Cardinal Logistics Management Corporation

Trademark Trial and Appeal Board

Feb 8, 2017

No. 86803643 (T.T.A.B. Feb. 8, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cardinal Logistics Management Corporation
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Serial No. 86803643
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Scott D. Woldow of Smith, Gambrell & Russell, LLP for Cardinal Logistics
Management Corporation.

Khanh M. Le, Trademark Examining Attorney, Law Office 116
(Christine Cooper, Managing Attorney).
_____

Before Bergsman, Greenbaum, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Cardinal Logistics Management Corporation (“Applicant”) has filed an application
for registration on the Principal Register of the mark set forth below: 1

1 Application Serial No. 86803643 was filed on October 29, 2015 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s bona fide intention to use the
mark in commerce. The colors red and black are claimed as a feature of the mark. No claim
is made to the exclusive right to use DELIVERY and LOGISTICS apart from the mark as
shown.
Serial No. 86803643

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Applicant seeks registration of the mark for the following services:
Supply chain management services; arranging for pickup,
delivery, storage and transportation of freight via ground
carriers; transportation logistic services, namely,
arranging the transportation of goods for others;
transportation and logistics services, namely, planning
and scheduling shipments for users of transportation
services; freight logistics management; transportation
logistics services, namely, arranging the transportation of
goods for others; transportation logistics services, namely,
planning and scheduling shipments for users of
transportation services; transportation management
services, namely, planning and coordinating
transportation of freight for others; inventory control;
inventory management; business management consulting
in the field of transportation logistics; business advisory
services in the field of transportation logistics; business
consulting services relating to product distribution,
operations management services, logistics, reverse
logistics, supply chain, and production systems and
distribution solutions; Business management services,
namely, managing logistics, reverse logistics, supply
chain services, supply chain visibility and
synchronization, supply and demand forecasting and
product distribution processes for others, in International
Class 35;
Delivery of goods; Supply chain logistics and reverse
logistics services, namely, transportation and delivery of
goods for others by truck; Supply chain logistics and
reverse logistics services, namely, transportation and
delivery of documents, packages, raw materials, and other
freight for others by truck; transportation consulting;
transportation information; transportation of goods;
arranging for pickup, delivery, storage and transportation
of freight via ground carriers; warehousing services;
warehousing services, namely, storage, distribution, pick-
up, and packing for shipment of documents, packages,
raw materials, and other freight for others, in
International Class 39.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
Serial No. 86803643

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in connection with Applicant’s services, so resembles the registered mark
CARDINAL (in standard characters) as to be likely to cause confusion, or to cause
mistake, or to deceive. The cited mark is registered for “Railroad transportation
services.”2 When the refusal was made final, Applicant appealed to this Board. The
case is fully briefed.
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 as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the
Examining Attorney have also presented evidence and arguments regarding trade
channels, customers, the number and nature of similar marks in use in the
marketplace, lack of actual confusion, and the need for consistent examination
practice.
(a) The services.
We will first consider the similarity or dissimilarity of the services as identified in
the application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787

2 Reg. No. 3138897, issued September 5, 2006; Section 8 affidavit accepted; renewed.
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(Fed. Cir. 1990). We need not consider whether each of Applicant’s identified
services is related to Registrant’s services; for purposes of a du Pont analysis, it is
sufficient if likelihood of confusion is found with respect to use of an applicant’s
mark in connection with any service in a particular International Class. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
2007).
Applicant argues that Registrant’s services differ greatly from those of
Applicant, inasmuch as they are limited to the transportation of passengers, while
Applicant’s services relate to the transportation of freight.3 This contention is
unavailing, as there is no limitation in the Registration’s identification of services
indicating a limitation to passenger transportation. In an ex parte proceeding we
are required to give “full sweep” to Registrant’s identified services. Paula Payne
Prods. Co. v. Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA
1973). Registrant’s services are presumed to encompass all services of the nature
and type identified in the registration. In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006).
Applicant’s services in Class 39 include “transportation of goods.” This very broad
identification includes within its scope Registrant’s identified “Railroad
transportation services.” Accordingly, with respect to Applicant’s services in Class
39, the services are identical.

3 Applicant’s brief at 8, 4 TTABVUE 9.
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In order to show that Applicant’s Class 35 services are related to Registrant’s
railroad transportation services, the Examining Attorney has submitted evidence
from the Internet showing that “supply chain management” and “transportation
logistics” services have been marketed under the same mark as railroad
transportation. Examples follow:
BRAND RELEVANT SERVICES
ADM “Supply Chain Management”; “We … help you optimize your
supply chain … Services include supply chain optimization,
design and planning, integration and consulting.” Also offering
“Rail Services” through a “railcar fleet [ ] containing over 26,000
railcars...4

CSX “Rail-based freight transportation …” “What benefits exist by
utilizing a warehouse or transload operator in your supply-chain
solution? … Transloading allows you to experience the benefits
of rail transportation without a rail siding at your door, or at the
door of your customer.”5

R&A Trucking “Rail Service. Our company’s rail services provide much more
than the average logistics company. … R&A Trucking is your
one-stop solution for managing your North American
Distribution network … R&A Trucking provides customers with
a complete logistics solution from import to exports to container
transloading to warehousing and distribution.”6

CN Rail transportation. “Supply Chain Solutions.” “[M]anagers in
rail, trucking, warehousing, distribution and supply chain
management.”7

MHF Services “[A]n integrated packaging, transportation and logistics provider
… provide transportation via rail, truck and marine … We also
maintain a national network of transload facilities to provide

4 Office Action of February 25, 2016 at 7-8.
5 Office Action of May 11, 2016 at 8-12.
6 Id. at 13-15.
7 Id. at 18-20.
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seamless transload services … all managed by the industry’s
most experienced transportation logistics professionals.”8

CHS “Transportation & Logistics. Trusted supply chain capabilities
… Our far-reaching transportation network gives you access to
international containers, trucks, rail cars, barges, deep-water
vessels, ports, terminal services and more. … We’re among the
top rail shippers overall and one of the largest agricultural users
of both the BNSF and Canadian Pacific lines.”9

DAMCO “[L]ogistics professionals … to meet all your inland
transportation needs. By rail, barge, or road …” “Supply chain
design & optimization.”10

SRT Trans-
portation
Solutions “[W]e specialize in transporting very large cargo by rail.”
“Dedicated Logistics Management. SRT Transportation
Solutions provides complete logistics management services …11

This evidence shows that some companies that offer rail transportation also offer,
under the same mark, the logistical services that are necessary to complete the
movement of freight from one place to another, such as warehousing the goods and
transporting them by other means of transportation. It also shows that logistics
companies that do not operate their own railcar fleets play an important role in
ultimately moving goods via rail. This fact is supported by Applicant’s own
identification of services, which shows that Applicant’s logistics services involve
“arranging for … transportation of freight via ground carriers” and “planning and
scheduling shipments for users of transportation services.” This evidence is

8 Office Action of February 25, 2016 at 9.
9 Id. at 11-13.
10 Office Action of May 11, 2016 at 24-26.
11 Id. at 29.
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sufficient to persuade us that railroad transportation services and logistical services
of the type identified by Applicant are commercially related, such that if they were
offered under similar marks, customers would believe that they could come from the
same source. Accordingly, the du Pont factor of the similarity or dissimilarity of the
services weighs in favor of a finding of likelihood of confusion.
(b) Trade channels.
Because Applicant’s services in Class 39 are identical to Registrant’s services, we
presume that the services travel through the same trade channels and are offered to
the same classes of customers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion). For the services in this class,
the du Pont factor of trade channels weighs in favor of a finding of likelihood of
confusion.
With respect to the trade channels for Applicant’s supply chain management and
logistics services, the record tells us little, other than that these services, like rail
transportation services, are advertised on the Internet. Applicant argues that “[t]he
registered mark resides in a trade channel where the targeted consumers are
clearly distinguished.”12 This argument provides no specificity; in any event, it
appears to depend on the contention that Registrant transports passengers and not

12 Applicant’s brief at 9, 4 TTABVUE 10.
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freight, which we have rejected. For the Class 35 services, we treat the du Pont
factor of trade channels as neutral.
(c) Sophistication of customers; conditions of sale.
Applicant points out that services related to the transportation of freight are
costly and their selection by customers would entail careful consideration and would
not be done on impulse.13 Applicant also contends that the customers are
sophisticated. This is likely true, given that the shipment of freight is a matter to
which the customers would give the degree of attention that they bring to their
business decisions.
We do not agree with Applicant’s argument that this degree of care would lead
customers to readily appreciate that Applicant is in the freight business and
Registrant is in the passenger business, thereby eliminating the possibility of
confusion. As we have explained, we must presume that Registrant also offers
freight service; the relevant question is whether confusion would be likely if both
Applicant and Registrant offer freight services under their marks.
We agree with Applicant that the sophistication of the relevant customers reduces
the likelihood of confusion. This du Pont factor weighs against a finding of
likelihood of confusion.
(d) The marks.
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay

13 Applicant’s brief at 9-10, 4 TTABVUE 10-11.
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Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (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).
The marks are similar in appearance, sound and meaning to the extent that each
includes the word CARDINAL. There are a number of differences between the two
marks: the words DEDICATED DELIVERY LOGISTICS, the stylization of the
wording, and the design and color elements in Applicant’s mark are points of
difference in appearance, sound, or meaning. However, the stylization of the
lettering in Applicant’s mark is very slight, and we bear in mind that Registrant’s
mark is in standard character form, such that it is not limited to any particular
form of display, Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983), and could be displayed in styles and colors resembling those of
Applicant’s mark.
With respect to the meanings of the marks, the impact of the words DEDICATED
DELIVERY LOGISTICS in Applicant’s mark must be considered, as they are
absent from the cited mark. Applicant admits that DELIVERY and LOGISTICS are
descriptive of its services;14 and, as was shown above, there is a commercial
relationship between the logistics of the delivery of freight and the rail

14 Applicant’s brief at 6, 4 TTABVUE 7.
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transportation business. Accordingly, customers are likely to perceive some
relationship between the meaning of DEDICATED DELIVERY LOGISTICS and the
services offered by Registrant. Thus, the meaning of these words does not create the
type of incongruity between the marks that might arise from more starkly
unrelated words.
The image of the red and black bird in flight in Applicant’s mark adds to the
meaning of the mark. Applicant admits that the bird depicted is a cardinal.15 As
such, it reinforces the idea that is conveyed by the word CARDINAL, an idea that is
inherent in both marks. Customers would find the design of a cardinal bird
congruent with both of the marks at issue; accordingly, the design does not have
strong distinguishing power in this case. We also generally give less weight to the
design elements of a mark than to its wording, because the wording would be used
by consumers to request the goods. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593,
1596 (TTAB 1999). 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).
Considering the marks in their entireties, we find that they create, overall,
similar commercial impressions. Applicant’s mark is clearly dominated by the word
CARDINAL, which is presented in the largest and boldest lettering and which is
reinforced by the depiction of a cardinal bird. When customers call for Applicant’s
services, they are likely to use the term CARDINAL, because that is the most

15 Applicant’s brief at 7, 4 TTABVUE 8.
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distinctive word element and because a recitation of all of the wording of the mark
would be impracticably lengthy. Overall, the word element CARDINAL in
Applicant’s mark is the element that is most likely to be recognized and
remembered by customers as the symbol of Applicant’s identity. This dominant
element of Applicant’s mark is identical to the cited registered mark. We find that
the overall commercial impressions created by the marks are sufficiently similar
that, if used in connection with similar services, customers would be likely to
perceive a connection between them. Accordingly, the du Pont factor of the
similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of
confusion.
(e) Similar marks in use.
Applicant contends that CARDINAL “is a relatively common term and relatively
common trademark”; and that “customers “have become accustomed to seeing the
trademark CARDINAL in association with various goods and services.”16 Applicant
has not presented any evidence to support this claim. On this record, we see no
reason to view the term CARDINAL as either inherently or commercially weak.
(f) Consistency of examination.
Applicant points out that it is the owner of Reg. No. 456332517 for the following
mark, which is registered for the very services that are recited in the present
application:

16 Applicant’s brief at 11, 4 TTABVUE 12.
17 Issued July 8, 2014. DELIVERY and LOGISTICS have been disclaimed. Color is not
claimed as a feature of the mark.
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Applicant argues that registration of the above mark was not opposed; there have
been “no adverse proceedings”; and that we should allow the present application
“for the sake of consistency.”18 Applicant’s earlier registration indicates that the
mark has been in use since 2001; and Applicant contends (without evidence) that
“[t]he registered marks have coexisted in the marketplace for approximately fifteen
years” and “[t]here have been no reported instances of actual confusion …”19
Refusing to register the mark now before us is obviously inconsistent with the
issuance of Applicant’s earlier registration. The marks are nearly identical, differing
in only inconsequential ways; and the identified services are identical. As the
Examining Attorney points out, a somewhat similar situation was addressed in In
re Strategic Partners Inc., 102 USPQ2d 1397 (TTAB 2012), under the rubric of the
thirteenth du Pont factor, “any other established fact probative of the effect of use.”
In Strategic Partners, an applicant had been refused registration under Section 2(d).
The applicant owned a registration that was over five years old for a mark and for
goods that were substantially similar to those set forth in the refused application.
The Board noted that, because the registration was over five years old, it was “not
subject to attack by the owner of the cited registration on a claim of priority and
likelihood of confusion.” 102 USPQ2d 1399.

18 Applicant’s brief at 12, 4 TTABVUE 13.
19 Id.
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In the case before us, we do not consider the issuance of Applicant’s earlier
registration to be a factor that weighs against a finding of likelihood of confusion.
The Examining Attorney’s refusal is a colorable one. Unlike the situation in
Strategic Partners, Applicant’s earlier registration was issued in 2014 and,
therefore, is still subject to cancellation. We do not know whether the cited
Registrant had knowledge of Applicant’s earlier application and, if so, why
Registrant chose not to oppose it. We also do not know whether Registrant is
considering instituting a cancellation proceeding against the earlier registration,
although we do know that the opportunity for instituting such a proceeding remains
open. While the issuance of the earlier registration is a fait accompli, issuance of yet
another similar registration would not be harmless; rather, if Registrant would
wish to cancel the earlier registration issuance of another would compound the
injury. Applicant’s contention that Registrant’s field of operations (passenger
transportation) is utterly separate from Applicant’s field (freight transportation) is
a colorable argument for finding that issuance of another registration would be
harmless; but we do not know whether that contention is true, and an ex parte
proceeding is not the appropriate forum for trying it. We also have no evidence
before us to demonstrate whether Applicant’s contention that the two marks have
been used over a long period of time without confusion is accurate. We do not
consider the issuance of the earlier registration to be “probative of the effect of use.”
Overall, this is not a case in which we should allow the issuance of the earlier
registration to affect our decision in the present appeal.
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(g) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The marks create
similar commercial impressions; Applicant’s services in Class 39 are identical to
those of Registrant and travel through the same channels of trade to the same
classes of customers; Applicant’s services in Class 35 are commercially closely
related to those of Registrant. Although the relevant customers are sophisticated
and careful, the marks are so similar that even a sophisticated customer could
mistake Applicant’s mark for a display of Registrant’s mark. Overall, we find that
Applicant’s mark, in the context of Applicant’s identified services, so resembles the
cited registered mark as to be likely to cause confusion or mistake or to deceive.
Decision: The refusal under Section 2(d) is affirmed.