United Parcel Services of America, Inc.v.Unigroup Worldwide, Inc.

Trademark Trial and Appeal Board

Mar 26, 2012

No. 91175419 (T.T.A.B. Mar. 26, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

United Parcel Service of America, Inc.

v.

Unigroup Worldwide, Inc.
_____

Opposition Nos. 91175419; 91175420; and 911754261
_____

Stephen M. Schaetzel and Elizabeth M. Fox of King & Spalding
LLP for United Parcel Service of America, Inc.

Mark Sableman and Hadi S. Al-Shathir of Thompson Coburn LLP
for UniGroup Worldwide, Inc.
______

Before Seeherman, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, UniGroup Worldwide, Inc., filed applications
to register on the Principal Register the marks displayed
below, all in connection with
“business management and consultation services, namely,
business and personal relocation services, and consultation

1 These proceedings were consolidated in a Board order issued on
August 13, 2007.
Opposition Nos. 91175419; 91175420; and 91175426
2
to others in the development and establishment of personnel
relocation policies” in International Class 35; and
“transportation of goods of others by means of truck,
van and other vehicles; warehousing and storage services;
and freight forwarding services” in International Class 39.
UNIGROUP WORLDWIDE UTS (typed or standard characters)2
3
and
4

2 Application Serial No. 76338321 was filed on November 15, 2001
based upon applicant’s assertion of October 4, 2001 as a date of
first use of the mark anywhere and in commerce in connection with
both classes of services. “WORLDWIDE” is disclaimed.
3 Application Serial No. 76338008 was filed on November 15, 2001
based upon applicant’s assertion of October 4, 2001 as a date of
first use of the mark anywhere and in commerce in connection with
both classes of services. “WORLDWIDE” is disclaimed.
4 Application Serial No. 76376718 was filed on February 13, 2002
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce in connection with both classes of services.
“WORLDWIDE” is disclaimed.
Opposition Nos. 91175419; 91175420; and 91175426
3
Registration has been opposed by United Parcel Service
of America, Inc. (“opposer”). As grounds for opposition,
opposer asserts that it is the owner of numerous UPS and
UPS-formative marks, including the mark UPS (typed or
standard characters), previously used and registered on the
Principal Register for
“transportation of personal property for hire by
diverse modes of transportation” in International Class 39;5
“air transportation services, namely, transportation of
passengers and personal property by air” in International
Class 39;6 and
“business management consultation provided to the
general public; and providing business management
consultation, business strategic management, and planning
services to the general public by a multi-user global
computer information network” in International Class 35.7
Opposer alleges that its UPS and UPS-formative marks
are famous; that applicant’s marks and opposer’s previously
used and registered marks are highly similar; that the
parties’ services are legally identical; that applicant’s

5 Registration No. 0966774 issued on August 21, 1973. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Second
renewal.
6 Registration No. 2491124 issued on September 18, 2001. Section
8 affidavit accepted; Section 15 affidavit acknowledged. First
renewal.
7 Registration No. 2517938 issued on December 11, 2001. Section
8 affidavit accepted; Section 15 affidavit acknowledged. First
renewal.

Opposition Nos. 91175419; 91175420; and 91175426
4
intent in adopting its marks supports a finding of
likelihood of confusion, and that, as a result, confusion,
mistake and deception are likely among consumers as to the
source thereof under Trademark Act Section 2(d); and that
opposer will be damaged thereby.8
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition. In addition,
applicant asserted the affirmative defense of unclean hands
and pursued such defense at trial.9
Evidentiary Matters
We begin by observing that both parties submitted
certain evidence and exhibits to testimonial depositions on
CD-ROM. At one time evidence could be made of record in
this manner pursuant to Trademark Rule 2.126(b). However,
by amendment effective August 31, 2007 and applicable to all
cases pending or commenced on or after that date, Trademark
Rule 2.126(b) no longer accords parties the option of making
submissions to the Board in CD-ROM form.10 In these
consolidated cases, the parties took testimony and made

8 Opposer further asserted dilution as a ground for opposition.
However, in a decision issued on November 19, 2008, the Board,
inter alia, granted applicant’s motion for judgment on the
pleadings as to such claim.
9 Applicant asserted additional affirmative defenses but did not
pursue them at trial. Accordingly, they are deemed waived.
10 Notice thereof is posted on the Trademark Trial and Appeal
Board (TTAB) page of the USPTO internet website at
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_
FinalRuleChart.pdf.

Opposition Nos. 91175419; 91175420; and 91175426
5
their evidentiary submissions after the effective date of
August 31, 2007. Accordingly, any evidence or exhibits that
were not filed on paper or by electronic means as required
under the operative Trademark Rules has not be considered in
this decision.
The Record
The record consists of the pleadings, and the files of
the involved applications. In addition, opposer took the
depositions, with accompanying exhibits, of Christopher Todd
Schenken, vice president of two subsidiaries of opposer
responsible for intellectual property. Opposer also filed
notices of reliance.
Applicant took the testimony depositions, with
exhibits, of Paul Bernardt, its managing director; Brian D.
Iles, its vice president of international relocation
services; and Kiersten Van Horne, an employee of a third-
party intellectual property investigation firm. Applicant
also filed a notice of reliance.11
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.

11 Both parties have designated portions of their testimony
depositions and evidence as “confidential.” In this decision, we
will endeavor to discuss those portions of the parties’ testimony
and evidence that truly contain confidential information only in
general terms.
Opposition Nos. 91175419; 91175420; and 91175426
6
Opposer’s Standing
Opposer has properly made of record copies of its eight
pleaded registrations.12 Opposer further has shown, by its
use and registration of marks that are at least arguably
similar to applicant’s marks, that it is not a mere
intermeddler. Accordingly, we find that opposer has
established its standing to oppose registration of
applicant’s marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Unclean Hands
Prior to our consideration of opposer’s pleaded claim
of priority and likelihood of confusion, we must first
address applicant’s affirmative defense of unclean hands to
determine whether opposer’s claim is barred thereby.
In this case, applicant argues that opposer’s conduct
in two cancellation proceedings brought against opposer by
applicant, and involving marks in registrations cancelled
thereby, constitutes unclean hands and should result in
dismissal of this proceeding. However, in the instant
proceeding opposer has neither pleaded nor relied upon in
any way the marks and registrations that were at issue in
the prior cancellation proceedings. Applicant is correct

12 Opposer’s Notice of Reliance, Exhibit 1.
Opposition Nos. 91175419; 91175420; and 91175426
7
that false statements made in the procurement or maintenance
of a registration remaining in force may preclude a party
from relying upon such registration in another proceeding.
See Duffy-Mott Co., Inc. v. Cumberland Packing Co., 165 USPQ
422, 424-5 (CCPA 1070). However, that is not the case here.
Opposer’s registrations were cancelled in the prior
cancellation proceedings brought by applicant and, as noted
above, have not been relied upon by opposer herein. As a
result, statements made by opposer as defendant in those
cancellation proceedings related to its now-cancelled
registrations do not form the basis for a claim of unclean
hands in the instant opposition.
Accordingly, we find that opposer’s claim is not barred
by applicant’s affirmative defense.
We turn now to opposer’s pleaded ground.
Priority of Use
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks therein and services certified thereby. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Likelihood of Confusion
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
Opposition Nos. 91175419; 91175420; and 91175426
8
of confusion issue. 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., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
For purposes of the du Pont factors that are relevant
to this case we will consider applicant’s involved marks and
opposer’s UPS mark that is the subject of its Registration
Nos. 0966774; 2491124; and 2517938. If likelihood of
confusion is found as to the marks and services in these
registrations, it is unnecessary to consider opposer’s other
five pleaded registrations for marks which are less similar
to applicant’s involved marks than opposer’s UPS mark.
Conversely, if likelihood of confusion is not found as to
the marks and services in these registrations, we would not
find likelihood of confusion as to the marks and services in
opposer’s other pleaded registrations.
Fame of Opposer’s UPS Mark
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s mark and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
Opposition Nos. 91175419; 91175420; and 91175426
9
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Fame may be measured indirectly by sales volume and
advertising expenditures of the goods identified by the
marks at issue, “by the length of time those indicia of
commercial awareness have been evident,” widespread critical
assessments and through notice by independent sources of the
goods identified by the marks, as well as the general
reputation of the goods. Bose Corp. v. QSC Audio Products
Inc., 63 USPQ2d 1305-1306 and 1309. Because of the extreme
deference accorded to a famous mark in terms of the wide
latitude of legal protection it receives, and the dominant
role fame plays in the likelihood of confusion analysis, it
is the duty of the party asserting fame to clearly prove it.
Opposition Nos. 91175419; 91175420; and 91175426
10
Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597
(TTAB 2009); and Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
In 1933, opposer began offering all of its delivery
services, including delivery of packages by land and air,
under the mark UPS.13 Presently, opposer employs over
400,000 people worldwide, including 60,000 drivers.14 In
2008, opposer’s delivery fleet included over 94,000 land
vehicles and 250 aircraft, all displaying the mark UPS, used
to deliver 15 million packages per day.15 Also in 2008:
opposer delivered 3.9 billion packages and documents,
including 2.1 million delivered by air in the USA; opposer’s
revenues were $51.5 billion; and opposer averaged 7.9
million customers per day.16 Opposer operates 4500 The UPS
Store retail outlets, 1000 UPS Customer Centers and 40,000
UPS drop boxes, all displaying the UPS mark.17
Opposer’s internet website (www.ups.com) displays the
UPS mark and allows users to, inter alia, arrange and track
package deliveries, obtain information regarding opposer and
its good and services.18 In 2008: opposer received an
average of 18.5 million page views per day, with a peak of

13 Opposer’s Notice of Reliance, Exhibit 4.
14 Id.
15 Id.
16 Id.
17 Id.
18 Id.

Opposition Nos. 91175419; 91175420; and 91175426
11
26.2 million; opposer processed an average of 22.7 million
online tracking requests per business day, with a peak of
35.6 million.19
Opposer advertises the services under its UPS mark on
television, radio, print media and the internet.20
Opposer’s UPS mark further is used in connection with
sponsorship of such sporting events as NASCAR and the 2008
Olympic Games in Beijing, China.21 Opposer’s advertising
budget and expenditures may generally be stated at tens of
millions of dollars per year.22 In 2009, BrandFinance
Global ranked opposer’s brand, displayed as its UPS and
shield design mark below,

the 31st most valuable trademark in the world, with a value
of $11,594 million.23
This testimony and evidence demonstrates that opposer
has expended a great deal of effort in marketing its
services under its UPS mark, and has enjoyed considerable
success for its efforts. However, such evidence falls short

19 Id.
20 Schenken Testimony, p. 55-87.
21 Id. at 103-4.
22 Id. at 98.
23 Opposer’s Notice of Reliance, Exhibit 5.
Opposition Nos. 91175419; 91175420; and 91175426
12
of demonstrating the extent to which such efforts and
recognition translate into widespread recognition of the UPS
mark among the general public for the recited services.
First, nearly all of opposer’s evidence is directed
toward its transportation services. Even if we were to find
fame on this record, such fame would apply only to opposer’s
services in International Class 39. Opposer’s showing with
regard to its services in International Class 35 clearly is
insufficient. In addition, opposer’s arguments and
testimony regarding fame are primarily directed toward its
UPS mark; however, its documentary evidence of fame displays
numerous of its pleaded and unpleaded UPS and UPS-formative
marks. For instance, the BrandFinance Global report
discussed above provides a ranking of opposer’s brand, and
displays opposer’s UPS and shield design mark as displayed
above, but does not discuss any of its marks in particular.
Opposer contends that while the ranking “displays a graphic
for each brand it ranks, it does not limit its ranking to
said graphic. The ranking is for a ‘brand’ not a particular
‘mark;’ thus, it is not limited to the graphic displayed as
visual interest on the chart.”24 We agree that the
BrandFinance Global report provides a ranking of numerous
brands, including that of opposer. However, there is no
indication in that report of the extent to which the ranking

24 Reply brief, p. 11.
Opposition Nos. 91175419; 91175420; and 91175426
13
of opposer’s brand translates to fame either of its UPS mark
or any of its other pleaded or non-pleaded marks. Simply
put, we cannot determine from opposer’s evidence of fame to
which of opposer’s marks such evidence applies.
Furthermore, opposer has provided numerical figures,
discussed above, regarding various aspects of its business
from 2008. However, opposer has not provided similar
figures for other years whereby we may determine whether
they are an anomaly, or whether they are consistent with
opposer’s business under its UPS mark for an extended period
of time. Opposer’s numerical evidence of fame further
suffers to a large extent from a lack of specificity as to
whether the numbers provided are attributable to its
operations worldwide, or only in the United States. Thus,
we are unable to determine therefrom how these numbers
translate into fame of its UPS mark in the United States.
Finally, in making our finding on this factor, we are
aware of the prior, non-precedential Board decision in
Opposition No. 91184197, involving opposer herein and a
third party, in which opposer’s UPS marks were found to be
famous. The Board’s findings in that case, however, are no
substitute for opposer’s obligation to build its own record
in the present proceeding. “The decision by another court
based upon a different record is not evidence in this
proceeding...Th[e] duty [to decide the right to registration
Opposition Nos. 91175419; 91175420; and 91175426
14
in an inter partes proceeding] may not be delegated by the
adoption of conclusions reached by another court on a
different record. Suffice it to say that an [inter partes
proceeding] must be decided on the evidence of record.”
Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d
1645, 1665-66 (TTAB 2010). In this case, opposer introduced
as evidence portions of the record from Opposition No.
91184197; however, the evidence properly of record from the
prior case is insufficient to help establish fame herein.25
In view of the above, we find that opposer has failed
to show fame. Accordingly, the fame factor is neutral.26
The Services
Turning to our consideration of the recited services,
we must determine whether consumers are likely to mistakenly
believe that they emanate from a common source.27 It is not
necessary that the services at issue be identical or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient instead that the respective services are

25 As discussed above, all evidence submitted by the parties on
CD-ROM – including any evidence so submitted that may have been
directed toward fame of opposer’s mark(s) - is in contravention
of our rules and has not been considered.
26 In our determination regarding the fame of opposer’s UPS mark,
we have considered applicant’s argument that the UPS mark should
be afforded a limited scope of protection due to its coexistence
with the United States Postal Service’s USPS mark. However, on
this record we find insufficient evidence that the USPS mark has
so weakened opposer’s UPS mark that it is entitled to only a
narrow scope of protection.
27 All three involved applications recite identical services.
Opposition Nos. 91175419; 91175420; and 91175426
15
related in some manner, and/or that the conditions and
activities surrounding the marketing thereof are such that
they would or could be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
In this case, applicant’s Class 35 “business management
and consultation services, namely, business and personal
relocation services” are encompassed by opposer’s more
broadly worded “business management consultation provided to
the general public.” In other words, opposer’s generally
worded “business management consultation” must be presumed
to include applicant’s more limited “business management and
consultation” in the field of personal relocation.
Similarly, applicant’s Class 39 “transportation of goods of
others by means of truck, van and other vehicles” are
encompassed by opposer’s more broadly worded “transportation
of personal property for hire by diverse modes of
transportation” inasmuch as opposer’s services must be
presumed to include transportation by truck, van and other
vehicles. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634
(TTAB 2009) (finding “recreational vehicles, namely, travel
trailers and fifth wheel trailers” to be encompassed by and
legally identical to “trailers”); and In re Linkvest S.A.,
Opposition Nos. 91175419; 91175420; and 91175426
16
24 USPQ2d 1716 (TTAB 1992) (finding “computer software for
data integration and transfer” to be encompassed by and
legally identical to “computer programs recorded on magnetic
disks”).
Thus, applicant’s services in both Class 35 and Class
39 are legally identical in part to those of opposer.
Because these services are legally identical, we find that
the second du Pont factor weighs in support of a conclusion
that confusion is likely.28
Channels of Trade
Because applicant’s services, as identified, are
identical in part to those of opposer, and because there are
no recited restrictions as to their channels of trade or
classes of purchasers, we must assume that the services are
available in all the normal channels of trade to all the
usual purchasers for such services, and that the channels of
trade and the purchasers for applicant’s services as well as

28 Because we find that applicant’s “business management and
consultation services, namely, business and personal relocation
services” and “transportation of goods of others by means of
truck, van and other vehicles” are legally identical to certain
of the services in opposer’s pleaded registrations, we need not
also determine the similarity or dissimilarity of opposer’s
services to the other services identified in applicant’s
applications, i.e., “consultation to others in the development
and establishment of personnel relocation policies” and
“warehousing and storage services; and freight forwarding
services.” Similarity as to any of the services identified in
the applications and pleaded registrations will suffice as a
basis for finding the respective services to be similar for
purposes of the second du Pont factor. See, for example, Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981).
Opposition Nos. 91175419; 91175420; and 91175426
17
those of opposer would be the same. See Interstate Brands
Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). It
is settled that in making our determination regarding the
relatedness of the services provided by the parties, we must
look to the services as identified in the involved
application and pleaded registration. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The 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 the sales of goods are directed.”). See
also Paula Payne Products v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”). As a result of the foregoing, we find that this
du Pont factor also favors a finding of likelihood of
confusion.
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion. Applicant asserts
that the absence of evidence of actual confusion despite
Opposition Nos. 91175419; 91175420; and 91175426
18
over 9 years of simultaneous use by the parties of their
marks suggests no likelihood of confusion. However, it is
not necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). See also Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Evidence of
actual confusion often is very difficult to obtain, and
while such evidence may support a finding of likelihood of
confusion, the absence thereof does not necessarily suggest
that confusion is unlikely.
Accordingly, this du Pont factor must be considered to
be neutral.
Applicant’s Intent in Adopting Its Marks
Opposer argues that as a result of a 1995 agreement
with opposer, “UTS Germany agreed to limit its use of ‘UTS’
and not to file any applications anywhere in the world that
included the letter combination ‘UTS.’”29 Opposer further
argues that applicant’s “affiliate (UTS Germany) not only
knew of the famous mark ‘UPS,’ but had promised not to use
the letter combination ‘UTS’ in connection with services
other than furniture removal….”30 Opposer argues in
addition that “[a]t a minimum, the 1995 agreement is an

29 Opposer’s brief, p. 23.
30 Id. at 24.

Opposition Nos. 91175419; 91175420; and 91175426
19
admission by UTS Germany to be applied against [applicant’s]
interest”31 and that “‘due diligence’ [on applicant’s part]
exercised in traditional business dealings of this type
would reveal the existence of the Agreement.”32
In response, applicant argues that it has no
contractual relationship with UTS Germany, the party with
which opposer entered into the 1995 agreement. Applicant
further argues that there is no support in the record for
opposer’s contention that its agreement with UTS Germany is
binding upon applicant or its European partner, UTS
International. Finally, applicant argues in general that
trademark rights in the United States are not affected by
agreements addressing even the same marks in other
jurisdictions.
It is settled that a party’s bad faith intent in the
adoption of a mark may be viewed as evidence of likelihood
of confusion. See L.C. Licensing Inc. v. Berman, 86 USPQ2d
183, 1891 (TTAB 2008) (bad faith adoption of a mark is
strong evidence that confusion is likely because an
inference may be drawn from the imitator’s expectation of
confusion); and Broadway Catering Corp. v. Carla Inc., 215
USPQ 462, 465 (TTAB 1982) (“One’s wrongful intent to trade
on the trademark or trade name of another is strong evidence

31 Id.
32 Id.

Opposition Nos. 91175419; 91175420; and 91175426
20
that confusion is likely. Such inference is drawn from the
imitator’s own expectation of confusion as to the source of
his product”). In this case, however, it is not clear from
the record whether or to what extent applicant may be
related to UTS Germany, let alone the extent to which
applicant may be bound by the terms of UTS Germany’s 1995
agreement with opposer. As a result, we do not find on this
record that the existence of such agreement supports a
finding that applicant adopted the marks at issue herein in
bad faith.
Accordingly, this du Pont factor also must be
considered to be neutral.
The Marks
We now turn to the first du Pont factor, i.e., whether
applicant’s marks are similar to opposer’s UPS mark or
dissimilar therefrom, observing that, “[w]hen marks would
appear on virtually identical ... services, the degree of
similarity [of the marks] necessary to support a conclusion
of likely confusion declines.” See Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994).
See also ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
We begin by noting that the marks differ substantially
in appearance. Opposer’s mark is UPS in typed or standard
Opposition Nos. 91175419; 91175420; and 91175426
21
characters. Applicant’s marks all include the wording
UNIGROUP WORLDWIDE UTS in standard stylized characters.
Opposer’s mark is similar to the wording in applicant’s
marks solely to the extent that they share the letters “U”
and “S” as part of the respective initials UPS and UTS. The
marks otherwise are completely dissimilar in appearance.
The marks also differ in sound in that, regardless of
pronunciation, opposer’s UPS mark is highly dissimilar from
applicant’s UNIGROUP WORLDWIDE UTS marks. As for
connotation, consumers are likely either to recognize
opposer’s UPS mark as an initialism for “United Parcel
Service” or simply view it as the letters UPS. Either
connotation is dissimilar from the connotation of
applicant’s UNIGROUP WORLDWIDE UTS marks. While consumers
may not recognize that applicant’s marks are a combination
of the names of the companies UNIGROUP WORLDWIDE and UTS
INTERNATIONAL, there is nothing in the record to suggest
that UPS and UNIGROUP WORLDWIDE UTS engender a similar
meaning or significance.
In view of the significant differences in the
appearance, sound and connotation of the parties’ marks, we
find that, despite both marks including the letters “U” and
“S”, the differences are sufficient to distinguish
applicant’s marks from opposer’s mark; overall they convey
dissimilar commercial impressions.
Opposition Nos. 91175419; 91175420; and 91175426
22
Thus, the du Pont factor of the similarity of the marks
weighs against a finding of likelihood of confusion.
Conclusion
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto, including
any evidence and arguments not specifically discussed in
this opinion. We conclude, in view thereof, that opposer
has proven its standing and priority of use. However,
despite the legal identity in part of the parties’ services
and their identical trade channels, we find that the strong
dissimilarities in the marks outweigh these factors. Any
one of the du Pont factors may, from case to case, play a
dominant role. du Pont, 476 F.2d at 1361, 177 USPQ at 567.
See also Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d
330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (Court found “no
reason why, in a particular case, a single DuPont factor may
not be dispositive”). In this case, because of the
dissimilarity of the marks, we find that confusion is not
likely.
Decision: The oppositions are dismissed as to all
three involved applications.