Tracy Nixon

Trademark Trial and Appeal Board

May 6, 2005

No. 76456865 (T.T.A.B. May. 6, 2005)

5/6/2005

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

Trademark Trial and Appeal Board
_____________

In re Tracy Nixon
____________

Serial No. 76456865
_____________

Cory M. Baker of Tucker & Latifi, LLP for Tracy Nixon.

Robert Coggins, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_____________

Before Hanak, Hohein and Rogers, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Tracy Nixon (applicant) seeks to register PASSPORT
TRAVEL SPA and design in the form shown below for
“operating beauty salons and rendering spa services.” The
intent-to-use application was filed on October 4, 2002, and
it included a disclaimer of the exclusive right to use SPA
apart from the mark as shown. On October 31, 2002
applicant filed an Amendment to Allege Use with a specimen
showing use of her mark for her services.
Ser. No. 76456865
2

Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the mark PASSPORT and design
(shown below), previously registered for “therapeutic
massage services.” Registration No. 2,232,086.

Ser. No. 76456865
3

When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
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.”).
Ser. No. 76456865
4
Considering first the services, we find that the
record demonstrates that the term “operating beauty salons
and rendering spa services” (applicant’s services)
encompasses massage services (registrant’s services). In
this regard, the Examining Attorney has made of record
numerous newspaper and magazine articles showing that
beauty salons, spas and combination beauty salons/spas
routinely offer massage services. Moreover, applicant’s
own specimen of use is a brochure which, beneath
applicant’s service mark, has the following wording:
“Nails – Massage – Hair.” Inside the brochure there is a
more detailed description of the services (with prices)
broken down into these same three categories, including
specifically “massage.” Moreover, applicant’s other
literature states the following: “Passport Travel Spa
offers a full range of professional spa services to air
travelers and airport personnel, including nail care, hair
styling and massage.” (emphasis added).
In short, we find that applicant’s description of her
services (operating beauty salons and rendering spa
services) includes massage services, and that therefore the
services of the applicant and the registrant are, in part,
legally identical.
Ser. No. 76456865
5
Turning to a consideration of the marks, we note at
the outset that when the services of the parties are
legally identical as is the case here, “the degree of
similarity [of the marks] necessary to support a conclusion
of likely confusion declines.” Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
In considering the marks, we recognize that we are
obligated to compare the marks “in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed.
Cir. 1985). However, in comparing the marks in their
entireties, it is completely appropriate to give more
weight to the more prominent portions of a mark. With
regard to the registered mark, the most prominent portion
is the single word PASSPORT. The word PASSPORT dominates
over the background design. Moreover, it need hardly be
said that only the PASSPORT portion of the registered mark
would be spoken. In other words, consumers would not refer
to the registered mark as “PASSPORT and design.”
Turning to a consideration of applicant’s mark, the
most prominent portion of applicant’s mark is also the word
PASSPORT, which, of course, is identical to the only word
in the registered mark. Not only is PASSPORT set apart
from TRAVEL SPA, but in addition PASSPORT, an arbitrary
Ser. No. 76456865
6
term for spa services, is “the first word” in applicant’s
mark and the only word in the registered mark, a factor
which makes “the marks similar.” Palm Bay Imports, Inc. v.
Veuve Clicquot, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). See also Presto Products v. Nice-Pak Products, 9
USPQ2d 1825, 1897 (TTAB 1988) (The fact that two marks
share the same first word is generally “a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”) Of course, this proposition would not
apply if the first word was “the,” “a” or the like, or if
the first word was generic or descriptive of the relevant
goods or services. Palm Bay Imports, 73 USPQ2d at 1690. As
for the terms TRAVEL SPA, we note that the word SPA is
generic for applicant’s services, and has quite properly
been disclaimed. This word has no source identifying
capability. Indeed, even the entire term TRAVEL SPA in
applicant’s mark has little source identifying significance
in that it simply indicates that the spa is located in an
airport, as applicant acknowledges at page 6 of her brief
in the following manner: “Applicant’s mark PASSPORT TRAVEL
SPA plus logo is aptly named as its only location can be
found in the Indianapolis International Airport.” (emphasis
added).
Ser. No. 76456865
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Finally, as for the background design of applicant’s
mark, we find it to be very nondescript in that it merely
consists of two circles imposed upon a rectangle. Circles
and rectangles are common geometric shapes which generally
have little source significance. 1 J. McCarthy, McCarthy
on Trademarks and Unfair Competition, Section 7:33 at page
7-56 (4th ed. 2004). We recognize that within the circles
there appear again the words PASSPORT TRAVEL SPA, as well
as for the first time the initials PTS. If consumers were
to even notice this wording, it is just a mere repetition
of the primary wording previously presented in a larger,
easier to read horizontal fashion in applicant’s mark (i.e.
PASSPORT TRAVEL SPA), coupled with the initials PTS which
in this context would be understood to mean PASSPORT TRAVEL
SPA. To the extent that the circles enclosing PTS and
PASSPORT TRAVEL SPA are noticed, they would bring to mind a
“passport stamp,” thereby only reinforcing the dominance of
the word PASSPORT.
In short, consumers familiar with registrant’s
PASSPORT massage services, upon seeing PASSPORT TRAVEL SPA
massage services in an airport, would readily be of the
view that registrant has now expanded its massage services
from a traditional location to an airport, and has merely
Ser. No. 76456865
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added, to use applicant’s own words, the “aptly named” term
TRAVEL SPA to indicate the location of the spa.
Given the fact that the services of the applicant and
registrant are in part legally identical, and the
additional fact that when considered in their entireties,
the two marks are quite similar in that applicant’s mark
features in the most prominent fashion the only word found
in the registered mark, we find that the contemporaneous
use of both marks would result in a likelihood of
confusion.
Decision: The refusal to register is affirmed.