Buy Here Pay Here, USA, LLC

Trademark Trial and Appeal Board

Mar 18, 2008

No. 78951303 (T.T.A.B. Mar. 18, 2008)

Mailed:
3/18/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Buy Here Pay Here, USA, LLC
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Serial No. 78951303
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Alicia Brown Oliver of Chambliss, Bahner & Stophel, P.C.
for In re Buy Here Pay Here, USA, LLC

Kapil K. Bhanot, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Bergsman, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Buy Here Pay Here, USA, LLC filed an application to
register the service mark BUY HERE PAY HERE USA and design,
shown below, for “dealerships in the field of used
automobiles,” in international class 35 and for “financing
relating to automobiles” in class 36.1

1 Application Serial No. 78951303, filed August 14, 2006, filed
pursuant to Section 1(b) of the Trademark Act, 15 USC §1051(b),
alleging a bona fide intent to use. On October 17, 2007,
Applicant filed an Amendment to Allege Use filed pursuant to
Section 1(c) claiming September 23, 2006 as its date of first use
anywhere and October 13, 2006 as its date of first use in
commerce. Applicant disclaimed the exclusive right to use “USA”
apart from the mark as shown.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78951303
2

The Examining Attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that Applicant’s mark BUY HERE PAY
HERE USA, when used in connection with the identified
services, so resembles the registered service mark BEST BUY
HERE PAY HERE, in standard character format, for
“dealerships in the field of automobiles; providing
information about automobiles for sale by means of the
internet,” as to be likely to cause confusion.2
Upon final refusal of registration, Applicant filed a
timely appeal. Both Applicant and Examining Attorney filed
briefs. For the reasons discussed herein, the Board
affirms the final refusal to register.
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
relevant, probative facts in evidence. In re E. I. du Pont

2 Registration No. 2942009, issued April 19, 2005.
Serial No. 78951303
3
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, the two key
considerations are the similarities between the marks and
the similarities between the goods or, as here, the
services. See Federated Foods, Inc. v. Fort Howard Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
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”). We consider each of the factors as to which
Applicant or Examining Attorney presented arguments or
evidence.
Similarity or dissimilarity of the marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Where a mark consists of
words as well as a design, the words are generally dominant
because the words will be used to call for or refer to the
services. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82,
218 USPQ 198, 200 (Fed. Cir. 1983); In re Dakin’s
Serial No. 78951303
4
Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB
1987). This is true of Applicant’s mark, whose design
merely highlights its services.
The mark in the cited registration is BEST BUY HERE
PAY HERE. The word “best” is laudatory. It is an
adjective that means “of the highest quality, excellence,
or standing” or “the most advantageous, suitable or
desirable.”3 Accordingly, the leading word “best” in the
registered mark is commercial puffery implying that
registrant is rendering the best BUY HERE PAY HERE
services. Under these circumstances, applicant’s mark and
the registered mark are virtually identical in appearance,
sound, meaning, and commercial impression.
Applicant argues that “Buy Here Pay Here” is a weak
source identifier, meaning simply a place where consumers
can buy a car on installment without using an outside
lender.4 A weak mark is still protectable however, and
third party usage or infringement does not entitle
Applicant to register a confusingly similar mark. See

3 The Random House Dictionary of the English Language Unabridged,
p. 198 (2nd ed. 1987). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
4 The Examining Attorney chose not to give a 2(e)(1) rejection
however.
Serial No. 78951303
5
Giant Food Inc. v. Roos and Mastacco, Inc., 218 USPQ 521
(TTAB 1982)(even owner of weak mark is entitled to
protection from likelihood of confusion).
Similarity of the Services, Channels of Trade, and Classes
of Consumers
The services covered by Applicant’s and registrant’s
marks are also identical in part. Applicant is seeking
registration for automobile dealerships and financing.
Registrant’s mark covers the former. Furthermore,
Examining Attorney has produced probative evidence that
automobile dealerships and financing are frequently
advertised together, and apparently rendered by the same
source. In addition, there are no limitations in either
the registration and/or the application, and therefore we
must presume that the services at issue will travel in all
normal and usual channels of trade and be sold to all
classes of consumers. Squirtco v. Tomy Corporation, 697
F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). In view of the
foregoing, the services, channels of trade and classes of
consumers are the same.
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists because the marks are quite
similar, they are used on partially identical services,
Serial No. 78951303
6
they are likely to target the same consumers, and they are
likely to be sold through the same channels of trade.
Decision: The refusal to register is affirmed.