SkyTel Corp.v.Vehicle Access Corporation, Incorporated

Trademark Trial and Appeal Board

Nov 14, 2000

No. 91106611re (T.T.A.B. Nov. 14, 2000)

Paper No. 35
BAC
11/14/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
SkyTel Corp.
v.
Vehicle Access Corporation, Incorporated
_____
Opposition No. 106,611
to application Serial No. 75/089,963
filed on April 17, 1996
_____
Request For Reconsideration
_____
Laurence R. Hefter and Lisa Peller London of Finnegan,
Henderson, Farabow, Garrett & Dunner for SkyTel Corp.
Marc A. Bergsman of Dickinson Wright PLLC for Vehicle
Access Corporation, Incorporated.
______
Before Simms, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
The Board, in its decision, dated June 27, 2000,
sustained the opposition by SkyTel Corp. to the
registration of the mark applied for by
applicant, Vehicle Access Corporation, Incorporated.
The time to request reconsideration of that decision
ended on July 27, 2000 pursuant to Trademark Rule
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 106611
2
2.129(c). However, on August 9, 2000, applicant filed a
“request for copy of the final decision and motion to
reset the time to file a notice of appeal”; and on August
23, 2000 applicant filed a “motion to reopen time to file
request for reconsideration,” along with applicant’s
“request for reconsideration of the final decision.”
Opposer filed a brief in opposition to applicant’s
request for reconsideration.
In its motion to reopen the time to file a request
for reconsideration, applicant stated that it did not
receive a copy of the June 27, 2000 decision from the
Board, and thus, applicant could not docket any
subsequent dates. In view of applicant’s attorney’s
statements to this Board, applicant’s time to file a
request for reconsideration is hereby extended to August
23, 2000, and applicant’s request for reconsideration,
filed on that date, is considered timely filed.1
Applicant asserted three Board errors on page 2 of
its request, specifically: (1) the Board compared
opposer’s paging and messaging services with a component
of applicant’s goods, rather than with applicant’s

1 Applicant’s attorney obtained a facsimile copy of the June 27,
2000 Board decision from opposer’s attorney, but applicant
stated it is still without a good quality copy of the Board
decision. In view thereof, a copy of the June 27, 2000 Board
decision is enclosed herewith for applicant’s attorney.
Opposition No. 106611
3
product itself; (2) the Board did not properly weigh
evidence regarding consumer care; and (3) the Board did
not properly
evaluate the strength of opposer’s marks. Later, on page
13, in the “conclusion” section of its request, applicant
set forth the following six asserted errors by the Board:
(1) improperly basing our analysis on the similarity of
the parties’ goods and services on a comparison of
opposer’s services with a component of applicant’s goods
and not on the goods themselves despite “unrebutted
evidence that consumers will not care about the
components of applicant’s product”; (2) failing to
independently evaluate the conditions under which, and
buyers to whom, sales would be made, and, instead,
treating this du Pont2 factor as a sub-element of the
similarity or dissimilarity of the goods and services;
(3) improperly ignoring the evidentiary weight that
should have been accorded the third-party registrations
introduced to show that “SKY” has been “commonly adopted
in connection with communications related services”; (4)
improperly considering statements outside of the evidence
in evaluating the third-party registrations; (5)
improperly ignoring that opposer commissioned a consumer
Opposition No. 106611
4
recognition survey and failed to introduce the results
thereof; and (6) improperly ignoring that opposer
admitted consumers do not associate “SKYPAGER”
exclusively with opposer.
Inasmuch as applicant’s initial list of three
asserted errors is subsumed within its later list of six
asserted errors, we will address the six alleged errors.
Applicant’s argument regarding our finding on the
relatedness of the goods and services is not well taken,
and our factual finding on this du Pont factor is fully
supported in our original decision. Simply put, we did
not compare a component of applicant’s goods with
opposer’s services. Rather, as we are constrained to do,
and as explained in the original decision, we compared
applicant’s goods as identified in the application with
opposer’s services as registered. Applicant’s
identification of goods reads “vehicle anti-theft systems
comprising cellular telephones, pagers, two way pagers,
and satellite signal processors.” A fair and reasonable
reading of this identification is that applicant intends
to sell a “system” (not a “device,” a term used
frequently in applicant’s request for reconsideration)
composed of not one, but all of the items listed--

2 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
Opposition No. 106611
5
“cellular telephones, pagers, two way pagers and
satellite signal processors” (emphasis added). Moreover,
in applicant’s business plan (a “confidential” exhibit to
applicant’s co-founder Harvey Carmel’s testimony) under
the heading “Technology Description,” applicant clearly
emphasizes the significant role that paging goods and
services will play in the operation of applicant’s
system. For example, it includes statements such as
“SKYLOCK uses a specially designed digital controller
that is activated by signals from existing paging
networks”; “[i]t is important that we have a sound long
term relationship with paging providers”; and “[a] paging
service will be selected that can provide nationwide
coverage.”
Moreover, while applicant again argues that only one
of the types of “backbones” for the system will be
selected, the identification of goods is not so limited.
Harvey Carmel, applicant’s co-founder, testified that
applicant has not commenced use and that paging services
remain a viable option for the operation of applicant’s
system. In addition, Mr. Carmel’s testimony that

563 (CCPA 1973).
Opposition No. 106611
6
applicant’s customers will not be concerned about which
backbone system is used is mere speculation.3
Further, both the record and our previous decision
reflect that opposer has worked with other companies to
offer services other than paging, including businesses
such as a monitoring of courier boxes and of vending
machines, as well as a partnership with a company to work
on “developing” a vehicle monitoring system (albeit the
latter has not yet evolved).
We are not convinced by applicant’s attempt to
distinguish the case of In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984). There is no requirement in the Martin’s case that
in order for the Board to find goods and/or services are
complementary, we must essentially find the same facts as
the Court found with regard to “wheat bran and honey
bread” and “cheese.”
We find no error in our factual finding that
applicant’s “vehicle anti-theft systems comprising
cellular telephones, pagers, two way pagers, and

3 We note opposer’s objection to applicant’s argument in
footnote 4 of applicant’s request for reconsideration. Opposer
contends, and we agree, that the information in footnote 4 is an
untimely attempt to introduce unsubstantiated evidence regarding
the likely degree of care of purchasers. The information in
applicant’s footnote 4 has not been considered.
Opposition No. 106611
7
satellite signal processors” and opposer’s “paging” and
“messaging” services are complementary and related.
Regarding our finding about the conditions under
which, and the buyers to whom, sales would be made, this
is again a factual finding with which applicant simply
disagrees. Our decision was clear that (i) the goods and
services, as identified, carry no restrictions at all,
making applicant’s argument that it will target fleet
vehicle owners irrelevant; and (ii) even if opposer’s
core customer base is frequent business travelers, and
its target market is all males ages 25 to 45, applicant’s
co-founder testified that applicant’s vehicle anti-theft
system could be used in passenger cars, showing that
applicant’s goods could be directed to the general
public, thereby encompassing opposer’s target customers.
Thus, there is no error in our finding that the
conditions of sale and the purchasers for the involved
goods and services overlap.
Applicant next contends that we improperly ignored
the weight to be accorded the third-party registrations
submitted by applicant to show the weakness of the term
SKY in connection with communications services. This is
again reargument of arguments previously made,
specifically that the third-party registrations show the
Opposition No. 106611
8
SKY prefix has been commonly adopted. As we pointed out
in our previous decision, none of applicant’s third-party
registrations cover the specific goods/services involved
herein, namely “paging services” or “vehicle anti-theft
systems.” The mere fact that a word is registered by
others for other goods and/or services, does not
establish that the word is commonly adopted and thus weak
in the relevant field. Further, importantly, the
registrations are not evidence of use or that the public
is familiar therewith. See Smith Brothers Manufacturing
Company v. Stone Manufacturing Company, 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and AMF Incorporated v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268 (CCPA 1973).
Applicant argues that the Board went outside the
record and discounted the evidentiary weight of the
third-party registrations because we considered opposer’s
argument in its reply brief regarding ownership and
settlement or license agreements in relation to some of
the third-party registrations. Even assuming that we now
completely ignore opposer’s attorney’s statements on
ownership or settlement/license agreements, nonetheless,
the most relevant fact remains that applicant submitted
no evidence of the public’s awareness of the third-party
Opposition No. 106611
9
marks in the marketplace. Thus, even considering all of
the third-party registrations, they are still accorded
very little weight in the circumstances of this case. In
view of the above, and because we also held that opposer
established a family of SKY prefix marks, we find no
substantive error in the weight accorded the third-party
registrations made of record by applicant.
Applicant argues that it is error for the Board to
ignore “the fact that opposer commissioned a consumer
recognition study and failed to introduce the results”;
and further, that the Board should accept as fact that
“opposer’s failure to introduce the results of the survey
means that the survey results were not favorable.” These
arguments are specious. First, even applicant
acknowledges that evidence to gauge the strength of a
mark may be submitted through direct or circumstantial
evidence. Thus, opposer is not obligated to submit
direct consumer evidence. (In this case, opposer
established that its family of marks are entitled to a
broad scope of protection through circumstantial
evidence, e.g., its numerous federal registrations, and
testimony by opposer regarding, inter alia, marketing and
advertising strategies, expenditures, sales, trade
channels, and the manner of use of opposer’s family of
Opposition No. 106611
10
marks.) Second, opposer’s witness testified as follows
regarding the “branding studies” (not “consumer
recognition surveys” as characterized by applicant in its
request for reconsideration) (McKelvey dep., p. 43):
Q. Do you recall any earlier studies?
A. Yeah, there were some branding
studies done a few years back, but off
the top of my head, I can’t remember
what the recall was for our brand.
Applicant apparently did not obtain discovery
regarding such studies, and, in any event, applicant did
not pursue this matter at trial. Thus, applicant cannot
now be heard to complain that little is known in this
record about any “branding studies” conducted by opposer.
There is absolutely no evidence on which the Board could
make any inference (negative or positive to opposer)
about the branding studies in question. In fact, the
studies could involve marks, and or goods/services
unrelated to those involved herein.
Finally, applicant’s argument that we improperly
ignored opposer’s admission that consumers do not
associate one of opposer’s marks, SKYPAGER, exclusively
with opposer is unconvincing. Applicant relies on a
portion of the testimony of opposer’s witness, McKelvey,
to assert that opposer’s mark SKYPAGER has been used
descriptively by consumers, and thus, the weight accorded
Opposition No. 106611
11
that mark is diminished. The involved testimony
(McKelvey dep., pp. 43-44), was in response to the
question “Can you explain why SkyTel has selected or
adopted several marks that all begin with the word
‘Sky’?”; and the witness’ full response is set forth
below:
When we first started off with SkyTel
– I think it was back in 1988 when we
started using the SkyTel brand for
the company, we were the first to
offer nationwide paging and we chose
a product name for our first
nationwide numeric pager called
SkyPager. And SkyTel was the only
company that had a nationwide
frequency and could deliver
nationwide paging and became the
defacto standard for nationwide
paging back in the late ’80s and
early ’90s. And the SkyPager became
so well known and so popular that
people actually begin to refer to all
nationwide paging or paging as “Sky
page me.” They started using it as a
verb, and the SkyPager became quite
well known, and it’s still used quite
often regardless of the paging
company; “Why don’t you just send me
a Sky page?” (Applicant relies on
the portion in italics.)
We simply do not read opposer’s testimony to have
the breadth and the specific legal meaning that applicant
reads into it. This testimony is from a lay witness,
and, taken in context, appears to emphasize the success
and renown of opposer’s business and SKYPAGER mark. Even
Opposition No. 106611
12
if we were to interpret this testimony as evidence of
public misuse of opposer’s SKYPAGER mark, applicant did
not counterclaim to cancel opposer’s registrations for
SKYPAGER. Applicant cannot be heard to attack the
validity of opposer’s SKYPAGER registrations at this
stage. Therefore, the SKYPAGER registrations are
entitled to the full presumptions of the law under
Section 7(b) of the Trademark Act.
Accordingly, we stand by our decision dated June 27,
2000, and applicant’s request for reconsideration is
denied.4
R. L. Simms
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board

4 Applicant’s motion to reset the time to file a notice of
appeal is moot inasmuch as the time for appeal runs from the
date of the decision on applicant’s request for reconsideration.
See Section 21(a)(2) of the Trademark Act, and Trademark Rule
2.145(d)(1).