A.I.T. Int'l., Inc.

Trademark Trial and Appeal Board

Jan 29, 2004

No. 75578472 (T.T.A.B. Jan. 29, 2004)

Mailed: January 29, 2004
Paper No. 15
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re A.I.T. International, Inc.
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Serial No. 75578472
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Ezra Sutton, Esq. for A.I.T. International, Inc.
Scott Baldwin, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
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Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
A.I.T. International, Inc. has filed an application to
register the mark shown below on the Principal Register for
“telephones and answering machines.”1 The application
includes a disclaimer of TELECOM apart from the mark as a
whole.

1 Serial No. 75578472, in International Class 9, filed October 28, 1998,
based on an allegation of use in commerce, claiming first use as of
February 4, 1998, and use in commerce as of February 9, 1998.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75578472
2
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark SOUTHERN TELECOM, previously registered
for “telecommunication services, namely, telephone
communications and information services,”2 in International
Class 38, that, if used on or in connection with applicant’s
goods, it would be likely to cause confusion or mistake or
to deceive.3 The cited registration includes a disclaimer
of TELECOM apart from the mark as a whole.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re

2 Registration No. 2,350,484 issued May 16, 2000, to Southern Company.
3 A refusal to register under Section 2(d) of the Trademark Act, based
on two additional registrations owned by Southern Company, Nos.
2,140,827 and 2,176,397, was withdrawn in the final Office action of
August 8, 2002.
Serial No. 75578472
3
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
The Examining Attorney contends the word portions of
both marks are identical and the design element in
applicant’s mark does not obviate the similarity between the
marks; and that applicant’s goods and the services in the
cited registration are closely related. In support of his
position, he submitted copies of third-party registrations
wherein the same mark is registered in connection with both
telephones and telecommunication services.
Applicant does not argue that the marks are different.
Rather, applicant contends that registrant’s services are
directed to businesses, whereas applicant’s goods are
directed to consumers; that registrant is an power/utility
company whose “fiber optic networks allow transmission of
voice and data for telecommunications devices” {brief, pg.
Serial No. 75578472
4
4); that applicant’s business is entirely different because
“applicant imports various types of telephones and telephone
answering machines mainly to individual consumers at the
retail level.” (Brief, pg. 4.) Applicant submitted
printouts of pages allegedly from registrant’s website in
support of its position.
As the Examining Attorney states, and applicant does
not appear to dispute, applicant’s mark is substantially
similar in sound, appearance, connotation and overall
commercial impression to the mark in the cited registration.
There is no question that the word portion of applicant’s
mark is identical to the cited registered mark.
Although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). With respect to the design element in applicant’s
mark, when both words and a design comprise the mark, the
words are normally accorded greater weight because the words
are likely to make an impression upon purchasers that would
be remembered by them and would be used by them to request
the goods and/or services. In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Serial No. 75578472
5
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See
also: Giant Food, Inc. v. Nation’s Food Service, Inc., 710
F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). We find that
SOUTHERN TELECOM is the dominant portion of applicant’s mark
because the stylized script with larger initial capital
letters is not unique and the elliptical design running
through the words is relatively light and insignificant
relative to the words. Thus, we conclude that applicant’s
mark is substantially similar in commercial impression to
the cited registered mark.
Turning to consider the goods and services involved in
this case, we note that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods and/or services are related
Serial No. 75578472
6
in some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein.
Despite applicant’s arguments and evidence, we must, as
previously stated, consider the services as identified in
the cited registration. In this case, the services are very
broadly stated and encompass all telephone communications
and information services. The third-party registrations
submitted by the Examining Attorney show that the same mark
is registered for both registrant’s services and applicant’s
goods. Although third-party registrations which cover a
number of differing goods and/or services, and which are
based on use in commerce, are not evidence that the marks
shown therein are in use on a commercial scale or that the
public is familiar with them, such registrations
nevertheless have some probative value to the extent that
they may serve to suggest that such goods or services are of
a type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re
Serial No. 75578472
7
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). In
this case, we find that the identified goods and services
are sufficiently related that, if identified by
substantially similar marks, confusion as to source is
likely.
Regarding applicant’s argument that the goods and
services travel in different trade channels to different
customers, neither identification of goods or services is
limited as to channels of trade or classes of purchasers.
Thus, we must presume that the goods and services of the
applicant and opposer are sold in all of the normal channels
of trade to all of the usual purchasers for goods and
services of the type identified. See Canadian Imperial Bank
v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In other words, we conclude that the channels of
trade and class of purchasers of the parties’ goods and
services are the same, and in each instance may include both
individuals and businesses.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s mark
and registrant’s mark, their contemporaneous use on the
closely related goods and services involved in this case is
likely to cause confusion as to the source or sponsorship of
such goods and services.
Serial No. 75578472
8
Decision: The refusal under Section 2(d) of the Act is
affirmed.