Metro Aviation, Inc.

Trademark Trial and Appeal Board

Feb 10, 2020

86773414 (T.T.A.B. Feb. 10, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: February 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Metro Aviation, Inc.
_____

Serial No. 86773414
_____

Mackenzie D. Rodriguez of Garvey Smith & Nehrbass, Patent Attorneys, LLC
for Metro Aviation, Inc.
Linda Orndorff, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____

Before Heasley, Lynch, and Dunn,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Metro Aviation, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark METRO AVIATION (in standard characters, with “AVIATION” disclaimed)
for
Maintenance and repair of aircraft; repair and maintenance of aircraft in
the nature of routine maintenance for preserving optimal functioning of
aircraft, and repairs to damaged or malfunctioning aircraft, namely, repair
of aircraft engines, aircraft safety components, and airframe all performed
by maintenance technicians, in International Class 37;

Aircraft completion, namely, custom construction of aircraft, custom
manufacture of aircraft, in International Class 40; and
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Aircraft engine inspection; airframe inspection; night vision goggle
calibration, in International Class 42.1

The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark METRO (in standard characters) for
“Aircraft and structural parts therefor[]; aircraft parts, namely, fuselages, landing
gear, empennages, nose cones, wings, flaps, and ailerons” in International Class 12.2
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.
I. Likelihood of Confusion
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575
U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).

1 Application Serial No. 86773414 was filed on September 30, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as December 30, 1984.

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.

2 Registration No. 3181593, issued on the Principal Register on December 5, 2006; renewed.
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We have considered each DuPont factor that is relevant and of record. See Zheng
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018)
(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)
(“Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.”)); M2 Software, Inc. v. M2
Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various
evidentiary factors may play more or less weighty roles in any particular
determination”). “In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods and
services.” Ricardo Media Inc. v. Inventive Software, LLC, 219 USPQ2d 311355, *5
(TTAB 2019) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945
(Fed. Cir. 2004) and Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976)).
A. Similarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
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567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “The marks
‘must be considered … in light of the fallibility of memory’ and ‘not on the basis of
side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)).
Applicant argues that “While both marks [METRO and METRO AVIATION] have
the common word ‘METRO,’ the addition of the word ‘AVIATION’ creates a distinctive
difference in the applied-for mark.”3 “The mere inclusion of … common words in the
marks does not automatically create a likelihood of confusion,” Applicant asserts,
citing In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986)
(holding BED & BREAKFAST REGISTRY for making lodging reservations for others
in private homes not likely to be confused with BED & BREAKFAST
INTERNATIONAL for room booking agency services) and In re Hearst Corp., 982
F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992) (finding that VARGA GIRL and VARGAS
are sufficiently different in sound, appearance, connotation, and commercial
impression to negate likelihood of confusion).4 Additionally, it argues that “METRO”

3 Applicant’s brief, 7 TTABVUE 4.
4 Applicant’s brief, 7 TTABVUE 3.
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is a weak element because it appears in other registered marks:
Mark and Reg. No. Pertinent Goods and/or Services
METROJET & design
Reg. No. 4611959
Business management services, namely, aircraft
management services for others…IC 35.
Lease-purchase financing of aircrafts…IC 36.
Aircraft chartering services; leasing and renting of
aircraft and aircraft engines; airline transportation
services; airline check-in services… IC 39.
METRO LOGISTICS
Reg. No. 5253512
Customized supply chain management services, …
freight logistics management services to customers on a
contractual basis; customized transportation logistics
services, namely, arranging the transportation of goods
for others … IC 35.
METRO and design
Reg. No. 3610403
Transportation of passengers and/or goods by light rail
and/or bus service. IC 39.
METRO AIR FORCE
Reg. No. 2740929
Portable electric air power blower for use in drying pets.
IC 11.
METROVAC
Reg. No. 4508026
(Same registrant as METRO
AIR FORCE)
Portable electric air power blower for drying motor
vehicles, namely, automobiles and motorcycles and for
use in drying pets, and cooling cages for pets. IC 11. 5

Applicant concludes that:
“active third-party registrations may be relevant to show that a mark or a
portion of a mark is descriptive, suggestive, or so commonly used that the
public will look to other elements to distinguish the source of the goods or
services.” In this case, the broad third-party uses of “metro,” indicate that
the public would not associate the registered mark “METRO” with all
marks incorporating “metro”.6

We agree with the Examining Attorney, however, that the marks, taken in their
entireties, are similar. Applicant’s standard character mark, METRO AVIATION,
incorporates Registrant’s standard character mark METRO in its entirety.

5 Applicant’s brief, 7 TTABVUE 5; March 19, 2019 Response to Office Action at 7-21.
6 Applicant’s reply brief, 10 TTABVUE 3 (quoting the TRADEMARK MANUAL OF EXAMINING
Procedure (TMEP) § 1207.01(d)(iii) (Oct. 2018)).

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Likelihood of confusion has often been found where one mark is incorporated into
another. E.g., Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409,
* 6-7 (TTAB 2019); TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB
2019) (citing Coca-Cola Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d
556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to BENGAL LANCER)).
Applicant’s addition of the disclaimed descriptive term AVIATION does not avoid
confusing similarity between the marks. “[I]f a junior user takes the entire mark of
another and adds a generic, descriptive or highly suggestive term, it is generally not
sufficient to avoid confusion.” Double Coin Holdings v. Tru Development, 2019
USPQ2d 377409 at 7; see In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997) (finding that the dominant part of applicant’s mark, THE
DELTA CAFE, was the word “Delta” in part because the generic word “cafe” was
disclaimed), cited in In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050
(Fed. Cir. 2018). As the Federal Circuit Court of Appeals’ predecessor put it:
If all that a newcomer in a field need do in order to avoid the charge of
confusing similarity is to select a word descriptive of his goods and combine
it with a word which is the dominant feature of a registered mark so that
the borrowed word becomes the dominant feature of his mark, the
registered trade-mark, made valuable and outstanding by extensive
advertising and use, soon becomes of little value….

Bon Ami Co. v. McKesson & Robbins, Inc., 93 F.2d 915, 36 USPQ 260, 261 (CCPA
1938) (Hatfield, J., concurring).
If anything, Applicant’s mark would tend to be seen as a variation of Registrant’s
METRO mark. After all, “aviation” means “[t]he design, development, and production
Serial No. 86773414
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of aircraft.”7 So adding AVIATION to METRO suggests a line of aircraft maintenance,
completion, and inspection services complementing Registrant’s aircraft and aircraft
parts.
It is proper to give more weight to the dominant feature “METRO” in determining
the commercial impression created by Applicant’s mark. In re Nat’l 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.”) quoted in
TiVo v. Tivoli, 129 USPQ2d at 1116. The prominence of METRO is enhanced by its
placement at the beginning of Applicant’s mark, where it is likely to be noticed and
recognized by purchasers. See In re Detroit Athletic, 128 USPQ2d at 1049 (finding
“[t]he identity of the marks’ two initial words is particularly significant because
consumers typically notice those words first”) (citing Palm Bay Imps. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 73 USPQ2d at 1692 (finding similarity
between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because
VEUVE “remains a ‘prominent feature’ as the first word in the mark and the first
word to appear on the label”); 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 will first notice the identical lead word)).

7 AHDictionary.com 1/21/2016, Jan. 22, 2016 Office Action at 10-11.

Serial No. 86773414
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Applicant’s reliance on In re Bed & Breakfast Registry to weaken the significance
of “METRO” is misplaced, as that decision held that the shared term “bed and
breakfast” was merely descriptive:
The descriptiveness of the phrase “bed and breakfast” is not contested. The
record before the Board showed references to “bed and breakfast”
reservation or referral services in travel guide books, directories, and
newspaper articles; e.g., Associated Bed and Breakfast Services, Bed and
Breakfast Chicago, Bed & Breakfast Hawaii, The Bed & Breakfast League
Ltd., and Bed and Breakfast of Long Island. We agree with the applicant
that travellers acquainted with the term “bed and breakfast” are more
likely to rely on the non-common portion of each mark, e.g., “registry” vs.
“international”, to distinguish among similar services.

In re Bed & Breakfast Registry, 229 USPQ at 819. The cited mark METRO does not
describe aircraft or aircraft parts, and is presumed to be inherently distinctive
because it is registered on the Principal Register. In re Fiesta Palms LLC, 85 USPQ2d
1360, 1363 (TTAB 2007) cited in In re Fat Boys Water Sports LLC, 118 USPQ2d 1511,
1517 (TTAB 2016).
The Hearst decision cited by Applicant is also distinguishable. There, the marks
were VARGAS and VARGA GIRL; the first words in the marks were similar but not
identical, and the Court found that “[t]he appearance, sound, sight, and commercial
impression of VARGA GIRL derives significant contribution from the component
‘girl.”’ In re Hearst Corp., 25 USPQ2d at 1239. The Court recognized that the weight
given terms in a mark is “not entirely free of subjectivity” and provided examples to
“illustrate the fact-dependency of such determinations.” Id. at 1239 & n. 2. The facts
of this case can be distinguished from Hearst, as the first word of Applicant’s mark is
identical to Registrant’s mark, and the second word of Applicant’s mark is disclaimed,
descriptive, and entitled to little weight.
Serial No. 86773414
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Furthermore, Applicant’s METRO-formative third-party registrations have
additional wording and design elements not found in the cited registration or involved
application, and most involved unrelated goods or services. See Omaha Steaks Int’l,
Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir.
2018); In re Integrated Embedded, 120 USPQ2d 1504, 1512-13 (TTAB 2016); In re
Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009). They thus fail to undermine
the inherent strength of the cited registered mark.8
All in all, we find that the marks are similar, and that the first DuPont factor
weighs in favor of finding a likelihood of confusion.
B. Relatedness of the Goods and Services

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration….” DuPont, 177
USPQ at 567. Registrant’s identified goods are, essentially, aircraft and aircraft
parts. Applicant’s identified services are, essentially, maintenance and repair of
aircraft, aircraft construction and completion, and aircraft inspection.
Applicant argues that “the services of the applied-for mark include various
aviation related services. Aircraft related goods such as those listed in the
registration are not sold under the applied-for mark. And, likewise, aircraft

8 Applicant does not mention the sixth DuPont factor, concerning similar third-party marks
on similar goods. DuPont, 177 USPQ at 567. Even if it had, its cited third-party registrations
would not undermine the strength of the cited registered mark, conceptually or commercially,
for the reasons stated above. See generally In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1745-46 (TTAB 2016).

Serial No. 86773414
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completion, maintenance, inspection and training services are not advertised under
the registered mark.”9
It is well established that “confusion may be likely to occur from the use of the
same or similar marks for goods, on the one hand, and for services involving those
goods, on the other.” In re Detroit Athletic, 128 USPQ2d at 1051. The issue is not
whether purchasers would confuse Registrant’s and Applicant’s goods and services,
but rather “whether ‘the consuming public may perceive [the respective goods or
services] as related enough to cause confusion about the source or origin of the goods
and services.’” In re St. Helena Hosp., 113 USPQ2d at 1086 (quoting Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002))
quoted in In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
Here, it is apparent that Applicant’s services concern the construction, completion,
inspection, maintenance and repair of the very sort of aircraft and parts identified in
the cited registration. To show the relatedness of the respective goods and services,
the Examining Attorney adduced three use-based third-party registrations
identifying the same or similar goods and services offered under the same mark:
Mark and Reg. No. Pertinent Goods and Services
AAR COMPOSITES
Reg. No. 2280849
Aircraft engine parts. IC 7
Airplane parts; cabinets and other structures in
aircraft. IC 12
Repair of aircraft and of aircraft parts. IC 37
SEGERS
Reg. No. 4872662
Aircraft; aeroplanes; parts for aircraft. IC 12
Repair and maintenance of aircraft, parts of aircrafts.
IC 37

9 Applicant’s brief, 7 TTABVUE 5.
Serial No. 86773414
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AVIC & Design
Reg. No. 5209763
Vehicles for locomotion by air…; aircraft; aircraft
parts. IC 12.
Maintenance and repair of aircraft; airplane
maintenance and repair. IC 3710

“As a general proposition, third-party registrations that cover goods and services from
both the cited registration and an Applicant’s application are relevant to show that
the goods and services are of a type that may emanate from a single source under one
mark.” In re Country Oven, Inc., 2019 USPQ2d 443903, * 8-9 (TTAB 2019) (citing
Detroit Athletic, 128 USPQ2d at 1051).
The Examining Attorney corroborates this evidence with web pages showing the
same entities—Delta, Quality Aircraft Accessories, and Professional Aircraft
Accessories—providing aircraft goods and aircraft repair services under the same
mark.11 This evidence also helps establish a relationship between those goods and
services. Hewlett-Packard v. Packard Press, 62 USPQ2d at 1004 (evidence that “a
single company sells the goods and services of both parties, if presented, is relevant
to the relatedness analysis”); Ricardo Media v. Inventive Software, 219 USPQ2d
311355 at *3.
Applicant does not controvert this third-party evidence. It argues, though, that
“based on what can be found about Registrant’s use of the mark…, the term METRO
as used by Registrant appears to refer only to a brand of airplane which apparently
is no longer made, further reducing the likelihood of confusion.”12

10 Sept. 19, 2018 Office Action at 16-24.
11 DeltaTechOps.com, QAA.com, Gopaa.com 9/18/2018, Sept. 19, 2018 Office Action at 6-15.
12 Applicant’s brief, 7 TTABVUE 6.
Serial No. 86773414
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Our decision must be based on the identification of goods in the pleaded
registration and subject application. Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1162. We cannot restrict an identification based on extrinsic evidence. “In
innumerable cases, the Board hears arguments about how the parties’ actual goods,
services, customers, trade channels, and conditions of sale are narrower or different
from the goods and services identified in the applications and registrations. But as
stated in equally innumerable decisions of our primary reviewing court, we may
consider any such restrictions only if they are included in the identification of goods
or services.” In re FCA US LLC, 126 USPQ2d 1214, 1217 n.18 (TTAB 2018), aff’d, 778
Fed. Appx. 962 (Fed. Cir. 2019). So Applicant’s extrinsic evidence is unavailing.13
We find accordingly that Registrant’s and Applicant’s identified goods and
services are related, such that the second DuPont factor weighs in favor of finding a
likelihood of confusion.
C. Similarity of Channels of Trade and Classes of Purchasers

The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567. In the absence of
meaningful limitations in either the application or the cited registration, we presume

13 Applicant also contends: “Finally, Applicant points out that it has been using its mark for
the relevant services since 1984 or 1985. Registrant’s use of its mark did not begin until 2003,
according to its registration.” Applicant’s brief, 7 TTABVUE 6. Its point is unavailing,
however, as it amounts to an impermissible collateral attack on a registration. 15 U.S.C. §§
1057(b), 1064(1). In re Detroit Athletic Co., 128 USPQ2d at 1053; In re Solid State Design
Inc., 125 USPQ2d 1409, 1410 (TTAB 2018) (“[Applicant’s argument constitutes] a collateral
attack on the registration, which we cannot entertain on this appeal because of the statutory
presumptions that we must accord the registration under Section 7(b) of the Trademark
Act.”).
Serial No. 86773414
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that the respective goods and services travel through all usual channels of trade and
are offered to all normal potential purchasers. In re i.am.symbolic, LLC, 866 F.3d
1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017) (citing In re Viterra, 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion); Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Applicant argues that:
The group of consumers who would search for or purchase Applicant’s
services are likely not the same group of consumers who would search for
and purchase the aircraft parts sold by Registrant. The FAA (Federal
Aviation Administration) requires that aircraft technicians (who might use
the aircraft parts sold under the Registrant’s mark) be specially trained
and certified by passing a minimum of three separate tests. See generally,
14 C.F.R. §§141-147. Therefore, a consumer who required the services of
the Applicant would be unlikely to shop for the goods of Registrant since
they would not likely be certified to use those parts for aircraft
construction, maintenance, and/or repair. And, a consumer who was
shopping for the goods of Registrant would be unlikely to require the
services of Applicant.14

We disagree. Applicant submitted no evidence in support of its assertions about
the allegedly different consumers of these goods and services. See Zheng Cai v.
Diamond Hong, 127 USPQ2d at 1799 (agreeing that “Attorney argument is no
substitute for evidence.”). Potential purchasers in this case would be aircraft owners,
whether individuals or organizations. Those who purchase aircraft and aircraft parts
will need aircraft construction, completion, inspection, maintenance, and repair

14 Applicant’s brief, 7 TTABVUE 5-6.
Serial No. 86773414
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services. And the third-party evidence indicates that these aircraft-related goods and
services are offered by the same source under the same mark. Thus, Registrant’s
goods and Applicant’s services could well come to the attention of the same class of
purchasers under circumstances suggesting a common origin. And those purchasers
who avail themselves of these complementary goods and services could well believe
that they emanate from the same source, given the similarity of the marks.
We thus conclude that the third DuPont factor also favors a finding of likelihood
of confusion.
II. Conclusion

When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that purchasers familiar with
Registrant’s goods offered under its mark would be likely to believe, on
encountering services offered under Applicant’s mark, that the services
originated with or are associated with or sponsored by the same entity. There is
therefore a likelihood of confusion under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark is affirmed.