Black Widow Performance, Inc.

Trademark Trial and Appeal Board

Sep 5, 2018

No. 87177397 (T.T.A.B. Sep. 5, 2018)

Mailed: September 5, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Black Widow Performance, Inc.
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Serial No. 87177397
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Mark B. Garred of Stetina Brunda Garred & Brucker,
for Black Widow Performance, Inc.
Philip Liu, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Wolfson, Hightower, and Heasley,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Applicant Black Widow Performance, Inc. seeks registration on the Principal
Register of the mark depicted below for “exhaust mufflers for motors” in International
Class 7.1

1 Application Serial No. 87177397, filed September 20, 2016, under Section 1(a) of the
Trademark Act, based upon Applicant’s allegation of first use and first use of the mark in
commerce on April 1, 2014. The description of the mark statement reads: “The mark consists
of the wording BLACK WIDOW in stylized double outlined font, centered within a bowtie
design.” Color is not claimed as a feature of the mark.
This Opinion is Not a
Precedent of the TTAB
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion with Registration No. 3966654 for the mark BLACK WIDOW (in standard
characters) for:
Customized automobile parts, namely, customized sports
car bodies and structural parts therefor, customized
chassis, engines and hoods, customized suspension
systems, and bumpers; automotive interior trim; badges for
vehicles; insignia for vehicles; plastic parts for vehicles,
namely, automotive exterior and interior plastic extruded
decorative and protective trim; automobile door handles;
vehicle upholstery; fitted dashboard covers for vehicles,
and automotive specialty chrome effects, namely, wheel
rims, vehicle trim in International Class 12.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see

2 Registered on the Principal Register on May 24, 2011; Sections 8 and 15 combined
declaration accepted and acknowledged. The registration also recites services in Class 37,
but the Examining Attorney does not base his refusal on these services.
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also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
A. The Marks
We start with a consideration of the first du Pont factor, that is, whether
Applicant’s mark and Registrant’s BLACK WIDOW mark are
confusingly similar when viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. See Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). The test under the first du Pont factor
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 impression that confusion as to the source of the goods 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 Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470
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(TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark is comprised of the words BLACK WIDOW outlined by a design
in the shape of a bowtie, or as Applicant suggests, an hourglass shape. Registrant’s
mark is BLACK WIDOW, in standard characters. There is no dispute that the literal
portion of each mark is identical, making the marks identical in pronunciation and
connotation. Applicant argues that the marks are distinguishable on the basis of the
design features in its mark:
The stylized font and organization of the words included in
the hourglass design element of [Applicant’s] mark creates
a unique look, which serves as a point of visual distinction
over the cited ‘654 Registration. Along these lines, as black
widow spiders are known to have hourglass markings, the
design element establishes a unique nexus with the literal
portion of the mark, with the collective whole being
visually and connotatively distinguishable from the cited
‘654 Registration as indicated above.
Appeal Brief, 4 TTABVUE 9.
We find Applicant’s arguments unpersuasive. The words in Applicant’s mark are
the dominant portion thereof because “they are likely to make a greater impression
upon purchasers, to be remembered by them, and to be used by them to request the
goods” than would be the design. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181,
1184 (TTAB 2018); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (“In the case of a composite mark containing both words and a design,
‘the verbal portion of the mark is the one most likely to indicate the origin of the goods
to which it is affixed.’”) (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
200 (Fed. Cir 1983)). The design outlining the words in Applicant’s mark primarily
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serves as a background carrier for the wording. To the extent it would be perceived
as an hourglass, the design reinforces the commercial impression made by the
wording because, as Applicant notes, a commonly known characteristic of black
widow spiders is that they have hourglass markings. Thus, the design may serve to
underscore the similarity between the shared words BLACK WIDOW. The stylized
font of Applicant’s mark is negligible and does not serve to distinguish the marks.
Moreover, because the cited mark is registered in standard characters, it could be
depicted in the same font style as the words “black widow” are depicted in Applicant’s
mark. Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a); Aquitaine Wine, 126 USPQ2d at
1187. Accordingly, the marks are identical in sound and meaning, only slightly
dissimilar in appearance, and create similar commercial impressions.
In an attempt to show that the cited registered mark is weak and subject to only
a narrow scope of protection, Applicant submitted copies of five third-party
registrations for marks containing the words BLACK WIDOW.3 Applicant argues
that the existence of these registrations “…illustrates that the consumer is already
aware that such goods may come from several different sources, and weighs strongly
against a likelihood of consumer confusion.” Applicant further argues:
Indeed, as a preliminary matter, it should be noted that
Appellant is also the owner of U.S. Registration Nos.
5,025,360 for the mark BLACK WIDOW TUNED
PERFORMANCE EXHAUST for mufflers in Class 7, and
5,025,141 for the mark BLACK WIDOW TUNED
PERFORMANCE EXHAUST (and Design) for mufflers in
Class 7.

3 Response, June 19, 2017, TSDR 3-7.
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The prior registrations do not demonstrate weakness of Registrant’s mark.
Significantly, Applicant has not shown that any of the third-party marks are in use,
or that there are any other uses of similar marks in the marketplace. We must
“adequately account for the apparent force of [third-party use] evidence” regardless
of whether “specifics” pertaining to the extent and impact of such use have been
proven. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674-5 (Fed. Cir. 2015). However, absent evidence of actual use, third-party
registrations by themselves have little probative value because they are not evidence
that the marks are in use on a commercial scale or that the public has “become so
accustomed to seeing them in the marketplace that they have learned to distinguish
among them by minor differences.” In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1745 (TTAB 2016) (“‘[t]he purchasing public is not aware of
registrations reposing in the Patent [and Trademark] Office’”) (citing Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 462-63 (CCPA 1973)). In
any event, “the existence of confusingly similar marks already on the register will not
aid an applicant to register another confusingly similar mark.” Morinaga Nyugyo,
120 USPQ2d at 1745.
Moreover, the third-party registrations are for goods that have not been shown to
be related to Applicant’s goods. Two of the five, owned by the same entity, are for
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“circular diamond saw blades for power saws”; 4 these goods are entirely unrelated to
exhaust mufflers for motors. The three remaining registrations bear only a tangential
relationship to Applicant’s goods in that they are designed for use with vehicles. One
of the registrations is for “tires especially designed for all terrain vehicles”;5 another
registration is for a “keyless entry system and keyless ignition switch system [for]
automotive vehicles” and “parts for anti-theft automotive alarms”;6 and the third is
for “camshafts for vehicle engines; engine camshafts.”7 Even assuming a nexus
between the vehicle goods of these three registrations, a mere three registrations is
too few in number to demonstrate that the cited mark is weak and should be afforded
a narrow scope of protection.8 See Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011) (three third-party
registrations for similar marks do not prove that the common term
(“MICHOACANA”) is commercially weak).
That Applicant apparently owns two prior registrations for marks containing the
term BLACK WIDOW is not dispositive. Although they were claimed as active prior
registrations in Applicant’s application, these two registrations were not made of

4 Reg. No. 4074401 for the mark BLACK WIDOW and design and Reg. No. 4067360
for the standard character mark BLACK WIDOW.
5 Reg. No. 3209878 for the mark .
6 Reg. No. 4794274 for the mark .
7 Reg. No. 4733825 for the mark BLACK WIDOW CAMS.
8 By comparison, in Juice Generation, there were at least twenty-six relevant third party uses
or registrations of record. See 115 USPQ2d at 1672 n.1.
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record during examination, and it is the Board’s well-established practice not to take
judicial notice of registrations that reside in the USPTO.9 This practice includes
“registrations owned by the applicant or registrant that are not the subject of the
appeal.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §
1208.02 (June 2018). Nonetheless, because Applicant discussed Registration Nos.
5025360 and 5025141 in its appeal brief and the Examining Attorney addressed both
of these registrations in his brief and neither objected to the discussion of the other,
we will treat the registrations as though they are of record. Consideration of these
registrations does not change the outcome.10 See In re Olin Corp., 124 USPQ2d 1327,
1335 n.22 (TTAB 2017) (although registrations owned by applicant were not made of
record, Board considered them because applicant and examining attorney addressed
them without objection).
For the above reasons, we find that the first du Pont factor favors a finding of
likelihood of confusion.
B. Similarities Between The Goods; Trade Channels; Purchasers
Our determination regarding the similarity of the goods, channels of distribution
and classes of purchasers is based on the goods as they are identified in the

9 Identifying the registrations by registration number on the ESTTA cover sheet of the
application does not automatically make them of record in the proceeding.
10 Appeal Brief, 4 TTABVUE 7; Examining Attorney’s Brief, 6 TTABVUE 12-14. The
Examining Attorney addressed Applicant’s prior registrations under In re Strategic Partners,
Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), finding that decision inapplicable to the
case at hand. We agree with the Examining Attorney that the special circumstances of
Strategic Partners are not present here. The marks have not been shown to be in use for more
than five years and the registrations are not incontestable.
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application and registration, respectively. Stone Lion v. Lion Capital, 110 USPQ2d
at 1161 (“the question of registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the application”) (quoting Octocom Sys.,
Inc. v. Houston Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990)); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002).
Applicant seeks to register its mark for “exhaust mufflers for motors.” The cited
registration includes “customized automobile parts, namely, customized sports car
bodies and structural parts therefor, customized chassis, engines and hoods,
customized suspension systems, and bumpers”; “plastic parts for vehicles, namely,
automotive exterior and interior plastic extruded decorative and protective trim;
automobile door handles” and “automotive specialty chrome effects, namely, wheel
rims, vehicle trim.” The Examining Attorney submitted copies of Internet and
registration evidence to show that these goods are commercially related to exhaust
mufflers and sold together in the marketplace under the same trademark.11 For
example:
Internet Evidence
• BBKPerformance.com offers “BBK Varitune mufflers” and parts for
suspension systems such as “BBK-Gripp Control Arms,” “BBK-Gripp Lowering
Springs” and “BBK-Gripp Subframe Connector Sets.”12

11 July 26, 2017 Final Office Action, TSDR 2-56.
12 Id. at www.bbkperformance.com, TSDR 3-5.
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• NapaOnline.com sells “NAPA Solutions” interior and exterior door handles and
“NAPA” mufflers, suspension parts, and wheel rims.13

• NorCal Muffler & Truck Inc. sells “NORCAL” muffler and exhaust systems
and “NORCAL” vehicle suspension systems.14

• Borla.com offers exhaust mufflers and automotive structural parts.15

• O’Reilly Auto Parts offers “body styling components” and goods from “related
categories” such as “Chassis & Suspension” and “Exhaust.”16

• Dimecitycycles.com offers “exhaust systems and mufflers” and “suspension and
steering” products.17

Third-party Registration Evidence
The Examining Attorney submitted copies of eleven third-party registrations for
goods registered for use in connection with both “exhaust mufflers for motors” and
several of the goods identified in the cited registration.18 Third-party registrations
that individually cover a number of different items and which are based on use in
commerce may have some probative value to the extent that they serve to suggest
that the listed goods and/or services are of a type that may emanate from a single
source. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); see also In re

13 Id. at www.napaonline.com, TSDR 12-17.
14 Id. at www.norcalmuffler.com, TSDR 18-20.
15 January 3, 2017 Office Action, at https://www.borla.com, TSDR 2. The final three
references are less probative because they do not include copies of the actual pages at which
any of the goods, other than exhaust mufflers, are sold. They do, however, show via menu
tabs that have been extended, that such goods are retailed online via the websites.
16 Id. at www.oreillyauto.com, TSDR 3.
17 Id. at www.dimecitycycles.com, TSDR 4.
18 July 26, 2017 Final Office Action, TSDR 21-56.
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Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993). Three of the registrations are not used-based19
and are accordingly disregarded. Mucky Duck, 6 USPQ2d at 1470 n.6 (“Such
registrations and applications are not even necessarily evidence of a serious intent to
use the marks shown therein in the United States on all of the listed goods and
services, and they have very little, if any, persuasive value on the point for which they
were offered.”). The remaining registrations, however, support a finding that the
goods are related; for example:
• Reg. No. 4234258 for the mark RTR (stylized) for “exhaust mufflers for
motors” and “performance suspension systems for automobiles and trucks.”

• Reg. Nos. 4739296 for the mark and Reg. No. 4739297 for the mark
for “exhaust mufflers for land vehicles” and “chassis
reinforcement bars and plates,” “front and rear bumpers,” “shock
absorbers,” and “suspension systems.”

• Reg. No. 4362589 for the mark E-MOTOR for “exhaust mufflers for motors”
and “automobile chassis,” “automobile hoods,” and “automobile suspension
components.”

• Reg. No. 4754784 for the mark H’HNTC (stylized) for “exhaust mufflers for
motors” and “suspension systems for automobiles.”

• Reg. No. 4412862 for the mark KELLERNERS SPORT for “exhausts for
motors and engines, in particular … exhaust mufflers,” and “bumpers;
chassis suspensions and structural parts thereof, and interior parts, in
particular automotive interior trim and pedal covers.”

• Reg. No. 4829783 for the mark OPPARTS for “exhaust mufflers for motors”
and “land vehicle suspension parts; spare automobile parts, namely…
bumpers, chassis…plastic parts, namely, automotive exterior and interior

19 Reg. Nos. 4296838, 4412862, and 4975579.
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plastic extruded decorative and protective trim.”

The Internet and registration evidence demonstrate that third parties provide
the types of goods offered and sold by both Applicant and Registrant under a single
mark through similar trade channels to the same customers. See, e.g., In re Davey
Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Applicant argues that the goods are not directly competitive, are classified in
different international classes, and do not target the same consumers because
Applicant’s goods “directly relate to the operability of the vehicle” while Registrant’s
goods are “used to superficially enhance the aesthetic quality or appearance of the
vehicle.”20 It is well-settled that the classification of goods and services is for the
administrative convenience of the USPTO and has no bearing on the likelihood of
confusion analysis. See Trademark Act Section 30, 15 U.S.C. § 1112 (“The Director
may establish a classification of goods and services, for convenience of Patent and
Trademark Office administration, but not to limit or extend the applicant’s or
registrant’s rights.”); Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771,
1774 (Fed. Cir. 1993)(“[C]lassification is wholly irrelevant to the issue of registrability
under section 1052(d), which makes no reference to classification.”). It is further well-
settled that the respective goods need not be identical or even competitive in order to
find that they are related for purposes of our likelihood of confusion analysis; they
need only be “related in some manner” or “the circumstances surrounding their

20 Appeal Brief, 4 TTABVUE 10.
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marketing [be] such that they could give rise to the mistaken belief that the goods
emanate from the same source.” Coach Servs. v. Triumph Learning LLC, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). As for the distinction Applicant
makes between the relevant consumers, it is a “distinction without a difference.”
Applicant has not presented any evidence from which we may conclude that persons
interested in their vehicle’s appearance would not be equally interested in
maintaining its operability.
The second and third du Pont factors favor a finding of likelihood of confusion.
II. Summary
We have carefully considered all of the evidence of record, including any evidence
not specifically discussed herein. The overall similarity of the marks for related goods
that move in similar channels of trade, reaching the same classes of customers,
renders confusion likely. We conclude that consumers who are aware of Registrant’s
BLACK WIDOW mark for automobile parts, who later encounter Applicant’s mark
for exhaust mufflers for motors, are likely to believe that the goods are
manufactured or produced by the same entity.
III. Decision:
The refusal to register Applicant’s mark under Trademark Act Section 2(d) is
affirmed.