Dirck Hecking

Trademark Trial and Appeal Board

Sep 11, 1997

EX (T.T.A.B. Sep. 11, 1997)

Paper No. 12
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 11, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dirck Hecking
________
Serial No. 74/475,911
_______
Scott A. Horstemeyer of Hopkins & Thomas for Dirck Hecking.
Matthew Kline, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Sams, Simms and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Dirck Hecking to
register the mark STARSHIP AIRLINES in typed capital letters
("AIRLINES" is disclaimed) for "air transportation of
persons."1
Registration has been refused by the Trademark
Examining Attorney2 pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. 1052(d), on the ground that the use
of applicant's mark for the identified services would be

1Application Serial No. 74/475,911 filed January 3, 1994,
alleging a bona fide intention to use the mark in commerce.
2We note that during the course of examination, the file of this
case was to reassigned to another Trademark Examining Attorney.
Ser No. 74/475,911
2
likely to cause confusion with five registered marks, three
of which are owned by the same entity.
Applicant has appealed. The case has been fully
briefed, but no oral hearing was requested.
Registration No. 1,867,803
The Examining Attorney has refused registration under
Section 2(d) on the basis of the above registration for the
mark
(TRANSPORTATION INC. has been disclaimed) for "freight
transportation services, namely, the transportation of goods
of others by land and air; truck transportation services."3
Turning first to the marks, we agree with the Examining
Attorney that, when compared in their entireties,
applicant's and registrant's marks are very similar. In
considering the marks, we recognize that the disclaimed
portion of each mark cannot be ignored. Giant Food, Inc. v.
National Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983) However, there is nothing improper in
giving more weight, for rational reasons, to a particular
feature of a mark. Here, we have given more weight to the

3Issued December 13, 1994.
Ser No. 74/475,911
3
STARSHIP portion of both applicant's and registrant's marks
because of the descriptive nature of the remaining wording
in the marks, i.e. AIRLINES and TRANSPORTATION INC. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). It is the STARSHIP portion of the marks customers
are most likely to remember. Further, the star design in
registrant's mark does very little in the way of
distinguishing the registered mark from applicant's mark
because the design simply reinforces the significance
conveyed by the word STARSHIP.
Turning next to the services, it should be noted that
it is not necessary that services be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the services
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the services originated from or are in some way associated
with the same source. In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978)
In order to show the relationship between applicant's
services and registrant's services of transporting goods by
air, the Examining Attorney made of record a number of
registrations which indicate that entities have registered a
single mark for the transportation of persons by air, on the
Ser No. 74/475,911
4
one hand, and the transportation of goods by air, on the
other hand. For example, SPRITE-FLIGHT JETS and design is
registered for, inter alia, "transportation of passengers
and/or goods by air"; MARTINAIR is registered for
"transportation of passengers and/or goods by air and cargo
handling"; a stylized eagle design is registered for
"transportation of passengers and cargo by air"; THE
CARIBBEAN IS OUR BUSINESS and WE ARE THE CARIBBEAN, are
registered for "transportation of passengers and/or goods by
air"; FLY AWAY VACATIONS and design is registered for, inter
alia, "transportation of passengers and goods by air"; and a
design of the nose of an airplane is registered for, inter
alia, "transportation of passengers and/or goods by air".
Thus, these registrations serve to suggest that the listed
services are of a type which emanate from a single source.
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988).
We find, therefore, that the respective services are
sufficiently related that customers familiar with
registrant's services of transporting goods by air offered
under the mark STARSHIP TRANSPORATION INC. and design would
be likely to believe, upon encountering STARSHIP AIRLINES
for transportation of persons by air, that the services
originate from a common source.
Registration No. 1,365,463
Ser No. 74/475,911
5
The Examining Attorney has refused registration under
Section 2(d) on the basis of the above registration for the
mark

for "airplanes and structural parts thereof."4
The Examining Attorney, in an attempt to demonstrate
that these goods and applicant's services are related,
submitted copies of third-party registrations which cover
transportation of persons by air, on the one hand, and
airplanes and parts thereof, on the other hand. However,
all but two of the registrations issued under Section 44(e)
of the Trademark Act and are not based on use in commerce.
Such registrations are incompetent to establish, in and of
themselves, these goods and services may emanate from, or be
associated with, a single entity, much less that purchasers
in this country have become accustomed to seeing the goods
and services emanate from a single source under a single
mark. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993), citing In re Mucky Duck Mustard Co., Inc.,
supra. The remaining two third-party registrations, while
based on use in commerce, are owned by a single party and

4Issued October 15, 1985; Sections 8 & 15 affidavit filed.
Ser No. 74/475,911
6
are insufficient evidence to establish that these services
would be expected to emanate from the same source.
On the basis of this record, we are unable to conclude
that applicant's services of transporting persons by air are
related to registrant's airplanes and parts thereof. Thus,
notwithstanding any similarities between the marks involved
herein, we find that there is no likelihood of confusion.
Registration Nos. 1,668,825; 1,668,826; and 1,669,756
Finally, the Examining Attorney has refused
registration under Section 2(d) on the basis of the above
registrations for the marks STAR/SHIP ATLANTIC5, STAR/SHIP
MAJESTIC6, and STAR/SHIP OCEANIC.7 These registrations are
owned by Premier Cruise Lines, Ltd., and cover, in relevant
part, "transportation of passengers by boat."
In connection with this refusal, the Trademark
Examining Attorney submitted third-party registrations which
cover transportation of persons by air, on the one hand, and
transportation of persons by boat, on the other hand.
However, there are problems with these registrations as they
likewise issued under Section 44(e). For the reasons
discussed above, such registrations are not particularly
probative of whether transporting persons by air and
transporting persons by boat are related services which
would be expected to emanate from the same source. In view

5Issued December 17, 1991.
6Issued December 17, 1991.
7Issued December 24, 1991.
Ser No. 74/475,911
7
thereof, and in the absence of any other evidence
demonstrating the relatedness of the involved services, and
because applicant's mark STARSHIP AIRLINES and the cited
marks STAR/SHIP ATLANTIC, STAR/SHIP MAJESTIC and STAR/SHIP
OCEANIC create different commercial impressions, we find
that there is no likelihood of confusion.
Our decision in connection with this refusal is based
on the limited record before us. In the context of a
subsequent inter partes proceeding involving the same issue
but a different record (e.g., evidence of the fame of the
cited mark and/or evidence that these services are commonly
promoted together under the same or similar marks), we could
well reach a different conclusion.
Decision: The refusal to register is affirmed, but only
on the basis of cited Registration No. 1,867,803.
J. D. Sams
R. L. Simms
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Ser No. 74/475,911
8
Appeal Board
Ser No. 74/475,911
9