American Automobile Association, Inc.v.Pacific Delight Tours Inc.

Trademark Trial and Appeal Board

Nov 19, 2008

No. 92046794 (T.T.A.B. Nov. 19, 2008)

Mailed:
November 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

American Automobile Association, Inc.

v.

Pacific Delight Tours Inc.
_____

Cancellation No. 92046794
_____

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

William Honan and Carla Calcagno of Holland and Knight LLP
for Pacific Delight Tours Inc.
______

Before Holtzman, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On January 1, 2002, Registration No. 2525957 (“the ‘957
registration”) for the mark CHINA & ASIA TOURBOOK (in typed
form) issued on the Principal Register to Pacific Delight
Tours, Inc. (“respondent”) for “arranging and conducting
travel tours” in International Class 39, based on an
application filed on February 9, 2000. The ‘957
registration claims first use anywhere and first use in
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Cancellation No. 92046794
2
commerce in March 2000 and includes a disclaimer of CHINA &
ASIA. The Office accepted an affidavit under Section 8 of
the Trademark Act on April 10, 2008.
American Automobile Association, Inc. (“petitioner” or
"AAA") has filed a petition to cancel the ‘957 registration.
In the petition to cancel, petitioner pleaded ownership of
Registration No. 1073617 (the ‘617 registration) for the
mark (hereinafter “TOURBOOK”) for “books
published annually and from time to time describing, within
indicated state and regional areas, places of sightseeing
interest, and giving hotel, motel and restaurant ratings,
and providing related other information” in International
Class 16. Petitioner has alleged that it owns a trademark
application for TOURBOOK for “providing travel information
via an electronic communications network” and that its
trademark application has been refused registration in view
of respondent's registration. Additionally, petitioner has
alleged that its mark is famous; that it has used its mark
on a variety of goods and services in the United States;
that it has used the mark in connection with books
containing travel information since at least 1925; and that
respondent’s continued registration of its mark is likely to
cause confusion in violation of Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). Petitioner has also
Cancellation No. 92046794
3
alleged that respondent’s mark “dilutes the distinctive
quality of Petitioner's AAA [sic] marks in violation of
Section 43(c) of the Trademark Act (15 U.S.C. § 1125(c)).”1
Respondent has answered the petition to cancel by
denying the salient allegations thereof and raising several
affirmative defenses.
The record consists of the pleadings; the file of the
involved registration; and the February 26, 2008 testimonial
deposition of James G. Brehm and accompanying exhibits,
including a certified status and title copy of the ‘617
registration for the TOURBOOK mark. The ‘617 registration
issued on September 20, 1997, has been twice renewed and has
been registered under Section 2(f) of the Trademark Act, 15,
U.S.C. § 1052(f).
Petitioner has filed a main brief; respondent has not
filed any evidence or a main brief.
Background
Petitioner is composed of a federation of independent
motor clubs in the Untied States and Canada that provides a
variety of services to its members. Petitioner has annually
published TOURBOOK books since the 1920s. The books provide
travel information on points of interest, accommodations,

1 We consider the reference to “Petitioner’s AAA marks” to be a
typographical error and assume that petitioner intended to plead
that respondent’s mark dilutes the distinctive quality of
petitioner's TOURBOOK mark.

Cancellation No. 92046794
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restaurants and attractions for a particular geographic
region within the United States and Canada. Brehm dep. pp.
7 – 11. TOURBOOK guides are available in printed form and,
since 1998, in electronic form on petitioner's aaa.com
website. Id. at pp. 15 - 17. In printed form, the guides
are sold to the independent motor clubs at cost, and then
are distributed at no cost to members as part of their
membership benefits. Id. at p. 8.
Standing
Petitioner has submitted proof that it is the owner of
the ‘617 registration, and that the registration is valid
and subsisting. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). Additionally, petitioner has submitted proof,
that it is the owner of a trademark application for TOURBOOK
for “providing travel information via an electronic
communications network”; and that its trademark application
has been refused registration in view of respondent's
registration. Brehm ex. 11. Through its proofs, petitioner
has established its standing.
Priority
Because this is a cancellation proceeding, petitioner
does not necessarily have priority simply because it owns a
registration. Brewski Beer Co. v. Brewski Brothers, Inc.,
Cancellation No. 92046794
5
47 USPQ2d 1281, 1284 (TTAB 1998) (the “Board has taken the
position, in essence, that the registrations of each party
offset each other; that petitioner as a plaintiff must, in
the first instance, establish prior rights in the same or
similar mark …. Of course, petitioner or respondent may
rely on its registration for the limited purpose of proving
that its mark was in use as of the application filing
date.”). In this case, because respondent has not submitted
any evidence, the earliest date upon which it can rely is
the filing date of respondent's application which issued as
the ‘957 registration. Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154, 156
n. 5 (TTAB 1985) (“The earliest date of first use upon which
Intelsat can rely in the absence of testimony or evidence is
the filing date of its application.”). Inasmuch as
petitioner's underlying application for the pleaded ‘617
registration was filed prior to the February 9, 2000 filing
date of the CHINA & ASIA TOURBOOK application, petitioner
has priority in connection with its registered mark.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the 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 (CCPA 1973). See also, In re Majestic
Cancellation No. 92046794
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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 §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).
Because petitioner has asserted that its mark is
famous, we first consider the du Pont factor regarding the
fame of this mark. This factor plays a dominant role in
cases featuring a famous or strong mark. Kenner Parker Toys
Inc. v. Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992). Famous marks are accorded more
protection precisely because they are more likely to be
remembered and associated in the public mind than a weaker
mark. Id. at p. 1456. A famous mark is one “with extensive
public recognition and renown.” Id. See also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
In determining whether a mark is famous, we may
consider sales, advertising expenditures, and the length of
time the mark has been used. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811
Cancellation No. 92046794
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(TTAB 2005). This information, however, must be placed in
context (e.g., a comparison of advertising figures with
competitive products, market share, reputation of the
product, etc.). Bose, 63 USPQ2d at 1309.
Petitioner argues as follows, relying on Mr. Brehm’s
testimony:
Here, the TOURBOOK mark has been used by AAA since
1925 in connection with its travel guide books.
Tens of millions of books have been distributed
over the last five years to AAA’s 45 million
members in the United States. Extensive
advertising and promotion have resulted in the
TOURBOOK guides being a primary factor in causing
individuals to join AAA and in providing value in
an AAA membership. The growth of views of
TOURBOOK online travel information shows that the
fame of the TOURBOOK mark for guide books is being
translated to the TOURBOOK online information
services. In 2008, over 20 million views of the
information were made via the Internet.

Brief at p. 10.
We have carefully considered petitioner's evidence and
arguments and find that petitioner has not established that
its mark is famous.
First, the annual total advertising figures provided by
petitioner for 2003 to 2007 are not just for its TOURBOOK
publication, and there is no indication as to what
percentage of the totals stated are for advertising of the
TOURBOOK mark.
Second, petitioner's advertising figures do not appear
substantial, totaling $394,113 in 2003 and $688,675 in 2007,
and petitioner has not provided any context for these
Cancellation No. 92046794
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figures by, e.g., comparing such figures for competitive
products. See Bose, 63 USPQ2d at 1309.
Third, petitioner's reliance on the “Total Annual
TourBook Views [Online], 2003 – 2007,” Brehm’s dep. ex. 17,
is not persuasive. It is unclear whether the “Views” of
exhibit 17,2 numbering approximately eleven million to
twenty-three million per year, depending on the year, are
for all webpages within the online version of TOURBOOK. If
“Views” includes all TOURBOOK webpages, it is unclear how
many of such webpages there are within the online version of
TOURBOOK and whether the viewer will recognize that he or
she is on a TOURBOOK webpage (the record contains only a
handful of TOURBOOK webpages).
Fourth, petitioner has submitted statistics for 2004 –
2006 regarding the number of “AAA TOURBOOK[S] … shipped in
bulk quantities to American Automobile Association Club
offices in the United States and Canada for redistribution
to AAA members on request.” Brehm dep. pp. 27 – 18, and
ex. 16. The numbers distributed to the Club offices are
sizable, numbering around twenty million for each year.
However, they do not identify the number of books actually
distributed to consumers and, in particular, to consumers in
the United States. Also, alone, they are not probative of

2 Exhibit 17 includes the following explanation: “TourBook View
totals include lodging, restaurants, campgrounds, attractions,
events, destination and visitor information.”
Cancellation No. 92046794
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the alleged fame of petitioner's mark TOURBOOK apart from
other marks such as “AAA” which appear in close association
with TOURBOOK on petitioner's books, see Brehm’s ex. 3.
Fifth, petitioner relies on Mr. Brehm’s testimony that
petitioner conducted surveys in 2005 and 2007 which
indicated that petitioner's members consider petitioner's
TOUBOOK guides second to emergency road service as the most
valuable resource provided by petitioner. Mr. Brehm’s
testimony is of limited probative value because the survey
and its results are not in the record. Moreover, his
testimony is hearsay.
Because the evidence of record regarding fame is not
persuasive, we find that petitioner has not established that
its mark is famous.
We now consider the similarity or dissimilarity of
petitioner's and respondent’s marks. We determine whether
the marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports, 73 USPQ2d at 1692.
Respondent's mark CHINA & ASIA TOURBOOK, contains the
term TOURBOOK and the merely descriptive terms CHINA & ASIA,
which identify the location of respondent’s tours.
Additionally, respondent has disclaimed CHINA & ASIA.
Descriptive matter is often “less significant in creating
the mark’s commercial impression.” In re Code Consultants,
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). See also Quaker
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State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296,
172 USPQ 361, 363 (CCPA 1972).
The Federal Circuit has recognized that there is
nothing improper in giving more weight, for rational
reasons, to a particular portion or feature of a mark. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). The Court has also stated that “the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham, 55 USPQ2d at 1846, quoting, National Data Corp.,
224 USPQ at 752.
We therefore find that the dominant portion of
respondent’s mark is the term TOURBOOK, which is identical
to petitioner's pleaded registered mark. Both marks suggest
a book for touring, with respondent’s mark specifying the
geographic content. As such, the marks are similar in
meaning and commercial impression. They are also similar in
sound and appearance in view of the shared term TOURBOOK.
See Palm Bay Imports, supra. See also, e.g., In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997)
(likelihood of confusion with addition of the words “The”
and “Café” and a diamond-shaped design to registrant's DELTA
mark); and In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (if
“the dominant portion of both marks is the same, then
confusion may be likely notwithstanding peripheral
Cancellation No. 92046794
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differences.”) Further, any differences due to the
additional wording in respondent's marks are outweighed by
the similarity due to the shared term TOURBOOOK. The du
Pont factor regarding the similarity of the marks is
therefore resolved against respondent.
Next, we turn to the du Pont factor regarding the
similarity or dissimilarity and nature of the goods and/or
services. Such goods and services are similar if they are
related in some manner. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991). Consumers of respondent’s travel tour
services would consult guide books such as those of
petitioner in connection with their travels to locate
hotels, places of interest, etc. A consumer would likely
use respondent’s travel tour services and petitioner's guide
books, concerning the same geographic areas, at the same
time. Because there is a relationship between petitioner's
books and respondent’s tour services, we conclude that the
du Pont factor regarding the similarity of the goods and
services favors a finding of likelihood of confusion. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986 (CCPA 1981) (likelihood of confusion must
be found if there is a likelihood of confusion with respect
to any item that comes within the identification of goods or
services in the application or registration).
Cancellation No. 92046794
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Considering and balancing all of the evidence as it
pertains to the relevant du Pont factors discussed above, we
conclude that a likelihood of confusion exists.
Respondent's mark is sufficiently similar to petitioner's
registered mark that use of the respective marks on
respondent’s related services is likely to lead to confusion
as to source, sponsorship or affiliation.
In view of our finding that there is a likelihood of
confusion between petitioner's registered mark and
respondent’s mark, we need not reach petitioner's pleaded
claim of dilution.
DECISION: The petition to cancel Registration
No. 2525957 is granted.