Phoenix Intangibles Holding Co.

Trademark Trial and Appeal Board

Aug 1, 2005

No. 76572153 (T.T.A.B. Aug. 1, 2005)

Mailed:
August 1, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Phoenix Intangibles Holding Company
________

Serial No. 76572153
_______

David Radack of Eckert Seamans Cherin & Mellott, LLC for
Phoenix Intangibles Holding Company.

Danielle I. Mattessich, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______

Before Hohein, Holtzman and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Phoenix Intangibles Holding Company has filed, on
January 22, 2004, an application to register on the
Principal Register the mark GET IN. GET OUT. GET GOING. for
“retail convenience store services featuring convenience
store items and fuel” in International Class 35. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), and March 10, 2003 is
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 76572153
2
claimed in the application as applicant's date of first use
of the mark anywhere and first use of the mark in commerce.
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 services, so resembles the previously registered mark
GET IN GET IT GET GOING for “retail convenience store
services featuring gasoline and convenience store items” in
International Class 35 as to be likely to cause confusion,
or to cause mistake or to deceive.1
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs.
Applicant did not request an oral hearing.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (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

1 Registration No. 2562470, issued April 16, 2002.
Ser No. 76572153
3
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). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We first turn to the similarity or dissimilarity of
registrant's and applicant's services, the relevant trade
channels and the purchasers of such services. At p. 2 of
its response to the first Office action, applicant
acknowledged, “the marks are used on identical services.”
We agree. There is no notable difference between
applicant's and registrant's services, as set forth in the
respective recitations of services. We therefore find that
applicant's and registrant's services are legally
identical.
Moving on to the trade channels and the purchasers of
the respective services, we find in the absence of any
restrictions in the recitation of services in the
application and registration that applicant's and
registrant's services are marketed in the same, overlapping
trade channels to the same classes of purchasers. See In
re Elbaum, 211 USPQ 639 (TTAB 1981).
We next consider the similarities between the marks,
which are both slogans. Specifically, we consider whether
Ser No. 76572153
4
applicant's mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance,
sound, meaning and commercial impression. In cases such
this case, where the applicant's services are legally
identical to the registrant's services, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the services were not legally identical. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
Both marks have the same construction, i.e., they both
consist of three, two-word phases beginning with GET; begin
and end with the same words; and have GET IN as the initial
phrase, GET GOING as the terminal phrase, GET as the third
word in the mark, the same number of syllables, and the
same cadence. In fact, the only difference that applicant
identifies is “that Applicant uses the phrase ‘GET OUT’ as
opposed to Registrant’s use of the phrase ‘GET IT.’”2 The
marks hence are highly similar in appearance and sound. In
terms of meaning, the marks are highly similar too, if not
identical. They both convey to the consumer that items for

2 Of course, while the periods in applicant's mark are part of
its mark, they do not aid in distinguishing applicant's mark from
registrant's mark.
Ser No. 76572153
5
sale can be purchased quickly, and without hassle or delay.
Also, because only the fourth of the six words in the
slogans differ, and this fourth word is embedded in the
middle of the slogan, it is highly doubtful that consumers,
when perceiving the slogans as a whole, will distinguish
the slogans from each other based on this one word. As
noted by the examining attorney, the test of likelihood of
confusion is not whether the marks can be distinguished
when subjected to a side-by-side comparison; the question
is whether the marks create the same overall impression.
Visual Information Inst. Inc. v. Vicon Indus. Inc., 209
USPQ 179 (TTAB 1980).
In view of the foregoing, we find that the marks are
extremely similar in sound and appearance, and possibly
even identical in meaning, when considered as a whole. We
also find that the commercial impression of the marks is
the same.
Applicant argues that registrant's mark should be
accorded “very narrow and limited” protection and that
“confusion is only likely when the marks are identical or
near identical” in view of the following registrations:
Registration No. 1,760,506 for GET-EM-N-GO for
“restaurant services”;

Registration No. 2,454,857 for GET ON. GO OUT.
for “dissemination for others of advertising and
Ser No. 76572153
6
promotional matter concerning goods and services
over on-line electronic global communications
networks; auctioneering services”;

Registration No. 2,475,854 for GET IN. GET OUT.
GET ON WITH YOUR LIFE. for “restaurant and
catering services”;

Registration No. 1,451,481 for GET & ZIP for
“convenience store and retail grocery store
services”;

Registration No. 2,615,095 for GET ON. GET IN.
AND WIN! for “on-line video arcade game
services”; and

Registration No. 2,711,192 for GET IN. GET OUT.
GET AHEAD. for “educational services, namely,
providing courses of instruction and training at
the undergraduate and professional levels.”

These registrations are of limited value in resolving the
question presented in this case because either they concern
services unrelated to applicant's services (see services
recited in Registration Nos. 2,454,857, 2,615,095 and
2,711,192), or concern marks that differ considerably from
applicant's mark (see marks set forth in Registration Nos.
1,760,506 and 1,451,481).
Additionally, third-party registrations are not
evidence of commercial use of the marks shown therein, or
what happens in the marketplace, or that consumers are
familiar with the third-party marks. See Olde Tyme Foods
Inc., v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992); and Spoons Restaurants Inc. v. Morrison
Ser No. 76572153
7
Inc., 23 USPQ2d 1735 (TTAB 1991), aff'd unpub'd, Appeal No.
92-1086 (Fed. Cir. June 5, 1992). Thus, applicant's
argument is not well taken.
Another point argued by applicant is that the applied-
for mark “will almost always appear” with another of
applicant's marks, i.e., GETGO FROM GIANT EAGLE, thereby
lessening the likelihood of confusion with registrant's
mark.3 In our determination, however, we must compare the
marks as shown in the cited registration and involved
application. Here, applicant's corporate name does not
appear in the mark sought to be registered. Accordingly,
applicant's point is irrelevant to our analysis.
In sum, upon review of all of the relevant du Pont
factors, and particularly the similarities of the marks and
the legal identity of the services, and the commonality of
purchasers and trade channels, we find that applicant's
mark GET IN. GET OUT. GET GOING. for “retail convenience
store services featuring convenience store items and fuel”
is likely to cause confusion with the registered mark GET

3 Applicant submitted a copy of a page from applicant's website
depicting applicant's convenience store with the applied-for mark
proximate to GETGO FROM GIANT EAGLE. The examining attorney has
objected to the submission of this page under 37 C.F.R. 2.142(d)
because it was first filed with applicant's appeal brief. The
examining attorney’s objection is well taken and we have not
further considered the copy of the page from applicant's website.
See TBMP § 1207.03 (2d ed. rev. 2004) and cases cited therein.
Ser No. 76572153
8
IN GET IT GET GOING for “retail store services featuring
gasoline and convenience store items.”
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.