Trailer Bridge, Inc.

Trademark Trial and Appeal Board

Mar 29, 2001

No. 75324564 (T.T.A.B. Mar. 29, 2001)

03/29/01
Paper No. 13
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Trailer Bridge, Inc.
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Serial No. 75/324,564
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Steven J. Elleman of Thompson Hine & Flory LLP for Trailer
Bridge, Inc.
Gina Hayes, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Hanak, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Trailer Bridge, Inc. has filed an application to
register the mark TB (typed drawing) for “ocean
transportation of goods between and among ports in the
mainland United States and Puerto Rico and other locations,
and freight transportation by truck within the United
States.”1
1 Serial No. 75/324,564, filed July 15, 1997, claiming first use
dates of September 1, 1995.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/324,564
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark TB GROUP and design, as depicted
below, which is registered for “handling, storage and
distribution via air, land and sea of fashion merchandise
and fast moving consumer goods of all types.”2
The requirement that applicant submit acceptable specimens
has also been made final. The refusal of registration has
been appealed and both applicant and the Examining Attorney
have filed briefs. An oral hearing was not requested.
Section 2(d) Refusal
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors which are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
2 Registration No. 1,793,895, issued September 21, 1993, Section
8 & 15 affidavits accepted and acknowledged, respectively. A
disclaimer has been made of the word GROUP.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/324,564
3
are being used. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).
Looking first to the respective marks, we are guided
by the well established principle that although the marks
must be considered in their entireties, there is nothing
improper, under appropriate circumstances, in giving more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Moreover, although descriptive or disclaimed
matter cannot be ignored in comparing the marks, it is also
a fact that consumers are more likely to rely on the non-
descriptive portion of a mark as an indication of source.
See Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993). In addition, it is
the word portion of a mark, rather than the design
features, unless particularly distinctive, that is more
likely to be remembered and relied upon by purchasers in
referring to the goods and thus it is the word portion that
will be accorded more weight in determining the similarity
of the involved marks. See Ceccato v. Manifattura Lane
Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB
1994).
Ser No. 75/324,564
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We agree with the Examining Attorney that the letters
TB dominate registrant’s mark. There are obvious
differences in the appearance and sound of the marks as a
whole, as pointed out by applicant, as a result of the
additional presence of the word GROUP in the registered
mark. Nonetheless, we are convinced that potential
customers would look to the letters TB as the indicator of
source, rather than the descriptive word GROUP, which has
been disclaimed by registrant. Moreover, simply upon
viewing the two marks, there is no meaning which customers
would readily attach to the letters TB, so as to
distinguish between applicant’s and registrant’s uses of
the same letters. See Alberto-Culver Co. v. F.D.C.
Wholesale Corp., 16 USPQ2d 1507 (TTAB 1990). The overall
commercial impressions created by the marks TB and TB GROUP
are highly similar.4
Although applicant also points to the design elements
in the registered mark as a distinguishing feature, we do
4 Applicant’s reference in its brief to numerous third-party
registrations for marks containing TB can be given little weight.
While the Examining Attorney failed to object to the evidence as
being either untimely or improperly presented, the mere reference
to third-party marks, without any indication of the goods or
services for which they are registered, can have minimal impact
on the strength to be accorded to registrant’s mark. In
addition, many of the citations are for applications, which can
given no weight as even demonstrating the existence of these
marks.
Ser No. 75/324,564
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not consider these design features so distinctive that
customers would be likely to rely upon and refer to
services of the nature involved here in terms of the
design, rather than the letters TB. Furthermore, since
applicant is seeking to register its mark in a typed
drawing, applicant is free to adopt any format it desires
to display its mark, including a design very similar to
that of registrant. See Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937 (Fed. Cir. 1983); INB National Bank v.
Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992). In attempting
to visualize possible forms of applicant’s mark, we can
certainly look to the original specimens of record in which
the letters TB are also intertwined, although not in the
specific form of registrant’s design. See Phillips
Petroleum Co. v. C.J. Webb, Inc., 442 F2d. 1376, 170 USPQ
35 (CCPA 1971). All in all, the design features of
registrant’s mark cannot be relied upon to obviate the
similarity of overall commercial impressions created by the
marks.
Turning to the services involved, we note that as a
general principle, the issue of likelihood of confusion
must be determined on the basis of the services as
identified in the application and in the cited
registration(s). Canadian Imperial Bank of Commerce v.
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Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Registrant’s services include the “distribution” by
“land and sea” of “fashion merchandise and fast moving
consumer goods of all types.” Applicant’s services cover
“ocean transportation of goods” and “freight transportation
by truck.” Despite applicant’s attempt to distinguish
between the services in terms of the actual means of
carrying out these transportation services and the specific
goods involved, the fact remains that the services of
applicant, as identified in the application, are covered by
the services identified in the registration. We fail to
see how “distribution by sea” differs from “ocean
transportation” or “distribution by land” from
“transportation by truck.” In like manner, the “goods” and
“freight” of applicant, even though including additional
goods, must necessarily encompass the specific “fashion
merchandise and fast moving consumer goods” of registrant.
Whether or not applicant performs other consolidation
services, and whether or not registrant owns its own ocean
vehicles is immaterial to the determination of
registrability, which must be based solely on the services
as identified in the application and registration. As
such, the services must be viewed as closely related, if
not identical.
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Applicant further raises the factor of sophisticated
purchasers, arguing that its services are provided to
professionals who are well acquainted with applicant’s type
of services and thus less likely to be confused as to
source. Applicant also notes that the services of both
applicant and registrant are relatively costly and
accordingly would be selected with care. We cannot give
much weight to this factor, however, since even
sophistication and care of this nature cannot preclude a
likelihood of confusion when the marks are as similar as
the present TB marks and the services with which they are
being used as virtually identical, as identified. See
Towers v. Advent Software Inc., 17 USPQ2d 1471 (TTAB 1990).
Finally, applicant argues that that it is not aware of
a single instance of actual confusion to date. We would
simply note that little weight can be given to this factor
because we have no information as to the geographic overlap
of markets and accordingly the potential for confusion.
See In re National Novice Hockey League, Inc., 222 USPQ 638
(TTAB 1984).
Accordingly, upon weighing all the relevant du Pont
factors, we find a likelihood of confusion to exist with
the contemporaneous use by applicant of its TB mark for the
transportation services as identified herein and the use by
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registrant of its TB GROUP and design mark for the recited
services.
Substitute Specimen Requirement
In the final refusal, the Examining Attorney also made
final the requirement that applicant submit substitute
specimens, the present specimens being unacceptable.
Applicant had stated in its previous response that
“applicant acknowledges the request [for specimens] and
will submit specimens upon indication of registrable
subject matter.” In its appeal brief applicant again
states that “upon a finding that applicant’s mark is not
confusingly similar to the cited mark, applicant will
submit new specimens and the application can proceed to
publication.” (Brief p.8).
The Examining Attorney, in her brief,5 takes issue with
applicant’s piecemeal prosecution of the application,
citing In re Big Daddy’s Lounges Inc., 200 USPQ 371 (TTAB
1978), and maintains that registration should also be
refused on the basis of applicant’s failure to timely
respond to the specimen requirement. While noting that
applicant’s failure to fully respond to the requirement for
acceptable specimens could have resulted in abandonment of
5 We note that the application was assigned to a different
Examining Attorney for the preparation of the brief.
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the application, she points out that the application was
not abandoned but rather the requirement was made final.
Applicant, in its reply brief, contends that the
Examining Attorney is essentially arguing that the
application is abandoned for failure to file acceptable
specimens and that she should be estopped from raising this
issue at this time. Applicant argues that its prior
response was a bona fide attempt to advance examination of
the application and that it should now be afforded an
opportunity to comply with the outstanding requirement.
Applicant has submitted substitute specimens with the
reply, which it requests be entered.
We find it clear that the Examining Attorney is not
arguing that the application had been, in effect,
abandoned. She simply points out that this was an option
which the prior Examining Attorney could have followed.
Instead her position is that the requirement was made final
and thus stands as a bar to registration.
Furthermore, we agree that under the Big Daddy’s
Lounges case, the requirement can and should be affirmed in
view of applicant’s failure to timely respond to the
requirement and applicant need not be afforded an
opportunity at this point to submit substitute specimens.
Although in that case the applicant was allowed additional
Ser No. 75/324,564
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time to comply with the outstanding requirement, this
“leeway” was permitted solely because of the practice in
effect at the time. The Board specifically noted that
in the future, an application must be in condition for
allowance save for the issue on appeal and failure to
do so could result in judgment against the applicant
for failure to comply with the Examiner’s requirement.
Leave, on this level, for a further opportunity to
comply with ... the Examiner’s requirements will
ordinarily not be granted.
200 USPQ at fn.3.
In accordance therewith, the refusal to register for
failure to comply with the requirement for acceptable
specimens will be upheld. Applicant’s present proffer of
substitute specimens is deemed untimely.
Decision: The refusals to register both under Section
2(d) and for failure to comply with the requirement for
acceptable specimens are affirmed.
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