Mailed: April 3, 2009
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Big O Tires, LLC
v.
Wheel Specialties, LTD.
_____
Opposition No. 91163791 to application Serial No. 78644475
filed on June 18, 2003
_____
Marsha G. Gentner and Matthew J. Cuccias of Jacobson Holman
PLLC for Big O Tires, LLC.
Warren A. Sklar and Donald L. Otto of Renner, Otto,
Boisselle & Sklar, LLP for Wheel Specialties, LTD.
______
Before Cataldo, Taylor and Bergsman, Administrative
Trademark Judges.
Opinion by Taylor, Administrative Trademark Judge:
Wheel Specialties, LTD. has filed an application to
register on the Principal Register the mark BIGG WHEELS, in
typed format, for “Wheels for automobiles.”1 The word
“WHEELS” is disclaimed.
1 Serial No. 78264260, filed on June 18, 2003 with an allegation
of a bona fide intention to use the mark in connection with the
recited goods in commerce. During prosecution, applicant filed
an amendment to allege use and now alleges February 20, 2004 as
the date of first use of the mark anywhere and in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Opposition No. 91163791
2
Registration has been opposed by Big O Tires, LLC on
the grounds of priority and likelihood of confusion and
dilution. Opposer specifically alleges that since prior to
the date of first use alleged in applicant’s involved
application, opposer has, and is now, engaged in the
advertising, marketing, distribution and sale of vehicle
products and services, retail store and franchise services,
in commerce in the United States, under and in connection
with the trade name(s) and trademarks BIG O and BIG O TIRES
[BIG O Marks], BIG FOOT and BIG FOOT COUNTRY [BIG FOOT
Marks], as well as the marks BIG HAUL and BIG LIFT [BIG
Marks]; that opposer has continuously used its BIG O, BIG
FOOT and BIG Marks, alone and in combination with other
words, designs and/or symbols, in commerce in connection
with its products, services and stores, to identify and
designate same, and to distinguish those goods, services,
stores and opposer’s businesses from those of others; and
that it is the owner of and will rely on the following
registrations:2
2 Opposer also pleaded ownership of application
Serial No. 76605325 for the mark BIG FOOT COUNTRY (in stylized
format) for “tires” and indicated that it intended to rely on the
registration when it issued. On February 22, 2005, the
application matured into Registration No. 2927656, which we have
considered in this decision.
Opposer also pleaded ownership of Registration No. 2821058. It
is clear from the record that there was a typographical error in
the registration number. Accordingly, the registration has not
been considered. In addition, opposer made of record a status
and title copy of Registration No. 2834058 for a miscellaneous
Opposition No. 91163791
3
Reg. No. Mark Goods/Services Issue Date
2821055
Retail store services featuring
automotive parts and
accessories; and
Automotive maintenance and
repair services
3/9/2004
2821054
Retail store services featuring
automotive parts and
accessories; and
Automotive maintenance and
repair services
3/9/2004
2821053
Retail store services featuring
automotive parts and
accessories; and
Automotive maintenance and
repair services
3/9/2004
2821052
Retail store services featuring
automotive parts and
accessories; and
Automotive maintenance and
repair services
3/9/2004
2821051
Retail store services featuring
automotive parts and
accessories; and
Automotive maintenance and
repair services
3/9/2004
2514975
Retail stores featuring vehicle
tires, parts and accessories;
franchising, namely offering
technical assistance in the
establishment and/or
operation of retail stores
featuring vehicle parts and
accessories, and vehicle
maintenance and repair
12/4/2001,
Section 8 &15
affidavits,
accepted and
acknowledged
design. Because the mark was not pleaded, it too, has not been
considered.
Finally, although opposer pleaded ownership of the mark BIG
HAUL in the notice of opposition, it neither submitted a
registration for that mark nor adduced any testimony as to such
ownership. Accordingly, we consider opposer to have withdrawn
its claim of ownership of the BIG HAUL mark. Opposer also
pleaded ownership of Registration No. 2520443 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.
Opposition No. 91163791
4
services; and Vehicle
maintenance and repair
services
24119263 BIG O TIRES (typed) Tires for land vehicles; Retail
stores featuring vehicle tires,
parts and accessories;
franchising, namely offering
technical assistance in the
establishment and/or
operation of retail stores
featuring vehicle parts and
accessories, and vehicle
maintenance and repair
services; and Vehicle
maintenance and repair
services
12/12/2000,
Section 8 &15
affidavits,
accepted and
acknowledged
1904955 BIG FOOT (typed) Vehicle tires 7/11/1995,
Section 8 &15
affidavits,
accepted and
acknowledged
16111604
Tires; Retail tire store
services
8/28/1990,
renewed
11020595 BIG FOOT 70 (typed) Vehicle tires 9/12/1978
Section 8 &9
affidavits
received
11020586 BIG FOOT 60 (typed) Vehicle tires 9/12/1978,
renewed
994466 BIG O (typed) Retail tire and accessory
store services and rendering
technical assistance in
connection with the
establishment and/or
operation of retail tire and
accessory stores
10/1/ 1974,
renewed
993415 BIG-O (typed) Vehicle tires 9/24/1974,
renewed
Opposer further asserts that applicant’s mark, when used on
applicant’s goods, so resembles opposer’s BIG O, BIG FOOT
and BIG Marks as to be likely to cause confusion, mistake,
and/or to deceive the public in general into believing that
applicant’s goods are sold by, emanate from, and/or in some
3 “Tires” is disclaimed.
4 “Tires” is disclaimed. The registration includes the
following statement: “The stippling in the drawing is for
shading purposes only.”
5 “70” is disclaimed.
6 “60” is disclaimed.
Opposition No. 91163791
5
way associated with opposer to the damage and detriment of
opposer.
Opposer also alleges that since prior to the date of
first use alleged in the opposed application, Opposer’s BIG
O and BIG FOOT marks have been, and are, distinctive and
famous and that registration of the BIGG WHEELS mark by
applicant will dilute the distinctive quality of opposer’s
famous and distinctive BIG O and BIG FOOT marks.
Applicant, in its answer, has denied the essential
allegations of the notice of opposition.
EVIDENTIARY MATTERS
Opposer has filed numerous objections against certain
testimony and exhibits introduced by applicant primarily
regarding third-party references. Opposer contends that
they are not probative in the absence of evidence as to the
extent of the third-parties’ use and promotion of their
marks. Applicant did not respond to the objections.
Opposer particularly objects to applicant’s two notices of
reliance; the first on copies of third-party registrations7
of “BIG” formative marks which opposer asserts are
irrelevant, and the second, on what applicant characterizes
as “Internet publications,”8 as not being admissible by
notice of reliance. Opposer requests that the notices be
7 (Exh. 11-21).
8 (Exh. 22-52).
Opposition No. 91163791
6
stricken. We overrule opposer’s objection as to the first
notice of reliance because the objection is essentially
directed to the probative value of the third-party
registrations. However, we sustain as to the second. While
printed publications are admissible by notice of reliance,
see Trademark Rule 2.122(e), materials retrieved from the
Internet are not, as they require authentication. See
Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998).
A review of the documents described as “Internet
Publications” reveal that they are not publications, but are
rather in the nature of online business directories, yellow
pages and state records.9 Accordingly Exhibits 22-52 have
been stricken.
Opposer also objects to portions of the testimony
deposition of Mark Lamb and Exhibits 3 and 6-10 thereto.
Exhibit 3 is a summary of applicant’s sales of BIGG WHEELS
wheels to opposer; Exhibit 6 is a web page of Big Brand Tire
Co.; Exhibit 7 consists of printouts from an Internet search
of automotive companies that include the word “big”; Exhibit
8 is applicant’s customer contact list; Exhibit 9 is Custom
Wheel’s Unlimited’s Virginia customer phone list and Exhibit
10 is a list of locations for Big Brand Tire Company.
Opposer objects to exhibits 3, 6 and 8 as not having been
9 We add that these online records are not admissible by notice
of reliance as official records as they are not certified.
Opposition No. 91163791
7
timely disclosed in discovery. Similarly, opposer objects
to Exhibits 9-10 as not having being disclosed despite
opposer’s Interrogatory Request No. 15 and Document Request
no. 60, which specifically sought information and documents
related to alleged third-party use. We overrule the
objection to Exhibit 3. Although the summary was not
produced until two weeks before trial, opposer had, or
should have had, a record of its purchases of BIGG WHEELS
wheels in its possession. We sustain the objections as to
Exhibits 6-10; Exhibits 7 and 9 not being produced, and
Exhibits 6, 8 and 10 as not being seasonably produced – the
document requests having been served in 2005 and applicant’s
silence with regard to the objections, telling.
Accordingly, Exhibits 6-10 and pertinent testimony regarding
these exhibits have not been considered.10
As to the remaining objections to the testimony based
on lack of foundation, hearsay, vagueness and leading
questions, we find it unnecessary to address each objection
specifically. The objections relate principally to the
probative value to be accorded the testimony in question,
10 We further note with regard to Exhibit 7 that opposer’s
objection based on lack of foundation has merit. When asked
“[w]ho was the search conducted by? Mr. Lamb responded “[o]ne of
my employees and me.” As noted above, Internet evidence is not
self-authenticating and Mr. Lamb did not indicate what documents
were retrieved from his searches or that he supervised his
employee’s search. Further, there is no indication on the
documents which were retrieved as a result of Mr. Lamb’s search.
Opposition No. 91163791
8
and we have accorded the relevant testimony the appropriate
probative value.
We also note with regard to opposer’s notice of
reliance, filed June 9, 2008, on certain printed
publications (Exhibits 59-64), the exhibits were introduced
on CD-Rom. By amendment effective August 31, 2007, the
Board deleted Trademark Rule 2.126(b) which gave parties the
option of making submissions to the Board in CD-Rom form.
Trademark Rule 2.126(a)(6) makes clear that “[e]xhibits
pertaining to a paper submission must be filed on paper and
comply with the requirements for a paper submission.”
Because applicant’s exhibits 59-64 were not filed on paper
as required under the operative Trademark Rule, they have
not be considered in this decision.
THE RECORD
In light of the foregoing, the record consists of the
pleadings and the file of application Serial No. 78264260.
Also of record are copies of agreements between opposer and
third-parties submitted by stipulation of the parties
herein. In addition, opposer, during its testimony period
submitted:
1) the testimony deposition, with Exhibits 1-34D, of
Richell Bennett, opposer’s consumer advertising
coordinator;
2) the testimony deposition, with exhibits 34A-35F, of
Michael Kinnen, vice president of operations;
Opposition No. 91163791
9
3) A notice of reliance on certain discovery produced by
applicant; and
4) a notice of reliance on status and title copies of its
pleaded registrations.
Applicant, during its testimony period, submitted:
1) the testimony deposition, with Exhibits 1-10, of Mark
Lamb, applicant’s CEO; and
2) a notice of reliance on eleven third-party
registrations.
FINDINGS OF FACT
Opposer
Opposer was founded in the early 1960’s as a tire-
buying cooperative. (Bennett tr. p. 11). Today, opposer is
a wholesale distributor of the BIG O TIRES brand line of
tires, as well as other major brands of tires, wheels and
automotive parts. Opposer is also North America’s largest
independent tire franchiser, with more than 540 stores
located in twenty-one states throughout the Mid-West and
West of the Mississippi. (Bennett tr. p. 9, 11-12, exhs.
1A-1G, 10). Opposer sells and services its own private
brands of tires, as well as offering retail store services
and vehicle maintenance and repair services under the BIG O,
BIG O TIRES AND BIG FOOT marks [collectively the BIG O TIRES
MARK]. (Bennett tr. p. 11). Opposer has been selling tires
under the BIG O TIRES MARK for over four decades. In
addition to selling tires, opposer sells custom wheels,
brakes, shock absorbers, struts and assorted parts.
Opposition No. 91163791
10
(Bennett tr. p. 9, exhs., 3, 5A-B, 6A-I). Opposer sells and
installs custom wheels at its Big O Tire stores. (Bennett
tr. p. 9, exhs. 3, 10, and 40). Custom wheels are promoted
in opposer’s product catalogs and on its website. (Bennett
tr. p. 27, exh. 10).
Since its earliest days, opposer has used its BIG O
TIRES trade name, trademark and service mark alone, and as a
house mark in connection with the operation of its large
network of retail tire stores and the sale at wholesale and
retail of vehicle parts and accessories, and related motor
vehicle care services. (Bennett tr. p. 11). Opposer and
its franchisees use the BIG O TIRES Mark on signage as well
as on posters and banners displayed in the retail stores, as
well as outside the stores. (Bennett tr. pp. 13-15). All
Big O Tire retail locations have the BIG O TIRES mark on the
exterior of the store. (Bennett tr. pp. 13-15).
Opposer advertises in different media, including but
not limited to print, newspaper and direct mail, with every
piece of advertising containing the BIG O TIRES mark.
(Bennett tr. pp. 22-23). Opposer also advertises on
television and radio. (Bennett tr. pp. 23-25). Since 2000,
opposer has maintained a website, which is used to advertise
tires, wheels, and vehicle maintenance and repair services.
(Bennett tr. p. 28, exh. 11).
Opposition No. 91163791
11
Although opposer’s advertising expenditures are
confidential, they are substantial, and have increased
steadily for more than twelve years.11 (Bennett tr. p. 29-
34, exh. 12). Similarly, opposer’s total sales figures from
2001 to March 2007 are impressive. (Kinnen tr. pp. 5-8,
exh. 12).
Opposer received “Customer Satisfaction” awards in
1995, 1996 and 1998 by J.D. Power and Associates12 for “Best
Replacement Tire ~ Passenger Vehicles.” (Bennett tr. p. 38-
39, exhs. 15A-C). Opposer also received recognition from
others in the business community. For example, in the
January 1999 issue, marking the 20th annual “Franchise 500”
edition, Entrepreneur magazine ranked opposer as No. 1 in
the overall tire franchisers category. (Bennett tr. p. 41,
exh. 16D).
Opposer has also publicized its BIG O TIRE mark through
sports sponsorships. Opposer has been a sponsor of the
Colorado Rockies Major League Baseball team since 2003, with
the mark being prominently displayed in signage at Coors
Field in Denver, Colorado, which averages about two (2)
million visitors a year. (Bennett tr. p.43 and 52-54, exhs.
22 A-C). Opposer is also affiliated with the National Hot
11 The figures presented represented total annual advertising
and marketing expenditures.
12 According to opposer, J.D. Power and Associates is an
international company that analyzes customer behavior and ranks
different product categories.
Opposition No. 91163791
12
Rod Association (NHRA) racing circuit, and sponsors three
cars. Each car is painted with the company colors and
prominently displays the BIG O TIRES logo. Opposer is also
an advertising sponsor at the Bandimere Speedway outside of
Denver, Colorado, where it displays the BIG O TIRES Mark
throughout the facility. Opposer’s Northern California
franchise group is a sponsor at the Infineon Raceway, where
opposer prominently displays its mark on signage, and its
Lexington, Kentucky franchise group has aired opposer’s
radio advertisements and promotions during live broadcasts
of the games of the Indianapolis Colts on the Colt’s radio
network. (Bennett tr. pp. 43, exhs. 17A-B, 18A-B, 19A-B,
20A-C and 21A-B).
Last, opposer promotes its mark in connection with
various charities and other public service organizations,
e.g., Alex’s Lemonade Stand,13 Susan G. Komen Breast Cancer
Foundation (Colorado Race for the Cure), and the Red Cross.
Applicant displays its BIG O TIRE mark in association with
these fund-raising activities. (Bennett tr. pp. 56-70,
exhs. 24A-30).
Applicant
Applicant is in the business of wholesaling custom
wheels and accessories and tires for cars. (Lamb tr. p. 5).
13 Alex’s Lemonade Stand is a charitable organization supporting
pediatric cancer research.
Opposition No. 91163791
13
Applicant’s customers are retail automobile stores that sell
tires and brakes and also service cars. (Lamb tr. p. 6).
Applicant maintains a customer contact list for all of its
active customers and prospective customers to whom it sends
catalogs and other information. (Lamb tr. pp. 33 and 36).
Opposer is a customer of applicant’s to whom applicant has
sold its BIGG WHEEL product line since 2004. (Lamb tr. p.
15-17). Applicant’s CEO adopted the BIGG WHEELS mark to
emphasize the big styling for its particular style of
wheels. (Lamb tr. pp. 5 and 9). Applicant asserts that
applicant has been aware of opposer since a cold call on one
of opposer’s Kentucky stores resulted in a sale of eight
wheels in August of 2002. (Lamb tr. pp. 15-17, and
opposer’s not. of. rel., exh. 39).
DISCUSSION
Opposer’s Standing and Priority of Use
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, Section 2(d) priority is not an
issue in this case as to the marks therein and goods and
Opposition No. 91163791
14
services covered thereby. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). We further note that applicant does not contest that
opposer has made prior use of the marks in its pleaded
registrations.
Likelihood of Confusion
We note that opposer has pleaded ownership of fifteen
registrations in the notice of opposition. In analyzing
likelihood of confusion, we limit our discussion to
Registration No. 2411926 for the mark BIG O TIRES for “tires
for land vehicles; retail stores featuring vehicle tires,
parts and accessories; franchising, namely offering
technical assistance in the establishment and/or operation
of retail stores featuring vehicle parts and accessories,
and vehicle maintenance and repair services; and vehicle
maintenance and repair services,” as the mark and goods and
services are the closest to applicant’s mark and recited
goods.
Our likelihood of confusion 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 likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
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
Opposition No. 91163791
15
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).
Fame
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s mark and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.
Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Upon careful review of the record in this case, we find
that opposer’s BIG O TIRES mark has achieved regional fame
for purposes of our likelihood of confusion analysis.
Opposition No. 91163791
16
Opposer has used its mark for more than 45 years. We note,
however, that its stores are located only in the Midwest and
west of the Mississippi River. In addition, the record
shows that opposer’s promotion and marketing of its mark,
especially in connection with sporting events, takes place
in those regions. Opposer has introduced testimony evidence
regarding substantial expenditures in advertising, promotion
and marketing of its products and services, resulting in
tremendous sales. Again, while such sales suggest that
opposer has enjoyed a significant degree of success, it is
unclear on this record how many people outside of the
Midwest and areas west of the Mississippi River are familiar
with the mark BIG O TIRES. In other words, we simply cannot
determine from the evidence whether such sales reach people
throughout the United States.
Nonetheless, while this evidence falls short of
demonstrating that awareness of opposer’s goods and services
among those segments of the population translates into
nationwide fame, we have no doubt that opposer has attained
a degree of renown in the Midwest and west of the
Mississippi River, which we characterize as niche market
fame. See ProQuest Information and Learning Co. v. Island,
83 USPQ2d 1351 (TTAB 2007) citing to Berghoff Restaurant Co.
v. Washington Forge, Inc. 225 USPQ 603 (TTAB 1985)
(opposer’s proof of fame of its mark within a limited
Opposition No. 91163791
17
geographic area sufficient to find its mark famous for
purposes of likelihood of confusion analysis where
applicant’s goods were marketed in that geographic area).
Based on the record, we find THE BIG O TIRES mark
inherently distinctive and strong and entitled to a broad
scope of protection. In coming to this determination, we
have considered all of the evidence relevant thereto,
including applicant’s evidence, more fully discussed infra,
of third-party registrations of various “BIG” formative
marks. “BIG” formative marks.
The goods and services
We now compare the goods and services. Applicant’s
goods are identified as “wheels for automobiles.” Opposer
has submitted status and title copies of a number of pleaded
registrations, including Registration No. 2411926, covering
tires for land vehicles; retail stores featuring vehicle
tires, parts and accessories; franchising, namely offering
technical assistance in the establishment and/or operation
of retail stores featuring vehicle parts and accessories,
and vehicle maintenance and repair services; and vehicle
maintenance and repair services.
We find that applicant’s wheels are closely related to
opposer’s tires and retail stores services featuring, among
other vehicle parts and accessories, tires. Applicant does
not argue otherwise. In fact, applicant’s brief is silent
Opposition No. 91163791
18
with regard to this issue. Opposer’s testimony and evidence
establish that wheels and tires are complementary goods,
used at the same time and for related purposes. To state
the obvious, tires are mounted on wheels and placed on
vehicles to facilitate locomotion. In addition, applicant’s
wheels are very closely related to opposer’s retail store
services featuring tires and wheels, as well as to opposer’s
vehicle maintenance and repair services, all being part of
the automotive aftermarket.
Further, because applicant’s identification of goods
contains no limitations or restrictions as to types of
purchasers or channels of trade, we must presume that
applicant sells its wheels in all channels of trade that
would be normal for such goods, including retail stores
featuring automotive aftermarket parts and accessories, and
to all normal purchasers, including ordinary consumers. See
In re Elbaum, 211 USPQ 639 (TTAB 1981). Indeed, applicant
has admitted that tires and wheels are sold in the
automotive aftermarket through similar channels of trade.
(Opposer’s not. of rel. exh. 40, 90-91).
Third Party Registrations
Applicant has made of record eleven third-party
registrations, which include the word BIG in combination
with other matter for automotive related goods and services,
apparently to show that the term “BIG” is weak and entitled
Opposition No. 91163791
19
to a narrow scope of protection. While third-party
registrations may be used to demonstrate that a portion of a
mark is suggestive or descriptive, they are not evidence
that the marks shown therein are in use or that the public
is aware of them. See AMF Incorporated v. American Leisure
Products, Inc., 177 USPQ 268, 269 (CCPA 1973)(“little weight
is to be given such registrations in evaluating whether
there is likelihood of confusion.”). Thus, they are not
proof that consumers are familiar with such marks so as to
be accustomed to the existence of similar marks in the
marketplace and, as a result, are able to distinguish
between the BIG marks based on slight differences between
them.
Moreover, of the eleven, four are expired (Registration
Nos. 772529, 900272, 1388039 and 2580562), thus implying
that they are no longer in use. Six others (Registration
Nos. 2146279, 2402092 and 3454188 - owned by the same entity
– for the mark BIG MAX, Registration No. 2875923 for the
mark BIG JAKE, Registration No. 3221264 for the mark BIG
DAWG, and Registration No. 2596506 for the mark BIG WHEEL
ROSSI) are more dissimilar to opposer’s BIG O TIRE mark than
is applicant’s mark. The single remaining registration,
i.e., Registration No. 2195058 for the mark BIG BRAND, is
not sufficient to support a finding that opposer’s pleaded
Opposition No. 91163791
20
BIG O TIRES mark is weak, or otherwise justify the
registration of another confusingly similar mark.
Applicant’s Intent
Next, opposer points out that applicant has admitted
that its selection and use of the BIGG WHEELS mark for
wheels, and the filing of its involved application, was made
with actual knowledge of opposer, its BIG O TIRES mark and
businesses. To the extent that opposer is arguing that
applicant adopted its mark in bad faith, there is
insufficient evidence to show or from we which we can infer
this. Mere knowledge of the existence of opposer’s mark
does not, in and of itself, constitute bad faith. See
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d
1563, 10 USPQ 1307 (Fed. Cir 1989). Ava Enterprises, Inc.
V. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006).
Opposer must show that applicant intentionally sought to
trade on opposer’s good will.
The marks
We now consider applicant’s BIGG WHEELS mark and
opposer’s BIG O TIRES mark. In determining whether or not
these marks are similar, we must consider them in their
entireties in terms of sound, appearance, meaning and
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, supra. The test is not whether the
marks can be distinguished when subjected to a side-by-side
Opposition No. 91163791
21
comparison, but rather whether the marks are sufficiently
similar in their entireties that confusion as to the source
of the goods or services offered under the respective marks
is likely to result.
We note first that BIG O is the dominant element is
opposer’s mark; “TIRES” being merely generic for opposer’s
goods and has been disclaimed. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 Fed. Cir. 1985)(Although
marks 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). Although “WHEELS” is likewise a
generic and disclaimed term in relation to applicant’s
goods, we cannot not say that BIGG dominates applicant’s
mark. We find so because in the context of applicant’s
mark, the term “BIGG” has a suggestive quality not present
in opposer’s mark. Further, the term “BIGG” appears to
modify the term “WHEELS” in applicant’s mark. In any event,
disclaimed matter must be considered with the rest of the
mark as a whole in assessing the similarity between the
marks. See Giant Food, Inc. v. Nation’s Foodservice, 710
F.2d 1565, 218 USPQ2d 390, 395 (Fed. Cir. 1983) (“it is well
settled that the disclaimed material still forms a part of
the mark and cannot be ignored in determining likelihood of
confusion.” (citations omitted).
Opposition No. 91163791
22
When comparing applicant’s mark BIGG WHEELS to
opposer’s mark, BIG O TIRES, we find they differ in both
appearance and sound due to the different elements in each
mark. While both marks share the term “BIG” or “BIGG,”14
its combination with the single letter “O” and the five-
letter word “TIRE” on the one hand and the five-letter word
“wheel,” on the other, that gives each mark a unique visual
impression and cadence when spoken. Further, the marks
differ in connotation. 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 … [and] outstandingly worthy or able.”
Merriam Webster Online Dictionary, 2009.15 There is nothing
in the record to suggest any particular meaning of opposer’s
mark in the context of tires. The only meaning we can
attribute to opposer’s mark is a large letter “O.” On the
other hand, the term “BIG(G)” in applicant’s marks evokes an
image of dimensionally large and outstandingly worthy
wheels, a must have for any auto enthusiast. It is this
play of the word “big(g)” on the term “wheels” that creates
a meaning and connotation in applicant’s mark that is
14 Interestingly, applicant never explained, nor did opposer ask,
why applicant chose the spelling “BIGG” as opposed to “BIG.”
15 Retrieved March 30, 2009, 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. 91163791
23
distinct from that of opposer’s BIG O TIRES mark.
Consequently, the mere fact that applicant’s mark
incorporated the term “BIGG” does not mean that applicant’s
mark is sufficiently similar in meaning, or projects a
similar commercial impression to opposer’s mark. Instead,
when viewed in their entireties, applicant’s BIGG WHEELS
mark is different from opposer’s BIG O TIRES mark and the
dissimilarities in the marks outweigh all other relevant du
Pont factors. Kellogg v. Pack’Em Enterprises Inc., 951 F.2d
330, 21 USPQ2d 1142 (Fed. Cir. 1991).
For the reasons discussed, there is no likelihood of
confusion between applicant’s mark and any of the other
pleaded marks. Opposer’s pleaded BIG O marks create
essentially the same commercial impression as its BIG O
TIRES mark and, based upon the above analysis, are no more
similar to applicant’s mark in appearance, sound, meaning or
commercial impression than BIG O TIRES. With respect to the
Big Foot marks, i.e., BIG FOOT, BIG FOOT 60, BIG FOOT 70 and
BIG FOOT COUNTRY, there are differences in connotation
between those marks and applicant’s mark that obviate any
similarities. First, opposer’s marks suggest in their
overall commercial impression a big foot or print as could
be made by Sasquatch16 (“Bigfoot”) or an area proliferated
16 Merriam-Webster Online Dictionary, 2009, defines “Bigfoot” as
“[from the size of the footprints ascribed to it]: Sasquatch,”
and further defines Sasquatch as a hairy creature like a human
Opposition No. 91163791
24
by Bigfoot. Moreover, the “60” and “70” are merely
descriptive grade designations. With respect to the
remaining word marks or combination word and design marks
(WWW.BIGOTIRES.COM (stylized) and BIG O TIRES and tire tread
design), while they contain additional elements, those
elements are descriptive (i.e. www.--.com) or tend to
further distinguish (the tread design) applicant’s mark.
Finally the sasquatch design marks create an entirely
different commercial impression that serves to distinguish
them from applicant’s BIGG WHEELS word-only mark.
Based on the foregoing, we conclude that despite the
fame of opposer’s marks, and the substantially related goods
and services, opposer’s marks and applicant’s mark are so
dissimilar that their contemporaneous use is not likely to
cause confusion. While opposer is correct that any doubt
must be resolved in its favor, based on this record, we have
no doubt that the parties’ respective marks are not
confusingly similar.
DILUTION
In addition to its Section 2(d) claim, opposer has
asserted a dilution claim. The Lanham Act provides for a
cause of action for the dilution of famous marks. For
being reported to exists in the northwestern United States and
Canada and said to be a primate between 6 and 15 feet (1.8 and
4.6 meters tall – called also bigfoot.”
Opposition No. 91163791
25
purposes of dilution, a party must prove more than confusing
similarity, it must show that the marks are “identical or
very substantially similar.” Carefirst of Maryland v.
FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1514
(TTAB 2005). We have already found that applicant’s BIGG
WHEELS mark is not similar to opposer’s BIG O TIRE Marks for
purposes of likelihood of confusion. It thus stands that
opposer has not proven that the marks are identical or
substantially related for purposes of dilution. Having so
found, we need not address the other factors involved in a
dilution analysis, including whether opposer’s niche fame
suffices for establishing dilution. See id.
Decision: The opposition is dismissed as to both the
likelihood of confusion and dilution grounds.
