P.G.A. Electronic

Trademark Trial and Appeal Board

Jun 25, 2018

No. 79191002 (T.T.A.B. Jun. 25, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: June 25, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re P.G.A. Electronic
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Serial No. 79191002

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Michael W. Garvey and Deborah L. Corpus of Pearne & Gordon LLP,
For P.G.A. Electronic.

Ronald L. Fairbanks, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Zervas, Wellington and Hightower,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Pursuant to Section 66(a) of the Act, 15 U.S.C. § 1141f(a) (the “Madrid Protocol”),
P.G.A. Electronic (“Applicant”) has filed a request for extension of protection of an
international registration on the Principal Register for the mark
(CARAT in stylized form) for the following International
Class 38 services:
Serial No. 79191002
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Connectivity communications via computer terminals or
via networks to enable aircraft passengers and users to
transmit and receive data within the aircraft, between the
aircraft and the ground, and between the ground and the
aircraft; connectivity communications services for mobile
phones and personal electronic devices to enable aircraft
passengers and users to transmit and receive data within
the aircraft, between the aircraft and the ground, and
between the ground and the aircraft; connection and
provision of access to global computer networks to enable
aircraft passengers and users to transmit and receive data
within the aircraft, between the aircraft and the ground,
and between the ground and the aircraft; electronic
messaging and teleconferencing services to enable aircraft
passengers and users to transmit and receive data within
the aircraft, between the aircraft and the ground, and
between the ground and the aircraft; all the aforesaid
services exclusively for installation in aircraft equipment,
their maintenance and use.1
The Trademark Examining Attorney issued a Final Office Action refusing
registration of Applicant’s mark for its International Class 38 services on the ground
of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), based on the typed mark CARAT (Registration No. 1573741, “the ‘741

1 Applicant notes that it amended the International Class 38 identification in its September
25, 2017 Request for Reconsideration, and that the Examining Attorney in the denial of the
Request for Reconsideration did not mention whether the amendment was entered. The
Office’s electronic records reflect that the amendment was entered and we have considered
Applicant’s International Class 38 services as amended in its request for reconsideration.
Serial No. 79191002
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registration,” registered December 26, 1989)2 for services including “radio and
television broadcasting services”3 in International Class 38.4
Applicant filed a request for reconsideration followed by a notice of appeal. After
the Examining Attorney denied the request for reconsideration, the Board resumed
the appeal and Applicant and the Examining Attorney filed briefs. We reverse the
refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [or services] and differences

2 Registered December 26, 1989, twice renewed.
3 Broadcasting” is defined in U.S. English as “The transmission of programs or information
by radio or television.” See https://en.oxforddictionaries.com/definition/us/broadcasting. The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
4 The involved application includes additional services in other International Classes; the
refusal to register only applies to the International Class 38 services. April 19, 2017 Office
Action, TSDR 1.
Serial No. 79191002
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in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). “Not all of the [du Pont] factors are relevant to every case,
and only factors of significance to the particular mark need be considered.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed.
Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir 2010)).
A. The Marks
The marks are identical in sound, connotation and commercial impression.
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1692. The marks are also legally identical in appearance inasmuch as
registrant’s mark is a standard character mark and thus may be displayed in any
stylization, font, color and size, including the style identical to CARAT in Applicant’s
mark, because rights reside in the wording and not in any particular display or
rendition. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1910 (Fed. Cir.
2012); SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (a
mark in standard character form is not limited to the depiction thereof in any special
form). Applicant does not offer any comment regarding the first du Pont factor in
either of its briefs.
The du Pont factor regarding the similarity of the marks therefore favors a finding
of likelihood of confusion.
Serial No. 79191002
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B. The Services, Trade Channels, Purchasers and Condition of Purchase
We first consider the respective services in this portion of our decision, bearing in
mind that where identical marks are involved, as is the case here, the degree of
relatedness between the services that is required to support a finding of likelihood of
confusion declines. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89
(Fed. Cir. 1993); Helene Curtis Ind. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB
1989). Services need not be identical or competitive in order to support a finding of
likelihood of confusion. “Likelihood of confusion can be found if the respective
products [or services] are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.” Coach Servs. Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1722 (internal quotation marks omitted).
The Examining Attorney argues that “the same telecommunications entity
commonly provides or bundles services that include television and/or radio
broadcasting services across various platforms, as well as data transmission
services,”5 relying on the following third-party registrations:6
• CHARTER (Reg. No. 3899216): Services include “the
distribution of analog and digital cable television
broadcasting and transmission services; pay-per-view

5 9 TTABVUE 8.
6 Although third-party registrations are not evidence that the marks shown therein are in
use or that the public is familiar with them, they nonetheless have some probative value to
the extent that they serve to suggest that the goods listed therein are of a kind that may
emanate from a single source under a single mark. In re Aquamar, Inc., 115 USPQ2d 1122,
1126 n.5 (TTAB 2015); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009)
(citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)).
Serial No. 79191002
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television transmission services; video-on-demand
television transmission services; and interactive television
broadcasting and transmission services providing access to
information from third-party sources; internet access;
internet access services to end users.”
• GRANDE COMMUNICATIONS (Reg. No. 4095695):
Services include “Television, cable television, subscription
television and radio broadcasting services; video
broadcasting services; satellite television broadcasting
services; communications by means of radio, satellite,
cable, fiber optic networks, and computer terminals,
namely, transmission of data, sound, images and messages
by means of radio, satellite, cable, fiber optic networks, and
computer terminals.”
• FAVE TV (Reg. No. 4306245): Services include
“Subscription television and video services, namely, audio
broadcasting, radio broadcasting, video broadcasting,
subscription television broadcasting, television
broadcasting; data and voice telecommunications, namely,
electronic transmission of data and voice by means of fiber,
cable, satellite and internet.”
• DISH (Reg. No. 4339515): Services include “Providing
high-speed wireless internet access; Providing broadband
internet access; providing multiple-user access to the
internet, global computer networks, and electronic
communications networks; providing access to global
information networks; webcasting of audio and visual data
via local and global communications networks; Television
broadcasting and webcasting of audio-visual programs;
Television broadcasting services via the internet, global
computer networks, and electronic communications
networks. Television broadcasting to handheld mobile
devices, namely, mobile phones, smartphones, laptops and
tablet PC’s.”
• MICROCOM COMMUNICATIONS SOLUTIONS (Reg.
No. 4475006): Services include “Satellite television
broadcasting; Satellite communication services; Satellite
transmission services; Transmission of data, sound and
images by satellite.”
Serial No. 79191002
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• TELEXITOS (Registration No. 4827987): Services are
“Television broadcasting services; cable television
broadcasting; satellite television broadcasting;
transmission services, namely, cable television
transmission, satellite transmission, television
transmission, and electronic transmission of data,
graphics, sound and video; transmission and streaming of
programming, audio and visual content, and
entertainment media content via global computer
networks and wireless communication networks; video on
demand transmissions.”
In addition, the Examining Attorney submitted the webpages of three
“large American telecommunications companies,” only one of which (DirecTV)
concerns television and radio services for aircraft.7
Applicant offers no persuasive argument that the Examining Attorney’s evidence
fails to establish a relationship between the services. Applicant further maintains,
however, that “the relevant purchasers of each are substantially different.”8
Applicant characterizes the issue before us as follows:
[R]egistrant’s services relate to delivering content whereas
applicant’s services relate to providing a connection for
communications. … Applicant makes and installs
equipment for airplanes - primarily for passenger
entertainment and comfort - including TVs, lighting, wi-fi,
power connections, seat controls, etc. Applicant provides
related services … that allow an airline passenger to
communicate using an electronic device, such as a mobile
phone, tablet, or laptop computer. The amended
description emphasizes that these services are limited to
communications for aircraft passengers. … Given how and
where the programs are delivered, customers would not
expect these different services to be provided from the same
source. Indeed, passengers on an airplane trying to connect
their devices to a network would not expect a radio or

7 9 TTABVUE 7-8.
8 7 TTABVUE 4.
Serial No. 79191002
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television broadcast company to provide the connection,
but would understand that they are using an onboard data
communications system.9
The Examining Attorney maintains that airline passengers are registrant’s
consumers because registrant’s recitation of services “is broad enough to include
broadcasts and allow airline passengers to receive broadcasts of radio and television
programming.”10 We do not disagree; as evidenced by the webpage from DirecTV
submitted with the November 19, 2017 Office Action, DirecTV, offers “[o]ver 75
available channels,” “[m]ore live sports than any other cable or satellite provider” and
“XM Satellite Radio while criss-crossing [sic] the country” on airplanes “[a]nywhere
in the sky.”11 The Examining Attorney, however, does not identify who the purchasers
of Applicant’s services are, and Applicant does not include airline passengers as
purchasers of Applicant’s services, but maintains that its purchasers are
“professionally trained and technical experts in the field of aircraft equipment,
installation, maintenance and use thereof.” While airline passengers may be the
ultimate beneficiaries of Applicant’s services, the evidence does not reflect that airline
passengers are consumers of Applicant’s services or would even be aware that
Applicant is the entity providing the connectivity services. Passengers do not
participate in purchasing decisions involving an airplane’s connectivity services.
Based on Applicant’s recitation of services, and the dearth of evidence in the record
suggesting otherwise, we find that purchasers of Applicant’s services are

9 Sept. 25, 2017 Req. for Recon., TSDR 1.
10 9 TTABVUE 10.
11 Nov. 19, 2017 Office Action, TSDR 2.
Serial No. 79191002
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“professionally trained and technical experts in the field of aircraft equipment,
installation, maintenance and use thereof,” as identified by Applicant. The question,
then, is whether this group of purchasers are also purchasers of radio and television
broadcasting services. See Elec. Design & Sales Inc. v. Elec. Data Syst. Corp., 954
F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992) (“EDS”) (“For commercially sold
items, only those users who might influence future purchasers can be considered
‘relevant persons.’”).
We find nothing in the record that suggests that “professionally trained and
technical experts in the field of aircraft equipment, installation, maintenance and use
thereof” are also purchasers of radio and television broadcasting services. In In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017), the
Federal Circuit stated that likelihood of confusion “must be resolved on the basis of
the goods [or services] named in the registration and, in the absence of specific
limitations in the registration, on the basis of all normal and usual channels of trade
and methods of distribution,” citing SquirtCo v. Tomy Corp., 216 USPQ at 940. There
is nothing in the record to suggest that the normal and usual channels of trade and
methods of distribution of such services intersect. The third-party registrations and
the webpages do not provide any information that would lead us to conclude that the
normal and usual channels of trade and methods of distribution are related to one
another.
Applicant urges us to consider consumer sophistication. Beyond inferences we can
draw from the services themselves, there is nothing in the record that would give us
Serial No. 79191002
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additional insight as to the possible sophistication of consumers of Applicant’s and
registrant’s services. See, e.g., Gen. Aniline & Film Corp. v. Hukill Chem. Corp., 287
F.2d 926, 129 USPQ 147, 148 (CCPA 1961) (“There is no evidence other than the
nature of the goods themselves from which we can determine whether purchasers of
applicant’s goods defined in the opposed application are discriminating purchasers
and as such are ‘probably informed and wary.’”). It appears, however, that relevant
potential customers – who, we make clear, are not airline passengers - would be
sophisticated and knowledgeable, and as such, would be expected to exercise greater
care in making purchasing decisions. EDS, 21 USPQ2d at 1392 (Fed. Cir. 1992)
(“sophistication is important and often dispositive because sophisticated consumers
may be expected to exercise greater care.”).
In sum, while the third-party registration evidence is appropriate evidence for
demonstrating a relationship between services, the services identified therein are
very broadly described, without trade channel or purchaser limitations. Additionally,
of the three webpages the Examining Attorney introduced into evidence, only one
addresses the trade channel limitations appearing in Applicant’s recitation of
services. We therefore find that on the present record, the du Pont factor regarding
the relationship between the services weighs slightly in favor of finding a likelihood
of confusion, and that the du Pont factors regarding the trade channels and
purchasers weigh against a finding of likelihood of confusion.
Serial No. 79191002
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C. Conclusion
Upon consideration of all of the evidence in the record and the arguments of the
Examining Attorney and Applicant, including evidence and arguments not
specifically addressed in this decision, we find that the du Pont factors regarding
trade channels and purchasers outweigh other du Pont factors, and that confusion is
not likely between Applicant’s mark for its services and registrant’s identical mark
for its services. We find that the likelihood of confusion claim posited by the
Examining Attorney is a speculative, theoretical possibility, notwithstanding that
identical marks are involved. Language by our primary reviewing court is helpful in
analyzing the likelihood of confusion issue in this case:
We are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.
EDS, 21 USPQ2d at 1391 (citing Witco Chem. Co. v. Whitfield Chem. Co., 418 F.2d
1403, 164 USPQ 43, 44-45 (CCPA 1969), aff’g 153 USPQ 412 (TTAB 1967)).
Decision: The refusal to register is reversed.