AutoXcel Corporationv.Dent Wizard International Corp.

Trademark Trial and Appeal Board

Sep 15, 2020

91243110 (T.T.A.B. Sep. 15, 2020)

Mailed: September 15, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
AutoXcel Corporation
v.
Dent Wizard International Corp.
————
Opposition No. 91243110
________
S. Bradley Shipe of Shipe Dosik Law LLC,
for AutoXcel Corporation.
Jay Johnson of Kizzia Johnson PLLC,
for Dent Wizard International Corp.
————
Before Taylor, Wolfson, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Dent Wizard International Corp. (“Applicant”) seeks registration on the Principal
Register of the standard character mark ALWAYSNU for “Extended warranty
services, namely, service contracts” in International Class 36.1

1 Application Serial No. 87826567, filed on March 8, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming June 1,
2017 as both the date of first use and the date of first use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91243110
2
AutoXcel Corporation (“Opposer”) opposes the registration of Applicant’s mark on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), based on prior common law use and registration of the following
marks issued on the Principal Register: (1) the standard character mark STAYNU,2
and (2) the composite mark ,3 both for “Providing extended warranties on
vehicles in the field of paint and interior repair” in International Class 36.
In its answer to the notice of opposition, Applicant denied the salient allegations
asserted therein.4 Additionally, Applicant asserted the following as “affirmative
defenses”: (1) the notice of opposition fails to state a claim upon which relief may be
granted; (2) unclean hands; (3) there is no likelihood of confusion, mistake, or
deception between Opposer’s marks and Applicant’s mark; and (4) any and all acts
alleged to have been committed by Applicant were performed with lack of knowledge
and lack of willful intent.5
Insofar as Applicant neither filed a formal motion to dismiss for failure to state a
claim during the interlocutory phase of this proceeding, nor argued this asserted
affirmative defense in its brief, it is hereby deemed waived. Alcatraz Media, Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem.,

2 Registration No. 5545861, issued on August 21, 2018.
3 Registration No. 3272226, issued on July 31, 2007; renewed.
4 See Applicant’s Answer, 4 TTABVUE.
5 4 TTABVUE 3-4.
Opposition No. 91243110
3
565 F. App’x 900 (Fed. Cir. 2014). Likewise, since Applicant did not pursue its unclean
hands affirmative defense or argue the defense in its trial brief, this affirmative
defense is also waived. As to the remaining “affirmative defenses,” we construe them
as mere amplifications of Applicant’s denials of the allegations in the notice of
opposition. See Order of Songs of It. in Am. v. Profumi Fratelli Nostra AG, 36 USPQ2d
1221, 1223 (TTAB 1995).
I. The Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Applicant’s involved application file. The record also comprises the
evidence summarized below.
A. Opposer’s Evidence
Testimony Declaration of Mark Evans (“Evans Decl.”), Opposer’s President, and
the following accompanying exhibits:
(a) plain copies of Opposer’s two pleaded registrations; (b)
photograph of a banner showing Opposer’s pleaded marks
and of Opposer’s exhibit booth at a trade show; (c) close-up
copy of a banner exhibited at a trade show and which re-
flects usage of Opposer’s pleaded marks; (d) copies of bro-
chures/“placemats”/“flippies” displayed at automobile deal-
erships advertising its STAYNU vehicle extended war-
ranty services; (e) copies of tags advertising Opposer’s ser-
vices under its pleaded marks; and (f) copy of a cease and
desist letter sent by Opposer’s counsel to Applicant.6

Opposer filed both a trial brief and a reply brief.7

6 11 TTABVUE.
7 12 TTABVUE; 14 TTABVUE.
Opposition No. 91243110
4
B. Applicant’s Evidence
Applicant did not submit any testimony or other evidence during its assigned trial
period. Applicant did, however, submit a trial brief.8
II. Entitlement to Oppose Application
Section 13 of the Trademark Act, 15 U.S.C. § 1063, permits a party to oppose
registration of a mark if he believes that he would be damaged if the mark registers.
An opposer must demonstrate (1) a real interest in the proceeding, and (2) a
reasonable belief in damage. See Australian Therapeutic Supplies Pty. Ltd. v. Naked
TM, LLC, 953 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020); Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014)
(citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)).
To prove a “real interest” in this proceeding, Opposer must show that it has a “direct
and personal stake” in its outcome and is more than a “mere intermeddler.” See
Ritchie v. Simpson, 50 USPQ2d at 1026; see also Jewelers Vigilance Committee, Inc.
v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988). 9
Mr. Mark Evans, Opposer’s president, testified that Opposer is the owner of

8 13 TTABVUE.
9 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063–64, under the rubric of “standing.” Mindful of the Supreme
Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-
26 (2014), we now refer to this inquiry as entitlement to a statutory cause of action. See
Australian Therapeutic Supplies Pty. Ltd., v. Naked TM, LLC, supra. Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain equally applicable.
Opposition No. 91243110
5
Registration Nos. 3272226 and 5545861, for the marks and STAYNU,
respectively, and that these registrations are valid and subsisting.10 In view thereof,
Opposer has properly made its pleaded registrations of record by testimony. See
Trademark Rule 2.122(d)(2), 37 C.F.R. § 2.122(d)(2) (a registration owned by any
party to a proceeding may be made of record in the proceeding by that party by
appropriate identification and introduction during the taking of testimony). Because
Opposer’s pleaded registrations are of record, Opposer has met the requirements for
establishing a statutory cause of action to oppose Applicant’s involved application.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).
III. Section 2(d) Claim
We will now consider Opposer’s Section 2(d) claim, focusing on Opposer’s pleaded
Registration No. 5545861 for the standard character mark STAYNU for the services
identified therein, namely, “Providing extended warranties on vehicles in the field of
paint and interior repair.” In our view, this particular registration, coupled with its
corresponding identified services, is most likely to support a likelihood of confusion
claim. If Opposer could prevail on its Section 2(d) claim on its pleaded registration for
the standard character mark STAYNU, then consideration of Opposer’s other pleaded

10 Evans Decl., ¶¶ 9-10; 11 TTABVUE 3. Opposer also included plain copies of the two pleaded
registrations as exhibits to Mr. Evans’ testimony declaration.
Opposition No. 91243110
6
registration for the composite mark would be unnecessary; and if
Opposer could not, then consideration of the other pleaded registration would not
assist Opposer. See, e.g., The N. Face Apparel Corp. v. Sanyang Indus. Co., 116
USPQ2d 1217, 1225 (TTAB 2015) (citing In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010)).
Section 2(d) of the Trademark Act prohibits registration of a mark that “[c]onsists
of or comprises a mark which so resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name previously used in the United States by
another and not abandoned, as to be likely, when used on or in connection with the
goods [or services] of the applicant, to cause confusion, or to cause mistake, or to
deceive.” 15 U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove,
by a preponderance of the evidence, that it has priority in the use of its mark and that
use of Applicant’s mark is likely to cause confusion, mistake, or deception as to the
source or sponsorship of Applicant’s identified services, Cunningham, 55 USPQ2d at
1848.
A. Priority
Because Opposer’s pleaded registration for the standard character mark STAYNU
is of record, priority is not an issue with respect to the services identified in Opposer’s
pleaded registration. See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286
(TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108,110 (CCPA 1974)).
Opposition No. 91243110
7
B. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of all probative facts in evidence that are relevant to the factors bearing on
the issue of likelihood of confusion set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (DuPont). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each DuPont factor for which there is evidence and argument of record.
See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination.”).
1. Similarity of the Services
We first address the second DuPont likelihood of confusion factor focusing on the
comparison of the services identified in Applicant’s application vis-à-vis the services
identified in Opposer’s pleaded Registration No. 5545861. See e.g., Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990).
It is settled that it is not necessary that the respective services be identical or even
competitive in order to find that they are related for purposes of our likelihood of
Opposition No. 91243110
8
confusion analysis. The respective services need only be “related in some manner
and/or if the circumstances surrounding their marketing [be] such that they could
give rise to the mistaken belief that [the services] emanate from the same source.”
Coach Servs. Inc., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)); see also In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991).
Applicant’s services are identified as “Extended warranty services, namely,
service contracts.” Opposer’s services are identified as “Providing extended
warranties on vehicles in the field of paint and interior repair.” Because Applicant’s
extended warranty services are broadly defined, they encompass all types of extended
warranty contract services including Opposer’s more delineated extended warranty
services concerning vehicle paint and interior repair. Therefore, the services are
legally identical in part.
Thus, the second DuPont factor strongly favors a finding of likelihood of confusion.
2. Similarity of Trade Channels/Classes of Purchasers
The third DuPont factor considers “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Because Opposer’s and
Applicant’s services are legally identical in part, we must presume that these services
travel through the same channels of trade and are offered to the same or overlapping
classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (finding Board entitled to rely on this legal presumption in determining
Opposition No. 91243110
9
likelihood of confusion); In re Yawata Iron & 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).
Accordingly, the third DuPont factor also heavily weighs in favor of finding a
likelihood of confusion.
3. Strength of Opposer’s STAYNU Mark
“In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength or recognition.” Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (citing
Couch/Braunsdorf Affinity, Inc., 110 USPQ2d at 1476); see also In re Chippendales
USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength
is measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”). The fifth DuPont factor, the “fame” of the prior
mark, and the sixth DuPont factor, the number and nature of similar marks in use
for similar services, DuPont, 177 USPQ at 567, may be considered in tandem to
determine the commercial strength of Opposer’s STAYNU mark and the scope of
protection to which it is entitled. Bell’s Brewery, Inc., 125 USPQ2d at 1345.
a. Conceptual Strength
With regard to the conceptual strength of Opposer’s STAYNU mark, Opposer’s
Registration No. 5545861 for the standard character mark STAYNU was issued on
the Principal Register without a showing of acquired distinctiveness under Section
2(f) of the Trademark Act, and is accordingly entitled to a rebuttable presumption
Opposition No. 91243110
10
that it is inherently distinctive. Applicant did not challenge the distinctiveness of
Opposer’s mark. Therefore, we find Opposer’s STAYNU mark is entitled to the
normal scope of protection accorded an inherently distinctive mark.
b. Commercial Strength of Opposer’s STAYNU Mark
i. Fame– 5th DuPont Factor
We next determine the alleged fame of Opposer’s STAYNU mark under the fifth
DuPont factor.11 Its commercial strength “may be measured indirectly by the volume
of sales and advertising expenditures in connection with the services sold under the
mark, and other factors such as length of time of use of the mark; widespread critical
assessments; notice by independent sources of the services identified by the mark [];
and the general reputation of the services.” Tao Licensing, LLC v. Bender Consulting
Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017).
To demonstrate the fame of its STAYNU mark, Opposer submitted a variety of
evidence, showing that: (1) since at least April 10, 2006, Opposer has regularly and
continuously used the mark STAYNU in interstate commerce for providing vehicle
extended warranty services and for promoting those same vehicle extended warranty
services;12 (2) since Opposer began using the STAYNU mark, Opposer has had

11 The Federal Circuit has held that “[w]hile dilution fame is an either/or proposition—fame
either does or does not exist—likelihood of confusion fame varies along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d
1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (internal
quotation omitted)).
12 Evans Decl., ¶ 8; 11 TTABVUE 3.
Opposition No. 91243110
11
approximately $15 Million in sales of vehicle extended warranty services, with over
$9 Million of these sales occurring since the beginning of 2015;13 (3) Opposer has
marketed its vehicle extended warranty services under its STAYNU mark in many
ways, including on websites and exhibiting at trade shows and auto dealer association
shows;14 (4) customers familiar with Opposer ’s services have come to know and
recognize the STAYNU mark in connection with Opposer’s services;15 and (5) Opposer
markets and provides its vehicle extended warranty services throughout many states,
including California, Virginia, Maryland, New Jersey, New York, Georgia, Florida,
Alabama, Tennessee, Ohio, Kansas, Missouri, Texas, Pennsylvania, North Carolina,
Arizona, Colorado, Kentucky, Illinois, and Indiana.16
“In view of the extreme deference that is accorded to a famous mark in terms of
the wide latitude of legal protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting
that its mark is famous to clearly prove it.” Blue Man Prods. Inc. v. Tarmann, 75
USPQ2d 1811, 1819 (TTAB 2005), rev’d on other grounds, 2008 WL 6862402 (D.D.C.
Apr. 3, 2008). In analyzing the evidence, we initially note that the length of time
Opposer has used its STAYNU mark in commerce for the services listed in its pleaded
registration, while not insubstantial, is insufficient standing alone to establish that
its mark has achieved such commercial renown that it may be considered a very

13 Id. at ¶ 17; 11 TTABVUE 5.
14 Id. at ¶ 14; 11 TTABVUE 4.
15 Id. at ¶ 11; 11 TTABVUE 3.
16 Id. at ¶ 12; 11 TTABVUE 4.
Opposition No. 91243110
12
strong mark. Moreover, Opposer has not submitted any evidence regarding annual
advertising and marketing expenditures for its STAYNU vehicle extended warranty
services or the extent of such advertising and marketing. Additionally, Opposer has
not submitted any evidence concerning unsolicited media attention or industry
accolades received for its STAYNU vehicle extended warranty services. Finally,
Opposer’s self-serving testimony that customers familiar with Opposer’s services
have come to know and recognize the STAYNU mark in connection with Opposer’s
services is of little probative value, particularly since Opposer has not submitted any
evidence demonstrating consumer recognition of its STAYNU mark.17
Based on the totality of the evidence submitted by Opposer, we find that Opposer
has demonstrated that its STAYNU mark has attained a measure of commercial
success and renown when used in association with the identified services. However,
it is insufficient to demonstrate that Opposer’s STAYNU mark falls on the very strong
end of the fame spectrum. Thus, the fifth DuPont factor is neutral.
ii. Similar Marks on Similar Services – 6th DuPont Factor
We next address the sixth DuPont factor, the number and nature of similar marks
in use on similar services. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,

17 Opposer also failed to submit any evidence to demonstrate (1) how its sales compare to its
competitors in the industry, (2) how many times consumers encounter its STAYNU mark for
the services provided thereunder, or (3) any context for its achievements in the services it
provides under its STAYNU mark, e.g., market share. Without comparative numbers or
market share percentages, it is difficult to place the apparent success or renown of Opposer’s
STAYNU mark into context. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002); see also Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co.,
908 F.3d 1315, 128 USPQ2d 1686, 1690 (Fed. Cir. 2018) (“Market share is but one way of
contextualizing ad expenditures or sales figures.”).
Opposition No. 91243110
13
LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). There is no evidence of record
demonstrating third-party use of marks containing the wording STAYNU or similar
variations for services identical or similar to those listed in Opposer’s pleaded
registration. In light of the lack of any evidence of record, we find that Opposer’s
STAYNU mark has not been weakened by third-party use and accordingly, the sixth
DuPont factor is neutral.
In sum, the evidence of record neither demonstrates that Opposer’s STAYNU
mark falls on the strong end of the strength spectrum, nor shows that it is weakened
by third-party uses of similar marks for similar services. Rather, the record shows
that Opposer’s STAYNU mark is inherently distinctive and thus is entitled to the
normal scope of protection afforded inherently distinctive marks.
4. Similarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc., 73 USPQ2d at 1691. “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014),
aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019)). “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.” In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting
Opposition No. 91243110
14
Coach Servs. Inc., v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (internal quotation marks omitted)).
Because this factor is based on the marks in their entireties, our analysis cannot
be predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). On the other
hand, there is nothing improper in assigning more or less weight to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
Opposer’s mark is STAYNU in standard characters. Applicant’s involved mark is
ALWAYSNU also in standard characters. Opposer argues that the word “always” in
Applicant’s mark and the term “stay” in its mark evoke the same connotation and
overall commercial impression.18 Additionally, Opposer points to the fact that both
marks end with the same suffix, i.e., the letters “nu.”19 In further support of its
argument that the parties’ respective marks convey the same connotation and overall
commercial impression, Opposer maintains that if something stays new, it is always

18 Opposer’s Trial Brief, p. 13; 12 TTABVUE 14.
19 Id.
Opposition No. 91243110
15
new, and if something is always new, it stays new.20 Thus, Opposer concludes that
the marks have the same connotation and commercial impression of always
remaining in a state of newness.21
Applicant, while acknowledging that the terms “always” and “stay” can be
interpreted to have somewhat similar meanings, nonetheless argues that the
meanings are not identical.22 Applicant further maintains that the parties’ respective
marks differ in appearance, sound, and spelling and that the only visual similarity is
the “nu” portion at the end of each mark.23 Applicant concludes that the marks are
sufficiently dissimilar and therefore confusion not likely.
We agree with Opposer. The word “stay” is defined as “to continue to do something,
or to continue to be in a particular state.” The term “always” is defined as “every time
or all the time; forever.”24 We find that these terms are sufficiently similar in
connotation that when you combine them with the phonetic equivalent of the word
new, i.e., “nu,” the marks evoke very similar connotations and convey similar overall
commercial impressions. For example, if something stays new it remains in a
perpetual state of newness or always new.

20 Id.
21 Id.
22 Applicant’s Trial Brief, p. 8, 13 TTABVUE 9.
23 Id.
24 Opposer provided these definitions for the first time in its trial brief. See Opposer’s Trial
Brief, p. 13; 12 TTABVUE 14 (accessed from https://dictionary.cambridge.org/us/dictionary).
Because Applicant did not object to this untimely submission of evidence and since the Board
may take judicial notice of dictionary definitions, including online dictionaries, see, e.g., In re
Omniome, Inc., 2020 USPQ2d 3222, *2 n.17 (TTAB 2019), we consider the definitions.
Opposition No. 91243110
16
While it is clear that the terms “always” and “stay” are not visually or aurally
similar, consumer confusion has been held likely for marks that do not necessarily
sound or look alike but convey the same idea, stimulate the same mental reaction, or
may have the same overall meaning, as is the case here. See, e.g., Proctor & Gamble
Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (CCPA 1970) (holding
MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning
products); In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY
WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of
female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-
61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with BLUE
CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning Co., 199
USPQ 125, 128 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely
to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v.
Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (holding UPTOWNER for
motor inn and restaurant services likely to be confused with DOWNTOWNER for the
same services); TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
§1207.01(b) (Oct. 2018).
We recognize that in comparing the marks, we must consider Opposer’s and
Applicant’s marks in their entireties. Thus, we have taken into account all of the
differences between them, including the term STAY in Opposer’s mark and ALWAYS
in Applicant’s mark. We nonetheless find that despite these differences, the marks,
when viewed in their entireties, are similar in connotation and engender similar
Opposition No. 91243110
17
overall commercial impressions. As noted, similarity in either appearance, sound,
connotation or commercial impression may be sufficient to find the marks confusingly
similar. This especially holds true when the services are legally identical in part, as
is the case here. See Coach Servs. Inc., 101 USPQ2d at 1722 (“When trademarks
would appear on substantially identical goods [or services], ‘the degree of similarity
necessary to support a conclusion of likely confusion declines.’”) (internal citations
omitted).
Accordingly, the first DuPont factor also favors a finding of likelihood of confusion
5. Sophistication of Consumers
“The fourth DuPont factor considers ‘[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” Stone Lion,
110 USPQ2d at 1162 (quoting DuPont, 177 USPQ at 567). Applicant argues, without
any evidence, that the purchasers of Opposer’s and Applicant’s extended warranty
services are sophisticated.25
Applicant’s argument is not plausible given the identifications of services involved
in this proceeding. Because there are no restrictions as to purchasers, trade channels,
or price points for the services in either Opposer’s STAYNU registration or
Applicant’s involved application, we find that the purchasers of extended warranty
services are members of the general public, who necessarily encompass both
sophisticated and unsophisticated consumers of such services. Our decision must be

25 Applicant’s Appeal Brief, p. 9; 13 TTABVUE 10.
Opposition No. 91243110
18
based on the “least sophisticated purchasers,” Stone Lion, 110 USPQ2d at 1163, and
we consider those purchasers.
Although we acknowledge that some of the purchasers of the parties’ services may
be sophisticated, they may not be sophisticated or knowledgeable in the field of
trademarks or immune from source confusion. See In re Shell Oil Co., 992 F.2d 1204,
1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even sophisticated
purchasers can be confused by very similar marks”); Top Tobacco, LP v. N. Atl.
Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011); TMEP § 1207.01(d)(vii). And in
the present circumstance where the marks at issue are similar and the services are
legally identical in part, confusion is often found likely despite customer
sophistication and care. “That the relevant class of buyers may exercise care does not
necessarily impose on that class the responsibility of distinguishing between similar
trademarks for similar goods [or services]. ‘Human memories even of discriminating
purchasers . . . are not infallible.’” In re Research & Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)); In re Wilson, 57
USPQ2d 1863, 1865-66 (TTAB 2001) (where marks are very similar and goods [or
services] related, confusion may be likely even among sophisticated purchasers).
Thus, the fourth DuPont factor is neutral.
6. Nature and Extent of Any Actual Confusion/Length of Time
During and Conditions Under Which There Has Been Concurrent Use
Without Evidence of Actual Confusion.

DuPont factor 7 considers the “nature and extent of any actual confusion.”
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DuPont, 177 USPQ at 567. DuPont factor 8 considers the “length of time during and
conditions under which there has been concurrent use without evidence of actual
confusion.” Id. Applicant summarily argues that no actual confusion between
Opposer’s mark and Applicant’s mark has been shown.26
The absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by Applicant of its mark for a significant
period of time in the same markets as those served by Opposer under its mark.
Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words,
for the absence of actual confusion to be probative, there must have been a reasonable
opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82
USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual
confusion depends upon there being a significant opportunity for actual confusion to
have occurred); Red Carpet Corp. v. Johnstown Am. Enterps. Inc., 7 USPQ2d 1404,
1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North Am. Plant Breeders, 212
USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period
of time might well suggest that the likelihood of confusion is only a remote possibility
with little probability of occurring”).
While the record demonstrates that Opposer has used its STAYNU mark since
April 2006 and that Opposer has generated $15 million in sales of vehicle extended
warranty services under its STAYNU mark,27 there is no evidence of record regarding

26 Applicant’s Trial Brief, p. 9; 13 TTABVUE 10.
27 Evans Decl., ¶¶ 8 and 17; 11 TTABVUE 3 and 5.
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20
(1) the length of time Applicant has used its ALWAYSNU mark, (2) the dollar amount
of sales or advertising for the services rendered under Applicant’s ALWAYSNU mark,
or (3) any specific geographical areas of overlap between the consumer markets for
the business conducted by Applicant and the business conducted by Opposer. In light
of this lack of evidence, there is no basis for us to determine that there has been any
significant opportunity for actual confusion to have occurred.
In summary, we are not persuaded on this record that the absence of any evidence
of actual confusion is entitled to significant weight in our likelihood of confusion
analysis, and we therefore find that the seventh and eighth DuPont factors to be
neutral in this case.
7. Market Interface Between the Parties
Applicant argues that Opposer has not established any market interface between
the parties.28 It appears that Applicant may have a misunderstanding as to the
nature of the DuPont factor regarding market interface.
The tenth DuPont factor requires us to consider evidence pertaining to the
“market interface” between the parties, including evidence of any past dealings
between the parties which might be indicative of a lack of confusion in the present
case. Most decisions involving this factor address an agreement between the parties
that evinces their business-driven conclusion and belief that there is no likelihood of
confusion, and weighs heavily in favor of a finding that confusion is not likely. In re
Opus One Inc., 60 USPQ2d 1812, 1820 (TTAB 2001); see also Bongrain Int’l (Am.)

28 Applicant’s Trial Brief, p. 9; 13 TTABVUE 10.
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21
Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1778 (Fed. Cir. 1987)
(“[I]n trademark cases involving agreements reflecting parties’ views on the
likelihood of confusion in the marketplace, ... such agreements may, depending on the
circumstances, carry great weight ....”). Compare The Wet Seal, Inc. v. FD Mgmt., Inc.,
82 USPQ2d 1629, 1641 (TTAB 2007) (“Applicant has not explained how the
agreement “negates” the likelihood of confusion and we do not find that it does.”).
Here, there is no evidence of record concerning any agreement between the parties
which may be indicative of a lack of confusion. In other words, there is no evidence of
any type of understanding or arrangement between the parties that demonstrates
that Opposer believes that confusion is not likely to result from Applicant’s use of its
ALWAYSNU mark. Thus, we find the market interface DuPont factor to be neutral.
8. Bad Faith Adoption Under the Thirteenth DuPont Factor
Opposer argues that Applicant adopted its ALWAYSNU mark in bad faith and
with the intention of trading on Opposer’s goodwill in its STAYNU mark.29
Specifically, Opposer maintains that Applicant has known of Opposer and Opposer’s
use of the STAYNU mark for many years preceding Applicant’s use of its applied-for
ALWAYSNU mark.30 Opposer further contends that years before Applicant filed its
application for the ALWAYSNU mark, Applicant’s senior vice president, as well as
other personnel associated with Applicant, had substantial discussions with
Opposer’s president about Opposer and Opposer’s STAYNU extended warranty

29 Opposer’s Trial Brief, pp. 14-16; 12 TTABVUE 15-17.
30 Id. at p. 14; 12 TTABVUE 15; see also Evans Decl., ¶ 19, 11 TTABVUE 5.
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22
services.31 Additionally, Opposer asserts that, prior to using its ALWAYSNU mark,
Applicant performed services for Opposer in connection with Opposer’s vehicle
extended warranty services offered under the STAYNU mark and filed its application
three weeks after receiving a cease and desist letter from Opposer’s counsel, thereby
further demonstrating Applicant’s intent to interfere with and trade on Opposer’s
goodwill.32
Bad faith, or intent to confuse, falls under the thirteenth DuPont factor, “any other
established fact probative of the effect of use.” L.C. Licensing Inc. v. Berman, 86
USPQ2d 1883, 1890 (TTAB 2008). “[A] party which knowingly adopts a mark similar
to one used by another for related goods [or services] should not be surprised to find
scrutiny of the filer’s motive.” L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1442 (TTAB
2012). “[W]here there is evidence of an applicant’s intent to adopt a mark that
suggests to purchasers a successful mark already in use by another, the Board may,
and ought to, take into account that intent when resolving the issue of likelihood of
confusion when that issue is not free from doubt.” First Int’l Servs. Corp. v. Chuckles
Inc., 5 USPQ2d 1628, 1633 (TTAB 1988). However, “an inference of ‘bad faith’
requires something more than mere knowledge of a prior similar mark.” Sweats
Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir.
1987). A finding of bad faith must be supported by evidence of an intent to confuse,
rather than mere knowledge of another’s mark or even an intent to copy. See, e.g.,

31 Opposer’s Trial Brief, p. 14; 12 TTABVUE 15; see also Evans Decl., ¶ 22, 11 TTABVUE 5.
32 Opposer’s Trial Brief, p. 14; 12 TTABVUE 15; see also Evans Decl., ¶¶ 23 and 26, 11
TTABVUE 5-6.
Opposition No. 91243110
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Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1782
(2d Cir. 2009) (“[T]he only relevant intent is intent to confuse. There is a considerable
difference between an intent to copy and an intent to deceive.”) (quotation omitted).
After careful consideration of Opposer’s arguments and the evidence on this factor,
we are not persuaded that Applicant adopted its mark in bad faith or that Applicant’s
intent weighs against Applicant in our likelihood of analysis in this case. As noted
above, mere knowledge of the existence of Opposer’s mark does not, in and of itself,
constitute bad faith. See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563,
10 USPQ2d 1307 (Fed. Cir. 1989); Ava Enters., Inc. v. Audio Boss USA, Inc., 77
USPQ2d 1783 (TTAB 2006). In order to demonstrate that Applicant’s application was
filed in bad faith, Opposer must show that Applicant intentionally sought to trade on
Opposer’s good will, and the record evidence is insufficient to support this contention.
Thus, the thirteenth DuPont factor based on bad faith adoption is neutral.
IV. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors for which there is argument and evidence. We have found that: (1)
Opposer’s pleaded STAYNU mark is inherently distinctive with some degree of
commercial strength, and is entitled to the normal scope of protection for inherently
distinctive marks; (2) the marks at issue are similar in connotation and overall
commercial impression; and (3) Opposer’s services and Applicant’s services are
legally identical in part and, therefore, are presumed to travel in overlapping trade
channels and offered to overlapping classes of purchasers. Thus, we find that Opposer
Opposition No. 91243110
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has established by a preponderance of the evidence that confusion is likely under
Section 2(d) of the Trademark Act.
Decision: The opposition is sustained and registration to Applicant is refused.