Jet Toursv.The Mark Travel Corp.

Trademark Trial and Appeal Board

Jan 19, 1999

No. 91097115 (T.T.A.B. Jan. 19, 1999)

Hearing: Paper No. 44
March 4, 1998 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 19, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Jet Tours
v.
The Mark Travel Corporation
_____
Opposition No. 97,115
to application Serial No. 74/500,064
filed on March 10, 1994
_____
Robert J. Patch of Young & Thompson for Jet Tours.
John L. Kirtley and Derek C. Stettner of Godfrey & Kahn for
The Mark Travel Corporation.
______
Before Simms, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by The Mark Travel
Corporation to register the mark shown below
Opposition No. 97,115
2
for “wholesale and retail travel services, namely arranging
air transportation and ground accommodation travel packages
for marketing by retail travel agents.”1
Registration has been opposed by Jet Tours under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
services, so resembles opposer’s previously used and
registered mark shown below
for “catalogs, brochures, folders and posters, all relating
to travel” (in International Class 16), “travel agency
services, namely conducting tours for others” (in
International Class 39), and “hotel and vacation club
reservation services, hotel and restaurant services” (in
International Class 42)2 as to be likely to cause confusion,
or to cause mistake, or to deceive.

1 Application Serial No. 74/500,064, filed March 10, 1994,
alleging a bona fide intention to use the mark in commerce.
2 Registration No. 1,914,843, issued August 29, 1995. Ownership
of this registration was pleaded by way of an amended notice of
opposition.
Opposition No. 97,115
3
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; a certified copy of opposer’s
pleaded registration, and discovery depositions, with
related exhibits, introduced by way of opposer’s notice of
reliance; and discovery depositions, with related exhibits,
and opposer’s answers to applicant’s interrogatories, made
of record in applicant’s notice of reliance. The parties
have relied upon the discovery depositions pursuant to their
stipulation under Trademark Rule 2.120(j)(2). The record
also includes the parties’ stipulation filed on February 28,
1997. Both opposer and applicant filed briefs on the case
and an oral hearing was held.
Opposer, through its wholly owned subsidiary Jet
Vacations, Inc. (a travel agency with a single office in New
York City), is engaged in the travel business. More
specifically, opposer is a tour operator that puts travel
packages together, then sells the packages to travelers
through travel agents. According to the testimony of Allen
Stolz, the former chief executive officer of Jet Vacations,
and Suzanne Hall, vice president, sales and marketing, of
Jet Vacations, annual sales volume under opposer’s mark was
around $50,000, and annual advertising expenditures
Opposition No. 97,115
4
approximated $50,000. Opposer’s services were promoted
primarily through the distribution of informational
brochures, the distribution of which usually ran at 125,000
copies. Ms. Hall testified that opposer’s registered design
mark was never used alone, but rather always used in
conjunction with the words “Jet Tours” or “Jet Vacations.”
In addition, the mark always appeared in color, with the
background in red, the moon in white and the sun in yellow.3
The parties stipulated to the fact that Jet Vacations “has
ceased doing business in the United States,” and Mr. Stolz
confirmed that Jet Vacations closed its operations in
October 1996.4
Applicant, according to the testimony of William La
Macchia, applicant’s president and chief executive officer,
is also in the travel business, providing vacation packages
which typically include lodging and air transportation.
According to Mr. La Macchia, opposer consists of several

3 Opposer’s “Graphic Design Guidelines” brochure states that the
logotype consists of three inseparable elements: a vertical
solid red [back]ground with its lower edge in the form of a
wave; the Jet Tours typography; and the moon-sun symbol. The
guidelines also indicate that the three elements of the logo
“must not be modified in any way.” Nevertheless, we recognize,
of course, that our comparison of applicant’s mark with
opposer’s mark is limited to opposer’s registered mark which
does not include any words or color claimed as a feature.
4 Notwithstanding opposer’s apparent cessation of use of the
pleaded mark, abandonment has not been raised as an issue in
this case. It would appear that the cessation occurred around
the time of trial in this case, but applicant has not pressed
any claim based thereon. Thus, there is no reason to consider
opposer’s cessation of use as an issue in this case.
Opposition No. 97,115
5
“strategic business units,” including one called Funjet
Vacations which uses the mark sought to be registered.
Annual sales under the mark are approximately $250 to $300
million, and annual promotional expenditures are in excess
of $7 million. Applicant’s services are marketed primarily
through travel agencies. The bulk of applicant’s travel
packages involve sunny and warm destinations.
In view of opposer’s ownership of a valid and
subsisting registration for its pleaded mark, there is no
issue with respect to opposer’s priority. King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Our determination under Section 2(d) is based on an
analysis of all of the probative factors in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services.
With respect to the parties’ goods and/or services,
there is no real dispute that they are substantially
similar.5 Although applicant points out that it focuses on

5 Although the pleaded registration lists both goods and
services, opposer has focused its attention on the parties’
respective services. Thus, we too have focused our analysis on
Opposition No. 97,115
6
travel to relaxed, sunny destinations in North America and
the Caribbean, in contrast to opposer’s primary market of
trips to France, and that opposer admitted that the parties
are not direct competitors, these facts do little to
distinguish the parties’ services. It is settled that in
cases such as this one the registrability of an applicant’s
mark must be evaluated on the basis of the identification of
goods and/or services set forth in the involved application
and the registration of record, regardless of what the
record may reveal about the particular nature of the
respective goods and/or services. Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815-16 (Fed. Cir. 1987). In the present case, both
parties provide travel services involving tour and travel
packages. The services move in the same channels of trade
to the same classes of purchasers, namely travel agencies
and the ultimate user, that is, the person purchasing the
trip.
Insofar as the factor of the conditions of the sale of
the parties’ services is concerned, we agree with applicant
that travel agents are relatively sophisticated when
presenting and booking vacation packages for clients. We
would also agree, therefore, that travel agents are less
likely to be confused than the average purchaser of travel

the services. We hasten to add, however, that we view opposer’s
catalogs, brochures folders and posters, all dealing with
Opposition No. 97,115
7
services. With respect to the average consumer who may
purchase the services, the cost and nature of the services
tend to suggest that a somewhat careful purchasing decision
is often involved. The record shows that the involved
travel tours and packages cost several hundreds to several
thousands of dollars, and it is common knowledge that
vacation plans frequently involve a good bit of deliberation
before a destination or tour is selected.
We next turn to consider the marks. Although the marks
share some similarities, we nonetheless find that the marks
are sufficiently different in terms of appearance and
connotation that confusion is unlikely to occur. Opposer
characterized its mark as follows: “Its bright red banner
shape is the signal of its presence. Its symbol, the sun
and the moon clearly joined together, expresses the fullness
of the precious time we spend holidaying or traveling, and
evokes freedom, new encounters and special moments.” (Ex.
no. 23) In Mr. Stolz’s words, “I mean, it [opposer’s design
mark] obviously is the moon and the sun.” (November 30,
1995 dep., p. 27) Mr. La Macchia has stated that
applicant’s mark communicates vacation, fun and relaxation
in warm, sunny destinations. Stephanie Hart, applicant’s
public relations manager in corporate communications,
described applicant’s mark as “represent[ing] everything
[applicant’s] about, sunny, relaxing places, vacation

travel, to be related to the travel services of applicant.
Opposition No. 97,115
8
packages offering land, sand, and sea....” In a letter from
applicant, when applicant was introducing its involved mark,
to various individuals in the trade, applicant described the
mark as “a sun placed above three separately colored waves,
representing land, sand and sea.” (ex. no. 19) Michael
Voss, president of the advertising agency that handles
applicant’s account, who was involved in the development of
applicant’s mark, described the mark as follows (dep., p.
7):
So what you see is a sun representing
the warm weather destinations. The
swirling pattern was designed to be fun
because we are selling a vacation
package. You see the sand. The beach
is representing warm weather
destination, the sea because many of
them are oriented towards the ocean, and
the land representing the land packages
that are inclusive of what we sell.
Our own “eyeball” test in comparing the marks,
buttressed by the parties’ own differing descriptions of
their respective marks as set forth above, leads us to find
that the marks are specifically different in appearance and
are sufficiently different in connotation that there is no
likelihood of confusion between them. See: Johann Maria
Farina Gegenuber Dem Julicho-Platz v. Chesebrough-Pond,
Inc., 470 F.2d 1385, 176 USPQ 199 (CCPA 1972); and In re
Giordano, 200 USPQ 52 (TTAB 1978).
An important factor in finding that there is no
likelihood of confusion in this case is the evidence of
Opposition No. 97,115
9
third-party uses of sun designs in the travel industry. The
Board has in the past given weight to evidence of use by
third parties of marks containing elements in common with
the mark being opposed on grounds of likelihood of confusion
to demonstrate that confusion is not, in reality, likely to
occur in the marketplace. See, e.g., Miles Laboratories
Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445,
1462 (TTAB 1987). In the present case, applicant contends
that consumers are accustomed to the use of sun design marks
in the travel industry and that, therefore, the consumers
are able to discern variations in these marks such that
confusion as to source is not likely to occur.
In connection with applicant’s argument, the record
includes at least twenty exhibits showing third-party uses
of sun designs in the travel industry in connection with
travel agency services and tours and travel packages.
Further, Mr. Stolz testified that “it’s fairly common” for
various depictions of the sun to appear in marks used in the
travel industry. (Stolz April 22, 1997 dep., p. 10)
Likewise, Mr. La Macchia and Ms. Hart testified regarding
the frequent use of sun designs by others in the industry.
There also is the testimony of Mr. Voss who stated that
“[t]he sun is very frequently used in the travel industry,
obviously because many people are going to sunny
destinations.” In light of the evidence of record, coupled
Opposition No. 97,115
10
with the obvious suggestiveness of sun designs when used in
connection with travel services (that is, suggesting sunny
destinations), we do not believe there is any doubt but that
the field of sun designs for travel related services is a
crowded field. That is to say, the record supports the
proposition that opposer’s mark is entitled to only a narrow
scope of protection. See: Colgate–Palmolive Co. v. Carter-
Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970).
In comparing the parties’ marks, we have considered the
testimony of Mr. Stolz on this very point. Mr. Stolz, the
chief executive officer of Jet Vacations (opposer’s wholly
owned subsidiary who used the mark when it was in business),
testified that he does not believe that the contemporaneous
use of the parties’ marks is likely to cause confusion among
travel agents or the consuming public. Mr. Stolz further
testified that opposer had never made any prior attempts to
police its mark, and that he was surprised to learn that the
present opposition was filed against registration of
applicant’s mark. Messrs. Stolz and La Macchia both
testified about their conversation with each other wherein
Mr. Stolz expressed his surprise to Mr. La Macchia, Mr.
Stolz indicating that opposer did not consult him before the
filing of the opposition, and that Mr. Stolz did not view
the marks as being confusingly similar. Although some of
Opposition No. 97,115
11
Mr. Stolz’s testimony was taken after his separation from
opposer’s employ,6 Mr. Stolz was at one time intimately
involved with opposer’s business in the travel industry. We
view Mr. Stolz’s testimony on this point to be akin to an
admission against interest and, thus, we have accorded
probative value thereto. See: Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA
1978)[a party’s earlier contrary opinion may be considered
relevant and competent to a limited extent, that is, this
fact is “merely illuminative of shade and tone in the total
picture confronting the decision maker”] Cf.: Amalgamated
Bank of New York v. Amalgamated Trust & Savings Bank, 842
F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Bongrain
International (American) Corp. v. Delice de France Inc., 811
F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); and In re N.A.D.
Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)[parties’
views on likelihood of confusion must be considered since
businessmen are in a better position to know the real life
situation than bureaucrats or judges].
Applicant also directs our attention to the absence of
evidence of any instances of actual confusion. The parties’
lack of awareness of actual confusion is a factor to be
considered here inasmuch as the parties both are engaged in

6 We should point out that Mr. Stolz’s testimony that he was
surprised to learn of the present opposition was given while
still in opposer’s employ. (November 30, 1995 dep., p. 40)
Opposition No. 97,115
12
arranging travel packages. The parties have used their
marks contemporaneously since 1994, and from that time until
March 1996, applicant received over ten million telephone
calls from travel agents and interested consumers without
any reported instances of actual confusion.7
Based on the record before us, we see the likelihood of
confusion claim asserted by opposer as amounting to only a
speculative, theoretical possibility in a purchase often
made with care. Language by our primary reviewing court is
helpful in resolving the likelihood of confusion controversy
in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g
153 USPQ 412 (TTAB 1967).
Decision: The opposition is dismissed.
R. L. Simms

7 In finding this factor to be in applicant’s favor, we
recognize that the lack of actual confusion may be due as much
to the fact that the parties’ travel packages involve different
Opposition No. 97,115
13
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

destinations as to the differences between the marks. We also
acknowledge that evidence of actual confusion is hard to obtain.