Expeditors Int’l. of Washington, Inc.

Trademark Trial and Appeal Board

May 11, 2001

No. 75583455 (T.T.A.B. May. 11, 2001)

5/11/01
Paper No. 10
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Expeditors International of Washington, Inc.
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Serial No. 75/583,455
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Faye L. Tomlinson of Christensen O'Connor Johnson Kindness PLLC
for Expeditors International of Washington, Inc.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
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Before Cissel, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Expeditors International of Washington, Inc. (applicant) has
appealed from the final refusal of the Trademark Examining
Attorney to register the following mark for "computer software
for use by businesses in performing transactions in the field of
import and export trade" in Class 9 and "business consultation
services relating to the importing and exporting of goods,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/583,455
2
government trade regulations, in compliance with government
import and export regulations" in Class 35.1
Registration has been refused under Section 2(d) of the
Trademark Act on the ground that applicant's mark so resembles
the registered mark WINTRADE for "computer software and data
bases for use in document processing and facilitating work flow
in the fields of international business and financial
transactions"2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed. Both
applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
In any likelihood of confusion analysis, we look to the
factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand and those of
1 Application Serial No. 75/583,455, filed November 5, 1998, alleging a
bona fide intention to use the mark in commerce.
2 Registration No. 2,114,712 issued November 18, 1997.
Ser. No. 75/583,455
3
record, including the similarity of the marks and the relatedness
of the goods or services.
The Examining Attorney argues that applicant’s mark TRADEWIN
and registrant’s mark WINTRADE are similar in sound, appearance
and meaning. Noting that applicant’s mark is essentially a
transposition of the registrant’s mark, the Examining Attorney
claims that the transposition does not change the overall
commercial impression the mark conveys. The Examining Attorney
argues that registrant’s broadly worded identification of its
goods as software relating to document processing and
facilitating work flow in the fields of international business
and financial transactions "would certainly encompass the
applicant’s more specific [goods and services]..." and that the
goods and services "are clearly utilized for the same or
[related] purposes, are used in the same environment and are
purchased by the same class of consumers."
Applicant, while admitting that one mark is a transposition
of the other, argues that the transposition does change the
commercial impression the mark creates. Applicant also contends
that the respective goods and services are not related, and that
in fact, the description of registrant's goods is vague and
unclear. It is applicant's position that registrant’s goods are
limited to the field of financial transactions "as they relate to
international business" and that, in considering the "realities
Ser. No. 75/583,455
4
of the marketplace," computer software for financial transactions
in international business and computer software for importing and
exporting goods "are very different." Applicant further
maintains that the channels of trade and classes of purchasers
for the respective products and services are different, and
moreover, that the purchasers for both applicant’s and
registrant’s goods and services are professional buyers who are
less likely to be confused than ordinary consumers would be.
The identification of goods in the cited registration is not
a model of precision and makes it difficult to determine the
exact nature of the registrant’s goods. Contrary to applicant’s
assertions, however, we find that registrant’s software is not
restricted to financial transactions "as they relate to
international business." We find instead that registrant’s goods
do include computer software which facilitates document
processing and work flow in international business and financial
transactions and that these transactions could include
import/export transactions. We note, however, that the customers
for the respective products would be sophisticated professionals
who are knowledgeable about the products they are purchasing and
who would exercise a high degree of care in their purchasing
decisions. See Electronic Design & Sales v. Electronic Data
Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992).
Ser. No. 75/583,455
5
Moreover, the marks used to identify the respective goods
and services are not similar. Applicant’s mark TRADEWIN and
design is a transposition of the two words in the registered mark
WINTRADE. However, marks must be viewed in their entireties in
determining likelihood of confusion. We find that these marks,
when considered in their entireties, are different in sound,
convey different meanings and create distinctly different
commercial impressions. Registrant’s mark WINTRADE consists of
the two words WIN and TRADE, which, when combined in that order,
retain their individual meanings and suggest, in relation to
registrant’s goods, a successful or winning trade, perhaps in an
international stock or other financial market.
However, applicant's mark TRADEWIN and design creates a very
different commercial impression. The reverse order of the words
not only changes the form of the mark, but changes its character
and meaning. When spoken, applicant’s mark is virtually the
phonetic equivalent of "trade wind," a familiar term which
conjures an image of tropical breezes. The design in applicant's
mark, suggesting a flag blowing in the wind, reinforces this
image. Thus, while the term TRADEWIN alludes to the trade or the
import-export activity associated with the goods and services
themselves, it also evokes the entirely different commercial
impression of peaceful beaches and tropical islands far from any
commercial activity, clearly a different commercial impression
Ser. No. 75/583,455
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than that conveyed by registrant's mark WINTRADE. See, e.g., In
re Akzona Incorporated, 218 USPQ 94 (TTAB 1983).
When we consider the differences in the marks and the
sophistication of the respective purchasers, we find that
confusion is not likely.
Decision: The refusal to register is reversed.