Paradigm Aviation, Inc.

Trademark Trial and Appeal Board

Apr 28, 2020

87094767re (T.T.A.B. Apr. 28, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Paradigm Aviation, Inc.
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Serial No. 87094767
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Mackenzie D. Rodriguez of Garvey Smith & Nehrbass, Patent Attorneys, L.L.C.,
for Paradigm Aviation, Inc.
Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Zervas, Larkin, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Request for Reconsideration
Pursuant to Rule 2.144 of the Trademark Rules of Practice, 37 C.F.R. § 2.144,
Paradigm Aviation, Inc. (Applicant) timely requests reconsideration of the Board's
March 11, 2020 final decision in this appeal, 12 TTABVUE, which, inter alia, affirmed
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the Examining Attorney's refusal under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d).1
The premise underlying a request for reconsideration pursuant to Trademark
Rule 2.144 is that based on the record evidence and the applicable law, the Board
erred in reaching its decision. A request may not be used to introduce into the record
additional evidence or to reargue points presented in the requesting party's brief on
the case. Reconsideration should be limited to a demonstration that, based on the
evidence properly of record and the applicable law, the Board's decision is in error
and requires appropriate change. See Trademark Trial and Appeal Board Manual of
Procedure (TBMP) §§ 543 and 1219.01 (2019) and cases cited therein. For the reasons
discussed below, we see no error in the final decision.
Applicant argues in its request for reconsideration, 13 TTABVUE 5, that the
Board erred in finding the terms PAC and PAX arbitrary as applied to the aircraft
goods and services, and so “erred in its finding the two marks were confusingly
similar.” More specifically, Applicant contends, 13 TTABVUE 4, “the evidence of
record demonstrates that consumers would interpret PAC as an acronym for
Paradigm Aerospace Corporation and therefore not confusingly similar to PAX, an
acronym for Passenger.”
As a preliminary matter, we do not accept Applicant’s premise that our finding of
similarity between the marks was dependent on the finding that the terms PAC and

1 Applicant does not seek reconsideration of the Board’s affirmance of the refusal of
registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. § 1051 and 1127
pertaining to Applicant’s International Class 12 goods.
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PAX are arbitrary marks for aircraft goods and services. The marks were compared
in conjunction with findings that the parties’ services are in part identical, and the
remaining goods and services are closely related, and Applicant did not dispute those
findings. See Board’s March 11, 2010 decision, 12 TTABVUE 12. Applicant and the
registrant each own a composite mark with words and designs, and the Board took
care to compare the marks in their entireties. See Board’s March 11, 2010 decision,
12 TTABVUE 12 (“We acknowledge that no single element of Applicant’s composite
mark is identical to the registered composite mark. However, comparing – as we must
– the marks as whole, and taking into account that consumers retain only general
impressions of marks, Bay State Brewing Co., 117 USPQ2d at 1960, we find that they
create highly similar commercial impressions.”).
Turning to Applicant’s specific allegation of error (i.e., that the marks are
arbitrary marks), we disagree that there is evidence that consumers perceive the
terms PAC and PAX as anything but arbitrary as applied to the aircraft goods and
services. There is no record evidence that PAX is an acronym for PASSENGER, much
less that PAX would have that connotation for the relevant consumers in the context
of the aircraft maintenance and repair services identified in the cited registration.
Within its request for reconsideration, Applicant argues that a statement in the
registration file that “PAX is an acronym for ‘Passenger’” is evidence of consumer
perceptions of the mark. The statement from the registration file was not of record
during the appeal,2 and Applicant may not rely on evidence that was not part of the

2 Statements that appear in the registration file or on the registration certificate are not
known to the public which encounters the registered mark. See Shen Mfg. Co. v. Ritz Hotel
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record. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the
application should be complete prior to the filing of an appeal. Evidence should not
be filed with the Board after the filing of a notice of appeal.”); Amoco Oil Co. v. Amerco,
Inc., 201 USPQ 126, 127-28 (TTAB 1978).3 We see no error in our finding on the record
before us that the term PAX is arbitrary as applied to the registered services.
We also see no error in our finding the term PAC in Applicant’s mark is arbitrary
as applied to the aircraft goods and services of the application. Applicant contends
that we failed to give the proper weight to the evidence showing that the phrase
Paradigm Aerospace Corporation is used sometimes in proximity to Applicant’s
composite design mark, making PAC an acronym. 13 TTABVUE 5. We pointed out
that the application did not display PAC as an acronym, the name Paradigm
Aerospace Corporation is not indicated anywhere in the mark, and there was no
evidence that PAC was anything but an arbitrary term. See March 11, 2010 opinion,
12 TTABVUE 11-12 (“Like the literal term PAX, there is no record evidence
indicating that the literal term PAC has any significance as applied to aircraft,

Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1355 (Fed. Cir. 2004) (“confusion is evaluated from
the perspective of the purchasing public, which is not aware that certain words or phrases
have been disclaimed”); In re Medline Indus., Inc., 2020 USPQ2d 10237, *11 n.38 (TTAB
2020) (“consumers are unaware of the descriptions [of the mark set forth in applications]”).
3 The registration file for a cited registration is not automatically part of the appeal record.
See In re Sela Prods. LLC, 107 USPQ2d 1580, 1584 (TTAB 2013) (“Applicant could have
submitted the file of the cited registration, and the Board would have considered it. However,
applicant did not do so, and we see no unfairness in refusing to consider alleged ‘evidence’
that was not made of record.”); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011)
(“If an applicant wishes to rely on matter within the filewrapper of that cited registration, it
must timely make it of record during the prosecution of its application. In other words, the
filewrapper of a cited registration is not made of record by virtue of the examining attorney
attaching to the Office Action the printout detailing the particulars of the issued
registration.”).
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aircraft parts or equipment, or aircraft services. Accordingly, we find the term PAC
to be arbitrary as applied to Applicant’s goods and services.”).
Applicant points to our statement that “there is no record evidence that PAC and
the name otherwise appear together” as acknowledging that there is extrinsic
evidence of use of the mark in connection with Applicant’s related company name;
and that this statement warrants a finding the marks are not confusingly similar. 13
TTABVUE 5. We clarify that there is no record evidence that PAC and Applicant’s
company name appear together in a way which denotes a suggestive, descriptive, or
generic meaning of PAC.4 There is no evidence that the term PAC, even if perceived
to be derived from the initial letters of one of Applicant’s company names, has any
special meaning, aside from trademark significance, to purchasers of the involved
goods and services. We see no error in our finding that the record shows the term
PAC is arbitrary as applied to Applicant’s goods and services.
With respect to Applicant’s argument that the evidence that Applicant’s composite
mark including the term PAC when in actual use often appears in proximity to a
company name, decreasing the similarity between the marks, our analysis of the
marks must be based on the marks as depicted in the respective application and
registration, without regard to whether the marks will appear with other elements

4 See In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (“there are
four categories of trademarks that lie along a spectrum. When arranged "in an ascending
order which roughly reflects their eligibility for trademark status and the degree of protection
accorded," these four categories are: generic (or "common" descriptive), merely descriptive,
suggestive, and arbitrary (or fanciful) marks.”); In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (the distinctiveness of a mark may
be described using “[t]he four classic categories—generic (‘common’ descriptive), descriptive
(‘merely’ descriptive), suggestive, or arbitrary”).
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when used. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed.
Cir. 1993) (indicating that applicant’s assertions that the applied-for mark would
appear with applicant’s house mark were not considered in the likelihood-of-
confusion determination); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186
(TTAB 2018) ("[W]e do not consider how Applicant and Registrant actually use their
marks in the marketplace, but rather how they appear in the registration and the
application. We must compare the marks as they appear in the drawings, and not on
any labels that may have additional wording or information."). We see no error in our
finding that, based on the marks as shown in the application and cited registration,
the marks are similar in overall commercial impression.
Decision: The request for reconsideration is denied.