Aircraft Gear Corporation

Trademark Trial and Appeal Board

Apr 4, 2014

No. 85583123 (T.T.A.B. Apr. 4, 2014)

Mailed: April 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aircraft Gear Corporation
________

Serial No. 85583123
_______

Gordon M. Wright of Reinhart Boerner Van Deuren P.C. for Aircraft Gear
Corporation.
Matthew G. Galan, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).
_______

Before Bucher, Bergsman and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

Aircraft Gear Corporation (“applicant”), a corporation located in Rockford,
Illinois, has applied to register on the Principal Register pursuant to Section 2(f),
15 U.S.C. § 1052(f), the mark displayed below

This Opinion is Not a
Precedent of the TTAB
Serial No. 85583123
2
for “parts for vehicular rear-wheel drive shafts, namely, universal joints, yokes, and
centering assemblies, conversion rings, dust shields, output flanges, and repair kits
for universal joints and centering assemblies comprising CV balls, ball seats, and
springs” in International Class 12.1
Applicant has appealed the Trademark Examining Attorney’s final refusal to
register the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s applied-for mark so resembles the
following three registered marks, all owned by the same entity also with a principal
address in Rockford, Illinois, that when used on or in connection with applicant’s
identified goods, it is likely to cause confusion or mistake or to deceive:
Registration No. 0574225 for the mark in stylized format on
the Principal Register pursuant to Section 2(f), for “clutch assemblies, clutch
driven discs, multiple disc clutches, power take-off and gear reduction units for
internal combustion engines, gear tooth drives, clutches for sprocket drives,
clutches for pulley drives and parts of the aforesaid goods for replacement and
repair,” in International Class 7;2

Registration No. 1619742 for the mark in stylized format on
the Principal Register pursuant to Section 2(f) in part as to the word “Rockford,”

1 Application Serial No. 85583123, filed March 29, 2012, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging April 1, 1985 as the date of first use anywhere
and in commerce. The description of the mark is as follows: “The mark consists of the word
‘ROCKFORD’ over the words ‘Drive Line’, with a line below ‘ROCKFORD’. There are five
long slashes before the ‘R’ in Rockford, and a stylized arrow pointing outward after the ‘D’
in Rockford.” Color is not claimed as a feature of the mark.
During ex parte prosecution, the examining attorney refused registration of the mark under
Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the ground that applicant’s
mark is primarily geographically descriptive. To obviate the refusal, applicant amended to
seek registration of the mark pursuant to Section 2(f). The examining attorney accepted the
amendment and withdrew the refusal. Applicant also disclaimed “DRIVE LINE” apart from
the mark as shown.
2 Registered May 12, 1953, alleging April 2, 1919 as the date of first use anywhere and in
commerce; renewed.
Serial No. 85583123
3
for “land vehicle powertrain components, namely, clutches, torque converters,
drivelines, universal joints, transmissions and power dividers,” in International
Class 12,3 and

Registration No. 2877197 for the mark ROCKFORD in typed format,4 on the
Principal Register pursuant to Section 2(f), for “land vehicle clutch and
transmission components, namely, clutch assemblies, clutch driven discs,
multiple disc clutches, fan clutches, hydraulic powershift clutches, mechanical
clutches, power dividers, torque converters, and parts of the aforesaid goods for
replacement and repair,” in International Class 12.5

For the reasons explained below, we affirm the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and the other relevant du Pont
factors are discussed below.

3 Registered October 30, 1990, alleging June 27, 1988 as the date of first use anywhere and
March 1, 1989 as the date of first use in commerce; renewed. The term “Powertrain” has
been disclaimed apart from the mark as shown. The lining in the drawing is a feature of the
mark and does not indicate color.
4 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. See TMEP §
807.03(i) (Oct. 2013).
5 Registered August 24, 2004, alleging April 2, 1919 as the date of first use anywhere and
in commerce; renewed.
Serial No. 85583123
4
A. Comparison of the Marks
First we consider the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re Jack B. Binion, 93 USPQ2d 1531
(TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s and registrant’s marks are comprised, either in whole or in part, of
the term ROCKFORD, which we find to be the dominant portion of each mark. We
further find that the term ROCKFORD as applied to both applicant and registrant’s
marks has no other meaning other than to identify the geographic location of
Rockford, Illinois.6 As noted above, each of the registered marks is either registered
in its entirety or in part under Section 2(f) of the Principal Register due to the

6 See “Rockford, Illinois” entry obtained from Wikipedia describing Rockford as “a mid-sized
city located on both banks of the Rock River in far northern Illinois.” Office Action dated
July 23, 2012.
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Serial No. 85583123
6
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting
In re National Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this
court has noted that the descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105
F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants,
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less
significant in creating the mark’s commercial impression”). Thus, it is more likely
that prospective consumers will pay less attention to the visually smaller,
descriptive term “DRIVE LINE” in applicant’s mark and instead treat the
proportionally larger term “ROCKFORD” as the dominant source-identifying
element. A similar analysis applies as well to the registered mark ROCKFORD
POWERTRAIN insofar as the disclaimed term “Powertrain” is descriptive of the
identified goods.
As to the slashes and stylized arrow designs in applicant’s mark, we find that in
this particular case, the presence of these design elements fails to mitigate the
highly similar sound, appearance, and connotation of the involved marks. Applicant
is reminded of the often-recited principle that when a mark consists of a literal
portion and a design portion, the literal portion is more likely to be impressed upon
a purchaser’s memory and to be used in calling for the goods and/or services;
therefore, the literal portion is normally accorded greater weight in determining
whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218
Serial No. 85583123
7
USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261,
1267-68 (TTAB 2011). This is especially true here where the design features in
applicant’s mark are relatively small in size. Moreover, their placement before and
after the word ROCKFORD merely serves to reinforce the dominance of that term.
We therefore find that applicant’s mark is similar in sound, appearance and
connotation to each of the cited registered marks, thereby engendering a similar
commercial impression. This first du Pont factor therefore weighs in favor of finding
a likelihood of confusion for both applications.
B. Strength of the Marks/Scope of Protection/Third-Party Uses
We will now consider the strength of the registered marks as well as the number
and nature of similar marks in use on similar goods, the sixth du Pont factor. In
determining the strength of a mark we consider both its inherent strength based on
the nature of the mark itself and its market strength. Tea Board of India v.
Republic of Tea, Inc., 80 USPQ2d 1881, 1889 (TTAB 2006) (internal citations
omitted). If the evidence establishes that the consuming public is exposed to third-
party use of similar marks on similar goods, it “is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of protection.” Palm Bay
Imports., Inc., 73 USPQ2d at 1693.
Applicant argues that because “Rockford” in each of registrant’s marks is a
geographically descriptive term, the cited registrations are entitled to only a narrow
scope of protection. In support thereof, applicant submitted “various active
Serial No. 85583123
8
registrations”7 purporting to show that the consuming public is exposed to third-
party use of similar marks on a variety of goods and are readily able to distinguish
between multiple ROCKFORD marks. Applicant specifically points to the registered
marks ROCKFORD HEALTH SYSTEMS for “hospital management services” and
ROCKFORD ORTHOPEDIC for “medical services, namely, orthopedic and
musculoskeletal care” as evidence that applicant’s applied-for mark can coexist with
the cited ROCKFORD registrations. Applicant also points to groups of various
registered marks each incorporating the geographic term CHICAGO for identical or
related goods and services, such as three co-existing registrations for the marks
CHICAGO ALMOND, CHICAGO CANDY AND NUT, and CHICAGO BUTTER
COOKIES.
“Geographically descriptive terms are generally regarded as inherently weak
and entitled to less protection than arbitrary or suggestive marks. Ordinarily, a
term that describes the geographic source of a product is not protectable without a

7 Applicant in its brief points to a list of “over 30” registered marks which include the
geographic term “Rockford” obtained from the USPTO’s Trademark Electronic Search
System (“TESS”) and submitted with applicant’s request for reconsideration. Applicant’s
Brief, p. 9. As a general proposition, mere listings of registrations are not sufficient to make
the registrations of record. In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38
USPQ2d 1559, 1560 n.6 (TTAB 1996). However, if an applicant includes a listing of
registrations in a response to an Office action, and the examining attorney does not advise
the applicant that the listing is insufficient to make the registrations of record at a point
when the applicant could have corrected the error, the examining attorney will be deemed
to have waived any objection to consideration of the list itself, for whatever probative value
it may have. Insofar as the examining attorney failed to object to the submission of the list
of third-party registrations in denying applicant’s request for reconsideration, the list is of
record. That being said, a list of registration numbers and marks is of little, if any,
probative value. See In re Kysela Pere et Fils Ltd., 98 USPQ2d at 1264 n.6; In re Eagle Crest
Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1380
(TTAB 2006).
Serial No. 85583123
9
showing of acquired distinctiveness.” Tea Board of India., 80 USPQ2d at 1889. In
this instance, however, each of the cited marks are registered on the Principal
Register under Section 2(f), either in their entirety or in part as to the geographic
term “Rockford.” Thus, while we agree that the term “Rockford” is geographically
descriptive, we observe that “Rockford” in each cited mark must be presumed to
have acquired distinctiveness. This increases, rather than lessens, the scope of
protection thereby favoring a finding of likelihood of confusion.
With regard to the list of third-party registrations incorporating the term
ROCKFORD, as we have often stated, because third-party registrations of marks
are not evidence that the registered marks are in use, they are of limited probative
value for demonstrating weakness of the marks. See In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). In addition, the probative value of
the two ROCKFORD registrations highlighted by applicant is limited because the
identified services are unrelated to the involved goods here. The weakness or
dilution of a particular mark is generally determined in the context of the number
and nature of similar marks in use in the marketplace in connection with similar
goods. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d
1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991). Likewise, the CHICAGO registered
marks not only involve unrelated goods but also identify a different geographic
location.
Lastly we note that applicant has not submitted any evidence that the term
“Rockford” is commonly used by others on similar goods, or any other evidence
Serial No. 85583123
10
which might tend to diminish the market strength of registrant’s marks or the
corresponding scope of protection to which the cited marks are entitled. This factor
regarding third-party use is therefore neutral in our analysis.
C. The Goods
The next step in our analysis is a comparison of the goods identified in
applicant’s application vis-à-vis the goods identified in the cited registrations.
Applicant does not address this issue in its appeal brief. Nonetheless, the Office has
the burden of showing that the goods are related.
At the outset, we note that the involved application and Registration No.
1619742 for the mark ROCKFORD POWERTRAIN in stylized form involve goods
that are identical. This is because registrant’s more broadly worded “land vehicle
powertrain components, namely, … universal joints” necessarily encompasses
applicant’s more narrowly identified type of “parts for vehicular rear-wheel drive
shafts, namely, universal joints.” Given the identical nature of the goods, this
second du Pont factor weighs in favor of finding a likelihood of confusion with
regard to Registration No. 1619742. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion
must be found if there is likely to be confusion with respect to any item that comes
within the identification of goods in the application).
Because the goods described in the application and Registration No. 1619742 for
the mark ROCKFORD POWERTRAIN are in part identical, we must presume that
the channels of trade and classes of purchasers are the same. See In re Yawata Iron
Serial No. 85583123
11
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there
was no evidence regarding channels of trade and classes of consumers, the Board
was entitled to rely on this legal presumption in determining likelihood of
confusion).
The remaining two registrations, Registration Nos. 0574225 and 2877197, as
compared to the application do not involve identical goods. Nonetheless, it is well
established that the respective goods do not have to be identical or even competitive
in order to determine that there is a likelihood of confusion; rather, it is sufficient
that the respective goods are related in some manner, or the conditions surrounding
their marketing must be such that the goods will be encountered by the same
purchasers under circumstances that would give rise to the mistaken belief that
they originate from the same source. Coach Servs., Inc. v. Triumph Learning LLC,
101 USPQ2d at 1722, quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007); On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984).
A review of the record supports a finding that applicant’s goods and the goods
identified in each of the remaining two registrations are closely related,
Serial No. 85583123
12
complementary in nature, and are commonly offered by the same entities and
encountered at the same time by the same prospective purchasers. The examining
attorney introduced evidence from third-party websites showing the sale of certain
of applicant’s and registrant’s types of products under the same mark. For example,
Machine Service, Inc. provides universal joints and clutches under the mark
Machine Service; Clutch Powertrain provides slip yokes, universal joints, and clutch
discs for vehicles under the Clutch Powertrain mark.8 Thus, the record reflects use
of the same mark by third parties in connection with some of both applicant’s and
registrant’s types of products.
The examining attorney also submitted into the record copies of use-based,
third-party registrations identifying goods listed in the application and the two
cited registrations. See Registration No. 3217401 for the mark TORQUE KING for,
in relevant part “axle parts, namely, … yokes, seals” and “clutch parts, namely,
clutch covers, clutch discs, and clutch bearings; clutch service kits comprised
primarily of clutch covers, clutch discs, clutch bearings,…” and Registration No.
4168847 for the mark SVL for “vehicle drivetrain components, namely, driveshafts,
axles, axle gears, axle housings, steer assemblies, universal joints, differentials,
torque converters, transfer cases, gear boxes, transmissions, transmission gears,
brakes, brake components, clutches, clutch components.” Copies of use-based, third-
party registrations may serve to suggest that the goods are of a type which may

8 Office Action dated July 23, 2012.
Serial No. 85583123
13
emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993).
Under similar circumstances, the Board has held that marketing by different
parties of different types of vehicle parts and accessories under the same or similar
marks is likely to cause confusion. See, e.g., In re Magic Muffler Serv., Inc., 184
USPQ 125 (TTAB 1984) (holding MAGIC for vehicle parts, namely mufflers, likely
to be confused with MAGIC for motors for motor vehicles); In re Delbar Prods., Inc.,
217 USPQ 859 (TTAB 1981) (holding ULTRA for outside mounted vehicle mirrors
likely to be confused with ULTRA and design for automobile parts, namely pistons
and pins, valves, water pumps, oil pumps, universal joints, gears, axle shafts,
hydraulic brake parts, automatic transmission repair kits and parts, engine
bearings and jacks); AP Parts Corp. v. Auto. Prods. Associated, 156 USPQ 254
(TTAB 1967) (holding AP for clutches, brakes, steering joints, tie-rod joints, and
suspension joints for land vehicles, aircraft or watercraft likely to be confused with
AP for mufflers for explosive engines). In view of the foregoing, the second and third
(established, likely-to-continue channels of trade) du Pont factor also favors a
finding of likelihood of confusion with regard to Registration Nos. 0574225 and
2877197.
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we find that because the marks are similar
Serial No. 85583123
14
in sound, appearance, connotation and commercial impression and because the
goods at issue in the cited registrations are either identical or related, confusion is
likely between applicant’s marks for its identified goods and the marks in the cited
registrations.
DECISION: The refusal to register under Section 2(d) is affirmed.