Panda Travel, Inc.v.Resort Option Enterprises, Inc.

Trademark Trial and Appeal Board

Dec 29, 2009

No. 91174768 (T.T.A.B. Dec. 29, 2009)

Hearing: Mailed:
September 10, 2009 December 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Panda Travel, Inc.
v.
Resort Option Enterprises, Inc.
_____

Opposition No. 91174767
to application Serial No. 78639462
filed on May 27, 2005

Opposition No. 91174768
to application Serial No. 78640690
filed on May 31, 2005
_____

Martin E. Hsia of Cades Schutte LLP for Panda Travel, Inc.

Erik M. Pelton of Erik M. Pelton & Associates, PLLC for
Resort Option Enterprises, Inc.
______

Before Rogers, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Resort Option Enterprises Inc. (“applicant”) filed use-
based applications on the Principal Register for the marks
PANDA TRAVEL, in standard character form (Serial No.
78639462), and PANDA TRAVEL and a panda design, shown below
(Serial No. 78640690), for “travel agency services, namely
making reservations and bookings for transportation,” in
Class 39. Applicant claimed February 29, 1984 as its dates
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91174767
Opposition No. 91174768
2
of first use anywhere and first use in commerce. Applicant
disclaimed the exclusive right to use the word “travel.”

Panda Travel, Inc. (“opposer”) filed notices of
opposition against the registration of applicant’s marks on
the ground of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d). Opposer alleged that it has been
continuously using the marks PANDA TRAVEL, PANDA, a panda
design, and other marks consisting of the word “panda” in
connection with travel agency services since at least as
early as 1982 and that applicant’s marks are likely to cause
confusion with opposer’s marks.
Applicant, in its answers, admitted that it first used
the mark PANDA TRAVEL in connection with “travel agency
services, namely, making reservations and bookings for
transportation” on February 29, 1984, but denied that
priority was not at issue. Applicant denied the remaining
allegations in the notices of opposition. In addition,
applicant asserted several affirmative defenses, including,
that opposer abandoned the marks PANDA and PANDA TRAVEL and
laches.
Opposition No. 91174767
Opposition No. 91174768
3
Evidentiary Issues
A. Whether opposer’s document production was timely?
During discovery, applicant requested that opposer
identify how it used its marks and produce representative
samples of advertising and promotional materials displaying
opposer’s panda marks. In written responses to applicant’s
requests, opposer stated that it would produce business
records from which applicant could ascertain the answers and
that it would make responsive documents available.
Subsequently, opposer timely produced documents identified
as Bates Nos. 1-583. Applicant served follow-up discovery
with respect to the advertising of opposer’s panda marks.
In lieu of responding to applicant’s discovery, opposer
filed a motion for summary judgment, and applicant filed a
cross-motion for summary judgment. The Board denied both
motions and reset trial dates. Although discovery was
closed, the parties were allowed until August 14, 2008 to
serve responses to outstanding discovery requests. On
August 14, 2008, opposer served responses, including
documents identified as Bates Nos. 584-853, to applicant’s
outstanding discovery.
Opposer’s testimony period opened September 13, 2008.
On September 18, 2008, September 19, 2008 and October 1,
2008, opposer served additional documents responsive to
applicant’s discovery requests (Bates Nos. 854-1176). On
Opposition No. 91174767
Opposition No. 91174768
4
October 10, 2008, opposer filed notices of reliance that
included documents served on applicant after the opening of
opposer’s testimony period. On October 17, 2008, opposer
took the testimony deposition of Lydia Tsui, opposer’s
President and sole shareholder. In the deposition, opposer
sought to introduce documents produced after the opening of
opposer’s testimony period. During the deposition,
applicant objected to the introduction of those documents.1
On May 7, 2009, during applicant’s briefing period,
applicant filed a motion to strike the documents served as
discovery responses after the opening of opposer’s testimony
period. In support of its motion to strike, applicant
argued that in view of its initial requests, subsequent
follow-up discovery, and opposer’s responses, “Applicant
believed Opposer had served all documents in its possession,
Applicant did not then inquire as to whether Opposer would
again supplement its discovery, and Applicant did not
believe that other relevant documents existed in opposer’s
possession.”2
Had opposer’s late produced
advertisements been timely produced
during discovery, Applicant would have
had a significantly clearer picture of
the dates during which Opposer claims to
have used its mark. This “bait and
switch” whereby Opposer avoided
presenting evidence of continuous use
until well into the testimony period,

1 Tsui Dep., p. 31.
2 Applicant’s Motion to Strike, p. 3.
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5
and immediately before Ms. Tsui’s
deposition has unfairly prejudiced
Applicant by denying Applicant the
opportunity to obtain additional
discovery related to such evidence, and
to otherwise prepare a comprehensive
defense.3

In opposition to applicant’s motion to strike, opposer
argued that it timely served its written responses to
applicant’s discovery by stating that it would produce
business records and documents responsive to applicant’s
discovery and that it was only the actual production of
those documents that did not coincide with the written
responses. According to opposer, there is no requirement
that responsive documents must be produced concurrently with
written responses prior to the close of the discovery period
or before an order to respond to all discovery.4
The Board expects parties to cooperate during
discovery. Each party has a duty to make a good faith
effort to satisfy the reasonable and appropriate discovery
needs of its adversary.5
A party served with a request for
discovery has a duty to thoroughly
search its records for all information
properly sought in the request, and to
provide such information to the
requesting party within the time allowed
for responding to the request. A
responding party which, due to an

3 Applicant’s Motion to Strike, pp. 5-6. Applicant also notes
that the timely production of opposer’s documents may also have
affected efforts to settle the case.
4 Opposer’s Response to Applicant’s Motion to Strike, pp. 8-9.
5 TBMP §408.01 (2nd ed. rev. 2004).
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incomplete search of its records,
provides an incomplete response to a
discovery request, may not thereafter
rely at trial on information from its
records which was properly sought in the
discovery request but was not included
in the response thereto (provided that
the requesting party raises the matter
by objecting to the evidence in
question) unless the response is
supplemented in a timely fashion
pursuant to Fed. R. Civ. P. 26(e).6

Applicant’s motion to strike opposer’s documents first
produced after the opening of opposer’s testimony period is
well taken. Applicant timely requested the production of
the documents and opposer produced what purported to be a
representative sample. Opposer’s production prompted
applicant’s follow-up discovery. Opposer produced
additional documents. Applicant had no reason to believe
that opposer’s production was anything other than a complete
and good faith effort to meet applicant’s discovery
requests.
We note that opposer obtained copies of its
advertisements from the library.
Mr. Miwa (opposer’s counsel): With
respect to your objection relating to
the foundation for the dates and source,
can you be more specific about what the
objection is?

Mr. Pelton (applicant’s counsel): Well,
and we can get to this when I question,
just where they came from, how they were
produced, and what the - - source was,
who gathered them.

6 TBMP §408.02.
Opposition No. 91174767
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Mr. Miwa: But the dates are on the
documents themselves.

Mr. Pelton: Yes, as to the dates - - as
to like where it was printed from,
I assume this is some sort of
microfiche - -

Mr. Miwa: That’s correct.

Mr. Pelton: - - from a library, but I
just want to establish that at some
point for the record.

Mr. Miwa: Well, I can tell you for the
record that they were copied from
microfiche at the State of Hawaii
library and the dates are not only on
the borders at times, but they’re also –
- they also appear as part of the
document itself. Most of the time,
there would be an attempt to copy the
date of the document itself as part of
the document.

The fly sheets are inserted not as part
of the document itself, but to assist in
dividing up - -

Mr. Pelton: Sure.

Mr. Miwa: - - the various
advertisements.

Mr. Pelton: And were they copied in
connection with this proceeding or were
they previously copied for some other
reason?

Mr. Miwa: They were copied for this
proceeding.

Mr. Pelton: Okay.

Mr. Miwa: When I say this proceeding, I
believe many of these were actually,
with respect to your other objection,
they were previously produced. I’d have
to refer to the Bates stamp numbering,
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but I’m sure some of these were part of
both.7

It is not clear from the record when opposer copied the
advertisements and whether opposer copied all of the
advertisements at one time. If all the documents were
copied at one time, there is no reason that opposer did not
timely produce all the documents. If the documents were
copied at different times, opposer did not explain to
applicant when it copied the documents and how it obtained
them thereby leaving applicant (and the Board) with the
impression that opposer provided an incomplete discovery
response. Accordingly, opposer should not complain when the
documents it failed to produce during discovery are stricken
at trial. Under the circumstances by which these documents
appear to have been gathered, there was no reason for
opposer to have delayed producing them until after trial had
begun, at least none has been provided by opposer.
Having produced responsive documents, it stretches
credulity for opposer to contend that its written responses
to the effect that opposer would produce documents
responsive to applicant’s discovery requests absolves
opposer of timely producing other responsive documents in
its custody or under its control. Discovery is not an
opportunity for opposer to harass applicant with subterfuge
and delay. As indicated above, the parties are required to

7 Tsui Dep., pp. 31-32.
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9
cooperate during discovery and each party has a duty to make
a good faith effort to satisfy the discovery needs of its
adversary. Under the particular circumstances of this case,
there was no excuse for the production of documents after
trial began. Accordingly, applicant’s motion to strike is
granted to the extent that we will only consider opposer’s
documents served prior to the opening of opposer’s testimony
period (i.e., Bates Nos. 1-854).
B. Whether opposer’s notice of reliance adequately
identifies the relevance of the documents?

In its motion to strike, applicant objected to
opposer’s notices of reliance because they do not explain
the relevance of the documents. In opposition to
applicant’s motion, opposer argued that the notices of
reliance state that the documents are introduced to show use
of opposer’s marks. Trademark Rule 2.122(e) provides that
the notice of reliance shall “indicate generally the
relevance of the material being offered.” The notices of
reliance are sufficient to explain the relevance of the
documents (i.e., the use of opposer’s marks). Applicant’s
motion to strike opposer’s documents because of a defect in
the notices of reliance is denied.
To the extent an objection has not been specifically
addressed above, we have considered the evidence, keeping in
mind the objections, and have accorded the testimony and
evidence whatever probative value they merit.
Opposition No. 91174767
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The Record
By rule, the record includes applicant’s application
files and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
following testimony and evidence:
A. Opposer’s evidence.
1. A notice of reliance including advertisements
displaying opposer’s marks featured in the Star-Bulletin &
Advertiser newspaper and the Honolulu Advertiser pursuant to
Trademark Rule 2.122(e);
2. A supplemental notice of reliance including
advertisements displaying opposer’s marks featured in the
Star-Bulletin & Advertiser newspaper pursuant to Trademark
Rule 2.122(e);
3. The testimony deposition of Lydia Tsui, opposer’s
President, Secretary and Treasurer and opposer’s sole
shareholder, with accompanying exhibits; and,
4. The declaration of Valarie Yanagihara, a clerk in
the accounting department of The Honolulu Advertiser, filed
pursuant to a stipulation of the parties.
B. Applicant’s evidence.
1. Notice of reliance including the following items:8

8 We did not consider the invoices and receipts related to
applicant’s newspaper advertisements because these documents may
not be filed pursuant to a notice of reliance. To the extent
that the receipts were introduced into evidence during Mr.
Opposition No. 91174767
Opposition No. 91174768
11
a. Opposer’s responses and supplemental
responses to applicant’s interrogatories;
b. Newspaper advertisements displaying
applicant’s marks;
c. A copy of the State of Arizona trade name
certification for applicant; and,
d. An article from Consumer Reports Travel
Letter, March 1992; and,
2. The testimony deposition of Joel Jon Torgerson,
applicant’s President and CEO, with accompanying exhibits.
Standing
“Any person who believes that he would be damaged by
the registration of a mark upon the principal register . . .
may, file an opposition . . . stating the grounds therefor.”
Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063(a).
See also Section 14 of the Trademark Act of 1946, 15 U.S.C.
§1064 in regard to cancellation proceedings. Thus, a party
has standing to oppose or petition to cancel if it can
demonstrate a real interest in the proceeding. Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). “The purpose in requiring
standing is to prevent litigation where there is no real
controversy between the parties, where a plaintiff,

Torgerson’s deposition, they were considered for whatever
probative value they may have had.
Opposition No. 91174767
Opposition No. 91174768
12
petitioner or opposer, is no more than an intermeddler.”
Id. To establish a reasonable basis for a belief that one
is damaged by the mark sought to be registered, a plaintiff
may assert a likelihood of confusion which is not wholly
without merit. Id.
Lydia Tsui testified that opposer has used the mark
PANDA TRAVEL continuously since June 1981 to identify its
travel agency services.9 This testimony is sufficient to
demonstrate that opposer has a real interest in this
proceeding and, therefore, has standing. Id.
Priority

In order for opposer to prevail on its Section 2(d)
claim, it must prove that it has a proprietary interest in
its panda marks that was obtained prior to either the filing
date of applicant’s applications for registration or
applicant’s proven date of first use, whichever is earlier.
Herbko International Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth &
Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43
(CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc., 27
USPQ2d 1711, 1714 (TTAB 1993).
Applicant filed its applications for registration on
May 27, 2005 and May 31, 2005; however, Mr. Torgerson

9 Tsui Dep., pp. 24-25.
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13
testified that he was using the word mark PANDA TRAVEL to
purchase tickets for customers in late 1983.
Q. And when you say you went down to
the ticket - - to the airport to
pick up the tickets, I assume these
are airline tickets?

A. That’s correct.

* * *

Q. And this was in 1983?

A. Late, real late, in ’83. It was in
the winter of ’83, most likely.

Q. And you say that you used the name
Panda Travel in connection with
these services?

A. Yes.10

Accordingly, for purposes of determining priority of use,
applicant’s date of first use of the word mark PANDA TRAVEL
is construed as December 31, 1983. EZ Loader Boat Trailers,
Inc. v. Cox Trailers, Inc., 213 USPQ 597, 598 n.5 (TTAB
1982) (documentary evidence showed first use in 1977, the
month and day were unknown, therefore, the Board could not
presume any date earlier than the last day of the proved
period). See also Osage Oil & Transportation, Inc. v.
Standard Oil Co., 226 USPQ 905, 911 n.22 (TTAB 1985)

10 Torgerson Dep., p. 61. We note that applicant admitted that it
first used its marks on February 29, 1984. (Applicant’s Answers,
¶16). We assume that Mr. Torgerson is making a distinction
between his personal use of the marks in late 1983 and the use by
applicant in February 1984. Thus, applicant’s first use of the
word mark PANDA TRAVEL is through a predecessor-in-interest.
Opposition No. 91174767
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14
(evidence established first use in 1968-1969, therefore
December 31, 1969 is date of first use).11
As indicated above, Lydia Tsui testified that opposer
has used the mark PANDA TRAVEL continuously since June 1981
to identify its travel agency services.12 In addition,
opposer introduced into evidence one newspaper advertisement
displaying opposer’s panda marks for each year between 1983
and 2008, including an advertisement from the February 20,
1983 issue of the Star-Bulletin & Advertiser (Bates Nos.
584-585).13 The 1983 advertisement which is representative
of opposer’s advertising is shown below.

11 Mr. Torgerson’s testimony that he designed the panda logo in
1978 is irrelevant. Mere invention, creation or discussion does
not create priority rights. The right to register flows from the
use of a mark. Hydro-Dynamics Inc. v. George Putnam & Co.,
811 F.2d 1470, 1 USPQ2d 1772, 1774 (Fed. Cir. 1987); La Maur Inc.
v. International Pharmaceutical Corporation, 199 USPQ 612, 616
(TTAB 1978) (conception of a mark does not establish priority).
Moreover, Mr. Torgerson testified that he/applicant did not use
the panda logo until applicant was created in 1984. (Torgerson
Dep., p. 15).
12 Tsui Dep., pp. 24-25.
13 Opposer’s notices of reliance.
Opposition No. 91174767
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15
Ms. Tsui further testified that since 1981 opposer placed
advertisements in the Sunday Travel Section of the Star-
Bulletin & Advertiser and Honolulu Advertiser newspapers.14
In her declaration, Ms. Yanagihara corroborated that the
advertisements appeared in the newspapers.
Applicant’s argument that opposer did not use its mark
in interstate commerce until 2001 is irrelevant. Section
2(d) of the Trademark Act, provides in relevant part:
No trademark by which the goods of the
applicant may be distinguished from the
goods of others shall be refused
registration on the principal register
on account of its nature unless it …
[c]onsists of or comprises a mark which
so resembles a mark registered in the
Patent and Trademark Office, or a mark
or trade name previously used in the
United States by another and not
abandoned, as to be likely, when used on
or in connection with the goods of the
applicant, to cause confusion, or to
cause mistake, or to deceive.

15 U.S.C. §1052(d) (emphasis added). Section 2(d) only
requires prior use; it does not require use in commerce.
Accordingly, an opposer claiming priority may rely on
intrastate use. First Niagara Insurance Brokers, Inc. v.
First Niagara Financial Group, 476 F.3d 867, 81 USPQ2d 1375,
1378 (Fed. Cir. 2007); Maids to Order of Ohio, Inc. v. Maid-
to-Order, Inc., 78 USPQ2d 1899, 1909 (TTAB 2006) (“Priority
may be based on intrastate use of a mark”).

14 Tsui Dep., pp. 28 – 30 and 37.
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16
In view of the foregoing, we find that opposer first
used the word mark PANDA TRAVEL in June 1981; that opposer
first used the panda logo as of February 1983; that
applicant, through its predecessor-in-interest, first used
PANDA TRAVEL on December 31, 1983; that applicant first used
the PANDA TRAVEL and design mark on February 29, 1984; and
that, therefore, opposer has prior use.15
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. 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 Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between

15 We note that Ms. Tsui’s testimony alone is sufficient to prove
that opposer first used its PANDA TRAVEL mark in June 1981. See
National Bank Book Co. v. Leather Crafted Products, Inc., 218
USPQ 826, 828 (TTAB 1993) (oral testimony may be sufficient to
prove the first use of a party’s mark when it is based on
personal knowledge, it is clear and convincing, and it has not be
contradicted); Liqwacon Corp. v. Browning-Ferris Industries,
Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be
sufficient to establish both prior use and continuous use when
the testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent, and
sufficiently circumstantial to convince the Board of its
probative value); GAF Corp. v. Anatox Analytical Services, Inc.,
192 USPQ 576, 577 (TTAB 1976) (oral testimony may establish prior
use when the testimony is clear, consistent, convincing, and
uncontradicted).
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the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks”).
A. The similarity or dissimilarity and nature of opposer’s
services and the services described in the application.

Applicant is seeking to register its mark for “travel
agency services, namely making reservations and bookings for
transportation.” Opposer uses its panda marks to identify
travel agency services.16 The services are identical.
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

With respect to the channels of trade, an opposer must
prove that the services are rendered in the same type of
distribution channel as encompassed by applicant’s
description of services. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992) (“opposer does not have the burden to show
sale of an infringing product by a specific chain of
supermarkets or agents. Rather to invoke this du Pont
factor, an opposer must show the sale of an infringing
product in supermarkets or by agents in general”). Because
there are no restrictions as to channels of trade in
applicant’s description of services, we must assume that

15 Tsui Dep., pp. 22-25.
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18
applicant’s travel agency services are rendered in all of
the normal channels of trade to all of the normal purchasers
for such services, including opposer’s channels of trade and
purchasers. Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987); Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB
1983).
The evidence shows that opposer and applicant render
their services in the same channels of trade and to the same
classes of consumers. Opposer renders its travel agency
services to the general public, average consumers wanting to
take trips, corporate accounts, government travel for the
State of Hawaii and programs related to the University of
Hawaii (i.e., marketing packages in connection with the
sports teams).17 Opposer advertises on the Internet, in the
Sunday travel section of the newspaper, and through
brochures and flyers.18 Likewise, applicant is a “full
service travel agency” for businesses and individuals,
including “the ability to obtain event tickets, such as
football games, such as concert tickets.” Applicant also
advertises in the Sunday travel section of newspapers,
online and through flyers.19

17 Tsui Dep., pp. 65-67.
18 Tsui Dep., pp. 28 – 30, 37-38, 70, 84-86.
19 Torgerson Dep., pp. 18-19, 36, 47-49.
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Given that applicant is seeking geographically
unrestricted registrations, applicant’s argument that
“[o]pposer’s trade channel is apparently limited to persons
in Hawaii in need of travel agency services” is unavailing.
The geographically unrestricted registrations applicant
seeks would carry the presumption under Section 7(b) of the
Trademark Act that applicant has the exclusive right to use
the marks throughout the United States in connection with
travel agency services. Thus, we may not limit our
consideration of likelihood of confusion to the geographic
areas in which the parties actually use their marks. Board
proceedings are determined independent of the actual
geographic scope of use. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed.
Cir. 1983); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
70, 77 (TTAB 1981).
In view of the foregoing, we find that opposer and
applicant render their travel agency services in the same
channels of trade and to the same classes of consumers.
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
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20
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the services are identical, the degree of
similarity necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity
between the services. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992); Schering-Plough HealthCare Products Inc.
v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Opposer uses the word mark PANDA TRAVEL and it uses a
panda design. Applicant is seeking to register the mark
PANDA TRAVEL and the mark PANDA TRAVEL with a panda design.
The word marks are identical and the designs, shown below,
are similar.
Opposer’s Mark Applicant’s Mark

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We find that opposer’s marks and applicant’s mark are
similar in terms of appearance, sound, meaning and
commercial impression.
D. Balancing the factors.
We have reviewed all of the evidence of record and
considered all of applicant’s arguments, including any
arguments not specifically discussed in the opinion,
regarding the du Pont likelihood of confusion factors. In
view of the similarity of the marks and the identity of the
services, channels of trade and classes of consumers, we
find that applicant’s marks PANDA TRAVEL and PANDA TRAVEL
and design for “travel agency services, namely making
reservations and bookings for transportation” are likely to
cause confusion with opposer’s word mark PANDA TRAVEL and
its panda design mark for travel agency services.
Affirmative Defenses
A. Whether opposer abandoned its marks?
Applicant argues that “[o]pposer has not demonstrated
continuous use of Opposer’s mark without abandonment since
its first use of the PANDA TRAVEL mark. Opposer’s
evidentiary record, to the extent it is not stricken (see
Motion to Strike), is spotty and inconsistent.”20 (Emphasis
in the original). We disagree. We find that opposer has
proven that it has continuously used the word mark PANDA

20 Applicant’s Brief, p. 11.
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22
TRAVEL and the mark comprising a panda design since June
1981. See the discussion regarding priority.
B. Whether opposer’s claim is barred by laches or
equitable estoppel?

1. Laches.
Applicant argues that opposer has allowed applicant to
use PANDA TRAVEL for over twenty years without lodging a
complaint.
Opposer has had lengthy actual or
constructive knowledge of Applicant’s
marks and has never attempted to enforce
any alleged trademark rights until 2006.
As a result, the equitable doctrines of
acquiescence and estoppel weigh heavily
against allowing Opposer to now, after
more than twenty years, to (sic) attempt
to enforce any rights.21

The laches defense does not apply. Laches begins to
run from the time action could be taken. In an opposition,
where the objection is to the issuance of a registration of
a mark and the plaintiff had prior knowledge of applicant’s
use, laches starts to run when the mark in question is
published for opposition. National Cable Television
Association Inc. v. American Cinema Editors, Inc., 937 F.2d

21 Applicant’s Brief, p. 14. Applicant’s reference to
acquiescence is misplaced. Acquiescence is a type of estoppel
that is based on the plaintiff’s conduct that expressly or by
clear implication consents to, encourages, or furthers the
activities of the defendant. Christian Broadcasting Network Inc.
v. ABS-CBN International, 84 USPQ2d 1560, 1573 (TTAB 2007). A
plaintiff will not be permitted to stop conduct that it fostered
or tolerated, where the result would be prejudicial to the
defendant. Id. Applicant did not argue or present any evidence
that opposer consented to or encouraged applicant’s use of its
marks.
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Opposition No. 91174768
23
1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991); Teledyne
Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203,
1210 n. 10 (TTAB 2006). Because opposer timely filed
notices of opposition, there has been no undue delay by
opposer or prejudice to applicant caused by opposer’s delay.
2. Equitable estoppel.
Applicant also contends that opposer’s likelihood of
confusion claim is barred by equitable estoppel.22
Applicant supports the defense with the following argument.
Applicant has been using its PANDA TRAVEL marks since
December 1983. When opposer first learned about applicant’s
use of the mark PANDA TRAVEL in 1998, it did not raise an
objection.23 In fact, opposer’s only objection has been the
notices of opposition. “Applicant has been prejudiced by
its reliance on Opposer’s failure to act and its justifiable
assumption that Opposer’s business was limited to Hawaii or
was transitioning to use of PANDA ONLINE, PANDA HAWAII, or
one of Opposer’s other marks.”24
The elements of equitable estoppel are (1) misleading
conduct, which may include not only statements and action
but silence and inaction, leading another to reasonably
infer that rights will not be asserted against it; (2)
reliance upon this conduct; and (3) due to this reliance,

22 Applicant’s Brief, pp. 16-17.
23 Tsui Dep., p. 87
24 Applicant’s Brief, p. 17.
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Opposition No. 91174768
24
material prejudice if the delayed assertion of such rights
is permitted. Lincoln Logs Ltd. v. Lincoln Pre-Cut Log
Homes, Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir.
1992). In an opposition proceeding, the equitable estoppel
defense must be tied to the registration of applicant’s
marks, not applicant’s use of its marks. Id.
With respect to the equitable estoppel defense, the
facts set forth below have been introduced into evidence.
Applicant first learned of opposer through an e-mail dated
March 7, 2005, in which a representative of opposer, Michael
Person, opposer’s marketing manager,25 suggested a co-
marketing initiative vis-à-vis pandaonline.com (opposer) and
pandatravel.com (applicant). Upon receipt of the e-mail,
Mr. Torgerson contacted his attorney.26
Based on this evidence, we do not find that equitable
estoppel applies. First, while opposer suggested a joint
business venture based on the identity of the parties’
names, we do not find that opposer agreed, or misled
applicant into believing, that opposer would not object to
the registration of applicant’s marks. Second, there is no
evidence that applicant relied on opposer’s proposal as
assurance that opposer would not object to the registration
of applicant’s marks. In fact, Mr. Torgerson contacted his

25 Tsui Dep., p. 95.
26 Torgerson Dep., pp. 53-56.
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Opposition No. 91174768
25
attorney after receiving the e-mail from Mr. Person
presumably to discuss legal issues presented by opposer’s
contact. Shortly thereafter, applicant filed its
applications (the e-mail from Michael Person was in March
2005 and applicant filed its applications in May
2005). Furthermore, there is no testimony that applicant
believed opposer was transitioning from PANDA TRAVEL to
PANDA ONLINE, PANDA HAWAII, or any other mark. Finally,
opposer did not delay in asserting its rights; it filed
timely notices of opposition. Because opposer acted at its
first opportunity to object to the registration of
applicant’s marks and opposer made no representation to
applicant that it would not oppose applicant’s marks, there
is no basis for the equitable estoppel defense.
Decision: The oppositions are sustained and
registration to applicant is refused.