United States Postal Servicev.RPost International Ltd.

Trademark Trial and Appeal Board

Jun 17, 2013

No. 92044260 (T.T.A.B. Jun. 17, 2013)

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

Hearing: May 8, 2012 Mailed: June 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

United States Postal Service
v.
RPost International Ltd.
_____

Consolidated Opposition Nos.
91158431 to application Serial No. 76437188;
and
91158514 to application Serial No. 76438606.

Consolidated Cancellation Nos.
92044260 to Registration No. 2928365;1
and
92043665 to Registration No. 2867278.
_____

Sean D. Garrision and Shane E. Olafson of Lewis and Roca LLP
for United States Postal Service.

Henry Ben-Zvi of Ben-Zvi & Associates for RPost
International Ltd.
______

Before Cataldo, Taylor and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

1 On July 3, 2008, the Board issued an interlocutory order
acknowledging that defendant filed an answer to the petition to
cancel in Cancellation No. 92044260 and vacating the default
judgment issued in that proceeding. Accordingly, the October 29,
2011 paralegal order entering judgment by default against
defendant in Cancellation No. 92044260 was issued in error, and
is hereby withdrawn. In view thereof, defendant’s November 7,
2011 motion to set aside the October 29, 2011 default judgment is
moot.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
2

RPost Int’l. Ltd. (“RPost” or “defendant”) filed
applications to register in standard characters on the
Principal Register the following marks:
(R)ETURN RECEIPT
with a disclaimer of “RETURN RECEIPT” for “delivery of
electronic messages to a designated recipient on a basis
equivalent to registered receipt mail;”2 and
(R)EGISTERED RECEIPT
with a disclaimer of “REGISTERED RECEIPT” for “delivery of
electronic messages to a designated recipient on a basis
equivalent to registered receipt mail.”3
In addition, RPost owns registrations for the following
marks:
REGISTERED E-MAIL
on the Supplemental Register with a disclaimer of “E-MAIL”
for “delivery of messages by electronic transmission to a
designated recipient to provide results on a basis
equivalent to the results obtained by registered mail;”4 and
(R)EGISTERED E-MAIL
on the Principal Register with a disclaimer of “REGISTERED

2 Application Serial No. 76437188 was filed August 2, 2002, based
upon applicant’s assertion of a bona fide intent to use the mark
in commerce.
3 Application Serial No. 76438606 was filed August 7, 2002, based
upon applicant’s assertion of a bona fide intent to use the mark
in commerce.
4 Registration No. 2928365 issued on February 22, 2005. Section
8 affidavit accepted.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
3
E-MAIL” for “delivery of messages by electronic transmission
to a designated recipient on a basis equivalent to
registered mail.”5
United States Postal Service (“USPS” or “plaintiff”)
has opposed registration of the involved applications and
petitioned to cancel the involved registrations, alleging
the following grounds:
Opposition Nos. 91158431 to Serial No. 76437188 and
91158514 to Serial No. 76438606 - false suggestion of a
connection under Trademark Act Section 2(a), and mere
descriptiveness under Trademark Act Section 2(e)(1);
Cancellation No. 92044260 of Registration No. 2928365
(Supplemental Register) - priority and likelihood of
confusion under Trademark Act Section 2(d), and false
suggestion of a connection under Trademark Act Section 2(a);
Cancellation No. 92044265 of Registration No. 2867278 -
priority and likelihood of confusion under Trademark Act
Section 2(d), false suggestion of a connection under
Trademark Act Section 2(a), and mere descriptiveness under
Trademark Act Section 2(e)(1).
Defendant filed answers to the notices of opposition
and petitions to cancel wherein it denied the essential
allegations thereof.

5 Registration No. 2867278 issued on July 27, 2004. Section 8
affidavit accepted.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
4
The Record
By rule, the record consists of the pleadings and the
files of the involved applications and registrations. In
addition, the parties stipulated to accept the December 11,
2009 declaration and accompanying exhibits of Ms. Megaera
Ausman, the Historian of USPS, as her trial testimony
herein. Further, pursuant to Trademark Rule 2.123(b), the
parties submitted a written stipulation to the following
facts:
1. The United States Postal Service (“USPS”) is an
Independent Establishment of the Executive Branch
of the United States Government, doing business at
475 L'Enfant Plaza SW, Washington, DC 20260-1135.

2. RPost International Limited (“RPost”) is a
Bermuda company, with a mailing address of c/o M Q
Services, Ltd. Chauncery Hall 52 Reid Street
Hamilton HM 12, Bermuda.

3. USPS has operated nationwide in one form or
another for over 200 years, and currently operates
in every city in the United States.

4. On February 14, 2001, RPost and USPS signed a
letter of intent to explore a customized
Registered E-mail service based on RPost's
technology.

5. In April 2002, USPS terminated that letter of
intent.

The parties also stipulated to the admissibility of Exhibits
1-11, related to and supporting the above stipulated facts,
as evidence in this proceeding.
Plaintiff submitted testimony and exhibits through
testimonial depositions of the following individuals:
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
5
Thad Dilley, Manager of Public Affairs for USPS;
Elke Reuning-Elliott, Marketing Specialist for USPS;
J. Otis Smith, III, Manager of Vehicle Programs for
USPS; and
Thomas J. Foti, Manager of Marketing Mail for USPS.
USPS also filed notices of reliance upon certain of RPost’s
interrogatory responses and Rule 36 admissions; the
discovery deposition transcript of RPost’s Rule 30(b)(6)
witness Mr. Zafar Khan, its founder, CEO and President; a
copy of RPost’s United States Patent No. 7,840,199;
dictionary definitions of “e-“ and “e-mail” and articles and
publications concerning the history, public recognition,
use, and asserted fame of the USPS marks; and 38 U.S.
Trademark Registrations owned by various third parties
reciting both electronic mail or messaging services, as well
as hard copy mail and delivery services.
For its part, RPost took the testimonial deposition of
Mr. Zafar Khan and the following individuals:
Michael Cowan, an attorney and executive with a third-
party customer of RPost;
Richard Pryor, a former executive with WorldCom;
Peter Jacobson, a former employee of USPS;
Edward Cohen, former tax attorney with the U.S.
Treasury Department; and
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
6
Maureen O'Gara, a journalist in the field of computers
and computing. RPost further submitted numerous notices of
reliance upon official records, printed publications,
dictionary definitions, USPS’s responses to RPost’s Second
Set of Interrogatories, and pleadings and orders from
proceedings involving USPS before the Postal Regulatory
Commission.
Plaintiff has filed numerous objections to
certain testimony and exhibits introduced by defendant.
Specifically, plaintiff objects on procedural grounds to
defendant’s Exhibits S–AH, AL–AR, and AV–BH to its notices
of reliance. Plaintiff objects on substantive grounds to
certain of these exhibits as well. Defendant has responded
to plaintiff’s objections. In addition, defendant has filed
a motion to take judicial notice of its Exhibits S–AH or, in
the alternative, to admit such exhibits as evidence from
other proceedings. The motion is fully briefed.
None of the exhibits sought to be excluded is outcome
determinative. Given this fact, coupled with the number of
objections, we see no compelling reason to discuss them in a
detailed fashion. Suffice it to say, we have considered all
of the testimony and exhibits submitted by the parties in
this case.6 In doing so, we have kept in mind the various

6 Accordingly, defendant’s motion regarding its Exhibits S-AH is
moot and will not be considered.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
7
objections raised by the parties, and we have accorded
whatever probative value the subject testimony and exhibits
merit.
Plaintiff’s Standing
Standing is a threshold issue that must be proved in
every inter partes case. Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). To establish its standing, plaintiff must prove that
it has a “real interest” in these opposition and
cancellation proceedings and a “reasonable basis” for its
belief in damage. See Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1027 (Fed. Cir. 1999).
Plaintiff’s allegations in its brief (p. 19) regarding
standing consist, in their entirety, of the following:
As the owner and prior user of the Registered
Mail™ mark, and the associated terms
Registered Receipt and Return Receipt, USPS has
standing to challenge RPost's applications and
registrations. 15 U.S.C. §§ 1052(a), 1052(d),
1063; T.B.M.P. § 309.03(b).

“A petitioner’s allegations alone do not establish
standing.” Lipton Indus., Inc. v. Ralston Purina Co., 213
USPQ at 188 (CCPA 1982). Nonetheless, we find that, as
discussed below, plaintiff has introduced testimony and
evidence that it has made prior use of REGISTERED MAIL and
the terms “Registered Receipt” and “Return Receipt,” all in
connection with mail delivery services, and alleged a
reasonable belief that these designations also serve as its
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
8
identity for purposes of its claim under Trademark Act
Section 2(a). As a result, plaintiff has met the liberal
threshold established for standing, and has demonstrated a
real interest in preventing and cancelling registration of
defendant’s marks. Id. See also Jeweler’s Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021 (Fed. Cir. 1987); and Toufigh v. Persona Parfum Inc.,
95 USPQ2d 1872, 1874 (TTAB 2010) (standing found where
petitioner holds a reasonable belief that “there is a
likelihood of confusion there between the marks, or that the
presence on the register of the respondent’s mark may hinder
the petitioner in using or registering [its] mark”).
Because plaintiff has established its standing with
respect to one of its pleaded grounds for opposition and
cancellation, it has the right to assert any other ground as
well, that also has a reasonable basis in fact. See Lipton
Indus., Inc. v. Ralston Purina Co., 213 USPQ at 190 (CCPA
1982).
Priority
In order for plaintiff to prevail on its likelihood of
confusion claim, it must prove, in the absence of asserted
ownership of any registered trademark, that it has a
proprietary interest in a distinctive designation and that
its interest was obtained prior to the filing date of
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
9
defendant’s applications underlying its registrations or
defendant’s dates of first use of the involved marks.
It is well-settled that in the absence of any evidence
of earlier use, the earliest date upon which a respondent in
a cancellation proceeding may rely is the filing date of its
underlying applications.7 See Trademark Act Section 7(c),
15 U.S.C. §1057(c). See also Larami Corp. v. Talk to Me
Programs, Inc., 36 USPQ2d 1840 (TTAB 1995). In this case,
the applications that matured into defendant’s registrations
at issue were accorded filing dates of January 23, 2002
(Registration No. 2928365) and February 4, 2002
(Registration No. 2867278). Defendant also has introduced
uncontroverted testimony (Khan p. 20-21) that “it began
using ‘Registered eMail’ to describe its principal product
as soon as it was formed, in 2000.”
Inasmuch as plaintiff has not pleaded ownership of any
registered trademark, it must rely on common-law use of one
or more of its asserted designations to prove priority. In
its brief (p. 7), plaintiff asserts that “The Registered
Mail™ service began over 150 years ago, in 1855….”
Plaintiff further asserts in its brief (id.) that it has
“used the phrase ‘Return Receipt’ since at least the 1880s
on various forms, including those used in conjunction with

7 As noted above, plaintiff has asserted priority and likelihood
of confusion as a ground for cancellation of defendant’s involved
registrations, but not its involved applications.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
10
Registered Mail™” and also that it has “used the phrase
‘Registered Receipt’ since at least as early as 1989” as “a
receipt for Registered Mail™.” Plaintiff’s discussion of
priority in its brief (p. 9) is reproduced in its entirety
below:
The Postal Service has offered its Registered
Mail™ service continuously and exclusively since
1855. (Ausman Decl., para. 4). Similarly, the
Postal Service has used the terms "Return Receipt"
since at least the l880s (Id. at para. 6), and the
phrase "Registered Receipt" since at least as
early as 1989. (Id. at para. 8).

In contrast, RPost filed its applications for
Registered e-Mail and (R)egistered e-Mail in 2002,
and subsequently claimed a date of first use of
January 2003.

Thus, it appears from plaintiff’s brief that it is
claiming common-law use of REGISTERED MAIL as a trademark as
early as 1855 in connection with its mail delivery services.
With regard to the terms “Return Receipt” and “Registered
Receipt,” plaintiff does not argue that such terms are
trademarks or trade names, but are used as a “phrase,” often
in conjunction with services under the REGISTERED MAIL mark.
Plaintiff’s assertion solely of REGISTERED MAIL as a mark is
further reinforced in the discussion of priority in its
reply brief (p. 2), reproduced in its entirety below:
RPost offers no evidence or argument to dispute
the evidence that the Postal Service has
long-standing prior rights in the Registered Mail™
mark, or that the Postal Service had been
using the terms Registered Receipt and Return
Receipt in connection with the Registered Mail™
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
11
service and other mailing services long before
RPost first offered its e-mail services.
Accordingly, this issue must also be decided in
favor of the Postal Service.

Finally, we note that in its discussion in its briefs of the
similarity between the parties’ marks, plaintiff limits its
arguments to its REGISTERED MAIL mark and, as noted above,
has asserted likelihood of confusion solely as a ground for
cancellation of defendant’s involved REGISTERED EMAIL and
REGISTERED (E)MAIL marks.
For a plaintiff to prevail on a claim of likelihood of
confusion based on its ownership of common-law rights in a
mark, the mark must be distinctive, inherently or otherwise,
and plaintiff must show priority of use. See Otto Roth &
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40
(CCPA 1981). We observe in this case that defendant has not
raised an issue as to the distinctiveness of plaintiff’s
REGISTERED MAIL mark or otherwise put plaintiff on notice of
this defense.8 Absent any such argument from defendant, we
are constrained to find that the REGISTERED MAIL mark is
distinctive.9 See Wet Seal Inc. v. FD Management Inc., 82

8 We note in this regard that throughout its brief defendant
acknowledges that REGISTERED MAIL is a mark.
9 Indeed, defendant does not appear to seriously dispute
plaintiff’s priority of use of its REGISTERED MAIL mark in its
brief, aside from an observation (p. 3, n.3) that plaintiff only
began using the “TM” symbol in connection therewith since 2006,
and only in limited circumstances. However, defendant does not
argue that the designation REGISTERED MAIL lacks distinctiveness
or that plaintiff has not made prior use thereof.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
12
USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence
from applicant, opposer’s mark deemed distinctive). See
also The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715, note 5 (TTAB 1991) (affirmative defense
regarding descriptiveness of opposer’s mark, raised for the
first time in applicant’s brief, was untimely and not
considered by the Board).
In order to establish priority, plaintiff must show
that it made common-law use of its REGISTERED MAIL mark in
connection with its alleged services prior to 2000. In a
case involving common-law rights, “the decision as to
priority is made in accordance with the preponderance of the
evidence.” Hydro-Dynamics Inc. v. George Putnam & Company
Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987).
In this case, plaintiff has established (Ausman decl.,
para. 4) that it has made continuous use of its REGISTERED
MAIL mark since 1855. We find that Ms. Ausman’s testimony
declaration is sufficient to establish plaintiff’s priority
of use with regard to its REGISTERED MAIL mark. “Oral
testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark
proceeding.” Powermatics, Inc. v. Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). See also
National Bank Book Co. v. Leather Crafted Products, Inc.,
218 USPQ 826, 828 (TTAB 1993).
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
13
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We also
must bear in mind that the fame of a plaintiff's mark, if it
exists, plays a “dominant role in the process of balancing
the DuPont factors.” Recot Inc. v. M.C. Becton, 214 F.3d
1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
Asserted Fame of Plaintiff’s REGISTERED MAIL Mark
As noted, we are required to consider evidence of the
fame of plaintiff’s REGISTERED MAIL mark and to give great
weight to this du Pont factor, if fame is found to exist.
See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1309 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, supra; and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir
1992). “Famous marks thus enjoy a wide latitude of legal
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
14
protection.” Recot, 214 F.3d at 1327, 54 USPQ2d at 1897.
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. A famous mark is one “with extensive public
recognition and renown.” Id. See also Bose Corp. v. QSC
Audio Products Inc., 63 USPQ2d at 1305.
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,” by
widespread critical assessments and through notice by
independent sources of the products and services identified
by the marks, as well as by the general reputation of the
branded products and services. Bose, 63 USPQ2d at 1305-06,
1309. Although raw numbers of product and service sales and
advertising expenses may have sufficed in the past to prove
fame of a mark, raw numbers alone may be misleading. Some
context in which to place raw statistics may be necessary
(e.g., the substantiality of the sales or advertising
figures for comparable types of products or services). Id.
at 1309.
Because of the extreme deference that we accord a
famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
15
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to prove it clearly.
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d 1901, 1904 (TTAB 2007).
In this case, plaintiff’s evidence of fame may be
summarized as follows: The REGISTERED MAIL mark has been
used continuously for over 150 years, is offered in every
city in the United States, and is prominently advertised in
each of USPS’s 36,000 retail outlets. (Dilley Testimony,
pp. 38–39, Ex. 20). Since 1997, USPS has annually delivered
millions of pieces of mail bearing the REGISTERED MAIL mark,
which has generated tens of millions of dollars in annual
revenues. (Dilley Testimony, pp. 27, 34-35, Ex. 17, 18 and
19). In the combined five years prior to trial, USPS has
delivered over 26 million pieces of mail through REGISTERED
MAIL, resulting in over $310 million dollars in revenue.
(Ex. 17). In 2009 alone, USPS delivered over three million
pieces of REGISTERED MAIL, resulting in almost $50 million
in revenue. (Id.).
Plaintiff’s evidence shows long use of the REGISTERED
MAIL mark and substantial, though not overwhelming, revenues
during the five years prior to trial. However, plaintiff’s
evidence mostly consists of raw volume and revenue numbers
without any context by which we may assess these statistics.
See Bose, 63 USPQ2d at 1309. For instance, the record is
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
16
silent as to the recognition or revenues generated by
similar services offered by private carrier services. In
addition, plaintiff does not provide any evidence from media
outlets of recognition of its REGISTERED MAIL mark by
independent sources. Finally, we observe that while
defendant has not argued that the REGISTERED MAIL mark lacks
distinctiveness, we would be remiss not to note that while
plaintiff has used the REGISTERED MAIL mark for over 150
years, it appears, at best, to be very weak as applied to
plaintiff’s services.
In view of the extreme deference that is 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 that its mark is famous to clearly prove it.
Based on the evidence presented by plaintiff, we cannot
conclude that its mark is famous for purposes of a
likelihood of confusion analysis.
Similarity of the Marks
We must now determine whether defendant’s marks,
REGISTERED E-MAIL and (R)EGISTERED E-MAIL (standard
characters) and plaintiff’s REGISTERED MAIL mark, when
compared in their entireties in terms of appearance, sound
and connotation are similar or dissimilar in their overall
commercial impressions. See Palm Bay Imports, Inc. v. Veuve
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
17
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
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 terms of their
overall commercial impression that confusion as to the
source of the services offered under the marks is likely to
result. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ2d
106 (TTAB 1975).
In this case, plaintiff’s REGISTERED MAIL mark is
nearly identical to defendant’s REGISTERED E-MAIL and
(R)EGISTERED E-MAIL marks in appearance and sound. The sole
difference between the marks is the presence of the letter
“E” in defendant’s marks and the use of parentheses in one
of them. The slight variations in appearance and
pronunciation of the marks resulting from this difference
are far outweighed by the similarities. With regard to
meaning or connotation, the meaning of “mail” and “e-mail”
or “electronic mail” is a matter of common knowledge.
Plaintiff’s mark thus connotes paper mail provided with
proof of delivery while defendant’s marks connote electronic
mail provided with proof of delivery. These connotations
are highly similar notwithstanding that they apply to paper
mail on the one hand and electronic mail on the other.
Simply put, the marks suggest that these related forms of
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
18
communication may be made with proof of delivery. The
presence of the parentheses in defendant’s (R)EGISTERED E-
MAIL mark also does little to distinguish the marks. There
is nothing in the mark to suggest that the parentheses are
pronounced, and as a result they will not be apparent to
consumers speaking the mark. In addition, they do not
appear to provide an obvious difference to the meaning of
the mark, nor do they significantly change its appearance.
In view of the foregoing, we find that the similarities
between the parties marks in appearance, sound and
connotation far outweigh the differences and that, when
viewed as a whole, the marks overall convey highly similar
commercial impressions.
Similarity of the Services
We turn next to a consideration of the similarities or
dissimilarities between the parties’ services. We begin by
identifying the services provided by plaintiff under its
common-law REGISTERED MAIL mark. In its brief (p. 7),
plaintiff explains:
Registered Mail™ is a special service offered to
protect highly valuable items. Registered Mail™
is placed under tight security from the point of
mailing to the point of delivery, and insured up
to $25,000 against loss or damage. (Dilley Depo.,
Ex. 21) And it allows the sender to verify the
date and time of delivery and the delivery
attempts online or through receipt of an email.
(Id)

Thus, plaintiff’s services may be identified as mail
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
19
delivery service provided with additional security and
verification or proof of delivery. As recited in its
involved registrations, defendant’s services are “delivery
of messages by electronic transmission to a designated
recipient (to provide results) on a basis equivalent to (the
results obtained by) registered mail.”10 Defendant explains
in its brief (p. 8) that it provides
a managed email service that permits senders of
emails to electronically sign, encrypt, contract,
record, and diagnose message transmission
metadata, prove to other parties precisely what
content was contained in the body text and all
attachments of an email message, and authenticate
message metadata to reconstruct a validated
original email message with all attachments.

It is well established that the services of the parties
need not be similar or competitive, or even that they move
in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
respective services of the parties are related in some
manner, or that the conditions and activities surrounding
the marketing of the services are such that they could or
would 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 In re International Telephone & Telegraph

10 Material in parentheses is additional wording in the recitation
of services in Reg. No. 2928365. The recited services otherwise
are identical.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
20
Corp., 197 USPQ 910 (TTAB 1978); and Monsanto Company v.
Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978).
As noted above, petitioner’s services are mail delivery
services with additional security and proof of delivery. As
identified, defendant’s services are e-mail delivery
services intended to provide the same features as those
provided under the REGISTERED MAIL mark. As explained by
defendant, these features include security in the form of
encryption and proof of delivery. Thus, on the face of
their identification, defendant’s services appear to be
related to those provided by plaintiff. Indeed, the
recitations of defendant’s services state that such services
are intended to function in a manner akin to those provided
by plaintiff under its REGISTERED MAIL mark.
Defendant argues that its services “exclusively occur
by electronic message transmission,” (brief, p. 9, citing to
Khan Testimony, p. 6-8, 13-14, 16-17, 25-29) whereas
plaintiff’s services are provided exclusively with regard to
paper mail. The parties further argue at length regarding
the nature of certain electronic services offered by
plaintiff; whether such services may be considered
electronic messaging services; and the extent to which
plaintiff has been prohibited by Congress from entering or
expanding into the electronic messaging service.
We note, however, that it is unnecessary for us to
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
21
determine the extent of plaintiff’s presence in the
electronic messaging market. First, plaintiff’s evidence of
use of REGISTERED MAIL as a common-law mark is
overwhelmingly directed toward paper mail delivery with
additional security and proof of delivery. Second,
plaintiff made of record fifteen use-based third-party
registrations reciting both paper mail and package delivery
and related services and electronic mail delivery and
related services.11 Although these registrations are not
evidence that the marks shown therein are in commercial use,
or that the public is familiar with them, they nevertheless
are probative evidence to the extent that they suggest that
the services identified therein are of a type which emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988).
In short, the evidence of record shows that various
entities provide paper mail delivery, package delivery and
services related to tracking and providing proof of delivery
thereof, as well as electronic messaging and services
related to encrypting, storing, and providing proof of

11 Plaintiff’s Second Notice of Reliance. These include
Registration Nos. 1801313; 3208053; 3800207; 3136691; 3310770;
3356003; 3124984; 3227997; 3673566; 2961694; 2479989; 2263056;
2261071; 2015762; and 2261073.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
22
delivery thereof. In other words, the evidence of record
shows that services of a type provided by plaintiff and
defendant may emanate from a common source under the same
marks.
Channels of Trade and Classes of Purchasers
Defendant argues that its electronic messaging services
move in different channels of trade from those in which
plaintiff’s paper mail services are encountered. The
testimony and evidence adduced at trial presents conflicting
views on this point. Nonetheless, plaintiff’s core services
under its REGISTERED MAIL mark are clearly directed toward
paper mail while defendant’s services are exclusively
directed toward electronic mail. We observe, however, that
defendant’s services are intended to provide consumers with
an alternative to paper mail services but with the same
security and proof of delivery available to users of
REGISTERED MAIL services. Thus, it appears that plaintiff’s
services are encountered in somewhat different trade
channels from those in which defendant’s services are
marketed. On the other hand, the latter is provided as an
alternative to the former; and so there is an intended
overlap between consumers of both. In other words, the same
consumers of plaintiff’s services may utilize those of
defendant. We find, as a result, that while the parties’
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
23
services may be marketed in somewhat different channels of
trade, the end consumers are the same, at least in part.
Defendant’s Intent In Adopting Its Marks
Next, plaintiff points out that defendant has admitted
that its selection and use of the REGISTERED E-MAIL and
(R)EGISTERED E-MAIL marks, was made with actual knowledge of
defendant, its REGISTERED MAIL mark and with the intent to
partner with plaintiff and tie its marks and services to the
REGISTERED MAIL mark and services provided thereunder.
Defendant, for its part, argues (brief, p. 27) that from
2000 to 2002, the parties were in fact working together to
allow plaintiff to enter the electronic message transmission
trade channel utilizing defendant’s services. Defendant
further argues that “from the beginning, Rpost identified
its own product as ‘Registered eMail’” (Id.) and that “USPS
personnel admitted they were aware from the time Rpost first
approached USPS in mid-2000 that Rpost had been calling its
product ‘Registered eMail.’” (Id. at 27-28, Jacobson
Testimony, p. 16-17; 27-29; Khan Testimony, p. 47-48, Ex. 2,
10, 11.)
It is settled that mere knowledge of the existence of a
plaintiff’s mark does not, in and of itself, constitute bad
faith. See Action Temporary Services Inc. v. Labor Force
Inc., 870 F.2d 1563, 10 USPQ 1307 (Fed. Cir. 1989); and Ava
Enterprises, Inc. v. Audio Boss USA, Inc., 77 USPQ2d 1783
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
24
(TTAB 2006). In this case, it is clear that defendant’s
adoption of its marks was done with knowledge of plaintiff
and its REGISTERED MAIL mark. It further is undisputed
(stipulation of facts, paras. 4-5) that from February 2001
until April 2002, the parties engaged in a joint effort to
create a registered e-mail service based upon defendant’s
technology. Based upon the circumstances of this case, it
is not clear the extent to which defendant’s selection of
its marks was intended to further the joint purpose of the
parties from 200-2002 or to tie its brand to plaintiff’s
REGISTED MAIL mark. Furthermore, it appears that plaintiff
was aware of defendant’s intention to identify its services
by the involved marks when they were working together from
2001-2002. Thus, the record is not clear whether defendant
adopted its marks in bad faith. We accordingly treat this
factor as neutral.
Actual Confusion
Defendant argues in its brief (p. 31) that the “lack of
a single instance of actual confusion [since 2002] is
sufficient standing alone to dismiss this action.” While we
acknowledge this factor weighs in defendant’s favor, we also
note that it is often difficult to adduce reliable evidence
of actual confusion. See, e.g., Mallory & Church Corp., 25
USPQ2d 1236 (TTAB 1992). Furthermore, it is not necessary
to show actual confusion in order to establish likelihood of
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
25
confusion. See Weiss Associates Inc. v. HRL Associates Inc.
902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Finally, the
absence of actual confusion often is outweighed by other
factors including, in this case, the similarities between
the marks and related nature of the services. See, for
example, Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d
1333, 57 USPQ2d 1557 (Fed. Cir. 2001). We are therefore
unable to give this factor much weight in our analysis.
Summary
When all of the relevant du Pont factors are
considered, particularly the similarity of the identified
services and the similarities between the marks, we find
that defendant’s use of REGISTRED E-MAIL and (R)EGISTERED E-
MAIL for its recited services is likely to cause confusion
with respect to the services offered by plaintiff under its
REGISTERED MAIL mark.
False Suggestion of a Connection
Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§1052(a), provides, in relevant part, that registration may
be denied or cancelled when the mark “consists of or
comprises . . . matter which may . . . falsely suggest a
connection with persons living or dead.” A “person” may
include a corporation or governmental agency. Plaintiff,
USPS, thus may be considered a “person” for purposes of
Section 2(a). See In re Peter S. Herrick, P.A., 91 USPQ2d
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
26
1505 (TTAB 2009); and In re Brumberger Co., 200 USPQ 475
(TTAB 1978).
Following our principal reviewing court’s decision 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),
aff’g 213 USPQ 594 (TTAB 1982), the Board utilizes the
following four-part test to determine whether a false
suggestion of a connection has been established:
1. The mark is the same as, or a close
approximation of, the name of or identity
previously used by another person;

2. The mark would be recognized as such because
it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected
with the activities performed by the applicant
under the mark; and,

4. The prior user’s name or identity is of
sufficient fame or reputation that a connection
with such person would be presumed when applicant’s
mark is used on applicant’s goods.

In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008); In re White,
80 USPQ2d 1654, 1658 (TTAB 2006); In re Wielinski, 49 USPQ2d
1754, 1757 (TTAB 1998); and In re Sloppy Joe’s Int’l Inc.,
43 USPQ2d 1350, 1353 (TTAB 1997).12
Whether defendant’s marks are a close approximation of
the plaintiff’s identity?

12 Defendant’s assertion in its brief that likelihood of confusion
is a condition precedent to finding a false suggestion of a
connection was rejected by the Federal Circuit in University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217
USPQ at 509.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
27
As discussed above, defendant has registered the marks
(R)EGISTERED E-MAIL and REGISTERED E-MAIL, and seeks to
register the marks (R)EGISTERED RECEIPT and (R)ETURN
RECEIPT. With regard to defendant’s registered marks,
plaintiff argues (brief, p. 32) that “RPost identifies its
‘functional equivalent’ service with a name that is
virtually identical to one of the core services provided by
USPS.” With regard to the applied-for marks, plaintiff
argues (Id. at 33) that “RPost has tightened the connection
by also utilizing the subsidiary marks (R)egistered Receipt
and (R)eturn Receipt, to serve the very same functions that
the Return Receipt and Registered Receipt serve in the
USPS’s Registered Mail™ service.” Plaintiff explains (Id.)
that, “In short, RPost designed its service to closely
approximate USPS’s pre-existing and successful service.”
However, plaintiff does not explain how defendant’s
marks are a close approximation of its identity. Plaintiff
argues that defendant’s marks are the same as the names of
some of its services and other activities related to the
delivery of paper mail. Plaintiff does not argue, let alone
demonstrate, that defendant’s marks approximate the identity
of USPS. As discussed above, the evidence of record
suggests that defendant provides under its marks services
that are related to those provided by plaintiff under its
REGISTERED MAIL mark, and may also be related to activities
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
28
related to the delivery of paper mail identified by
plaintiff under the terms or phrases Return Receipt and
Registered Receipt. Nonetheless, there is insufficient
evidence that either plaintiff’s asserted mark or the terms
it uses to identify its services are the equivalent of
USPS’s identity such that defendant’s marks may be found to
be a close approximation thereof.
Whether defendant’s marks point uniquely and
unmistakably to plaintiff?

As to whether defendant’s marks point uniquely and
unmistakably to plaintiff, plaintiff argues (brief, p. 33)
that “The long-standing use of and notoriety associated with
the Registered Mail™ mark, and associated Return Receipt and
Registered Receipt services, equates that service with USPS”
[emphasis added]. While noted above, plaintiff has
demonstrated use of its REGISTERED MAIL mark for over 150
years, steady revenues and extensive presence in the paper
mail delivery market. Nontheless, plaintiff did not explain
or offer evidence to support its contention that defendant’s
applied-for marks point uniquely to USPS’s identity.
Rather, plaintiff’s arguments and evidence attempt to
associate defendant’s marks with plaintiff’s services.
Whether plaintiff is connected with defendant’s
services?

It is clear from the record of this case, and the
parties agree, that aside from their unsuccessful effort to
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
29
work together from 2000-2002, plaintiff USPS is not
connected with defendant RPost’s services.
Whether plaintiff’s name or reputation is sufficiently
famous that a connection with plaintiff would be
presumed when defendant’s marks are used on defendant’s
services?

Plaintiff argues (Id. at 34) that given the notoriety,
long use, and ubiquitous presence of itself and the
REGISTERED MAIL mark in the field of mail, “a connection
with USPS would be presumed from use of the Disputed Marks
with a service that operates as the ‘electronic’ or
‘functional equivalent’ of Registered Mail™, offering
secured delivery with a ‘return’ or ‘registered receipt.’”
Plaintiff further argues (Id. at 34-35) that “RPost’s
addition of ‘e-’ before mail suggests a direct connection
with (i.e., the electronic versions of) the Registered Mail™
service.” However, as discussed above, we have found
plaintiff’s REGISTERED MAIL mark not to be famous.
Furthermore, plaintiff has failed to argue or establish that
REGISTERED MAIL is synonymous with its identity such that
the requisite connection would be presumed.
Based upon plaintiff’s failure to establish the factors
enumerated by the Federal Circuit, this Section 2(a) claim
fails for lack of proof.

Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
30
Mere Descriptiveness
Finally, plaintiff argues that defendant’s involved
(R)EGISTERED E-MAIL; (R)ETURN RECEIPT; and (R)EGISTERED
RECEIPT marks are merely descriptive of its services.13
As noted above, Registration No. 2861922 for the mark
(R)EGISTERED E-MAIL is registered on the Principal Register
with a disclaimer of all the wording in the mark.
Application Serial Nos. 76437188 for the mark (R)ETURN
RECEIPT and 76438606 for the mark (R)EGISTERED RECEIPT are
registered on the Principal Register with disclaimers of all
the wording in the marks. In all cases, the parentheses
“()” around the letter “R” are the apparently distinctive
portion of the involved marks.
In support of its mere descriptiveness claim, plaintiff
argues that:
However, the (R) is itself merely descriptive of a
key functional feature of RPost's service.
Specifically, RPost's service is triggered when a
user places the "(R)" in the subject header of an
e-mail. (USPS NOR, Exhibits A-C, Interrogatory
No.9 and RPost's Answer to No. 9; Khan Trial
Depo., pp. 107-109; Exhibit 69, p.7). RPost
admittedly incorporated the "(R)" in its marks as
a reminder of how to use the service. Id.

13 Plaintiff correctly notes that defendant’s involved
Registration No. 2928365 for the mark REGISTERED E-MAIL is
registered on the Supplemental Register (with a disclaimer of “E-
MAIL”), which is a concession that the mark is merely descriptive
of the identified services. See Quaker State Oil Ref. Corp. v.
Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972);
and In re Cent. Soya Co., Inc., 220 USPQ 914, 916 (TTAB 1984).
As such, Registration No. 2928365 is not subject to this ground
for cancellation, and plaintiff does not so assert.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
31
Plaintiff further argues that:
Even if the "(R)" did not itself describe a
feature of the service, the addition of a
parenthesis is insufficient to negate the mere
descriptiveness of these marks and otherwise
render them non-descriptive. …

…RPost's addition of common punctuation does
not create a substantially different commercial
impression so as to magically transform the
admittedly descriptive terms, Registered e-Mail,
Registered Receipt and Return Receipt, into
distinctive and protectable marks. For this
independent reason, and because RPost has not come
forward with any evidence to otherwise establish
the secondary meaning in any of these marks,
registration should be rejected on grounds that
these marks are merely descriptive of RPost's
services. 15 U.S.C. §1052(e).

Plaintiff argues that this tribunal’s decisions in In re
Vanilla Gorilla L.P., 80 USPQ2d 1637 (TTAB 2006) (refusal to
register “3-O’s” for wheel rims affirmed); and In re
Litehouse Inc., 82 USPQ2d 1471 (TTAB 2007) (refusal to
register “Caesar! Caesar!” for salad dressing affirmed) are
persuasive in this case.
Whether a particular term is merely descriptive is
determined in relation to the services for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the issue is whether someone who knows what the
services are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
32
(TTAB 2002); In re Patent & Trademark Servs. Inc., 49 USPQ2d
1537, 1539 (TTAB 1998); In re Home Builders Ass’n of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); and In re Am.
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Turning to plaintiff’s first argument, we observe that
in order for defendant’s marks to be merely descriptive of
its recited services, the marks in their entireties must
immediately convey information about the services to someone
who is familiar with them.14 Defendant, by the disclaimers
has acknowledged that the wording “Registered E-Mail,”
“Return Receipt” and “Registered Receipt” is descriptive,
leaving us to determine if the “(R)” feature, common to all
of the involved designations, immediately conveys
information about the services to someone who is familiar
with them. In other words, an individual viewing
defendant’s marks, who is familiar with the services
identified thereby, would, according to plaintiff, need to
understand the nature of the services as a result of typing
“(R)” in the subject line of an email message and triggering
them. As plaintiff notes above, evidence made of record by
both parties indicates that typing “(R)” in the subject
header of an email is a method of triggering the recited

14 We further observe that to the extent plaintiff’s arguments may
be interpreted as asserting a functionality claim under Section
2(e)(5) of the Trademark Act, such a claim was neither pleaded
nor tried by the express or implied consent of the parties and,
as such, has been given no consideration.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
33
services.
However, plaintiff fails to show that consumers
familiar with defendant’s services will, without some
conjecture or reasoning, immediately understand that
defendant’s involved (R)EGISTERED E-MAIL, (R)ETURN RECEIPT
and (R)EGISTERED RECEIPT marks are merely descriptive
thereof as a result of that feature triggering such services
when “(R)” is typed in an email header. In other words,
even if defendant’s services include this feature, plaintiff
fails to demonstrate or produce evidence sufficient to show
that such feature, viewed in the context of defendant’s
involved marks, renders them merely descriptive. Rather, if
consumers are aware that typing “(R)” in the subject header
of an email message may trigger defendant’s services, the
presence of “(R)” in defendant’s marks imparts an additional
meaning thereto beyond the wording. Consumers viewing the
marks would perceive not only the wording, but the
additional significance of “(R)” and understand the marks to
suggest, rather than merely describe, a number of functions
or features of the services.
Turning to plaintiff’s second argument, we agree that
in many cases, merely descriptive marks featuring common
punctuation, such as hyphens and exclamation points, are not
rendered suggestive or otherwise registrable thereby.
Plaintiff argues (brief, p. 36) that “RPost’s marks would
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
34
each be pronounced as if the “()” were not present.”
However, the mere fact that the parentheses in defendant’s
marks are not vocalized does not necessarily render the
marks merely descriptive. In this case, defendant’s
involved (R)EGISTERED E-MAIL, (R)ETURN RECEIPT and
(R)EGISTERED RECEIPT marks feature parentheses not around a
word or phrase, but the single letter “R.” Consumers
familiar with the services, regardless of whether they are
aware of the feature discussed above, are likely to view the
letter “(R)” set off by parentheses in the marks as somewhat
incongruous or novel use of punctuation, imparting some
significance to the marks beyond that of the disclaimed
wording. In other words, this is not a case in which
defendant has merely added punctuation in a common or
conventional manner to the wording in its marks, e.g.,
REGISTERED EMAIL!, RETURN-RECEIPT or (REGISTERED RECEIPT).
Rather, defendant has surrounded a single letter with
parentheses, namely, “(R)” in its marks in a novel manner
that imparts a significance thereto beyond the wording.
Furthermore, if as discussed above consumers are aware
that typing “(R)” in the subject header of an email message
may trigger defendant’s services, the presence of “(R)” in
defendant’s marks suggests an additional meaning and,
combined with the wording, suggests rather than merely
describes the services.
Opp. Nos. 91158431 and 91158514; Canc. Nos. 92043665 and 92044260
35
In view thereof, we find that defendant’s marks are
highly suggestive of its recited services. However, we find
that plaintiff has failed to prove that the involved marks
are merely descriptive.15
Decision:
The petition to cancel is granted on the ground of
priority and likelihood of confusion as to both of
respondent’s challenged registrations. In view thereof,
Registration Nos. 2867278 and 2928365 will be cancelled in
due course. The petition to cancel on the grounds of false
suggestion of a connection is dismissed. The petition to
cancel Registration No. 2861922 on the ground of mere
descriptiveness is dismissed.
The notice of opposition to registration of application
Serial Nos. 76437188 and 76438606 is dismissed on the
grounds of false suggestion of a connection and mere
descriptiveness.
In view thereof, application Serial Nos. 76437188 and
766438606 will proceed to registration in due course.

15 Moreover, and as noted above, plaintiff’s REGISTERED MAIL mark
appears to be highly suggestive of the services identified
thereby.