Centennial Communications Corp.

Trademark Trial and Appeal Board

Jul 2, 2009

No. 76283603 (T.T.A.B. Jul. 2, 2009)

Mailed: July 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Centennial Communications Corp.
________

Serial No. 76283603
_______

Paul H. Kochanski of Lerner, David, Littenberg, Krumholz &
Mentlik, LLP for Centennial Communications Corp.

Karen Bush, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Grendel and Rogers, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Centennial Communications Corp. seeks registration on
the Principal Register of the mark NAP OF THE CARIBBEAN (in
standard character form) for services ultimately identified
as “telecommunications services, namely, providing central
connection points for telecommunication network carriers”
in International Class 38.1

1 Application Serial No. 76283603 was filed on July 10, 2001,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 76283603
2
Registration has been finally refused under Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), on the ground
that, when used in connection with applicant’s services,
the mark is merely descriptive of them. Registration also
has been finally refused under Trademark Act Section 2(d),
15 U.S.C. §1052(d), on the ground that applicant’s mark,
when used in connection with its services, so resembles the
mark NAP OF THE AMERICAS, which is registered for, inter
alia, “telecommunications services, namely, electronic
voice messaging, namely, the recording and subsequent
transmission of voice messages by telephone; electronic
transmission of messages and data; electronic mail,
telephone voice messaging, facsimile transmission services,
long-distance telephone communication services, and
providing multiple-user access to a global computer
network; providing telecommunications connections to a
global computer network for telecom hoteling; providing
multiple-user access to a global computer information
network; and consultation in the field of
telecommunications, namely, telecommunication services
relating to network access points” in International Class
Serial No. 76283603
3
38,2 as to be likely to cause confusion.
Applicant has appealed, and briefs have been filed.
Refusal Under Trademark Act Section 2(e)(1)
The trademark examining attorney maintains that the
mark NAP OF THE CARIBBEAN describes a feature, function or
purpose of the identified services. Specifically, the
examining attorney argues that:
In the present situation, the wording NAP OF THE
CARIBBEAN used in relation to the services of
“telecommunication services, namely, providing
central connection points for telecommunications
carriers” clearly describes a feature, function
or purpose of those services. As seen from the
previously submitted evidence and acronym
dictionary excerpt, the term “NAP” stands for
“network access points,” and the term “CARIBBEAN”
identifies a geographic location. The phrase NAP
OF THE CARIBBEAN immediately describes a feature,
function or purpose of the telecommunication
services that [provide] central connection points
for telecommunication network carriers. The
central connection points are network access
points located in the Caribbean; in other words
the services are a NAP OF THE CARIBBEAN.
(Brief, unnumbered p. 3).

In support of the refusal, the examining attorney
submitted the results of a search of “nap” from the
“Acronym Finder” online database, which indicates that NAP
stands for, inter alia, “Network Access Point.” In

2 Registration No. 3214416 issued March 6, 2007 under Trademark
Act Section 2(f); the term NAP is disclaimed. The registration
also covers services in International Classes 39 and 42.
However, the examining attorney’s refusal of registration is not
based on the services in either of these classes.
Serial No. 76283603
4
addition, the examining attorney submitted a “Wikipedia”
entry for the term “Caribbean” which indicates that it is a
region of the Americas consisting of the Caribbean Sea, its
islands and the surrounding coasts. Also, the examining
attorney submitted four Internet printouts containing
references to NAP and “Network Access Point.” The
following are excerpts from the printouts:
Terremark’s flagship facility, the NAP of the
Americas®, is one of the most significant
telecommunications projects in the world. The
Tier-IV facility was the first-purpose built,
carrier-neutral Network Access Point and is the
only facility of its kind specifically designed
to link Latin America with the rest of the world.
www.terremark.com

Headline: Sprint International Joins NAP –
Network Access Point – Of The Americas, LLC
Consortium; Members Now Total 87
www.allbusiness.com

Headline: Dominican Government spurs the Network
Access Point
President Leonel Fernandez issued a Special Power
that creates the mechanism to develop the Network
Access Point (NAP) of the Caribbean in Dominican
Republic, a high technology project being built
at a cost surpassing 40 million dollars.
www.DominicanToday.com

Headline: NAP of the Caribbean starts operating
in Dominican cyber park
Santo Domingo – The first phase of the Network
Access Point (NAP) of the Caribbean, an ambitious
project in Santo Domingo Cyber Park, started to
provide its services for Dominicans and
foreigners.
www.DominicanToday.com

Serial No. 76283603
5
Applicant, in urging reversal of the refusal, contends
that its mark as whole is not merely descriptive of the
identified services, and that the examining attorney has
improperly dissected its mark by focusing on the individual
terms NAP and CARIBBEAN. Applicant argues that even these
terms are not descriptive of telecommunication services
because at best NAP describes a physical object and
CARIBBEAN describes a physical location. Applicant also
maintains that NAP OF THE CARIBBEAN creates a double
entendre; that is, the term “nap” means a short sleep or
period of relaxation and the term “Caribbean” means a
destination with a reputation where one can go to unwind,
or relax; and that when combined, the phrase NAP OF THE
CARIBBEAN “connotes a laid-back, relaxed, easy-going type
of impression.” (Brief, p. 9).
A term is deemed to be merely descriptive of goods or
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 and every specific feature of the applicant’s
Serial No. 76283603
6
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being use or intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use. That a
term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Moreover, it is settled that “[t]he 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 or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002);
See also In re Home Builders Association of Greenville, 18
USPQ2d 1313 (TTAB 1990); and In re American Greetings
Corporation, 226 USPQ 365 (TTAB 1985). The “average” or
“ordinary” purchaser is the class or classes of actual or
Serial No. 76283603
7
prospective customers of applicant’s goods or services. In
re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987).
We agree with the examining attorney that the mark
sought to be registered is merely descriptive of the
identified services. The acronym finder evidence shows
that the letters NAP are an abbreviation or acronym for
“network access point.” The Internet excerpts show the
same information. Applicant’s identified
telecommunications services of “providing central
connection points for telecommunication network carriers”
clearly encompass providing a network access point for
telecommunication network carriers. Thus, the acronym NAP
is and would be readily understood by relevant purchasers
to be substantially synonymous with the merely descriptive
term “network access point.” Indeed, in the Internet
excerpts made of record (two of which appear to reference
applicant’s services), the acronym NAP appears in close
conjunction with, or as an obvious alternative to, the
words “network access point.” This matter of usage clearly
demonstrates that relevant purchasers would readily
understand and use the acronym NAP when referring to
applicant’s services of providing central connection points
for telecommunication network carriers. We thus find that
Serial No. 76283603
8
NAP has descriptive significance when used in connection
with applicant’s services. Furthermore, the term CARIBBEAN
has geographic descriptive significance when used in
connection with applicant’s services in that it conveys
that telecommunication network carriers would use
applicant’s services to link the Caribbean to other areas
of the world.
We also find that the composite mark NAP OF THE
CARIBBEAN is equally descriptive. The individual terms NAP
and CARIBBEAN do not somehow lose their descriptive
significance in the combination NAP OF THE CARIBBEAN.
Rather, when used in connection with applicant’s
telecommunication services of providing central connection
points for telecommunication network carriers, the mark NAP
OF THE CARIBBEAN immediately describes a feature of such
services, that is, providing a network access point for
telecommunication network carriers to link the Caribbean to
other parts of the world. The words “of the” actually
reinforce the likelihood that the term NAP will be viewed
as indicating something located in or associated with the
Caribbean region. Thus, the combination of the terms does
not alter the descriptive meanings of NAP or CARIBBEAN, but
reinforces such meanings.
Serial No. 76283603
9
Applicant’s argument that the term NAP has another
meaning and, thus, the mark is a double entendre is not
persuasive. It is well-settled that mere descriptiveness
is determined in relation to the goods or services for
which registration is sought. As indicated earlier, that a
term may have a different meaning in a different context is
not controlling. The fact that the word “nap” means a
short sleep or period of relaxation is irrelevant in the
context of applicant’s particular services. Furthermore,
in each of the double entendre cases cited by applicant,
the secondary interpretations that make each expression a
double entendre consist of an association that the public
would make quite readily. In this case, we are not
convinced that purchasers would readily associate a short
sleep or period of relaxation with NAP OF THE CARIBBEAN.
There is nothing of record to indicate that visitors to the
Caribbean “nap” any more than visitors to other regions of
the world, or that, even if the record did establish this
point, that prospective purchasers of applicant’s services
would be aware of the purported practice. Thus, we find
that applicant’s mark is not analogous to the marks
involved in the cases cited by applicant.
For the foregoing reasons, we find that NAP OF THE
CARIBBEAN is merely descriptive of applicant’s services of
Serial No. 76283603
10
providing central connection points for telecommunication
network carriers.
Refusal under Trademark Act Section 2(d)
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
Serial No. 76283603
11
We review the relevant du Pont factors as they apply
to this case. We begin by comparing applicant’s services
with those of registrant. Applicant’s services are
identified as “telecommunications services, namely,
providing central connection points for telecommunication
network carriers.” Registrant’s services include
“consultation in the field of telecommunications, namely,
telecommunication services relating to network access
points.” Applicant does not dispute that its services
encompass or are closely related to registrant’s services.
Moreover, in view of the closely related nature of the
respective services, we find that they would be offered in
the same or overlapping trade channels and to many of the
same purchasers, i.e., telecommunication network carriers.
Accordingly, the du Pont factors of the similarity of the
goods, trade channels and classes of purchasers favor a
finding of likelihood of confusion.
Under the du Pont factor relating to conditions of
purchase, we find that from the identifications of
applicant’s and registrant’s services, they are of a type
which would be purchased by, or in consultation with,
persons knowledgeable in the telecommunications field.
However, the fact that purchasers would typically be
knowledgeable does not mean that they would be entirely
Serial No. 76283603
12
immune from confusion as to source or sponsorship.
Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ
289, 292 (CCPA 1962). We find that this du Pont factor
weighs slightly against a finding of likelihood of
confusion.
We turn now to a comparison of applicant’s and
registrant’s marks when viewed in their entireties in terms
of appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test under this du Pont factor
is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the services offered under the respective marks
is likely to result.
In this case, the marks are similar to the extent that
they begin with the wording NAP OF THE and end with a
geographical term; CARIBBEAN in the case of applicant’s
mark, and AMERICAS in the case of registrant’s mark. The
fact that the marks begin with the identical wording is not
insignificant. Presto Products, Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)[“…[it is] a matter of
Serial No. 76283603
13
some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered.”]. See also Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
supra.
In terms of meaning, the marks also are similar in
that both connote a network access point for
telecommunication network carriers to link a specific
geographic area to other parts of the world. Applicant
argues that the marks have different connotations based on
the double entendre created by NAP OF THE CARIBBEAN.
However, as previously indicated, we are not persuaded that
the mark creates a double entendre. We also note that the
registered mark uses the plural AMERICAS, not AMERICA, so
it will be perceived as connoting the entire Western
Hemisphere, which includes the Caribbean region.3 In short,
we find that when applicant’s mark and registrant’s mark
are considered in their entireties, they have similar
connotations.

3 We take judicial notice that the Western Hemisphere includes
“the western part of the terrestrial globe, including North and
South America, their islands, and the surrounding waters.”
Random House Dictionary (2009). See University of Notre Dame du
Lac v. J.C. Gourmet Foods Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 76283603
14
Furthermore, when applicant’s mark and registrant’s
mark are considered in their entireties, the marks engender
sufficiently similar overall commercial impressions so
that, if the involved closely related services were offered
thereunder, confusion would be likely to occur among
purchasers. That is, it is reasonable to conclude that
purchasers familiar with registrant’s mark will view NAP OF
THE CARIBBEAN as identifying a more specialized
telecommunication service from registrant which serves to
link the Caribbean to other parts of the world.
The du Pont factor of the similarity of the marks
therefore favors a finding of likelihood of confusion.
Applicant, in contending that the marks are not
confusingly similar, asserts that registrant’s mark is
descriptive and, therefore, entitled to a limited scope of
protection. This argument, however, constitutes a
collateral attack upon the validity of the registered mark
and as such can only be entertained in the context of a
petition to cancel. Furthermore, the issuance of the cited
registration under Section 2(f) of the Trademark Act
indicates that the mark shown therein had become
distinctive of the registrant’s services in commerce prior
to the issuance of the registration. Thus, we cannot say
Serial No. 76283603
15
that registrant’s mark is weak and, therefore, entitled to
a limited scope of protection.
In addition, applicant argues that there are numerous
marks that include NAP for services in the
telecommunications field, and that the commonality of this
term is an insufficient basis upon which to find that the
marks are confusingly similar. Applicant lists in its
brief on the case three third-party registrations for marks
that include NAP. As the examining attorney notes,
applicant did not properly make these registrations of
record. See In re Duofold, Inc., 184 USPQ 638, 640 (TTAB
1974) [“[T]he mere submission of a list of registrations is
insufficient to make them of record”]. Nonetheless,
inasmuch as the record shows that NAP stands for “network
access point,” and registrant has disclaimed any rights in
the term, there is no question that NAP has descriptive
significance as used in connection with registrant’s
services. This does not aid applicant, however, as the
term has the same meaning in both marks, cannot be ignored
in the likelihood of confusion analysis merely because it
is disclaimed, and our finding that the marks are
confusingly similar is not based solely on the commonality
of the term NAP, but on the overall structure of the marks,
and the overlapping geographic connotations.
Serial No. 76283603
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In view of the foregoing, we conclude that purchasers
familiar with registrant’s consultation services in the
field of telecommunications, namely telecommunication
services relating to network access points, offered under
the mark NAP OF THE AMERICAS would be likely to believe,
upon encountering applicant’s closely related
telecommunication services of providing central connection
points for telecommunication network carriers offered under
its mark NAP OF THE CARIBBEAN that the services originated
with or are associated with or sponsored by the same
entity.
Decision: The refusals to register under Trademark
Act Sections 2(e)(1) and 2(d) are affirmed.