
term is merely descriptive if it immediately describes a
significant function, feature or purpose of the identified
services. Here, the term FANTRIP immediately conveys
information about the purpose of applicant’s reservation and
booking services. Indeed, applicant, in explaining the
nature of its proposed business, admitted that the recited
services “are intended to include reservations and bookings
for trips to fan-themed destinations.” (Applicant’s Resp.
to Opposer’s Req. for Admissions No. 7)(emphasis added).32
We also find unavailing applicant’s argument that
opposer’s “belief” or “admission” that its “essentially
identical” mark (FAN TRIPS) is inherently distinctive
demonstrates that Applicant’s mark is not merely
descriptive.33 While we do not consider statements made in

32 Opposer’s NOR 2- Exh. 3.
33 In this regard, applicant vigorously argues that applicant
failed to prove that its mark had acquired secondary meaning at
the time opposer filed its trademark application for the term FAN
TRIPS. Whether opposer has acquired secondary meaning in the
term FAN TRIPS is irrelevant to our decision on whether or not
that term is merely descriptive of applicant’s identified
Opposition No. 91189499

24
another proceeding or in other contexts as admissions, we
may consider them in evaluating the evidence. “That a party
earlier indicated a contrary opinion respecting the
conclusion in a similar proceeding involving similar marks
and goods [or services] is a fact, and that fact may be
received in evidence as merely illuminative of shade and
tone in the total picture confronting the decision maker.
To that limited extent, a party’s earlier contrary opinion
may be considered relevant and competent. Under no
circumstances, may a party’s opinion, earlier or current,
relieve the decision maker of the burden of reaching his own
ultimate conclusion on the entire record.” Interstate
Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926,
198 USPQ 151, 154 (CCPA 1978).
In this case, opposer not only clearly indicated that
the pleadings in the notice of opposition and the arguments
in its brief were in the alternative but, as discussed, the
record plainly demonstrates that the term “fantrip” is
merely descriptive of a significant feature or purpose of
applicant’s travel agency services, namely, that applicant’s
making reservations and bookings for transportation and
lodging are for trips for fan-themed destinations.

services. Accordingly, that argument has been given no
consideration in our finding on opposer’s mere descriptiveness
claim. We add, however, that the argument is relevant to
opposer’s claim of priority and likelihood of confusion.

Opposition No. 91189499

25
LIKELIHOOD OF CONFUSION
Having found that applicant’s mark is merely
descriptive, we do not reach the issue of whether
applicant’s applied-for mark FANTRIP is likely to be
confused with opposer’s pleaded mark FAN TRIPS.

Decision: Opposer’s opposition to the registration of the
mark in application Serial No. 77376164 on the ground of
mere descriptiveness is sustained.