Bentley Motors Limited

Trademark Trial and Appeal Board

Mar 20, 2008

No. 76529697 (T.T.A.B. Mar. 20, 2008)

Mailed: March 20, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Bentley Motors Limited
___________

Serial No. 76529697
___________

Brian McGinley of Sonnenschein Nath & Rosenthal for Bentley
Motors Limited.

Gene V.J. Maciol, II, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
____________

Before Walters, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Bentley Motors Limited has filed an application to
register the standard character mark CONTINENTAL FLYING SPUR
on the Principal Register for “whole motor vehicles, namely
automobiles and trucks,” in International Class 12.1

1 Serial No. 76529697, filed July 8, 2003, based on an allegation of a
bona fide intention to use the mark in commerce, under Section 1(b) of
the Trademark Act; and based on a European Community Trademark
Registration, under Section 44(e) of the Trademark Act. This
application originally included goods in additional classes that were
deleted by applicant during prosecution.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76529697

2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the previously registered marks shown below, all owned by
the Ford Motor Company, that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.

for “motor cars”2;

for “motor
cars”3; and

CONTINENTAL (Standard characters) for “vehicles,
namely cars, trucks, vans and sport utility
vehicles.”4

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
As an initial matter, we note applicant’s argument that
the ‘822 registration cannot be a basis for refusal because
its filing date is subsequent to applicant’s filing date.

2 Registration No. 0591601 issued June 22, 1954, and renewed as of June
22, 2004.

3 Registration No. 0591602 issued June 22, 1954 and renewed as of June
22, 2004. The registration contains a claim of acquired distinctiveness
under Section 2(f) of the Trademark Act as to the word LINCOLN.

Serial No. 76529697

3
However, such an assertion is a collateral attack on the
‘822 registration and, as such, is not relevant or
appropriate in this ex parte appeal. In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The fact is that the ‘822 registration issued and we must
presume it is valid. Nor does the issuance of the ‘822
registration establish that the marks can coexist on the
register. Not only is the Board not bound by the prior
decisions of examining attorneys, but each case must be
decided on its own merits. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Our 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). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on the du Pont
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of

4 Registration No. 2908822 issued December 7, 2004.
Serial No. 76529697

4
differences in the essential 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); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999) and the cases cited therein.
Considering, first, the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
In this case, applicant’s “cars” are legally identical
to the “motor cars” identified in the ‘601 and ‘602
registrations and to the “cars” identified in the ‘822
registration. Additionally, applicant’s “trucks” are
identical to the “trucks” identified in the ‘822
registration. The fact that applicant’s goods are identical
to only some of the products listed in the description of
goods in the ‘822 registration is sufficient to support a
finding that there is a likelihood of confusion. Tuxedo
Serial No. 76529697

5
Monopoly, Inc. v. General Mills Fun Group, Inc., 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 items that come within the identification of
goods in the application).
Further, inasmuch as the identifications of goods in
both the involved application and the cited registrations
are not limited to any specific channels of trade, we
presume that the goods would be offered in all ordinary
trade channels for these goods and to all normal classes of
purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). In other words, the trade channels for these
identical goods are the same.
Regarding the class of purchasers, applicant states
that a Bentley automobile is an expensive, luxury car sold
exclusively through Bentley dealerships in select areas of
the United States to sophisticated, brand-conscious
consumers; whereas, Ford automobiles are “true-blue American
automobiles” sold widely to the average American driver.
However, applicant’s argument is unpersuasive. Because
there are no restrictions in the identifications of goods,
we must presume that both applicant's and registrant’s goods
may be purchased by members of the general public who
purchase cars and trucks, including those discriminating
Serial No. 76529697

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purchasers of luxury vehicles and purchasers of less
expensive automobiles and trucks.
Considering, next, the marks, we note that, in
determining likelihood of confusion, a lesser degree of
similarity between the marks is required when the marks are
applied to identical goods or services. HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989).
See also In re J.M. Originals, 6 USPQ 1393 (1987).
The examining attorney contends that, because
applicant’s mark contains the term CONTINENTAL, which is
identical to, or the dominant part of, the marks in the
cited registrations, “the average consumer may be under the
false belief or misconception that applicant’s mark is one
in a series of marks by registrant for automobiles.” (Brief,
unnumbered p. 8.)
Applicant contends that the term FLYING SPUR
distinguishes its mark from the marks in each of the cited
registrations5; and that the LINCOLN portion of the ‘601
registration further distinguishes that mark from
applicant’s mark due to the fame of the LINCOLN mark.
Regarding this latter assertion, the record contains no
evidence of fame of LINCOLN in connection with cars and,

5 Applicant discussed several cases in its brief, all of which are
distinguishable from the case before us, as clearly and thoroughly
discussed by the examining attorney in his brief.

Serial No. 76529697

7
thus, we draw no conclusions in this regard. We decline to
take judicial notice of fame.
Applicant and the examining attorney submitted a
substantial amount of evidence. From the Internet, the
record includes excerpts showing use of CONTINENTAL as a
mark, either alone or with other words, by third parties in
connection with a variety of goods, such as aviation
products, tires and electronics; excerpts referring to
registrant’s cars as “Lincoln Mercury,” “Lincoln
Continental,” “Continental Mark II,” and “Continentals”; and
excerpts referring to applicant’s cars as “Rolls-Royce
Flying Spur,” “Bentley Continental R,” “R-Type Continental,”
“Bentley Continental Flying Spur,” and “the Flying Spur.”
The record includes copies of third-party registrations
for the mark CONTINENTAL, one for boats, one for bicycles,
and several owned by the same company for a variety of goods
pertaining to aviation internal combustion engines.6 The
record also includes several third-party registrations, all
owned by the same company, for CONTINENTAL ELECTRIC and
CONTINENTAL ELECTRONICS for various electronics products.
Applicant submitted lists of CONTINENTAL and
CONTINENTAL-formative marks in more than 200 applications
and registrations. However, even though the examining

6 Several additional third-party registrations are not based on use in
commerce and, thus, are not probative of the strength of the mark
CONTINENTAL in the United States.
Serial No. 76529697

8
attorney did not object to these lists as not being the
proper form for submission of third-party registrations,
they are of no probative value because they do not include
information as to owners, goods or status. Further, the
applications listed are proof only of the fact of their
filing.
Applicant submitted copies of its registrations of the
mark FLYING SPUR in seven different countries and a copy of
its cancelled U.S. registration for the mark U.S. FLYING
SPUR.
Applicant submitted brochures/manuals for the “Rolls-
Royce Bentley,” the “R-Type Continental,” and the “1995
Rolls-Royce Flying Spur.”
Finally, the examining attorney submitted a number of
third-party registrations for a variety of different marks
not containing the term CONTINENTAL for a wide variety of
goods. These registrations, while properly of record, are
not probative of any issue in this appeal.
The test for determining whether, when viewed in their
entireties, the respective marks are similar in terms of
appearance, sound, connotation and commercial impression 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

Serial No. 76529697

9
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
Applicant’s mark, CONTINENTAL FLYING SPUR, includes the
wording in the ‘601 and ‘822 registered marks in their
entireties, i.e., CONTINENTAL, which would appear to be an
arbitrary term in connection with cars and trucks. The
additional wording in applicant’s mark, FLYING SPUR, and the
additional word in the ‘602 registered mark, LINCOLN, also
appear to be arbitrary in connection with cars and trucks.
However, the Internet evidence includes references to
vehicles by both type, e.g., Bentley or Lincoln, and model,
e.g., Continental Flying Spur or Continental. Therefore, we
find it likely that consumers seeing CONTINENTAL either
alone or accompanied by an additional word or phrase, such
Serial No. 76529697

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as LINCOLN or FLYING SPUR, in connection with the identical
goods, e.g., cars and trucks, will be struck more by the
commonality of the term CONTINENTAL to the marks than by the
differences. Thus, we find these marks sufficiently similar
that, if used in connection with identical goods, confusion
as to source or sponsorship is likely.
Contrary to applicant’s assertions in this regard, we
do not find the stylization of registrant’s two marks to be
a distinguishing factor. Applicant seeks to register its
mark in standard character format and, thus, applicant could
conceivably display its mark in any lettering style,
including that of the words in registrant’s mark. 37 C.F.R.
§ 2.52(a); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
2015 (TTAB 1988) (when registering mark in block letters,
registrant remains free to change the display of its mark at
any time). Further, the stylization of the marks’ lettering
in the ‘601 and ‘602 registrations is minimal.
Consequently, applicant’s argument that the examining
attorney “ignored” the stylization of the registered mark is
unpersuasive. See e.g., Sunnen Products Co. v. Sunex Int’l
Inc., 1 USPQ2d 1744 (TTAB 1987) (styling of letters is
irrelevant to the issue of confusion where applicant seeks
to register mark without any special form of lettering or
design). Moreover, the ‘822 registration for CONTINENTAL is
in standard character format and, thus, as is the case with
Serial No. 76529697

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applicant’s standard character mark, the mark in the ‘822
registration may be displayed in any lettering style,
including whatever style applicant may use.
Applicant refers to the third-party applications and
registrations in the record as evidence that there are
numerous CONTINENTAL-formative marks on the register for
goods in International Class 12 and, therefore, CONTINENTAL
is a weak term that may be easily distinguished by the
remaining portions of the subject marks. While we have
noted these third-party registrations, the marks and/or
goods involved in those registrations are sufficiently
different from the marks and essentially identical goods
involved herein that these third-party registrations do not
establish that CONTINENTAL is a weak mark in connection with
cars and trucks.
Applicant also makes several additional arguments that
it contends should militate against any possibility of
confusion. First, applicant states that the “Flying Spur”
was an automobile originally manufactured in 1994 and
intended for a limited production run and, thus, any
connection with registrant is unlikely. We agree with the
examining attorney that the evidence establishes that
“formerly retired automobiles have been modernized and the
names of these automobiles have been reintroduced in the
marketplace … [and, thus,] the average consumer is likely to
Serial No. 76529697

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conclude that CONTINENTAL has acquired the rights to the
‘Flying Spur’ and is reintroducing it in the marketplace.”
(Brief, unnumbered p. 10.)
Second, applicant states that the marks are further
distinguished because Ford, the owner of the cited
registrations, always uses LINCOLN in connection with
CONTINENTAL. This argument is unavailing because we must
consider the marks in the cited registrations, which include
two marks for the word CONTINENTAL alone.
Third, applicant states that it has used CONTINENTAL in
the United States for more than fifty years with no actual
confusion with the cited registered marks. Applicant
submitted copies of correspondence between its predecessor-
in-interest and registrant in support of its statement that
applicant and registrant have previously “conclusively
resolved” the issue of confusion between their respective
uses of CONTINENTAL. This correspondence consists of a
single 1954 letter that applicant contends is, essentially,
a consent agreement between Ford Motor Company, the owner of
the cited registrations, and applicant’s predecessor to
coexist in the marketplace. This letter, dated April 26,
1954, is from Phil E. Gilbert, of the law firm of Thayer and
Gilbert, purportedly on behalf of Ford Motor Company to
G.D.L. Carnegie, Secretary, Rolls-Royce Limited. The body
of the letter follows:
Serial No. 76529697

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This morning I received your letter of April 23,
1954 confirming your cable about the trade-mark
“Continental.”

After receiving the cable last week, I call Mr.
Harris but he was not in his office last week.
This morning when I called him I had before me
your letter of April 23rd. I read Mr. Harris the
second paragraph of my letter to you dated April
12. He confirmed that that is the situation. I
told him that under the circumstances we would not
file opposition proceedings, and he told me that
he was pleased with this decision because he
doubted that the opposition proceedings would do
either Rolls-Royce or Ford any good. He assured
me again that there would be no problem with
respect to the use by Rolls-Royce of the
designation “Continental” to apply to particular
models of Rolls-Royce or Bentley cars.

Under the circumstances, we are going to permit
the adjourned date for filing the opposition
proceedings to expire without action. I am
convinced that the decision taken by Rolls-Royce
on this matter is the correct one.

We shall, of course, in the future pass on to you
any information we may have about the success of
Ford in registering this trade-mark in the U.S.A.
and elsewhere.

For the future I think that your policy can safely
be to sell in this country any models of Rolls-
Royce or Bentley cars using the designation
“Continental” without hesitance. It will not be
necessary for you to advise Ford of such
contemplated use, and I would think it inadvisable
under the circumstances.

We do not agree that this letter represents a consent
by registrant to applicant’s registration of the mark in the
present case. First, a statement that apparently condones
use and agrees not to file an opposition to an unidentified
trademark application is not a consent to registration of
the application herein. Second, this letter was written 54
Serial No. 76529697

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years ago and certainly does not reflect current
circumstances, nor has applicant provided any more recent
consent document ratifying or updating the 1954 letter.
Such an updated document is conspicuous in its absence.
Moreover, regarding the letter itself, applicant has
not explained Mr. Gilbert’s relationship to Ford Motor
Company; and applicant has not submitted any actual signed
agreement between the parties or an agreement that sets out
the conditions and steps the parties intend to take to avoid
source confusion in connection with their respective uses of
the marks herein on the identical goods. The letter alone
is further incomplete as a consent because it refers to “the
situation,” and “circumstances,” none of which are
explained; and it does not indicate why it would be
“inadvisable under the circumstances” for Rolls-Royce to
inform Ford of any contemplated use of Continental.
Judge Nies, referring to In re E.I. duPont deNemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), made the
following statement in the Federal Circuit’s decision in In
re Mastic, Inc., 829 F.2d 1114, 4 USPQ2d 1292, 1294 (1987):
... the DuPont case does not make it a ‘given’
that experienced businessmen, in all cases, make
an agreement countenancing each other's concurrent
use of the same or similar marks only in
recognition of no likelihood of confusion of the
public. One must look at all of the surrounding
circumstances, as in DuPont, to determine if the
consent reflects the reality of no likelihood of
confusion in the marketplace, or if the parties
struck a bargain that may be beneficial to their
Serial No. 76529697

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own interests, regardless of confusion of the
public. For example, the parties may prefer the
simplicity of a consent to the encumbrances of a
valid trademark license. However, if the goods of
the parties are likely to be attributed to the
same source because of the use of the same or a
similar mark, a license (not merely a consent) is
necessary to cure the conflict.”

Clearly, there is no formula that must be followed in
order for a document to be considered a consent agreement.
We are also aware that consent agreements are entitled to
significant weight in the determination of likelihood of
confusion. However, for the reasons stated above, the 1954
letter does not persuade us that there will be no likelihood
of confusion in this case.
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s mark, CONTINENTAL FLYING SPUR, and registrant’s
marks, CONTINENTAL, both in standard character and stylized
forms, and LINCOLN CONTINENTAL in stylized form, their
contemporaneous use on the identical goods involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.