Although TWA stopped flying more than a decade ago, American Airlines (which purchased TWA in 2001) still owns trademark registrations for TWA covering model airplanes. The TTAB recently found that those registrations were sufficient to prevent another company from registering the TWA mark for air transportation services.
The Applicant was a non-profit that provides experiential learning programs aboard restored TWA aircraft. It sought to register the following marks for “air transportation of passengers and freight”:
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The PTO refused registration citing American Airlines’ prior registrations for the word mark TWA and the following three design marks, all covering model airplanes:
The Board affirmed the refusal on the ground a likelihood of confusion exists. In particular, with respect to the similarity of the parties’ goods and services, the Board was persuaded by evidence showing that a number of major airlines sell model airplanes through the same websites that customers use to book flights.
Although Applicant argued that no likelihood of confusion exists because the purpose of its air transportation services was “for the purposes of education and historical preservation,” the Board rejected this argument because such limitation was not present in the identification. It does not appear that Applicant ever attempted to register the TWA mark for its primary educational services.
The case highlights that, in some circumstances, trademark owners no longer using a mark in connection with the original product/service may be able to extend their protection in the mark by offering collateral products. Also, when applying to register a mark, applicants should take care to limit their identification to the primary services offered—especially when they are aware of potential obstacles. In this case, had the Applicant sought registration for educational services, the result may have been different.
The case is In re TriStar History and Preservation Inc., Serial Nos. 86078454 and 86111943 (TTAB Sept. 3, 2015).