All-Ways Forwarding Int’l Inc.

Trademark Trial and Appeal Board

Oct 31, 2013

No. 85554445 (T.T.A.B. Oct. 31, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
October 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re All-Ways Forwarding Int’l Inc.
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Serial No. 85554445
Serial No. 85555607
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Dara L. Onofrio of Onofrio Law for All-Ways Forwarding Int’l Inc.

Kathy de Jonge, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
_____

Before Bucher, Bergsman and Gorowitz, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
All-Ways Forwarding Int’l Inc. (“applicant”) filed use-based applications for
the marks ALL-WAYS, in standard character form (Serial No. 85554445), and ALL-
WAYS FORWARDING INT’L INC. and design, shown below (Serial No. 85555607).1

1 Applicant disclaimed the exclusive right to use the term “Forwarding Int’l Inc.”
Serial No. 85554445
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Both applications are for the following services as amended:
Air freight shipping services; Airline and shipping
services; Freight forwarding; Freight loading services;
Global transportation of freight for others by all available
means; Supply chain logistics and reverse logistics
services, namely, storage, transportation and delivery of
documents, packages, raw materials, and other freight for
others by air, rail, ship or truck; Warehousing services,
namely, storage, distribution, pick-up, packing, and
shipping of gourmet food and spirits, fresh fruits and
vegetables, garments, textiles and other general
merchandise, in Class 39.
The Trademark Examining Attorney refused to register the marks in
applicant’s applications on the ground that they so resemble the previously-
registered mark ALL WAYS MOVING & STORAGE, in standard character form,
for “moving company services,” in Class 39, as to be likely to cause confusion.2
Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d).
When, as here, applicant has filed ex parte appeals to the Board in two
copending applications, and the cases involve common issues of law or fact, the
Board, upon request by the applicant or examining attorney or upon its own
initiative, may order the consolidation of the appeals for purposes of briefing, oral
hearing, and/or final decision. TBMP § 1214 (June 2013). See also, e.g., In re
Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two
appeals); In re Country Music Association, Inc., 100 USPQ2d 1824, 1827 (TTAB
2011) (same); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997) (Board
sua sponte considered appeals in five applications together and rendered single

2 Registration No. 4015760, registered August 23, 2011. Registrant disclaimed the
exclusive right to use the term “Moving & Storage.”
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opinion). Accordingly, the Board consolidates these appeals. References to the
record refer to Application Serial No. 85554445 unless otherwise indicated.
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”).
A. The similarity or dissimilarity of the marks in terms of appearance, sound,
connotation and commercial impression.

We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In
comparing the marks, we are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression so
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that confusion as to the source of the goods or services offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992).
1. ALL-WAYS, in standard character form v. ALL WAYS MOVING &
STORAGE.

Applicant’s mark ALL-WAYS is very similar to the registered mark ALL
WAYS MOVING & STORAGE. The term “ALL WAYS” is the dominant element of
registrant’s mark because the term “MOVING & STORAGE” is merely descriptive
when used in connection with moving company services.3 It is well-settled that
disclaimed, descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ at 752
(“Regarding descriptive terms, this court has noted that the descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed.

3 Because the similarity or dissimilarity of the marks is determined based on the marks in
their entireties, the analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on the entire marks, not just part
of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”).
On the other hand, there is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re National Data
Corp., 224 USPQ at 751.
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Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
The significance of the term “ALL WAYS” as the dominant element of
registrant’s mark is further reinforced by its location as the first part of the mark.
See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“[I]t is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). See also Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to
appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word).
Finally, consumers are likely to shorten ALL WAYS MOVING & STORAGE
to ALL WAYS. “[U]sers of language have a universal habit of shortening full names
– from haste or laziness or just economy of words. Examples are: automobile to
auto; telephone to phone; necktie to tie; gasoline service station to gas station.” In
re Abcor Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J.
Rich, concurring).
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to
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Sears alone), Ward’s for Montgomery Ward’s, and
Bloomies for Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
Applicant’s use of a hyphen in its mark ALL-WAYS does not serve to
distinguish the marks. Goodyear Tire & Rubber Company v. Dayco Corporation,
201 USPQ 485, 489 n.4 (TTAB 1978) (“Fast-Finder” with hyphen is in legal
contemplation substantially identical to “Fastfinder” without hyphen). See
also Winn’s Stores, Incorporated v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979)
(little if any trademark significance can be attributed to apostrophe and letter “s” in
opposer’s mark “Winn’s” when compared with applicant’s mark “Win-Way”).
The marks ALL-WAYS and ALL WAYS MOVING & STORAGE have the
same meaning and engender the same commercial impression. The word “All”
means, inter alia, “every” and the word “Ways” means “manner, mode, or fashion”
or “a direction or vicinity.”4 Thus, the marks mean and engender the commercial
impression by all routes or methods. In other words, applicant and registrant are
using their marks to convey to consumers that they will do whatever it takes to get
the job done.
In view of the foregoing, we find that applicant’s mark ALL-WAYS and
registrant’s mark ALL WAYS MOVING & STORAGE are similar in terms of
appearance, sound, connotation and commercial impression.

4 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), pp.
54 and 2151 (2nd ed. 1987). The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
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2. ALL-WAYS FORWARDING INT’L INC. and design v. ALL WAYS
MOVING & STORAGE.

The term “ALL-WAYS” is the dominant element of applicant’s mark ALL-
WAYS FORWARDING INT’L INC. and design for the same reasons that the term
“ALL WAYS” is the dominant element of registrant’s mark, as discussed above.
Moreover, the term ALL-WAYS is in larger type-font, which reinforces its dominant
position. In addition, where a mark consists of words and a design, the words are
normally given greater weight because they would be used by consumers to request
the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999);
In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed.
Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ
390 (Fed. Cir. 1983).
As discussed above, the marks ALL-WAYS FORWARDING INT’L INC. and
design and ALL WAYS MOVING & STORAGE have the same meaning and
engender the same commercial impression: by all routes or methods. Consumers
encountering both marks are likely to believe that ALL-WAYS FORWARDING
INT’L and ALL WAYS MOVING & STORAGE are different divisions of the same
company.
In view of the foregoing, we find that applicant’s mark ALL-WAYS
FORWARDING INT’L INC. and design and ALL WAYS MOVING & STORAGE are
similar in terms of appearance, sound, meaning and commercial impression.
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B. The similarity or dissimilarity and nature of the services described in the
application and registration.

To show that the services in the applications and the cited registration are
related, the Trademark Examining Attorney submitted numerous use-based, third-
party registrations for services listed in both the applications and registration at
issue. Third-party registrations which individually cover a number of different
services that are based on use in commerce may have some probative value to the
extent that they serve to suggest that the listed services are of a type which may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988). The registrations listed below are representative.5
MARK REG. NO. SERVICES

3820943 Moving company services; freight
forwarding of goods of others by truck
and ship
Get out of the box and
on with your life
3900752 Moving company services; warehousing
services

3940354 Moving company services; delivery and
storage of goods; supply chain logistics
and reverse logistics services;
transportation of goods for others by air,
rail, ship or truck

4154769 Moving company services; storage and
delivery of goods; supply chain logistics
and reverse logistic services

4015105 Moving company services; delivery of
goods, transportation and storage of
goods

5 We have not included the entire recitation of services for each of the registrations. Only
the relevant services in both applicant’s applications and the cited registration are listed.
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Also, the Trademark Examining Attorney submitted excerpts from three
websites showing companies advertising the services identified in both the
applications and the cited registration.
1. Ford Storage & Moving Company (fordstorage.com). Ford Storage &
Moving Company “offer[s] our customers public warehousing in Omaha NE., supply
chain distribution, 3PL, document storage, freight transportation, and relocation
services.” It also assists its customers with local and long distance relocations as an
agent for “three (3) dominant carriers in the [moving] industry including Allied Van
Lines, North American Van Lines & Specialized Transportation.”
2. Desert Moving Co. (dmcmoving.com). Desert Moving Co. advertises its
household moving services, office or business moving services, warehousing services
and global freight services.
3. White Glove Storage & Delivery (whitegloveusa.com). White Glove
Storage & Delivery advertises its moving company and warehousing services.
Applicant contends that the services of applicant and registrant are not
related, in part because applicant is “one of the largest regional customs brokers in
the New York metro area” using its mark since at least as early as 1982 while
registrant is located in Pennsylvania, outside of the New York metropolitan area
and using its mark since only 1990.6 To the extent that applicant is arguing that it
has priority of use, a claim of priority is not relevant in an ex parte appeal. In re
Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971).

6 Applicant’s Brief, p. 7.
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Applicant’s argument regarding the remote geographic trading areas of
applicant and registrant is not germane. The registrant has a geographically
unrestricted registration and applicant seeks a geographically unrestricted
registration. The owner of a registration enjoys the presumption of the exclusive
right to use its mark throughout the entire United States. Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b). See also Giant Food, Inc. v. Nation’s
Foodservice, Inc., 218 USPQ at 393.
The evidence demonstrates that moving company services are also rendered
by the same companies that provide freight forwarding, shipping and warehousing
services. Accordingly, we find that applicant’s services are related to moving
company services.
C. Likely-to-continue channels of trade and classes of consumers.
The channels of trade factor is concerned with whether the same classes of
consumers are exposed to the marks under circumstances likely to give rise to the
mistaken belief that the services emanate from the same source. See e.g., Jeanne-
Marc Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 61 (TTAB 1984) (whether the
goods will be encountered by the same purchasers); Quadrex Corp. v. Inficon
Leybold-Heraeus, Inc., 228 USPQ 300, 302 (TTAB 1985) (it is not necessary that the
products be competitive or used together; likelihood of confusion may be found
where the goods (or services) may be “encountered by the same consumers under
circumstances that could, because of the marks involved, give rise to a mistaken
belief that they originate from, or are in some way associated with the same, albeit
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anonymous, producer.”). The Internet websites discussed above show that
individuals using a moving company may also need warehousing and other “freight
forwarding” services and that companies regularly using warehousing and freight
forwarding services also need moving company services. Ford Moving & Storage
specifically advertises that “we continue to operate a quality-based agency providing
packing, moving & high value shipping services.” Desert Moving Co. promotes its
“consumer” moving services, its “corporate” moving and relocation services, its
“storage” services, and its “global freight services” together. A company that may be
relocating its headquarters could engage Desert Moving Co. or Ford Moving &
Storage to relocate its employees. Thus, the same consumers could encounter
moving company, warehousing and freight forwarding services.
In view of the foregoing, we find that the channels of trade and classes of
consumers are the same.
D. Third-party registrations incorporating the term “ALL WAYS.”
In its brief, applicant set forth a table of 14 third-party registrations
incorporating the term ALL WAYS and submitted copies of those registrations with
its reply brief. Applicant argues that these registrations “illustrate the terms as
applied to the respective goods or services are distinguishable from each other and
support the registration of the pending application.”7
The Trademark Examining Attorney objected to applicant’s introduction of
the third-party registrations as being untimely because they were introduced for the

7 Applicant’s Brief, p. 10.
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first time in applicant’s brief. We agree. See Trademark Rule 2.142(d) (“The record
in the application should be complete prior to the filing of an appeal.”).
Moreover, applicant provided only a list of the registrations in itsbrief. “[I]f
applicants or examining attorneys would like to rely on third-party registrations for
support of their position, they must submit a copy of the registrations. Simply
providing a list of registrations is not sufficient.” In re Promo Link, 78 USPQ2d
1301, 1304 (TTAB 2006); TMBP § 1208.02; TMEP § 710.03. Applicant’s attempt to
remedy the situation by filing copies of the registrations with its reply brief fails
because such filing is untimely.
However, even if we considered the third-party registrations, they have little,
if any, probative value because none of the services in the registrations isrelated to
the services at issue in the appeals before us. In re Thor Tech Inc., 90 USPQ2d
1634, 1639 (TTAB 2009) (the third-party registrations are of limited probative value
because the goods identified in the registrations appear to be in fields which are far
removed from the goods at issue). See also Key Chemicals, Inc. v. Kelite Chemicals
Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972) (“Nor is our conclusion
altered by the presence in the record of about 40 third-party registrations which
embody the word ’KEY’. The great majority of those registered marks are for goods
unrelated to those in issue, and there is no evidence that they are in continued use.
We, therefore, can give them but little weight in the circumstances present here”).
Finally, the third-party registrations introduced by applicant are not
evidence that those marks have been used at all, let alone used so extensively that
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consumers have become sufficiently conditioned by their usage that they can
distinguish between such marks on the bases of minute differences. The probative
value of third-party trademarks depends entirely upon their usage. See e.g.,
Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d
Cir. 1976) (“The significance of third-party trademarks depends wholly upon their
usage. Defendant introduced no evidence that these trademarks were actually used
by third parties, that they were well promoted or that they were recognized by
consumers.”). As the Court pointed out in Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376
F.2d 324, 153 USPQ 406, 407 (C.C.P.A. 1967), “the existence of these registrations
is not evidence of what happens in the market place or that customers are familiar
with their use.” Where, as here, the “record includes no evidence about the extent
of [third-party] uses … [t]he probative value of this evidence is thus minimal.” See
also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not
be given any weight”).
E. No reported instances of actual confusion.
Applicant argues that “in the 23 years that both companies have been using
their respective marks there has been no actual consumer confusion between them,
thus supporting that there is no likelihood of confusion.”8 The contemporaneous use
of applicant’s and registrant’s marks without actual confusion is entitled to little
weight in an ex parte context. See In re Majestic Distilling Co., Inc., 65 USPQ2d at

8 Applicant’s Brief, p. 9.
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1205 (“uncorroborated statements of no known instances of actual confusion are of
little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177
USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s
corporate president’s unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there was no likelihood of
confusion); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438
(CCPA 1965). In any event, the record is devoid of probative evidence relating to
the extent of use of applicant’s and registrant’s marks and, thus, whether there
have been meaningful opportunities for instances of actual confusion to have
occurred in the marketplace. See Cunningham v. Laser Golf Corp., 55 USPQ2d at
1847; and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Accordingly, the du Pont factor of the length of time during and conditions under
which there has been contemporaneous use without evidence of actual confusion is
considered neutral.
F. Balancing the factors.
Because the marks are similar, the services are related and the channels of
trade and classes of consumers may overlap, we find that applicant’s use of the
marks ALL-WAYS and ALL-WAYS FORWARDING INT’L INC. and design for the
services listed in the applications, and the registered mark ALL WAYS MOVING &
STORAGE for “moving company services,” is likely to cause confusion.
Decision: The refusals to register are affirmed.