Andrei Karapetian

Trademark Trial and Appeal Board

Mar 14, 2019

87034208 (T.T.A.B. Mar. 14, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: March 14, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Karapetian
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Serial No. 87034208

_____

Allan Howard Grant of Grant’s Law Firm,
for Andrei Karapetian.

Angela Duong, Trademark Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.
_____

Before Mermelstein, Ritchie, and Lynch,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Andrei Karapetian (“Applicant”) seeks registration on the Principal Register of
the mark ASM ALL STAR MOTORSPORTS and design, as shown below, for services
ultimately identified as
Catalog ordering service featuring automobile parts
namely Wheels, Rims, Tires, and Wheel, Rim and Tire
Packages excluding auto lights, high performance and
racing parts; Electronic catalog services featuring
automobile parts namely Wheels, Rims, Tires, and Wheel,
Rim and Tire Packages excluding auto lights, high
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performance and racing parts; Retail store services
featuring automobile parts namely Wheels, Rims, Tires,
and Wheel, Rim and Tire Packages excluding auto lights,
high performance and racing parts; Computerized on-line
retail store services in the field of automobile parts namely
Wheels, Rims, Tires, and Wheel, Rim and Tire Packages
excluding auto lights, high performance and racing parts;
Conducting virtual trade show exhibitions online in the
field of automobile parts namely Wheels, Rims, Tires, and
Wheel, Rim and Tire Packages excluding auto lights, high
performance and racing parts,
in International Class 351:

The application disclaims the exclusive right to use the term “MOTORSPORTS”
apart from the mark as shown. The application contains the following description:
The mark consists of a triangle with a star in the center and the following letters
ASM positioned below the triangle and words ALL STAR MOTORSPORTS are
positioned below both the triangle and letters ASM.
The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,

1 Serial No. 87034208, filed on May 12, 2016, pursuant to Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a) alleging dates of use and of first use on April 1, 2015.
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mistake, or to deceive, based on the two registrations below, which are owned by
different registrants:
1. The mark ALL STAR AUTO LIGHTS and design, as shown below, for
“Wholesale and retail store services featuring automotive headlights,” in
International Class 35 (the “’156 registration”)2:

The registration disclaims the exclusive right to use the term “AUTO LIGHTS” apart
from the mark as shown. The ‘156 registration contains the following description of
the mark: The mark consists of a contemporary outline of an automobile, with “All
Star” under it, and “Auto Lights” under the words “All Star.”
2. The mark ALLSTAR PERFORMANCE and design, as shown below, for
“Wholesale distributorship in the field of high performance and racing automotive
parts and accessories,” in International Class 42 (the “’628 registration”)3:

2 Registration No. 3993156 issued July 12, 2011. Sections 8 and 15 affidavits accepted and
acknowledged.
3 Registration No. 2118628 issued December 9, 1987. Sections 8 and 15 affidavits accepted
and acknowledged. Renewed.
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The registration disclaims the exclusive right to use the term “PERFORMANCE”
apart from the mark as shown.
After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration. When the request for reconsideration was denied, Applicant filed
this appeal, which is fully briefed. For the reasons discussed herein, we affirm the
refusal as to both the ‘156 registration and the ‘628 registration.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont
factors for which arguments or evidence were presented. The other factors, we
consider to be neutral. We conduct our analysis as to each of the cited registrations,
as discussed below.
A. The Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
Serial No. 87034208
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2005). We first consider the mark in the ‘156 registration, ,
which contains the literal element “ALL STAR AUTO LIGHTS” with a design
resembling the outline of an automobile. Applicant’s mark, , contains
the literal element “ASM ALL STAR MOTORSPORTS,” with a design of a star in a
triangle. Both marks contain the literal element “All Star,” either as a two-word term
or as a compound word. In both marks, “All Star” is followed by a term that is
descriptive of or generic for automotive goods, and that has been accordingly
disclaimed. It is well-settled that disclaimed, generic or descriptive matter may have
less significance in likelihood of confusion determinations. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
Applicant’s mark contains the additional literal element, “ASM” which, as
presented in Applicant’s mark, appears to simply be an initialism for “All Star
Motorsports,” and thus reinforces that wording in the mark. This is reflected in
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Applicant’s display of the term “ALL STAR MOTORSPORTS” with only the first
letter of each word highlighted:4

Furthermore, while we recognize that both marks have design elements, it is the
wording by which consumers will call for or refer to the respective services. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (quoting CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)). This is further
evidenced by the designs of the respective marks, both of which emphasize the
wording therein. Applicant’s star design emphasizes the “All Star” aspect of its mark,

4 As shown in Applicant’s specimen, submitted with the May 12, 2016 application.
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a term shared with the registrant of the ‘156 registration. The mark in the ‘156
registration, meanwhile, contains a design that evokes the automotive nature of the
goods identified by both Applicant and the registrant of the ‘156 registration.
Applicant referred in its brief to third-party registrations containing the term “All
Star.”5 The Examining Attorney objected to this reference, however, since copies of
the registrations were not made of record. In order to make a third-party registration
of record, a copy of the registration, either of the paper USPTO record, or taken from
the electronic records of the Office, should be submitted. In re Volvo Cars of N. Am.
Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998); and In re Promo Ink, 78 USPQ2d 1301,
1304 (TTAB 2006) (citing In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)).
Merely listing such registrations, or referring to them in a brief, is insufficient to
make them of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB 1998);
see also Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1208.02
(2018). Furthermore, as the Examining Attorney points out, the record should be
complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 C.F.R. §
2.142(d). Accordingly, we sustain the objection.
Nevertheless, we take judicial notice of the relevant dictionary definition of “all
star” as “composed wholly or chiefly of stars or of outstanding performers or
participants.”6 In this regard, we find the shared term “All Star” (or “Allstar”) to be

5 10 TTABVUE 6.
6 Merriam-Webster.com. See, e.g., In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23
(TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed
format or have regular fixed editions).
Serial No. 87034208
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somewhat suggestive of automotive services that are promoted as being best in class.
Nevertheless, there is no evidence that the term is otherwise weak and entitled to a
more narrow scope of protection. The disclaimed wording in each mark – “Auto
Lights” and “Motorsports” respectively – contributes to a similar automotive
impression. We find that, considering each mark in its entirety, the connotation and
commercial impression of Applicant’s mark and the mark in the ‘156 registration are
similar.
We therefore find that in comparing the marks as a whole, while the Applicant’s
mark and the mark in the ‘156 registration have some dissimilarities in sight and
sound, they have many similarities, which are further enhanced by the similarities
in both connotation and commercial impression. The first du Pont factor favors
finding a likelihood of confusion as to the ‘156 registration.
As for the mark in the ‘628 registration, , the mark contains the
literal element “Allstar Performance” with a design of a star. As noted above,
Applicant’s mark, , contains the literal element “ASM ALL STAR
MOTORSPORTS,” with a design of a star in a triangle. Both marks contain the literal
element “All Star,” either as a two-word term or as a compound word. Both marks
also contain a term that is descriptive of automotive goods, and that has been
accordingly disclaimed. As discussed above, it is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. With regard to the designs, as also discussed above, while we
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consider the marks as a whole, it is typically the wording by which consumers will
call for or refer to the respective services. See Viterra, 101 USPQ2d at 1911. For the
reasons discussed above, we do not find the term “ASM” in Applicant’s mark, which
is likely to be perceived as an acronym, to significantly distinguish the marks.
We note that both Applicant’s mark and the mark in the ‘628 registration contain
a design of a star, which emphasizes the “All Star” term shared by both marks. While
the star designs are slightly different, there is no evidence that star designs are weak
with regard to automotive services, such that the mark in the ‘628 registration is
entitled to a more narrow scope of protection. The shared wording and similar designs
contribute to a similar connotation and commercial impression.
We therefore find that in comparing the marks as a whole, despite some
dissimilarities in sight and sound, Applicant’s mark and the mark in the ‘628
registration overall appear and sound fairly similar, and the similarities in both
connotation and commercial impression contribute to the overall similarity of the
marks. Therefore, the first du Pont factor favors finding a likelihood of confusion as
to the ‘628 registration as well.
B. Services, Trade Channels and Purchasers
When considering the similarity or dissimilarity of the services, we note that
services need not be identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the services are related in some
manner or that some circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under circumstances which could give
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rise, because of the marks used or intended to be used therewith, to a mistaken belief
that they originate from or are in some way associated with the same source or that
there is an association between the providers of the parties’ services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991). We consider this factor as to each of the cited
registrations.
The ‘156 registration identifies “[w]holesale and retail store services featuring
automotive headlights.” The ‘628 registration identifies “[w]holesale distributorship
in the field of high performance and racing automotive parts and accessories.” In an
apparent attempt to limit its application to avoid the inclusion of these specific goods,
Applicant’s identification, as ultimately amended, identifies
Catalog ordering service featuring automobile parts
namely Wheels, Rims, Tires, and Wheel, Rim and Tire
Packages excluding auto lights, high performance and
racing parts; Electronic catalog services featuring
automobile parts namely Wheels, Rims, Tires, and Wheel,
Rim and Tire Packages excluding auto lights, high
performance and racing parts; Retail store services
featuring automobile parts namely Wheels, Rims, Tires,
and Wheel, Rim and Tire Packages excluding auto lights,
high performance and racing parts; Computerized on-line
retail store services in the field of automobile parts namely
Wheels, Rims, Tires, and Wheel, Rim and Tire Packages
excluding auto lights, high performance and racing parts;
Conducting virtual trade show exhibitions online in the
field of automobile parts namely Wheels, Rims, Tires, and
Wheel, Rim and Tire Packages excluding auto lights, high
performance and racing parts.
To show that these services are nevertheless related, the Examining Attorney
submitted web evidence of retailers that offer both wheels or tires and automotive
headlights, showing the services identified by Applicant in the ‘156 registration
offered under the same mark. These include Auto Anything; Jegs; Pep Boys; Summit
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Racing Equipment; Enjukuracing; and Lightning Force Performance. The Examining
Attorney also submitted third-party websites that advertise the sale of wheels or
tires, as identified by Applicant and of high-performance automotive parts and
accessories as identified in the ‘628 registration. These include the following: JC
Whitney; CarID; Pep Boys; Summit Racing Equipment; S&W Performance Group;
Enjukuracing; Bryant Racing Equipment, Inc.; Smith Family tire & automotive; and
Lightning Force Performance.7
The Examining Attorney further supported the relatedness of the services by
submitting copies of third-party registrations that identify both “retail” and “whole
sale” services in connection with various “automotive vehicle parts and accessories”
(Registration No. 2937233) or “retail” and “wholesale” services in connection with
“vehicles” and vehicle-related services. (Registration No. 5200648).8 Copies of use-
based, third-party registrations may help establish that the goods are of a type which
may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785 (TTAB 1993).
In addition to demonstrating the similarity of the services, these registrations
show the similarity of the channels of trade for the application and for both
registrations, including via retail and wholesale means of selling automobile parts
and accessories. As to the channels of trade, web evidence in the record further shows

7 Attached to April 4, 2017 Office Action, at 16, 23; November 8, 2017 Final Office Action, at
7, 12, 16-20, 24-26; June 4, 2018 Denial of Request for Reconsideration at 48, 65-72, 77-78,
80, 84-85.
8 Attached to June 4, 2018 Denial of Request for Reconsideration, at 3, 24.
Serial No. 87034208
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that consumers may expect both retail (or more specifically online retail) and
wholesale services of selling automobile parts offered together from a single source.
The web page for Enjuku Racing states “We also wholesale the following
manufacturers for dealers that are interested,” going on to list, among others, Volk
Racing wheels, which are also listed as available for online retail purchase.9 The
Examining Attorney also included the following excerpt of a news article from
Investor’s Business Daily, which notes that retail chains have increasingly been
serving as wholesale distributorships for automobile parts and accessories:
In days of old, auto parts companies mainly lured the DIY – do-it-
yourself tinkerer. Professional mechanics and repair shops ordered their
parts through dealership parts desks. But the retail chains have been
gradually gaining more of the commercial or wholesale market, what the
retailers now label the DIFM (do-it-for-me) market.10
We thus find that the services in the application and those of both cited
registrations are related and are likely to travel through similar and even
overlapping channels of trade to some of the same classes of consumers, including
members of the public as well as to specialists. The second and third du Pont factors
favor finding a likelihood of confusion.
C. Conditions of Sale
Applicant urges us to consider the sophistication and degree of purchaser care
likely to be exercised by purchasers of the automobile parts at issue in this
proceeding, arguing that the relevant consumers “are careful, sophisticated

9 Attached to June 4, 2018 Denial of Request for Reconsideration at 65-72.
10 Attached to June 4, 2018 Denial of Request for Reconsideration at 88-90.
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purchasers that are unlikely to buy these items on impulse.”11 The Court of Appeals
for the Federal Circuit has noted, with regard to retail and wholesale services for
automobiles and parts, that an analysis of sophistication must be considered “with
respect to users as well as actual purchasers.” In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 (Fed. Cir. 1993) (finding a likelihood of confusion and quoting
Octocom Sys. Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990)).
Even if we were to assume that some of the relevant consumers may exercise a
certain degree of care in selecting automobile parts, especially wholesale purchasers
who might be expected to exercise some heightened care in their purchasing
decisions, it is nevertheless well-established that even sophisticated consumers are
not immune from source confusion where both the goods (or, as here, services) and
the marks are similar. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000); Top Tobacco LP v. N. Atl. Operating Co., 101
USPQ2d 1163, 1170 (TTAB 2011) (finding that although “it stands to reason
wholesale buyers should be accorded a higher degree of purchaser sophistication over
the general public in terms of determining susceptibility to confusion,” nevertheless,
such consumers “are not immune from source confusion.” (cites omitted)).
Overall, we find this factor to be neutral or to weigh slightly against finding a
likelihood of confusion. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly

11 10 TTABVUE 19.
Serial No. 87034208
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considered all potential purchasers for recited services, including both sophisticated
and unsophisticated investors, since precedent requires consumer care for likelihood-
of-confusion decision be based “on the least sophisticated potential purchasers”).
D. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find as to both cited registrations that the marks are
similar in sight, sound, connotation, and commercial impression, and that the
services are related and travel through similar and at times overlapping channels of
trade to both general consumers and to specialists. Even if we find that the universe
of overlapping consumers may exercise a certain degree of care in their purchasing
decisions, this is outweighed by the similarity of the marks, of the services, and of the
channels of trade.
Overall, we find that there is a likelihood of confusion between Applicant’s
applied-for mark and the marks in both of the cited registrations.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to
both Registration No. 3993156 and Registration No. 2118628.