Qwest Communica-tions Internation-al, Inc.v.AT&T Corp.

Trademark Trial and Appeal Board

Nov 17, 2004

No. 91122620 (T.T.A.B. Nov. 17, 2004)

Mailed:
November 17, 2004

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Qwest Communications International, Inc.
v.
AT&T Corporation
________
Opposition No. 91122617
against Serial No. 76006001
_______
Opposition No. 91122620
against Serial No. 76006002
_______
Opposition No. 91124190
against Serial No. 76006000
_______
Opposition No. 91124392
against Serial No. 76006003
_______
David E. Sipiora of Townsend and Townsend and Crew, LLP for
Qwest Communications International, Inc.
Francine Miller of Donovan & Yee LLP for AT&T Corporation.
_______
Before Simms, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
On March 21, 2000, AT&T Corporation filed four
separate intent-to-use applications for the mark CONQUEST,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 2 -
seeking registration on the Principal Register for goods
identified, as filed, as follows:
“pre-paid telephone calling cards
magnetically encoded” in International Class
9; 1 and
“non-magnetic telephone calling cards” in
International Class 16;2
and for services recited, as filed, as follows:
“telecommunications calling card services”
in International Class 36;3 and
“delivery of message by electronic
transmission; electronic transmission of
data and documents via computer terminals;
electronic transmission of facsimile
communications and data featuring encryption
and decryption; electronic transmission of
messages and data; electronic transmission
of video; facsimile transmission” in
International Class 38.4
This is a consolidated proceeding in which Qwest
Communications International, Inc. seeks to prevent the
1 Application Serial No. 76006001 was filed on March 21,
2000.
2 Application Serial No. 76006002 was filed on March 21,
2000. Although applicant timely filed a response to Opposition
No. 91122620 as well as a response to the Board’s notice of
default, neither was timely entered into the proceeding record.
While the Board’s order entering judgment and its notice of
default were vacated, United States Patent & Trademark Office
records still incorrectly show this application as abandoned
after an inter partes decision.
3 Application Serial No. 76006000 was filed on March 21,
2000.
4 Application Serial No. 76006003 was filed on March 21,
2000.
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 3 -
registration of this mark for these goods and services on
the ground of priority and likelihood of confusion.
Qwest Communications International, Inc. alleges that
it owns multiple federal registrations incorporating
therein its distinctive QWEST mark, including the following
five5 registrations:
REGISTRATION NO. 2472094 QWEST ADVANTAGE
for “prepaid telephone calling cards, magnetically encoded”
in International Class 9;6
REGISTRATION NO. 1979485 QWEST COMMUNICATIONS
for “telecommunication services, namely the electronic
transmission of voice, data, and messages” in International
Class 38;7
REGISTRATION NO. 1966694 QWEST
for “telecommunication services, namely the electronic
transmission of voice, data, and messages” in International
Class 38;8
5 A sixth registration, Registration No. 2075826 for the mark
QWEST CONNECTIONS for “long distance telephone calling card
services” in International Class 36, was still in force at the
time of opposer’s filing of its notice of reliance (March 2002).
However, this registration was subsequently cancelled (i.e.,
during April 2004) under Section 8 of the Act.
6 Registration No. 2472094 issued on July 24, 2001 alleging a
date of first use in commerce of at least as early as June 30,
1998.
7 Registration No. 1979485 issued on June 11, 1996 alleging a
date of first use in commerce of at least as early as June 23,
1992; Section 8 affidavit accepted.
8 Registration No. 1966694 issued on April 9, 1996 alleging a
date of first use in commerce of at least as early as October 30,
1985; Section 8 affidavit accepted.
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 4 -
REGISTRATION NO. 2430761 QWEST EXPRESS
for “telecommunications services, namely, telephone
communications services; electronic transmission of voice,
video, messages and data; providing access to a fiber-optic
telecommunications network; providing multiple user access
to a global computer network; video teleconferencing
services,” in International Class 38;9 and
REGISTRATION NO. 2210992
for “telecommunication services, namely, long distance
telephone services, and electronic transmission of voice,
data and messages,” in International Class 38.10
all the above goods and services being identical, if not
closely related, to those of applicant; that opposer
commenced use of the mark QWEST on telephone calling cards
and telecommunication services such as long distance
telephone services and the electronic transmission of
voice, data and messages prior to the filing date of
applicant’s applications; that opposer’s registered marks
have become well known as identifying opposer as the source
of telephone calling cards and telecommunication services;
and that applicant’s mark, if used in connection with its
9 Registration No. 2430761 issued on February 27, 2001
alleging a date of first use in commerce of at least as early as
June 30, 1998.
10 Registration No. 2210992 issued on December 15, 1998
alleging a date of first use in commerce of at least as early as
October 6, 1997; Section 8 affidavit accepted and Section 15
affidavit acknowledged.
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 5 -
goods and services, would so resemble opposer’s previously
used and registered marks as to be likely to cause
confusion, to cause mistake, or to deceive.
AT&T Corporation has denied each of the salient
allegations contained in the notices of opposition.
The record includes the pleadings; the files of
applicant’s four involved applications; opposer’s notice of
reliance filed February 15, 2002, with Exhibits H, I and J;
opposer’s supplemental notice of reliance filed March 5,
2002, with Exhibits 1 through 6; and notices of reliance as
to Opposition Nos. 91124190 and 91124392, that include
applicant’s responses to opposer’s first set of
interrogatories. AT&T Corporation took no testimony and
offered no evidence during its testimony period. Both
parties filed briefs on the case but neither party
requested an oral hearing.
First, we note that with regard to the threshold
inquiry of opposer’s standing in these proceedings, opposer
has clearly demonstrated that it is a competitor of
applicant in the field of telephone calling cards and
telecommunication services.
With regard to the issue of priority in relation to
the goods and services set forth in opposer’s pleaded
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 6 -
registrations, to the extent that opposer owns valid and
subsisting registrations of its pleaded marks, the issue of
priority does not arise. See King Candy Company v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974); and Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
Thus, the only remaining issue before the Board is
likelihood of confusion. Our determination of likelihood
of confusion must be based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
We turn first to the relatedness of the goods and
services as listed in the cited registrations and in the
instant applications. Applicant has recited services in
International Class 38 including the electronic
transmission of messages and data. This is identical to
the dominant services recited in opposer’s cited
registrations. Although opposer’s registration for the
mark QWEST CONNECTIONS used in connection with telephone
calling card services has been cancelled under Section 8 of
the Act, it still has a registration for the mark QWEST
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 7 -
ADVANTAGE for prepaid, encoded telephone calling cards in
International Class 9. Accordingly, we find that
applicant’s goods and services are closely related, if not
identical, to registrant’s goods and services. At such
time as applicant were to use these marks on the identified
goods and recited services, the parties’ respective goods
and services would be presumed to travel through the same
channels of trade to the same classes of ordinary
consumers.
We turn next to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound and connotation.
Applicant argues that CONQUEST differs significantly
in appearance, pronunciation and connotation from the marks
on which opposer bases its opposition, namely, QWEST, QWEST
COMMUNICATIONS, QWEST EXPRESS and QWEST ADVANTAGE.
As to appearance, applicant’s mark, CONQUEST, is a
two-syllable word with the leading syllable being “CON-.”
QWEST is a one-syllable word spelled with the letter “W”
rather than the letter “U.” When applicant’s two-syllable,
CONQUEST mark is compared with opposer’s composite marks
containing the word QWEST, we note that each comprises
three or more syllables, with QWEST being the sole or
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 8 -
leading word in the mark. When compared in their
entireties, we find that CONQUEST is dissimilar from QWEST,
QWEST COMMUNICATIONS, QWEST EXPRESS and QWEST ADVANTAGE11 in
overall appearance.
As to sound, the emphasis in the word CONQUEST will
likely be on the first syllable. In each of the cited
marks, the QWEST sound would draw the emphasis when the
marks are spoken. As noted above, the sound of the word
CONQUEST is decided different than the sound of opposer’s
QWEST, QWEST COMMUNICATIONS, QWEST EXPRESS and QWEST
ADVANTAGE marks.
We cannot be sure what different connotations
prospective consumers may draw from opposer’s house mark,
QWEST. It is possible some will make an association with
opposer’s position as the local telephone service provider
in the western states, and will see the term as “Q-west.”
For these consumers, applicant’s CONQUEST mark would have a
very different connotation from opposer’s marks. However,
as argued by applicant, even for the consumers who view
QWEST as if it were the word “quest,” the word “quest” has
the connotation of “seeking,” “pursuit” or “search.”
11 We note in particular that as to the goods in International
Class 9 (pre-paid, encoded telephone calling cards), the marks
would be CONQUEST versus QUEST ADVANTAGE.
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 9 -
Applicant contends that by contrast, the word “conquest”
has the connotation of conquering or being victorious.12 We
agree that the respective parties’ marks have different
connotations.
Accordingly, after comparing the respective parties’
marks as to appearance, sound and connotation, we conclude
that the marks are dissimilar in their overall commercial
impressions.
As to the strength of opposer’s QWEST marks, it does
appear as if the term is arbitrary, and hence is considered
to be inherently distinctive. However, although opposer
attempts to rely upon court cases saying that its QUEST
house mark is famous, there is no evidence in the record as
to the volume of sales or advertising, the length of use,
etc. Hence, we cannot make a determination on the renown
of opposer’s marks in the field of telephone calling cards
and telecommunication services. Moreover, there is no
evidence in the record shedding any light on the question
of the number and nature of any similar marks in use on
similar goods and/or services. Accordingly, as to the
strength of opposer’s marks, the du Pont factors focusing
12 Applicant cites to Webster’s Ninth New Collegiate
Dictionary, Merriam-Webster, Inc., 1986.
Oppositions Nos. 91122617, 91122620, 91124190 & 91124392
- 10 -
on fame of opposer’s marks, and the use of similar marks by
third parties, must be viewed as neutral factors in our
final determination of likelihood of confusion.
In conclusion, after weighing all the relevant du Pont
factors, although the goods and services herein are closely
related or identical, we find it determinative that the
respective marks create quite different overall commercial
impressions. Hence, we find that opposer, as plaintiff in
these actions, has not shown by a preponderance of the
evidence that there is a likelihood of confusion herein.
Decision: The oppositions are dismissed and the
applications will be forwarded for the issuance of the
respective notices of allowance.