Roseway Transportation, Inc.

Trademark Trial and Appeal Board

Jul 31, 1997

EX (T.T.A.B. Jul. 31, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 31, 97
Paper No. 9
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Roseway Transportation, Inc.
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Serial No. 74/592,435
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Jayne Conway Hunter of W. Thad Adams, III, P.A. for Roseway
Transportation, Inc.
Leigh Case, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney)
_______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Roseway Transportation Inc. has appealed from the
Examining Attorney's refusal to register ROSE WAY and
design, as shown below, for "freight transportation by truck
and other intermodal means."1

1 Application Serial No. 74/592,435, filed October 31, 1994,
and asserting first use and first use in commerce as of July 1,
1994.
Ser No. 74/592,435
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark, as used on its identified services, so
resembles the mark ROSE TRANSPORT and design, shown below,
registered, with a disclaimer of the word "Transport" for
"transportation of goods by truck," as to be likely to cause
confusion or mistake or to deceive.

Applicant and the Examining Attorney have filed briefs,
but an oral hearing was not requested.
In any likelihood of confusion analysis, two key
factors are the similarities of the marks and the similarity
of the services.
With respect to the services, we find that they are in
part identical, applicant's identification including
"freight transportation by truck" and the registrant's
being for "transportation of goods by truck." There is no
dispute that the registrant's identification would encompass
the transportation of freight.2

2 We also take judicial notice of the dictionary definitions of
"freight": "goods carried by a vessel or vehicle; lading;"
Ser No. 74/592,435
3
Because these services are legally identical, we must
assume that they are offered to the same classes of
customers through the same channels of trade. We note that
applicant has submitted a Dun & Bradstreet report which
states that the registrant "sells to Mulch Manufacturing and
some industrial concerns," and that it is related, through
common principals, with this company. Applicant also asserts
that an employee of registrant stated to applicant that the
majority of its transportation services was for Mulch
Manufacturing.3 As a result, applicant argues that
applicant's and registrant's services are offered in
different channels of trade, and that such channels of trade
are likely to continue.
The problem with applicant's position is that the
question of likelihood of confusion must be determined on
the basis of the identification of goods or services set
forth in the subject application and the cited registration.
See In re William Hodges & Co., Inc., 190 USPQ 47 (TTAB
1976). Thus, for purposes of our analysis, we must consider
that registrant's services are offered to all customers, and
through all channels of trade, which are appropriate for
such services. We would also point out that neither the Dun
& Bradstreet report, nor the statement of registrant's

"goods transported as cargo by a commercial carrier, as
distinguished from baggage, mail, and express." The American
Heritage Dictionary of the English Language, New Coll. ed.
(1976).
3 The Examining Attorney has not raised any evidentiary
objections to these submissions, and we will therefore deem any
objections to have been waived.
Ser No. 74/592,435
4
employee reported by applicant, show that registrant's
services are offered exclusively to Mulch Manufacturing.
Thus, even based on the evidence of record, we must conclude
that registrant's services are offered to the relevant
public.
We turn now to a consideration of the marks, keeping in
mind that "when marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines." Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant has
provided a detailed analysis of their differences, pointing
out, for example, that in the cited mark the rose appears in
place of the letter "O" in ROSE, while in applicant's mark
the rose is to the right of ROSE WAY. And, obviously, one
mark has the word TRANSPORT while the other has the word
WAY. Despite, these differences, however, we find that the
marks convey the same commercial impression. ROSE is the
first word of both marks, and the importance of this word is
reinforced in both marks by the rose designs. The
additional words TRANSPORT and WAY have less source-
indicating significance. TRANSPORT is clearly descriptive
of the registrant's transportation services, as evidenced by
the fact that it has been disclaimed. WAY has a suggestive
significance with respect to applicant's transportation
services, meaning "a course affording passage from one place
to another; a road, path, or highway"; "a course that is or
Ser No. 74/592,435
5
may be used in going from one place to another"; and
"progress or travel along a certain route or in a specific
direction." It may also indicate "the manner of doing
something or a course of action."4
Thus, while we have compared both marks in their
entireties, the word ROSE and the reinforcing rose design
must be considered the dominant parts of both marks.
Further, because ROSE is an arbitrary term for freight
transportation services,5 even if consumers realize that
applicant's mark has the term WAY, while registrant's mark
has the term TRANSPORT, they are likely to assume that they
are variant marks which both indicate services emanating
from a single source. As for the differences in the
location of the rose design, or the slight differences in
typescript used in the two marks, such differences are not
likely to be remembered by consumers, who do not, under
actual marketing conditions, have the luxury to make side-
by-side comparisons between marks, and instead must rely on
hazy past recollections. See Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255 (TTAB 1980). Again, even if these

4 The American Heritage Dictionary of the English Language, New
Coll. ed. (1976). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd.
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 Applicant has asserted that there is no evidence that ROSE
TRANSPORT and design is a famous mark, and we agree with this
position. However, a mark may be considered to be "strong" even
if it is not famous. Thus, it is well-established that invented
words and arbitrary marks are given a broader scope of
protection without proof of fame.
Ser No. 74/592,435
6
minor differences were noticed, consumers are likely to
assume that the marks are variants of each other, but that
both identify a single source for the services.
Applicant has argued that the services of freight
transportation by truck and other intermodal means are not
impulse purchases, but are chosen with careful
consideration. We do not disagree with this statement.
However, even careful purchasers are not immune from
confusion when very similar marks are used on identical
services. Thus, one who has heard good reports of ROSE
TRANSPORT for transportation of goods by truck is likely,
for the reasons stated above, to assume, upon seeing an
advertisement for ROSE WAY and design for freight
transportation by truck services, that these services
emanate from the same source.
Finally, applicant asserts that there has been no
evidence presented of actual confusion. However, the
absence of such evidence is not probative the confusion is
not likely to occur, particularly in this case where
applicant has used its mark only since July 1994, and where
we have no information as to the extent of applicant's use,
whether it is operating in the same trading areas as
registrant, and so on. We also point out that we have had
no opportunity to hear from the registrant as to whether it
has experienced any instances of confusion.
Ser No. 74/592,435
7
Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board