Van Go Delivery, LLC

Trademark Trial and Appeal Board

Jan 8, 2014

No. 85622846 (T.T.A.B. Jan. 8, 2014)

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

Mailed: January 8, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Van Go Delivery, LLC
________

Serial No. 85622846
_______

Matthew H. Swyers of The Trademark Co. for Van Go Delivery,
LLC.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Kuhlke, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Van Go Delivery, LLC, filed an application,
as amended, to register on the Principal Register the mark
shown below for “expedited and dedicated delivery of small
packages and general commodities of freight” in
International Class 39.1

1 Application Serial No. 85622846 was filed on May 11, 2012,
seeking registration on the Principal Register under Section 1(a)
of the Trademark Act, asserting October 3, 2007 as a date of
first use of the mark anywhere and in commerce. “DELIVERY” is
disclaimed apart from the mark as shown. The color(s) green and
black is/are claimed as a feature of the mark. The mark consists
Ex Parte Appeal No. 85622846

2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark VANGO previously registered in
standard characters on the Principal Register for
“transportation of art work, picture frames and light
fixtures for others” in International Class 39,2 as to be
likely to cause confusion, mistake or deception.3 When the
refusal was made final, applicant appealed.
Likelihood of Confusion
Our determination of the issue of likelihood of

of a green swirl over which is written the black text "Van Go
Delivery" without the quotation marks, followed the black text
'"Our expedited service is a work of art"' with the quotation
marks. The color white represents background, outlining, shading
and/or transparent areas and is not part of the mark.

2 Registration No. 1558971 issued on October 3, 1989, reciting
additional goods in International Classes 16 and 20 and services
in International Class 42. Section 8 and 15 affidavits accepted
and acknowledged. Renewed.

3 In her April 12, 2013 Office action, the examining attorney
withdrew her refusal to register under Section 2(d) as to
Registration No. 1760319. Applicant has satisfied all of the
examining attorney’s outstanding requirements.

Ex Parte Appeal No. 85622846

3
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
We first turn our attention to a comparison of the
marks. In determining the similarity or dissimilarity of
the marks, we must compare the marks in their entireties as
to appearance, sound, connotation and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (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 their entireties that confusion as to the source
Ex Parte Appeal No. 85622846

4
of the services offered under the respective marks is
likely to result.
Because the similarity or dissimilarity of the marks
is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981). On
the other hand, different features may be analyzed to
determine whether the marks are similar. Price Candy
Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105
USPQ 266, 268 (CCPA 1955). In fact, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 224 USPQ at 751.
In this case, applicant’s mark,

Ex Parte Appeal No. 85622846

5
is similar to the mark VANGO in the cited registration in
that the wording “VAN GO” in applicant’s mark is identical
to registrant’s mark in sound and nearly identical in
appearance. In addition, VANGO or VAN GO appears to be a
novel spelling of “Van Gogh,” itself a reference to the 19th
Century Dutch Impressionist painter Vincent Van Gogh.4
Thus, the wording VANGO or VAN GO in the marks appears to
be a play on the artist’s name suggesting delivery or
transportation by van. As a result, the sole term
comprising registrant’s mark is nearly identical to the
first and most distinctive term in applicant’s mark, given
that the term DELIVERY in applicant’s mark is disclaimed
and appears to merely describe a feature or characteristic
of its services, and the slogan “our expedited service is a
work of art” and green swirl serve as artistic references
to further reinforce the term “VAN GO” and the connotation
of the artist Van Gogh.
Moreover, in the case of marks consisting of words and
a design, the words are normally given greater weight
because they would be used by consumers to request the
products [and/or services]. In re Dakin’s Miniatures,

4 The examining attorney made of record with her April 12, 2013
Office action a dictionary definition of “Van Gogh” obtained from
newcollegiatedictionary.com.

Ex Parte Appeal No. 85622846

6
Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito
Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food,
Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983).
For these reasons, we find that “VAN GO” is the
dominant term in applicant’s mark and accordingly it is
entitled to more weight in our analysis. In coming to this
conclusion, we do not discount the presence of the
additional wording and swirl design in applicant’s mark.
However, for the reasons discussed above we find that the
term “VAN GO” is more prominent and more likely to be
remembered by consumers.
The term VANGO or “VAN GO” as it appears in both
marks, is identical in sound and connotation, and nearly
identical in appearance. Furthermore, registrant’s mark is
presented in typed or standard characters and therefore we
must consider that it may be presented in the same
stylization found in applicant’s mark. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir.
2012). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000). As a
result, we find that, when viewed in their entireties, the
Ex Parte Appeal No. 85622846

7
marks VANGO and are more
similar than they are different and, overall, convey
similar commercial impressions. That is to say, the marks
appear to be variations of each other that point to a
common source. As such, this du Pont factor favors a
finding of likelihood of confusion.
In coming to our determination with regard to the
similarity of the marks, we have considered applicant’s
arguments and evidence regarding the existence of three
third-party registrations for VANGO or VAN GO marks and ten
third-party registrations for VAN- or GO- formative marks
for a variety of goods and services related to
transportation and vehicles. These include:
Registration No. 3652471 for the mark VAN GO for
“rental and leasing of passenger vans;”

Registration No. 3629471 for the mark VANGO for
“vehicle covering systems” consisting of fitted
and unfitted tarpaulins and a movable framework;
and

Registration No. 3209293 for the mark VANGO for
“garment bags for travel, travelling bags,
valises.”

The remaining third-party registrations are for marks
consisting either of the term VAN or GO and thus are less
Ex Parte Appeal No. 85622846

8
similar than either of the marks involved herein than those
marks are to each other.
We find that applicant’s evidence of third-party
registrations is entitled to limited probative value. The
registrations are not evidence of use of the marks shown
therein. Thus, they are not proof that consumers are
familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace.
See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Moreover,
the probative value of the third-party registrations is
diminished by virtue of the fact that the trademarks cover
a variety of goods and services that are less closely
related to the types of services involved herein than those
services are related to each other. See Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991),
aff’d unpub., (Appeal No. 92-1086, Fed. Cir., June 5,
1992). In any event, even if we were to find, based on
applicant’s evidence, that registrant’s mark is weak and
entitled to a narrow scope of protection, the scope is
still broad enough to prevent the registration of a similar
mark for services encompassed by those recited in the
Ex Parte Appeal No. 85622846

9
involved application. See In re Farah Manufacturing Co.,
Inc., 435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971).
The Services and Their Channels of Trade
We turn now to our consideration of the identified
services, noting that it is not necessary that the services
at issue 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 instead that the
respective services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the 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
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant’s services are “expedited and
dedicated delivery of small packages and general
commodities of freight” and registrant’s services are
“transportation of art work, picture frames and light
fixtures for others.” We hereby take judicial notice of
the following dictionary definitions:5

5 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
Ex Parte Appeal No. 85622846

10
delivery – the carrying and turning over of letters,
goods, etc., to a designated recipient or recipients;6
transportation – the act of transporting;7 and
transport – to carry, move, or convey from one place
to another.8
Based upon these definitions, applicant’s services
involve the carrying and turning over of small packages and
general commodities of freight and registrant’s services
involve carrying or moving art work, picture frames and
light fixtures of others. Registrant’s narrowly recited
art work, picture frames and light fixtures are encompassed
by applicant’s more broadly identified small packages and,
in particular, general commodities of freight. Thus,
applicant’s services, involving the carrying and turning
over of small packages and general commodities of freight,
as identified, encompass registrant’s more narrowly
identified services involving the carrying or conveying
from one place to another of art work, picture frames and
light fixtures.

In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
6 Dictionary.com, based on The Random House Dictionary, 2013.
7 Id.
8 Id.
Ex Parte Appeal No. 85622846

11
In determining the issue of likelihood of confusion in
ex parte cases, the Board must compare applicant’s goods or
services as set forth in its application with the goods or
services as set forth in the cited registration. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Where the services
in the cited registration and/or application are broadly
identified as to their nature and type (as is the case
herein with respect to the services in the involved
application), such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in
scope the identification of services encompasses not only
all the services of the nature and type described therein,
but that the identified services are offered in all
channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.
Id.
Accordingly, we are not persuaded by applicant’s
arguments and extrinsic evidence that its services are sold
directly to indirect air carriers and cargo airlines while
registrant’s services are offered exclusively through its
art gallery and internet website. Simply put, under the
circumstances of this case we may not entertain
restrictions to applicant’s or registrant’s services, or
Ex Parte Appeal No. 85622846

12
the channels of trade in which they may be encountered,
that are not reflected in the services as identified in the
involved application and cited registration. See, e.g.,
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); and
Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d
937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
As a result, the du Pont factors of the similarities
between the services and their trade channels favor a
finding of likelihood of confusion.
Sophistication of Purchasers
As discussed above, neither the application nor the
cited registration includes any limitation on the customers
to whom the respective services are rendered so we must
consider the relevant purchasers to include all of the
usual customers for the recited services. See In re
Elbaum, 211 USPQ at 640. While some of the customers of
applicant’s and registrant’s services are undoubtedly
sophisticated in such matters, the potential purchasers for
these services also include individuals and small
businesses exercising no more than an ordinary level of
sophistication.
Even if we accept, in considering the fourth du Pont
factor, applicant’s assertion that the involved services
Ex Parte Appeal No. 85622846

13
may be the subject of sophisticated purchases, even careful
purchasers are likely to be confused by highly similar
marks used in connection with related services. As stated
by our primary reviewing court, “[t]hat the relevant class
of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even
of discriminating purchasers ... are not infallible.’” In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986), quoting Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970).
Therefore, even if it is true in this case, the fact
that the purchasers may exercise care before purchasing
these services does not mean there can be no likelihood of
confusion. In the present case, the similarity between the
marks and the similarity between the services as identified
outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods). As such, this du Pont factor is, at
Ex Parte Appeal No. 85622846

14
best, neutral or slightly favors a finding of no likelihood
of confusion.
Actual Confusion
Finally, applicant argues that there is no evidence of
any actual confusion and that there has been concurrent use
since October 2007. We do not accord significant weight to
applicant's contention, unsupported by any evidence, that
there have been no instances of actual confusion despite
contemporaneous use of the respective marks. The Federal
Circuit has addressed the question of the weight to be
given to an assertion of no actual confusion by an
applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
Ex Parte Appeal No. 85622846

15
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s services offered under its
above-referenced mark would be likely to believe, upon
encountering applicant’s services rendered under its mark,
that the services originate with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant and not, as urged by applicant, in its favor.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir.
1984).
Decision: The refusal under Section 2(d) of the Act
is affirmed.