United States Postal Servicev.Lost Key Rewards, Inc.

Trademark Trial and Appeal Board

Nov 15, 2010

No. 91185802 (T.T.A.B. Nov. 15, 2010)

Mailed: November 15, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

United States Postal Service
v.
Lost Key Rewards, Inc.
_______

Opposition No. 91185802
to Application No. 77407614
filed on February 27, 2008
_______

Jennifer A. Van Kirk, Flavia Campbell and Nathaniel Edwards
of Lewis and Roca and Karen Estilo Owczarski, Esq. for
United States Postal Service.

Carol N. Green of Law Offices of Carol N. Green for Lost Key
Rewards, Inc.
_______

Before Walters, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

The United States Postal Service (“USPS” or “opposer”)
filed its opposition to the application of Lost Key Rewards,
Inc. to register the mark shown below.1 The application

1 Application Serial No. 77407614 filed February 27, 2008, based upon
use of the mark in commerce, alleging dates of first use and first use
in commerce as of February 1, 2008, for each class of goods and
services. The application includes the following statements:
“The color(s) gold, dark orange, cherry red, medium blue, blue violet,
lime green, royal blue, white, baby blue, light silver gray, black,

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91185802
2
includes a disclaimer of KEY and REWARDS apart from the mark
as a whole.
Mark:

Goods:
“Encoded micro particulates, tags and taggants of
plastic, metal or silicate for use in the field of
passive labeling, tracing or tracking of persons,
animals, vehicles or goods of any kind,” in
International Class 9;

“Plastic key tags,” in International Class 20;

“Key return registration,” in International Class
35; and

“Lost property return; Tracking services for
retrieval of encoded products,” in International
Class 45.

As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods and
services so resembles opposer’s previously used and

peach puff yellow, antique white and old lace beige is/are claimed as a
feature of the mark,” and
“The mark consists of Mail / Key Box-Royal Blue, with hint of a White
oblong asymmetrical shading outline consisting also of Baby Blue this
specifies the "indentation" on the top of the Royal Blue mail/key box.
The front of mail/key box has a small Dark Royal Blue rectangular slot
for mail or key. Hand-Peach Puff Yellow with a hint of Antique White and
Old Lace Beige. Key Hub-Black with small Light Silver Gray drawn line
inside of key hub. Key Shaft-Light Silver Gray. Background-Gold with
tint of Dark Orange with White Hue. The "stylized" capitalized letters
are "LOST KEY" are Cherry Red, with a small reflection of letters
downward into the Background color. The "stylized" capitalized letters
"R E W A R D S" are Medium Blue with a tint of Blue Violet. Banner-
located under the word "R E W A R D S" is Lime Green.”
Opposition No. 91185802
3
registered marks, as shown below, as to be likely to cause
confusion, under Section 2(d) of the Trademark Act.
Registration No. 2711226
Mark: (“round-top mailbox design - front”)
[Registered April 29, 2003, pursuant to Section 2(f) of
the Trademark Act, 15 U.S.C. 1052(f); Sections 8 and 15
affidavits accepted and acknowledged]

Services:
“Sorting, handling, and receiving packages,
letters and advertisements,” in International
Class 35; and

“Pickup, transportation and delivery of packages,
documents, letters and advertisements by various
modes of transportation,” in International Class
39.

Description:
“The mark consists of a three-dimensional
configuration of a mail collection box.”

Registration No. 2708659
[Registered April 22, 2003, pursuant to Section 2(f) of
the Trademark Act, 15 U.S.C. 1052(f), in part, as to
“UNITED STATES POSTAL SERVICE”; Sections 8 and 15
affidavits accepted and acknowledged]

Mark: (“round-top mailbox design - side”)

Opposition No. 91185802
4

Services:
Sorting, handling, and receiving packages,
envelopes and letters,” in International Class 35;
and

“Pickup, transportation and delivery of packages,
envelopes and documents, by various modes of
transportation,” in International Class 39.

Description:
The mark consists, in part, of the stylized head
of an eagle.

In particular, opposer asserts that it uses its design
marks in the color blue, that it has used the marks since
1908, and that the public has come to associate these marks
with opposer. Opposer pleads that applicant has
incorporated opposer’s mark into its mark in its entirety,
and that, particularly in view of the nature of applicant’s
services, confusion as to source is likely.
Additionally, opposer asserts a claim under Section
2(a) of the Trademark Act, 15 U.S.C. 1052(a), on the ground
that applicant’s mark comprises matter that may falsely
suggest a connection with an institution, namely, the United
States Postal Service (“USPS”). In particular, opposer
Opposition No. 91185802
5
pleads that its round-top mailbox design is a symbol that is
uniquely indicative of the USPS.
Applicant, in its answer, denied the salient
allegations of the claim.
The Record
As in all oppositions, the record includes the
pleadings and the file of the involved application. Opposer
has made of record by notice of reliance photocopies of
certified status and title copies of Registration Nos.
2711226 and 2708659; various specified responses of
applicant to opposer’s interrogatories and requests for
admissions, and excerpts from various newspaper and magazine
articles retrieved from the Nexis database. Opposer has
also submitted the testimony deposition by opposer of
Megaera M. Ausman, USPS historian, Krista Becker, USPS
marketing specialist and former USPS licensing specialist,
and Thad E. Dilley, USPS manager of brand equity and design
and corporate communications, all with accompanying
exhibits.
In addition to duplicates of other material already of
record, applicant has submitted by notice of reliance its
own discovery responses in their entirety, as discussed
below, and excerpts from three newspaper and magazine
articles retrieved from the Nexis database. Applicant has
also submitted the testimony deposition of Marla LaVoice,
Opposition No. 91185802
6
applicant’s founder, CEO and president, with exhibits. Both
parties filed briefs on the case.
Applicant submitted several exhibits with its brief.
Exhibit C to the brief consists, in part, of an affidavit of
Marla LaVoice. Opposer properly objected to this evidence
in its reply brief. Not only is an affidavit improper in
the absence of consent by opposer, but in this case the
exhibit in its entirety is untimely to the extent that it
adds evidence not previously made of record during trial.
Opposer’s objection is sustained and we have given no
consideration to the evidence submitted with applicant’s
brief.
Applicant’s Exhibit C to its notice of reliance
consists of opposer’s discovery requests and all of
applicant’s responses thereto. Opposer has objected to this
evidence as improper. Applicant may not submit its own
responses to discovery unless, in fairness, additional
responses are necessary to overcome an allegedly misleading
impression created by opposer’s submission of applicant’s
discovery responses. See Trademark Rule 2.120(j)(4).
Applicant has not submitted any written statement in this
regard and, moreover, we do not find the discovery submitted
by opposer to be incomplete or otherwise prejudicial.
Therefore, we conclude that this evidence was improperly
submitted; opposer’s objection is sustained; and we have
Opposition No. 91185802
7
given no consideration to Exhibit C to applicant’s notice of
reliance.
Factual Findings
Opposer has been using collection boxes in the shape
shown in its two registrations for the USPS’s sorting,
handling, receiving and transporting of mail and packages
since approximately 1894. Today, there are approximately
180,000 USPS collection boxes in this shape throughout the
United States. The number of collection boxes was as high
as 375,000 twenty years ago, but the number has been
declining. Since 1971, the USPS collection boxes have been
consistently one specific color of blue, which was described
by witnesses variously as “navy blue” and “dark blue.” The
USPS conducts extensive advertising and promotion of its
goods and services across a wide range of media. The
collection box, in the noted shape and color blue, features
prominently in much of this advertising and promotion. In
fact, it was the centerpiece of a nationwide advertising
campaign in 2000. The evidence shows that the color blue on
the USPS collection box is as equally a prominent indicator
of USPS origin as is the shape of the box alone. Thus,
opposer has established that the particular color blue has
acquired distinctiveness as used on a collection box for the
sorting, handling, receiving and transporting of mail and
packages.
Opposition No. 91185802
8
Opposer has an extensive licensing program for all of
its intellectual property, including the blue collection box
in the noted shape. Opposer receives approximately a dozen
requests per year to license the use of the collection box
in connection with advertising for a wide range of goods and
services. Opposer has licensed the use of the collection
box in the blue color, but with modifications that slightly
change and exaggerate the shape of the collection box, in
the movies SHREK 3 and The Bee Movie. Opposer has licensed
the use of the blue collection box in the noted shape to two
entities that provide lost key services similar to those
described by applicant. In these instances, the blue
collection box is used to show that persons finding lost
keys that are tagged may return the keys by dropping them in
any USPS collection box. As with any other mail, for the
appropriate fee the USPS delivers the keys to the address
indicated on the tag. This licensed use predates both any
date of use upon which applicant can rely and applicant’s
application filing date.
Applicant expressly admitted the validity of opposer’s
collection box design mark and its awareness thereof.
Applicant’s case is based primarily on admissions and
the testimony and accompanying exhibits of Dr. LaVoice,
applicant’s founder, CEO and president. Her testimony about
her use of the mark in connection with the identified
Opposition No. 91185802
9
services was contradictory and vague. However, we are able
to make several findings, as follows, from this evidence.
Applicant began developing the company in June, 2006 and, in
February, 2008, applicant began marketing services under the
mark to potential clients. Applicant has admitted that it
was aware of opposer’s mailbox design market at the time it
developed and began marketing its services; that it markets
its services to the general public, encompassing businesses
and individuals; and that it intends to use opposer’s
delivery services and mailboxes, among others, for its lost
property return services and tracking services for the
retrieval of encoded products. Applicant also intends to
provide a rewards program under the mark for the finders of
lost keys/property.
At the time of trial, applicant’s website was not
available for viewing by the public and applicant did not
have any clients.2 Exhibit H to Dr. LaVoice’s testimony is
what Dr. LaVoice describes as a sales page shown to
potential clients. It is difficult to read the text on the
page, although it clearly contains applicant’s mark thereon
and the heading “Sales [-] Purchase Key Tag.” Dr. LaVoice
read the following statement from the middle of the sales
page: “The Lost Key Rewards key tags instruct the key finder

2 Applicant’s use of its mark in connection with the identified goods
and services is not at issue in this appeal and will not be addressed
herein.
Opposition No. 91185802
10
to place the lost keys in any U.S. mailbox for their safe
return.” Applicant is not a licensee of the USPS for any
property.
The evidence of record also establishes that other mail
delivery services, such as Federal Express, DHL, and UPS,
use collection boxes in shapes and colors that are different
from the shape and color of the USPS mailbox.
Analysis
Standing
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made its pleaded registrations of
record (see infra) and demonstrated its use of these marks
in the color blue since long prior to the filing date of
applicant’s application or any use date she might have
established. Opposer’s use and registration of its
collection box design marks establish that opposer has
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Opposition No. 91185802
11
1. Section 2(d) Claim
Priority
In view of opposer’s ownership of valid and subsisting
registrations and its use noted above in connection with
standing, there is no issue regarding opposer’s priority.
King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Additionally, opposer has
sown its priority because it has established its use of the
registered collection box in the color blue, and the
acquired distinctiveness thereof, since long prior to the
filing date of applicant’s application or any use date she
might have established.
Thus, the only issue to decide herein is likelihood of
confusion.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. 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 Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
Opposition No. 91185802
12
(Fed. Cir. 1997). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence.
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein. The relevant du
Pont factors in the proceeding now before us are discussed
below.
Fame
The evidence establishes without question that the USPS
collection box, i.e., its shape and blue color, is “famous”
as that term is used in Trademark law. The broad exposure
of the general public to the USPS collection boxes in the
noted shape and color, as well as the representation of the
collection boxes on stamps, in movies and other media have
rendered the collection box in the noted shape and color a
ubiquitous symbol of the USPS.
The Marks
We examine the similarities and dissimilarities of the
involved marks as to their appearance, sound, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Opposition No. 91185802
13
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692.
The test 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 their entireties that
confusion as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Further, as the fame of a mark increases, as in the
case of opposer’s famous blue collection box design mark,
the degree of similarity between the marks necessary to
support a conclusion of likely confusion declines. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1305 (Fed. Cir. 2002).
Applicant’s word and design mark consists of a yellow
rectangular background with the words LOST KEY featured
prominently above the slightly smaller word REWARDS. Only
slightly less prominent than the words LOST KEY is the hand
holding a key and dropping it into a collection box. While
the collection box is not identical to the USPS collection
box design marks, it is substantially similar in certain key
elements, namely, that it stands on legs, that it has a
curved top, and that it is blue. Each of these features is
Opposition No. 91185802
14
the same as the USPS collection box and different from the
shape and color of the USPS competitors’ collection boxes
shown in the record. In view of the fame of opposer’s
collection box design marks and the nature of applicant’s
goods and services, the relevant consumers, i.e., the
general public, are very likely to believe that the
collection box depicted in applicant’s mark is the USPS
collection box design mark.
The words KEY and REWARDS are disclaimed in applicant’s
mark. The nature of applicant’s services is the tagging of
keys and other property so that when keys or property are
lost, the finder thereof can simply put the key or other
property in a USPS or other mail collection box to return to
the owner. Applicant intends to give a reward to the finder
who so returns the key or property. Thus, the design either
merely describes or is highly suggestive of the specific
nature of applicant’s services. Additionally, the words
LOST KEY REWARDS are, if not merely descriptive of a
significant aspect of applicant’s services, at least highly
suggestive therewith. As such, and in view of the size of
the design relative to the words as well as the fame of the
USPS blue collection box, we find that the blue collection
box in applicant’s word and design mark is at least equally
prominent to the word portion of the mark.
Opposition No. 91185802
15
Because of the established fame of opposer’s collection
box design marks, we find that applicant’s mark as a whole
is sufficiently similar in at least appearance, connotation
and commercial impression to opposer’s collection box design
marks that, if used in connection with the same, similar or
related goods and/or services, confusion as to source is
likely.
The Goods and Services
It is well established that the goods and/or services
of the parties need not be similar or competitive, or even
offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that
the respective goods and/or services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The question of likelihood of confusion must be
determined based on an analysis of the goods and/or services
recited in applicant’s application vis-à-vis the goods
Opposition No. 91185802
16
and/or services identified in opposer’s pleaded
registrations and in connection with which it has
established use of its marks. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992.
Applicant’s services are identified as:
“Encoded micro particulates, tags and taggants of
plastic, metal or silicate for use in the field of
passive labeling, tracing or tracking of persons,
animals, vehicles or goods of any kind,” in
International Class 9;

“Plastic key tags,” in International Class 20;

“Key return registration,” in International Class
35; and

“Lost property return; Tracking services for
retrieval of encoded products,” in International
Class 45.

Opposer’s services are identified in its
registrations as:
“Sorting, handling, and receiving packages,
envelopes and letters,” in International Class 35;
and

“Pickup, transportation and delivery of packages,
envelopes and documents, by various modes of
transportation,” in International Class 39.

Additionally, opposer has established that it has licensed
its blue mailbox design mark to businesses that utilize tags
to provide lost keys/property retrieval and return services
Opposition No. 91185802
17
via the USPS and use the USPS collection box design in
connection with these services.
Essentially, each of the goods identified in the
application is a necessary and significant aspect of
applicant’s services as identified. Likewise, these
goods, or very similar goods, would be necessary and
significant aspects of opposer’s licensees’ similar
services. Since opposer’s licensees’ use inures to
opposer’s benefit, we find that applicant’s goods are
at least related to the tracking devices that opposer’s
licensees must use.
Applicant’s identified services are identical in
purpose to the key return services rendered by
opposer’s licensees, utilizing similar methodology,
i.e., a form of tagging and return of property via the
USPS. As such, the respective services are closely
related. Moreover, since applicant’s services utilize
opposer’s services as an integral part thereof, and
opposer’s mark is famous, the services are sufficiently
similar that, if identified by substantially similar
marks, confusion as to source or sponsorship is likely.
Section 2(d) Conclusion
We find that the du Pont factors, on balance, weigh in
favor of a finding of likelihood of confusion. We conclude
Opposition No. 91185802
18
that consumers familiar with opposer’s services rendered and
licensed under its blue collection box design mark would be
likely to believe, upon encountering applicant’s design
mark, that applicant’s goods and services originate from or
are associated with or sponsored by opposer.
2. Section 2(a) Claim
Opposer contends that, under Section 2(a) of the
Trademark Act, 15 U.S.C. 1052(a), applicant’s mark comprises
matter that may falsely suggest a connection with an
institution, namely, the USPS. In University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), the Court of Appeals
for the Federal Circuit stated that to succeed on a Section
2(a) false suggestion of a connection claim, the plaintiff
must demonstrate that the name or equivalent thereof claimed
to be appropriated by another must be unmistakably
associated with a particular personality or "persona" and
must point uniquely to the plaintiff. The Board, in Buffett
v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985), in accordance
with the principles set forth in Notre Dame, required that a
plaintiff asserting a claim of a false suggestion of a
connection demonstrate the following:
1) that the defendant's mark is the same or a
close approximation of plaintiff's previously
used name or identity;

2) that the mark would be recognized as such;

Opposition No. 91185802
19
3) that the plaintiff is not connected with the
activities performed by the defendant under the
mark; and

4) that the plaintiff's name or identity is of
sufficient fame or reputation that when the
defendant's mark is used on its goods or
services, a connection with the plaintiff would
be presumed.

In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); In re
White, 80 USPQ2d 1654, 1658 (TTAB 2006); In re Wielinski, 49
USPQ2d 1754, 1757 (TTAB 1998); In re Sloppy Joe's Int'l
Inc., 43 USPQ2d 1350, 1353 (TTAB 1997).

Section 2(a) refers to a false suggestion of a
connection with a person or institution, which includes
government agencies. In re Peter S. Herrick P.A., 91 USPQ2d
1505 (TTAB 2009) and cases cited therein. See also In re
Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218 (Fed.
Cir. 2009) and cases cited therein. The USPS is an
independent governmental organization that was explicitly
authorized in the United States Constitution (Article 1,
Section 8, Clause 7) and became the entity it is today by
Act of Congress in 1983. There is no question that the USPS
is an institution within the meaning of Section 2(a).
Moreover, as previously discussed herein, opposer has
established that its round-top mailbox design is a famous
mark and a symbol that is ubiquitous and uniquely indicative
of the USPS.
Opposition No. 91185802
20
Also as discussed above in connection with the Section
2(d) claim, not only is the design portion of applicant’s
mark an integral and equal part of the overall commercial
impression engendered by the mark, but the collection box
depicted in applicant’s mark is substantially similar to the
USPS collection box design and it is a similar color blue.
Additionally, the nature of applicant’s goods and services
include the deposit of lost keys in a USPS collection box
for return to their owner. This act of depositing a key in
a USPS collection box is depicted in the design portion of
applicant’s mark. Thus, applicant’s mark is a close
approximation of the identity of the USPS.
Because the evidence of record shows that competing
private delivery services use collection box designs that
are different in shape and color from the USPS collection
box and from each other, applicant’s use in its mark of a
collection box substantially similar to the USPS collection
box points uniquely and unmistakably to the USPS.
While the record shows that the USPS has licensed the
use of its blue collection box design to numerous third
parties, including at least two parties who offer retrieval
and return of lost items through the USPS, applicant has
admitted that it is not a licensee of the USPS and has no
other connection to the USPS. Also, as discussed above, the
fame of the USPS collection box design and color is such
Opposition No. 91185802
21
that applicant’s use of the blue collection box in its mark
will lead consumers to presume that applicant has a
connection with, or its services are authorized by, the
USPS.
In conclusion, we find that applicant’s mark falsely
suggests a connection with the USPS thereby precluding
registration under Section 2(a).
Decision: The opposition is sustained on the grounds
of Sections 2(d) and 2(a) of the Trademark Act, and
registration to applicant is refused.