Checkpoint Systems, Inc.v.CheckPoint Mailers, Inc.

Trademark Trial and Appeal Board

Mar 10, 2008

No. 91165826 (T.T.A.B. Mar. 10, 2008)

Mailed: 3/10/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Checkpoint Systems, Inc.
v.
CheckPoint Mailers, Inc.
_____

Opposition No. 91165826
to application Serial No. 76568845
filed on January 8, 2004
_____

Roberta Jacobs-Meadway, Patricia G. Cramer and Troy E.
Larson of Ballard Spahr Andrews & Ingersoll for Checkpoint
Systems, Inc.

Heather C. Lowry for Checkpoint Mailers, Inc.
______

Before Quinn, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

CheckPoint Mailers, Inc. filed an application to
register the mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91165826
2
(“MAILERS” and “INCORPORATED” disclaimed) for “processing
and delivery of personal items surrendered at transportation
security checkpoints.”1
Checkpoint Systems, Inc. opposed registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground of likelihood of confusion. Opposer alleged that
applicant’s mark, when used in connection with applicant’s
services, so resembles opposer’s previously used and
registered CHECKPOINT and checkmark design marks for retail
loss prevention sensors, electronic article surveillance,
tracking products, access control entry products and related
security products, programs and services as to be likely to
cause confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by opposer; a discovery deposition of
applicant with related exhibits, certified copies showing
status and title of opposer’s pleaded registrations, copies
of third-party registrations, copies of articles from
printed publications, and applicant’s responses to certain
interrogatories and requests for admissions, all introduced

1 Application Serial No. 76568845, filed January 8, 2004,
alleging first use anywhere and first use in commerce on April
28, 2003.
Opposition No. 91165826
3
by way of opposer’s notices of reliance. Applicant neither
took testimony nor offered any other evidence. Both parties
filed briefs.2
Opposer is engaged in the design, manufacture and sale
of identification, security and surveillance products that
integrate multiple functions, including pricing, tracking,
promotion and shortage control. Opposer also renders
related services. Opposer began using its CHECKPOINT mark
in 1969. Opposer’s business is divided into four general
segments: electronic article surveillance (EAS); electronic
access control (EAC); closed circuit television (CCTV); and
radio frequency identification (RFID). Opposer’s security
products and services are used to monitor location and track
movement of people and physical assets. The products are
used in many applications, including in retail stores at
airports to prevent unauthorized removal of merchandise, in
libraries to prevent theft of reference materials, and at
airports in connection with security. Opposer’s current
annual sales in the United States are approximately $230
million. In the EAS, EAC and CCTV fields, opposer is among

2 The Board, in an order dated June 12, 2007, struck the last
five pages of Appendix A attached to applicant’s brief. Opposer,
in its reply brief, also requests that the Board not consider
certain statements in applicant’s brief. Suffice it to say that
while we have read applicant’s entire brief, factual statements
in applicant’s brief that are not supported by evidence have been
given no weight; statements in a brief have no evidentiary value.
See, e.g., Electronic Data Systems Corp. v. EDSA Micro Corp., 23
USPQ2d 1460, 1465 n.5 (TTAB 1992); and TBMP §704.06(b) (2d ed.
rev. 2004).
Opposition No. 91165826
4
the leaders in market share. Opposer advertises in trade
publications, direct mail and at security trade shows. Over
a recent 3-year period, advertising expenditures totaled
$3.8 million. Opposer also has been the subject of
unsolicited media coverage.
Applicant operates 27 kiosks at airports throughout the
United States. Applicant’s services are offered to airline
passengers who are informed, pursuant to guidelines issued
by the Transportation Security Administration (TSA), that
they must surrender certain prohibited items from their
carry-on luggage before boarding their flight. Passengers
preferring to ship prohibited articles back home rather than
surrendering them before passing through security at TSA
gate entry points have the option of utilizing applicant’s
services. The passenger picks up a package at applicant’s
kiosk that is located near the airport’s security gates,
fills out the required mailing information, and the package
containing the prohibited item is sent to the desired
location. Applicant’s first kiosk began operating in April
2003 at the Charlotte (North Carolina) Douglas airport.
Applicant’s sales have steadily increased, with sales in
2003 estimated at $160,000-$200,000, and sales in 2005
exceeding $660,000. In 2004, applicant shipped 60,000
packages. Applicant’s busiest location is at the Las Vegas,
Nevada airport, with approximately $13,000 in monthly sales;
Opposition No. 91165826
5
the least busy location is at the Akron, Ohio airport, with
$150-$250 in monthly sales. In the past three years
applicant spent about $60,000 in promotional activities.
Heather Lowry, applicant’s president and chief operating
officer, has given many interviews aired on television and
radio.
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made its pleaded registrations of
record (see infra) and, further, has shown that it is not a
mere intermeddler. Opposer’s use and registrations of its
marks establish that opposer has standing. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
As to priority, opposer introduced during its testimony
period the following registrations: CHECKPOINT (in standard
character form) for “security services, namely, preventing
the unauthorized removal of materials from restricted
areas”;3 “electronic protection equipment, namely, apparatus
for detecting articles being removed and locating lost
articles”;4 and “electronic security and surveillance

3 Registration No. 844752, issued February 20, 1968; renewed.
4 Registration No. 845817, issued March 12, 1968; renewed.
Opposition No. 91165826
6
systems comprising magnetic sensors, magnetic tags and
magnetic tag deactivators; electronic access control systems
for securing corporate assets, namely, access control cards,
access control card readers, computers for operating and
controlling electronic access control systems and computer
programs for running the electronic access control system;
closed circuit television systems for tracking assets
comprising televisions, controllers, cameras and computers
for operating and controlling closed circuit television
systems; radio frequency identification and surveillance
systems for monitoring the location and control of assets
comprised of radio frequency readers, radio frequency tags
and computer programs for operating the radio frequency
identification and surveillance system.”5 Also of record is
the registration for the mark shown below

for “RF (radio frequency) security tags.”6
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s

5 Registration No. 2440085, issued April 3, 2001; Section 8
affidavit accepted, Section 15 affidavit filed.
6 Registration No. 2119592, issued December 9, 1997; renewed.
Opposition No. 91165826
7
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, the only
issue to decide herein is likelihood of confusion.
We accordingly turn to the issue of likelihood of
confusion. Our determination under Section 2(d) is based on
an analysis of all of the facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposer must establish
that there is a likelihood of confusion by a preponderance
of the evidence. The relevant du Pont factors in the
proceeding now before us are discussed below.
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The test 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
their entireties that confusion as to the source of the
services offered under the respective marks is likely to
result. In comparing the marks, we will focus on opposer’s
CHECKPOINT mark rather than its stylized checkmark design
Opposition No. 91165826
8
mark inasmuch as opposer’s word mark is the closer of the
two marks to applicant’s mark.
In considering applicant’s logo mark, it is well
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) [“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. Indeed,
this type of analysis appears to be unavoidable.”].
Where both words and a design comprise the mark (as in
applicant’s mark), then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them, and
would be used by them to request the goods and/or services.
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Thus, in the case of applicant’s mark, we
find that the dominant portion is the literary portion of
the mark, namely CHECKPOINT MAILERS INCORPORATED.
Opposition No. 91165826
9
In considering the literary portion of applicant’s
mark, this portion, in turn, is dominated by the term
CHECKPOINT. We so find because descriptive/generic matter
generally is subordinate to source-identifying portions of a
mark. For example, merely descriptive matter that is
disclaimed has been accorded subordinate status relative to
the more distinctive portions of a mark. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); and In re Code Consultants Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) [Disclaimed matter is often “less
significant in creating the mark’s commercial impression”].
In the present case, applicant has disclaimed the generic
terms MAILERS and INCORPORATED. See Cunningham v. Laser
Golf Corp., 55 USPQ2d at 1846, quoting, In re National Data
Corp., 224 USPQ at 752 [“Regarding descriptive terms, this
court has noted that the ‘descriptive component of a mark
may be given little weight in reaching a conclusion on
likelihood of confusion.’”]. The term MAILERS is generic
and has no source-indicating capacity. As shown by the
multiple dictionary definitions introduced by opposer, the
term “mailer” means “a container for mailing something.”
See, e.g., The American Heritage Dictionary of the English
Language (4th ed. 2000). Opposer also introduced excerpts
of numerous third-party websites showing generic uses of
“mailers” in connection with mailing containers. Further,
Opposition No. 91165826
10
several third-party registrations covering shipping and
packing supplies list “mailers” in the identification of
goods. Lastly, although applicant stated that the term
“mailers” has multiple meanings, it admitted that one of the
meanings “is an envelope or container in which something is
to be mailed.” (Response to Request for Admission No. 1).
As generic matter, the term MAILERS was properly disclaimed.
See TMEP §1213.03(b) (5th ed. 2007). Insofar as the
abbreviation INC. is concerned, INC. clearly is an entity
designation and as such has no source-indicating capacity.
In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB
1984). See TMEP §1213.03(d) (5th ed. 2007).
In view of the above, we find that the term CHECKPOINT
is the dominant portion of applicant’s mark. This term is
identical in sound, appearance, meaning and commercial
impression to the entirety of opposer’s mark CHECKPOINT.
This point is buttressed by Ms. Lowry’s testimony that
applicant’s kiosk is referred to as “a CheckPoint kiosk.”
(Lowry dep., p. 48).
Although the dominant portion, CHECKPOINT, of
applicant’s mark is identical to registrant’s mark
CHECKPOINT, we must do more than just compare the individual
components of the marks; it is necessary that we compare the
marks as a whole. M2 Software Inc. v. M2 Communications
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir.
Opposition No. 91165826
11
2006) [“When comparing the similarity of marks, a disclaimed
term...may be given little weight, but it may not be
ignored”]. While we have considered the MAILERS and
INCORPORATED portions of applicant’s mark, purchasers are
likely to view these commonly understood and recognized
terms as having no distinguishing or source-indicating role
in the mark.
In view of the above, we find that the parties’ marks
are similar. The similarity between the parties’ marks is a
factor that weighs in opposer’s favor.
Opposer characterizes its marks as “strong.” Although
the term “checkpoint” is somewhat suggestive of opposer’s
goods and services, the record is devoid of any third-party
uses or registrations of “checkpoint” in the security field.
Further, the record shows that opposer has enjoyed a degree
of success with its goods and services offered under its
mark CHECKPOINT, and that opposer’s mark has been actively
promoted to the relevant purchasers. Accordingly, we
accept, for purposes of our analysis, that opposer’s mark is
strong. This factor weighs in opposer’s favor.
We next turn to a consideration of the goods and
services. It is not necessary that the respective goods
and/or services be competitive, or even that they move in
the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
Opposition No. 91165826
12
respective goods and/or services are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods and/or services are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originated
from the same producer. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
We readily acknowledge that there are specific
differences between the goods and services involved herein.
Nevertheless, the goods and services are related to the
extent that opposer’s goods and services and applicant’s
services relate to security, and more particularly, to the
restriction of articles and individuals to certain areas; in
some applications, opposer’s goods and services are present
in airports as is the case with applicant’s services.
Opposer’s goods and services are used for restricting
the movement of articles beyond a certain point, and
applicant’s services involve the handling of articles that
have been restricted from moving beyond a certain point.
Some of opposer’s goods, such as the electronic access
control and closed circuit television products, are used in
connection with airport security. According to David
Shoemaker, opposer’s group vice president for market
development, opposer has contemplated using its technology
Opposition No. 91165826
13
in connection with luggage tags for baggage handling at
airports, and the tracking of VIP passengers at airports.
Thus, the parties’ goods and services essentially are
offered in connection with improving the overall security of
an airport; in fact, applicant’s brochure invites
prospective airport customers to “Call Today To Add
CheckPoint Mailers to Your Security System.”
Further, according to Mr. Shoemaker, “today’s airport
looks more like a mall,” and opposer’s customer base
includes retail stores located in airports.
In view of the above, we find that the goods and
services move through similar trade channels and are
directed to overlapping customers. On-Line Careline, Inc.
v. America Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475
(Fed. Cir. 2000). Both opposer and applicant market their
respective goods and services to airport security
departments.
Security professionals familiar with opposer’s security
products, such as electronic assess control and closed
circuit television products sold under the mark CHECKPOINT,
would be likely to believe, upon encountering applicant’s
services involving the processing and delivery of personal
items surrendered at transportation security checkpoints
rendered under the mark CHECKPOINT MAILERS INCORPORATED and
Opposition No. 91165826
14
design, that the goods and services originated with or are
somehow associated with or sponsored by the same entity.
We also find that the end users of the parties’ goods
and services are likely to be confused. As opposer
contends:
CheckPoint Mailers’ services are also
directed to travelers at airports who
must pass through security gates. The
same individuals who pass through the
security gates at airports are the same
types of customers who carry Checkpoint
electronic access cards which display
the Checkpoint Name and Marks, and the
same members of the general public who
shop at stores where the Checkpoint Name
and Marks appear on Checkpoint’s EAS
tags, sensors and deactivation pads
located at the gates at the exits and at
the checkout counters. Travelers who
also carry Checkpoint electronic access
cards, for example, to gain entry to
their office buildings, are likely to
wrongly conclude that CheckPoint
Mailers’ services are another aspect of
Checkpoint’s vast physical security
business.

(Opposer’s Brief, p. 17). These users, familiar with
opposer’s goods and services, would be likely to believe
that opposer’s business activities include providing an
additional security service in handling items that travelers
are prohibited from carrying with them when they gain access
to restricted areas.
The absence of actual confusion is of little moment.
Given the short length of time of contemporaneous use of the
marks, and applicant’s relatively low level of sales and
Opposition No. 91165826
15
advertising under its mark, the opportunity for confusion to
have occurred in the marketplace has been minimal.
Moreover, the test is likelihood of confusion, not actual
confusion. Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). We view
this du Pont factor as neutral in our analysis.
We find that the du Pont factors, on balance, weigh in
favor of a finding of likelihood of confusion.
Lastly, to the extent that there may be any doubt on
our finding of likelihood of confusion, we resolve that
doubt, as we must, in favor of opposer as the prior user and
registrant. See Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.