American Automobile Association, Inc.v.AAA Aero Auto Transport, Inc.

Trademark Trial and Appeal Board

Apr 17, 2018

No. 91224616 (T.T.A.B. Apr. 17, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 17, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

American Automobile Association, Inc.
v.
AAA Aero Auto Transport, Inc.

Opposition No. 91224616
_____

Lawrence E. Laubscher Jr., of Laubscher Spendlove & Laubscher,
for American Automobile Association, Inc.

AAA Aero Auto Transport Inc., pro se.

_____

Before Kuhlke, Kuczma and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

AAA Aero Auto Transport Inc. (Applicant) filed an application to register the
mark AAA AERO AUTO TRANSPORT INC (in standard characters) for
Trucking services, namely, hauling of vehicles, both locally
and across country, in International Class 39.1

1 Application Serial No. 86685158 was filed on April 30, 2015, based upon Applicant’s alleged
first use and first use in commerce at least as early as July 10, 2009 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a). AUTO TRANSPORT INC has been disclaimed.

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American Automobile Association, Inc. (Opposer) opposed the application on the
ground of a likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). Opposer alleges ownership of a number of registrations for marks including
the designation AAA2 and common law rights in the mark AAA for “arranging for
discount purchases and emergency road service including towing of vehicles.” Notice
of Opposition ¶4, 1 TTABVUE 4.
Applicant filed an answer, admitting the allegations in paragraph numbers 1, 3-
5, and 7. Answer, 4 TTABVUE. All other allegations were denied. Applicant also
submitted four defenses, which it referred to as “affirmative defenses.” None of the
allegations constitutes an affirmative defense. Further, Applicant did not pursue
these purported defenses. Accordingly, the four defenses have not been considered.
Opposer filed a brief. Applicant neither took testimony nor filed a brief.
I. The Record.
The record includes the pleadings, and by operation of Trademark Rule
2.122(b), 37 CFR § 2.122(b), the application file of the opposed application. In
addition, Opposer introduced the following evidence:
1. Testimony Declaration of James G. Brehm, General Counsel of Opposer and
exhibits thereto (Brehm Dec.) -15 TTABVUE.

2 Opposer attempted to introduce its registrations into the record with the testimony
declaration of James G. Brehm. However, the documents were incomplete and did not include
a list of goods and services.
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II. Background.
Opposer is “a federation of independent automobile clubs located throughout the
United States and Canada.” Brehm Dec. ¶ 3, 15 TTABVUE 5. Opposer has been using
the mark AAA since 1902 and, through its clubs, it provides a “wide variety of goods
and services to its members including but not limited to, emergency road service,
travel agency services, insurance and information regarding vehicle purchasing,
ownership, maintenance and repair.” Id., ¶¶7-8, 15 TTABVUE 5-6.
Opposer’s trademarks and service marks are used by its affiliated independent
automobile clubs under license from Opposer. Id., ¶14, 15 TTABVUE 8. “All of the
independent automobile clubs affiliated with AAA3 provide towing services or have
contracts with businesses that agree to provide towing services to AAA members.”
Id., ¶16, 15 TTABVUE 8.
Opposer negotiates to provide discounted goods and services to its members,
including “admission to theme parks and other entertainment venues, rental cars
and trucks, hotel stays, vacation packages, purchases including eyewear, computers,
clothing and restaurant purchases.” Id., ¶12, 15 TTABVUE 7. Among the discounts
offered are discounted assistance with automobile transport services. Id., ¶17, 15
TTABVUE 8. For example, Opposer’s clubs in Alabama, California, Texas, northern
New England, the Carolinas, Minneapolis, Washington, the Pioneer Valley and
Oregon have a relationship with a relocation services company, Consumer Relocation

3 Opposer refers to itself by its tradename, “AAA.”
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Services, to provide the discounted automobile transport services. Id., ¶¶17 -18, 15
TTABVUE 8 and 113-122.
As shown below, both Opposer and Consumer Relocation Services promote these
discounts:

Id., ¶18 and Exhibit 57 thereto, 15 TTABVUE 8 and 119.

Id., ¶18 and Exhibit 60 thereto, 15 TTABVUE 8 and 122.
The opposed application covers “trucking services, namely, hauling of vehicles,
both locally and across country.” The application was filed on April 30, 2015 and
Applicant claims use dating back to at least as early as July 10, 2009.
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III. Standing.
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Since Opposer cannot rely on any of its registrations, to establish standing,
Opposer must rely on its common law use. As discussed above, Opposer has
established, by testimonial declaration and accompanying exhibits, that it has been
using the mark AAA since 1902 and that it, through its clubs, provides a “wide variety
of goods and services to its members including but not limited to, emergency road
service, travel agency services, insurance and information regarding vehicle
purchasing, ownership, maintenance and repair.” Brehm Dec. ¶¶7-8, 15 TTABVUE
5-6. These facts establish that Opposer has a real interest in the proceeding and a
reasonable basis for its belief of damage, and are sufficient to establish Opposer’s
standing in this proceeding. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842 (Fed. Cir. 2000); Kistner Concrete Products, Inc. v. Contech Arch
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Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011); Giersch v. Scripps Networks
Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).
IV. Priority.
Applicant has conceded priority. In its response to the notice of opposition,
Applicant admitted that “Applicant’s use and filing dates are well after Opposer’s
date of first use of its AAA mark.” Applicant’s Answer to Notice of Opposition ¶8, 4
TTABVUE 2.
V. Likelihood of Confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973);
see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In considering the evidence
of record on these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
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A. Similarity of the marks.
We start our analysis with a determination of the similarity of the marks. In
comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Moreover, the emphasis
must be on the recollection of the average purchaser who normally retains a general,
rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644,
1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975)). The average purchaser of Opposer’s services are “motor vehicle owners
and operators who are members of the general population.” Brehm Dec. ¶5, 15
TTABVUE 5. A subset of these purchasers, motor vehicle owners and operators who
are moving and need to have their cars moved are the purchasers of Applicant’s
services.
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties … 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
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the ultimate conclusion rests on a consideration of the marks in their entireties.” In
re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In this case, Applicant has adopted the Registrant’s entire mark AAA combining
it with the subordinate phrase, “AUTO TRANSPORT INC” which is descriptive and
disclaimed. AERO is highly suggestive.
Applicant cannot avoid likelihood of confusion by adopting Registrant’s entire
mark and adding subordinate matter thereto. See Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983); see also Hewlett-
Packard Co. v. Packard Press Inc., 62 USPQ2d 1001, 1003 (Fed. Circ. 2002); In re
Jump Designs LLC, 80 USPQ2d 1370, 1375 (TTAB 2006). The commercial
impressions conveyed by the marks at issue are similar. The primary impression in
both marks is AAA, and Applicant’s mark merely adds a description of the services it
offers. Further, Opposer also uses its AAA mark in connection with other subordinate
matter. Id., ¶¶ 10-11, 15 TTABVUE 6-7. For example, Opposer uses the following
marks in connection with its services: AAA APROVED AUTO REPAIR, AAA AUTO
GUIDE, AAA GIFT CARD, AAA TOTAL REPAIR CARE, AAA ACCIDENT ASSIST
and AAA EXCLUSIVE VACATIONS. Id.
Based on our analysis, we find that the marks AAA and AAA AERO AUTO
TRANSPORT INC are similar and that the first du Pont factor favors a finding of
likelihood of confusion.
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B. Similarity of goods and services.
Next we evaluate the similarity between Opposer’s services and Applicant’s
services. Our evaluation is based on the services identified in the opposed application,
“trucking services, namely, hauling of vehicles, both locally and across country”
(Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d
1001) and the services for which Opposer has established use of the AAA “emergency
road service, travel agency services, insurance and information regarding vehicle
purchasing, ownership, maintenance and repair.” Id., ¶¶7-8, 15 TTABVUE 5-6. In
addition, Opposer provides access to discounted goods and services to its members,
including “admission to theme parks and other entertainment venues, rental cars
and trucks, hotel stays, vacation packages, purchases including eyewear, computers,
clothing and restaurant purchases.” Id., ¶12, 15 TTABVUE 7. Opposer has
established that its AAA mark is used in connection with these discounted services.
For example, Opposer issues discount directories, which list available discounts
offered in connection with Opposer’s AAA mark. The following depictions are of the
cover of the Spring 2017 AAA Member Discount Directory:

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Id., ¶13 and Exhibit 48 thereto, 15 TTABVUE 7-8, 97; and an advertisement for

AAA prescription savings, which is included therein.

Id., at 108.

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As discussed above, among the discounts offered are discounted assistance with
automobile transport services. Id., ¶17, 15 TTABVUE 8. The discounted automobile
transport services offered in connection with Opposer’s AAA mark encompass
Applicant’s trucking services consisting of hauling of vehicles, both locally and across
country. Further, Opposer’s clubs also provide emergency road services in connection
with the AAA mark, which include the towing or hauling of vehicles. Id., ¶¶7-8, 15
TTABVUE 5-6.
The services need not be identical or even competitive to find a likelihood of
confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective services need only be “related in
some manner and/or if the circumstances surrounding their marketing [be] such that
they could give rise to the mistaken belief that [the services] emanate from the same
source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)).
Consumers familiar with Opposer’s emergency road towing services and the
discounted services offered in connection with the AAA mark are likely to believe
there is a relationship between Opposer’s services and Applicant’s trucking services
offered under the mark AAA AERO AUTO TRANSPORT INC. Based on the
foregoing, we find that the second du Pont factor favors a finding of likelihood of
confusion.
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C. Conclusion.
Having considered all the evidence and arguments submitted by Opposer on the
relevant du Pont factors, whether discussed or not, we conclude that there is a
likelihood of confusion between Applicant’s mark AAA AERO AUTO TRANSPORT
INC for “trucking services, namely, hauling of vehicles, both locally and across
country” and Opposer’s AAA mark as used in connection with a “wide variety of []
services to its members including but not limited to, emergency road service, travel
agency services, insurance and information regarding vehicle purchasing, ownership,
maintenance and repair;” and offering of discounted goods and services.
Decision: The opposition is sustained.