TTAB Test: Are Airline Services Related to Model Airplanes Under Section 2(d)?
The USPTO refused to register the two marks shown immediately below, for "air transportation of passengers and freight," finding the mark likely to cause confusion with the registered marks TWA (in standard character form) and three design marks featuring the term TWA, for model airplanes. The marks are legally identical or similar, but what about the goods and services. Would a consumer expect a model airplane maker to run an airline? In Re TriStar History and Preservation Inc., Serial Nos. 86078454 and 86111943 (September 3, 2015) [not precedential].
The marks: Applicant's stylized mark is, of course, virtually identical to the registered TWA mark, and its second mark is dominated by the letters TWA and "looks similar to TWA in typed form, sounds identical and convey a highly similar meanings." With regard to the three cited design marks (shown below), TWA is the dominant element of two of them. As to the third, the words "TRANS WORLD" merely indicates what TWA stands for. Is short, while there are differences between the involved marks, they "are still more similar than different, in how they look and sound and in the meaning they convey."
Given the close similarity between applicant's marks and the cited typed mark TWA, this first du Pont factor weighed heavily against applicant. Moreover, the proximity of the marks also reduced the degree of similarity between the involved goods and service necessary to support the Section 2(d) refusal.
The goods and services: Examining Attorney Caitlin Watts-Fitzgerald introduced Internet evidence showing that United Airlines, US Airways, and American Airlines (which the Board recognized, without evidence, as well-known, major airlines) not only sell model airplanes, but on the same websites sell their respective air transportation services under the same respective marks.
The Board acknowledged that a mere three examples of third-party use usually might not be persuasive evidence, but the Board took notice that "by its nature, aviation is exceedingly difficult and expensive," and "there are a small number of major airlines." Therefore, three examples was enough vis-a-vis the "oligopolistic airline industry."
Consumers aware that major airlines sell model planes and familiar with Registrant’s cited marks will be likely, upon seeing that the TWA in Applicant’s marks is presented in the same manner as the TWA on the tails of Registrant’s design marks, to assume a connection between the sources of Applicant’s services and Registrant’s goods. See Monogram Models, Inc. v. Ford Motor Company, 176 USPQ 498 (TTAB 1972) (finding likelihood of confusion from use of same mark for full-sized automotive vehicles and scale model assembly kits for automobiles).
Thus the evidence established that the involved goods and services are related and travel through the same channels of trade.
Applicant argued that it intends to transport passengers and freight "for the purposes of education and historical preservation." Applicant will be "intimately involved in interaction with its customers," and therefore there would be no source confusion. The Board was unmoved, noting for the zillionth time that the question of registrability is determined based upon the recitation of services set forth in the subject application, regardless of actual marketplace conditions.
Finally, applicant contended that confusion is not likely because its customers are sophisticated and careful. The Board acknowledged that consumers of airline transportation will exercise some care, but here the marks are very similar and consumers are accustomed to seeing airlines providing these services and model airplanes at their websites. In sum, this particular factor was outweighed by the similarities between the marks and the relatedness of the goods and services.
And so the Board affirmed the refusals to register.
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Text Copyright John L. Welch 2015.