Star Networks, Inc.v.Sprint Communications Co. L.P.

Trademark Trial and Appeal Board

Apr 26, 2002

No. 91099949re (T.T.A.B. Apr. 26, 2002)

4/26/02

Paper No. 68
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Star Networks, Inc., substituted for Internet, Inc.
v.
Sprint Communications Company L.P.
_____

Cancellation No. 22,034
and
Opposition No. 99,949
_____

Request For Reconsideration
_____

John K. Uilkema of Thelen, Reid & Priest LLP for Star
Networks, Inc., substituted for Internet, Inc.

Robert D. Hovey of Hovey, Williams, Timmons & Collins for
Sprint Communications Company L.P.
_____

Before Hairston, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
The Board, in its decision, dated December 28, 2001,
denied the petition to cancel and dismissed the
opposition by plaintiff (hereinafter petitioner) against
defendant’s (hereinafter respondent) registrations of the
mark THE MOST and THE MOST WORLDWIDE and its application
for the mark THE MOST FOR BUSINESS. Petitioner, on
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 22034 & Opposition No. 99949
2
February 25, 2002 (via certificate of mailing) timely
filed a request for reconsideration.1 Respondent filed a
response thereto.
According to petitioner, the Board erred in that our
decision is based on a comparison of the parties’ actual
businesses, rather than on a comparison of the broad
services of respondent with those of petitioner, as
identified in the respective registrations and
application. Specifically, petitioner notes the Board’s
statement (decision, p. 35) that “[d]ata transfer over
telephone lines may technically be a form of
‘telecommunications,’ in the broadest possible sense of
that word.” Based on this statement, petitioner
concludes that the Board found the identifications in
petitioner’s registrations describing banking services as
“electronic funds transfer services and electronic
processing and transmission of point of sale payment data
between merchants and customers accounts” and business
management services as “computerized management of
payment systems, transfer of value systems and supporting
data related thereto” to define a form of
telecommunications. However, according to petitioner,

1 Petitioner’s consented motion to extend its time to file a
request for reconsideration was approved by the Board on
February 25, 2002.
Cancellation No. 22034 & Opposition No. 99949
3
the Board erroneously concluded that the “technical form
of ‘telecommunications’ defined in petitioner’s
registrations is not self-sustaining and requires
something more” .... “that, to prevail, petitioner must
establish that it offers telecommunications services
separate from its banking and financial services”
(petitioner’s request for reconsideration, pp. 6-7).
Finally, petitioner contends that petitioner should
prevail because one of respondent’s registrations is
broadly set forth as “telecommunication services”; and
that the decision must be based solely on the
identifications of services set forth in the
registrations and application, regardless of extrinsic
evidence of the parties’ use.2
Respondent asserts that petitioner took a single
sentence out of context from the totality of the Board
decision, and extrapolated it into a “fallacious”

2 Petitioner specifically argued two other matters: (i) “[n]or
is it relevant that petitioner may not separately be offering
telecommunication services”; and (ii) “[e]ssentially what the
Board has done is to give the broadly defined
‘telecommunication’ services of the respondent a definition
requiring that the services be offered to the general public, as
such, and then to require that petitioner establish that it is
so using its marks.” (Request for reconsideration, p. 7.) We
did not require that petitioner establish the offering of its
services to the general public (although services must be
offered to the benefit of others rather than merely facilitating
the conduct of one’s own business); and we generally disagree
Cancellation No. 22034 & Opposition No. 99949
4
conclusion that petitioner is in the telecommunications
business. Respondent further argues that the Board
clearly found that petitioner is not in the
“telecommunications” business; and that petitioner’s
electronic funds transfer services (and the other
services petitioner contends include telecommunications
services) do not amount to a telecommunications service
as shown by the record.
We have carefully reviewed this matter, and we
remain of the opinion that petitioner did not establish
that its services, as identified, encompass
“telecommunication services”; that petitioner even offers
“telecommunications services”; and/or that petitioner’s
involved identified services are related to those of
respondent. Petitioner is attributing an unacceptably
broad and expansive interpretation to all of its
identifications of services. A reasonable reading of
petitioner’s involved identifications of services (which
all begin with one of the following opening phrases:
“banking services, namely, ...,” or “financial services,
namely...,” or “business management services,
namely,...”) makes it clear that those services do not
encompass “telecommunications services.”

that these matters are irrelevant with regard to the question of
Cancellation No. 22034 & Opposition No. 99949
5
With regard to our statement (on page 35 of our
decision) about data transfer over telephone lines
possibly technically being a form of telecommunications,
we simply meant that it was not clear on this record.
The evidence did not support petitioner’s position, and
the recitations were not clear enough on the face of the
identifications of services. Therefore, we went beyond
the identifications of services3 to ascertain if we could
find for petitioner, and we found that we could not do so
because it was not reasonable to read into the wording of
petitioner’s identifications of services the meanings
petitioner sought to attribute to them. Petitioner’s
problem in these consolidated cases relates to a failure
of proof by petitioner, as the party with the burden of
proving its case. Our decision made clear that the
record was filled with vague and ambiguous testimony and
evidence from petitioner, and that petitioner had not
proven the relatedness of the involved services, as
identified.
Inasmuch as the Board finds no error in its December
28, 2001 decision, petitioner’s request for
reconsideration is denied. The decision previously

the registrability of marks. See TMEP §1301.
3 See In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).
Cancellation No. 22034 & Opposition No. 99949
6
issued by the Board stands; and the petition to cancel is
denied and the opposition is dismissed.