OnTrac dba Express Messenger Systems, Inc.

Trademark Trial and Appeal Board

Apr 21, 2010

No. 77406236 (T.T.A.B. Apr. 21, 2010)

Mailed: April 21, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re OnTrac dba Express Messenger Systems, Inc.
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Serial No. 77406236
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Laura J. Zeman of Snell & Wilmer for OnTrac dba Express
Messenger Systems, Inc.

James W. Stein, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney) for Application Serial
No. 77496236.
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Before Seeherman, Walters and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

OnTrac dba Express Messenger Systems, Inc. has filed a
trademark application to register on the Principal Register
the standard character mark ON-TRAC for “software relating
to parcel and package delivery services, namely, computer
software enabling the preparation, administration and
management of overnight parcel and package deliveries, the
preparation and printing of shipment manifests and labels
for overnight parcel and package deliveries, and access to
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
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shipping history and account activity reports, via global
computer networks,” in International Class 9.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the standard character mark ON-TRACK,2 previously registered
for “computer software for recording delivery of and
generating route manifests for parcels,” in International
Class 9 that, if used on or in connection with applicant’s
goods, it would be likely to cause confusion or mistake or
to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
As a preliminary matter, applicant submitted new
evidence with its appeal brief and the examining attorney
has objected thereto. Applicant did not comply with the
established rule that the evidentiary record in an
application must be complete prior to the filing of the
notice of appeal or with a request for reconsideration filed
during the period for filing an appeal. See, 37 CFR
2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532

1 Serial No. 77406236, filed February 26, 2008, based on use in
commerce, alleging first use and use in commerce as of November 1997,
which we construe as November 30, 1997.

2 Registration No. 2609781, issued August 20, 2002, from an application
filed November 29, 2001. The registration is owned by a2b Tracking
Solutions, Inc. [Sections 8 and 15 affidavits accepted and
acknowledged, respectively.]
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(TTAB 1994). We sustain the objection and will not further
consider the exhibits attached to applicant’s brief except
to the extent that the exhibits duplicate evidence properly
submitted prior to appeal.
Our determination under Section 2(d) is based on 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 Company, 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 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 the cases cited therein.
The Goods
We consider, first, the goods involved in this case,
and we note that the question of likelihood of confusion
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must be determined based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
goods or services recited in the registration, rather than
what the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
In this case, both the application and the cited
registration identify computer software for moving parcels.
Applicant’s software for “preparation and printing of
shipment manifests [for overnight delivery of parcels]” and
registrant’s software “for recording delivery of and
generating route manifests for parcels” are essentially
identical or, in view of applicant’s limitation on its
software as pertaining only to overnight parcel delivery,
applicant’s software pertaining to creating manifests is a
subset of registrant’s identified goods. Moreover,
applicant’s goods are also broadly defined as software for
“the preparation, administration and management of overnight
parcel and package [overnight] deliveries,” which
encompasses the subset of registrant’s identified software
pertaining to overnight deliveries.
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Applicant argues that the goods are distinguishable
because consumers will be very aware of the additional
capabilities of its software as compared to registrant’s
more limited-functioning software. However, while there are
differences between the respective software products, it is
well-settled that the goods of an applicant and registrant
need not be similar or even competitive in order to support
a holding of likelihood of confusion, it being sufficient
for the purpose if such goods are related in some manner
and/or if the circumstances surrounding their marketing are
such that they would be likely to be encountered by the same
persons under conditions that would give rise, because of
the marks used thereon, to the mistaken belief that they
emanate from or are in some way associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992);
and In re Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB
1984), and cases cited therein.
This DuPont factor weighs in favor of a finding of
likelihood of confusion.
Trade Channels and Purchasers
We must presume that the goods of applicant and
registrant are sold in all of the normal channels of trade
to all of the usual purchasers for such goods. See Canadian
Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). That is, to the extent that the goods
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overlap, as noted herein, we presume that the goods of
applicant and registrant are sold through the same channels
of trade to the same classes of purchasers.
The nature of the respective goods are such that the
software is likely to be purchased by businesses that
transport parcels and packages, rather than by the less
knowledgeable general consumer. In this regard, applicant
argues that the respective goods are expensive and, thus,
likely to be purchased with care. However, this argument is
of little value as it is unsupported by any evidence.
Further, we agree with the examining attorney that even
sophisticated business consumers, if they are familiar with
registrant’s software, may mistakenly believe that
applicant’s software is an updated version or related
product from registrant with additional functionality.
We find that the du Pont factors of the trade channels
and classes of purchasers favor a finding of a likelihood of
confusion.
The Marks
We turn, next, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
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sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715
(TTAB 2008). The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, 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.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Applicant contends that the spelling differences
between the marks are sufficient to distinguish them. We
disagree. Both marks contain the equivalent of the phrase
“On Track.” We take judicial notice of the definition of
this phrase (under the entry for “track”) in Merriam-
Webster’s Collegiate Dictionary (11th ed. 2003) as
“achieving or doing what is necessary or expected.”
Applicant misspells the phrase by dropping the final letter
“k” and merges the two words, i.e., “OnTrac.” Registrant
separates the two words by a hyphen, “ON-TRACK.” None of
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the aforementioned variations changes the sound or
connotation of the phrase “on track,” nor do they alter the
appearance of the phrase in a meaningful or material manner.
When we compare the marks in their entireties we find
that on the whole they are substantially similar in
appearance, sound, connotation and commercial impression.
This du Pont factor weighs in favor of a finding of
likelihood of confusion.
Actual Confusion
With regard to applicant’s assertion that it is aware
of no instances of actual confusion occurring as a result of
the contemporaneous use of the marks of applicant and
registrant, we note that, while a factor to be considered,
the absence of evidence of actual confusion is of little
probative value where we have little evidence pertaining to
the nature and extent of the use by both applicant and
registrant. Moreover, the test under Section 2(d) is not
actual confusion but likelihood of confusion. See In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 003)(“uncorroborated statements of no known instances
of actual confusion are of little evidentiary value.”). See
also, In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and
In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
Thus, this du Pont factor is neutral.
Conclusion
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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 in view of the similarity
in the commercial impressions of applicant’s mark and
registrant’s mark, their contemporaneous use on the
overlapping goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.