Custom Teleconnect, Inc.

Trademark Trial and Appeal Board

Jun 9, 2004

No. 75835426 (T.T.A.B. Jun. 9, 2004)

Mailed:
June 9, 2004
Paper No. 22
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Custom Teleconnect, Inc.
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Serial No. 75835426
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Julie K. Morriss of Morriss O’Bryant Compagni, P.C. for
Custom Teleconnect, Inc.
Michael J. Souders, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
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Before Hanak, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On November 17, 1999, applicant filed the above-
captioned application, by which it seeks registration of
the mark depicted below for goods identified in the
application (as amended) as “telephone communication
services provided for the hospitality industry and payphone
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75835426
2
providers,” in Class 38.
The application is based on applicant’s asserted bona fide
intention to use the mark in commerce. Trademark Act
Section 1(b), 15 U.S.C. §1051(b). Applicant has disclaimed
the exclusive right to use CUSTOM, INC., PAYPHONE, CUSTOMER
SERVICE, and LONG DISTANCE apart from the mark as shown.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to applicant’s goods,
so resembles the mark depicted below,
Ser. No. 75835426
3
previously registered (with a disclaimer of LONG DISTANCE &
TELEPHONE SYSTEMS) for “long distance and related telephone
services” in Class 38,1 as to be likely to cause confusion,
to cause mistake, or to deceive. Trademark Act Section
2(d), 15 U.S.C. §1052(d). The appeal has been fully
briefed, but no oral hearing was requested. We reverse the
refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). 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).
We find that applicant’s services, as recited in the
application, are similar and related, indeed encompassed by
and legally identical to, the services recited in the cited
1 Registration No. 1325028, issued March 12, 1985. Affidavits
under Trademark Act Sections 8 and 15 accepted and acknowledged.
Ser. No. 75835426
4
registration. Applicant does not contend otherwise.
Moreover, because the recitation of services in the cited
registration is not limited as to trade channels or classes
of purchasers, we must presume that registrant’s services
are marketed in all normal trade channels and to all normal
classes of purchasers for such services, including to the
“hospitality industry” and “payphone providers” expressly
set forth in applicant’s recitation services. See In re
Elbaum, 211 USPQ 639 (TTAB 1981). These factors weigh in
favor of a finding likelihood of confusion.
However, we find that applicant’s mark and the cited
registered mark, when viewed in their entireties in terms
of appearance, sound, connotation and overall commercial
impression, are dissimilar rather than similar, and that
they indeed are sufficiently dissimilar that there is no
likelihood of confusion notwithstanding the fact that the
marks are or will be used in connection with legally
identical services.
The only significant point of similarity between the
marks is that they both contain the word TELECONNECT. (We
accord no significant weight to the fact that both marks
also include the generic, disclaimed words LONG DISTANCE.)
There is no evidence in the record to support applicant’s
contention, in its reply brief, that the word “teleconnect”
Ser. No. 75835426
5
has become part of the “lexicon” of the telecommunications
industry. However, we find that the word on its face is
highly suggestive as applied to telephone services,
connoting “telephone connection,” and that it therefore is
not a particularly strong source-indicator. Moreover, with
respect to the registered mark, we find that it is the
highly stylized manner in which the word TELECONNECT is
depicted (with the representation of the telephone cord
serving as the two “n” letters in the word), as much as the
word itself, that would be perceived to be the dominant
source-indicating feature of the commercial impression
created by the registered mark.
Likewise, the word TELECONNECT, as it appears in
applicant’s mark, is highly suggestive of applicant’s
services. We find that the dominant feature of applicant’s
mark clearly is the depiction, in very large letters, of
the letters CTI, which appear along with the distinctive
arrow-and-globe design inside the large triangle border.
Although the “T” would be understood, upon reflection, to
refer to the word TELECONNECT in applicant’s trade name as
it appears below the triangle border, we find that the word
TELECONNECT nonetheless plays a relatively minor role in
the overall commercial impression of applicant’s mark. It
is visually subordinate to the CTI logo portion of the
Ser. No. 75835426
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mark. Likewise in terms of sound, it is CTI which
dominates the pronunciation of the mark.
In short, we find that when the marks are viewed in
their entireties, the numerous and significant differences
between them outweigh the only point of similarity, i.e.,
the presence of the highly suggestive word TELECONNECT.
Both marks are highly (and differently) stylized, resulting
in quite different appearances and overall commercial
impressions. We further find that the dissimilarity of the
marks is sufficiently pronounced that purchaser confusion
is unlikely, even where the marks are used on identical
services. See, e.g., Kellogg Co. v. Pack’Em Enterprises
Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991).
Decision: The refusal to register is reversed.