OTS Logistics Group Ltd.

Trademark Trial and Appeal Board

May 19, 2008

No. 78624296 (T.T.A.B. May. 19, 2008)

Mailed: 5/19/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re OTS Logistics Group Ltd.
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Serial No. 78624296
_______

Mark J. Shean of Orrick, Herrington & Sutcliffe for OTS
Logistics Group Ltd.

Wendy B. Goodman, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Walters and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

OTS Logistics Group Ltd. filed an application to
register the mark OTS LOGISTICS GROUP (“LOGISTICS GROUP”
disclaimed) for
information management services,
namely, shipment processing, preparing
shipping documents and invoices,
namely, preparing and issuing export
declarations, bills of lading, and
other export documentation; arranging
for pickup, delivery, storage and
transportation of documents, packages,
freight and parcels via ground, vessel
and air; [and] transportation logistics
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78624296
2
services, namely, planning and
scheduling shipments for users of
transportation services (in
International Class 35); and

shipping and delivery services, namely,
freight shipping transport from the
United States to foreign ports
globally, cargo hauling, cargo
unloading, truck hauling services to
and from major cities in the United
States; freight ship transport; moving
van transport; [and] loading freight
into containers for shipment (in
International Class 39).1

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, if used in
connection with applicant’s services, would so resemble the
previously registered mark shown below

1 Application Serial No. 78624296, filed May 5, 2005, alleging a
bona fide intention to use the mark in commerce. In response to
the examining attorney’s view that the recitation of services was
unacceptable, applicant added Class 35 after the notice of appeal
was filed. Although applicant submitted the requisite filing fee
to add the class, an additional appeal fee to cover the new class
was not submitted. Pursuant to a communication with applicant’s
attorney, the Office now has charged counsel’s deposit account to
cover the additional appeal fee.
Ser No. 78624296
3
for “international sea, air and land freight
transportation.”2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs (although
applicant elected to not file a supplemental brief pursuant
to the Board’s August 23, 2007 order).
Applicant contends that its simple word mark is easily
distinguishable from registrant’s stylized mark,
specifically asserting that the marks are different in
sight, sound and commercial impression. Applicant also
contends that the services are distinct, stating that
applicant’s services include services “beyond those listed
in the [cited] registration.”
The examining attorney maintains that the marks are
similar, especially because the dominant portion of
applicant’s mark is OTS and the dominant portion of
registrant’s mark is O.T.S. The examining attorney also
argues that applicant’s services are virtually identical or
closely related to registrant’s services. In support of
the likelihood of confusion refusal the examining attorney
introduced a dictionary definition of the term “logistics.”3

2 Registration No. 2183942, issued August 25, 1998; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
3 The examining attorney submitted additional evidence regarding
the requirement for a disclaimer; applicant eventually complied
with the requirement.
Ser No. 78624296
4
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
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). Contrary to the gist of one of applicant’s
arguments, 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
goods and/or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
Ser No. 78624296
5
than a specific impression of trademarks. Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
With respect to the involved marks, 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.”] For
example, in the past 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). With respect to applicant’s mark,
applicant has disclaimed the terms LOGISTICS GROUP. Given
the descriptive nature of these words in applicant’s mark,
applicant’s mark is clearly dominated by the letters OTS.
Moreover, the letters OTS comprise the first portion in
applicant’s mark; this first portion is the part of
applicant’s mark that is most likely to be impressed upon
Ser No. 78624296
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the mind of a purchaser and will be remembered and used
when calling for the services. See Presto Products, Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988).
With respect to registrant’s mark, where both letters
and a design comprise the mark, we accord greater weight to
the letters O.T.S. because the letters are likely to make
an impression upon purchasers, would be remembered by them,
and would be used by them to request the 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 registrant’s mark,
we find that the dominant portion is the literal portion of
the mark, namely O.T.S.
As indicated above, applicant’s mark is dominated by
the letters OTS, and registrant’s mark is dominated by the
identical letters O.T.S. The presence of periods after the
letters in registrant’s mark does not distinguish this
portion of the marks in any significant way. There is no
logical reason, and certainly no evidence, that consumers
would vocalize the periods in registrant’s mark.
Ser No. 78624296
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Although the dominant portion, OTS, of applicant’s
mark is essential identical to the dominant portion O.T.S.
of registrant’s mark in sound, appearance, meaning and
commercial impression, 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. 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
LOGISTICS GROUP portion of applicant’s mark, and the design
portion of registrant’s mark (a triangle and what appears
to be the front view of an aircraft), these portions of the
respective marks do not sufficiently serve to distinguish
the marks.
In sum, the marks, when considered in their
entireties, are similar in sound, appearance, meaning and
overall commercial impression. This factor weighs in favor
of finding likelihood of confusion.
Insofar as the services are concerned, it is not
necessary that the respective 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 respective services are related in some
Ser No. 78624296
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manner, and/or that the conditions and activities
surrounding the marketing of the 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).
Applicant’s “shipping and delivery services, namely,
freight ship transport from the United States to foreign
ports globally, cargo hauling, cargo unloading, and freight
ship transport” in Class 39 are essentially identical to
registrant’s “international sea, air and land freight
transportation.”
As to the Class 35 services, applicant’s “shipment
processing, preparing and issuing export declarations,
bills of lading, and other export documentation; arranging
for pickup, delivery, storage and transportation of
documents, packages, freight and parcels via ground, vessel
and air; and planning and scheduling shipments for users of
transportation services” are closely related and/or
complementary to registrant’s “international sea, air and
land freight transportation.” This is evident by the fact
that applicant intends to render both types of services
itself. We agree with the examining attorney’s assessment
Ser No. 78624296
9
that applicant’s information management and logistics
services are provided in close connection with its own
freight transportation services: “all of the Class 35
services are provided for the purpose of, and in support
of, shipping and delivery services in Class 39.”
Given the identity or close relationship between
applicant’s and registrant’s services, the classes of
purchasers for the services are the same.
The similarity between the services and the identity
in purchasers are factors that weigh in favor of finding
likelihood of confusion.
In view of the above, the du Pont factors, on balance,
weigh in favor of finding likelihood of confusion.
Lastly, to the extent that any of applicant’s points
raise a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984).
Decision: The refusal to register is affirmed.