Lufthansa Cargo AG

Trademark Trial and Appeal Board

Jan 8, 2003

No. 75911677 (T.T.A.B. Jan. 8, 2003)

Mailed: January 8, 2003
Hearing: Paper No. 17
November 12, 2002 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lufthansa Cargo AG
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Serial No. 75/911,677
_______
Vincent L. Ramik of Diller, Ramik & Wight for Lufthansa
Cargo AG.
Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Walters, Chapman, and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On February 7, 2000, Lufthansa Cargo AG (a company of
the Federal Republic of Germany) filed an application to
register the mark shown below
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/911677
2
on the Principal Register for services identified, as
amended, as “transportation of cargo, passengers and/or
goods by air, train and truck, and warehouse and cargo
storage” in International Class 39. Applicant included in
the application a statement that “the mark is lined for the
colors blue and gray.” The application is based on
Sections 44(d) and (e) of the Trademark Act, 15 U.S.C.
§§1126(d) and (e), through applicant’s ownership of German
Registration No. 399 50 148, currently to remain in force
until August 31, 2009.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its
identified services, so resembles the mark CARES, which is
registered for “land and air freight forwarding and
shipping services” in International Class 39,1 as to be
likely to cause confusion, or to cause mistake, or to
deceive.
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
1 Registration No. 2,366,032, issued July 11, 2000 to Alliance
Air Freight, Inc., with a claimed date of first use of August
1993.
Ser. No. 75/911677
3
briefed the issue before us2, and an oral hearing was held
on November 12, 2002.
As a preliminary matter, we will consider the
Examining Attorney’s objections in her brief to certain
material submitted by applicant. First, applicant
submitted five exhibits (third-party registrations and
Internet material) for the first time with its brief on the
case. The Examining Attorney properly objected to the
evidence as untimely pursuant to Trademark Rule 2.142(d).
The Examining Attorney’s objection is sustained, and the
Board did not consider these exhibits.
Second, the Examining Attorney also continued her
objection to applicant’s previously submitted list of
third-party applications3 and registrations because
applicant did not submit copies of said
applications/registrations. In a May 4, 2001 Office
action, the Examining Attorney explained to applicant that
soft copies are required to make the third-party material
2 During the prosecution of this application, both applicant
[United Foods, Inc. v. United Airlines, Inc., 41 USPQ2d 1653
(TTAB 1995)] and the Examining Attorney [Life Corporation v.
Carefree Trading Corp., 47 USPQ2d 1151 (TTAB 1998)] have cited as
precedential cases which have been designated by the Board as
non-precedential. The Board will disregard such citations. See
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270,
footnote 9 (TTAB 1992).
3 Third-party applications are evidence of only the fact that
each was filed on a particular date.
Ser. No. 75/911677
4
properly of record, and she cited the case of Weyerhaeuser
Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). Applicant did not
thereafter submit copies of the involved
applications/registrations. This objection is also well
taken and is sustained, and the Board did not consider this
material.
Turning to the merits of the appeal, we affirm the
refusal to register. In reaching this conclusion, we have
followed the guidance of the Court in 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 goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
The services of applicant and the cited registrant
are, in part, identical (the transportation of freight by
land and air); and are otherwise closely related (the
transportation of passengers by land and air, and storage
services related to the transportation of freight by land
and air). Applicant concedes these facts. (Brief, p. 3.)
Obviously, identical services are offered through all the
same channels of trade to the same or similar potential
purchasers, in this case, the general public.
Ser. No. 75/911677
5
“When 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).
We turn next to consideration of the similarities or
dissimilarities of the marks. Applicant contends that
these marks are distinct in sight and are dissimilar in
sound, connotation and commercial impression. There are
obvious differences between the registered mark CARES, and
applicant’s composite mark, specifically, that applicant’s
mark begins with the word CARE in the singular not plural
form, and it includes a slash line, the letters “td,” and
stylized lettering lined for color.
It is well settled that marks must be considered in
their entireties as to the similarities and dissimilarities
thereof. However, our primary reviewing court has held
that in articulating reasons for reaching a conclusion on
the question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir.
Ser. No. 75/911677
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2000); Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752
(Fed. Cir. 1985).
In this case, both applicant’s mark and registrant’s
mark share the root term CARE. It is the first and
dominant part of applicant’s mark, and registrant’s mark is
merely the plural form of that term. The first part of a
mark is often the part impressed upon the mind of the
purchaser, and the most likely to be remembered. And here
applicant’s mark is presented with the first word “CARE” in
larger lettering, further emphasizing its dominance. See
Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895 (TTAB 1981). That applicant’s mark includes “CARE” in
singular rather than plural form is not significant in
terms of the likelihood of confusion of purchasers. See In
re Pix of America, Inc., 225 USPQ 691 (TTAB 1985).
Likewise, we see little trademark significance in the slash
line in applicant’s mark.
Applicant’s argument that its use of stylized
lettering (lined for color) creates significant differences
between the marks is not persuasive. As the Court stated
in Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983) “the argument concerning a
Ser. No. 75/911677
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different type style is not viable where one party asserts
rights in no particular display.” In the appeal now before
the Board, registrant’s mark is depicted in typed drawing
form, and thus it is not limited to any special form. See
also, Phillips Petroleum Company v. C.J. Webb, Inc., 442
F.2d 1376, 170 USPQ 35 (CCPA 1970).
Applicant contends that the term “CARE” has several
dictionary meanings, the most relevant being “painstaking
or watchful attention” [Merriam Webster’s Collegiate
Dictionary (Tenth Edition)]; that both applicant and
registrant, and in fact, all businesses, wish to create in
the minds of the public that their businesses have a caring
attitude; and that, therefore, the term CARE(S) is
extremely weak.
We agree with applicant that the words CARE and CARES
are likely to connote to prospective purchasers essentially
the same idea in relation to transporting freight and/or
passengers. That is, the connotation of the dominant root
word in applicant’s mark is very similar to that of
registrant’s mark, regardless of what that connotation may
be. One likely connotation of these terms is the
suggestion that the business is concerned about the freight
or passengers it transports and the cargo or people will be
delivered with care. Moreover, applicant has not submitted
Ser. No. 75/911677
8
evidence that the term “care(s)” is weak in the relevant
field of providing freight and/or passenger shipping
services, and our agreeing with applicant’s argument
regarding the similar connotation of the common term in the
involved marks does not serve in lieu of presenting such
evidence.
Even if the record included proper evidence of third-
party registrations, they have little probative value.
They are not evidence of use in the marketplace or public
familiarity with the third-party marks. See AMF
Incorporated v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973); and In re Phillips-Van
Heusen Corporation, 228 USPQ 949, footnote 5 (TTAB 1986).
Moreover, even weak marks remain entitled to protection
against registration by a subsequent user of the same or
similar mark for the same or related goods.4
Applicant also argues the following:
The “td” suffix was carefully chosen
and has innumerable possible meanings
or connotations, depending upon a
purchaser’s perceptions, knowledge,
attitude and intelligence. The prefix
formative “td” is, of course, an
acronym intended to suggest superiority
of performance of services by Applicant
4 We specifically note that the cited registered mark is on the
Principal Register with no disclaimer and no claim of acquired
distinctiveness under Section 2(f) of the Trademark Act; and it
is, of course, entitled to the statutory presumptions under
Section 7(b).
Ser. No. 75/911677
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when perceived to mean--timely
delivery--. However, even absent any
perception as to a specific meaning of
“td” and even absent any meaning, “td”
necessarily adds a different perception
to the mark “Care/td” in its entirety
to the purchasing public which is
totally absent in the mark “CARES” per
se.
Applicant concludes therefrom that “the [overall]
marks present totally dissimilar meanings or connotations.”
(Brief, p. 6.)
With regard to this argument, the Board notes that in
the Examining Attorney’s first Office action, she asked
whether “td” has any significance in the relevant trade,
any geographical meaning, or any meaning in a foreign
language. Applicant’s response to that Office inquiry was
that “the letters ‘td’ have no significance in the relevant
trade or any geographical significance or any meaning in a
foreign language.” (Applicant’s August 16, 2000 response,
p. 2.) Applicant’s current argument regarding possible
perceived meaning(s) of “td” to purchasers without any
evidence thereof is not persuasive.
Under actual market conditions, consumers generally do
not have the luxury of making side-by-side comparisons.
The proper test in determining likelihood of confusion is
not a side-by-side comparison of the marks, but rather must
be based on the similarity of the general overall
Ser. No. 75/911677
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commercial impressions engendered by the involved marks.
See Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller
Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
The differences in the marks (applicant’s addition of a
slash line, the letters “td,” and the stylized lettering)
do not serve to distinguish the marks here in issue. That
is, purchasers are unlikely to remember the specific
differences between the marks due to the recollection of
the average purchaser, who normally retains a general,
rather than a specific, impression of the many trademarks
encountered. Purchasers seeing the marks at separate times
may not recall these differences between the marks. 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 Edison Brothers Stores v.
Brutting E.B. Sport-International, 230 USPQ 530 (TTAB
1986).
Purchasers familiar with registrant’s services sold
under the registered mark CARES may, upon seeing
applicant’s mark CARE/td (stylized lettering) on the same
or closely related services, assume that it is a revised
version of registrant’s mark CARES, and that the services
originate from the same entity.
Ser. No. 75/911677
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Applicant strongly urges that the case of In re Hearst
Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992),
requires a different result in the case now before the
Board. Specifically, applicant contends that the Examining
Attorney erred and “when ‘/td’ is given fair weight along
with ‘Care’ (singular), confusion of ‘Care/td’ with ‘CARES’
becomes less likely.” (Brief, p. 9.) However, in the
application now before the Board, applicant’s mark does not
consist of multiple words (as in the Hearst case where
applicant’s mark consisted of the words VARGA and GIRL),
rather, here applicant’s mark consists of one word “CARE,”
a slash line, and the letters “td,” which applicant stated
have no specific meaning. Thus, the letters would
presumably not be understood by consumers as being an
abbreviation for any particular word or words. Moreover,
the Court explained in the Hearst case at 25 USPQ2d 1239
that “the weight given to the respective words is not
entirely free of subjectivity... .” In any event, we
disagree that the Hearst case requires a different result
herein as we have given each element of applicant’s mark
appropriate weight and of course, we have ultimately
considered the similarities/dissimilarities of the marks in
their entireties.
Ser. No. 75/911677
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We find that applicant’s mark CARE/td (stylized
lettering) and registrant’s mark CARES, when considered in
their entireties, although obviously not identical, are
similar in sound, connotation and commercial impression.
See In re Azteca Restaurant Enterprises Inc., 50 USPQ2d
1209 (TTAB 1999). The contemporaneous use of these marks,
in connection with these identical services, would be
likely to cause confusion as to the source or sponsorship
of such services. See Cunningham v. Laser Golf Corp.,
supra; and In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
To the extent we have any doubt on the question of
likelihood of confusion, it must be resolved against
applicant as the newcomer, because the newcomer has the
opportunity of avoiding confusion and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.