Rent A Toll, Ltd

Trademark Trial and Appeal Board

Dec 3, 2013

No. 85100224 (T.T.A.B. Dec. 3, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 3, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rent A Toll, Ltd.
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Serial No. 85100224
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Stanley R. Moore of Winstead PC for Applicant Rent A Toll, Ltd.

Leslie Richards, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow,
Managing Attorney).
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Before Quinn, Greenbaum and Adlin, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Rent A Toll, Ltd. (applicant) seeks registration on the Principal Register of
the standard character mark ZIPTOLL for services ultimately identified as “toll
payment processing services for rental car customers” in International Class 36.1
The examining attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the previously registered standard character mark ZIP CASH (CASH
disclaimed) for “roadway electronic toll collection services” in International Class

1 Application Serial No. 85100224, filed on August 4, 2010, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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36,2 as to be likely to cause confusion, when used in connection with applicant’s
services.
When the refusal was made final, applicant filed a request for
reconsideration, in which it proposed an amendment to the original recitation of
services. Upon reconsideration, the examining attorney accepted the proposed
amendment, which resulted in the recitation set forth above, but maintained her
refusal. This appeal ensued. As discussed below, we affirm the refusal to register.
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We turn first to a comparison of applicant's mark ZIPTOLL and registrant's
mark ZIP CASH in their entireties in terms of sound, appearance, meaning and
commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In comparing the
marks, the test is not whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are sufficiently similar in

2 Registration No. 3296212, issued September 25, 2007, owned by the North Texas Roadway
Authority. Section 8 affidavit accepted; Section 15 affidavit acknowledged.
Serial No. 85100224
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terms of their overall commercial impressions that confusion as to the source of the
services offered under the respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains a general, rather than a
specific, impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). In addition, while marks must be compared in their
entireties, it is well settled that one feature of a mark may have more significance
than another, and there is nothing improper in giving greater weight to the more
significant feature. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
In this case, the shared word ZIP is the dominant and most significant
feature of both marks, not only because it appears first in the marks (See Palm Bay,
73 USPQ2d at 1692), but also because it has stronger source-identifying potential
than the other elements of the marks. “Toll” is defined as “a fee for using a road: a
fee charged for a privilege, usually crossing a bridge or using a road,”3 and clearly is
descriptive of the subject matter of applicant’s “toll payment services for rental car
customers.” Also, the disclaimed word CASH merely describes a significant feature
of registrant’s “roadway electronic toll collection services,” which provide an
electronic alternative to collecting cash for tolls at toll booths. Descriptive and
disclaimed matter typically is less significant or less dominant when comparing
marks. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); National Data Corp, 224 USPQ at 752.

3 Definition from Encarta , attached to April 19, 2011 Office action.
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In addition, rather than distinguishing the marks, the terms TOLL and
CASH add to the overall similarity of the marks ZIPTOLL and ZIP CASH as a
whole. In each mark, the identical word ZIP is followed by a one-syllable, four-letter
word that certainly is not arbitrary when used in connection with the respective toll
services of applicant and registrant. The presence or absence of a space between the
words is an immaterial difference that purchasers of the services likely would not
notice or remember. As a result, the two marks as a whole have a visually similar
structure and a similar overall sound.
To the extent that ZIP is suggestive of speed, this term has the same
meaning with respect to the services associated with both marks. Furthermore, the
words TOLL and CASH have related meanings, in that cash may be used to pay a
toll. Thus, when these words are combined with the identical word ZIP, the marks
ZIPTOLL and ZIP CASH as a whole have a similar meaning in relation to the
services, and they create similar overall commercial impressions. Purchasers are
likely to assume that ZIPTOLL and ZIP CASH identify related types of toll services
from a single source, rather than identifying a different source for the services.
In view of the foregoing, we find that, when applicant's mark and registrant's
mark are compared in their entireties, they are sufficiently similar in appearance,
sound, connotation and commercial impression that, if used in connection with
related services, confusion would be likely to occur. As such, this du Pont factor
favors a finding of likelihood of confusion.
Serial No. 85100224
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We next turn to consider the second du Pont factor regarding the similarity
or dissimilarity of the services. It is well settled that the services of applicant and
registrant need not be identical or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of confusion. It is sufficient that
the respective services of applicant and registrant are related in some manner, or
that the conditions and activities surrounding the marketing of the services are
such that they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the marks, give rise to the
mistaken belief that they originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In
re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The issue, of course, is not whether purchasers would confuse the services, but
rather whether there is a likelihood of confusion as to the source of the services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
We make our determination regarding the similarity of the services, channels
of trade and classes of purchasers based on the services as they are identified in the
application and registration, respectively. Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Accordingly, we must compare applicant’s services, which are identified as “toll
payment processing services for rental car customers” to registrant’s “roadway
electronic toll collection services.”
Serial No. 85100224
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All vehicles, including rental vehicles, that travel on toll roads must pay a toll
to use the road, and that toll must be collected and processed. We therefore find
that applicant’s and registrant’s services, by their very nature, are closely related
with similar or related functions and purposes.
Moreover, the record shows that it is common for a single entity, whether a
private company such as applicant, or a public authority such as registrant, to
provide toll collection and toll payment processing services. In fact, applicant owns
seven registrations for various marks under which it offers both types of services.4
In addition, the Oklahoma Turnpike Authority and the North Carolina Department
of Transportation/North Carolina Turnpike Authority each own a registration
covering both electronic toll collection and toll bill payment services.5 These third-
party registrations, while not evidence of use of the marks therein, may serve to
suggest that the services are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The examining attorney also submitted printouts from registrant’s website
and several third-party websites showing that toll collection and toll
payment processing services are offered by the same entity.6 Indeed, toll authorities

4 Reg. Nos. 3800515; 3270193; 3374593; 3403431; 3401861; 3293904; and 4106955, all for
“providing electronic toll collection and toll bill payment processing services.” See April 19,
2011 Office action.

5 Reg. No. 4033204 for “electronic toll collection and toll bill payment processing services for
highways; electronic toll collection and toll bill payment processing services for parking
lots,” and Reg. No. 4071715 for “electronic toll collection and bill payment services,”
respectively. See April 19, 2011 Office action.

6 See April 19, 2011 and September 16, 2012 Office actions.
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such as registrant commonly offer toll collection and payment processing services
for all types of vehicles that use toll roads, including rental cars. For example, the
Washington State Department of Transportation collects and
processes tolls, and the website features a section regarding tolls for fleets,
commercial accounts and rental car drivers. Similarly, Florida’s Turnpike
Enterprise offers electronic toll collection and processing
services, and the website includes several FAQs pertaining to rental car drivers.
The Florida Department of Transportation offers “rental car toll payment solutions
for Florida’s toll roads” . The Colorado Department of
Transportation , the Massachusetts Department of
Transportation and the Illinois Tollway
also provide electronic toll collection programs and toll
payment processing services, and the Illinois Tollway website includes FAQs
pertaining to rental car drivers.
In addition, rental car companies such as Avis and Budget
offer electronic toll collection programs and toll payment processing
services in several states and Puerto Rico, and the Highway Toll Administration
offers “electronic toll collection services to the vehicle-rental industry,”
and “has processed more than 10 million electronic toll collection transactions with
data from both transponder-based and license-plate-based video tolling.”7
Based upon the foregoing, we find that it is not uncommon for providers of
roadway electronic toll collection services to also provide toll payment processing

7 See September 16, 2012 Office action.
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services for rental car customers, that applicant's services are related to those
provided by registrant and that the parties’ services are of a type that may be
marketed under the same marks. We further find that, in the absence of restrictions
set forth in the respective identifications, the parties’ respective services must be
presumed to be rendered in the same or similar trade channels.
As to the classes of purchasers, where the services in a cited registration are
broadly identified as to their nature and type, such that there is no limitation as to
the classes of purchasers, it is presumed that in scope the recitation of services
encompasses all the services of the nature and type described therein and that the
identified services would be purchased by all potential buyers thereof, including, in
this case, rental car drivers who are using toll roads. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981) (citing Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ
139 (CCPA 1958)).
Applicant states that its “services are focused on rental vehicles and payment
of tolls to the tollway authority,” and that applicant works “as an intermediary
between the toll authority and the rental car or fleet company to ensure payment of
tolls by car renters.” As applicant explains on its website, applicant “provides an
automatic and simple toll payment service that allows you to add ALL of your tolls
to your rental car receipt!” This service guarantees tolls to the toll authority, and
allows car renters to use express lanes on toll roads.8 Registrant, a toll authority,
offers “two ways to pay your tolls with cashless tolling.” Customers can “open a

8 February 22, 2011 response to Office action.

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TollTag account or pay a ZipCash invoice online.” Registrant’s website includes a
link specifically for rental car drivers.9 Thus, applicant and registrant both offer
their toll services to drivers, including rental car drivers, who use toll roads.
Moreover, as the evidence discussed above makes clear, public entities such as
registrant and private entities such as applicant and rental car agencies commonly
offer their toll collection and toll payment processing services to rental car drivers.
Accordingly, the du Pont factors of similarity of services, channels of trade and
classes of purchasers support a finding of likelihood of confusion.
We next consider third-party use. As applicant points out, evidence of third-
party use can show that a registrant’s mark is weak and thus entitled to a limited
scope of protection. To this end, applicant submitted copies of ten active third-party
registrations that include the word ZIP for various services in International Class
36, owned by different entities.10 Third-party registrations cannot assist applicant
in registering a mark that is likely to cause confusion with a registered mark. See
AMF Incorporated v. American Leisure Products, Inc., 177 USPQ 268 (CCPA 1973).
The third-party registrations are of limited value as they are not evidence of use of
the marks in commerce or that the public is familiar with them. See, e.g., Albert
Trostel & Sons, 29 USPQ2d at 1785-86; and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 at n. 6 (TTAB 1988). Moreover, the relevant du Pont factor
requires consideration of the number and nature of similar marks used in
connection with similar services. See du Pont, 177 USPQ at 567. Here, unlike the

9 April 19, 2011 and September 16, 2012 Office actions.

10 February 22, 2011 Response to Office action.
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marks in the application and cited registration, none of the third-party registrations
concerns toll services. Accordingly, there is no evidence that the term ZIP is weak in
the field of toll payment processing or toll collection services. In any event, based on
this evidence, we certainly cannot find that the scope of protection accorded
registrant’s mark should not extend to applicant’s highly similar mark for closely
related services. Thus, the du Pont factor of the number and nature of similar
marks in use on similar services is neutral.
Applicant suggests that selection of its services and registrant’s services
would require care. However, this allegation is not supported by any evidence and,
even if some purchasers exercise a high level of care, there is no reason to assume
that applicant’s and registrant’s services do not appeal equally to less careful
purchasers. In any event, even assuming that a careful selection is involved, it is
settled that even sophisticated purchasers are not immune from source confusion,
especially in cases such as this, involving very similar marks and closely related
services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers...are not infallible.”). See also In re Decombe, 9 USPQ2d
1812 (TTAB 1988). We find that the similarities between the marks and the
services sold thereunder outweigh any presumed sophisticated purchasing decision.
See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
Serial No. 85100224
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marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods). Thus, the factor regarding conditions of purchase is neutral.
When we consider the record and the relevant likelihood of confusion factors,
and all of applicant's arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that in view of the substantial similarity
in the appearance, sound, meaning and commercial impressions of applicant's mark
ZIPTOLL, and registrant's mark, ZIP CASH, their contemporaneous use on the
closely related services involved in this case is likely to cause confusion as to the
source or sponsorship of such services.
Decision: The refusal to register under Section 2(d) of the Trademark Act is
affirmed.