TravelQuest Ltd.v.Davis Companies, Inc.

Trademark Trial and Appeal Board

Jan 30, 2002

No. 92029135 (T.T.A.B. Jan. 30, 2002)

1/30/02

Cataldo

Cancellation No. 29,135

TravelQuest Ltd.

v.

Davis Companies, Inc.

Before Seeherman, Quinn and Walters,
Administrative Trademark Judges.

By the Board:

Travelquest Ltd. (“petitioner”) seeks to cancel the
registration of Davis Companies, Inc. (“respondent”) for
the mark TRAVELQUEST for “travel agency services, namely,
making reservations and bookings for transportation.”1 A
brief review of the relevant history of this proceeding
is believed helpful at this time.
On September 22, 2000, respondent filed a motion to
compel responses to certain of its discovery requests.
On September 26, 2000, petitioner filed a motion for
summary judgment. On October 16, 2000, respondent served

1 Registration No. 2,247,978 was issued on May 25, 1999, for an
application filed on May 30, 1996 and reciting September 3, 1996
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 29,135
2
a response in opposition thereto and a cross motion for
summary
judgment. In an order issued on May 4, 2001, the Board
noted that petitioner’s motion for summary judgment
alleged, in part, an unpleaded issue; namely, prior use
of “Travelquest” and “Travelquest Ltd” as a trade name.
Accordingly, the Board deferred consideration of the
parties’ cross motions for summary judgment. In
addition, with regard to the unpleaded matter, the Board
allowed petitioner thirty days in which to amend its
petition for cancellation to assert, if appropriate,
prior use of “Travelquest” or “Travelquest Ltd” as a
trade name, and likelihood of confusion therewith. The
Board further allowed respondent thirty days thereafter
in which to serve its answer to the amended petition for
cancellation, and serve a supplemental response in
opposition to petitioner’s motion for summary judgment
directed toward petitioner’s claim of prior use of
“Travelquest” or “Travelquest, Ltd” as a trade name, and
likelihood of confusion as a result of such use.
On May 22, 2001, petitioner served an amended
petition for cancellation. As grounds for the amended
petition to cancel, petitioner asserts that since at

as the date of first use of the mark in commerce in connection
Cancellation No. 29,135
3
least May 1981, petitioner has been using the mark
TRAVELQUEST in connection with the provision of travel
agency services, namely, making reservations and bookings
for transportation; that its use of TRAVELQUEST has been
valid and continuous since the date of first use, and has
not been abandoned; that since at least May 1981,
petitioner has been using “Travelquest” as a trade name
and business name in connection with the provision of the
above services; that since at least July 27, 1981,
petitioner has been using “Travelquest Ltd” as a trade
name and business name in connection with the above
services; that petitioner’s trade name and business name
use asserted above is in a form and format analogous to
trademark use; that such use has been valid, continuous,
open and notorious and has not been abandoned; that
petitioner has built up extensive good will and consumer
recognition of its mark and trade names due to
substantial time and effort spent on advertising and
promotion thereof; and that confusion, mistake, or
deception is likely among consumers as a result of the
similarity between petitioner’s mark and trade name and
respondent’s mark, and services identified thereby.

with the services.
Cancellation No. 29,135
4
Respondent, in its amended answer filed on June 19,
2001, denies the essential allegations of the amended
petition to cancel.
In view of the foregoing, the Board will now
consider the parties’ cross motions for summary judgment.
Both

motions are fully briefed.2
In support of its motion for summary judgment,
petitioner argues that since prior to the filing date of
respondent’s intent to use application that matured into
the registration at issue herein, petitioner has provided
travel services under the mark TRAVELQUEST and the trade
names “Travelquest” and “Travelquest Ltd”; that
respondent’s mark TRAVELQUEST is virtually identical to
petitioner’s mark and trade names; that respondent’s mark
is used in connection with services that are identical to
those identified by petitioner’s mark and trade names;
and that, as a result, petitioner is entitled to summary
judgment in this matter.

2 Petitioner has filed a reply brief with its response in
opposition to respondent’s cross motion for summary judgment
which the Board has entertained because it clarifies the issues
under consideration herein. Consideration of reply briefs is
discretionary on the part of the Board. See Trademark Rule
2.127(a).
Cancellation No. 29,135
5
In support of its motion, petitioner has submitted
the declaration, with exhibits, of Camille K. D. Miller,
its President. Ms. Miller has averred that petitioner
was incorporated on July 27, 1981; that since May 1981,
petitioner has been engaged in the business of providing
travel services under the mark TRAVELQUEST; that
petitioner provides interstate and international travel
arrangements for the band “The Grateful Dead”; that
petitioner prints tour books for each travel tour it
arranges for the band;
that from 1981 until the present, petitioner has
advertised its travel services using the mark TRAVELQUEST
in telephone directories; that from 1981 until the
present, petitioner has utilized travel folders to
enclose its clients’ travel documentation, and has sent
invoices to its clients for travel services.
As part of its declaration, petitioner has submitted
a copy of its Articles of Incorporation filed July 27,
1981; copies of excerpts from its service mark
application Serial No. 75/635,652; copies of tour books
displaying the trade name “Travelquest, Ltd.” issued to
the band “The Grateful Dead” from 1985 until 1995; a copy
of a printed advertisement from the “Travel” section of
the 1995 Marin County telephone directory displaying
Cancellation No. 29,135
6
“TRAVELQUEST LTD” in connection with travel services; a
copy of a travel folder displaying the trade name
“Travelquest, Ltd”; and a copy of a June 7, 1995 invoice
submitted to one of petitioner’s travel service clients
displaying the trade name “Travelquest, Ltd”.
In its response and cross motion for summary
judgment, respondent essentially maintains that there are
material facts in dispute with regard to the following
allegations: that petitioner has been providing travel
services under the TRAVELQUEST mark; that petitioner has
rendered its services in interstate commerce prior to
filing its above referenced trademark application; that
petitioner has made travel arrangements for anyone other
than the band “The Grateful Dead”; that petitioner’s use
of its name on tour books has been continuous; that
petitioner has advertised its services in various
telephone directories or other media outlets since 1981;
and that petitioner’s travel folders or invoices were
sent to any clients other than members of the band “The
Grateful Dead”. Respondent asserts in addition that
certain facts relied upon by petitioner in its motion for
summary judgment are in fact conclusory statements; that
in addition petitioner has made an insufficient showing
of use analogous to trademark use to create public
Cancellation No. 29,135
7
identification of the term “Travelquest” with
petitioner’s services; that likewise petitioner has
failed to demonstrate sufficient use of its trade name or
mark in such a manner that would establish a public
identification thereof with petitioner’s travel services;
that petitioner has failed to produce any evidence to
support its assertions beyond that submitted with its
motion for summary judgment; and that, as a result,
summary judgment should be entered in favor of
respondent.
In reply, petitioner essentially argues that it has
submitted sufficient evidence to establish open and
notorious use of its trade name and mark in connection
with travel services to support its claim of priority and
likelihood of confusion. Petitioner asserts in addition
that all facts relied upon by petitioner in its motion
for summary judgment are based upon the personal
knowledge of petitioner’s President.
With its reply petitioner has submitted the
supplemental declaration, with exhibits, of its
President, Camille K. D. Miller, in which Ms. Miller
avers that from 1981 until the present, petitioner has
run advertisements in the travel section of the Marin
County yellow pages that always feature the mark
Cancellation No. 29,135
8
TRAVELQUEST; that according to a December 1999 invoice,
petitioner had generated 52,763 invoices since 1983 for
travel services; and that petitioner has received mail
from third parties addressed to “Travelquest”.3
As part of its supplemental declaration, petitioner
submitted a December 1999 invoice generated in connection
with petitioner’s travel services; and copies of four
pieces of correspondence addressed to petitioner as
“Travelquest”.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there
are no genuine issues of material fact in dispute, thus
leaving the case to be resolved as a matter of law. See
Fed. R. Civ. P. 56(c). The party moving for summary
judgment has
the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could

3 As previously noted in the Board’s May 4 2001 order,
objections raised by petitioner in its reply brief to
respondent’s cross motion for summary judgment on the ground of
Cancellation No. 29,135
9
resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor.
See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d
766, 25 USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA,
supra.
After a careful review of the record in this case,
we find that there are no genuine issues of material fact
and that petitioner is entitled to judgment as a matter
of law.4
Turning first to the question of priority, it is
well settled that in the absence of any evidence of
earlier use, the earliest date upon which respondent may
rely is the filing date of its application. See
Trademark Act Section 7(c). See also Larami Corp. v.
Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995).

timeliness are not well taken, and will be given no
consideration herein.
4 As a preliminary matter, we note that there is no genuine
issue as to petitioner’s standing, inasmuch as there is of
record evidence of petitioner’s use of the mark TRAVELQUEST and
Cancellation No. 29,135
10
As noted above, the application that matured into the
registration at issue herein was accorded a filing date
of May 30, 1996. Inasmuch as respondent has neither
alleged nor introduced any evidence to support a finding
that it has made earlier use of its mark, we find that
May 30, 1996 is the earliest date upon which respondent
is entitled to rely for purposes of priority.
Petitioner has submitted evidence that it first used
“Travelquest Ltd” as a trade name as early as 1981, and
that between 1985 and 1995 it used “Travelquest Ltd” on
tour books in connection with travel services provided to
the band “The Grateful Dead.” (Exhibit E.) In addition,
petitioner submitted evidence by declaration that it
advertised its travel services using the TRAVELQUEST mark
in telephone directories during that same period.
(Declaration of Camille K. D. Miller.) Petitioner has
submitted such a telephone directory advertisement
displaying at least the trade name “Travelquest Ltd” in
connection with travel services. (Exhibit F.) Moreover,
petitioner has submitted evidence by declaration that
between 1983 and 1999, petitioner generated over 57,000
invoices bearing its trade name “Travelquest Ltd” in

trade names “Travelquest” and “Travelquest Ltd.” See 15 U.S.C.
§ 1064. See also TBMP § 303.
Cancellation No. 29,135
11
connection with its travel services. (Supplemental
Declaration of Camille K. D. Miller.)
We find that there is no genuine issue that
petitioner has advertised and rendered travel agency
services to the public under the trade name “Travelquest
Ltd” to such an extent that the public will associate
that trade name with its travel services. Accordingly,
we find no genuine issue as to petitioner’s priority of
use of “Travelquest Ltd” as a trade name.
We find unpersuasive respondent’s contention that
petitioner’s use of its trade name, “Travelquest Ltd” in
connection with providing travel agency services for the
band “The Grateful Dead” is insufficient for the purpose
of establishing priority in the context of a cancellation
proceeding based upon likelihood of confusion. First,
trade name use alone, if prior, is sufficient to bar
registration and, thus, when appropriate, justify
cancellation. See Malcolm Nicol & Co. v. Witco Corp.,
881 F.2d 1063, 1065, 11 USPQ2d 1638, 1639 (Fed. Cir.
1989); and Alfred Elecs. v. Alford Mfg. Co., 333 F.2d
912, 918, 142 USPQ 168, 172 (CCPA 1964).
Second, there is nothing in the statute which
requires a party to render its services to more than one
client in order to establish priority. See Trademark Act
Cancellation No. 29,135
12
§§ 2(d) and 14. As noted above, petitioner averred that
it has provided travel agency services under its trade
name since 1981, and submitted evidence demonstrating
that it has so rendered its services to the band “The
Grateful Dead” for a substantial period of time, i.e.,
ten years. Third, petitioner has shown that it is an
independently incorporated entity, such that the services
it has rendered to the band “The Grateful Dead” must be
deemed to be rendered for the benefit of another, the
definition of a “service.” Certainly there is nothing in
the record to suggest, nor does respondent allege, that
petitioner is merely an affiliate of the band.
Moreover, while "use in commerce" of a mark is
necessary to obtain registration, prior use of a
designation in intrastate commerce is sufficient to
sustain a petition for cancellation based on likelihood
of confusion. See Section 14 of the Trademark Act. See
also Corporate Document Services, Inc. v. I.C.E.D.
Management, Inc., 48 USPQ2d 1477 (TTAB 1998); Hess’s of
Allentown, Inc. v. National Bellas Hess, Inc., 169 USPQ
673 (TTAB 1971); and Odom Sausage Co. v. Doskocil
Sausage, Inc., 169 USPQ 379, (TTAB 1971).
In short, respondent cites no authority for its
contention that petitioner’s use of its trade name in
Cancellation No. 29,135
13
connection with travel services rendered to a single
client is not sufficient to establish priority of use.
Petitioner has demonstrated that it has made trade name
use in the United States of “Travelquest Ltd” in
connection with travel services rendered to the band “The
Grateful Dead.” Petitioner has submitted further
evidence that its use of the trade name “Travelquest Ltd”
is ongoing and has not been abandoned.
As noted above, petitioner has submitted
uncontroverted evidence that it provides travel services
under the trade name “Travelquest Ltd”. In response to a
motion for summary judgment, an adverse party may not
rest upon mere denials of the moving party’s assertions,
but the response, by affidavits or as otherwise provided
in the rule, must set forth specific facts showing that
there is a genuine issue for trial. See Fed. R. Civ. P.
56(e). See also Copelands' Enterprises Inc. v. CNV Inc.,
945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991), and
Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Thus,
respondent’s unsupported allegations that petitioner’s
trade name use is insufficient to create an association
in the mind of the relevant purchasing public of
Cancellation No. 29,135
14
“Travelquest Ltd” with petitioner’s services fails to
create a genuine issue of material fact for trial.
In view of our finding as to petitioner’s prior
trade name use, it is not necessary for us to reach the
question of whether petitioner has made prior trademark
use, or use analogous to trademark use.
Turning to the question of likelihood of confusion,
we find that there is no genuine issue of material fact
for trial. The services identified by the mark in
respondent’s Registration No. 2,247,978 are “travel
agency services, namely, making reservations and bookings
for transportation”. Petitioner has introduced evidence
that it provides identical services under a trade name
that is virtually identical to respondent’s mark.
Accordingly, respondent’s unsupported assertion that
petitioner has not made bona fide use of “Travelquest
Ltd” as a trade name associated with travel services is
not well taken. As we pointed out previously,
respondent has failed to disclose any evidence that
points to the existence of a genuine issue of material
fact on the issue of likelihood of confusion.
In view thereof, respondent’s assertions that
petitioner has not submitted evidence concerning its
advertising, marketing, revenues, customer identities,
Cancellation No. 29,135
15
budgets and customer contacts, are unpersuasive. As we
stated, there is no genuine issue as to petitioner’s
priority, and that respondent is using a mark virtually
identical to petitioner’s trade name to identify
identical services.
The Board notes respondent’s arguments that
petitioner has made insufficient responses to its
discovery requests, and that respondent has filed a
motion to compel further responses thereto. We further
note that respondent raised numerous arguments with
regard to the sufficiency of the evidence submitted by
petitioner in support of its motion for summary judgment.
However, respondent in no way contended that it was
unable to present by affidavit facts essential to justify
its opposition to the motion. In other words,
respondent’s papers cannot be deemed a motion for
discovery under Fed. R. Civ. P. 56(f) in order to respond
to the summary judgment motion. See Fed. R. Civ. P.
56(f). See also Opryland USA Inc. v. Great American
Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992); and Keebler Co. v. Murray Bakery Products, 866
F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989). On the
contrary, respondent filed a response in opposition to
petitioner’s motion for summary judgment and, in
Cancellation No. 29,135
16
addition, filed its own cross motion for summary
judgment. Thus, we find that adjudication of this matter
by summary judgment is appropriate at this time.
In sum, we find that there are no genuine issues of
material fact and that petitioner is entitled to judgment
as a matter of law. In view thereof, petitioner's motion
for summary judgment is granted, judgment is entered
against respondent, and Registration No. 2,247,978 will
be cancelled in due course. Respondent’s cross motion
for summary judgment is denied.5

5 Respondent’s motion to compel is moot.