Atlas Oil Co.

Trademark Trial and Appeal Board

Aug 3, 2001

No. 75543196 (T.T.A.B. Aug. 3, 2001)

8/3/01

Paper No. 11
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Atlas Oil Company
________

Serial No. 75/543,196
_______

Raymond M. Galasso of Simon Galasso & Frantz PLC for Atlas
Oil Company.

Melvin T. Axilbund, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney)
_______

Before Seeherman, Hanak and Bottorff, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark FAST TRACK, in typed form, for services recited
in the application, as amended, as “carry-out and self-
service restaurant services provided in connection with
retail gasoline supply and convenience store services.”1

1 Serial No. 75/543,196, filed August 25, 1998 as an intent-to-
use application under Trademark Act Section 1(b).

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/543,196
2
The Trademark Examining Attorney has refused
registration on the ground that applicant’s mark, as
applied to its services, so resembles the mark J.J.’S
FASTRAC, previously registered (in typed form) for “retail
convenience store services”2 as to be likely to cause
confusion, to cause mistake, or to deceive. See Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
The refusal to register having been made final,
applicant has filed this appeal. Applicant and the
Trademark Examining Attorney have filed main appeal briefs,3
but applicant did not file a reply brief. No oral hearing
was requested. We affirm the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential

2 Registration No. 2,153,115, issued April 21, 1998.

3 We have given no consideration to the evidentiary materials
attached to applicant’s brief, in view of the Trademark Examining
Attorney’s objection thereto. See Trademark Rule 2.142(d).
Ser. No. 75/543,196
3
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to a consideration of the relationship
between applicant’s services, as recited in the
application, and the services recited in the cited
registration. The Trademark Examining Attorney has
presented persuasive NEXIS and third-party registration
evidence which establishes that restaurant services and
convenience store services are commonly offered together.
Applicant itself, according to its recitation of services,
intends to offer its restaurant services in connection with
convenience store services. We accordingly find that
applicant’s services are similar and related to
registrant’s services.
Furthermore, given the absence of any limitations or
restrictions in applicant’s or registrant’s recitations of
services, we find that the respective services are marketed
in all normal trade channels and to all normal classes of
purchasers for such services. In re Elbaum, 211 USPQ 639
(TTAB 1981). Again, applicant’s own recitation of services
demonstrates the overlap in the trade channels for the
respective services.
Ser. No. 75/543,196
4
We turn next to the issue of whether applicant’s mark
and registrant’s mark, when compared in their entireties in
terms of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. See Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975).
Applicant argues that its mark is readily
distinguishable from registrant’s mark due to registrant’s
use of the possessive designation “J.J.’S” and registrant’s
novel misspelling of the words FAST TRACK as FASTRAC. We
disagree. Although applicant’s mark is not identical to
registrant’s mark, we nonetheless find that the marks, when
viewed in their entireties, present similar rather than
dissimilar overall commercial impressions.
The FASTRAC portion of registrant’s mark, although not
visually identical to applicant’s mark FAST TRACK,
nonetheless would readily be recognized as the phonetic and
connotative equivalent of FAST TRACK. The presence of this
Ser. No. 75/543,196
5
designation in both marks contributes to the overall
similarity of the marks.
Applicant argues, however, that the possessive
designation “J.J.’S” is an important feature of
registrant’s mark to which the Trademark Examining Attorney
has given insufficient consideration. Although FASTRAC and
FAST TRACK might both connote “speedy service” as applied
to the respective services, applicant argues, registrant’s
use of “J.J.’S” at the beginning of its mark creates a
different impression on consumers because “a sense of
ownership is imparted.” (Brief, at 5.) “Instead of merely
being speedy service, it is a service brought to you
personally by J.J. This ownership serves to distinguish
Registrant’s mark and Appellant’s mark.” (Id.)
Although we agree that “J.J.’S” is an important
feature of registrant’s mark which cannot be ignored in our
comparison of the marks, we find that its presence in the
cited registered mark does not suffice to overcome the
overall confusing similarity between the marks which arises
from their shared use of the highly similar designations
FAST TRACK and FASTRAC.
In registrant’s mark, “J.J.’S” would be perceived as
being in the nature of a trade name or a house mark which
is used in connection with the “product mark,” FASTRAC.
Ser. No. 75/543,196
6
The general rule is that the presence of a trade name or a
house mark in one of two otherwise confusingly similar
marks will not serve to avoid a likelihood of confusion.4
Exceptions to this general rule are made (1) in cases where
the two “product” marks have recognizable differences, such
that the degree of similarity between them is sufficiently
slight that the addition of the trade name or house mark is
enough to render the marks as a whole distinguishable;5 and
(2) in cases where the product mark is merely descriptive
of the goods or services and therefore would not be
regarded by purchasers as a source-indicator.6 Neither of
these exceptions to the general rule applies in this case.

4 See, e.g., In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB
1986)(SPARKS for shoes, boots and slippers confusingly similar to
SPARKS BY SASSAFRAS for women’s clothing items); In re Riddle,
225 USPQ 630 (TTAB 1985)(RICHARD PETTY’S ACCUTUNE (and design)
for automotive service centers confusingly similar to ACCUTUNE
for automotive testing equipment); In re Champion International
Corporation, 196 USPQ 48 (TTAB 1977)(HAMMERMILL MICR CHECK-MATE
for paper for writing, printing, duplicating and office use
confusingly similar to CHECK MATE for envelopes); and In re C. F.
Hathaway Company, 190 USPQ 343 (TTAB 1976)(HATHAWAY GOLF CLASSIC
for men’s knitted sport shirts confusingly similar to GOLF
CLASSIC for men’s hats).

5 See, e.g., The Morrison Milling Co. v. General Mills, Inc., 168
USPQ 591 (CCPA 1971)(MORRISON’S CORN-KITS for prepared corn bread
mix not confusingly similar to KIX or CORN KIX for breakfast
cereal); Rockwood Chocolate Co., Inc. v. Hoffman Candy Co., 152
USPQ 599 (CCPA 1967)(ROCKWOOD BAG-O-GOLD for candy not
confusingly similar to CUP-O-GOLD for candy); and S.M. Flickinger
Co., Inc. v. Beatrice Foods Co., 174 USPQ 51 (TTAB 1972)(MEADOW
GOLD ZOOPER DOOPER (and design) for ice cream, ice milk, etc. not
confusingly similar to SUPER DUPER for ice cream).
6 See, e.g., In re Application of Merchandising Motivation, Inc.,
184 USPQ 364 (TTAB 1974)(MMI MENS WEAR for fashion consulting
Ser. No. 75/543,196
7
The first exception is inapplicable because, although
FASTRAC and FAST TRACK are not identical in terms of
appearance, they nonetheless are identical in terms of
sound and connotation. Given this identity of sound and
connotation, the “recognizable differences” in terms of
appearance are too slight to trigger the first exception to
the general rule. This is not a case where the two
designations are only marginally confusingly similar, such
that the mere addition of the house mark is enough to tip
the balance back over to the “not confusingly similar” side
of the scale. Rather, we find that FASTRAC and FAST TRACK
are highly similar to each other, a similarity that is not
negated by the presence of the house mark “J.J.’S” in
registrant’s mark.
The second exception to the general rule is
inapplicable in this case because registrant’s “product”
mark FASTRAC is not a merely descriptive designation; we
find that it is, at most, a slightly suggestive term as
applied to registrant’s services. The source-indicating
significance of registrant’s mark is not derived solely
from its use of the house mark “J.J.’S,” and therefore the

services not confusingly similar to MENSWEAR for a semimonthly
magazine; and Food Specialty Co., Inc. v. Kal Kan Foods, Inc.,
180 USPQ 136 (CCPA 1973)(KAL KAN KITTY STEW and design not
confusingly similar to KITTY for cat food).

Ser. No. 75/543,196
8
presence of “J.J.’S” in registrant’s mark is insufficient
to trigger the second exception to the general rule.
In summary, upon comparison of applicant’s and
registrant’s marks in their entireties, we find them to be
confusingly similar. The points of difference between the
two marks are outweighed by the similarity in their overall
commercial impressions, a similarity which is derived from
their shared use of the distinctive designation FAST TRACK
or its phonetic and connotative equivalent FASTRAC.
Applicant argues that there have been no instances of
actual confusion. However, there is no evidence in the
record from which we might conclude that there has been any
significant opportunity for actual confusion to have
occurred. Applicant itself asserts that there has been no
geographic overlap or market interface between the parties’
services, inasmuch as applicant operates primarily in the
Midwest while registrant operates primarily in Texas. In
such circumstances, the alleged absence of actual confusion
is entitled to little or no probative weight in our
likelihood of confusion analysis. See Gillette Canada Inc.
v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Having considered all of the evidence of record
pertaining to the du Pont likelihood of confusion factors,
and in view of our findings regarding the similarity of the
Ser. No. 75/543,196
9
marks, the similarity of the services, and the similarity
of the trade channels and classes of purchasers for those
services, we conclude that confusion is likely to result
from applicant’s use of its mark on its recited services,
and that registration of applicant’s mark accordingly is
barred under Trademark Act Section 2(d). Any doubt as to
that conclusion (we have none) must be resolved against
applicant. In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).

Decision: The refusal to register is affirmed.