Bill Collins Ford, Inc.

Trademark Trial and Appeal Board

Oct 18, 1999

No. 75139991 (T.T.A.B. Oct. 18, 1999)

Paper No. 012
EWH/cv
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 10/18/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bill Collins Ford, Inc.
________
Serial No. 75/139,991
_______
Sandra B. Hammond of Borowitz & Goldsmith, PLC for Bill
Collins Ford, Inc.
Mitchell Front, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______
Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Bill Collins Ford, Inc. (applicant) seeks to register
CARSOURCE and design in the form shown below for "used
motor vehicle dealerships." The application was filed on
Ser No. 75/139,991
2
July 8, 1996 with a claimed first use date of April 25,
1996.
The Examining Attorney refused registration pursuant
to Section 2(d) of the Trademark Act on the basis that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the mark CARSOURCE,
previously registered in typed drawing form for "consulting
services related to the purchase or leasing of vehicles by
consumers." Registration No. 2,028,905.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the marks and the
similarities of the goods or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
Ser No. 75/139,991
3
29 (CCPA 1976) ("The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the marks.")
Marks are compared in terms of the visual appearance,
pronunciation and connotation. In appropriate cases,
sufficient similarity as to one factor may be adequate to
support a finding of likelihood of confusion. Krim-Ko,
Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968).
In this case, the two marks are absolutely identical
in terms of pronunciation and connotation. Obviously, both
marks will be pronounced as simply CARSOURCE. Applicant’s
mark would certainly not be pronounced as "CARSOURCE and
design."
We recognize that applicant’s mark contains a rather
prominent design feature which, in terms of visual
appearance, makes applicant’s mark only somewhat similar to
registrant’s mark. However, when applicant’s services are
recommended by an individual to a friend or when
applicant’s services are advertised on radio, the design
featured in applicant’s mark will simply not be
articulated. In short, we find that applicant’s mark and
registrant’s mark, while not identical, are nevertheless
Ser No. 75/139,991
4
extremely similar given the fact that they are identical in
terms of pronunciation and connotation.
Turning to a consideration of the services, it should
be noted at the outset that as the similarity of the marks
increases, a lesser degree of similarity in the services
(or goods) is required for a finding of likelihood of
confusion. Century 21 Real Estate v. Century Life, 970
F.2d 873, 23 USPQ 2d 1698, 1700 (Fed. Cir. 1992). As set
forth in the registration, registrant’s services are the
following: "Consulting services related to the purchase or
leasing of vehicles by consumers." At page four of its
reply brief, applicant characterizes registrant’s services
"as a consulting service for the purpose of assisting a
consumer in the purchase or lease of the vehicle." In the
next sentence, applicant goes on to note that "applicant’s
purpose [service] is to provide specific, used car
inventory for a consumer to view and purchase."
Obviously, the services are not identical. However,
we believe that a consumer who has gone to registrant
CARSOURCE seeking assistance in the purchase or lease of a
vehicle, would, if he or she later saw applicant’s mark
CARSOURCE and design at a used motor vehicle dealership,
assume that both services emanate from a common source or
Ser No. 75/139,991
5
that there were some form of affiliation between the two
services.
Moreover, applicant’s own literature describing its
used car dealership strongly suggests that many used car
dealerships are evolving to offer a greater of array of
services than in the past. Indeed, some of these services
begin to approach the giving of advice, as opposed to the
high pressure sales practices of the past. For example, in
one of applicant’s advertisements there appears a box
containing the following heading: "The Unique CarSource
Buying Experience." Thereafter, there appears the
following text: "No-haggle pricing posted right on the
vehicle. Computer-assisted shopping at your own pace. No
sales pressure. … just great values!" (emphasis added).
We are taking into account applicant's argument that
in purchasing expensive items such automobiles, consumers
exercise a greater degree of care. This is a valid
argument. It is because of this argument that we find that
the question of likelihood of confusion is a close one.
Nevertheless, given the fact that the marks are identical
in terms of pronunciation and connotation and the
additional fact that the services are closely related, we
find that there exists a likelihood of confusion.
Moreover, it is to be remembered that "any doubts about
Ser No. 75/139,991
6
likelihood of confusion … under Section 2(d) must be
resolved against applicant as the newcomer." In re Hyper
Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988).
Decision: The refusal to register is affirmed.
E. J. Seeherman
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board