NorthStar Moving Corporation

Trademark Trial and Appeal Board

Mar 28, 2008

No. 76645522 (T.T.A.B. Mar. 28, 2008)

Mailed: March 28, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re NorthStar Moving Corporation
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Serial No. 76645522
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Robert M. Ashen, Esq. of Law Offices of Robert M. Ashen for
NorthStar Moving Corporation.

Janice L. McMorrow, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vleck, Managing Attorney).
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Before Hairston, Rogers and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

NorthStar Moving Corporation has filed an application
to register the mark NORTHSTAR MOVING (in standard
character form with MOVING disclaimed) for “storing and
moving by ground transport household and business articles”
in International Class 39.1
Registration has been finally refused under Section

1 Serial No. 76645522, filed August 22, 2005, alleging dates of
first use of at least as early as November 1994.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76645522
2
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the mark NORTH STAR,
which is registered for “air cargo transport services,”2 as
to be likely to cause confusion, mistake or deception.
Applicant and the examining attorney have filed
briefs.
Our determination of the issue of likelihood of
confusion 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).
Considering first the services, it is the trademark
examining attorney’s position that the services are
“closely related in that each involves the relocation of
items from one place to another” and “the same entities
that provide ground transport services for articles also

2 Registration No. 1816169, issued January 11, 1994; renewed.
Ser No. 76645522
3
provide air transport services for articles.” (Brief at
unnumbered 7-8). The examining attorney submitted copies
of third-party registrations and excerpts from Internet
websites to demonstrate a relationship between the
respective services.
Applicant, on the other hand, argues that its services
differ from those of registrant because “the core of air
cargo services is to transport goods from sellers to
customers or buyers, whereas the core of ground transport
movers services is moving privately owned household
articles from one place to another for a single customer.”
(Request for reconsideration at 4). Applicant maintains
that the respective services are offered to different
classes of customers and are regulated by different Federal
agencies. Applicant asserts that there is no evidence of
actual confusion for over twelve and one-half years of
concurrent use.
Applicant submitted the declaration of its president,
Ram Katalan, which describes in detail the history and
nature of applicant’s services, and the operations of
moving companies and air cargo companies.
The question is not whether purchasers can
differentiate the services themselves, rather the question
is whether purchasers are likely to confuse the source of
Ser No. 76645522
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the services. See Helene Curtis Industries Inc. v Suave
Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus, it is not
necessary that the respective services be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the services are
related in some manner, or that the circumstances
surrounding their marketing are such, that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same source or that there is an
association or connection between the sources of the
services. See In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
Moreover, it is well settled that the question of
likelihood of confusion must be determined based on an
analysis of the services recited in applicant’s application
vis-à-vis the services recited in the registration, and not
in light of what such services are asserted to actually be.
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and The Chicago
Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB
Ser No. 76645522
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1991). Further, where the services in an application or
cited registration are broadly described as to their nature
and type, it is presumed that the application and
registration respectively encompass all services of the
nature and type described in their respective
identifications, that the identified services are available
through all channels of trade which would be normal for
those services, and that the services would be purchased by
all potential buyers thereof. In re Elbaum, 211 USPQ 639
(TTAB 1981).
Applicant’s services are identified as “storing and
moving by ground transport household and business
articles.” The services in the cited registration are
identified as “air cargo transport services.” We take
judicial notice of the following definitions from The
American Heritage Dictionary of the English Language, 4th
Edition, 2006:
cargo: n. The freight carried by a ship, an
aircraft, or another vehicle.

freight: n. 1. Goods carried by a vessel or
vehicle, especially by a commercial carrier; cargo.

In the absence of any limitations in registrant’s
identification of services, we must assume that
registrant’s air cargo transport services include the
Ser No. 76645522
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shipment of all types of goods, including household and
business articles. Thus, for purposes of our likelihood of
confusion analysis, we consider that applicant and
registrant transport some of the same types of goods.
As noted, the examining attorney has made of record
use-based third-party registrations which show that
entities have adopted a single mark for air transportation
services, on the one hand, and ground transportation
services, on the other hand. Although such third-party
registrations are not evidence of use of the marks in
commerce, the registrations suggest that the respective
services are of a type which may emanate from the same
source. See Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); and In re Mucky Duck Mustard Co., 6 USPQ2d
1467 (TTAB 1988).
See, for example, Registration No. 2929370 for, inter
alia, freight transportation by truck, air, train and boat;
Registration No. 3061823 for, inter alia, parcel
transportation by ground and air; Registration No. 2993694
for, inter alia, transportation of goods and property by
means of truck transport, rail transport, and air
transport; Registration No. 2769359 for, inter alia,
delivery of goods service by air, truck and train;
Registration No. 3132361 for, inter alia, express delivery
Ser No. 76645522
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of goods by truck; air cargo pick-up and delivery, namely
transportation of goods by air; and Registration No.
3168932 for, inter alia, land, air and sea transport
services provided by boat, rail, tractor trailer and
aircraft. We acknowledge that none of these third-party
registrations specifically mention the transportation of
household and business articles, but that does not lessen
the probative value of the registrations as showing that
both air transport and ground transport services for these
types of goods are of a type which may emanate from a
single source. See In re Albert Trostel & Sons Co., supra.
We also point out that registrants are not required to
identify with particularity the specific nature of the
goods that they transport, and therefore one would not
expect third-party registrations to contain such
information.
Further, the examining attorney has provided two
website excerpts of companies that offer both air and
ground transportation services:
We move air cargo and ground cargo.
http://www.unitrans-pra.com

Next Day Air Cargo/Ground Shipping
TransManage Worldwide’s experienced operations staff
is available 24 hours a day, 7 days a week to
provide the expertise needed for all your air cargo
and ground logistic needs.
http://www.justshipit.com
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Another website excerpt discusses the use of air cargo
transportation services as an alternative method to move
household items:
Headline: Alternate Ways to Move Your Stuff: Air
Cargo
With the recent increase in fuel costs, it’s best to
look at all your moving options, with cost,
convenience and effectiveness needing to be part of
your moving equation.
There are several alternative means to ship your
things.
http://moving.about.com

Based on the evidence of record, we find that
applicant’s services of “storing and moving by ground
transport household and business articles” and registrant’s
“air cargo transport services” are closely related
services.
There is no question that these types of services
would come to the attention of the same purchasers in the
same channels of trade. The relevant purchasers for the
services would include homeowners and business owners who
need to move goods from one location to another. Further,
we note that because applicant’s services include “storing”
as well as “moving” of household and business articles, the
respective services could be used in a complementary
fashion. For example, a business could turn to applicant
to provide storage of items that it would subsequently have
need to ship by ground or air. Applicant’s arguments about
Ser No. 76645522
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the differences in the trade channels and purchasers are
unavailing.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985) [“That a particular feature is descriptive or generic
with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a
portion of a mark”]. Furthermore, the test is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
Ser No. 76645522
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than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We note that applicant does not argue that its mark is
dissimilar from that of registrant. Given the merely
descriptive, if not generic, significance of the term
MOVING, we find that NORTHSTAR is the dominant feature of
applicant’s mark. It is the feature of applicant’s mark
which is most likely to be perceived and recalled by
purchasers as a source indicator.
The dominant feature of applicant’s mark is virtually
identical to registrant’s mark NORTH STAR. Due to the
shared term NORTH STAR/NORTHSTAR, we find that when
considered in their entireties, the marks are highly
similar in sound, appearance, connotation and commercial
impression. Purchasers are likely to assume that a single
entity offers both NORTHSTAR MOVING storing and moving by
ground transport services for household and business
articles and NORTH STAR air cargo transport services.
Finally, applicant asserts that it and the registrant
have used their marks concurrently without any actual
confusion, and that this shows that confusion is not likely
to occur. We are not persuaded by this argument. While
applicant has provided evidence as to the extent of its
use, there is no evidence as to registrant’s use, such that
Ser No. 76645522
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we can determine whether there has been a meaningful
opportunity for confusion to occur. “Uncorroborated
statements of no known instances of actual confusion are of
little evidentiary value…. The lack of evidence of actual
confusion carries little weight … especially in an ex parte
context.” Majestic Distilling, supra, 65 USPQ at 1205.
Decision: The refusal to register under Section 2(d)
is affirmed.