Diners Club International Ltd.v.Rosenbluth Int’l., Inc.

Trademark Trial and Appeal Board

Oct 26, 2004

No. 91106261 (T.T.A.B. Oct. 26, 2004)

Mailed: October 26, 2004
Oral Hearing:
June 3, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Diners Club International Ltd.
v.
Rosenbluth International, Inc.
_______
Opposition No. 91106261
to Application No. 74697987
filed on July 16, 1995
_______
Richard Lehv and Michael Chiappetta of Fross Zelnick Lehrman
& Zissu for Diners Club International Ltd.
Timothy D. Pecsenye and Dennis P. McCooe of Blank Rome for
Rosenbluth International, Inc.
_______
Before Hanak, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Diners Club International Ltd. filed its opposition to
the application of Rosenbluth International, Inc. to
register the mark GLOBAL VISION for “computer software for
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 91105261
2
use in the travel industry for information management,” in
International Class 9.1
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used mark GLOBAL VISION for
“computer software designed to manage reporting of travel
expenses” as to be likely to cause confusion, under Section
2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of the claim and asserted affirmatively that it
“is the owner of a family of marks containing the dominant
commercial term VISION for travel and travel related goods
and services; including VISION, VISION CONSOLIDATOR, VISION
DIRECT, USER VISION and TAP THE POWER OF VISION, as well as
the mark GLOBAL VISION ….” (Answer, p. 2, para. 9.)
Applicant asserts, further, that it has been using its
VISION marks since at least September 1986, and that its use
predates opposer’s use alleged in its notice of opposition.
The Record
The record consists of the pleadings; the file of the
involved application; the testimony deposition by opposer of
Judith Hilvers, opposer’s senior vice president of corporate

1 Application Serial No. 74697987, filed July 16, 1995, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods. The application includes a
statement that applicant is the owner of Registration Nos. 1,504,237 and
1,627,853, although we note that the latter registration is cancelled.
Opposition No. 91105261
3
marketing, Yolanda Piazza, opposer’s senior vice president
of information products, and Norma Love, opposer’s director
of information products in 1992, all with exhibits;
opposer’s rebuttal testimony deposition of Norma Love, with
exhibits; opposer’s responses to applicant’s first request
for admissions, and status and title copies of registrations
owned by applicant, both of which were submitted by
applicant’s notice of reliance; and the testimony deposition
by applicant of Nina Keenehan, applicant’s business manager
for information management, with exhibits. Both parties
filed briefs on the case and an oral hearing was held, but
only opposer appeared at the oral hearing.
Factual Findings
Opposer’s principal business is the issuance of credit
cards and charge cards to charge expenses that are billed
monthly. The cards are issued to individuals, including
personal cards and corporate cards for employees of
corporate customers.
Opposer also offers information management software to
its corporate clients so that such clients can receive
spending summaries and analyses of the travel and
entertainment expenditures of corporate employees. This
information is formatted so that clients can conduct
business planning, such as negotiating discount travel
rates, allocating personnel and money for business travel,
Opposition No. 91105261
4
and determining the cost and business benefit balance of
corporate travel and entertainment expenditures. The
software permits a corporate client to aggregate and
organize the travel data of large numbers of employees into
different summaries and reports for numerous purposes.
Opposer’s key competitor in the field of management
information reporting is American Express. Opposer’s
business differs from the business of American Express
because, while both offer charge card products, American
Express has its card program and travel agency under one
umbrella. To compete with American Express, opposer has,
since 1984, aligned itself with travel agencies in the
market. Applicant is one of the travel agencies with whom
opposer has a “preferred” arrangement. The two entities
work closely together to present their products to corporate
customers. Joint promotional materials include both
opposer’s logo and applicant’s logo.
As part of opposer’s relationship with applicant,
opposer conducts training sessions to educate applicant’s
sales force about opposer’s product offerings. Opposer
submitted a copy of a promotional item called a “sell” sheet
(Hilvers Dep., Ex. 25) that promotes opposer’s core
products, including GLOBAL VISION software, and includes
applicant’s logo thereon. This sell sheet is used by
applicant in its proposals and sales presentations, and by
Opposition No. 91105261
5
opposer in sales initiatives conducted jointly with
applicant.
Opposer submitted a copy of its “Continuum
Presentation” (Hilvers Dep., Exs. 27 & 28), which was part
of an interactive exhibition set up by applicant in the
lobby of applicant’s headquarters in Philadelphia. The
exhibit showcased for corporate customers the travel
services and products of applicant and its preferred
vendors, including opposer. Opposer’s interactive Continuum
Presentation includes an explanation of its GLOBAL VISION
Internet product.
Opposer first introduced its travel information
management software at a trade show in July 1992 under the
trademark T&E ANALYZER. This software was initially
distributed on disks during the first quarter of 1993.2
Opposer subsequently developed an updated version of
its T&E ANALYZER software and determined that it would be
renamed “GLOBAL VISION,” with the first version numbered
2.0. Disk labels were first printed in April 1995 and a
press release announcing the product is dated April 17, 1995
(Love Dep., Ex. 2). The information contained in the press
release appeared in the April 17, 1995 issue of Business
Travel News, an industry periodical (Love Dep., Ex. 3). On

2 The record indicates that opposer may have used the mark GLOBAL VISION
on a software product in 1992, but that opposer could find no
documentation of this use. Since this use has not been adequately
established, we have not considered it.
Opposition No. 91105261
6
June 1, 1995, opposer distributed a bulletin to its
customers announcing the availability of its GLOBAL VISION
version 2.0 software and advising customers of the hardware
and software requirements necessary to upgrade to the GLOBAL
VISION software from the T&E ANALYZER software (Love Dep.,
Ex. 6). Several customers responded to the bulletin in June
1995. On June 5, 1995, opposer loaded the software onto
disks and mailed a copy to one of its customers, Ted Barrett
of National Starch (Love Dep., Ex. 7). Opposer’s telephone
tracking system shows a telephone call from Mr. Barrett on
June 7, 1995 indicating that National Starch had installed
the GLOBAL VISION software but was having problems loading
data; and another telephone call is logged from Mr. Barrett
on June 13, 1995 with a question about GLOBAL VISION
software report results. (Love Rebuttal Dep., Ex. 31.)
Opposer has used the mark GLOBAL VISION continuously
since June 1995 in connection with each of the successive
versions of opposer’s information management software and
the user manuals and bulletins distributed in connection
therewith. The type of media used has migrated from
diskettes to CD Rom and, presently, to a web-based product.
Opposer’s GLOBAL VISION software is part of what applicant
describes as its suite of “GLOBAL” software products,
Opposition No. 91105261
7
presently consisting of GLOBAL PRODUCT MANAGER, GLOBAL
VISION and T&E RECONCILER.3
Applicant began its business as a steamship ticket
office in 1892; in the 1930’s and 1940’s, applicant’s
business expanded to include leisure travel sales; and in
1965, applicant’s business expanded to include national and
international corporate customers. At the time of trial,
applicant had approximately 1,500 clients worldwide and an
annual business of $3.2 billion. The record does not
establish what percentage of clients and business is in the
United States.
Applicant owns the following registrations:
Registration No. 2,678,526
Mark: EVISION@ROSENBLUTH
Services: “Travel information services available
through a global computer network”
Registered: January 21, 2003 based on an
application filed on August 30, 1999.4
Registration No. 2,663,703
Mark: VISION@ROSENBLUTH
Services: “Travel information services available
through a global computer network”
Registered: December 17, 2002 based on an
application filed August 31, 1999.5
Registration No. 1,998,414
Mark: VISION DIRECT

3 There is insufficient evidence in the record to draw any conclusions
about the use of marks other than GLOBAL VISION by opposer.
4 Ms. Keenehan, applicant’s business manager for information management,
testified that applicant first used this mark in connection with the
identified services in July 2000.
5 Ms. Keenehan testified that applicant first used this mark in
connection with the identified services in August 1999.
Opposition No. 91105261
8
Goods: “Computer software used in connection with
the management of travel expense information and
general travel information”
Registered: September 3, 1996 based on an
application filed October 26, 1995.6
Registration No. 2,087,044
Mark: VISION CONSOLIDATOR
Goods: “Computer software for use in the travel
industry, namely, for national and global travel
management”
Registered: August 12, 1997 based on an
application filed February 7, 1996.7
Registration No. 2,064,590
Mark: TAP THE POWER OF VISION
Goods: “Computer software for use in managing
travel information”
Registered: May 27, 1997 based on an application
filed October 26, 1995.8
Registration No. 1,977,102
Mark: VISION DIRECT
Goods: “Computer software used in connection with
the management of travel expense information,”
Registered: May 28, 1996 based on an application
filed December 7, 1993.9
Registration No. 1,504,237
Mark: VISION
Goods: “Processing management data and generating
management reports for others concerning the
travel activities of their personnel”
Registered: September 13, 1988 based on an
application filed November 6, 1986.10

6 Ms. Keenehan testified that applicant first used this mark in
connection with the identified goods in November 1993.
7 Ms. Keenehan testified that that applicant first used this mark in
connection with the identified goods in April 1995.
8 Ms. Keenehan testified that she was aware that this mark was a slogan
that would have been used, but that she had no personal knowledge of its
use.
9 Ms. Keenehan testified that that applicant first used this mark in
connection with the identified goods in February 1994.
10 Ms. Keenehan testified that the VISION mark was first used in
connection with the identified services on or around September 1986.
However, she also stated that she first began working for applicant in
1993 and that her knowledge about the first use of this mark is based on
Opposition No. 91105261
9
Applicant’s core technology is its Global Distribution
Network, which allows applicant to access all stored
information necessary to provide services to a corporate
client regardless of where that corporate client, or the
client’s traveler, is in the world. Applicant’s travel
management system, where all client travel data is
integrated and maintained, is identified by its registered
mark, VISION. The information contained therein is
organized into management reports for clients and reports
can be customized for clients. Applicant’s software program
that monitors travel itineraries and, among other things,
flags travel itineraries that are not in compliance with a
client’s travel policies, is identified by the mark
ULTRAVISION. It is not clear from the record exactly when
clients began using the described services identified by the
ULTRAVISION mark, i.e., whether it was in July 1993 or some
time thereafter. An article entitled “Travel Agencies Still
Search for Global Uniformity” in Business Travel News, May
18, 1998 (Keenehan Dep., Ex. 5), includes the following
statements:
Like its mega competitors, Rosenbluth
International [applicant] also is working
diligently on selling the concept of a global
account management, but still has a limited number
of truly global customers.

conversations with colleagues. Therefore, we find her statements in
this regard to be of little probative value.
Opposition No. 91105261
10
. . .
On the technology side, Rosenbluth provides global
data collection through its Global Distribution
Network. “We operate on a dominant CRS platform
and our international offices are linked through
the GDN. All data from the Apollo/Galileo
platform is forwarded electronically into Vision,
our back-office system,” McGurk said.
Applicant’s desktop software program, that clients
license and use to obtain data from applicant’s VISION
system and manipulate the data into various types of
reports, is identified by the registered mark VISION
DIRECT.11
Ms. Keenehan stated that applicant’s first on-line
Internet-based reporting product was identified by the
registered mark VISION@ROSENBLUTH. A second related
product, identified by the mark EVISION, was launched in
July 2000 and permits clients to obtain on-line ad hoc
reporting on a flexible schedule. Both products were still
available at the time of trial. A third product, identified
by the mark IVISION, was launched during 2002 and permits

11 Applicant’s attorney stated during and at the close of Ms. Keenehan’s
testimony that several specified exhibits were marked confidential. We
note that applicant complied with none of the requirements for
submitting confidential documents to the Board and the referenced
exhibits are presently part of the public record. In this regard, we
note the relevant provisions of Trademark Rule 2.125(e), 37 CFR
§2.125(e):
Upon motion by any party, for good cause, the Trademark
Trial and Appeal Board may order that any part of a
deposition transcript or any exhibits that directly disclose
any trade secret or other confidential research,
development, or commercial information may be filed under
seal and kept confidential under the provisions of §2.27(e).
Although required, there is no protective order in place and applicant
did not submit the allegedly confidential documents separately under
seal.
Opposition No. 91105261
11
clients to access data via the Internet and run reports at
any time. A fourth product, identified by the registered
mark VISION CONSOLIDATOR, permits applicant to import
historical data from a corporate client and merge it with
the client’s data in applicant’s Vision database so that the
corporate client has a single source for its travel
management reporting.
Ms. Keenehan opined that if both applicant and
registrant use the mark GLOBAL VISION, customers are likely
to be confused.
Analysis
This case is primarily a priority dispute. In its
brief, applicant concedes that there is a likelihood of
confusion and argues that applicant has priority of use.
Regarding the marks, there is no question that the
marks are identical. Both parties agree that their
respective goods are closely related, and the evidence of
record supports this conclusion. Both parties offer travel-
related computer software. Opposer describes its software
as being designed to manage reporting of travel expenses;
and applicant describes its software as being designed for
use in the travel industry for information management. The
record shows that the information “managed” by the software
of the two parties herein overlaps and, to the extent it
does not overlap, it is substantially similar.
Opposition No. 91105261
12
The evidence also establishes, and the parties agree,
that the channels of trade for their respective software
products are identical, namely, corporations with employees
who travel. This is reinforced by the fact that opposer and
applicant have a business relationship to offer services to
the same corporate clients, albeit not with respect to the
goods involved in this case.
Turning to the issue of priority in this case, we begin
by noting that applicant’s position is based primarily upon
its affirmative defense that it owns a family of VISION
marks and that, by virtue thereof, applicant has priority of
use of its GLOBAL VISION mark. However, as opposer points
out, the Board has clearly and affirmatively determined that
a family of marks argument can be used only offensively by a
plaintiff, not defensively by a defendant. See Baroid
Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d
1048 (TTAB 1992).
The Baroid decision addressed “the question of whether
a defendant in a Board inter partes proceeding can rely upon
its asserted ownership of a family of marks as a defense
against a plaintiff's intervening common-law rights.”
Baroid, supra at 1049. The Board stated the following in
this regard:
The issue under Section 2(d) is whether
applicant's mark sought to be registered, or
respondent's mark, the registration of which is
sought to be cancelled, so resembles plaintiff's
Opposition No. 91105261
13
registered and/or previously used mark or marks as
to be likely to cause confusion. Thus, the fact
that a plaintiff may rely upon any confusingly
similar mark which it has either registered or
previously used, is to be contrasted with the fact
that a defendant whose sole mark in issue is its
mark sought to be registered or its mark sought to
be cancelled, can rely upon only its rights in
that mark, except in very limited situations.

One situation involves a defendant's claim that it
already owns a substantially similar registered
mark for substantially similar goods and/or
services such that the second registration (or
second registration sought) causes no added injury
to the plaintiff. See Morehouse Manufacturing
Corp. v. J. Strickland & Co., 407 F.2d 881, 160
USPQ 715 (CCPA 1969).
A second situation involves a defendant's attempt
to defeat a plaintiff's priority of use claim by
virtue of the defendant's earlier use of a mark
which is the legal equivalent of defendant's
involved mark for the same or similar goods. This
latter situation involves the concept of
‘tacking.' See Van Dyne-Crotty Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir.
1991), aff'g 18 USPQ2d 1804 (TTAB 1990) [other
citation omitted] ... [A] party seeking to tack on
its use of an earlier mark to its use of a later
mark may do so only if the earlier mark is the
legal equivalent of the mark in question or
indistinguishable therefrom, and would be
considered by purchasers as the same mark. For
purposes of tacking, two marks are not necessarily
legal equivalents merely because they are
considered to be confusingly similar. Tacking of
an earlier use of one mark onto the later use of a
very similar mark, for purposes of priority, has
been permitted only in “rare” instances.
[citation omitted.]
To allow a defendant to plead and prove as a
defense against a plaintiff's intervening common-
law rights that it owns an earlier family of marks
would create, at least in our minds, an
unacceptable loophole to the stringent standards
applicable to the two situations set forth above.
[footnote omitted.] The loophole would be
unacceptable because, as noted above, the
Opposition No. 91105261
14
priority-of-use issue under Section 2(d) (when
priority of use is in issue) is whether the
defendant's use of its mark sought to be
registered, or the registration of which is sought
to be cancelled, precedes the plaintiff's use of
the plaintiff's pleaded mark(s), not whether the
defendant has priority of use of another mark or
marks which the plaintiff's mark(s) so resembles
as to be likely to cause confusion. Thus, we must
narrowly construe the availability of defenses
grounded upon ownership of other earlier-used
and/or registered marks.

Id. at 1052-53. See also Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733 (TTAB 2001).
As noted above in Baroid, there are two exceptions to
the rule that a defendant may rely only on the mark in the
opposed application, which brings us to applicant’s
assertion of a Morehouse defense, one of the exceptions
noted in Baroid, for the first time in its brief. See
Morehouse Mfg. Corp. v. J. Strickland Co., 407 F.2d 881, 160
USPQ 715 (CCPA 1969). Opposer objects that this defense was
neither asserted in applicant’s answer, nor tried by the
express or implied consent of the parties. We agree. We do
not consider applicant’s pleading of a family of marks to
implicitly include a Morehouse defense. Therefore, this
defense has been given no consideration.12

12 Moreover, even if we were to consider whether a Morehouse situation
exists in this case as a limited exception to the family of marks
prohibition, we would find that applicant has not met the requirements
set out in Morehouse. Morehouse requires that the marks and goods in
the prior registration(s) and involved application are "substantially
identical." Id. at 717. See also TBC Corp. v. Grand Prix Ltd., 12
USPQ2d 1311, 1314 (TTAB 1989). For purposes of the Morehouse defense,
two marks are "substantially identical" when they are either literally
identical or legally equivalent. See O-M Bread Inc. v. United States
Opposition No. 91105261
15
Nor has applicant established the other Baroid
exception, namely, the legal equivalency of marks and goods
necessary to permit tacking of earlier dates of use of its
other VISION marks to the mark herein. Therefore, Baroid is
directly applicable to the situation involved in this case
and we conclude that whether applicant has a family of
VISION marks is irrelevant and we have given this allegation
no further consideration in reaching our decision. As in
Baroid, our analysis considers only opposer’s pleaded and
established mark and goods and the mark and goods identified
in the opposed application.
In this regard, the earliest date upon which applicant
can rely is its application filing date of July 16, 1995.
Opposer does not own a federal registration for its
GLOBAL VISION mark.13 Regarding its use, Opposer contends
that its first use of its pleaded mark was “bona fide use in
the ordinary course of business, and demonstrate[s]
legitimate, substantial and continuing use of the GLOBAL
VISION mark in connection with its software product.”
(Brief, p. 10.) Opposer contends that its use precedes the

Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995) (OLYMPIC
and OLYMPIC KIDS are neither the same nor legally equivalent).
Applicant has not established that any of the registered or unregistered
marks about which it has submitted substantial evidence are literally
identical or legally equivalent to the mark in the application herein.
13 Neither party has alleged that the mark GLOBAL VISION is not
inherently distinctive in connection with the parties’ respective goods
and, therefore, for the purposes of this proceeding at least, we
consider the mark to be inherently distinctive in connection with each
party’s goods.
Opposition No. 91105261
16
July 6, 1995 filing date of applicant’s intent-to-use
application.
Applicant disputes opposer’s allegations that it made
any sales of its product prior to applicant’s July 6, 1995
filing date, and argues that opposer’s June 5, 1995 shipment
was a single shipment that “does not constitute a bona fide
use in commerce in the ordinary course of business
sufficient to establish priority.”14 (Brief, p. 14.)
Applicant states that opposer’s evidence of use is ambiguous
at best and applicant infers from opposer’s evidence that no
product was actually shipped by opposer on June 5, 1995;
that only a draft user manual was sent to the customer; and
that the customer was merely testing a beta version of
opposer’s software on a trial basis. (Brief, p. 15.)
We find that the record clearly establishes that
opposer began promoting its GLOBAL VISION product and
printing labels and user manuals in April 1995; that, in
June 1995, opposer’s software was ready for delivery,
product bulletins were distributed, and orders were
received; and that product sales were made and delivered
beginning June 5, 1995. Applicant’s mere statement to the
contrary is insufficient to refute opposer’s showing that

14 Applicant contends that opposer’s evidence is also insufficient to
establish use analogous to trademark use. However, opposer points out
that it has not made such an argument; rather, opposer asserts that it
commenced actual bona fide use of its mark in commerce on June 5, 1995.
Therefore, we have not considered this argument by applicant.
Opposition No. 91105261
17
its use commenced on June 5, 1995. Whether opposer sold
only one product on June 5, 1995 is not important in view of
the evidence of its continued sales up to and including the
time of trial.
Therefore, we conclude that opposer has clearly
established its priority of use in this case.
Decision: The opposition is sustained.