Wolfson
Mailed: November 18, 2008
Opposition No. 91178685
Opposition No. 91178688
BIG O TIRES, INC.
v.
67 AND LATHAM, LLC
Before Bucher, Zervas and Wellington,
Administrative Trademark Judges.
By the Board:
Opposer, Big O Tires, Inc. has filed an opposition
against registration of the marks A BIG RIG RESORT and
DANNY’S A BIG RIG RESORT, filed by 67 and Latham, LLC, both
for “retail store services featuring convenience store items
and gasoline.”1 Opposer asserts that the marks so resemble
opposer’s “BIG O” and “BIGFOOT” marks, which opposer alleges
to have previously used or registered for goods and services
related to vehicle tires, parts and accessories, as to be
likely, when applied to applicant’s services, to cause
confusion among prospective purchasers.2 Applicant filed an
1 Serial Nos. 78815618 and 78811121.
2 Opposer pleaded ownership of 18 registrations. Eleven of the
registrations are for marks that include the words BIG O or
BIGFOOT. These marks are BIG O, BIG-O, BIG FOOT 60, BIG FOOT 70,
BIG O TIRES and Design, BIG FOOT, COST U LESS BIG O TIRES and
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91178685 and No. 91178688
2
answer denying the salient allegations in the notice of
opposition.
This case now comes before the Board for consideration
of applicant’s “Motion To Dismiss Or In The Alternative, For
Summary Judgment” (filed November 30, 2007 and renewed
January 4, 2008). The motion has been fully briefed.3
The parties briefed this case as a motion for summary
judgment and they have submitted matters outside the
pleadings that have not been excluded by the Board.
Accordingly, the motion has been treated as a motion for
summary judgment under Fed. R. Civ. P. 56. See TBMP §
503.04 (2d ed. rev. 2004).
A motion for summary judgment is a pretrial device,
intended to save the time and expense of a full trial when a
party is able to demonstrate, prior to trial, that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
Design, BIG O TIRES, WWW.BIGOTIRES.COM and Design, BIG O TIRES
LUBE CENTER, and BIGFOOT. Opposer also pleaded ownership of
registrations for six marks consisting of a design only. Opposer
also pleaded ownership of a registration for the mark BIG LIFT;
because that registration has been cancelled under Section 8 of
the Trademark Act, we give no further consideration to the BIG
LIFT mark.
3 On June 17, 2008, applicant filed a contested motion, later
withdrawn, to exclude opposer’s response to applicant’s summary
judgment motion as untimely. As it has been withdrawn, we have
not considered the motion. Applicant also filed a contested
motion to extend its time to file a reply brief. Inasmuch as
applicant timely filed its reply brief within fifteen days after
the service date of opposer’s response, the motion is denied.
Opposition No. 91178685 and No. 91178688
3
TBMP § 528.01 (2d ed. rev. 2004). To prevail on its motion,
applicant must establish that there is no genuine issue of
material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Celotex Corp. v. Catrett,
477 U.S. 317 (1986); Opryland USA Inc. v. Great American
Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992); and Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
Applicant may discharge its burden “by ‘showing’ - that is,
pointing out to the [Board] - that there is an absence of
evidence to support the nonmoving party’s case.” Celotex
Corp., 477 U.S. at 325.
Applicant’s motion for summary judgment is brought on
opposer’s pleaded likelihood of confusion claim under
Section 2(d) of the Trademark Act. Our determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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
characteristics of the goods and differences in the marks.”
Opposition No. 91178685 and No. 91178688
4
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
As set forth in E.I. du Pont, supra, “[t]he evidentiary
elements are not listed … in order of merit” inasmuch as
“[e]ach may from case to case play a dominant role.” E.I.
du Pont, 177 USPQ at 562. Our primary reviewing court has
made it clear that in appropriate cases, one du Pont factor
can outweigh all of the other factors. See Kellogg Co. v.
Pack’em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d,
951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). That
one factor can outweigh all others is “especially [true]
when that single factor is the dissimilarity of the marks.”
Champagne Louis Roederer v. Delicato Vineyard, 148 F.3d
1173, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998).
Applicant contends that the first du Pont factor, the
similarity or dissimilarity of the marks, outweighs all
other factors in this case because its marks, when compared
with opposer’s, are so dissimilar in appearance, meaning,
sound, and overall commercial impression that opposer could
not prove at trial that a likelihood of confusion exists.
For purposes of its motion, applicant has conceded that
the other du Pont factors weigh in opposer’s favor, with the
exception of the factor regarding actual confusion.4 The
4 Opposer was permitted limited discovery on the du Pont factors
relating to actual confusion on grant of opposer’s motion for
discovery under Fed. R. Civ. P. 56(f). In briefing this motion,
Opposition No. 91178685 and No. 91178688
5
two most important of these “conceded factors” are the
factors regarding the similarity of the goods and services
and the fame of opposer’s marks.
As to applicant’s concession of the fame of opposer’s
marks for purposes of this motion, we consider such fame to
cover not only the goods recited in opposer’s registrations
but also to extend to the services identified in applicant’s
applications. We keep in mind too that the fame of a prior
mark “plays a dominant role in cases featuring a famous or
strong mark.” Century 21 Real Estate Corp. v. Century Life
of America, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), quoting
Kenner Parker Toys v. Rose Art Industries Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
This brings us to the du Pont factor regarding the
similarity or dissimilarity of the marks. We consider
opposer’s BIG O and BIGFOOT (or BIG FOOT) marks of
Registration Nos. 0994466, 0993415, 1904955 and 3233881, as
they are the most similar to applicant’s marks.5 We examine
the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports
opposer presented no evidence showing actual confusion. We have
therefore treated this factor as neutral in our likelihood of
confusion analysis.
5 With respect to opposer’s other word marks, while they contain
additional elements, the additional elements do not add
significantly to the marks in their overall impressions. The
additional elements are either descriptive (as in “tires,” “tires
lube center,” “tires cost u less,” and “www.--.com”) or model or
grade designations (as in “60” and “70”).
Opposition No. 91178685 and No. 91178688
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Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
In appearance, the marks BIG O and BIGFOOT (or BIG
FOOT) clearly differ from the marks A BIG RIG RESORT and
DANNY’S A BIG RIG RESORT. The only common element is the
descriptive term “big,” prominently located as the first
word in opposer’s marks but relegated to the middle of
applicant’s marks. The marks also differ in their aural
qualities. Applicant’s marks contain alliteration (“rig”
and “resort”), and rhyming elements (“big” and “rig”).
Opposer’s BIG O mark, on the other hand, contains a “pure
sound” element, the letter “O.” Neither of opposer’s marks
rhyme or contain alliteration.
The main difference between the marks, however, lies in
their connotations. The word “big” is defined, inter alia,
as “large or great in dimensions, bulk, or extent
; also large or great in quantity, number, or amount
.” Merriam-Webster Online Dictionary, 2008.6
There is nothing in the record to suggest any particular
meaning of either of opposer’s marks in the context of
tires. The only meanings we can attribute to opposer’s BIG
6 Retrieved November 5, 2008, from http://www.merriam-
webster.com/dictionary/big. The Board may take judicial notice
of standard reference works, including online reference works
which exist in printed format. In re Spirits International N.V.,
86 USPQ2d 1078, 1081 n.5 (TTAB 2008).
Opposition No. 91178685 and No. 91178688
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O mark is a large letter “O” or a big tire (the letter
suggesting the tire’s shape). The marks BIGFOOT and BIG
FOOT connote a large foot, good traction of the tire on the
road, or “bigfoot,” otherwise known as Sasquatch.7 On the
other hand, the phrase “big rig” has a distinct meaning as a
term separate and apart from the two individual words “big”
and “rig” that make up the phrase.
Applicant submitted a copy of a print-out from the
website “dictionary.com” which, citing to Webster’s New
Millennium Dictionary of English, Preview Edition (v. 0.9.7
2008), defines the phrase “big rig” as “a tractor-trailer
truck.”8 Thus, applicant’s marks A BIG RIG RESORT and
DANNY’S A BIG RIG RESORT connote a place of relaxation for
drivers of “big rigs”; in other words, a truck stop where
drivers of tractor-trailer trucks may take a break or
purchase convenience items and gasoline. The marks also
play on the meaning of the word “resort” as an upscale
vacation spot, “a place frequented by people for relaxation
7 Merriam-Webster Online Dictionary, 2008, defines “Bigfoot” as
“[from the size of the footprints ascribed to it]: Sasquatch,”
and further defines Sasquatch as “a hairy creature like a human
being reported to exist in the northwestern United States and
western Canada and said to be a primate between 6 and 15 feet
(1.8 and 4.6 meters) tall —called also bigfoot.”
8 Opposer’s objection to this dictionary entry on the ground of
authentication is overruled; applicant authenticated the
dictionary entry with its attorney’s declaration, filed with
applicant’s reply brief.
Opposition No. 91178685 and No. 91178688
8
or recreation: a ski resort.”9 The juxtaposition of such
connotation to an establishment that sells fuel and
convenience items to drivers of tractor-trailer trucks
creates an irony that is not found in opposer’s marks.
Considering the overall commercial impressions of the
marks, again we find that opposer’s marks identify an
object, suggesting in their overall commercial impression a
big foot or print as could be made by a large tire, or
Sasquatch (“Bigfoot”), or a big tire itself (the “O” being
the shape of a tire). Applicant’s marks create an entirely
different overall commercial impression. They suggest
leisure, a place for long-haul truck drivers to stop and
rest, a “resort for big rigs.”
In view of the above, we conclude that the marks are
dissimilar in sound, connotation, appearance and commercial
impression. Further, we find that actual confusion was not
conceded or established by the evidence.10
Despite applicant’s concession regarding the remaining
du Pont factors, including that the goods and services are
related and of the fame of opposer’s marks, we find the
dissimilarities of the marks so great as to outweigh the
9 The American Heritage Dictionary of the English Language:
Fourth Edition 2000.
10 Moreover, the relevant test under Section 2(d) is likelihood of
confusion, not actual confusion. Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43
(Fed. Cir. 1990), and TMEP § 1207.01(c)(iii).
Opposition No. 91178685 and No. 91178688
9
other du Pont factors. See Kellogg Co. v. Pack’em, supra
[no likelihood of confusion between mark “FROOTIE ICE” and
elephant design for packages of flavored liquid frozen into
bars and mark “FROOT LOOPS” for, inter alia, cereal
breakfast foods and fruit-flavored frozen confections
because -- while such goods are very closely related, move
through the same channels of trade to the same classes of
purchasers, are purchased casually rather than with care,
and despite the fact that the mark “FROOT LOOPS” is a very
strong, well known and, indeed, famous, mark -- the
respective marks differ so substantially in appearance,
sound, connotation and commercial impression that likelihood
of confusion did not exist as a matter of law]. Applicant
has shown an absence of evidence supporting opposer’s claim
that confusion as to the source of applicant’s services in
view of opposer’s pleaded marks is likely.
Accordingly, no genuine issues of material fact remain
for trial, and applicant is entitled to judgment as a matter
of law. Applicant’s motion for summary judgment is granted
and the opposition is dismissed.
-o0o-
