American Airlines, Inc.v.United Service Ass’n. for Healthcare

Trademark Trial and Appeal Board

May 15, 1997

OPP (T.T.A.B. May. 15, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB May 15, 1997
Hearing: Paper No. 49
January 30, 1996 EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
American Airlines, Inc.
v.
United Service Association for Healthcare
_____
Opposition No. 89,866
to application Serial No. 74/252,938
filed on March 5, 1992
_____
Herbert J. Hammond of Thompson & Knight for American
Airlines, Inc.
Carla J. Dolce of Dolce & Thomas, LLP for United Service
Association for Healthcare
______
Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
American Airlines, Inc. has opposed the application of
United Service Association for Healthcare to register
BENEFITS ADVANTAGE as a service mark for "arranging group
discounts on airfare, hotels and motels, child care, grocery
coupon programs, preferred shopping services, long distance
Opposition No. 89,866
2
telephone services, maintenance medications, vision care,
mortgage acceleration programs and movie passes."1 Opposer
has alleged, in its amended notice of opposition,2 that it
is the user and registrant of the mark AAdvantage and design
for "providing a program of bonus flights for frequent
travelers" and the mark AAdvantage Gold and design for
"transportation of passengers by air with door-to-door
service"; that since 1981 it has used these marks in
connection with bonus awards programs, namely airline
frequent flyer programs; that consumers (AAdvantage members)
who participate in opposer's AAdvantage program are credited
points (AAdvantage miles) for free or discounted airline
tickets, or discounts on goods and services offered by other
companies associated with opposer's AAdvantage program; that
opposer licenses its AAdvantage and design mark to companies
for use in promoting their products and services, including
hotel and resort services, car rental, credit card and
banking services, and telephone services; that opposer has
used its AAdvantage and design mark long prior to
applicant's alleged first use of BENEFITS ADVANTAGE; that
applicant's BENEFITS ADVANTAGE mark is confusingly similar
to opposer's AAdvantage and design and AAdvantage GOLD and
design marks and registrations therefor; and that the

1 Application Serial 74/252,938, filed March 5, 1992.
2 Opposer's motion to amend its notice of opposition to include
a pleading of likelihood of confusion with its registered mark
AAdvantage GOLD and design was granted on September 16, 1994.
Opposition No. 89,866
3
registration and use by applicant of BENEFITS ADVANTAGE in
connection with its identified services is likely to cause
confusion, deception and mistake.
Applicant has denied the salient allegations of the
notice of opposition.
The record includes the pleadings; the file of the
opposed application; the testimony, with exhibits, of
opposer's witness Bruce Chemel, applicant's witness Sara
Earnest,3 and rebuttal testimony depositions of Annette
Espey and Linda Novak.4 In addition, the parties have
stipulated that the affidavit with accompanying exhibits of
William E. Harless are admissible evidence of the truth of
what is asserted in therein.
Opposer has also filed, under a notice of reliance,5
applicant's answers to opposer's interrogatories; the

3 Opposer has objected to certain portions of Ms. Earnest's
testimony. These objections will be discussed in those portions
of our opinion relating to that testimony.
4 It is noted that the parties have designated certain
testimony and exhibits as "confidential," but that these
materials have not all been filed under seal. In particular,
certain of the exhibits bear a "confidential" stamp, but have
been submitted in binders along with non-confidential exhibits.
In addition, during the testimony deposition of Sara Earnest a
portion of the testimony was stated to be confidential, and that
portion was, in fact, separately bound and filed under seal.
However, that same portion was also bound with non-confidential
testimony, which was not submitted under seal. The parties are
allowed thirty days from the date of this decision to separate
out any materials which are confidential, failing which the
Board will treat as confidential only those papers which were
properly filed under seal.
5 With its notice of reliance, opposer submitted copies of
certain documents, characterizing them as printed publications.
However, many of these documents appear to be brochures and
flyers promoting applicant's services, and are not considered
printed publications as that term is defined in Trademark Rule
Opposition No. 89,866
4
discovery deposition, with exhibits, of Sara Earnest; and
status and title copies of the following registrations owned
by opposer:
providing a program of bonus
flights for frequent
travelers6
transportation of passengers
by air with door-to-door
service7
transportation of passengers
by air; namely, providing a
program of bonus flights for
frequent travellers8
Applicant has submitted, under a notice of reliance,
copies of certain third-party registrations, all of which
are for marks which include the word ADVANTAGE or its

2.122(e), e.g., books and periodicals available to the general
public in libraries or of general circulation among members of
the public. Moreover, opposer has failed to properly identify
the documents in its notice of reliance by indicating the source
and the date of the publication, and the general relevance of
the material being offered. Accordingly, those documents
identified only by Bates numbers, and not otherwise made of
record such as by making them exhibits to discovery or testimony
depositions, have not been considered. We would add that even
if these materials had been considered, they would not have
changed our decision in this case.
Opposer also submitted a copy of its application for
AAdvantage DIAL-IN for "remote access system for checking
account balance through automated voice response system."
Although opposer subsequently indicated that this application
issued to registration, a status and title copy of the
registration was never submitted. Accordingly, the registration
for this mark is not of record.
6 Registration No. 1,228,737, issued February 22, 1983; Section
8 affidavit accepted; Section 15 affidavit filed.
7 Registration No. 1,269,455, issued March 6, 1984; Section 8
affidavit accepted; Section 15 affidavit filed.
8 Registration No. 1,788,496, issued August 17, 1993.
Opposition No. 89,866
5
foreign equivalent; the file of opposer's registration for
AAdvantage and design; opposer's answers to applicant's
interrogatories and requests for admission, and opposer's
"American Way" magazine.9
The parties have fully briefed the case, and were
represented at an oral hearing before the Board.
Opposer began using the mark AAdvantage and design10 in
1981 for a program to reward frequent flyers of its airline.
Under this program, passengers earn credits based on the
miles flown on American Airlines, and when they reach
certain amounts, they can redeem these "miles" for free
flights. Opposer obtained a registration for AAdvantage and
design for this program in 1983, and subsequently obtained
the other registrations which it has made of record.
Opposer has also used AAdvantage (without the eagle design)
as a mark for its services, and has used this term to
identify many of the aspects of its program.11 For example,

9 To the extent the "printed publications" submitted by
applicant under its notice of reliance do not qualify as printed
publications under Trademark Rule 2.122(e), and have not
otherwise been made of record, they have not been considered.
See footnote 4, supra. Further, even if they had been
considered, they would not have changed our decision herein.
10 Normally we would use an all-capital-letter format to
indicate a trademark. However, in this case opposer depicts its
mark with two capital A's at the beginning of the word, with the
rest of the word in lower case. In order to try to create the
same visual impact, we have done the same.
11 Opposer uses the AAdvantage mark both with and without the
small eagle design. Normally, both depictions are used in the
same promotional pieces, although occasionally in some
materials, such as letters, only the word mark (without the
design) will be shown. Because these depictions are used
interchangeably, unless we otherwise specify a particular
depiction, we will refer to both depictions as AAdvantage.
Opposition No. 89,866
6
people who are enrolled in the program are called AAdvantage
members, and they earn AAdvantage miles. AAdvantage Gold is
also used as a mark to identify that portion of opposer's
program which services passengers who accrue 25,000 miles
per year, while AAdvantage Platinum identifies that part of
the program for those who accrue 50,000 or more miles each
year.
Through the years the AAdvantage program has grown. In
addition to the miles obtained by flying on opposer's
airline, AAdvantage members can earn AAdvantage miles in a
variety of ways. Opposer now has a number of AAdvantage
partners to whom it licenses use of its AAdvantage mark, and
who will credit an AAdvantage member with miles for staying
with a particular hotel chain, using a particular car rental
service or even flying on an airline other than opposer's.
AAdvantage members can also obtain AAdvantage miles by using
a particular bank's credit card or using a particular long-
distance carrier for telephone service. The awards for
which AAdvantage miles can be redeemed have also grown
through the years. In addition to free flights and class of
service upgrades on opposer's airline, AAdvantage members
can get free flights on opposer's travel partners, including
Singapore Airlines, Cathay Pacific and Reno Air. They are
also able to get discounts on hotels and car rentals.
Opposer promotes its AAdvantage marks in a variety of
ways. They are mentioned by opposer's reservations agents
to telephone callers, and in-flight audio or video
Opposition No. 89,866
7
announcements are made about the AAdvantage program on
opposer's flights. Applications for membership in the
program are distributed at airports and on flights. Opposer
also advertises the AAdvantage program in major daily
newspapers and national magazines, and promotes it in radio
interviews. The partners in opposer's AAdvantage program
also promote the fact that consumers can earn AAdvantage
miles by purchasing their particular goods or services.
Opposer also engages in significant promotion of its
AAdvantage marks in newsletters and other advertising which
it sends to its active members many times a year (the number
of issues a particular member receives will depend on such
factors as his level of activity and place of residence).
Although the parties have stipulated that the actual figures
relating to the number of participants in the AAdvantage
program, the amount spent on promoting the program, and the
revenue received from the program remain confidential, we
can say that AAdvantage members number in the millions, and
that promotional expenditures and revenue are very
substantial.
Applicant is a nonprofit corporation which provides
benefits packages to employees of small businesses and
others who do not have access to corporate benefit programs.
Its discount packages are offered as part of a membership in
one of applicant's membership groups. In March or April of
1992 applicant started marketing such a package under the
mark BENEFITS ADVANTAGE to members of its USA+ group. The
Opposition No. 89,866
8
benefits available under this package include discounts on
air fares, which are obtained in the form of cash rebates
when one makes travel arrangements by calling an 800 number
for a particular travel agency; a 50% discount on hotels,
including those in the Sheraton, Hilton and Marriott chains;
cash rebates on rental cars; as well as savings on such
consumer goods and services as movie tickets, child care,
prescription medication, eyeglasses, an auto club, and a
mortgage equity acceleration program.
Applicant markets its BENEFITS ADVANTAGE package to,
inter alia, corporations, which can use the program to
supplement employees' benefits packages.12 While some
corporations pay for the BENEFITS ADVANTAGE package, in the
vast majority of cases it is the individual employee who
pays for the package, generally through monthly payments.
There is no issue as to opposer's priority in view of
opposer's registrations for AAdvantage and design,
AAdvantage GOLD and design and AAdvantage PLATINUM and
design13 which it has made of record.14 King Candy Co. v.

12 Our discussion of the marketing and advertising of the
BENEFITS ADVANTAGE package is limited because much of this
evidence has been marked confidential.
13 Although opposer did not make reference to this registration
in its pleading, it submitted a status and title copy of it
under notice of reliance, identified it as one of opposer's
marks in the interrogatories it served on applicant, and
elicited testimony about it. Accordingly, we deem the pleadings
to be amended under FRCP 15(b) to include a ground of likelihood
of confusion with respect to this mark.
14 While opposer has referred in its brief to its registration
for AAdvantage Extra, a status and title copy of this
registration was never submitted, nor did Bruce Chemel, who
identified a "soft copy" of the registration during his
Opposition No. 89,866
9
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Moreover, opposer has shown prior use of
various AAdvantage marks, including AAdvantage, AAdvantage
miles, AAdvantage Gold and AAdvantage Platinum.
This brings us to the issue of likelihood of confusion.
We find that, because of the similar commercial impressions
of opposer's and applicant's marks, and the close
relationship between opposer's services and those identified
in applicant's application, applicant's use of its mark for
such services is likely to cause confusion.
With respect to the parties' services, we recognize
that there are differences between the programs as they are
offered by the parties under their respective marks.
Specifically, opposer's program allows the consumer to earn
"miles," which can then be redeemed for various rewards in
the nature of free or discounted airfares (the discount
being in the nature of an upgrade from the class of service
which is purchased) or free or discounted hotel and rental
car services, while applicant's program is offered as part
of a membership plan, and provides a discount off the
regular price of various goods or services. And, although
both opposer's and applicant's services are marketed to the
general public, there are specific differences in the
parties' marketing methods.

testimony, testify as to the registration's current status and
title. Therefore, this registration is not of record.
Opposition No. 89,866
10
However, the question of likelihood of confusion must
be determined not on the basis of evidence adduced as to the
nature and character of an applicant's goods or services,
but on the basis of a comparison of the goods or services
set forth in the applicant's application vis-à-vis the goods
or services recited in the opposer's pleaded registration
and/or with which opposer has shown prior use of its mark.
Hecon Corp. v. Magnetic Video Corp., 199 USPQ 502 (TTAB
1978); see also Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In this case, applicant's identified services, and
in particular the identified "arranging group discounts on
airfare, hotels and motels" are very similar to the services
rendered by opposer under its AAdvantage, AAdvantage GOLD
and AAdvantage Platinum marks.
Moreover, opposer's and applicant's services are
offered to the same class of consumers, and in particular
are marketed to those consumers who fly for business or
pleasure. In fact, opposer has submitted persuasive
evidence that there has been an actual overlap in those who
are members of opposer's AAdvantage program and those who
are members of applicant's BENEFITS ADVANTAGE program.
Because of the very large number of people who participate
in opposer's AAdvantage program, and the widespread
promotion of opposer's AAdvantage marks, many of the
consumers to whom applicant's BENEFITS ADVANTAGE services
Opposition No. 89,866
11
are marketed will be aware of opposer's services marketed
under the AAdvantage marks.
With respect to the marks, again we recognize that
there are specific differences between opposer's AAdvantage
marks and applicant's BENEFITS ADVANTAGE mark. However, the
dominant commercial impression of both opposer's marks and
applicant's mark is the word ADVANTAGE. The bird design
separates the initial two A's in opposer's mark, such that
the impression conveyed is of the word ADVANTAGE, rather
than a foreign or coined word which begins with the letters
"AA." Similarly, when the AAdvantage marks appear without
the bird design, applicant depicts the initial "A" in a
different color from the word "ADVANTAGE." Even when the
word AAdvantage appears in text without the bird design,
consumers will perceive the term as "Advantage" because of
opposer's practice of using AAdvantage with the bird design
at least once in virtually all its materials. While we
recognize that the initial capital A's and the bird design
in opposer's marks, which are themselves a logo for American
Airlines' services, are designed to reinforce the connection
between the AAdvantage program and American Airlines, we do
not think this detracts from the impression that opposer's
marks essentially are the word "Advantage." Thus, in both
appearance and connotation, opposer's marks are the
equivalent of the word "Advantage." 15 Moreover, when

15 We recognize that certain of opposer's marks include the
additional word Gold or Platinum. However, these additional
Opposition No. 89,866
12
opposer's marks are spoken, such as in radio promotions,
in-flight announcements and by telephone reservations
agents,16 AAdvantage is identical in pronunciation to
"Advantage."
As for applicant's mark, the term BENEFITS is
descriptive of applicant's services, (i.e., the group
discounts are benefits) and would be given less origin-
indicating importance by consumers. Significantly,
applicant has indicated by its own actions that ADVANTAGE is
the dominant element in its mark. When applicant issued the
membership cards for its program, it did not have room to
display the entire mark BENEFITS ADVANTAGE, and therefore
used the word ADVANTAGE alone.17
It is well-established that, in articulating reasons
for reaching a conclusion on the issue of likelihood of

elements, with their laudatory connotations, do not change the
essential commercial impression of the marks.
16 In its brief applicant argues that Mr. Chemel's testimony
does not show that reservation and travel agents promote
opposer's AAdvantage marks. We disagree. Mr. Chemel responded,
"Oh, yes, we do" to the question "Do you also promote the
AAdvantage mark and AAdvantage program through call-in
information, when customers call in to American Airlines?"
Further, he testified that "our reservation agents and travel
agents input AAdvantage numbers" and disseminate a great deal of
AAdvantage information." We think it appropriate to conclude
from this testimony that the agents make reference to the
AAdvantage mark. In any event, such evidence is not necessary
to our decision. A videotape, which opposer made of record as
part of Mr. Chemel's testimony, shows that opposer promotes the
AAdvantage mark aurally through in-flight announcements.
17 Applicant subsequently removed the reference to ADVANTAGE
per se from its cards because of opposer's objections;
nonetheless, the fact that applicant chose to depict just the
ADVANTAGE portion of its mark on the cards is instructive as to
applicant's own perceptions of its mark.
Opposition No. 89,866
13
confusion, 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 that the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
While consumers may well note that BENEFITS ADVANTAGE
has the additional word BENEFITS, they are likely to believe
that opposer has adopted this mark as a variant of its
AAdvantage marks in order to identify another of opposer's
travel services, rather than recognize that BENEFITS
ADVANTAGE identifies services coming from applicant.
In reaching our conclusion that confusion is likely, we
have considered the evidence of third-party registrations
and third-party uses of ADVANTAGE marks submitted by
applicant. Third-party registrations are not evidence of
use of the marks shown therein, nor are they proof that
consumers are familiar with the marks. Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993). They may, however, be relied on to show that a
word common to each has a readily understood and well-known
meaning and that it has been adopted by third parties to
express that meaning. Ritz Hotel Ltd. v. Ritz Closet Seat
Corp., 17 USPQ2d 1467 (TTAB 1990). In this case, they show
that ADVANTAGE has a suggestive connotation indicating a
Opposition No. 89,866
14
"benefit or profit" or "a factor favorable or conducive to
success."18
However, whatever weakness opposer's AAdvantage marks
may have had due to the suggestiveness of "Advantage" has
long been overcome by opposer's extensive use and
advertising of these marks. Given the length of this use,
the number of people who are enrolled in the AAdvantage
program, and the exposure of the public to these marks
through in-flight announcements and advertising by both
opposer and its AAdvantage program partners,19 we consider
opposer's AAdvantage marks to be strong and well-known.
With respect to third-party use, we recognize that
evidence of widespread and significant use by third parties
of marks containing elements in common with the mark being
opposed can serve to demonstrate that confusion is not
likely to occur. This is because the presence in marks of
common elements extensively used by others, unrelated as to
source, may cause purchasers not to rely upon such elements

18 The American Heritage Dictionary, new coll. ed., © 1975.
The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd. 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
19 Applicant has attempted to minimize opposer's extensive
promotion of its AAdvantage marks by pointing out that most of
its advertising and advertising expenditures are directed to
members of opposer's AAdvantage program. While that may be
true, AAdvantage program members cannot be considered a limited
number of people, such as those who might be members of a
private club. Rather, because so many millions of people are
enrolled in the AAdvantage program they are, in effect, the
public at large, and therefore we find the AAdvantage marks to
have been widely and extensively promoted throughout the United
States.
Opposition No. 89,866
15
as source indicators, but to look to other elements as a
means of distinguishing the source of the goods and/or
services. Hilson Research Inc. v. Society for Human
Resource Management, supra.
In this case, however, the evidence provided by
applicant, through the testimony of Ms. Earnest, is not
sufficient to show that the public has had such widespread
exposure. For the most part, her testimony is only that she
has heard of certain ADVANTAGE marks, but she has not
provided any information as to the length or extent of their
use, such that we can ascertain their impact on the public.
For example, she testified that she saw the mark INFORMATION
ADVANTAGE on a cable TV "spot," but she did not know the
products or services with which this mark is used. She also
submitted, in connection with her testimony, brochures which
included the terms and/or marks QUALITY ADVANTAGE, TRAVELERS
ADVANTAGE and SHOPPERS ADVANTAGE,20 and testified that she
had called the "800 number" to "visit with the inbound
telemarketing operator" about the programs. This evidence
is of limited probative value, as there is no information
about the extent of the use or promotion of these marks, nor
is there any admissible information about the services.
Other testimony relating to third-party use includes the

20 Opposer has objected to these exhibits, and the testimony
relating thereto, as hearsay. Insofar as applicant has sought
to use the statements made in those brochures as evidence of
their truth, we agree that this is hearsay. However, the
exhibits are admissible as evidence of the existence of the
brochures.
Opposition No. 89,866
16
mark ADVANTAGE PROGRAM, which is used for a debit card for
vending machines for students at Miami Dade Junior College.
Again, it would appear that there is very limited use of
this mark. Moreover, the mark is for services which are in
a different category from those of opposer and applicant.
Finally, the fact that there is no evidence of actual
confusion does not persuade us to find that confusion is not
likely. Evidence of actual confusion is not a prerequisite
for finding likelihood of confusion. Moreover, it is well-
recognized that evidence of actual confusion is notoriously
difficult to obtain. Given this, as well as the limited
number of applicant's customers and the limited time in
which applicant has used its mark, the lack of evidence of
actual confusion does not show that confusion is not likely
to occur.
Thus, when all the relevant duPont factors are
considered, including the similarity of the identified
services, the commercial impressions of the marks, the
strength and renown of opposer's mark, and the lack of
sophistication of consumers of opposer's and applicant's
services, we find that applicant's use of BENEFITS ADVANTAGE
for, in particular, "arranging group discounts on airfare,
hotels and motels" is likely to cause confusion with respect
to the travel discount and other services provided by
opposer under its various AAdvantage marks.
Decision: The opposition is sustained.
Opposition No. 89,866
17
R. F. Cissel
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board