AutoFair Investors, LP

Trademark Trial and Appeal Board

Jun 16, 2005

No. 76012699 (T.T.A.B. Jun. 16, 2005)

Mailed: June 16, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re AutoFair Investors, LP
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Serial No. 76012699
________

Paul. W. Garrity of Kelley Drye & Warren LLP for AutoFair
Investors, LP.

Zhaleh Sybil Delaney, Trademark Examining Attorney, Law
Office 116 (Meryl Herskowitz, Managing Attorney).
_______

Before Hairston, Walters, and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
AutoFair Investors, LP (a Delaware limited
partnership) filed an application on March 29, 2000, to
register on the Principal Register the mark AUTOFAIR for
services ultimately amended to read: “automobile
dealership services featuring new or nearly new
automobiles, but excluding the offering for sale or
exhibition of custom, collector, or specialty cars or
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76012699
2
trucks” in International Class 35.1 The application is
based on applicant’s claimed date of first use and first
use in commerce of February 5, 1991 under Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a). In response to the
Examining Attorney’s refusal to register the mark as merely
descriptive under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), applicant amended the application to
seek registration under Section 2(f) of the Trademark Act,
15 U.S.C. §1052(f), which was accepted by the Examining
Attorney.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its

1 In applicant’s “Response to Office Action No. 3” dated March
27, 2002, applicant sought to add “automobile leasing services in
International Class 36” to the application. It is unclear
whether the Examining Attorney then handling this application
specifically accepted the additional class or not. In any event,
it is clear from a later Office action dated October 1, 2003,
that the Examining Attorney then handling the application found
“automobile leasing services” to be beyond the scope of the
original identification of services. (The Examining Attorney
pointed out that the correct classification is International
Class 39). Both applicant and the Examining Attorney have since
treated the application as involving only the services in
International Class 35. The computer records of the USPTO
likewise indicate that this application involves only
International Class 35 services.
Ser. No. 76012699
3
identified services, so resembles two registered marks:2
AUTOFAIR3 and the mark shown below
4
both for “conducting exhibitions in the field of custom,
collector and specialty cars and trucks, and car parts” in
International Class 41, as to be likely to cause confusion,
mistake or deception.
After the refusal was made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing.5
We reverse the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court 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

2 The records of the Assignment Branch of the USPTO indicate that
both registrations are owned by (through transfers of interest)
Speedway Properties Company, LLC.
3 Registration No. 2197130, issued October 20, 1998, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use and first use in commerce is April
1976.
4 Registration No. 2210137, issued December 15, 1998, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use and first use in commerce is March 4,
1994.
5 In April 2005, the Board suspended proceedings on this appeal
pending a determination of whether the cited registrations(s)
would be cancelled under Section 8 of the Trademark Act, 15
U.S.C. §1058. As the Section 8 affidavits of use were filed and
accepted, this appeal has been resumed.
Ser. No. 76012699
4
Company, Inc., 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 goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Examining Attorney essentially contends that
applicant’s mark and the two cited registered marks are
identical and nearly identical, respectively; that the
cited registrant’s services and applicant’s services are
closely related despite applicant’s stated exclusions
because “specialty automobile ‘exhibitions’ include trade
exhibitions for the sale of [cars and trucks]” (brief,
unnumbered page 4); that “it is not implausible for the
registrant to expand [its normal fields of expansion] to
the classic car dealer market” (brief, unnumbered page 10);
and that doubt is resolved in the registrant’s favor.
Applicant argues that the marks are different in
connotation; that registrant’s services are not as broad as
the Examining Attorney contends and the Examining
Attorney’s position relies on flawed logic and speculation;
that registrant’s services are limited to custom car
Ser. No. 76012699
5
enthusiasts, while applicant operates automobile
dealerships selling new cars; that applicant’s services are
distinctly different from the very specific and limited
exhibition services offered by registrant; that there is no
evidence that registrant, who has been in business since at
least 1976, (or any other custom car exhibition company)
has expanded into the field of automobile dealerships; that
applicant’s services involve the sale of automobiles which
generally cost well over $10,000 and these items are
purchased only after careful consideration; and that there
are no instances of confusion to applicant’s knowledge
despite simultaneous use since 1991.
Applicant’s mark and the cited registration of the
standard character mark are identical. Moreover,
applicant’s mark and the cited registration of the stylized
lettering (and underlined) mark are virtually identical.
As to connotation, the record includes The American
Heritage Dictionary (Third Edition 1992) definitions of the
noun “fair” including the following:
“1. A gathering held in a specific time
and place for the buying and selling of
goods; a market. 2. An exhibition, as
of farm products or manufactured goods,
usually accompanied by various
competitions and entertainments: a
state fair. 3. An exhibition intended
to inform people about a product or
Ser. No. 76012699
6
business opportunity: a computer fair;
a job fair….”

In addition, the Board takes judicial notice of the
following definitions of the word “fair” from The Random
House Dictionary (Second Edition 1983):6
“adjective 1. free from bias,
dishonesty or injustice…”; and

“noun 1. an exhibition, usually
competitive, of farm products,
livestock, etc, often combined in the
U.S. with entertainment and held
annually by a county or state. … 3. an
exposition in which different
exhibitors participate, sometimes with
the purpose of buying or selling….”

In connection with registrant’s services, the word
“fair” is likely to be perceived as meaning only the
exhibition; whereas, in connection with applicant’s
services, the word is likely to be perceived as having
either or both connotations -- an honest deal and/or an
exhibition of products.
We find that the marks are identical or virtually
identical in terms of sound, appearance, connotation and
overall commercial impression.
We turn to a consideration of the involved services.
Applicant’s identified services are “automobile dealership

6 See The University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). See also, TBMP §704.12 (2d
ed. rev. 2004).
Ser. No. 76012699
7
services featuring new or nearly new automobiles, but
excluding the offering for sale or exhibition of custom,
collector, or specialty cars or trucks.” The registrant’s
services are “conducting exhibitions in the field of
custom, collector and specialty cars and trucks, and car
parts.”
The arguments of the Examining Attorney regarding the
relatedness of the services evolved during the prosecution
of the application. The most relevant evidence submitted
by the Examining Attorney in support of her position that
these services, as identified, are related within the
meaning of the Trademark Act is that submitted with the
Office action dated May 17, 2004, in which applicant’s
Section 2(f) claim of acquired distinctiveness was
accepted, the refusal under Section 2(e)(1) was withdrawn,
and the finality of the Section 2(d) refusal was
reinstated. The Examining Attorney stated therein that
automobile dealerships featuring new and nearly new cars
(excluding custom, collector or specialty cars and trucks)
and exhibitions in the field of custom, collector or
specialty cars and trucks “are very closely related
automobile sales and exhibition services for which a
connection will be presumed on behalf of the relevant
consumer”; and that “dealerships often sponsor car
Ser. No. 76012699
8
exhibitions in trade” and the automobile dealerships
“exhibit” new models to consumers. The Examining Attorney
argued in her brief on appeal that the term “exhibitions”
in the cited registrations is a broad term that includes
trade exhibitions for the sale of custom or collector cars.
The problem with the Examining Attorney’s evidence
(printouts of pages from several websites) is that there is
little evidence that automobile dealerships themselves
sponsor car exhibitions particularly under the dealership
name or mark. Rather, much of the evidence indicates that
automakers such as Daimler Chrysler, General Motors,
Toyota, and Volvo sponsor and/or participate in major “auto
shows” and the launch of new automobiles, or that several
auto clubs such as Stallion’s Gate Mustang and Ford Club of
Chicagoland, All American Corvette Club, Buick Club of
America and Mustang Club of America, sponsor (through local
chapters) car shows (presumably of the brand named and of
collector cars). Further, a few of the websites indicate
that a particular automobile dealership either was a
secondary co-sponsor of a car show event (Arlington Heights
Ford for the one-day All Ford Powered Annual Car Show in
the Chicago area), or that it was the co-sponsor of a
general fair (such as Auto Way Ford Lincoln Mercury for the
Hernando County (Florida) Fair and Youth Livestock Show).
Ser. No. 76012699
9
This evidence is insufficient to establish that any
exhibitions of custom, collector and specialty cars that
may be co-sponsored by an automobile dealership use the
same mark that is used to identify the dealership services.
Further, the mere fact that an automobile dealership may be
a co-sponsor of such an exhibition, does not mean that the
exhibition service is related to the dealership service.
For example, a beverage company may co-sponsor an
automobile exhibition, but beverages would not be
considered related to automobile exhibition services. The
Examining Attorney’s evidence simply does not establish
that consumers are likely to believe that the respective
services are related.
While the Examining Attorney contends that there is a
direct and close relationship between applicant’s new car
automobile dealerships and the registrant’s specialty
automobile exhibitions as “both [involve] a type of
automobile sales…” (brief, unnumbered page 8), there is
very little evidence of any such understanding by consumers
as between conducting exhibitions of custom, collector and
specialty cars, on the one hand, and applicant’s automobile
dealerships services, on the other.
Simply put, we cannot conclude from the evidentiary
record furnished by the Examining Attorney that automobile
Ser. No. 76012699
10
dealership services and the service of conducting
exhibitions of custom, collector and specialty cars emanate
from a single source under the same mark, such that the
consumers of these services would assume a common source.
See Chrysler Corp. Silva, 892 FSupp. 321, 36 USPQ2d 1120
(DC MA 1995)(the district court denied plaintiff’s request
for a preliminary injunction as plaintiff failed to
establish likelihood of confusion between its DODGE VIPER
car and defendant’s MONGOOSE custom-built car); rev’d in
part, aff’d in part, 118 F.3d 56, 43 USPQ2d 1375 (1st Cir.
1997); and LHD Enterprises Inc. v. Austin Rover Group Ltd.,
__ FSupp. __, 3 USPQ2d 1226 (ND CA 1987). See also, In re
Digirad Corp., 45 USPQ2d 1841 (TTAB 1998); and In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Moreover, for the same reasons, the record does not
establish that automobile dealership services are within
the natural scope of expansion of conducting exhibitions of
custom, collector and specialty cars or that purchasers
would generally expect these particular services to emanate
from the same source. See Electronic Data Systems Corp. v.
EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992).
As a result, even though the involved marks are
identical or virtually so, this ex parte record does not
support a finding that the contemporaneous use of the mark
Ser. No. 76012699
11
AUTOFAIR by applicant for its automobile dealership
services as identified and registrant’s use of the mark (in
standard character form as well as stylized lettering) for
conducting exhibitions in the field of custom, collector
and specialty cars and trucks is likely to cause confusion.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed as to both of the cited
registrations.