TriStar History and Preservation Inc.

Trademark Trial and Appeal Board

Sep 3, 2015

No. 86078454 (T.T.A.B. Sep. 3, 2015)

This Opinion is Not a
Precedent of the TTAB
Mailed: September 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In Re TriStar History and Preservation Inc.
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Serial Nos. 86078454 and 86111943
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Christopher M. DeBacker of the Law Office of Mark Brown LLC,
for TriStar History and Preservation Inc.

Caitlin Watts-FitzGerald, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Bucher, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
TriStar History and Preservation Inc. (“Applicant”) seeks registration of the two
marks shown below
1 2

1 Application Serial No. 86078454, filed September 30, 2013, under Section 1(b) of the
Trademark Act, based on an alleged intent to use the mark in commerce. The registration
includes this description of the mark: “The mark consists of two overlapping globes with
Serial Nos. 86078454 and 86111943
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for “Air transportation of passengers and freight.” The Examining Attorney refused
registration under Section 2(d) of the Act on the ground that Applicant’s marks so
resemble four marks registered to American Airlines Inc. (“Registrant”) for various
types of model airplanes that use of Applicant’s marks in connection with
Applicant’s services is likely to cause confusion or mistake or to deceive. The cited
American Airlines marks are TWA in typed form3 and the three marks shown below
4 5

meridians and parallels located in the space where the two globes overlap. The letters T, W,
and A located in the center of the overlapping globes in a bold and italicized font.”
2 Application Serial No. 86111943, filed November 6, 2013 under Section 1(b) of the Act.
3 Registration No. 2615260, issued September 3, 2002, for “toys, namely, model airplanes
made of plastic and metal.” Renewed.
4 Registration No. 2736074, issued July 15, 2003, for “toys, namely model airplanes made
of plastic, wood and metal.” Renewed. The registration includes this description of the
mark: “The mark consists of the words ‘TRANS WORLD’ as well as a fanciful depiction of
the world map appear on the sides of the airplane. The letters ‘TWA’ appear on the rear tale
wing of the airplane. The belly of the airplane is blue with a red solid stripe appearing on
top of the blue. The applicant is not claiming those portions of the drawing that appear in
broken/dotted lines as part of the mark.” Color is not claimed as a feature of the mark.
5 Registration No. 2746294, issued August 5, 2003, for “Scale model airplanes.” Renewed.
The registration includes this description of the mark: “The mark consists of three stripes of
equal weight, positioned on both sides of the aircraft. The stripes are blue at the top, white
in the middle and red at the bottom. In addition, the phrase ‘TWA’ is lined for the color red.
and outlined in the color white and is positioned in the front and on both sides of the
aircraft and on the tail of both sides of the aircraft. The drawing also consists of the phrase
‘AN AMERICAN AIRLINES COMPANY’. This phrase is blue except for the word
‘AMERICAN’ which is red. This phrase is located toward the front of the aircraft below the
letters ‘TWA’ and above the blue, white and red stripes. The remaining body of the entire
aircraft is polished silver.” Color is not claimed as a feature of the mark.
Serial Nos. 86078454 and 86111943
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6
After the refusals became final, Applicant appealed and Applicant and the
Examining Attorney filed briefs.7
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).

6 Registration No. 3038805, issued January 10, 2006, for “scale model airpanes” (sic).
Section 8 Affidavit accepted, Section 15 Affidavit acknowledged. The registration includes
this description of the mark: “The body, wings and engine of the plane are silver. There are
three (3) stripes placed horizontally along the plane. The stripes are blue, white and red in
descending order. The letters ‘T-W-A’ are red outlined in white.” Color is not claimed as a
feature of the mark.
7 The Examining Attorney’s objection to the attachments to Applicant’s Appeal Brief is
sustained and the materials have been given no consideration because they are untimely.
Trademark Rule 2.142(d).
Serial Nos. 86078454 and 86111943
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Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
Applicant’s stylized TWA word mark is virtually identical to the cited mark
TWA in typed format.8 Indeed, there is nothing distinctive about Applicant’s
stylization, and in any event, because the cited mark is in typed form, it may be
displayed in the same stylized format as Applicant’s mark. See, e.g., In re Viterra,
101 USPQ2d at 1909 (citations omitted). In other words, the marks look virtually
identical, sound identical and convey identical meanings.
While Applicant’s other mark includes “two overlapping globes with meridians
and parallels located in the space where the two globes overlap,” it also, quite
prominently, includes “[t]he letters T, W, and A located in the center of the
overlapping globes in a bold and italicized font” (emphasis supplied). It is settled
that where, as here, a mark is comprised of a literal element and a design, such as
Applicant’s TWA design mark, the literal element is normally accorded greater

8 There is no substantive difference between “standard character” marks and marks in
“typed” form. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012)
(“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the
preferred nomenclature was changed in 2003 to conform to the Madrid Protocol … we do
not see anything in the 2003 amendments that substantively alters our interpretation of
the scope of such marks”).
Serial Nos. 86078454 and 86111943
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weight, because consumers are likely to remember and use the words, term or
acronym to request the goods or services. See id. at 1911 (“the verbal portion of a
word and design mark likely will be the dominant portion”); see also, In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the
marks comprises both a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services” and “because applicant’s mark shares with registrant’s mark that element
responsible for creating its overall commercial impression, the marks are
confusingly similar”). The dominance of the initialism TWA in Applicant’s globe
design mark is only reinforced by its appearance, as Applicant describes it, “in a
bold and italicized font.” In short, Applicant’s globe design mark looks similar to
TWA in typed form, sounds identical and conveys a highly similar meaning.
While Applicant’s marks are less similar to Registrant’s TWA design marks, the
fact remains that TWA is the dominant element of not only Applicant’s globe design
mark but also the cited marks in Registration Nos. 2746294 and 3038805, because
the “three stripes” in each of these marks are not in any way distinctive and “TWA”
appears twice in each of these marks. While the mark in Registration No. 2746294
also includes the phrase “AN AMERICAN AIRLINES COMPANY,” this phrase
merely highlights the fact that TWA is the ongoing source of the model airplanes,
and that it is part of American Airlines. As for the mark in Registration No.
2736074, the words “TRANS WORLD” do not meaningfully distinguish it from
Applicant’s mark because this merely indicates what the TWA initialism stands for,
and that TWA/Trans World Airlines is the source of the model airplanes, while the
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“world map” design is not distinguishing because Applicant’s design mark contains
“two overlapping globes,” which are essentially a type of “world map.” In short,
while there are more differences between Applicant’s marks and Registrant’s design
marks than Registrant’s typed mark, Applicant’s marks and Registrant’s design
marks are still more similar than different, in how they look and sound and in the
meaning they convey.
Furthermore, given the close similarity between Applicant’s design mark and
Registrant’s cited typed mark, and that Applicant’s stylized mark is virtually
identical to the cited typed mark, this factor not only weighs heavily in favor of a
finding of likelihood of confusion, but also reduces the degree of similarity between
the goods and services that is required to support a finding of likelihood of
confusion, at least with respect to Registrant’s typed mark. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Entertainment Co.
v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001).
Turning to the goods and services and channels of trade, at first glance the only
relationship between Applicant’s “air transportation of passengers and freight” and
Registrant’s model airplanes is that both relate to aviation in some manner.
However, the Examining Attorney has established that the relationship is deeper
than that. Specifically, she introduced evidence that United Airlines, US Airways
and American Airlines9 not only sell model airplanes, but do so on the same
websites through which they also sell services including “air transportation of

9 We do not require evidence to recognize these as major, well-known airlines.
Serial Nos. 86078454 and 86111943
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passengers.” Furthermore, their model airplanes bear the same marks under which
the airlines sell “air transportation of passengers.” The following webpages
introduced by the Examining Attorney are either part of, or accessible directly
through, the airlines’ websites which sell air transportation services:

Serial Nos. 86078454 and 86111943
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Serial Nos. 86078454 and 86111943
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In many cases, a mere three examples of a relationship between the goods and
services and channels of trade might not be particularly persuasive standing alone.
However, we must account for the field and industry at issue, in this case aviation
and airlines. We do not require evidence to know that by its nature, aviation is
exceedingly difficult and expensive. Accordingly, the airline industry’s barriers to
entry are substantial, and in fact insurmountable for all but a few. We do not
require evidence to know that there are a small number of major airlines.
Therefore, the Examining Attorney’s three examples of relatedness are more than
sufficient in the oligopolistic airline industry.
Furthermore, we cannot ignore that Applicant’s marks display TWA in what
appears to be the exact same font and style as the “TWA” appearing on the tails of
the airplanes comprising the designs in cited Registration Nos. 2736074, 2746294
and 3038805. Consumers aware that major airlines sell model planes and familiar
with Registrant’s cited marks will be likely, upon seeing that the TWA in
Applicant’s marks is presented in the same manner as the TWA on the tails of
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Registrant’s design marks, to assume a connection between the sources of
Applicant’s services and Registrant’s goods. See Monogram Models, Inc. v. Ford
Motor Company, 176 USPQ 498 (TTAB 1972) (finding likelihood of confusion from
use of same mark for full-sized automotive vehicles and scale model assembly kits
for automobiles).
“Even if the goods and services in question are not identical, the consuming
public may perceive them as related enough to cause confusion about the source or
origin of the goods and services.” Hewlett-Packard Co. v. Packard Press Inc., 227
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“even if the goods in question are
different from, and thus not related to, one another in kind, the same goods can be
related in the mind of the consuming public as to the origin of the goods”). Here, the
evidence establishes that the goods and services are related and move in the same
channels of trade. These factors therefore also weigh in favor of a finding of
likelihood of confusion.
Applicant argues that there is no likelihood of confusion between the goods and
services because it is a
nonprofit entity with the intent to transport passengers
and freight for the purposes of education and historical
preservation. Thus, [Applicant’s] audience, consumers of
the services with which [Applicant’s] mark is used, are
those individuals and businesses interested in historical
preservation of aircraft and the aircraft industry in the
United States. [Applicant] will be intimately involved in
interaction with its customers and participants, and there
would be no source confusion involved with customers and
participants who are using the [Applicant’s] services.
Serial Nos. 86078454 and 86111943
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Applicant’s Appeal Brief at 3. We are not persuaded. As the Examining Attorney
points out, “[t]he authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application, regardless of what the record may reveal as to the particular
nature of an applicant’s goods, the particular channels of trade or the class of
purchasers to which sales of the goods are directed.” Octocom Systems, Inc. v.
Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). In other words, we must base our decision on the “air transportation of
passengers” services identified in the applications, which the evidence shows are
offered on airline websites with model airplanes which bear the same mark.
Finally, Applicant argues that confusion is unlikely because the relevant
consumers are sophisticated and careful. While we accept that consumers of air
transportation will exercise at least some care, that is not enough to prevent
confusion in this case, because the relevant consumers, i.e., members of the general
public, are also accustomed to airlines providing these services as well as model
airplanes, and because Applicant’s marks are so similar to the cited marks. In any
event, even assuming that this factor weighs against a finding of likelihood of
confusion, it is outweighed by the similarities between the marks, the relatedness of
the goods and services and the overlapping channels of trade.
Conclusion
Applicant’s marks and Registrant’s typed mark are quite similar as their
dominant, literal element is virtually identical, and there are more similarities than
dissimilarities between Applicant’s marks and Registrant’s design marks.
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Furthermore, the goods and services identified in the applications and cited
registrations are related and move in overlapping channels of trade.
Decision: The Section 2(d) refusals to register Applicant’s marks are affirmed.