Oversee.net

Trademark Trial and Appeal Board

Mar 28, 2011

No. 77542010 (T.T.A.B. Mar. 28, 2011)

Oral Hearing: Mailed:
November 16, 2010 March 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oversee.net
________

Serial No. 77542010
_______

Scott R. Miller for Oversee.net.

Tina L. Snapp, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Kuhlke, Taylor and Lykos Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On August 7, 2008, Oversee.net applied to register in
standard characters the mark LOWFARES.COM on the Principal
Register based on an allegation of use in commerce under
Section 1(a) of the Trademark Act, 15 U.S.C. §1052(a), for
services ultimately identified as “price comparison
services, namely, providing on-line price comparisons in
the field of travel, lodging, airline transportation, car
rental, and travel tour packages via a website featuring
links to other travel and lodging websites” in
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77542010
2
International Class 35 and “computer services, namely,
providing a portal website featuring links to other
websites in the fields of travel and lodging, via a global
computer network; providing airline transportation, car
rental, travel tour package, and general travel information
via a global computer network; providing an Internet
website portal in the field of travel” in International
Class 39. In response to a refusal based on mere
descriptiveness under Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e), applicant asserted a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), which was accepted by the examining
attorney.
Registration has been finally 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 standard
character mark LOWESTFARE.COM registered on the Principal
Register based on acquired distinctiveness under Section
2(f) for “travel agency services, namely, making
reservations and bookings for transportation for others via
the Internet” in International Class 39 and “travel agency
services, namely, making reservations and bookings for
hotels and other temporary lodgings for others via the
Serial No. 77542010
3
Internet, telephone and facsimile transmission,” in
International Class 43, as to be likely to cause confusion,
mistake or deception.1 The appeal is fully briefed and an
oral hearing was held on November 16, 2010.2
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 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 services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In determining the similarity between the marks, we
analyze “the marks in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En

1 Registration No. 3435703, issued on May 27, 2008.

2 The examining attorney objected that applicant’s brief exceeds
the 25-page limit as prescribed by Trademark Rule 2.142(b)(2).
Applicant’s brief, including the cover page, is 26 pages. We
note that the Rule does not explicitly state that a cover page
will be included in the count. In addition, in response to the
examining attorney’s objection, applicant submitted its brief in
11 point font, which is permissible under Trademark Rule 2.126,
and it is well within the page limit. In view thereof, we have
considered applicant’s brief.
Serial No. 77542010
4
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
quoting du Pont, 177 USPQ at 567.
We find the marks LOWESTFARE.COM and LOWFARES.COM to
be very similar in terms of sound, appearance, meaning and
commercial impression. In sound and appearance the marks
differ only by the addition of “EST” in the middle of
registrant’s mark and the plural form of FARE in
applicant’s mark. We are not persuaded by applicant’s
argument that the meanings and commercial impressions of
the marks are sufficiently different to distinguish them.
Specifically, applicant argues that:
Webster’s Dictionary defines “low” as “of a
lesser degree, size or amount than average or
ordinary.” And the term “lowest” is not
identified in the dictionary as a synonym for the
word “low.” Importantly, whether something is
“low” is a subjective determination. In stark
contrast, the common understanding of the word
“lowest” is that it is not just below average;
rather it is the point which is the furthest
below all others. As such, whether something is
the “lowest” is objectively verifiable. This
presents a significant difference in meaning and
connotation, which creates a far different
commercial impression than does a term like “low”
which is merely subjective in nature. ...
Moreover, the difference in meaning between low
fares and the lowest fare further suggests that
Applicant’s services provide choices, i.e.,
information about multiple fares that are low in
cost; while the services of the Cited
Registration will provide the consumer with a the
[sic] singular choice – namely, the lowest fare.
... As discussed above, there are significant
differences in the meanings of the marks at issue
that creates [sic] differing commercial
Serial No. 77542010
5
impressions. And this difference in commercial
impressions of the marks should be dispositive of
the issue of likelihood of confusion. ... In the
instant case, the differences in the commercial
impressions of the marks as a whole, along with
the differences in the respective services, the
trade channels and the purchasers, are
significant in distinguishing the respective
marks. Here, one mark presents the consumer with
information about many potential choices, the
other presents an objectively verifiable claim
about the single purchase option offered to the
consumer (i.e., the “lowest”).

Br. pp. 6-8

The word “lowest” is simply the inflected superlative
form of the word “low.” The general meaning and overall
commercial impression of “a lesser degree, size or amount”
is not lost. Thus, the fact that “lowest” is the ultimate
of low, does not create a difference in meaning and
commercial impression sufficient to distinguish the marks.
In addition, use of the term “lowest” in connection
with registrant’s services, does not obviate the meaning or
impression of comparison shopping. It can mean that the
travel consumer will be presented with the lowest fares
available from various hotels and airlines and the consumer
may compare the various fares. The facts here are
distinguished from the cases upon which applicant relies.
In Champagne Louis Roederer S.A. v. Delicato Vinyards, 148
F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) the Court
upheld the Board’s finding that the word “CRISTAL”
Serial No. 77542010
6
“suggested the clarity of the wine within the bottle or the
glass of which the bottle itself was made” and “CRYSTAL
CREEK” “suggested ‘a very clear (and hence probably remote
from civilization) creek or stream.’” The marks involved
in that case evoked completely different meanings, as
opposed to the marks here which differ only in gradation -
low versus lowest. In In re Sydel Lingerie Co., Ltd., 197
USPQ2d 629, 630 (TTAB 1997) the Board, finding that the
respective goods of the parties changed the meaning and
commercial impression of the marks, stated that “if
‘BOTTOMS UP’ can be deemed to have any suggestive
connotation as applied to men’s suits, coats and trousers,
it will be in association with the drinking phrase, ‘drink
up!’ This is hardly the connotation that ‘BOTTOMS UP’
should generate as applied to applicant’s ladies’ and
children’s underwear.” Here, to the extent the services
evoke different meanings, it is not so distinct, but rather
one of a comparative nature.3 Moreover, as discussed below,
we do not find the services to be so distinct as applicant
contends. In view thereof, the striking similarities in

3 The facts in the case not designated as Board precedent to
which applicant refers, In re Edward M. Shin, Serial No. 77186384
(TTAB March 24, 2009), are also quite different. There, the
Board found that WI-NOTIFI and WENOTIFY evoked different meanings
in connection with the services in view of consumers’
understanding of the meaning of WI-FI which is completely
different from WE.
Serial No. 77542010
7
sound, appearance, meaning and commercial impression,
outweigh the minor differences.
We turn then to consider the du Pont factors of the
relatedness of the services, channels of trade and classes
of consumers. We make our analysis based on the
identification of services listed in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The
services of the parties need not be identical or
competitive to find a likelihood of confusion; it is
sufficient that they are related in some manner and/or the
conditions surrounding their marketing are such that they
would be encountered by the same purchasers under
circumstances that would give rise to the mistaken belief
that the services come from a common source. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Applicant argues that its services are different
because:
... consumers use Applicant’s services in order
to obtain information about travel [and]
Applicant’s site cannot book reservations for, or
sell tickets to, travelers. Applicant cannot
provide the sole services provided by
Serial No. 77542010
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registrant’s site, and making reservations and
purchasing tickets is significantly different
from the comparison services and other
information provided by applicant. Comparing
registrant’s services, as identified in its
registrations, with Applicant’s services subject
to this appeal, it is clear that the respective
services, are mutually exclusive of each other
and would not be considered related.

Br. p. 10.

Applicant provides travel information to consumers
about various modes of transportation and lodging, focusing
on available prices. In addition, applicant’s services, as
identified, include the provision of links, or access to,
websites where the consumer may purchase or book
transportation and hotels. Registrant’s services provide
both comparison shopping and the ability to book
transportation and lodging. In addition, inherent within
registrant’s travel agency services is the comparison of
various options for transportation and lodging, including
based on price and, to that extent, registrant’s services
encompass applicant’s travel information services. This
understanding of the online travel agency services is
supported by the record. See Final Office Action (April 2,
2010) printout of registrant’s website. Thus, we find the
services to be closely related. The fact that applicant’s
consumers have to click on a link to complete a booking is
Serial No. 77542010
9
not sufficient to distinguish the services sufficiently to
obviate a likelihood of confusion.
We also find that the trade channels and classes of
purchasers overlap. As identified, applicant’s and
registrant’s services are specifically provided over the
Internet and would be located by searches designed to find
travel sites. Applicant attempts to distinguish the trade
channels by arguing that the “composition of the audience”
of the respective sites is different. First, there are no
such limitations in the identifications and we cannot limit
registrant’s or applicant’s channels of trade or classes of
purchasers to what any evidence shows their “actual”
channels of trade or classes of purchasers to be. In re
Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986).
Moreover, the distinction applicant makes does not
eliminate the overlap in trade channels and classes of
purchasers. In view of the above, we find that the trade
channels and potential purchasers overlap.
As to the conditions of sale, applicant argues that
“special care will be taken in using the services due to
the high price tag on airline flights and other travel
arrangements [and] consumers look to see to whom they are
providing personal information such as credit cards and the
like.” Br. p. 20. We agree that the relevant overlapping
Serial No. 77542010
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consumers, those seeking to purchase transportation or
lodging, would exercise a higher degree of care. However,
this is not a circumstance where this factor would outweigh
the other relevant du Pont factors. See Electronic Design
& Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d
713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992).
Applicant argues that there have been no known
instances of actual confusion over four years of concurrent
use. Applicant supports its argument with a declaration
from applicant’s General Manager attesting to, inter alia,
applicant’s advertising efforts and the volume of traffic
on applicant’s and registrant’s respective sites. The main
type of advertising described by applicant is in the form
of sponsored links wherein applicant purchases key words
and the search results on key words include a sponsored
link that displays LOWFARES.COM. However, if registrant
does not “advertise” by way of sponsored links, then it
will not necessarily appear on the first page of the search
result. Thus, it remains unclear whether there has been a
meaningful opportunity for confusion to occur. In
addition, other than the subscriber base to applicant’s
newsletter, it is not clear how any actual confusion, by
relevant consumers in the general public, would become
known to applicant, or that consumers would be aware of
Serial No. 77542010
11
their mistake. Moreover, the inquiry here is likelihood of
confusion, not actual confusion. HRL Associates Inc. v.
Weiss Associates Inc., 12 USPQ2d 1819, 1824 (TTAB 1989)
aff’d, 14 USPQ2d 1840 (Fed. Cir. 1990). The Court of
Appeals for the Federal Circuit has observed, “A showing of
actual confusion would of course be highly probative, if
not conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of
actual confusion carries little weight, J.C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438
(CCPA 1965), especially in an ex parte context.” In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003). Thus, regardless of the
evidence, an ex parte proceeding is ill equipped for a fair
determination inasmuch as the registrant does not have an
opportunity to defend its registration.
Applicant’s argument that registrant has not objected
to its use is not persuasive. Whether or not a registrant
has objected to use of a mark has minimal probative value
in the context of an ex parte proceeding. The issue before
us is one of registration and not use. Moreover, such
analysis requires impermissible speculation as to whether
Serial No. 77542010
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registrant is aware of applicant’s use and if so why it has
not objected to that use.4
Finally, applicant relies on a survey to show that
there is no likelihood of confusion. We begin by observing
that typically surveys are used to prove likelihood of
confusion rather than to prove no likelihood of confusion.
While the survey follows the accepted format set out in
Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 188
USPQ 623 (7th Cir. 1976, cert. denied, 191 USPQ 416 (1976),
and followed by the Board (see Starbucks U.S. Brands LLC v.
Ruben, 788 USPQ2d 1741 (TTAB 2006)), we find that it is
compromised by the initial statement to the survey
participants. In the preliminary statement of purpose, the
participants are told “that the research [is] related to
website names.” The reference to “website names” does not
prepare the participant to perceive these examples as
brands or trademarks but rather more as simply the virtual
world’s version of an address. Therefore, it is not
surprising that when asked questions about who operates the
LOWFARES.COM website, or if the website is operated with

4 We note that even if registrant were aware of applicant’s use
of its mark and had not objected, such inaction would not serve
to bar a registrant from opposing an applicant’s registration of
a mark. See Teledyne Technologies Inc. v. Western Skyways Inc.,
78 USPQ2d 1203 (TTAB 2006)(earliest date from which laches may
begin to run is the filing date of an application where a
petitioner had prior knowledge of a respondent’s use).
Serial No. 77542010
13
the approval or consent of any other company or affiliated
with any other company, the vast majority of responses
pointed to other unnamed third parties such as “airlines”
or “a travel agency” and the next highest was one of the
listed well-known websites ORBITZ. It appears clear from
the results that the questions referring the participants
to “any other company” prompted them to conjure up unnamed
third parties. Moreover, it appears that out of 300
participants only 67 answered the first question regarding
operation, only 36 answered the question regarding consent
and only 27 answered the question regarding affiliation.
Overall, we find that the survey results are of little
probative value on the issue of likelihood of confusion
presented in this case.
In making our determination we have considered the
relative strength of the marks. It cannot be disputed that
the marks are conceptually weak. However, as has often
been stated even weak marks are afforded protection, in
particular, where the marks are very similar and the
services closely related. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). See also In re Clorox Co., 578 F.2d 305, 198 USPQ
337 (CCPA 1978) (even marks on the Supplemental Register
are afforded protection).
Serial No. 77542010
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In conclusion, we find that because the marks are very
similar, the services are related, and, as identified, the
channels of trade and purchasers overlap, confusion is
likely between applicant’s mark and the mark in the cited
registration. To the extent there are any doubts, we
resolve them, as we must, in registrant’s favor. 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.