Koleaseco, Inc.

Trademark Trial and Appeal Board

Aug 19, 2004

No. 76422636 (T.T.A.B. Aug. 19, 2004)

Mailed: August 19, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Koleaseco, Inc.
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Serial No. 76422636
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Jeffrey S. Kapteyn of Price, Heneveld, Cooper, DeWitt &
Litton for Koleaseco, Inc.
Jeri Fickes, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Simms, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Koleaseco, Inc., a Michigan corporation, has appealed
from the final refusal of the Trademark Examining Attorney
to register the mark EXCELLENCE IN ACTION for the
transportation of freight by truck.1 Applicant and the
Examining Attorney have submitted briefs but no oral
hearing was requested.

1 Serial No. 76422636, filed June 19, 2002, based upon an
allegation of applicant’s bona fide intention to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76422636
2
We affirm.
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 2,078,935, issued July 15, 1997, Section 8
affidavit accepted, for the mark EXCELLENCE IN MOTION for
freight transportation services by truck. The Examining
Attorney argues that the respective marks--EXCELLENCE IN
ACTION and EXCELLENCE IN MOTION--have parallel construction
and are very similar in meaning and commercial impression.
The Examining Attorney notes that both marks begin with the
same two words, and that “ACTION” and “MOTION” are
“potential synonyms” (brief, p. 2) which convey similar
meanings and end in the syllable “-TION.” Further, each
mark has six syllables with only one syllable being
different. Because the similarities in the marks outweigh
their dissimilarities, and because the services are
identical, the Examining Attorney contends that confusion
is likely.
Applicant, on the other hand, argues that the marks
are dissimilar, the cited mark is weak and the purchasers
are sophisticated. With respect to the marks, applicant
contends that they are not similar in sound or appearance
and do not have similar meanings or connotations. It is
also applicant’s position that the registered mark is “very
Serial No. 76422636
3
weak” because of various third-party registrations for
marks with the word “EXCELLENCE” in combination with other
terms, for trucking services. For example, applicant notes
the third-party registrations of the marks EXPERIENCE THE
EXCELLENCE for freight transportation services
(Registration No. 1,585,093); EXHIBITING EXCELLENCE for
truck transportation and storage of trade show exhibits
(Registration 2,163,345); and DEDICATED TO EXCELLENCE for
freight transportation services by truck and trailer
(Registration No. 2,385,243). Accordingly, applicant
contends that the cited mark is entitled to a very narrow
range of protection.
Finally, applicant argues that the purchasers of these
services are sophisticated because they will be reasonably
prudent users of such services. Applicant’s attorney
contends that those who contract for freight transportation
services are generally larger organizations which use a
significant degree of care in selecting trucking services.
Considerations include routing, delivery schedules, size
and weight of the shipments, on-time delivery rates, etc.
Also, applicant’s attorney maintains that these services
are relatively costly.
In reply, the Examining Attorney argues that applicant
has not presented any evidence that consumers of freight
Serial No. 76422636
4
trucking services have greater sophistication than the
normal consumer. Also, concerning the weakness of the
cited mark, the Examining Attorney maintains that the
evidence, at best, shows dilution of only one common term--
the word “EXCELLENCE.” Further, she contends that even
weak marks are entitled to protection sufficient to prevent
likelihood of confusion.
Our determination of this issue is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Concerning first the services, we note that they are
identical. We must assume, for our purposes, therefore,
that these services would be offered through the same
channels of trade to the same classes of potential
purchasers. In this regard, while applicant has argued
Serial No. 76422636
5
that the purchasers of freight transportation services
would be sophisticated, applicant has offered no evidence
with respect to this issue. Moreover, because the
identifications are unrestricted as to potential
purchasers, these services could be offered to all classes
of purchasers, including relatively small businesses, such
as mom-and-pop operations, which may not be as
sophisticated. It is also possible that even ordinary
consumers may contact applicant or registrant to transport
items by truck. Moreover, the fact that some purchasers of
these services may be knowledgeable or discriminating
consumers who may be expected to exercise greater care in
their selection of applicant’s services “does not
necessarily preclude their mistaking one trademark for
another” or demonstrate that they otherwise would be
entirely immune from confusion as to source or sponsorship
when highly similar marks are used on identical services.
See Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); In re
Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999);
and In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Relative
sophistication does not mean that the purchasers are
experts at noticing slight differences between trademarks
Serial No. 76422636
6
or service marks and remembering those differences when
purchasing services.
Turning next to the respective marks-—EXCELLENCE IN
ACTION and EXCELLENCE IN MOTION--as our principal reviewing
court, the U.S. Court of Appeals for the Federal Circuit,
has pointed out, “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Moreover, the test to be applied in determining
likelihood of confusion is not whether the marks are
distinguishable upon a side-by-side comparison, but rather
whether the marks, as they are used in connection with the
registrant’s and applicant’s services, so resemble one
another as to be likely to cause confusion. Under actual
marketing conditions, potential purchasers do not
necessarily have the opportunity to make side-by-side
comparisons between marks. Puma-Sportschuhfabriken Rudolf
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980). The proper emphasis is, therefore, on the
recollection of the average customer, and the correct legal
test requires us to consider the fallibility of human
memory. The average purchaser normally retains a general,
Serial No. 76422636
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rather than a specific, impression of trademarks. See
Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d
(Fed. Cir. June 5, 1992); and Envirotech Corp. v. Solaron
Corp., 211 USPQ 724, 733 (TTAB 1981).
Here, the two marks, while slightly different in
sound, differ only by the next-to-last syllable, and have
virtually identical meanings or connotations. They are
also very similar in appearance. As the Examining Attorney
has noted, they share parallel construction. As applied to
identical services, we believe that confusion is very
likely among potential purchasers.
Applicant has argued that the cited mark is a weak one
entitled to only a narrow scope of protection. We agree
that the word “EXCELLENCE” in the registered mark is a
laudatory word signifying the superlative nature of the
registrant’s services. However, the respective marks must
be compared in their entireties, and when so compared, the
similarities outweigh the differences, even considering
that the first word in each mark is a laudatory one. Also,
“even weak marks are entitled to protection against
registration of similar marks” for identical goods or
services. In re Colonial Stores, 216 USPQ 793, 795 (TTAB
Serial No. 76422636
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1982). See also In re The Clorox Co., 578 F.2d 305, 198
USPQ 337, 341 (CCPA 1978)(ERASE for a laundry soil and
stain remover held confusingly similar to STAIN ERASER,
registered on the Supplemental Register, for a stain
remover). Moreover, the third-party registrations which
applicant has pointed to are not as similar to the cited
registered mark as is applicant’s mark.
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal of registration is affirmed.