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The U.S. Court of Appeals for the Federal Circuit affirmed a decision of the Trademark Trial and Appeal Board denying a petition to cancel America Online’s service mark ONLINE TODAY. In 1983 CompuServe began using the mark ONLINE TODAY as the name of its print magazine, and in 1984 in connection with online computer services. On-Line Careline Inc. began using the mark ON-LINE TODAY in 1992 as a trade name. In 1993 On-Line Careline filed an application to register ON-LINE TODAY with the Patent and Trademark Office as a mark for electronic information services. In April 1995, the PTO issued a notice of publication for the mark and CompuServe filed a notice of opposition a few months later. CompuServe alleged that it had been continuously using the ONLINE TODAY mark for years before On-Line Careline filed its application. In November 1995, CompuServe was issued a registration for the ONLINE TODAY mark for providing online computer services. In May 1996, On-Line Careline petitioned for cancellation of CompuServe’s mark on the grounds it was using the mark, and CompuServe was not using the mark for the services it had set forth in its application which resulted in CompuServe abandoning the mark. In 1998, the Trademark Trial and Appeal Board held a hearing on the opposition by On-Line Careline and determined that there was a likelihood of confusion between the two marks. During the cancellation proceedings America Online was substituted for CompuServe. The board denied On-Line Careline’s petition to cancel AOL’s mark. On-Line Careline appealed. The court first addressed the issue of whether the two marks were likely to be confused, and noted that a likelihood of confusion determination is based on underlying factual determinations. On-Line Careline argued that the two marks were similar, but that other factors weighed against the a finding of likelihood of confusion. The court reviewed the board’s determination based on the factors in a likelihood of confusion determination as set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), and held that the board did not err in finding that a likelihood of confusion existed between the two marks. The court then addressed the issue of whether AOL’s mark could be canceled because it was abandoned. On-Line Careline argued that AOL only used the ONLINE TODAY mark as part of a drop-down menu rather than for the purpose of providing online services as specified in its registration. The court agreed with the board’s determination that AOL was providing access through the use of the drop-down menus and that AOL had not abandoned the mark. Accordingly, the court affirmed the board’s decision. Judge Arthur Gajarsa’s opinion was joined by Judges S. Jay Plager and Alan Lourie.

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