RobertAmeeti

Trademark Trial and Appeal Board

Jul 14, 2006

No. 78114391 (T.T.A.B. Jul. 14, 2006)

Mailed:
July 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robert Ameeti
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Serial No. 78114391
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John J. Connors of Connors & Associates for Robert Ameeti.

Georgia Ann Carty Ellis, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
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Before Hairston, Rogers and Zervas,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Robert Ameeti applied to register FASTRAK, in standard
character form, as a mark on the Principal Register for
services originally identified as "automatic electronically
tracking and locating of items and persons," in
International Class 45. During prosecution of the
application, the identification was eventually amended to
read "tracking services for retrieval of encoded products,
excluding railcars in transit," in International Class 45.
This Opinion is Not
Citable As Precedent
of the TTAB
Ser No. 78114391
2
It is clear that the phrase "excluding railcars in
transit" was included in the amended identification as part
of applicant's attempt to overcome a refusal of
registration that was made final by the examining attorney.
Specifically, the examining attorney has made final a
refusal of registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on the prior registration
of FAST-TRAX for "services for computerized tracking and
tracing of railcars in transit," in International Class 35
(Registration No. 2727717). Despite applicant's arguments
against the refusal, and notwithstanding applicant's above-
referenced amendment of the identification in a request for
reconsideration, the examining attorney has maintained the
final refusal of registration. In this appeal, applicant
and the examining attorney have each filed a brief.
We analyze the issue of likelihood of confusion using
the factors that were articulated by a predecessor of our
primary reviewing court, the Court of Customs and Patent
Appeals, in the case of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
Ser No. 78114391
3
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)("The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks").
In this case, we compare applicant's FASTRAK mark and
the FAST-TRAX mark in the cited registration by considering
similarity, or differences, in the appearance, sound,
connotations and overall commercial impressions of the
marks. Giant Food, Inc. v. Nation’s Foodservice, Inc., 218
USPQ 390, 395 (Fed. Cir. 1983). In this case, both marks
begin with the identical word, FAST, and end with a
phonetically equivalent term, TRAK or TRAX. The only
differences between the marks are that TRAK would be viewed
as a singular term, while TRAX would be viewed as a plural
term; and applicant ties the two words together by
presenting them in a telescoped fashion wherein the first
word and the second share a letter, see TMEP Section
807.12(e)(4th ed. April 2005), while the registered mark
ties the words together with a hyphen. The shared letter
in applicant's mark would not yield a difference in
pronunciation or connotation. Nor is the difference
between the singular and plural form of the second word in
Ser No. 78114391
4
these marks particularly distinguishing. See Wilson v.
Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It
is evident that there is no material difference, in a
trademark sense, between the singular and plural forms of
the word "Zombie" and they will therefore be regarded here
as the same mark”); and In re Pix of America, Inc., 225
USPQ 691 (TTAB 1985).
Visually and phonetically, the marks are virtually
identical; and the connotation of the marks is essentially
the same, in that each conveys the notion of rapid
tracking. Accordingly, the differences between the marks
are inconsequential, and we find them to present the same
overall commercial impression. We do not find persuasive
applicant's argument that the marks are "spelled different"
and are visually "very dissimilar." Brief, p. 3.
Applicant argues, notwithstanding the great similarity
of the marks, that there is no likelihood of confusion,
because the marks will be imperfectly recalled and
"customers usually compare an imperfectly recalled mark
with the mark on a product that they are presently
observing." Brief, p. 3. Applicant also argues that the
services are different because applicant's services "do not
concern tracking of railcars," the registered mark is in a
Ser No. 78114391
5
different class, the channels of distribution are
different, and the types of customers are different. Id.
We note, however, that neither identification is
restricted as to channels of trade and we must assume that
the respective services can be marketed through all
possible channels of trade typical for these services. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed"). Accordingly, we can give no
weight to applicant's mere assertion, unsupported by
evidence, that its services are offered through different
channels of trade than registrant's services.1
As for classes of customers, registrant's services
obviously would be offered to those concerned with tracking

1 While the identifications of services and applicant's specimen
yield some information about classes of customers for the
respective services, there is no specific information in the
record that actually sheds light on how the services would be
marketed to such customers. There is nothing, therefore, to
support applicant's contention that the channels of trade are
different.
Ser No. 78114391
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railcars. These customers could include operators of
passenger and freight railways, operators of public transit
systems, and even possibly governmental entities ranging
from the military to civilian concerns. Customers might
also include freight shipping companies that utilize
railways in their operations. We note, in this regard,
that there is nothing in registrant's identification that
limits its services to actual owners or operators of
railcars; and some of the other prospective customers we
have noted, while not perhaps owners or operators of
railcars, might nonetheless have a need to track railcars
for various reasons.
Applicant's services, as specified in its
identification, are more limited than is suggested by
review of its specimen of use. The specimen reveals that
applicant's services can be used to track "the location of
items valuable and important to you," and lists specific
applications, such as pet owners tracking pets, parents
tracking children, caregivers tracking Alzheimer's patients
or patients with other disorienting conditions, and
individuals or commercial entities tracking vehicles such
as cars and trucks. The identification, in contrast, only
refers to tracking of "encoded products," not pets, people,
Ser No. 78114391
7
or vehicles.2 Thus, based on the identification of
services, we must consider whether prospective customers
for a service that would be used to track "encoded
products" might overlap with prospective customers for
registrant's services.
We find that there is an overlap of customers. As
noted, registrant's services might be used by a freight
shipping company that utilizes railways, so it could
determine, at any particular time, the location of a train
carrying its freight. Similarly, such a customer could
utilize applicant's services to track the freight itself on
the trains. In this manner, the respective services can be
seen as somewhat competitive. The freight shipper would be
provided with a choice between tracking its freight
("encoded products") on a train, or merely tracking the
train that it knew contained its freight. The services
could also be seen as complementary by such customers, for
applicant's services could be used to track freight before
and after loading onto trains, while registrant's services

2 The question has not been presented by this appeal whether the
specimens support use of the mark for the identified services.
They do refer to use of the services for tracking "valuable and
important" items, even though the specific examples primarily
appear not to be "encoded products." In this regard, we normally
would consider a "product" to be an item produced by a
manufacturer or sold by a retailer or wholesaler, and none of the
specific examples discussed on applicant's specimen appear to
encompass such items.
Ser No. 78114391
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might be used to track the freight while on trains. Other
prospective customers of registrant's services might also
have use for applicant's services. Of course, without
specimens or other information explaining the specific
nature of what applicant means by the phrase "encoded
products," we are forced to engage in some degree of
conjecture when comparing the services. We cannot accept,
however, applicant's contention that there would be no
overlap of customers.
We note, too, that the circumstances need only be such
as to create a likelihood that consumers would be exposed
to both marks and might conclude that there was some
relationship between the services, or common source or
sponsorship, given the marks used on or in connection with
the respective services. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In
re International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). While applicant has not argued that the
customers for the respective services would be
sophisticated and discriminating, we accept that certainly
prospective purchasers of registrant's services are likely
to be in business or government. Such purchasers, however,
are not necessarily experts in differentiating virtually
Ser No. 78114391
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identical service marks used for potentially competitive or
complementary services.
Given the great similarity of the marks in sound,
connotation and overall commercial impression, the
relatedness of the services, and the presumptive marketing
in overlapping channels of trade to at least some of the
same classes of consumers, we conclude that a likelihood of
confusion exists.3
If evidence regarding the differences in the precise
nature of the services had been properly made of record,
and if the record showed the nature of the prospective
purchasers to be discriminating, we might, then, have some
doubt about our conclusion that confusion is likely,
especially given the suggestive nature of the marks. Even
then, however, we would be required to resolve this doubt
in favor of registrant. See Kenner Parker Toys v. Rose Art
Industries, 963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir.
1992).
Decision: The refusal of registration under Section
2(d) of the Trademark Act is affirmed.

3 The fact that the services are classified in different classes
has no bearing on the likelihood of confusion analysis. See Jean
Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir.
1993)