Most everyone knows about the popular program for frequent travelers termed TSA PRECHECK®. The program allows for U.S. citizens and U.S. lawful permanent residents to register with the Transportation and Security Administration (“TSA”), an agency of the U.S. Department of Homeland Security (“Homeland”), for expedited screening when traveling through a U.S. airport.  The program includes an in person interview as well as a background check and fingerprinting at an enrollment center.

TSA PRECHECK® mark

Homeland owns trademarks for TSA PRECHECK® as a standard character word mark (Registration No. 6,178,077) as well as a design mark (Registration No. 4,559,587) shown below:

TSA Precheck logo
Image taken from registration

The word mark registered in October 2020 with a date of first use of October 2011. The design shown above, registered in July 2014 with a date of first use of October 2011. Both marks registered for “airline passenger security screening services, namely, an expedited screening initiative that enhances aviation security and expedites the travel experience by pre-screening individuals who volunteer to participate in the program” in class 45.

Safepassport, Inc. (“Safepassport”) filed an intent to use trademark application in April 2020 for the mark shown below:

Covid precheck logo
Image taken from application

Intent to use trademarks are filed when the owner has not yet used the mark in interstate commerce but has a bona fide intent to use the mark for the enumerated goods/services in the future. Intent to use trademark applications represent a way to establish priority for the mark prior to using it in commerce.

The mark filed for “licensing of software in the framework of software publishing” in class 45. Homeland, opposing registration of the mark, instituted an opposition proceeding with the Trademark Trial and Appeal Board (TTAB). Homeland alleges a likelihood of confusion with their TSA PRECHECK® marks.

Opposition of Covid Precheck for likelihood of confusion with TSA PRECHECK®

Homeland alleges a likelihood of confusion given the similarity between the marks and goods sold. Homeland alleges Safepassport’s mark is confusingly similar in sight, sound, and overall commercial impression. They also allege the goods closely related to the services offered by Homeland. Homeland alleges the mark so closely resembles Homeland’s marks that its use will likely falsely suggest a connection with the Federal Government.

The Examiner for Safepassport’s mark did not cite any of the TSA PRECHECK marks against it. However, this is not dispositive of a lack of likelihood of confusion. The Trademark Trial and Appeal Board will weigh the evidence presented by both sides and evaluate the similarity of the marks using the Dupont factors.

Takeaway

In a likelihood of confusion case, the important consideration is whether an ordinary consumer would be confused as to the source of the goods.  Given the similarity of the marks as a whole and the likelihood of association in consumer’s minds with the Federal Government, Safepassport may have a difficult time overcoming a likelihood of confusion. Safepassport has until April 21st to file their response.

Michele Lawson

Michele Lawson is a U.S. Registered Patent Attorney.