Marathon Tours, Inc.

Trademark Trial and Appeal Board

Jan 23, 2020

86086458 (T.T.A.B. Jan. 23, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: January 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Marathon Tours, Inc.
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Serial No. 86086458

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Michael J. Bevilacqua and Barbara A. Barakat of Wilmer Cutler Pickering Hale and
Dorr LLP,
for Marathon Tours, Inc.

D. Travis Bice, Trademark Examining Attorney, Law Office 128,1
Travis D. Wheatley, Managing Attorney.
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Before Wellington, Ritchie, and Goodman,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Marathon Tours, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark ANTARCTICA MARATHON (in standard characters), for services
identified as “Travel services, namely, organizing and arranging travel, travel tours,
excursions, and sightseeing travel tours; providing travel guide and travel

1 The case was reassigned to this Examining Attorney after the appeal was filed.
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information services; making transport reservation,” in International Class 39 and
“Travel services, namely, making hotel reservations for others,” in International
Class 43.2 The application is based on a claim that the mark has acquired
distinctiveness, under Section 2(f) of the Trademark Act.
The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,
mistake, or to deceive, based on the mark ANTARCTIC ICE MARATHON & 100K
and design, as shown below, for services identified as “Athletic and sports event
services, namely, arranging, organizing, operating and conducting marathon races,”
in International Class 41:3

2 Serial No. 86086458, filed on October 8, 2013, pursuant to Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging 1995 as the dates of use and of first use in commerce for
services in both International Classes. The application claims acquired distinctiveness of the
mark “in whole.”
3 Registration No. 5238948 issued July 11, 2017.
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The registration contains a disclaimer of the term “ANTARCTIC ICE MARATHON
& 100K” and of the geographic representation of Antarctica.4 The cited registration,
owned by Richard Donovan, contains the following description:
The mark consists of a blue rectangle. Inside the blue rectangle is the
artistic rendering of the continent of Antarctica in light blue with five
circles emanating out of the left side of the rendering of the continent.
The first circle is in red, the remaining four are in light blue. The stylized
words “ANTARCTIC ICE MARATHON & 100K” appear in white across
the middle of the design.

As background, with the first Office Action on January 28, 2014, the Examining
Attorney cited the then-pending application by Richard Donovan for the above-cited
mark as a potential bar to this Applicant’s registration due to a likelihood of
confusion. That application by Richard Donovan was published for opposition on
December 31, 2014, and Applicant herein filed an opposition to its registration on
February 13, 2014 on the grounds of likelihood of confusion and fraud. The
prosecution of this application was suspended pending the outcome of the opposition.
On February 14, 2017, the Board dismissed the opposition on both grounds, finding
that Applicant herein had not established priority of use of a distinctive mark,
whether inherent or otherwise.5 As noted, the cited registration issued to Richard
Donovan on July 11, 2017. On February 12, 2018, the Examining Attorney resumed

4 The disclaimer applies only to Applicant’s Class 41 services. The registration also
identifies goods in International Class 25, which were not discussed by the Examining
Attorney and are not relevant to this refusal
5 The Board issued a “Corrected Decision” with minor edits on November 27, 2017. As
noted, the Board found this Applicant’s mark to be “closer to being highly descriptive” and
that it “had not shown that its mark is substantially exclusive nor that it has acquired
distinctiveness.” 91214916 39 TTABVUE 15, 16.
Serial No. 86086458
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prosecution of this application, and issued a refusal on the ground of likelihood of
confusion with the cited registration. The Examining Attorney also issued a refusal
on the ground that the mark is primarily merely geographically descriptive in
accordance with Section 2(e)(2) of the Trademark Act, but deemed that refusal to be
satisfied by the Section 2(f) evidence submitted by Applicant with its August 13, 2018
Response to Office Action.
After the Examining Attorney made the Section 2(d) refusal final, Applicant filed
this appeal, which is fully briefed. For the reasons discussed herein, we reverse the
refusal to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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 Co., 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 services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We note, nevertheless,
that in a case where the marks are found to be sufficiently dissimilar, this factor may
be dispositive. See Kellogg Co. v. Pack’em Ent. Inc., 951 F.2d 330, 21 USPQ2d 1142,
1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single
DuPont factor may not be dispositive.”)
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A. The Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). Applicant’s mark is ANTARCTICA MARATHON. The mark in the cited
registration is . The cited mark contains the literal element
ANTARCTIC ICE MARATHON & 100K, and a design described as “an artistic
rendering of the continent of Antarctica.”
Applicant argues that the mark in the cited registration is weak. We agree, and
note that there is no dispute that any similar wording between the marks is based on
terms that are descriptive and disclaimed in the cited registration. Given that
Registrant’s services are marathon race services, the terms ANTARCTIC and
MARATHON in Registrant’s mark merely describe the geographic location and type
of race. Thus, consumers viewing this mark in the context of marathon race services
will accord very little, if any, source-identifying significance to these disclaimed
terms. As a result, we find Registrant’s scope of protection based on these two terms
to be severely limited.
In sum, we find that the descriptive or generic wording in the registered mark
curtails its scope of protection as to the use of those terms. Given the differences in
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its mark, Applicant’s mark does not fall within that narrow scope.6 That is, the
differences in Applicant’s and Registrant’s marks are sufficient to distinguish them.
We therefore find that the marks are different in sight, sound, connotation, and
commercial impression.
The first du Pont factor weighs against finding a likelihood of confusion.
B. Services, Trade Channels, and Purchasers
When considering the similarity or dissimilarity of the services, we note that
services need not be identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the services are related in some
manner or that some circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under circumstances which could give
rise, because of the marks used or intended to be used therewith, to a mistaken belief
that they originate from or are in some way associated with the same source or that
there is an association between the providers of the parties’ services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991). The application includes travel services,
identified specifically as “Travel services, namely, organizing and arranging travel,
travel tours, excursions, and sightseeing travel tours; providing travel guide and

6 We note that Applicant’s claim of acquired distinctiveness is a concession as to the
descriptiveness of its own mark. See Cold War Museum Inc. v. Cold War Air Museum Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant seeks
registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an
applicant’s reliance on Section 2(f) during prosecution presumes that the mark is
descriptive.”). Nevertheless, the Examining Attorney accepted Applicant’s claim of acquired
distinctiveness, and that is not an issue in this appeal. We do not opine as to Applicant’s
right to enforce its mark.
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travel information services; making transport reservation,” and “Travel services,
namely, making hotel reservations for others.” The cited registration identifies
“Athletic and sports event services, namely, arranging, organizing, operating and
conducting marathon races.”
To show that these services are related, the Examining Attorney submitted web
evidence of organizations that offer both the travel guide, tour and hotel reservation
services, as identified by Applicant, as a complementary service to the operation of
marathon races, as identified in the cited registration. These third-party providers
include Albatros Adventure Marathons, Amazing Running Tours (Kenya Wildlife
Marathon), Conquer the Wall Marathon, Wild Frontiers (Kilimanjaro Marathon) and
RIA Ethiopia Sports (EthioTrail).7 Applicant itself also admits to providing both the
travel services identified in the application, and the marathon operation service
identified in the cited registration.
In this regard, Applicant submitted a declaration from its CEO, Thomas F.
Gilligan, in support of Applicant’s claim of acquired distinctiveness. In the
declaration, Mr. Gilligan explained as follows:8
With applicant’s ANTARCTICA MARATHON mark, applicant
organizes a two week itinerary that includes three nights in Buenos
Aires, followed by a 10 night cruise that leaves from Ushuaia, Argentina.
The marathon takes place on the fourth day of the cruise and is followed
by travel along the Antarctic Peninsula into the fjord area for wildlife
viewing, kayaking, zodiac cruising and visits to research bases on the
continent.

7 Attached to February 12, 2018 Office Action, at 6-29 and October 8, 2018 Final Office
Action, at 2-16.
8 Attached to August 13, 2018 Response to Office Action, at 3.
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Applicant further reiterated in its brief that it provides “full-service travel agency
services,” stating:9
When [Applicant] organizes a marathon, it sets up the traveler/runner’s
race registration, coordinates all the logistics of getting to and from the
marathon, and provides tour services around the landmarks and sites of
the cities and locales of the marathon.

Based on the third-party web evidence, as well as the declaration from Applicant’s
CEO, which Applicant further confirms in its brief, we find that the services are
complementary and related.
In addition to demonstrating the similarity of the services, the evidence shows the
similarity of the channels of trade for the services in the application and in the cited
registration. This is further supported by evidence submitted by the Examining
Attorney that certain third-party providers of marathon services, including
Jerusalem Marathon and Virgin Money London Marathon, list Applicant as an
official partner and designated tour operator for participants travelling from the
United States.10 We find that the services, which are complementary and related,
travel through similar and at times overlapping channels of trade to general classes
of consumers.
The second and third du Pont factors favor finding a likelihood of confusion.

9 4 TTABVUE 7.
10 Attached to October 8, 2018 Final Office Action, at 20-35.
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C. Co-existence and Lack of Actual Confusion
Applicant argues in its brief that the parties have coexisted “apparently without
incident” since Registrant began use of its mark in “August 2013.”11 Applicant has
submitted declaratory testimony, along with supporting documentary evidence, of its
use. There is, however, no evidence of how Registrant uses its mark, or as to whether
there is significant overlap in the consumer market such that there has been
meaningful opportunity for actual confusion in the marketplace.
Furthermore, we note that in this ex parte context, there has been no
opportunity to hear from Registrant about whether it is aware of any reported
instances of confusion. See, e.g., In re Opus One, Inc., 60 USPQ2d 1812 (2001)
(“The fact that an applicant in an ex parte case is unaware of any instances of
actual confusion is generally entitled to little probative weight in the likelihood
of confusion analysis, inasmuch as the Board in such cases generally has no
way to know whether the registrant likewise is unaware of any instances of
actual confusion, nor is it usually possible to determine that there has been
any significant opportunity for actual confusion to have occurred.”); In re
Wilson, 57 USPQ2d 1863, 1869 (TTAB 2001) (“[I]nasmuch as we have heard
from neither registrant nor the Highland Orange Association in this appeal,
we cannot conclude that, in fact, no instances of actual confusion ever
occurred.”); In re Cruising World, Inc., 219 USPQ 757 (1983) (“Concerning the
lack of actual confusion argument, in an ex parte hearing where only the

11 4 TTABVUE 8.
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applicant’s position is expressed and there is no way to assess what the
experience of the registrant has been, it is impossible to conclude that actual
confusion has never occurred.”)
We find the seventh and eighth du Pont factors to be neutral.
D. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that although the services are complementary
and related, and travel through similar and at times overlapping channels of trade to
general classes of consumers, Registrant’s mark, which disclaims the relevant
wording and design, is weak and entitled to a narrow scope of protection, and that
such narrow scope does not extend to Applicant’s mark. Rather, considering the
weakness of the mark in the cited registration, we find the marks to be so dissimilar
in similar in sight, sound, connotation, and commercial impression that there is no
likelihood of confusion. See Kellogg Co. v. Pack’em 21 USPQ2d at 1145.
Decision: The Section 2(d) refusal to register Applicant’s mark is reversed.