Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ITEL CORPORATION
v.
ROBERT AINSLIE
July 28, 1988
Opposition No. 72,956 to application Serial No. 530,880, filed April 4, 1985
Townsend and Townsend for Itel Corporation
Baker, Maxham & Jester for Robert Ainslie
Before Rice, Rooney and Seeherman
Members
Member
An application has been filed to register the mark I-TEL, as shown below for telephones and parts therefor
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
claiming use since February 15, 1985. Itel Corporation has opposed. The grounds for opposition are that, prior to applicant's claimed use date, opposer adopted and began use of the mark and trade name ITEL in its business of marketing, leasing, managing, repairing and rendering other services relating to a wide variety of products and equipment, including computer equipment and other equipment having electronic components. Opposer alleges further that it owns a registration for its mark [FN1] for services in four classes (specifically recited hereafter); that the wide variety of goods and equipment marketed or otherwise dealt with by opposer are commercially related to applicant's goods; and that applicant's goods are likely to be sold or otherwise marketed to "purchasers of capital equipment, the same consumers, and in the same geographical area." Finally, opposer asserts that applicant's mark, as used in connection with its goods, is so similar to opposer's as used in connection with its business as to be likely to cause confusion, mistake or deception. Applicant denied opposer's allegations.
Of record are status and title copies of opposer's registration, portions of the discovery deposition of Robert Ainslie, applicant, and certain enumerated exhibits and documents produced in connection therewith, all introduced by opposer's notice of reliance.
Neither party took testimony and no oral hearing was held in this matter.
Opposer argues in its brief that it conducts all business under its name and mark ITEL and that it markets, leases, manages, repairs and renders other services relating to a wide variety of capital products and equipment having electronic components. Applicant's goods, asserts opposer, feature "advanced microcomputer technology" and the capital equipment which opposer's leasing services concern "may, of course, include telephone, computer, and other electronic capital equipment." Also, argues opposer, according to the American Business Communications [FN2] Equipment Acquisition Agreement" form, applicant's customers also have the option to lease, rather than purchase, applicant's telephones. It is opposer's position that applicant's trade channels, customers and geographical areas of distribution closely parallel its own, applicant selling its telephones to businesses just as opposer markets its services to businesses. Finally, opposer asserts that applicant was aware of opposer's mark, if not before it adopted its mark, at least shortly thereafter.
*2 Opposer has offered no evidence related to its own activities other than its registration. However, because of the existence of opposer's valid and subsisting registration, it need not prove prior use as to the services recited therein. Section 2(d) of the Trademark Act of 1946 precludes registration of a mark which so resembles a mark "registered in the Patent and Trademark Office" or one "previously used in the United States by another" as to be likely, when applied to the applicant's goods, to cause confusion, mistake or deception. Apart therefrom, in the absence of evidence regarding its date of first use, opposer may rely on the filing date of the application from which its registration issued. That date is December 26, 1978, long prior to either applicant's filing date or the first use date established by Mr. Ainslie's deposition.
Opposer's mark is shown in plain block letters while applicant's is stylized. However, since both consist of the same four letters, they are essentially identical. Moreover, they are easily pronounceable and more often than not would be used verbally in calling for the parties' goods or services. Thus, if used on the same or similar goods or services, they would be likely to cause confusion.
The only question, therefore, is whether the goods of applicant are sufficiently related to opposer's services that confusion would be likely as a result of their being marketed under these marks.
Section 7(b) of the Act reads as follows:
A certificate of registration of a mark upon the principal register provided by this Act shall be prima facie evidence of the validity of the registration, registrant's ownership of the mark, and of registrant's exclusive right to use the mark in commerce in connection with the goods and services specified in the certificate, subject to any conditions and limitations stated therein.
Opposer's registration recites services in four classes as follows:
Brokerage services, namely, arranging lease agreements between capital equipment owners and users; lease-purchase financing services in Class 36.
Leasing services featuring machine tooling and manufacturing equipment; intermodal cargo containers and chassis and rail equipment maintenance services in Class 37.
Leasing services featuring intermodal cargo containers and chassis, railroad equipment, trucks, truck trailers and other motor vehicles, ships, barges, and aircraft; ship charter services for commercial shippers in Class 39.
Leasing services featuring mining equipment and power plant equipment in Class 42.
Opposer argues that applicant's telephones feature advanced microcomputer technology. (Exhibits 2.2, 3.2 and 6.2 to Ainslie's deposition); that telephones are capital equipment used by businesses and an essential tool in conducting business; and that applicant provides a lease option for its goods, as well as offering outright sales.
Applicant's position is that opposer has offered no evidence to show that it leases telephone equipment or any type of electronic or communication equipment featuring computers or the like and that it is unlikely that such would be included in the heavy transportation and cargo handling equipment which is the subject of opposer's services.
*3 Opposer's rejoinder is that its identification of services is broad enough to encompass services which deal with applicant's goods and, citing In re Appetito Provisions Co., 3 USPQ 2d 1553 (TTAB 1987), since the specification of services is not restricted, one "cannot rule out the possibility that registrant's [capital equipment leasing services] specialize in [telephones], the very product that [Applicant] sells [and leases]."
There is no question that the services recited in opposer's registration for Classes 37, 39 and 42 indicate that opposer leases heavy equipment. Opposer asks, however, that we read the services recited for Class 36 broadly since it does not specify what materials are included. That identification reads, brokerage services, namely, arranging lease agreements between capital equipment owners and users; lease-purchase financing services.
First, based on the information we have and that consists of the registration only, opposer serves as a broker, arranging leases (and financing) between the users and the owners of capital equipment. This service clearly involves heavy duty equipment such as the mining and power plant equipment, ships, barges and aircraft identified in Classes 37, 39 and 42. Opposer may serve as a broker for the leasing of equipment other than that for which it specifically registered its mark but there is no evidence in the record to support its claim that its brokerage services include leases of computers and other electronic equipment. While the identification of services in Class 36 is somewhat broad, it is, nonetheless, limited by the term "capital equipment" which is "accumulated goods devoted to the production of other goods: facilities or goods utilized as factors of production ... any accumulated factors of production capable of being owned." (Webster's Third New International Dictionary 1976)
While an opposer is entitled to rely only on the statutory presumptions flowing from its registration, in doing so, the opposer accepts a calculated risk that the registration alone may be deemed insufficient to establish its claim of damage. Cf. Hyde Park Footwear Company, Inc. v. Hampshire-- Designers, Inc., 197 USPQ 446 (TTAB 1978). In this case, although there is no question that telephones are utilized in virtually every business enterprise, we do not believe, in the absence of evidence to the contrary, that they may be fairly encompassed in the term "capital equipment", as used in the opposer's identification of services.
As for the case cited by opposer, In re Appetito Provisions Co., supra, finding the present applicant's telephones and parts therefor to be included within the recitation of opposer's brokerage services for capital equipment is a far cry from considering the applicant's goods in the cited case, Italian sausage, within the range of the broadly defined restaurant services of the cited registration.
*4 Accordingly, since opposer has failed to prove that applicant's goods are related to opposer's services, the opposition is dismissed.
J.E. Rice
L.E. Rooney
E.J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Regn. No. 1,200,645 issued July 6, 1982, Sections 8 & 15 accepted and filed, respectively.
FN2. Opposer refers to American Business Communications as applicant's fictitious business name and a company called Futura Communications, Inc. as "applicant's business." Although there is testimony in Mr. Ainslie's discovery deposition indicating his knowledge of the activities of those companies, there is nothing which clearly establishes exactly what Ainslie's connection is to either company.