Son Tours, Inc.

Trademark Trial and Appeal Board

Jul 24, 2007

No. 78557069 (T.T.A.B. Jul. 24, 2007)

Mailed:
July 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Son Tours, Inc.
________

Serial No. 78557069
_______

Lawrence P. Colton of Powell Goldstein LLP for Son Tours,
Inc.

Michelle E. Dubois, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hohein, Grendel and Mermelstein, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark SON TOURS (in standard character form) for
services recited in the application, as amended, as
“organizing, booking and arranging educational multi-night
field trips for students,” in Class 39.1 Applicant has

1 Serial No. 78557069, filed on January 31, 2005. The
application is based on use in commerce under Trademark Act
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78557069
2
disclaimed the exclusive right to use TOURS apart from the
mark as shown.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that, as used in connection with the services
recited in the application, applicant’s mark SON TOURS so
resembles the mark SUNTOURS, previously registered on the
Principal Register (in standard character form) for Class
39 services recited in the registration as “operation of a
travel agency, tour agency, travel bureau, and booking
office,”2 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
The appeal is fully briefed. After careful
consideration of the evidence of record and the arguments
of counsel, we affirm the refusal to register.
Initially, two evidentiary issues require discussion.
First, we note that with its response to the Trademark
Examining Attorney’s first Office action, applicant

Section 1(a), 15 U.S.C. §1051(a). March 1, 1996 is alleged in
the application to be the date of first use of the mark anywhere
and the date of first use of the mark in commerce.

2 Registration No. 0961781, issued on June 19, 1973. Affidavits
under Sections 8 and 15 accepted and acknowledged, respectively.
The registration has been renewed twice. The registration
identifies October 1966 as the date of first use of the mark
anywhere and the date of first use of the mark in commerce.
Ser. No. 78557069
3
submitted a listing from the Office’s TESS database of
third-party registrations and applications in which the
word “travel” appeared in the identification of goods
and/or services and in which the marks included the word
SUN and/or the word TOURS. These listings were submitted
in support of applicant’s argument that, under the sixth du
Pont likelihood of confusion factor, the cited registered
mark SUNTOURS was a weak mark in the travel field. (See
discussion infra.) In her final Office action, the
Trademark Examining Attorney informed applicant that the
TESS listing “is not competent evidence” because the
listing did not include the identifications of goods and/or
services covered by the listed registrations and
applications. However, the Trademark Examining Attorney
did not specifically advise applicant that a mere listing
of third-party registrations was insufficient to make the
registrations of record, and that complete printouts of the
registrations were required.
Because the Trademark Examining Attorney did not
specifically advise applicant that the mere listing of
third-party registrations was insufficient to make the
registrations of record, we deem the TESS listing of third-
party registrations submitted by applicant with its
response to the first Office action to be evidence of
Ser. No. 78557069
4
record in this appeal, for whatever probative value it may
have. See, e.g., In re Hayes, 62 USPQ2d 1443, 1445 n.3
(TTAB 2002); In re Broyhill Furniture Industries Inc., 60
USPQ2d 1511, 1513 n.3 (TTAB 2001); TBMP Section 1208.02.
Second, for the first time with its appeal brief,
applicant submitted printouts of six third-party
registrations which had been included in the TESS listing
previously made of record by applicant.3 In her appeal
brief, the Trademark Examining Attorney has objected to
this evidence on the ground that it is untimely under
Trademark Rule 2.142(d). In its reply brief, applicant
contends that the Trademark Examining Attorney has waived
any objection to this evidence because she had not
specifically objected, prior to her appeal brief, to the
TESS listing in which the six registrations were included,
and the printouts submitted with applicant’s brief were
merely more complete versions of the registrations
identified in the TESS listing. Applicant also notes that
it had specifically discussed two of these third-party
registrations in the text of its response to the first

3 Applicant submitted printouts of two additional third-party
registrations with its appeal brief. However, in its reply
brief, applicant has withdrawn its reliance on those two
registrations because they were not included in the previously-
submitted TESS listing of third-party registrations.
Ser. No. 78557069
5
Office action, without subsequent comment or objection by
the Trademark Examining Attorney.
Trademark Rule 2.142(d), 37 C.F.R. §2.142(d), provides
in pertinent part that “[t]he record in the application
should be complete prior to the filing of an appeal. The
Trademark Trial and Appeal Board will ordinarily not
consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed.”
In this case, we find that the third-party registration
evidence attached to applicant’s appeal brief is untimely
and can be given no consideration. The mere fact that some
of the registrations appeared in the TESS listing
previously submitted by applicant, or were mentioned by
applicant in its previous responses (in passing, and
without supporting exhibits), does not entitle applicant to
supplement the record by submitting complete copies of the
registrations for the first time with its appeal brief.
Such supplementation of the record should have been made
prior to appeal. For these reasons, we shall not consider
the untimely evidence submitted by applicant for the first
time with its appeal brief.4

4 We hasten to add that even if this evidence had been
considered, it would not have changed the result in this case.
See discussion infra.
Ser. No. 78557069
6
We turn now to the merits of the Section 2(d) ground
of refusal at issue in this appeal.
Our likelihood of confusion determination under
Section 2(d) 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 (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under the first du Pont factor, 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 terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
Ser. No. 78557069
7
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). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Finally, in cases such as
this, where the applicant’s services are legally identical
to the the services in the cited registration (see
discussion infra), 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 identical. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992).
Applying these principles in the present case, we find
as follows. In terms of appearance, applicant’s mark and
the cited registered mark are not identical, in that (a)
applicant’s mark is depicted as two words, while the
registered mark is depicted as one word, and (b) the second
Ser. No. 78557069
8
letter of applicant’s mark is “O” while the second letter
of the registered mark is “U”. However, we find that these
points of dissimilarity are outweighed by the fact that,
except for the second letter, all of the other letters in
the marks look and are the same, and appear in the same
order. On balance, we find that the marks are similar in
terms of appearance.
In terms of sound, we find that the marks are
identical.
In terms of connotation, we find that the marks are
similar to the extent that both incorporate the generic
word TOURS, but that they are dissimilar due to the
different meanings of SON and SUN in the respective marks.
SON in applicant’s mark connotes a male child, while SUN in
the registered mark connotes our solar system’s star. To
that extent, the marks connote different things. However,
we are not persuaded by applicant’s further argument that
the word SON in its mark
possesses additional meaning within the Christian
religion and this trademark application wherein
“Son” references the male child of God in the
Holy Trinity. Applicant has chosen the word
“Son” to evoke readily this connotation when
consumers consider Applicant’s services.
Specifically, the suggestion of Christian
services further suggests Christian worship and
fellowship.

Ser. No. 78557069
9
(Reply brief at 3.) As discussed below, nothing in
applicant’s recitation of services limits applicant’s
services to services which are provided only to Christian
persons or groups who would understand applicant’s mark to
refer to the “Son of God.” (We note as well that the
printout of applicant’s website submitted with the
application as applicant’s specimen of use makes no
reference to or claim that the services are primarily or
solely directed to Christians.) Thus, the services must be
presumed include those to be marketed and rendered to
secular purchasers. These purchasers reasonably could be
expected to understand the word SON in applicant’s mark to
have its more obvious meaning as “male child,” either as a
reference to “sons” in general or perhaps as a reference to
the son of applicant’s owner or principal. In short,
although we are not persuaded by applicant’s argument that
the marks have different connotations because applicant’s
mark has a religious connotation that the registered mark
does not, we still find that the marks are dissimilar in
connotation because of the different meanings of SON and
SUN.
In terms of overall commercial impression, we find
that SON TOURS and SUNTOURS are somewhat dissimilar to the
extent that the registered mark creates an impression of
Ser. No. 78557069
10
“travel in a sunny climate,” while applicant’s mark SON
TOURS does not, due to the “male child” meaning of SON.
Considering the marks in their entireties in terms of
appearance, sound, connotation and overall commercial
impression, we find that the marks are similar rather than
dissimilar. Although the marks have somewhat dissimilar
connotations and resulting commercial impressions, they are
highly similar in terms of appearance and they are
identical in terms of sound. It is settled that similarity
in sound alone may be sufficient to support a finding that
the marks are similar and that confusion is likely. See
Krim-Ko Corp. v. The Coca-Cola Company, 390 F.2d 728, 156
USPQ 523 (CCPA 1968). This is especially true in this
case, where the application and registration are for
services which may be referred to or recommended by word of
mouth. See Miles Laboratories, Inc. v. Whorton Pharmacal
Co., 199 USPQ 758 (TTAB 1978). On balance, we find that
the marks are similar, especially given the legally
identical services involved herein and the resulting
diminished degree of similarity between the marks which is
necessary to support a finding of likelihood of confusion.
The first du Pont factor weighs in favor of a finding of
likelihood of confusion.
Ser. No. 78557069
11
The second du Pont factor requires us to determine the
similarity or dissimilarity of the services as recited in
the application and in the cited registration. It is
settled that it is not necessary that the respective
services be identical or even competitive in order to
support a finding of likelihood of confusion. That is, the
issue is not whether consumers would confuse the services
themselves, but rather whether they would be confused as to
the source of the services. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient, instead, that the
services be related in some manner, or that the
circumstances surrounding their use be such that they would
be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
thereon, to a mistaken belief that they originate from or
are in some way associated with the same source or that
there is an association or connection between the sources
of the respective services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Applicant’s services as recited in the application are
“organizing, booking and arranging educational multi-night
Ser. No. 78557069
12
field trips for students.” The services recited in the
cited registration are “operation of a travel agency, tour
agency, travel bureau, and booking office.”
We find that the “tour agency” services recited in the
cited registration are the same as, or encompass,
applicant’s “organizing, booking and arranging educational
multi-night field trips for students.” Applicant’s
“educational multi-night field trips” are, essentially,
travel tours, and applicant, essentially, is a tour
operator. This is apparent from applicant’s name and mark,
and from applicant’s website (submitted as the specimen
accompanying the application), where applicant repeatedly
refers to its services as “tour” services. For example:
“SON TOURS is one of the finest Educational Tour Operators
you will find”; “One of our expert tour representatives
will develop a tour plan based on your needs for a
successful school trip”; “Our tours focus on education and
experience”; and “In addition to accompanying the tour free
of charge, teachers will receive a stipend...”
We also find that the “booking office” services
recited in the cited registration are identical to, or
encompass, the “booking” element of applicant’s services.
We also find that applicant’s services are related to
and encompassed by the “travel agency” services recited in
Ser. No. 78557069
13
the cited registration. The Trademark Examining Attorney
has made of record eight use-based third-party
registrations in which the recitations of services include
both applicant’s and registrant’s types of services.5
Although such registrations are not evidence that the marks
shown therein are in use or that the public is familiar
with them, they nonetheless have probative value to the
extent that they serve to suggest that the services listed
therein are of a kind which may emanate from a single
source under a single mark. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).

5 For example: Reg. No. 2124185 includes “travel agency
services, namely, assisting in planning and arranging travel,
trips, tours, vacations, and sports adventures...”; Reg. No.
2256536 includes “travel agency services, namely, arranging,
organizing, and conducting travel tours and trips...”; Reg. No.
2643884 includes “travel services, namely, arranging tours...;
making reservations and bookings for transportation; arranging
educational trips for youths and trips for clubs and
organizations”; Reg. No. 2658145 includes “organizing and
arranging vacation trips, travel, tours and sightseeing, namely
organizing and arranging custom and packaged vacation trips,
travel tours and sightseeing tours; wholesale and retail travel
agency services, namely making reservations and bookings for air,
ground and sea transportation services”; and Reg. No. 2915776,
which includes “travel agency services, namely making
reservations and bookings for temporary accommodations; travel
agency services, namely making reservations and bookings for
transportation; arranging travel tours; tour operator services,
namely, tour guide services, conducting sightseeing tours for
others; tour planning services for others; organizing and
conducting group trips and tours for others of a cultural,
religious or spiritual nature.”
Ser. No. 78557069
14
Also of record is a Wikipedia entry for “travel
agency” which states, inter alia, that “many [travel
agencies] concentrate on arranging charter or group trips
to different destinations.” Additionally, a printout from
the website www.travelcraftusa.com informs purchasers that
“We are a full service travel agency specializing in
student travel, group tours and educational trips of all
kinds...”
Based on this evidence, we find that applicant’s
services are highly similar, and indeed legally identical,
to the services recited in the cited registration. The
second du Pont factor accordingly weighs heavily in favor
of a finding of likelihood of confusion.
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels in which
the services (as recited in the application and in the
cited registration) are marketed. Applicant’s recitation
of services might be read as limiting applicant’s trade
channels to the educational travel market. However,
because the recitation of services in the cited
registration includes no limitations as to trade channels,
we must presume that they are offered in all normal trade
channels in which the recited services might move. In re
Elbaum, 211 USPQ 639 (TTAB 1981). Even assuming that the
Ser. No. 78557069
15
educational travel market constitutes its own category
within the travel industry, we find that it is among the
normal trade channels in which the travel and tour agency
services recited in the cited registration would be
marketed. Additionally, applicant’s argument that its
trade channels and purchasers are further or more
specifically limited to a Christian tour group “niche” is
unavailing, because no such limitation appears in
applicant’s recitation of services. In any event, even if
such a niche exists and applicant’s services fall within
it, that niche still would be encompassed within the broad
recitation of travel-related services recited in the cited
registration. For these reasons, we find that the third du
Pont factor weighs in favor of a finding of likelihood of
confusion.
Under the fourth du Pont factor, which requires us to
consider the conditions of purchase, we find that the
purchasers of the services at issue in this case likely
would include individuals making travel arrangements, as
well as organizations seeking the services of an operator
of group tours. There is no evidence which would suggest
that these purchasers are likely to exercise more than an
ordinary degree of care when seeking out and/or purchasing
travel services. Even assuming that travel tours might in
Ser. No. 78557069
16
some cases be somewhat expensive, we cannot conclude that
they would always be so, or that the services necessarily
are so expensive that a heightened degree of care would be
involved in their purchase. To the extent that the fourth
du Pont factor might be deemed to weigh in applicant’s
favor in our likelihood of confusion analysis, we find that
it does so only slightly.
The sixth du Pont factor requires us to consider the
number and nature of similar marks in use on similar
services. Applicant, relying on a TESS listing of third-
party registrations and applications, argues that there are
numerous third-party uses of SUN and of TOURS for travel-
related services.6 However, we find that this TESS listing
is of limited or no probative value. First, the list does
not include the particular goods and/or services covered by
each application or registration. Second, the expired or
cancelled registrations and the abandoned applications
included on the list have no probative value. Likewise,
the pending applications included on the list are evidence
only of the fact that the applications were filed. In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002); In

6 As discussed, the third-party registration evidence submitted
by applicant for the first time with its appeal brief is untimely
and has been given no consideration, and would not have affected
the outcome in this case in any event.

Ser. No. 78557069
17
re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB
1992). Next, we note that the list’s probative value is de
minimis because it includes only one existing registration
of a mark which includes both SUN and TOURS (Reg. No.
1124343, of the mark SUN-PLEASURE TOURS). Finally, even if
we were to deem the listed registrations themselves to be
properly of record, it is settled that third-party
registrations are not evidence of third-party use, for
purposes of the sixth du Pont factor. See Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992).7
For these reasons, we find that the sixth du Pont
factor does not weigh in applicant’s favor in this case; at
best it is neutral in our analysis.
Applicant contends, under the seventh du Pont factor,
that it is unaware of any instances of actual confusion
between applicant’s mark and the cited registered mark
despite ten years of contemporaneous use. However, we note
that there is no evidence, under the eighth du Pont factor,
that there has been a significant opportunity, such as

7 Applicant does not argue that these third-party registrations
are probative as evidence (similar to dictionary evidence) of the
meaning of the words SUN and TOURS. However, we find that the
evidence, even if it is deemed to be probative on that question,
is unnecessary given the undisputed and well-known meanings of
the words themselves.

Ser. No. 78557069
18
geographic overlap, for actual confusion to have occurred.
Moreover, we have not heard from registrant on the
question. In any event, it is settled that the absence of
actual confusion is of little probative value in an ex
parte case such as this. In re Majestic Distilling Co.,
supra.
Having considered all of the evidence of record as it
pertains to the du Pont factors, and for the reasons
discussed above, we find that a likelihood of confusion
exists. We have considered applicant’s arguments to the
contrary, but we are not persuaded. To the extent that any
doubts might exist as to the correctness of our conclusion
that confusion is likely, we resolve such doubts against
applicant. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc., supra.

Decision: The refusal to register is affirmed.