Star Networks, Inc.v.Sprint Communications Co. L.P.

Trademark Trial and Appeal Board

Dec 28, 2001

CANC (T.T.A.B. Dec. 28, 2001)

12/28/01
Hearing: Paper No. 64
October 17, 2001 BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Star Networks, Inc., substituted for Internet, Inc.
v.
Sprint Communications Company L.P.
_____

Cancellation No. 22,034
and
Opposition No. 99,949
_____

John K. Uilkema of Thelen, Reid & Priest LLP for Star
Networks, Inc., substituted for Internet, Inc.

Robert D. Hovey and Thomas H. Van Hoozer of Hovey,
Williams, Timmons & Collins for Sprint Communications
Company L.P.
_____

Before Hairston, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On July 23, 1993, Internet, Inc. filed a petition to
cancel Registration No. 1,780,896, issued July 6, 1993 to
Sprint Communications Company L.P. for the mark THE MOST
for “telecommunications services” in International Class
38, essentially based on a claim of priority and
likelihood of confusion. In May 1995, Internet, Inc.
filed a motion for leave to file an amended pleading
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 22034 & Opposition No. 99949
2
which relied on a broader range of petitioner’s
registrations and common law MOST marks, and a request to
cancel an additional registration owned by the same
company, Reg. No. 1,864,395, issued November 24, 1994,
for the mark THE MOST WORLDWIDE (the term “worldwide” is
disclaimed) for “telecommunications services, namely,
telephone communications services” in International Class
38.1
In a Board order dated October 8, 1996, the amended
petition to cancel was allowed. The Board also noted
that on December 29, 1995 petitioner had filed a notice
of opposition against Sprint Communications Company
L.P.’s application Serial No. 74/418,999 for the mark THE
MOST FOR BUSINESS (the term “business” is disclaimed) for
“telecommunications services, namely telephone voice
communications services” in International Class 38, which
is the subject of Opposition No. 99,949; and the Board
consolidated these two inter partes proceedings --
Cancellation No. 22,034 and Opposition No. 99,949.
Petitioner/opposer will hereinafter be referred to
as “Star Networks” or “petitioner” or “plaintiff”; and

1 Petitioner’s amended petition to cancel included status and
title copies of seven pleaded registrations, making them of
record pursuant to Trademark Rule 2.122(d)(1).
Cancellation No. 22034 & Opposition No. 99949
3
respondent/applicant will be referred to as “Sprint” or
“respondent” or “defendant.”
The Pleadings
Petitioner alleges it owns seven registrations and
seven applications for marks which consist of or include
the word MOST (paragraph 46 of petitioner’s amended
petition to cancel), and petitioner also alleges it owns
twenty-seven common law marks, for example, MOST, MOST
ATM, MOST Network, MOST THE FUTURE OF MONEY, MOST Go for
the Green, MOST Books for Kids, MOST FOR YOUR MONEY, PAY
WITH MOST, We’re There When You Need Us. MOST, MOST CASH
COUNTDOWN SWEEPSTAKES, MOST Authorization Processing
Service, MOST Card Issuance & Management (paragraph 44),
for a wide variety of goods and services, including, for
example, banking services, financial services, electronic
transfer of funds services, electronic processing of
data, switched data services, transmission of data
between remote locations, telecommunications services,
automated teller machines, credit card services, computer
discs, software for petitioner’s various services,
publications, and promotional items such as caps, pens,
mugs, key rings, candy, toys, decals and flashlights
(paragraph 45); that petitioner, through its predecessor,
EFT Group, Inc., first used the mark MOST on banking
Cancellation No. 22034 & Opposition No. 99949
4
services, namely electronic funds transfer in 1982, and
petitioner has used the mark MOST in connection with its
goods and services since long prior to respondent’s first
use of its marks on its services; that “through
contractual arrangements with Bell Atlantic and AT&T,
Petitioner maintains a managed communication network via
TI (sic--T-1) service for the transport of voice and data
telecommunications on behalf of its customers under a
program marketed under the mark MOST” (paragraph 34);
that “petitioner, in a continual update and natural
expansion of its services initiated in 1982, through its
predecessor, uses the mark MOST on and in connection with
a variety of telecommunication products and services”
(paragraph 40); and that respondent’s marks, when used in
connection with its services, so resembles petitioner’s
previously used common law service marks and trademarks,
as well as petitioner’s registered marks, as to be likely
to cause confusion, mistake, or deception.
Further, petitioner alleges as grounds in this
consolidated cancellation and opposition that respondent
commenced use of the mark THE MOST for telecommunications
services on or about June 1, 1992, and subsequent thereto
respondent commenced use of THE MOST FOR BUSINESS and THE
MOST WORLDWIDE to build on the name THE MOST; that
Cancellation No. 22034 & Opposition No. 99949
5
respondent’s telecommunications services include
switching of data between remote locations; that in or
around October 1992 respondent contracted with MBNA
America Bank, N.A. to promote respondent’s residential
and calling card services under THE MOST mark; and that
in 1993 and 1994 respondent marketed a Sprint enhanced
MBNA credit card and an enhanced VISA and/or MASTERCARD
(including a Sprint FONCARD number).
In respondent’s answer to the amended petition to
cancel (filed after the Board consolidation order2), it
admitted several of the pleaded facts about respondent’s
business, including that it contracted with MBNA America
Bank, N.V.; that it initiated use of the mark THE MOST on
or about June 1, 1992; that use of its other two involved
marks was initiated later to build on the name THE MOST;
and that respondent filed three applications (two now
being registrations). Respondent also admitted that
“LATA is an abbreviation for Local Area Transport Area
and designates a geographic area or network within which
communication services may be provided”; that “Inter-LATA
designates long distance communication connections

2 Sprint had filed a separate answer to the notice of
opposition. In that answer Sprint generally admitted
essentially the same matters as described above, and denied the
remaining salient allegations, and did not raise any affirmative
defenses.
Cancellation No. 22034 & Opposition No. 99949
6
between one or more LATA networks”; that “Registrant has
provided and continues to provide communication services
via LATA and inter-LATA networks using the marks THE
MOST, THE MOST FOR BUSINESS and THE MOST WORLDWIDE in
connection therewith”; and that “T-1 service refers to a
high capacity digital circuit capable of handling 1.54
million bits per second.” (Paragraphs 25, 26, 28 and 31.)
Respondent otherwise denied the salient allegations
of the pleading. Further, respondent alleged the
affirmative
defenses that petitioner is estopped by laches and is
estopped by acquiescence from seeking cancellation of the
two involved registrations.
In the briefs on the case, petitioner argued and
respondent acknowledged that under the du Pont3 factor
“market interface between applicant and the owner of a
prior mark--(a) a mere “consent” to register or use, (b)
agreement provisions designed to preclude confusion, (c)
assignment of mark and good will, and (d) laches and
estoppel attributable to owner of prior mark” there is no
relevant evidence of record for consideration under this
factor. (Petitioner’s brief, p. 48-49, respondent’s
brief, p. 26.) Accordingly, respondent’s estoppel by
Cancellation No. 22034 & Opposition No. 99949
7
laches and estoppel by acquiescence defenses will not be
further considered herein.
The Time For Trial
As noted previously, the petition to cancel was
filed on July 23, 1993, and the notice of opposition was
filed December 29, 1995; and the two cases were
consolidated by Board order dated October 8, 1996.
Discovery closed in the consolidated cases on August 10,
1998. Star Networks’ (plaintiff) testimony period closed
on November 8, 1998; Sprint’s (defendant) testimony
period closed on March 8, 1999; and plaintiff’s rebuttal
testimony period closed on

3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Cancellation No. 22034 & Opposition No. 99949
8
April 22, 1999. Plaintiff’s brief was filed in August
1999,
defendant’s brief in February 2001 and plaintiff’s reply
brief in May 2001. An oral hearing was held before the
Board on October 17, 2001, at which both parties were
represented.
The Record
The record consists of the pleadings; the files of
both of respondent’s involved registrations and the file
of its involved application; and petitioner’s notice of
reliance on the discovery depositions, with exhibits, of
the following eight people4:
(1) David A. O’Connor, president and CEO of
Internet, Inc. (petitioner Star Networks’
predecessor), (taken by respondent on September
27, 1994),

(2) Mary Addis Kilby, vice president in charge of
marketing of Internet, Inc., (taken by
respondent on September 28, 1994),

(3) Richard G. Lyons, Jr., executive vice president
and COO of Internet, Inc., (taken by respondent
on May 24, 1995),

(4) Paul Golden, respondent’s assistant vice
president of marketing for the consumer services
group, (taken by petitioner on December 14,
1994),

4 The parties stipulated that discovery materials and discovery
depositions taken in either the cancellation or the opposition
proceeding may be relied on and/or offered into evidence by
either party in the consolidated proceeding. (See the parties’
stipulation filed April 11, 1997, and acknowledged by the Board
in an order dated May 30, 1997.)
Cancellation No. 22034 & Opposition No. 99949
9

(5) Ron Shults, respondent’s director of
applications marketing, (taken by petitioner on
December 15, 1994),

(6) Roy Van Buskirk, respondent’s major account
executive, (taken by petitioner on May 24,
1995),

(7) Darcie L. Roberts, a third-party witness--an
employee of MBNA America Bank, N.A.5, (taken by
petitioner on May 25, 1995), and

(8) Mark E. Foulsham, a third-party witness--group
administration manager with MBNA America Bank,
N.A., (taken by petitioner on May 25, 1995).

In addition, petitioner submitted a notice of
reliance on (i) certain of respondent’s responses to
petitioner’s first and second sets of interrogatories,
respondent’s supplemental responses to certain requests
for admission and one interrogatory, (ii) the file
histories of petitioner’s application Serial Nos.
74/374,632 and 74/614,111, and (iii) reference to six of
petitioner’s seven pleaded registrations; and respondent
submitted a notice of reliance on certain of its other
answers to petitioner’s first set of interrogatories and
requests for admissions, as well as its supplemental
responses to two of petitioner’s interrogatories.
As Mr. David O’Connor testified, “It’s a very
dynamic time in this industry....”, p. 136. Nonetheless,

5 Darcie L. Roberts’ job title was not set forth in the
deposition transcript.
Cancellation No. 22034 & Opposition No. 99949
10
neither party took any trial depositions (in 1998 or
1999). Rather, the depositions submitted as evidence
herein were all discovery depositions taken in 1994 and
1995. Thus, the information and numbers in this case
reflect that fact, both in terms of their lack of being
current in relation to this
decision, and also, that the witnesses were not
particularly forthcoming or specific with their
information, but instead were somewhat vague and
ambiguous.
There was a significant amount of material submitted
into the record as “confidential” (including portions of
various discovery depositions and several exhibits
associated therewith). However, on August 16, 1999 (the
same day petitioner submitted its brief), petitioner
filed a “notice of withdrawal of petitioner/opposer’s
designation of confidentiality” in which petitioner
stated the following: “With the passage of time [it has
been more than seven (7) years since the Petition for
Cancellation was filed against Registration 1,780,896],
Petitioner/Opposer has determined that there is no longer
a need for maintaining the confidentiality designation of
any testimony or documents so designated and hereby,
pursuant to paragraph 9 of the Protective order, cancels
Cancellation No. 22034 & Opposition No. 99949
11
and withdraws any prior designation of confidentiality
and consents to disclosure of such information beyond the
terms of the Protective Order.”
Accordingly, this record is now considered public in
its entirety, with no confidential material involved.
Next we will discuss petitioner’s seven pleaded
registrations. Petitioner submitted status and title
copies of the following seven pleaded registrations along
with its amended petition to cancel (paragraph 47):
(1) Reg. No. 1,268,752, for the mark MOST for
“banking services, namely, electronic funds transfer” in
International Class 366;
(2) Reg. No. 1,375,059, for the mark shown below

for “banking services, namely, electronic funds transfer
services and electronic processing and transmission of
point of sale payment data between merchants and
customers accounts” in International Class 367;
(3) Reg. No. 1,375,061, for the mark shown below

6 Reg. No. 1,268,752, issued February 28, 1984, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is July 3, 1982.
7 Reg. No. 1,375,059, issued December 10, 1985, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
Cancellation No. 22034 & Opposition No. 99949
12

for “banking services, namely, electronic funds transfer
services and electronic processing and transmission of
point of sale payment data between merchants and
customers accounts” in International Class 368;
(4) Reg. No. 1,576,804, for the mark shown below

for “electronic funds transfer services” in International
Class 369;
(5) Reg. No. 1,814,051, for the mark MOST for
“financial services, namely, providing and facilitating
electronic funds transfer and debit transactions for
banks, professional offices, and retail merchants” in
International Class 3610;

claimed date of first use is October, 1982. The lining in the
drawing represents the color green.
8 Reg. No. 1,375,061, issued December 10, 1985, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is October 1982.
9 Reg. No. 1,576,804, issued January 9, 1990. The claimed date
of first use is May 1988. The term “pos” is disclaimed. (This
registration, however, was cancelled under Section 8 of the
Trademark Act in 1996 and will not be given further
consideration.)
10 Reg. No. 1,814,051, issued December 28, 1993, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is July 1982.
Cancellation No. 22034 & Opposition No. 99949
13
(6) Reg. No. 1,824,377, for the mark MOST for
“publications, namely, newsletters and user manuals for
banking communication networks” in International Class
1611; and
(7) Reg. No. 1,880,811, for the mark MOST for
“business management services, namely, computerized
management of payment systems, transfer of value systems
and supporting data related thereto” in International
Class 3512.
Although petitioner’s notice of reliance referred to
only six of those registrations (not including its
registration for publications in International Class 16),
we have considered all seven registrations which are of
record herein.
Burden of Proof
Star Networks, as plaintiff in the petition to
cancel and in the opposition, bears the burden of
proving, by a preponderance of the evidence, its asserted
ground of priority and likelihood of confusion. See
Cerveceria Centroamericana, S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989); and

11 Reg. No. 1,824,377, issued March 1, 1994, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed date
of first use is 1988.
Cancellation No. 22034 & Opposition No. 99949
14
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000).
The Parties
Around 1980 about a half dozen banks organized the
EFT Group, Inc. (EFTG) and another half dozen banks
organized the Network Exchange (NE). In 1982, EFTG first
adopted and used the mark MOST in connection with
processing banking transactions on automated teller
machines. In 1984, with about 30 banks each, the two
companies merged forming Internet, Inc. (the entity,
located in Virginia, which filed the original and amended
petitions to cancel and the notice of opposition).
During the ten years from 1982 to 1992 the MOST automated
teller system expanded to process transactions with links
to merchants and credit card companies; and the
underlying network system behind ATM transactions enabled
the original applications for electronic funds transfer
to go beyond ATMs and into a variety of electronic
transactions services, such as remote shopping, bill
paying, and the like to meet the needs of merchants,
small businesses and corporations. That is, from the
first ATM transaction in 1982, petitioner “has expanded

12 Reg. No. 1,880,811, issued February 28, 1995, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is July 1982.
Cancellation No. 22034 & Opposition No. 99949
15
its products and services to offer a full selection of
EFT services, including MOST ATM and POS [point of sale]13
network access, gateways to national networks, processing
services and merchant support.”14 (Brief, p. 14.)
By 1995 Internet, Inc. had grown to include about
530 members, all being financial institutions,
specifically, banks, credit unions and savings and
loans.15 Petitioner’s MOST network serves the 530 member
financial institutions and 15.5 million cardholders
through its over 8,000 MOST automated teller machines and
MOST point of sale devices located in Maryland, D.C.,
Virginia, Tennessee, West Virginia, Pennsylvania, New
Jersey, Delaware, North Carolina, Georgia, Kentucky,
Arkansas, Mississippi and California. In addition, there
are some nationwide retailers who accept Internet, Inc.’s
MOST credit/debit card under its credit card program.16

13 Petitioner’s MOST point of sale pilot was launched at a
Safeway store in Germantown, Maryland in 1988.
14 Petitioner’s headquarters is in Reston, Virginia, and its
host station (mainframe computer) is located in Milwaukee,
Wisconsin. Petitioner has a contract with a data processing
company in Milwaukee to operate the software and maintain the
computers and run the switching function. (See e.g., O’Connor
dep., pp. 43 and p. 138)
15 In Internet, Inc.’s words, it “manages the fifth largest ATM
and POS network in the country known as the MOST network.” (Van
Buskirk dep., exhibit 3, Management Summary, p. 1 of Internet,
Inc.’s Request for Proposal.)
16 According to statements in plaintiff’s brief (p. 1),
effective January 1, 1997, Internet, Inc. merged with Alabama
Network, Inc. and into Southwest Switch, Inc. under the name
Cancellation No. 22034 & Opposition No. 99949
16
Petitioner’s services flow over leased
telephone/transport lines, and its current lease
contracts are with AT&T and Bell Atlantic. Respondent
bid unsuccessfully on petitioner’s 1992 Requests for
Proposals on leased line services (Van Buskirk dep.,
exhibit No. 10) and for equipment and network management
services (Van Buskirk dep., exhibit No. 9).
Plaintiff conducts advertising for its services
offered under the mark MOST that is directed to its
member financial institutions, and it also does radio,
television and outdoor advertising directed to the
ultimate consumer. In order to obtain more member
institutions petitioner engages a direct

Honor Technologies, Inc., with all marks assigned to Honor
Technologies, Inc.; and on May 17, 1999 Honor Technologies, Inc.
changed its name to Star Networks, Inc.
Cancellation No. 22034 & Opposition No. 99949
17
sales force, direct mailings, and exhibits at regional
and national trade shows for the banking and financial
community (e.g., American Bankers Association, Bank
Administration Institute), and retailer trade shows
(e.g., grocery retailers). Petitioner spent $14.4
million on advertising from 1989 – 1993; and its 1994
budget for advertising was $3.8 million. Petitioner’s
sales are to banks or through banks not to retail
consumers. (O’Connor dep., p. 154.)
In October 1992 Internet, Inc. launched a Private
Financial Network (PFN) for its members. Internet, Inc.
described the PFN in its April-May 1993 newsletter as
follows (O’Connor deposition, exhibit No. 23):
Internet recently introduced a
new service that gives members a
powerful telecommunications
alternative: The Internet Private
Financial Network (PFN). The
result of a partnership of
Internet, Bell Atlantic and AT&T,
the PFN is the first shared
telecommunications program
designed specifically for
financial institutions.

The PFN accommodates voice and
data communications, imaging, and
local area networks, providing a
cost savings of up to 20-25% over
standard telecommunications
pricing. It is ideally suited
for financial institutions with
branches or offices in multiple
geographic locations, supporting
such applications as branch
Cancellation No. 22034 & Opposition No. 99949
18
platform, teller terminal, ATM,
PBX systems, security and LAN
communications.

This PFN is available only to the financial institutions
that belong to Internet, Inc.; it is not marketed to or
available to the general public.
Sprint (respondent) is a major telephone or voice
communications company. It commenced use of the mark THE
MOST in connection with telecommunication services on or
around June 1, 1992. The services offered under the mark
THE MOST were directed to residential long distance
telephone customers. Subsequently, on July 1, 1993
respondent began use of THE MOST FOR BUSINESS, and this
program was targeted to small businesses spending less
than $2000 a month on their voice and data communications
(e.g., voice services-outbound or 800, data
communication, audio conferencing). THE MOST WORLDWIDE
program was also launched in July 1993, and it was
targeted to residential customers who spend over $20 per
month making calls from the United States to
international locations.
Sprint’s services are advertised in national and
spot television ads, and print, and by direct mail and
telemarketing. (The actress Candice Bergen appeared in
the initial advertisements for THE MOST.) In addition,
Cancellation No. 22034 & Opposition No. 99949
19
current customers of Sprint receive communications and
newsletters regarding its THE MOST products and services.
Advertising expenditures by respondent for THE MOST marks
were $40 million in 1992, $67 million in 1993, and $23
million in 1994. According to Mr. Paul Golden,
respondent’s assistant vice president of marketing,
respondent was not advertising the mark THE MOST in late
1994, having “temporarily discontinued” such
advertisements. (see generally, dep., pp. 55-57.)
Respondent’s sales under THE MOST marks went from
$130 million in 1992, to $464 million in 1993, $200
million in 1994, $845.8 million in 1995, $497.1 million
in 1996, and $253.8 million in 1997 (through October).17
In October 1992, respondent entered into both an
“affinity agreement” (Foulsham dep., exhibit No. 3) and a
“phone services agreement” (Foulsham dep., exhibit Nos. 1
and 2) with MBNA America, N.A. (MBNA).
“Affinity programs” are partnerships or co-marketing
programs whereby Sprint deals with a company or
organization or some sort of membership group that has an
affinity towards that organization. For example, Sprint
also has a co-marketing arrangement with USAA (an

17 The later sales figures (1995-1997) were provided by
respondent through its supplemental response to petitioner’s
Cancellation No. 22034 & Opposition No. 99949
20
insurance and mutual funds business open to U.S.
military) whereby Sprint offers a special rate or a
special program for long-distance service to members of
USAA. (Golden dep., pp. 39-40.)

interrogatory No. 11, which was made of record by respondent’s
notice of reliance.
Cancellation No. 22034 & Opposition No. 99949
21
These agreements are intended to promote
respondent’s residential calling card services under the
mark THE MOST, and under the contract MBNA marketed a
SPRINT enhanced MBNA credit card in connection with
services provided under the mark THE MOST, and an
enhanced VISA and/or MASTER CARD (with a SPRINT FONCARD
number appearing on the credit card). The credit cards
carry the name SPRINT, and MBNA, and VISA or MASTER CARD.
The mark THE MOST does not appear on the card, although
the mark is referenced in the advertisements for the
enhanced credit card.
Standing
The status and title copies of several of
plaintiff’s pleaded registrations (for the marks MOST and
MOST and design), submitted with the amended petition to
cancel establish plaintiff’s standing. See Cunningham v.
Laser Golf Corp., 55 USPQ2d supra at 1844; and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). Respondent did not contest
petitioner’s standing.
Priority
In view of plaintiff’s ownership of valid and
subsisting registrations for the marks MOST and MOST and
design, the issue of priority does not arise in the
Cancellation No. 22034 & Opposition No. 99949
22
opposition. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974);
and Massey Junior College, Inc. v. Fashion Institute of
Technology, 492 F.2d 1399, 181 USPQ 272, at footnote 6
(CCPA 1972).
With regard to the cancellation proceeding, although
the petitioner owns a registration, priority must be
proven. See Brewski Beer Co. v. Brewski Brothers Inc.,
47 USPQ2d 1281, at 1283-1284 (TTAB 1998). In this case,
petitioner has established use (through a predecessor--
EFTG) of the mark MOST on banking services, namely,
electronic funds transfer since 1982, which is well
before respondent’s proven use of the mark THE MOST in
June 1992. Thus, for the purposes of the cancellation,
petitioner has established priority with respect to the
marks MOST and MOST and design for the goods and services
recited in its pleaded registrations.
Also, in these consolidated proceedings, as
explained earlier, plaintiff alleged common law rights in
twenty-seven “MOST” marks (e.g., MOST, MOST Workstation,
PAY WITH MOST, MOST Go for the Green, MOST Books for
Kids, MOST FOR YOUR MONEY, We’re There When You Need Us.
MOST, MOST CASH COUNTDOWN SWEEPSTAKES, MOST Authorization
Processing Service) for a wide variety of goods and
Cancellation No. 22034 & Opposition No. 99949
23
services, including telecommunications services.
Petitioner is restricted to rights in each of its
asserted common law marks for the goods and/or services
on which petitioner proves it uses each common law mark.
Priority as to each specific alleged common law mark and
in relation to specific goods and/or services with which
each mark is used must be established by a preponderance
of evidence.
Aside from the services identified in the claimed
registrations, petitioner has failed to prove common law
rights in the twenty-seven alleged common law marks for
any of the goods and services alleged in the amended
petition to cancel. While there is an occasional
reference in the exhibits or the discovery depositions of
petitioner’s employees to one or another of the asserted
common law marks18, there is no evidence of specific prior

18 Regarding petitioner’s claimed common law rights in numerous
marks, we specifically note that in the discovery depositions of
petitioner’s three employees, respondent’s attorney did not
question the witnesses regarding petitioner’s various claimed
common law marks. Rather, the witness might mention one of the
marks occasionally, and without reference to proof of either
specific dates of continuous use, or the specific goods and/or
services on which petitioner used the mark. See e.g., the Kilby
dep., pp. 40-41:
Q. What are “our services?”
A. We are currently – our current campaign is
called “The Future of Money,” and targets a
platform of services that will be available to
the consumer, starting with ATMs, point of sale,
moving into home banking and all of the remote
Cancellation No. 22034 & Opposition No. 99949
24
and continuous use of any of petitioner’s asserted common
law
marks, except for use of the registered mark MOST, and,
except for the services identified in the registrations
for MOST.
That is, there is no evidence of the specific
services or goods on which such common law marks might be
used. Rather, the discovery testimony taken of
petitioner’s officers and employees relates to the
registered marks MOST and MOST and design. Because
petitioner has not proven that it has used and continues
to use each of the twenty-seven claimed common law marks
for the specific services and goods set forth in the
amended petition to cancel, clearly it has not
established priority with regard thereto. See Towers v.
Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed.
Cir. 1990); and Otto Roth & Co. v. Universal Foods Corp.,
640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Inasmuch as petitioner has not proven use of its
common law marks petitioner’s twenty-seven asserted
common law marks will not be further considered herein.

financial information services that will be
coming and are in development now.
Cancellation No. 22034 & Opposition No. 99949
25
Likelihood of Confusion
Our determination of this issue is based on an
analysis of all the probative facts in evidence that are
relevant to the factors bearing on likelihood of
confusion. See In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors deemed
pertinent in this proceeding now before us are discussed
below. See Cunningham v. Laser Golf Corp., 55 USPQ2d,
supra at 1844-1845.
The first du Pont factor we consider is the marks,
and we must analyze the similarities/dissimilarities as
to sound, appearance, connotation and commercial
impression. Our analysis of this factor encompasses
respondent’s two registered marks, THE MOST and THE MOST
WORLDWIDE, and its applied-for mark, THE MOST FOR
BUSINESS, vis-a-vis petitioner’s six registered marks,
MOST and MOST and design.19
The term MOST is the dominant feature of all of
these marks. Specifically, the only word in petitioner’s
registered marks is MOST, and all three of respondent’s

19 As explained earlier, (i) one of petitioner’s seven pleaded
registrations has been cancelled (see footnote 9), and (ii)
petitioner failed to prove rights in twenty-seven claimed common
law marks. Moreover, in its brief petitioner argued the issue
of the similarities/dissimilarities of the marks referring only
to its MOST mark, without reference to its numerous asserted
common law marks.
Cancellation No. 22034 & Opposition No. 99949
26
involved marks include THE MOST as the entire mark or as
the beginning of the mark, making it the dominant feature
of respondent’s three marks, THE MOST, THE MOST WORLDWIDE
and THE MOST FOR BUSINESS. See Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); and In re National Data Corporation,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Of course, there are obvious differences between
petitioner’s six registered marks and the three involved
challenged marks, specifically that the term “THE” is
part of each of respondent’s marks; that two of
respondent’s marks include other words “worldwide” and
“for business” (with “worldwide” and “business”
disclaimed); and that two of petitioner’s registered MOST
marks include a rectangular design. Despite these
differences, we find the marks are similar in sound and
appearance.
However, we cannot agree with petitioner that the
marks all “have the same general connotation.” (Brief,
p. 45.) Petitioner’s mark, MOST, in relation to
petitioner’s banking and financial services, simply
connotes the greatest in number. Whereas, in
respondent’s marks, the addition of the word “THE” adds
an element of singularity, relating to something that is
Cancellation No. 22034 & Opposition No. 99949
27
incomparable and superior. In addition, two of
respondent’s marks include other wording referring to
“FOR BUSINESS” and “WORLWIDE” respectively. Thus, the
connotation of respondent’s marks in relation to
telecommunication or telephone services is slightly
different from the connotation of petitioner’s marks.
Overall, we find the factor of the
similarities/dissimilarities of the marks favors
petitioner.
We consider next the du Pont factor of the
similarity or dissimilarity and nature of the goods
and/or services. Respondent’s two registrations are for
“telecommunications services,” and “telecommunications
services, namely, telephone communications services,”
respectively; and its application is for
“telecommunications services, namely, telephone voice
communications services.”
Petitioner asserted one registered mark for MOST for
goods, specifically, “publications, namely, newsletters
and user manuals for banking communication networks”.
Petitioner’s registered service marks for MOST or MOST
and design cover “banking services, namely, electronic
funds transfer”; “banking services, namely, electronic
funds transfer services and electronic processing and
Cancellation No. 22034 & Opposition No. 99949
28
transmission of point of sale payment data between
merchants and customers accounts”; “financial services,
namely, providing and facilitating electronic funds
transfer and debit transactions for banks, professional
offices, and retail merchants”; and “business management
services, namely, computerized management of payment
systems, transfer of value systems and supporting data
related thereto.”20
Respondent essentially contends that petitioner is
in the banking and financial business, and that
petitioner and its members communicate with one another
through a network which is not available to the public;
that merely because petitioner transmits information and
data over leased telephone lines does not put petitioner
in the business of offering telecommunications services
to its customers; and that petitioner’s various
electronic funds transfer services are banking and
financial services the same as rendered by any bank and
would not be associated with respondent’s
telecommunications/telephone communications services.

20 Internet, Inc.’s president, David O’Connor, characterized the
company as follows: “[Internet’s] members are in the financial
services business and we are in the information management
business”; and he explained the “two tools that you use in the
management of information; data processing and telecom.”
(O’Connor dep., pp. 141 and 194.)

Cancellation No. 22034 & Opposition No. 99949
29
Petitioner, on the other hand, essentially contends
that electronic funds transfer processing (petitioner’s
original services) grew and expanded from automated
teller machine transactions for banks and financial
institutions to information processing, with petitioner a
leading information service provider, managing all
transaction activities for member banks, small
businesses, professionals and consumers; that petitioner
is not strictly in the banking and financial business,
but rather is in the information management business;
that petitioner’s business has three layers, namely, the
banks and financial institutions, the merchants and
corporate members who are customers of the banks and
financial institutions, and the ultimate card carrying
consumers, i.e., the general public; and that
petitioner’s services evolved from the first electronic
funds transfers in the early 1980s to the full range of
the electronic delivery system (e.g., remote banking,
remote bill paying, remote shopping, point of sale
devices in stores), all supported by the
telecommunications network petitioner has established to
provide telecommunications services for banks, merchants,
small businesses and individuals.
Cancellation No. 22034 & Opposition No. 99949
30
Petitioner specifically emphasizes the following
wording in its identifications of goods and services for
its registered marks as indicative that it is and has
been in the telecommunications business:
“publications, namely, newsletters
and user manuals for banking
communication networks”; “banking
services, namely, electronic funds
transfer services and electronic
processing and transmission of point
of sale payment data between
merchants and customers accounts”;
and “business management services,
namely, computerized management of
payment systems, transfer of value
systems and supporting data related
thereto.”

Clearly, the meaning of “telecommunications
services” is an important factual issue in this case.
Petitioner submitted a photocopy of a Nexis printout of
47 USCS §702, referred to as the Telecommunications Act
of 1934 as amended (1994), wherein the definition of
“telecommunication” is listed as “any transmission,
emission, or reception of signs, signals, writings,
images, and sounds or intelligence of any nature by wire,
radio, optical, or other electromagnetic systems.”
(Golden dep., exhibit No. 6). In addition, respondent
admitted petitioner’s requests for admission that “tele”
means “at a distance,” and that “communication” means “an
Cancellation No. 22034 & Opposition No. 99949
31
exchange of information.” (Request for admission Nos.
100 and 101.)
Respondent does not disagree with either the
Telecommunications Act definition of the term, or the
dictionary definitions of the dissected separate parts of
the word. Rather, respondent simply contends that
petitioner is not in the telecommunications business and
that respondent is not in the banking or financial
business.
As stated earlier, the burden of proof is, of
course, on petitioner. In terms of the record offered in
this case, petitioner was vague and ambiguous with
respect to whether it offers telecommunications services
to others or whether it merely utilizes a
telecommunications network to support its actual services
in the banking and financial industry. There is no
question that banking and financial interactive
communications have changed and evolved from the 1980s to
now, going from electronic funds transfer, to automated
teller machines, to remote bill paying and shopping.
However, this record does not clearly establish how
petitioner is separately and specifically engaged in the
telecommunications business, and how its various banking
Cancellation No. 22034 & Opposition No. 99949
32
and financial and business management services are
related to the telecommunications services of respondent.
Typical examples of the nature of the discovery
deposition testimony of petitioner’s employees is set
forth below, showing the testimony regarding petitioner’s
involvement in offering telecommunications services is
vague, often referencing its alleged telecommunications
services as merely supporting petitioner’s various
banking and financial services, such as electronic funds
transfer, and even stating there is a “fuzziness”
involved.
David O’Connor, president and CEO of Internet, Inc.,
testified generally about the evolution of the banking
industry from manual operations to punch cards to coaxial
cable and moving into the future (see e.g., dep., pp. 16-
19); and he testified more specifically about
petitioner’s alleged telecommunications services and its
customers as follows:
Q. Now when you talk about customers
of Internet, are you talking about
financial institutions?
A. Yes, sir.
Q. How do you identify those people
out there who are, in turn customers
of the financial institution? They
aren’t really customers of Internet,
are they?
A. We are the support mechanism for
the financial institution to support
their retail customer.
Cancellation No. 22034 & Opposition No. 99949
33
Q. All right, so your Internet is a
support organization that services
its owners and member financial
institutions?
...(objection discussion omitted)
Q. Consider that a question. Is
Internet a support organization?
A. I guess my only concern with
giving that a simple answer is that
it bears a little bit more
reflection because it sort of
connotes a much more narrower role
in terms of what we play.
Fundamentally, I can’t disagree with
the statement because we provide
services of a variety of dimensions
to the banks which they in turn
utilize to support their customers.
So, we -- in general terms, that’s
an accurate statement. (dep., pp.
24-26)

Q. Is Internet in the same business
as Sprint, as you understand it?
A. I think there is a question of
overlapping business.
Q. Where do you see that overlap?
A. Obviously in the communications
field, the use of transport services
and the management of the transport
services and packaging, the ability
to move information.
Q. Are you -- is Internet a licensed
carrier by the FCC?
A. No, sir.
...
Q. And is Internet in the business
of operating telephone lines from
one place to another?
A. In terms of operating, meaning
maintaining?
Q. Operating and maintaining
telephone lines that they own?
A. Well, we don’t own any per se, so
the answer would be no.
...
Cancellation No. 22034 & Opposition No. 99949
34
Q. Would you regard Sprint -- and
you used this term -- as a transport
provider?
A. Yes.
Q. In the sense that they own and
operate and maintain
telecommunications lines from one
place to another?
A. Yes, sir.
Q. Okay. And those lines would be
used by anyone who is connecting up
EFTs, or POS, or ATMs; is that
correct?
A. Which lines?
Q. The telecommunications lines from
one point to another.
A. That we would lease?
Q. No, like the lines like Sprint
owns. Those lines would be a
necessity to anyone who is going to
conduct an ATM or a POS operation?
A. Yes, I believe that’s the case.
...
Q. Is it true that all of your
customers are in the financial
services business?
A. Yes, sir. (dep., pp. 84-86)

When asked to explain what petitioner means by the
identification of services in its pending application
Serial No. 74/374,632 (suspended at the Trademark
Examining Operation), “telecommunications services,
namely, managing communication systems for banks,
professional offices, and retail merchants related to
transfer of value, payments, and supporting data,” Mr.
O’Connor explained that petitioner is managing
communications systems in that it is “creating
configurations of lines and the necessary mechanisms to
Cancellation No. 22034 & Opposition No. 99949
35
support and monitor those lines, network management
facility.” (dep., p. 123.) He also explained that
petitioner’s customers are banks and financial
institutions, which in turn sell banking services to
professional offices (i.e., doctors, dentists, small
businesses).
As Mr. O’Connor’s discovery deposition progressed,
he was again questioned regarding Internet’s specific
involvement in telecommunications services, and he
testified as follows:
Q. You are not in the
telecommunications business like
Sprint is as a transport carrier?
A. There is a certain fuzziness in
there. And I think that’s where
the difficulty is and where – I
don’t think that we can reach
perfect clarity because the
communications business is kind of
like the banking business. The
banking business is not like any
other business on earth, either,
because it encompasses the payment
function....(p. 128)

Q. Would you expect a bank
customer, being presented with this
package that you just described [a
package of financial services with
communications support], would
think that the bank owned the
telecommunications facilities?
A. I would assume that he would not
believe that to be the case.
Q. And the banks know that you
don’t own telecommunications
facilities, but that rather you
Cancellation No. 22034 & Opposition No. 99949
36
lease lines and package them and
make them available to the bank?
A. That’s generally the case. And
there are instances where we own
pieces of the network.
Q. But your banks understand that
you are not in the hardline carrier
business?
A. We are not competing with
Sprint.
Q. Okay.
A. And don’t want to compete with
Sprint. (pp. 131-132)

Q. So, at this juncture [around
1991], it was called a shared
telecommunication network time
line?
A. Yes.
Q. Did this later become called a
PFN?
A. There is a little fuzziness as
to how PFN was going to be utilized
and what portions of the
telecommunications activities was
going to be labeled the PFN versus
a broader shared telecommunication
activity.
So, it’s not a clean definition
because it was an evolving process.
Q. Before you undertook this – as
you call it, expansion – did
Internet emphasize their
telecommunications services?
A. I’m not sure—“emphasize” is a
very funny word.
Q. Well, did they advertise,
promote, market the
telecommunications services or a
Private Financial Network?
A. As part of the support for the
other services, yes.
Q. But not as such?
A. But not as a unique
communications product.
(dep., pp. 157-158)

Cancellation No. 22034 & Opposition No. 99949
37
Q. ... Have you ever experienced
someone coming to Internet solely
for the purpose of buying
telecommunications services?
A. No, sir. (dep., p. 178)

Q. And—but do you feel that the
banks, as your customers, are
primarily in the telecommunications
business?
A. No, sir.
Q. Do you feel that Internet is
primarily in the telecommunications
business?
A. I think that telecom is one of
the basic kinds of support that we
provide to our members.
Q. And would that not be true of
any business that use
telecommunications in some manner
to carry on their business?
A. No, sir. You are suggesting that
someone running a canal boat is not
dependent on the water. We are a
canal boat depending on the water
and telecommunications is the
water. And that’s very different
from any other business, from a law
firm to McDonald’s utilization of
telecommunications as a management
tool or a communication tool.
But this is fundamental to our
function. (dep., p. 192)

Mary Addis Kilby, vice president of marketing at
Internet, Inc., testified as follows:
Q. The question is whether Internet
was considered to be in the
telecommunications business?
...(discussion between counsel
omitted)
A. If telecommunications is voice
telephone services, then they
[Internet] were not involved in
that; but telecommunications is --
in the broad sense has always been a
Cancellation No. 22034 & Opposition No. 99949
38
very basic part of the service that
is delivered to the financial
institutions. It’s part of the
definition of the network.
Q. Do you ever recall anyone ever
coming to Internet to purchase
telecommunications services?
A. I was not involved from an agency
point of view in those kinds of
conferences. (dep., pp. 22-23)

Petitioner’s view that from the time it commenced
providing banking services, namely, electronic funds
transfer, it has been engaged in the telecommunications
business, with all the technological developments and
added capabilities as an expansion of those original
telecommunication services is simply not supported in
this record. To the contrary, this record shows that the
“telecommunication services” to which petitioner refers
are simply ordinary and necessary adjuncts of providing
its banking and financial services. That is, petitioner
is merely using telecommunications as a tool in
performing its function (banking services such as
electronic funds transfer, automated teller machine
transactions, and the like). The record shows that
petitioner utilizes telecommunications and, in fact,
leases telephone lines from AT&T and Bell Atlantic in
order to provide its various banking and financial
services, but this record does not establish that
petitioner separately offers telecommunications services.
Cancellation No. 22034 & Opposition No. 99949
39
In today’s electronic world, virtually all businesses
utilize some form of “telecommunications” in order to
conduct whatever business they are in; but that does not
put them in the telecommunications business. See
Electronic Data Systems Corp. v. EDSA Micro Corp., 23
USPQ2d supra at 1463; and Itel Corp. v. Ainslie, 8 USPQ2d
1168 (TTAB 1988).
Specifically, petitioner has not established by a
preponderance of evidence that it truly offers a
telecommunications service separate from its banking and
financial services relating to electronic funds transfer,
automated teller machines, point of sale data
transmission, and the like. Rather, the record indicates
that petitioner’s asserted telecommunications services
are simply the means by which petitioner offers and
provides its various banking and financial services.
Petitioner has not established the relatedness of the
involved services, or that purchasers and/or users of its
banking and financial services would likely be confused
by the concurrent use of the involved marks by the
respective parties on their repsective goods and
services.
Simply put, petitioner and respondent are not in the
same business, and the fact that petitioner utilizes a
Cancellation No. 22034 & Opposition No. 99949
40
communications network to provide its banking and
financial services does not put petitioner in the
telecommunications business. Data transfer over
telephone lines may technically be a form of
“telecommunications,” in the broadest possible sense of
that word. Nonetheless, based on the record before us we
find that the parties’ respective services are non-
competing and are not closely related in a commercially
significant manner within the meaning of the Trademark
Act.
Petitioner’s discovery testimony shows that
petitioner advertises its goods and services to current
members or potential member banking and financial
institutions through a direct sales force, direct
mailings, and participation in trade shows in the
relevant industry. Whereas, respondent offers its
telephone services to the general public. Even if the
bank’s purchasing agent or board of directors who make
the decision to sign the bank up for petitioner’s
services also purchased respondent’s telecommunication
services, we simply do not see significant overlap in the
trade channels, based on this record. The parties, as
acknowledged by petitioner, do not compete in the
marketplace. (See e.g., O’Connor dep., pp. 132, 196.)
Cancellation No. 22034 & Opposition No. 99949
41
Moreover, petitioner has not established that
telecommunication services are a natural expansion of the
services for which it has shown priority, that is,
certain banking and financial services, such as
electronic funds transfer services set forth in the
registration. In this consolidated case, petitioner’s
own discovery testimony is vague and ambiguous on this
matter. For example, Richard G. Lyons, Jr., executive
vice president and COO of Internet, Inc., testified as
follows:
Q. The mark MOST, how does it
identify telecommunication
services?
A. Well, I can only say that a
great majority of these services
and programs that we provide with
the MOST brand are dependent upon
the utilization of
telecommunications, so they are a
very core part of everything we do.
(pp. 37-38)
Q. Is Internet in the business of
offering phone service?
A. Well, that’s an interesting
question because we have lots of
services that are phone like or
utilize certainly significant
telecommunications capabilities.
(p. 35)

While there is no question that petitioner utilizes
“telecommunications” (e.g., leases telephone lines) in
order to provide its various banking and financial
services to its member financial institutions,
Cancellation No. 22034 & Opposition No. 99949
42
nonetheless, the record does not establish that
telecommunications services are a “natural expansion” of
banking and financial services, such as electronic funds
transfer and automated teller machine transactions. See
SBS Products Inc. v. Sterling Plastic & Rubber Products
Inc., 8 USPQ2d 1147 (TTAB 1988). To the contrary,
petitioner has shown only that it utilizes telephone
lines in order to render its various banking and
financial services. Simply put, this record does not
establish petitioner’s claim of rights based on “natural
expansion.” See Electronic Data Systems Corp. v. EDSA
Micro Corp., 23 USPQ2d 1460, 1463-1464 (TTAB 1992).
Regarding the du Pont factor on the conditions of
sale and class of purchasers, this factor in the
likelihood of confusion analysis is not limited to
strictly purchasers. (See the 1962 amendments to the
Trademark Act, explicitly deleting the term “purchasers”
therefrom.) Courts have recognized non-purchaser
confusion. See Payless Shoesource Inc. v. Reebok
International Ltd., 998 F.2d 985, 27 USPQ2d 1516, 1519
(Fed. Cir. 1993). Here it is clear that respondent’s
services are offered to the general public. While
petitioner’s services are only sold to sophisticated
consumers in the form of banks and other financial
Cancellation No. 22034 & Opposition No. 99949
43
institutions (see O’Connor dep., pp. 123-124), its
services are ultimately available, through those banks
and financial institutions, to the general public. See
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391-1392 (Fed. Cir.
1992). Thus, the general public must be considered the
ultimate user of respondent’s services and some of
petitioner’s services.
Even given the above regarding the ultimate users of
some of petitioner’s services, we point out that
petitioner’s banking services, and respondent’s
telecommunications services are not impulse purchases.
As petitioner acknowledges in its brief (p. 47), its
services are purchased by banks and financial
institutions through a contractual agreement. Further,
consumers choose their telephone service with some degree
of care. Choosing a bank, credit union or other
financial institution and choosing a telephone company
(for home and/or business) involves one’s financial well
being, monthly billing and/or monthly statements.
Consumers will not engage in such decisions lightly.
These are not low priced or impulse purchases or uses by
the general public. See Recot, Inc. v. M.C. Becton, 214
Cancellation No. 22034 & Opposition No. 99949
44
F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). We
find that this factor favors respondent.
Turning to the du Pont factor of the fame of the
prior mark, petitioner’s argument in its brief (p. 47) on
that point reads in its entirety as follows:
The subject mark of [petitioner],
“MOST” has been in use since 1982 and
has achieved 90% market recognitions.
[Respondent’s] first use of the mark
“THE MOST” was in 1992.

The fact that a mark has been used for many years
does not establish that it has achieved fame in the
marketplace. With regard to petitioner’s reference to
90% market recognition, this refers to some “awareness
attitude and tracking” studies done on an annual basis
with reports to petitioner on the results thereof,
covering a number of different areas. These reports were
derived from telephone questionnaires, and we will not
analyze the design, methodology, implementation,
interpretation and analysis of these reports. Suffice it
to say that the discovery testimony of Ms. Kilby on these
reports was not sufficient to clearly establish the
usefulness of these studies in our likelihood of
confusion analysis herein. She specifically testified
that these reports were internally ordered brand
awareness studies, with no component relating to
Cancellation No. 22034 & Opposition No. 99949
45
likelihood of confusion. (See, e.g., Kilby dep., pp. 38-
39.)
We note that respondent stated in its brief (p. 25)
that “[petitioner] has not made any serious claim of fame
for its mark,” which was confirmed by petitioner’s
attorney at the oral hearing. Moreover, its reply brief
petitioner did not rebut respondent’s above-quoted
statement.
In any event, this record does not support a finding
of fame of petitioner’s registered marks. Even if
petitioner’s registered marks were found to be famous, in
this situation, respondent’s THE MOST mark has also
certainly achieved some degree of renown in its market,
as shown by the high volume of sales (into the hundreds
of millions of dollars) and advertising expenditures
(into the tens of millions of dollars). See Marshall
Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1332
(TTAB 1992).
With regard to the du Pont factor of the number and
nature of similar marks in use on similar goods or
services, the parties agree that there is no evidence in
the record on this factor. See petitioner’s brief, pp.
48-49, and respondent’s brief, p. 25.
Cancellation No. 22034 & Opposition No. 99949
46
Regarding the du Pont factor relating to the nature
and extent of any instances of actual confusion, there
have been no instances of actual confusion by consumers.
While David O’Connor testified that when Sprint’s ads for
THE MOST telephone/telecommunications services first
appeared on television he was confused, and possibly his
wife and “other people in his household” were also
confused, he clearly testified that he was aware of no
instances of actual confusion from consumers. (O’Connor
dep., pp. 185-188.)
Mary Addis Kilby also testified that “personally,
anecdotally,” and “in social settings” people would
sometimes ask what she may have to do with THE MOST
advertised on television by Candace Bergen; but she
specifically testified that she has had no actual
confusion incidents reported to her as a vice president
of petitioner, and she is not aware of any reported to
any other officer or employee of petitioner. (Kilby
dep., pp. 39-40.) The discovery testimony of Richard
Lyons also showed that upon seeing respondent’s initial
advertisements for THE MOST he was confused (although he
realized by the end of the advertisement that it was not
petitioner), and that he knows of no instances of actual
Cancellation No. 22034 & Opposition No. 99949
47
confusion by consumers. (See Lyons dep., pp. 32-33.)
This factor favors respondent.
Turning to the du Pont factor of length of time
during and conditions under which there has been
concurrent use without evidence of actual confusion,
petitioner acknowledges that the discovery testimony
evidence (taken in 1994-1995) shows that there has been
no actual confusion despite three years of concurrent
use, but pointing out that respondent discontinued
advertising its mark THE MOST in 1994.21 Respondent
agrees that at the time of trial there had been three
years of concurrent use without any actual confusion.
(Respondent’s attorney stated in the brief that by then
there were nine years of use without any actual
confusion.)
The record shows that respondent offers its services
nationwide, with hundreds of thousands of customers, and
petitioner offers its services especially in the mid-
Atlantic and some Southern states, with some nationwide
retailers. There has been extensive use by both parties
of their marks, and the opportunity for actual confusion

21 As noted previously on page 17 of this decision, Paul Golden
testified that respondent only “temporarily discontinued”
advertising THE MOST while it launched other products. There is
no evidence that respondent discontinued use of the mark, and,
Cancellation No. 22034 & Opposition No. 99949
48
has been real, yet there have been no reported instances
of actual confusion. We find this factor favors
respondent.
With regard to the du Pont factor of the variety of
goods or services on which a mark is or is not used
(house mark, family mark, product mark), respondent’s
argument that it uses the mark SPRINT as a house mark is
irrelevant herein where its involved registered and
applied for marks do not include the house mark SPRINT.
Thus, the evidence of record on this point is irrelevant,
and this factor plays no part in our decision.
The du Pont factor of the extent of potential
confusion (de minimis or substantial) weighs in
respondent’s favor because the nature of the parties’
respective services, the channels of trade, and the
sophistication of the purchasers of petitioner’s services
reduces the extent of potential confusion. This is
especially true in light of three years of concurrent use
with no actual confusion.
Finally, under the du Pont factor of “any other
established fact probative of the effect of use"
petitioner argues that respondent ignored its duty to
select a mark different from one known to be in use, and

of course, this record is generally devoid of information after
Cancellation No. 22034 & Opposition No. 99949
49
in fact, respondent used the same advertising agency (J.
Walter Thompson Advertising Agency) to develop its mark
THE MOST which petitioner had previously used to develop
its mark MOST.
Respondent contends that its involved marks were
developed for use in connection with its
telecommunications services; that thorough searches were
made; and that the marks were adopted based on studied
assumptions and understandings that there was not a
likelihood of confusion with MOST for banking and
financial services.
The record in these consolidated cases on this
factor (as with the other factors generally) is vague on
petitioner’s part and is contradicted by respondent’s
witnesses at their discovery testimonies. The fact that
both parties ultimately used the same advertising agency
to develop their marks--petitioner for banking and
financial services, and later respondent for
telecommunications services is simply not sufficient to
find this factor weighs in petitioner’s favor.
In summary, in balancing the relevant du Pont
factors [e.g., similarity or dissimilarity of the marks,
similarity or dissimilarity and nature of the

1995.
Cancellation No. 22034 & Opposition No. 99949
50
goods/services, similarity or dissimilarity of the
channels of trade, conditions under which and buyers to
whom sales are made (i.e., sophistication of purchasers,
cost of goods/services), fame of the prior mark, the
nature and extent of any actual confusion, and the length
of time during and the conditions under which there has
been concurrent use without evidence of actual
confusion], we conclude that confusion is not likely.22
Decision: The petition to cancel is denied, and the
opposition is dismissed.

22 Petitioner’s argument (e.g., brief, pp. 23-24) that
respondent admitted that there is a likelihood of confusion
(Golden dep., p. 50) is contradicted by a full reading of the
involved testimony (e.g., Golden dep., pp. 49-50 and 109-111).