USAir, Inc.

Trademark Trial and Appeal Board

Jul 13, 1999

No. 74705433 (T.T.A.B. Jul. 13, 1999)

Paper No. 31
DEB
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
JULY 15, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re USAir, Inc.
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Serial No. 74/705,433
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Elliott I. Pollock of Pollock, Vande Sande & Priddy,
R.L.L.P. for USAir, Inc.
Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Cissel, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
USAir, Inc., a Delaware corporation, has filed an
application for registration of the mark “PRIORITY
TRAVELWORKS” for “computer software for accessing a
reservation system to book and pay for airline flights,
rental cars and hotel accommodations.”1

1 Serial No. 74/705,433, in International Class 9, filed July
18, 1995, based upon an allegation of a bona fide intention to
use the mark in commerce. An Amendment to Allege Use under 37
C.F.R. §2.76 was filed on January 19, 1996, claiming first use on
October 17, 1995.
Ser. No. 74/705,433
2
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark “PRIORITY TRAVELWORKS,” when used on its
software for making reservations online, so resembles the
registered mark, “TRAVEL WORKS” -- which is registered2 for
“travel agency” services, with the word “Travel” disclaimed
apart from the mark as shown -- as to be likely to cause
confusion, or to cause mistake, or to deceive
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
that sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.
Under the first du Pont factor, we examine the
similarities or differences in sound, appearance, meaning
and overall commercial impression of the two marks. As the
Trademark Examining Attorney points out, applicant has

2 Registration No. 1,868,625, issued to Travel Words, Ltd.,
an Arizona corporation, on December 20, 1994. The registration
sets forth dates of first use of March 30, 1989.
Ser. No. 74/705,433
3
added the word “PRIORITY” to the registered mark, “TRAVEL
WORKS,” which applicant changed only by deleting the space
between the word “travel” and the word “works.”
Applicant focuses on the number and nature of similar
marks allegedly used on similar goods and services. Based
upon the results of various trademark and trade name search
reports, applicant argues that the terms “Travel Works”
(two words) and “Travelworks” (the compound formulation)
are extremely weak in the field of travel agencies.
Applicant has identified from these computerized search
reports as many as fifty travel-related businesses
throughout the U.S. whose names include some variation on
this designation (e.g., data from state trademark
registrations and listings of common law trademarks and
trade names). Hence, applicant concludes that consumers
are forced to look to other indicia, such as arbitrary
elements elsewhere in these composite marks, to distinguish
among the various sources of “Travel Works” travel-related
goods and services.
However, search reports are of no probative value in
connection with a question of likelihood of confusion in
the absence of evidence of actual use of those marks.
Their appearance in these search results does not prove
that they are in use. Unless applicant establishes that
Ser. No. 74/705,433
4
the third-party marks shown in these computerized search
results are being used, there is no way an assessment can
be made as to what, if any, impact those marks may have
made in the marketplace. See Seabrook Foods, Inc. v. Bar-
Well Foods, Limited, 568 F.2d 1342, 196 USPQ 289 (CCPA
1977). In addition, it is not clear from the trade names
extracted from larger computerized databases whether those
names are even applied to goods or services. Furthermore,
there are arguable differences between the exact goods or
services indicated in the state registers of trademarks and
service marks, and applicant’s goods or registrant’s
services. Thus, even if there were proof of use in the
fifty entries highlighted by applicant, any actual uses on
dissimilar goods or services in unrelated fields would be
irrelevant. See Sheller-Globe Corporation v. Scott Paper
Company, 204 USPQ 329 (TTAB 1979) and Charrette Corp. v.
Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB
1989).
As to the significance of the word “PRIORITY” in
applicant’s mark, the Trademark Examining Attorney argues
that it is a highly suggestive term. He contends that
consumers acquainted with registrant may conclude that
“PRIORITY TRAVELWORKS” is “… a higher echelon (‘priority’)
of services…” having its source with registrant.
Ser. No. 74/705,433
5
By contrast, applicant maintains that the relevant
consumers have a prior relationship with applicant. As a
major domestic airline, applicant asserts that it has well-
established frequent traveler programs known as “Priority
Gold” and “Priority Gold Plus.” Applicant argues that its
customers know that the word “PRIORITY” in the airline
travel context has a strong source-indicating significance.
In assessing whether there is a likelihood of
confusion, we agree with applicant’s contention that the
respective marks must be compared in their entireties.
When one party has “merely added” additional matter to a
registered mark, there is not an inflexible rule that the
marks must be found to be similar. However, in this case,
when we consider the ordinary English meaning of the word
in conjunction with applicant’s goods, “priority” would
likely be understood to refer to preferential treatment
accorded to one’s best customers.3 Accordingly, in the
context of making travel arrangements, the word “PRIORITY”
as used in applicant’s mark must be viewed as a highly
suggestive term –- not a wholly arbitrary word.

3 We take judicial notice of an entry from The American
Heritage Dictionary of the English Language (1976): “PRIORITY:
precedence, especially established by order of importance or
urgency.”
Ser. No. 74/705,433
6
We turn next to the second du Pont factor, the
relationship between applicant’s software and registrant’s
travel agency services. The Trademark Examining Attorney
contends that applicant’s goods are inextricably related to
their intended function -- making online travel
reservations. He then argues that making one’s own travel
reservations online is an activity increasingly
indistinguishable from the services traditionally provided
by one’s local, storefront travel agent.
By contrast, applicant argues that its products are
not services, but goods –- computer software –- used by
savvy consumers who want to avoid having to purchase the
services provided by traditional travel agents. Applicant
points out, as summarized below, the factual differences in
the two ways consumers today can make a reservation for an
airline flight, hotel room or car rental.
First, the software approach: is available 24-hours a
day; is unaffected by the relative size of agent’s
commissions (on competing airlines, hotels, etc.); is
capable of maintaining personal itineraries over a long
period of time; has a personal travel portfolio that saves,
and then makes available to vendors, lots of travel-related
information not routinely saved or shared by one’s agent;
permits the consumer to book reservations directly without
Ser. No. 74/705,433
7
human intervention; enables the busy traveler to go online
and make instantaneous changes; and will be used only by
people comfortable with this type of technology.
By contrast, the traditional travel agency: is
available only on certain days, and usually from nine AM to
five PM; may well be biased by the agent’s schedule of
commissions; does not save every client’s itinerary over a
period of months or years; does not routinely maintain or
load one’s personal data into a vendor’s reservation
system; requires the traveler to go through a human
intermediary; may not be able to react as quickly to
cancelled flight, etc.; and finally, of course, the
traditional store-front travel agent may well be the only
choice for persons without access to online technology.
Furthermore, applicant argues that the hundreds of
businesses advertising their travel agency services online
are not the traditional travel agencies being threatened by
the recent explosion of online competition. Specifically,
applicant argues that the owners of the third-party federal
registrations supplied for the record by the Trademark
Examining Attorney (as well as those listed elsewhere in
the record, especially in an article excerpted from The New
York Times) are not travel agents. Rather, applicant
argues that the companies providing travel reservations
Ser. No. 74/705,433
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online, like applicant itself, are airlines, software
manufacturers, and others. By contrast, the Trademark
Examining Attorney argues that traditional travel agencies
are flocking to the Web to advertise their services, to
provide online reservations for hotels, cruises, rental
cars, airline flights, and the like.
It appears from the record that in order to remain
competitive (or perhaps even to stay in business),
traditional travel agencies are rapidly expanding their
services into cyberspace. Furthermore, whether travel-
related services are provided over the telephone, on the
Internet or in person, and whether the services originate
with a traditional travel agency, an Internet service
provider or a national carrier, these goods and services
are indeed competitive.
As to channels of trade and the class of consumers to
which its goods are marketed, applicant argues that its
software is available only to a limited, special group of
consumers, e.g., members of applicant’s “Priority Gold”
frequent traveler programs. Hence, unlike the contentions
of the Trademark Examining Attorney, applicant argues that
its software is not available for purchase by everyone.
However, we must decide the question of likelihood of
confusion based upon the goods and services as they are
Ser. No. 74/705,433
9
specified in the instant application for registration, and
the existing registration of Travel Words, Ltd., rather
than upon what applicant’s submissions during this ex parte
prosecution show the goods and/or services to be. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987) and CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983). Applicant lists its goods broadly as
computer software for accessing a reservation system to
book and pay for airline flights, rental cars and hotel
accommodations. When done in person rather than online,
much of the service one expects from a travel agent
involves reserving and paying for airline flights, rental
cars and hotel accommodations. The close relationship of
these goods and services is therefore apparent.
Moreover, even if applicant had restricted its
identification of goods to limit its customers to
applicant’s frequent flier program participants, this sub-
group of consumers could well include those who may also
avail themselves of registrant’s travel agency services.
Hence, there would still be an overlap in consumers.4

4 As to the fourth du Pont factor (i.e., the buyers to whom
sales are made), we also conclude that not all of applicant’s
frequent travelers can be assumed to be sophisticated purchasers.
Ser. No. 74/705,433
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In conclusion, after examining all the relevant
du Pont factors, we find that there is a likelihood of
confusion in the instant case. Specifically, our finding
is based upon the overall similarity of the marks, the
competitive nature of the goods and services, the overlap
in consumers, and the fact that these consumers are
ordinary travelers who are not necessarily sophisticated
purchasers of these goods and services.
Decision: The refusal to register is affirmed.
R. F. Cissel
G. D. Hohein
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board