DeLorme Publishing Co., Inc.v.The Buxton Co.

Trademark Trial and Appeal Board

Apr 10, 2002

No. 91119522 (T.T.A.B. Apr. 10, 2002)

4/10/02

Paper No. 9
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

DeLorme Publishing Company, Inc.
v.
The Buxton Company
_____

Opposition No. 119,522
to application Serial No. 75/557,809
filed on September 22, 1998
_____

Gordon H.S. Scott of Eaton Peabody for DeLorme Publishing
Company, Inc.

Geoffrey A. Mantooth of Decker Jones McMackin et al. for
The Buxton Company.
______

Before Hohein, Bucher and Bottorff, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

The Buxton Company, applicant herein, seeks
registration on the Principal Register of the mark MAPS
TO GO (in typed form) for “maps” in Class 16 and for
“market research services in the field of geographic
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 119,522
2
information” in Class 35.1 Applicant has disclaimed MAPS
apart from the mark as shown.
DeLorme Publishing Company, Inc., opposer herein,
filed a timely notice of opposition to registration of
applicant’s mark. As grounds for opposition, opposer
alleged that it is the owner of a registration of the
mark MAP’N’GO for

computer programs for retrieval and display of
geographic data and related commercial,
demographic, educational, natural resource,
historical, travel and recreation information,
and for production of route and trip
directions, together with pre-recorded compact
discs featuring a database containing the
foregoing information, instructions and a
printed atlas, all licensed and distributed as
a unit

in Class 9,2 that it has used its MAP’N’GO mark on such
goods since July 1994, a date prior to applicant’s date

1 Serial No. 75/557,809, filed September 22, 1998 based on
applicant’s alleged bona fide intent to use the mark, Trademark
Act Section 1(b).

2 Registration No. 1,930,309, issued October 24, 1995. Opposer
did not properly make its pleaded registration of record in this
case. A plain photocopy of the registration (not status and
title copies, as required by Trademark Rule 2.122(d)(1)) was
attached as an exhibit to the notice of opposition. Another
plain photocopy of the registration was introduced as an exhibit
to the testimony deposition of opposer’s witness Thomas Jensen,
who testified (at page 10) that opposer is “the present owner”
of the registration. Also, at page 16 of the April 16, 2001
deposition, the following exchange appears: “Q. This is the –
this is the sixth year since registration. Does DeLorme intend
to file a Section 8 affidavit for the Map – to refresh the
Opposition No. 119,522
3
of first of use of applicant’s mark, that applicant’s
mark, as applied to applicant’s identified goods and
services, is likely to cause confusion, to cause mistake,
or to deceive, and that it therefore is unregistrable
under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant filed an answer by which it denied the
allegations of the notice of opposition which are
essential to opposer’s claim.
Opposer submitted the testimony deposition of its
Vice-President of Legal and Contracts, Thomas E. Jensen,
with attached exhibits. Applicant submitted no testimony
or any other evidence. Opposer filed a brief on the
case, but applicant did not. We sustain the opposition.
Mr. Jensen’s testimony establishes that opposer has
used the mark MAP’N’GO continuously since July 1994.
(Jensen depo. at 8, 12.) His testimony as to the nature
of opposer’s goods includes the following:

Map’n’Go registration? A. Yes, it does.” Although this
testimony is sufficient to establish opposer’s present title to
the registration, it does not establish the current status of
the registration or that the registration is currently
subsisting. Opposer accordingly may not rely on its pleaded
registration in this proceeding. See, e.g., Cadence Industries
Corp. v. Kerr, 225 USPQ 331, 332 n.2 (TTAB 1985); Alcan Aluminum
Corporation v. Alcar Metals Inc., 200 USPQ 742, 744 n.5 (TTAB
1978). As discussed infra, however, opposer has presented
testimony establishing its prior use of its mark on goods
essentially the same as those identified in its registration.

Opposition No. 119,522
4
Q. Describe the products on which the mark
was first used.
A. Map’n’Go is a computer mapping program
consisting of computer software that – that
offers a map engine to allow you to store,
retrieve, manipulate, and view geographic and
related information.
...
Q. Now, can Map’n’Go print out maps?
A. Yes, it can print out a number and
variety of maps. It can print out individual
maps of a location at various levels of
resolution and detail. It can also print out a
series of maps, showing your entire route
between two points.
...
Q. And give me a general description, if
you will, of the product of which Map’n’Go
continues to be used as a trademark?
A. Well, it’s very much like my
description of the early version of Map’n’Go.
We’ve made improvements over the years.
Principally, or notably, we’ve added more
information than we had in the original version.
...
Q. Now, does the present Map’n’Go product
have the ability to print maps?
A. Yes, it does, both maps of a single
location or maps of a trip, a route.
...
Q. What medium is the Map’n’Go product
distributed on?
A. From the beginning it’s been
distributed on CD-ROM. There were a couple of
versions on which we also offered it on DVD-ROM.

(Jensen depo. at 7-8, 10-12.)
Mr. Jensen further testified that opposer’s sales of
the Map’n’Go product have totaled over seventeen million
dollars from 1994 through 2001. (Jensen depo. at 13-15,
and Exhibit 2.) Opposer’s trade channels for the product
include retailers such as Best Buy, Office Depot, Office
Opposition No. 119,522
5
Max and Staples; distribution via opposer’s own Web site;
and marketing of new versions of the product to current
customers via direct mail or e-mail. (Jensen depo. at
15.)
Based on the evidence discussed above concerning
opposer’s use of the mark MAP’N’GO on its CD-ROM map
product, we find that opposer has a real interest in the
outcome of this proceeding and a reasonable basis for its
belief of damage, and that it therefore has established
its standing to bring this proceeding. Trademark Act
Section 13; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
We further find, based on the evidence discussed
above, that opposer has used its mark on its CD-ROM map
product continuously since July 1994. Applicant
presented no evidence as to its date of first use of its
mark, and therefore is limited to its application filing
date, September 22, 1998, for purposes of determining
priority. See, e.g., Lone Star Manufacturing Co., Inc.
v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA
1974); Levi Strauss & Co v. R. Josephs Sportswear Inc.,
28 USPQ2d 1464 (TTAB 1993); and Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 17115 (TTAB 1991). We
Opposition No. 119,522
6
conclude that opposer has established its priority for
purposes of its Section 2(d) ground of opposition.
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).
First, we turn to a determination of whether
applicant’s mark and opposer’s mark, when compared in
their entireties in terms of appearance, sound and
connotation, are similar or dissimilar in their overall
commercial impressions. The test 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.
Opposition No. 119,522
7
The focus is on the recollection of the average
purchaser, who normally retains a general rather an a
specific impression of trademarks. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We find that applicant’s mark MAPS TO GO is similar
to opposer’s mark MAP’N’GO, when the two marks are
compared in their entireties in terms of appearance,
sound, connotation and overall commercial impression.
The marks look and sound alike in that they both begin
with the word MAP and end with the word GO, and both
consist of three short syllables. The marks have very
similar connotations. Although there are slight
differences between the marks when they are compared
side-by-side, we find that the marks are highly similar
in overall commercial impression, and that confusion is
likely to result if these marks were to be used on or in
connection with related goods or services.
We turn now to a comparison of the parties’ goods
and services. It is not necessary that the respective
goods or services be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods or services are
related in some manner, or that the circumstances
surrounding their marketing are such, that they would be
Opposition No. 119,522
8
likely to be encountered by the same persons in
situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate
from or are in some way associated with the same source
or that there is an association or connection between the
sources of the respective goods or services. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
The evidence of record establishes that opposer uses
its MAP’N’GO mark on a computer software product,
presented in a CD-ROM format, that allows the user “to
store, retrieve, manipulate, and view geographic and
related information” as well as to print out “individual
maps of a location at various levels of resolution and
detail.” The evidence also establishes that opposer’s
product is sold through normal retail channels to
ordinary consumers and other travelers.
Applicant’s goods and services, as identified in the
application, are “maps” in Class 16 and “market research
services in the field of geographic information” in Class
35. Because no further limitations or restrictions are
set forth in the identification of goods and services, we
Opposition No. 119,522
9
must presume that applicant’s Class 16 “maps” encompass
all types of printed maps which are marketed to all
normal classes of purchasers for such products. We
likewise must presume that applicant’s Class 35 “market
research services in the field of geographic information”
likewise encompass all manner of such services and that
they are marketed to all normal classes of purchasers for
such services. See In re Elbaum, 211 USPQ 639 (TTAB
1981).
Based on these presumptions and on the evidence of
record, we find that opposer’s goods and applicant’s
goods and services are closely related. Opposer’s CD-ROM
map software can be used to generate printed maps; to
that extent, opposer’s software and applicant’s “maps”
are complementary and/or competitive products. Likewise,
opposer’s mapping software and applicant’s market
research services both are designed to provide
“geographic information”; they thus are complementary to
that extent, if not also directly competitive.
In sum, we find that applicant’s mark is highly
similar to opposer’s mark, and that applicant’s goods and
services are closely related to opposer’s goods and could
be marketed in the same trade channels and to the same
classes of purchasers. Based on these findings, we
Opposition No. 119,522
10
conclude that a likelihood of confusion exists, and that
opposer has made out its Section 2(d) claim.
Decision: The opposition is sustained.