IP Law Daily, TRADEMARK—TTAB: ORLANDO SANFORD INTERNATION AIRPORT registration denied, (Mar 23, 2023)

By George Basharis, J.D.

The proposed mark for airport services within 31 miles of Orlando, Florida was confusingly similar to ORLANDO INTERNATIONAL AIRPORT.

The standard-character mark ORLANDO SANFORD INTERNATIONAL AIRPORT (INTERATIONAL AIRPORT disclaimed) and a composite word-and-design mark for “airport services” were confusingly similar the registered mark ORLANDO INTERNATIONAL AIRPORT for an airport located 31 miles away in Orlando, Florida, the Trademark Trial and Appeal Board has decided. The Board found the marks were similar in sight and sound, had generally the same meaning, and made similar commercial impressions. Moreover, finding the presence of the geographically descriptive term SANFORD did not distinguish the marks because Sanford is in close proximity to Orlando, the Board sustained an opposition to registration of ORLANDO SANFORD INTERNATIONAL AIRPORT by Greater Orlando Aviation Authority (Greater Orlando Aviation Authority v. Sanford Airport Authority, March 14, 2023, Allard, M.).

Sanford Airport Authority sought registration of the mark ORLANDO SANFORD INTERNATIONAL AIRPORT (in standard characters, INTERNATIONAL AIRPORT disclaimed) and a related and a composite logo mark consisting of an oval-like shape with the words ORLANDO SANFORD above the words INTERNATIONAL AIRPORT composite word-and-design mark for “airport services” in International Class 39. Greater Orlando Aviation Authority opposed registration based on a likelihood of confusion with its standard character mark ORLANDO INTERNATIONAL AIRPORT and related composite word-and-design mark for airport services. Opposer has continuously provided airport services under its registered marks for at least 40 years and claimed its marks acquired distinctiveness long before the Sanford Airport Authority filed its application.

Applicant operates the Orlando Sanford International Airport in Sanford, Florida, which is approximately 31 miles from the Orlando International Florida. Applicant has offered airport services under its ORLANDO SANFORD INTERNATIONAL AIRPORT mark since 1996.

After ruling on various evidentiary objections and on the opposer’s standing to bring an opposition proceeding (which was established by the pleaded registrations), the Board conducted a likelihood of confusion analysis. In addition to its pleaded registrations, opposer argued that is common law rights in its word mark had acquired distinctiveness prior to applicant’s use of the proposed marks and therefore the Board was not required to consider the pleaded registrations in its confusion analysis. The Board rejected the claim because the issue was not briefed and also because opposer’s composite word-and-design mark were used most frequently and consistently. The pleaded registrations also offered other advantages such as prima facie evidence of validity.

The Board determined the parties’ services, customers, and channels of trade were identical, as they both offer airport services to the public. The Board also found the literal elements of the opposer’s registered mark ORLANDO INTERNATIONAL AIRPORT were very similar to the literal elements of applicant’s word mark ORLANDO SANFORD INTERNATIONAL AIRPORT because the mark incorporated all of the literal elements of opposer’s mark in the same order. The marks were similar in sight and sound, had the same meaning, and made similar commercial impressions, according to the Board. The Board found the geographically descriptive term SANFORD did not distinguish the marks given Sanford’s close proximity to Orlando.

Turning to the strength of opposer’s registered mark, the Board found the mark to be conceptually weak but commercially strong. According to the Board, the wording ORLANDO INTERNATIONAL AIRPORT was not inherently distinctive or conceptually strong, in fact the mark had been registered pursuant to a claim of acquired distinctiveness under Section 2(f). Nonetheless, the Board refused to take judicial notice of other airports sharing the name of a city, stressing that even weak marks are entitled to protection against confusion.

The Board then considered the commercial strength of opposer’s mark, as measured by sales volume and marketing efforts. Opposer noted that it spends millions each year to promote its marks, which are viewed by millions of airline passengers and visitors to its website. Opposer also offered the testimony of its survey expert who concluded that consumers overwhelmingly viewed an airport with the name “Orlando” in its title as being in one location: Orlando. The Board concluded that opposer’s registered mark was commercially strong and rejected applicant’s arguments that the mark was weak and generic, finding the arguments constituted improper collateral attacks on the validity of the registration.

Evidence of actual confusion was based on customer feedback, the testimony of confused travelers, Twitter posts, and published articles alerting readers that ORLANDO INTERNATIONAL and ORLANDO SANFORD were not the same airport. Although much of the evidence was hearsay, the Board found it competent to show the public’s perception of the competing marks and supported its conclusion that confusion was likely. Applicant contended that the evidence was de minimis considering the high volume of passengers served by parties’ airports. However, the Board refused to give any weight to the argument because applicant failed to show how the number of travelers reporting confusion related to the total universe of confused consumers. The Board further found the argument unpersuasive given the parties offered identical services to the same consumers using nearly identical marks.

Considering consumer sophistication, the Board found both airports served travelers of all different levels of sophistication, from well-seasoned travelers to first-time flyers. Because unsophisticated consumers were potential customers, the Board found the factor favored a finding of confusion. However, the Board rejected opposer’s contention that applicant had an improper motive when it adopted the proposed mark because there was no evidence of an intent to confuse, a requirement for a bad faith finding. Consequently, the factor was deemed neutral.

Weighing all the factors, the Board concluded that the weight of the evidence favored a finding that consumers would likely be confused by the applicant’s mark. It thus refused opposition. The Board also rejected applicant’s affirmative defense of acquiescence, explaining the equitable defense applies only to inter partes proceedings.

The Case is Opposition Nos. 91234602 and 91235774.

Attorneys: Stephen H. Luther (Luther Law PLLC) for Greater Orlando Aviation Authority. Woodrow H. Pollack (Shutts & Bowen LLP) for Sanford Airport Authority.

Companies: Greater Orlando Aviation Authority; Sanford Airport Authority

Cases: Trademark USPTO