BellSouth Intellectual Property Corporation

Trademark Trial and Appeal Board

Jun 12, 2007

No. 91164739 (T.T.A.B. Jun. 12, 2007)

Mailed: June 12, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

BellSouth Intellectual Property Corporation

v.

Engle, Richard
_____

Opposition No. 91164739
to application Serial No. 78338240
filed on 12/9/03
_____

Theodore H. Davis, Jr. of Kilpatrick Stockton LLP for
BellSouth Intellectual Property Corporation.

Timothy D. Beets of Beets & Yanda, PLLC for Richard Engle.
______

Before Quinn, Walsh and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On December 9, 2003, applicant, Richard Engle, filed an
application to register on the Principal Register the mark
displayed below, based upon an allegation of his use thereof
in commerce on or in connection with "telephone and business
directories," in International Class 16.1

1 Application Serial No. 78338240 alleges January 1, 2002 as the
date of first use of the mark anywhere and in commerce in
connection with the goods. Applicant disclaims the exclusive
right to use "AMERICA" and "YELLOW PAGES", and the representation
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91164739
2

Registration has been opposed by BellSouth Intellectual
Property Corporation ("opposer"). As grounds for
opposition, opposer asserts that it is the owner of numerous
marks, previously used and registered on the Principal
Register, including the following:
BELL
in typed or standard character form for, inter alia,
“telephone, classified and business directories,”2 in
International Class 16;

of the "walking fingers" apart from the mark as shown. In
addition, the application contains the following color statement:
The color gray appears in the representation of the Liberty Bell,
the color black appears in the word BELLWEST, the "walking
fingers" logo, the frame around the "walking fingers" logo, the
words YELLOW PAGES, and the outline of the Liberty Bell, the
color yellow appears in the background around the "walking
fingers" logo, the color white appears in the words PROCLAIM
LIBERTY, and the color red appears in the word AMERICA.

2 Concurrent Use Registration No. 1565562 issued on November 14,
1989. Section 8 affidavit accepted; Section 15 affidavit
acknowledged.

Opposition No. 91164739
3
for, inter alia, “telephone, classified and business
directories,”3 in International Class 16; and
BELLSOUTH
in typed or standard character form for, inter alia,
“telephone and business directories,”4 in International
Class 16.
Opposer argues that it and its predecessors in interest
have used its famous BELL and BELL-formative marks in
connection with the above listed goods since prior to
applicant’s asserted first use of his involved mark; that
applicant's mark, when used on applicant's goods so
resembles opposer's BELL and BELL-formative marks for its
recited goods as to be likely to cause confusion, to cause
mistake, and to deceive; that registration of applicant’s
involved mark further would dilute the distinctive quality
of opposer’s BELL marks; and that opposer will be damaged
thereby.
Applicant's answer consists of a general denial of the
allegations in the notice of opposition.
The record in this case consists of the pleadings and
the file of the involved application. During its assigned

3 Concurrent Use Registration No. 1569327 issued on December 5,
1989. Section 8 affidavit accepted; Section 15 affidavit
acknowledged. Renewed.

4 Registration No. 1459196 issued on September 29, 1987. Section
8 affidavit accepted; Section 15 affidavit acknowledged.

Opposition No. 91164739
4
testimony period, opposer filed a notice of reliance upon
the following: status and title copies of its pleaded
registrations; copies of court and World Intellectual
Property Organization (WIPO) decisions involving opposer and
third parties; applicant’s responses to certain of opposer’s
interrogatories; and the discovery depositions of Richard
Engle and Denise Engle, with accompanying exhibits. In
addition, opposer filed certain testimony depositions and
accompanying exhibits.
Applicant did not take testimony or offer any other
evidence during its assigned testimony period.
Opposer and applicant filed main briefs on the case and
opposer filed a reply brief.
Opposer’s Standing
Because opposer has properly made its pleaded
registrations of record, and further because opposer has
asserted a likelihood of confusion claim that is not wholly
without merit, we find that opposer has established its
standing to oppose registration of applicant’s mark. See
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).
Priority of Use
Moreover, because opposer’s pleaded registrations are
of record, Section 2(d) priority is not an issue in this
Opposition No. 91164739
5
case as to the BELL, bell design, and BELLSOUTH marks as
well as the goods and services covered thereby. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion 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 likelihood
of confusion issue, even those not specifically discussed in
this decision. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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 re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We will concentrate our discussion of the issue of
likelihood of confusion on that registration of opposer’s
which is closest to the mark and goods for which applicant
is seeking registration, namely, opposer’s concurrent use
registration for BELL in typed or standard character form
for “telephone, classified and business directories.”5

5 Concurrent Use Registration No. 1545199, supra.
Opposition No. 91164739
6
The Goods
Turning first to our consideration of the similarities
or dissimilarities between the parties’ goods, we note that
it is well established that the goods of the parties need
not be similar or competitive, or even offered through the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion
as to the source thereof. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
In this case, applicant’s "telephone and business
directories" are included among the goods identified in
opposer’s pleaded Concurrent Use Registration No. 1565562,
namely, “telephone, classified and business directories.”
Thus, applicant’s goods are identical in part to those of
Opposition No. 91164739
7
opposer. As a result, we are not persuaded by applicant’s
assertion that its goods are not competitive with the goods
and services of opposer. In view of the fact that applicant
is using its mark on goods that are identical to certain of
the goods identified in the cited registration, this du Pont
factor heavily favors opposer.
Channels of Trade
Because the parties’ goods are identical in part, and
because there are no recited restrictions as to the channels
of trade or classes of purchasers, we must assume that the
goods are available in all the normal channels of trade to
all the usual purchasers for such goods, and that the
channels of trade and the purchasers for applicant’s goods
include those of opposer. See Interstate Brands Corp. v.
McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). It is
settled that in making our determination regarding the
relatedness of the parties’ goods and/or services, we must
look to the goods and services as identified in the involved
application and pleaded registration. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion
that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods
set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s
Opposition No. 91164739
8
goods, the particular channels of trade or the class of
purchasers to which the sales of goods are directed.”) See
also Paula Payne Products v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”) Thus, this du Pont factor also favors opposer.
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s BELL mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, 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 that confusion as to the source of the goods
offered under the respective marks is likely to result.
Because the involved goods would be marketed to the general
public, our focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Nevertheless, it
is well settled that one feature of a mark may be more
Opposition No. 91164739
9
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, 751 (Fed.
Cir. 1985) [“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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”] For example, “that a particular feature is
descriptive or generic with respect to the involved goods or
services is one commonly accepted rationale for giving less
weight to a portion of a mark...” Id. at 751.
When considering applicant’s mark, we note that the
wording “AMERICA” and “YELLOW PAGES,” as well as the
“walking fingers” design have been disclaimed. The
disclaimed terms and design in applicant’s mark are
subordinate to the remaining, distinctive features thereof,
namely BELLWEST, the design of the Liberty Bell, and the
wording PROCLAIM LIBERTY.
In addition, the wording BELLWEST AMERICA and the
design of the Liberty Bell are by far the largest and most
visually prominent features of applicant’s mark. The
wording PROCLAIM LIBERTY is much less prominent, being
difficult to read and easy to overlook as it appears in
Opposition No. 91164739
10
small white letters on the upper portion of the light gray
Liberty Bell design. The wording YELLOW PAGES and the
“walking fingers” design, appearing in the lower right hand
corner of the mark, is even less prominent due to its very
small size. As a result, consumers viewing applicant’s mark
will be drawn immediately to the wording BELLWEST AMERICA
and the Liberty Bell design and will only notice the
remaining features of the mark upon closer inspection.
Thus, we find that BELLWEST AMERICA and the Liberty Bell
design are the most prominent features of applicant’s mark.
Further, it is settled that the literal portions are
generally the dominant and most significant features of
marks because consumers will call for the goods or services
in the marketplace by that portion. See In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); and In
re Drug Research Reports, Inc., 200 USPQ 554, 556 (TTAB
1978). For this reason, greater weight is often given to
the literal portions of marks in determining whether there
is a likelihood of confusion. See Id. Because consumers
are likely to call for applicant’s goods by the BELLWEST
AMERICA portion of his mark rather than by the Liberty Bell
design or one of the mark’s less prominent features, we find
that BELLWEST AMERICA is the dominant and most significant
feature of the applied-for mark.
Opposition No. 91164739
11
In comparing the parties’ marks, we note that
applicant’s mark incorporates in its entirety opposer’s BELL
mark. BELL is the first word of the phrase BELLWEST
AMERICA, which, as discussed above, is the dominant feature
of applicant’s mark. Consumers calling for applicant’s
goods are very likely to pronounce opposer’s BELL mark when
doing so. Because applicant’s mark contains opposer’s mark
as the first word of its most prominent feature, the marks
are highly similar in appearance and sound. Furthermore,
opposer’s mark is registered in typed or standard character
form and thus could be displayed in lettering similar, or
even identical, to the BELLWEST AMERICA portion of
applicant’s mark which is displayed in rather ordinary font.
See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
2015 (TTAB 1988); and Sunnen Products Co. v. Sunex
International Inc., 1 USPQ2d 1744, 1751 (TTAB 1987). In
addition, the relatively prominent Liberty Bell design in
applicant’s mark is essentially a pictorial representation
of opposer’s BELL mark. Thus, we find that the marks are
highly similar in overall connotation and convey very
similar commercial impressions.
Moreover, it is undisputed that the goods identified by
applicant's mark are included among the goods identified by
the mark in opposer’s Registration No. 1565562. Where the
Opposition No. 91164739
12
goods identified in the application are identical to the
goods identified in an existing registration, "the degree of
similarity necessary to support a conclusion of likely
confusion declines." Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). In addition, confusion is more likely
when, as here, an applicant's mark incorporates the entire
word portion of a previously registered mark. See, e.g., In
re Hyper Shoppes, Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988); and Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA 1977).
As a result, we find that when viewed as a whole, the
similarities between applicant’s mark and opposer’s BELL
mark as to sound, appearance, connotation and commercial
impression outweigh the dissimilarities.6 In view thereof,
this du Pont factor also favors opposer.
Summary
In view of the foregoing, we find that opposer has
established its standing to bring this proceeding; its
priority of use; and that a likelihood of confusion exists

6 While we have limited our discussion herein to a comparison of
applicant’s mark with opposer’s BELL mark, we note in addition
that the bell design in applicant’s mark is confusingly similar
to the bell design mark in opposer’s pleaded Registration No.
1569327 for, inter alia, “telephone, classified and business
directories” in International Class 16.

Opposition No. 91164739
13
between its BELL mark and applicant’s mark, as used in
connection with the parties’ identical goods.
DECISION: The opposition is sustained on the ground of
priority and likelihood of confusion, and registration to
applicant is refused.7

7 In view of our determination herein, we need not and do not
reach opposer’s dilution claim.