FCA US LLC

Trademark Trial and Appeal Board

Apr 10, 2018

No. 85650654 (T.T.A.B. Apr. 10, 2018)

Mailed:
April 10, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re FCA US LLC
_____

Serial No. 85650654
_____

William M. Bryner and Judith A. Powell of Kilpatrick Townsend & Stockton LLP
for FCA US LLC.

Saima Makhdoom, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_____

Before Adlin, Gorowitz, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
FCA US LLC (“Applicant”) filed an application1 for registration on the
Principal Register of the mark MOAB in standard characters for “Motor vehicles,
namely, passenger automobiles, their structural parts, trim and badges,” in
International Class 12. The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 85650654 was filed on June 13, 2012 on the basis of Applicant’s
assertion of its bona fide intention to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 85650654

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Applicant’s mark so resembles the registered mark MOAB INDUSTRIES in standard
characters as to be likely to cause confusion or mistake, or to deceive, when used in
connection with Applicant’s goods. The cited mark is registered in the name of Moab
Industries, LLC (“Registrant”) for “Automotive conversion services, namely,
installing specialty automotive equipment,” in International Class 37.2
During examination, Applicant (known at that time as Chrysler Group LLC)3
petitioned for cancellation of the cited Registration (Cancellation No. 92057939); and
Registrant brought suit against Applicant in the United States District Court for the
District of Arizona. Moab Industries LLC v. Chrysler Group LLC, No. CV-12-08247-
PCT-HRH (“MIL v. Chrysler”). The Examining Attorney suspended action on the
application. The District Court issued its final decision on October 6, 2016 (the
“Decision”), dismissing Registrant’s claims.4 Registrant appealed the District Court’s
judgment to the Court of Appeals for the Ninth Circuit; that appeal was dismissed by
stipulation of the parties on December 9, 2016.5 Cancellation No. 92057939 was
dismissed without prejudice by stipulation of the parties on December 15, 2016.
Thereafter, the Examining Attorney resumed examination of the application and

2 Reg. No. 3912705 (the “Registration”) issued February 1, 2011. Section 8 affidavit accepted;
Section 15 affidavit acknowledged. Registrant has disclaimed the exclusive right to use
INDUSTRIES apart from the mark as shown.
3 Applicant recorded its change of name from Chrysler Group LLC to FCA US LLC on
December 16, 2014 at Reel 5420, Frame 0439 of the title records maintained by the USPTO’s
Assignments Branch.
4 See Applicant’s response of December 23, 2016 at 266-90.
5 See id. at 292.
Serial No. 85650654

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issued a final refusal of registration under Section 2(d). Applicant appealed to this
Board. The case is fully briefed.
1. The District Court case.
In MIL v. Chrysler, Registrant asserted four claims: federal trademark
infringement; federal unfair competition; common law unfair competition; and state
law trademark dilution. In connection with the federal claims, Registrant asserted
its ownership of the Registration. Applicant asserted five counterclaims. The first
counterclaim sought a declaratory judgment that Applicant’s use of MOAB did not
infringe, dilute, or otherwise violate Registrant’s rights.6 The second counterclaim
sought cancellation of the Registration on the ground that Registrant used its mark
to misrepresent the source of goods. The third, fourth, and fifth counterclaims related
to Applicant’s rights in marks other than MOAB.
Registrant’s state law dilution claim was dismissed with prejudice by summary
judgment. The parties’ other claims were tried to the Court over a period of several
days, and the Court issued a detailed written decision.
With respect to likelihood of confusion, the Court applied the Ninth Circuit’s
multi-factor test set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 USPQ
808, 814 (9th Cir. 1979). The Court found that Registrant failed to prove by a
preponderance of evidence that Applicant’s use of the mark MOAB in connection with
its JEEP WRANGLER MOAB Special Edition vehicles “was likely to cause confusion

6 Although the application was filed on the basis of intent to use, and remains in intent-to-
use status, there is evidence of record showing that Applicant’s mark has been used. See, e.g.,
Office Action of April 2, 2013 at 40-45.
Serial No. 85650654

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on the part of reasonably prudent customers for [Registrant’s] upfitted vehicles.”7 The
Court therefore dismissed Registrant’s federal infringement claim (under 15 U.S.C.
§ 1114) and common law unfair competition claim.8 The Court dismissed Registrant’s
federal unfair competition claim (under 15 U.S.C. § 1125(a)) because “[Applicant] has
not created the false or misleading impression that [Applicant’s] JEEP WRANGLER
MOAB Special Edition vehicles are those of [Registrant].” In summarizing its own
detailed analysis of the factors affecting likelihood of confusion, the Court stated:
Although factor 2 (proximity of the goods) and factor 3
(similarity of the marks) suggest some likelihood of
confusion, the other six Sleekcraft factors suggest little
likelihood of confusion. In particular, the court finds that
factor 4 (evidence of actual confusion), factor 5 (marketing
channels used), and factor 6 (degree of care likely to be
exercised by the purchaser) weigh strongly in favor of a
finding that confusion between [Registrant’s] upfitted
MOAB vehicle and [Applicant’s] MOAB Special Edition
vehicle is unlikely.9
Turning to Applicant’s counterclaims, the Court denied as moot Applicant’s
claim for a declaratory judgment.10 The Court dismissed Applicant’s claim for
cancellation of the Registration “because [Applicant’s] proof fails to establish by a
preponderance of the evidence that [Registrant] deliberately sought to pass off its
MOAB vehicles as [Applicant’s] goods and [Applicant] has no evidence of any

7 Decision ¶ 69.
8 Id. ¶¶ 69, 71.
9 Id. ¶45.
10 Id. ¶ 73; see also Decision part D (“The court declines to take up this counterclaim because
the relief which is sought is adequately addressed by the court’s findings and conclusions
with respect to plaintiff’s claims and defendant’s other counterclaims.”).
Serial No. 85650654

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economic harm as a result of [Registrant’s] resale of JEEP WRANGLER vehicles.”11
The Court also dismissed Applicant’s third, fourth, and fifth counterclaims on the
merits.12
The District Court was fully aware of the pendency of the application that is
now before us, and was aware that the USPTO had suspended action. “The USPTO
declined to register [Applicant’s] MOAB mark, pointing to possible confusion because
of [Registrant’s] MOAB INDUSTRIES mark. That decision by the USPTO remains
subject to further review. The USPTO finding of potential confusion is entitled to very
little weight inasmuch as the USPTO would not have had access to most of the
evidence which is before the court.”13
Applicant argues that “The Board … should defer to the more fulsome record
upon which the District Court relied to draw its conclusions, and the District Court’s
careful consideration of likelihood-of-confusion factors …”14 Referring to the Federal
Circuit’s leading case, In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), Applicant argues:

11 Id. ¶ 74.
12 Id. ¶ 75, 76. Although the Court’s decision sometimes refers to Registrant’s goods rather
than Registrant’s services, the Court relied upon the Registration as the source of
Registrant’s valid and protectable trademark rights, and was careful to note that
“[Registrant’s] rights based upon the MOAB INDUSTRIES registration are limited to
automobile conversion services.” However, the Court appears to have given weight to the fact
that the end product of Registrant’s automotive conversion services was a vehicle highly
similar to Applicant’s JEEP vehicles. Indeed, Registrant specialized in the conversion of
JEEP brand vehicles, a factor that appears to have intensified, in the Court’s view, the
relatedness of the parties’ goods and services.
13 Id. ¶ 43.
14 Applicant’s brief at 2, 12 TTABVUE 7.
Serial No. 85650654

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Under Du Pont, the question of likelihood of confusion
turns “not [on] the nature of the mark, but [on] its effect
when applied to the goods of the applicant.” Du Pont, 177
U.S.P.Q. at 567. “The words ‘when applied’ do not refer to
a mental exercise, but to all of the known circumstances
surrounding use of the mark” in the marketplace. Id., 177
U.S.P.Q. at 567 (emphasis added). On a comprehensive
litigation record, the District Court plainly assessed all of
those “known circumstances” to find that confusion was
unlikely.15
Applicant contends that “there is nothing on this record to indicate that the issues
now before the Board are so fundamentally different from those that the District
Court has already adjudicated to warrant ignoring the District Court Opinion in the
manner that the Examining Attorney advocates. The fact that the District Court
evaluated more evidence concerning a likelihood of confusion than is typical in ex
parte appeals does not mean that the Examining Attorney may substitute her
judgment, on a lesser record, for the District Court’s assessment of the exact same
legal standard.”16
Although there is some overlap between Applicant’s defense and counterclaims
in the federal court action and the basis of refusal of Applicant’s application, they also
raise discrete issues. In other words, the issues are not identical. In MIL v. Chrysler,
Applicant, in the position of defendant, sought – and obtained – a finding that specific
alleged marketplace activities did not infringe Registrant’s rights in the mark MOAB
INDUSTRIES. It also sought – but did not obtain – cancellation of the Registration
and a more general declaration of noninfringement.

15 Id. at 6, 12 TTABVUE 11.
16 Applicant’s reply brief at 6, 15 TTABVUE 8.
Serial No. 85650654

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In the registration context, likelihood of confusion is determined by the marks,
the goods and services, and the usages disclosed in the application and the cited
registration. Evidence of actual marketplace usages that seeks to limit or alter the
usages encompassed by the marks, goods and services, or usages listed in the
application and registration are not considered in assessing likelihood-of-confusion in
the registration context. See B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct.
1293, 113 USPQ2d 2045, 2054 (2015); see also, e.g., Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); In re
Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).17 This rule
necessarily follows from Section 7(b), which provides that a federal trademark
registration on the Principal Register “shall be prima facie evidence … of the owner’s
exclusive right to use the registered mark in commerce on or in connection with the
goods or services specified in the certificate …” 15 U.S.C. § 1057(b) (emphasis added).
Applicants have the option of tailoring their applications so that the registrations
that ultimately issue will more closely reflect market realities: they may identify their
goods with greater specificity, indicate a specific use for which the goods are
specialized, identify the types of purchasers who use the goods, indicate a price range,
specify any trade channels to which their marketing activities may be restricted, and

17 For example, an applicant might seek – and obtain – a registration for “shoes,” even though
in fact it uses its mark only on women’s shoes; or a registration for “hats,” even though it uses
its mark only on baseball caps marketed exclusively in stadiums. There are some controls for
this lack of perfect specificity. A registration’s evidentiary significance may sometimes be
rebutted; and there are procedures for cancelling or reducing the scope of registrations. See,
e.g., 15 U.S.C. §§ 1063 (opposition proceeding), 1064 (cancellation), 1068 (cancellation in
part), 1115 (registration rebuttable), 1119 (cancellation by court).
Serial No. 85650654

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describe any specific circumstances that will necessarily attend the sale of the
goods.18 However, where an application contains no such restrictions, examining
attorneys and the Board must read the application to cover all goods of the type
identified, to be marketed through all normal trade channels, and to be offered to all
normal customers therefor. To do otherwise “would be improper because the [goods]
recited in the application determine the scope of the post-grant benefit of registration.
… It would make little sense for the Board to consider only the parties’ current
activities when the intent-to-use application, not current use, determines the scope
of this post-grant benefit.” Stone Lion, 110 USPQ2d at 1162-63 (citing Octocom Sys.
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed.
Cir. 1990)). Parties that choose to use identifications of goods in their trademark
applications that are broader than their actual goods will be held to the broader scope
of the application. See Stone Lion, 110 USPQ2d at 1162.
When we compare the terms of the registration that Applicant now seeks with
the issues that were raised in MIL v. Chrysler, we see that they differ substantially.
The mark that Applicant seeks to register is MOAB. The District Court, in its
conclusions of law, refers to a different mark:
69. … [Applicant] has not infringed on [Registrant’s] registered trademark
(MOAB INDUSTRIES) by selling [Applicant’s] JEEP WRANGLER
MOAB Special Edition. …

18 In innumerable cases, the Board hears arguments about how the parties’ actual goods,
services, customers, trade channels, and conditions of sale are narrower or different from the
goods and services identified in the applications and registrations. But as stated in equally
innumerable decisions of our primary reviewing court, we may consider any such restrictions
only if they are included in the identification of goods or services.
Serial No. 85650654

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70. Plaintiff’s Count 2 for federal unfair competition fails for lack of proof of
confusion: that is, [Applicant] has not created the false or misleading
impression that [Applicant’s] JEEP WRANGLER MOAB Special
Edition vehicles are those of plaintiff. …19

Since Applicant now seeks to register MOAB alone, the rights of registration that
Applicant seeks would not be limited to use of the mark MOAB together with the
terms JEEP and WRANGLER.
With respect to the goods at issue in MIL v. Chrysler, the Court said the following:
34. [Registrant’s] MOAB vehicle and [Applicant’s] MOAB Special Edition
are both JEEP WRANGLER vehicles that have been upfitted in
somewhat different ways to enhance their off-road capabilities. …

41. Both plaintiff’s and defendant’s MOAB vehicles are expensive. While
they are both highway legal, the vehicles are intended for off-highway
use under difficult to extreme circumstances. …

In MIL v. Chrysler, the Court was not considering automobiles in general. Rather,
the Court was limiting its consideration to “expensive” “highway-legal, off-road
enhanced performance vehicle[s]” that are “upfitted … to enhance their off-road
capabilities” and are “intended for off-highway use under difficult to extreme
circumstances.” The registration that Applicant now seeks relates to a broader range
of goods that includes all “passenger automobiles.” Applicant also seeks registration
for all kinds of “structural parts, trim and badges” of passenger automobiles. These
kinds of goods were not addressed in MIL v. Chrysler.
As we will discuss infra, there are many other ways in which the issues
presented to the District Court in MIL v. Chrysler differ from the issues framed by

19 Decision ¶¶ 69-70.
Serial No. 85650654

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this appeal from the Examining Attorney’s refusal to register just MOAB for more
broadly identified goods. The issues decided by the District Court are not the issues
we must decide here.
Applicant argues, quoting B&B Hardware, 113 USPQ2d at 2053, that “‘[w]hen
a district court, as part of its judgment, decides an issue that overlaps with part of
the TTAB’s analysis, the TTAB gives preclusive effect to the court’s judgment.’”20
B&B Hardware dealt with the specific legal principle of “issue preclusion,” also
known as “collateral estoppel.” The Supreme Court clearly was contemplating that
the Board would give preclusive effect to a court’s judgment in a subsequent Board
decision involving the same parties and issues that had been before the court. As the
Court stated, “[t]he Restatement explains that subject to certain well-known
exceptions, the general rule is that ‘[w]hen an issue of fact or law is actually litigated
and determined by a valid and final judgment, and the determination is essential to
the judgment, the determination is conclusive in a subsequent action between the
parties, whether on the same or a different claim.’” B&B Hardware, 113 USPQ2d at
2051 (quoting RESTATEMENT (SECOND) OF JUDGMENTS § 27, p. 250 (1980)) (emphasis
added). In other words, the Court in B&B Hardware addresses issue preclusion
purely in an adversarial context and specifically conditions its holding on “the
ordinary elements of issue preclusion” being met. 113 USPQ2d at 2048. One such
element is that the party to be charged with issue preclusion have had a full and fair
opportunity to litigate its claims in the prior action. See Parklane Hosiery Co. v.

20 Reply brief at 1, 15 TTABVUE 3.
Serial No. 85650654

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Shore, 439 U.S. 322, 327 n.7 (1979) (citing Blonder-Tongue Labs., Inc. v. Univ. of Ill.
Found., 402 U.S. 313, 329 (1971)).
Applicant seeks to charge the USPTO with issue preclusion in the present
proceeding, but the agency was not a party to the prior action. The fact that the
USPTO has cited the Registrant’s registration in refusing to register the applied-for
mark, leading to this appeal, does not indicate that Registrant somehow represented
the USPTO in the prior proceeding. The Federal Circuit has long held that a
determination in district court litigation does not bind the USPTO in a later ex parte
proceeding. In re Trans Texas Holdings Corp. 498 F.3d 1290, 83 USPQ2d 1835 (Fed.
Cir. 2007):
… [T]he PTO was not even a party to the earlier district
court litigation and cannot be bound by its outcome. …
We have never applied issue preclusion against a non-
party to the first action. In fact, the Supreme Court has
specifically held that “litigants ... who never appeared in a
prior action[ ] may not be collaterally estopped without
litigating the issue.... Due process prohibits estopping them
despite one or more existing adjudications of the identical
issue which stand squarely against their position.”
Blonder–Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S.
313, 329 (1971) …
83 USPQ2d at 1840. Nothing in the Supreme Court’s B&B Hardware decision casts
doubt on the Federal Circuit’s holding.
We have carefully reviewed and considered the District Court’s judgment in
MIL v. Chrysler. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 116 USPQ2d
1137, 1142 (Fed. Cir. 2015). As we have noted above, however, the questions raised
in MIL v. Chrysler and in this appeal from a refusal of registration are different, at
Serial No. 85650654

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least in part, and require, to some extent, different analyses that could result in
different determinations. As the Supreme Court said of the trademark registration
process as compared to infringement litigation, “it is a separate proceeding to decide
separate rights.” B&B Hardware, 113 USPQ2d at 2053.21
Bearing all of this in mind, we now turn to the refusal of registration under
Section 2(d).
2. Refusal under Section 2(d).
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the issue of likelihood of confusion. In
re E.I. du Pont de Nemours & Co., 177 USPQ at 567. Although the “du Pont factors”
may not explicitly include all of the “Sleekcraft factors” considered by the District
Court in MIL v. Chrysler, we may consider the Sleekcraft factors nonetheless because
a proper du Pont analysis must consider “[a]ny other established fact probative of the
effect of use” (i.e., the “thirteenth” du Pont factor). We have considered all Sleekcraft
and du Pont factors for which there is evidence of record.

21 In her concurring opinion, Justice Ginsburg underscored that issue preclusion would not
apply “for a great many registration decisions.” B&B Hardware, 113 USPQ2d at 2056.
Serial No. 85650654

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(a) The goods and services.
We will first consider the similarity or dissimilarity of the goods and services
as identified in the application and the cited registration. Stone Lion, 110 USPQ2d
at 1161-62; Octocom, 16 USPQ2d at 1787. They are:
Motor vehicles, namely, passenger automobiles, their
structural parts, trim and badges.
Automotive conversion services, namely, installing
specialty automotive equipment.
We must presume that Applicant’s goods include all goods of the type identified, i.e.,
all “passenger automobiles [and] their structural parts,” as well as all kinds of
automotive “trim and badges.” For the same reason, we consider Registrant’s services
to include installation of all kinds of specialty automotive equipment, and not merely
equipment to enhance off-road capability.
Likelihood of confusion may arise with respect to goods and services if they
“are related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012). Registrant’s service involves installing
equipment on automobiles. The “specialty automotive equipment” mentioned in
Registrant’s identification is broad enough to encompass “structural parts” of the
types identified in Applicant’s identification. Moreover, the evidence reveals that
several automotive conversion businesses not only provide conversion services but
also sell parts and kits to allow customers to upfit their own vehicles:
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[I]f you’d like to convert your gas-powered rig to diesel
power, there are actually a surprising number of
companies that specialize in these conversions. Some offer
problem solving parts and kits, others offer complete in-
house conversions, and a few offer the whole enchilada
with parts, kits, and the option of a complete in-house
conversion.22
The article specifically identifies the following businesses that perform conversions
and sell structural parts:
Bruiser Conversions: “If you wish to complete the conversion, the company
offers components to install a 4BT into your CJ, YJ,
or TJ.”23

HPA Motorsports “… you can either purchase one of HPA Motorsports
do-it-yourself kits or you can let the company
complete the conversion in-house. … Stage 2 [kit] …
[adds] the engineered air-to-water intercooling
system, a performance ECU tune that has
reconfigured the injection around the ultra-efficient
boost track, a bracket for the gas pedal filment [sic],
and key coolant line fittings to better facilitate the
Volkswagen cooling system.24

Diesel Toys “Kits include … four-speed automatic or five-speed
manual transmission; and a Diesel Toys installer kit
that includes installation DVD, badges, CNC-
machined motor mounts, fuel system bracket/line
kit, fan shroud, and proprietary plug-n-play wiring
harness.”25

Diesel Conversion Specialists “… you can either send the truck to Diesel
Conversion Specialists and have them fit it for you
or you can purchase the conversion parts and do it
yourself. The company offers engine mounting kits

22 “14 companies that specialize in diesel conversions,” , Office Action of
February 21, 2017 at 46.
23 Id.
24 Id. at 47.
25 Id. at 50.
Serial No. 85650654

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to fit a 12- or 14-valve Cummins turbodiesel engine
… Diesel Conversion Specialists also offers … a wide
range of parts and accessories including a number of
transmission adapter plates.”26

H-Line Conversions “H-Line can provide you with a do-it-yourself kit or
the company can do the swap for you.”27

See also the following reference to an automotive conversion business that
manufactures its own structural parts (emphasis added):
Moab Motorsports is a full service offroad fabrication and
repair shop. We offer custom fabrication including tube
bending … and ring and pinion/locker installations just to
name a few of our capabilities. … We also stock custom
tube chassis which are manufactured completely in
house.28
Registrant’s web site includes a customer testimonial recounting Registrant’s offer to
“mail the stabilizers directly to the dealership”29 for installation, indicating that
Registrant is perceived as a source of structural parts.
The record also shows that customers would expect an authorized automobile
dealer, like Applicant’s dealers, to also sell and install specialty automotive
equipment. Applicant’s advertising of optional equipment for its vehicles states “Jeep
Accessories by Mopar offer the opportunity to enhance and personalize your Jeep
Wrangler. They are available for purchase and installation at your Jeep dealer.”30 See
also Applicant’s listing of “Standard and Optional Features” for its new

26 Id. at 52.
27 Id. at 53-54.
28 Response of December 23, 2016 at 64.
29 Id. at 228.
30 Id. at 47 (emphasis added).
Serial No. 85650654

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automobiles.31 While structural parts installed by a dealer would likely be “original
equipment manufacturer” (“OEM”) parts, the record shows that independent
automotive service providers are also able to install OEM parts:
You can request OEM parts from your local mechanic, but
it may take longer to get your vehicle repaired since the
parts must be ordered.32
*****
Following is a list of companies that can help you complete
a diesel conversion. … Some of the engine swaps are
mainstream, while others use the less prevalent Toyota,
Mercedes-Benz, and Volkswagen diesel engines.33
…
Diesel Toys also offers diesel conversions for the Jeep TJ
(using a Toyota turbodiesel) and the Jeep JK (using a VM
Motori turbodiesel).34
…
Eco-Offroad can do an in-house diesel conversion on your
Toyota FJ-45 pickup, FJ-40 Land Cruiser, Land Rover
Series II, IIA, or III, or Land Rover Defender. Depending
on your vehicle and needs, the company fits the Cummins
3.3L or 3.9L 4BT, 2.8L IH, Mercedes OM617, or Isuzu
turbodiesel engines.35
This evidence shows that customers may expect automotive structural parts (like
those Applicant offers) and automotive conversion services (like those Registrant

31 Id. at 56; see also id. at 51 (“Standard Features … Available Options”).
32 “Aftermarket Versus Manufacturer Car Parts,” , Office Action of April 2,
2013 at 15-18.
33 “14 Companies that Specialize in Diesel Conversions,” , Office Action of
February 21, 2017 at 45, 46.
34 Id. at 50.
35 Id. at 54.
Serial No. 85650654

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provides) to emanate from the same source. It also shows that customers would expect
that sellers of new automobiles, like Applicant, would also provide installation of
specialty automotive equipment, as Registrant does. Moreover, it shows that OEM
structural parts, like those falling within Applicant’s identification of goods, may be
obtained through an independent installer, like Registrant. The relationship between
the goods and services favors a finding of likelihood of confusion.
(b) Trade channels.
We next consider the established and likely to continue trade channels. As
there are no limitations as to channels of trade in the identifications of goods and
services in the registration and application, we presume that the goods and services
move in all channels of trade that are normal for such goods and services. See
Octocom, 16 USPQ2d at 1787; Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d
901, 177 USPQ 76 (CCPA 1973); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992).
Obviously, businesses that install automotive equipment are channels of trade
through which structural parts of automobiles travel. Indeed, the record reveals that
conversion shops sometimes install OEM equipment originating from automobile
manufacturing companies like Toyota, Mercedes-Benz, Volkswagen and Isuzu.
Registrant’s website offers to install “the best suspension parts from different
companies”36 and includes testimonials that refer to repair of a “track bar bracket,”

36 Applicant’s response of December 23, 2016 at 230.
Serial No. 85650654

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stabilizers, gears, pitman arm, wheels, tires, “Spider gears,” and “Long Arms.”37
Moab Motorsports’ website offers “custom tube chassis.”38 Applicant’s advertisements
indicate that structural parts include “heavy duty rear axle,” “rock rails ... to help
protect your rocker panels and lower bodysides,” “Kevlar tires,” “taillamp guards,”
“custom bumpers,”39 and shock absorbers, brakes, wheels, and many other parts.40
In MIL v. Chrysler, the District Court found as follows with respect to
marketing channels:
40. The parties’ uncontested facts … reflect that the
parties’ marketing channels are very different. [Applicant]
sells “off the assembly line” new vehicles through its
authorized dealers. [Registrant] purchases new vehicles
from [Applicant’s] dealers, upfits them, and resells them
through auction and licensed resale dealers, in some
instances the used car lots of defendant’s authorized
dealers. This factor suggests little likelihood of confusion.41
The Court addressed the trade channels for Applicant’s finished automobiles and
Registrant’s upfitted automobiles. This case is different, however, as we must also
consider the “structural parts” identified in Applicant’s application. Although there
may be little or no overlap between the trade channels for finished automobiles and
automotive conversion services, we find that Registrant’s service is, itself, a trade

37 Id. at 227-28.
38 Id. at 64. An automotive “chassis” is the frame upon which the automobile’s body is
mounted. See WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY 379 (1993).
39 Applicant’s response of December 23, 2016 at 217-18.
40 Id. at 56.
41 Decision ¶ 40, Applicant’s response of December 23, 2016 at 279-80.
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channel for automotive structural parts like those of Applicant, and this circumstance
also weighs in favor of a finding of likelihood of confusion.
(c) Customers; conditions of sale.
Under du Pont, we consider the customers to whom and the conditions under
which sales are made. Applicant faults the Examining Attorney for ignoring this
element of the du Pont analysis, arguing:
“An automobile is a major purchase, and one in which a
reasonably prudent purchaser would invest a great deal of
care and attention, rendering confusion less likely.”
[Citation omitted.] Furthermore, “it is clear that
automobiles are expensive and would only be purchased
after careful consideration, thereby reducing the risk of
confusion.” [Citation omitted.]
Moreover, [Registrant’s] own description of services makes
clear that its services are also quite specialized and likely
to be purchased after careful consideration by consumers.
…
The District Court recognized that the parties’ respective
offerings are not impulse purchases. Instead, the Court
held that consumers are likely to engage in careful
consideration and investigation prior to making a
purchase, because they seek to use both Applicant’s
vehicles and vehicles converted by [Registrant] for difficult
and extreme circumstances.42
Applicant’s argument does not take into account that its identified goods are not
limited to automobiles, but also include “structural parts, trim and badges”; nor is
the identification of “automobiles” limited to expensive automobiles for use under
“difficult or extreme” conditions. Applicant seeks registration of its mark for all
“passenger automobiles,” which we must interpret to include the smallest and least

42 Applicant’s brief at 8-9, 12 TTABVUE 13-14.
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expensive subcompacts as well as expensive vehicles for specialized uses. Of course,
any automobile is likely to be considered a substantial purchase for most customers
and such a purchase would not be made on impulse. However, with respect to
customer sophistication, we must consider a broader class of purchasers than the
District Court did, because Applicant has not tailored its application to conform to
the issues addressed by the District Court. In addition, Board precedent requires our
decision to be based on the least sophisticated potential purchasers. Stone Lion, 110
USPQ2d at 1163. Offroad enthusiasts may be sophisticated customers; but many
customers for “passenger automobiles” are merely interested in obtaining a reliable
mode of transportation and have little understanding of how the car works or the
limits of its performance. They would exercise an elevated degree of care in selecting
an automobile, but they would not have the sophistication of an automotive
enthusiast. They would bring less care to the selection of a part or trim for their cars,
as these would be less costly purchases.
We agree that customers for “automotive conversion services” would be likely
to have the sophistication of an automotive enthusiast. The only evidence of record
that illustrates what “conversion” means indicates that it involves substantial
rebuilding of a vehicle, either substituting a diesel engine for a gasoline engine, or
upfitting the vehicle for off-road use as in the case of Registrant’s actual services.
Applicant also relies on its expert, Dr. Ravi Dhar, as to the care and sophistication
of customers and the relevant purchasing context. Dr. Dhar explained:
49. … Broadly speaking, the manner in which consumers
process information in the marketplace, including arriving
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at any inference of source, will vary across the product
categories (e.g., toothbrush versus automobiles).
Specifically, two broad sets of factors that relate to the
motivational and cognitive systems determine the degree
of care exercised in processing available information by
potential consumers. The cognitive system refers to the
ability of consumers to process the amount and type of
information that may be available at the point of purchase
and motivational system refers to the willingness of
consumers to process the types of information that are
available. While the motivation and ability to process
information vary across product categories and purchase
contexts, it is my opinion that they are both likely to be
very high in the purchasing context of Jeep brand vehicles
for the reasons that are discussed next.
50. The motivation to process available information
depends on the degree of personal involvement that a
consumer has with the product. Generally speaking,
consumer involvement in a purchase decision depends not
only on the price of a product (i.e., higher priced products
usually result in higher involvement or exercising greater
care) but also on the perceived personal relevance of the
product (i.e., products that are seen as being more relevant
to oneself result in higher involvement). An automobile
purchase is very expensive compared to most purchases,
and other factors also suggest that the product relevance is
likely to be very high, as many consumers associate the
purchase of SUV/trucks with personal interest. In
summary, the higher involvement in the purchase decision
will lead to consumers exercising a very high degree of care
in gathering information on the purchase including that of
source of the goods purchased. Further, there is almost
always a sales person readily available in the automotive
vehicle purchase context to address any questions with
regards to source or affiliation prior to purchase. This
means that consumers who exercise even a modest level of
care during the purchase process can easily obtain
information about the source of the product, rather than
relying on the word “Moab” on the Jeep brand vehicles.43

43 Report of Dr. Ravi Dhar ¶¶ 49-50, Applicant’s response of December 23, 2016 at 314-15.
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Dr. Dhar prepared his report in connection with the District Court case and as a
result it was limited in a number of ways that reduce its relevance here. First, it
addressed the likelihood of confusion caused by the “MOAB mark used in connection
with [Applicant’s] Jeep brand.”44 Second, his conclusions regarding customers were
based on a substantially more limited universe than the one we must consider in
connection with the involved application. Dr. Dhar looked only at customers meeting
the following requirements (among others):
c. They must be considering purchasing/leasing a
Crossover or Compact SUV (Sport Utility Vehicle) or Large
SUV (Sport Utility Vehicle) or Pick-Up Truck within the
next 3 years for personal use.
d. They must require that the Crossover or Compact SUV
(Sport Utility Vehicle) or Large SUV (Sport Utility Vehicle)
or Pick-Up Truck that he/she is considering
purchasing/leasing within the next 3 years for personal use
be capable of off-road driving.45
The application’s identification of goods is not limited to larger vehicles capable of off-
road driving. Accordingly, the purchasers that we must consider are different and
have different characteristics than automotive enthusiasts. We have no evidence that
a compact car buyer has the same type or degree of “personal involvement” with a car
utilized for commuting or similar purposes, as compared to that an off-roading
enthusiast would have; nor would the price of such a purchase be as great as the price
of a “Crossover” or SUV capable of off-road driving. Accordingly, Dr. Dhar’s remarks
regarding customer care and sophistication skew too far in the direction of great care

44 Dhar Report ¶ 14, id. at 302.
45 Dhar Report ¶ 25, id. at 305-6.
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and great sophistication. Moreover, he did not consider the care and sophistication
that would come into play in connection with the purchase of structural parts, trim
or badges, rather than a complete car.
Overall, the facts relevant to this du Pont factor are mixed. Registrant’s
customers would be careful and sophisticated automotive enthusiasts. Applicant’s
customers would include ordinary drivers with no particular automotive
sophistication or enthusiasm. They would likely exercise care in purchasing
Applicant’s cars, with high attention to the source of the goods, but less care (although
still elevated care) in purchasing replacement parts or trim.
(d) The marks.
Next we consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of
the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1721.
Applicant’s mark is MOAB and the mark in the cited registration is MOAB
INDUSTRIES. The marks are similar in appearance, sound and meaning inasmuch
as each includes the term MOAB. The additional term INDUSTRIES in Registrant’s
mark is a point of difference in appearance, sound, and meaning. However,
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INDUSTRIES is merely descriptive with respect to a wide range of commercial
enterprises, including the manufacture of automobiles and the installation of
automotive equipment.46 Customers are not likely to view the term INDUSTRIES as
an indicator of source. Rather, they would look primarily to MOAB, in both marks, as
the source indicator. Although we have considered each mark in its entirety, there is
nothing improper in our finding that MOAB is dominant because our ultimate
conclusion rests upon a comparison of the marks in their entireties. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Overall, we find that the marks create similar commercial impressions. This
du Pont factor weighs in favor of a finding of likelihood of confusion.
(e) Strength of the term MOAB; similar marks in use.
We consider Registrant’s mark’s inherent strength based on the nature of the
term itself and its commercial strength based on use in the marketplace. See In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). The
Federal Circuit has held that evidence of the extensive registration and use of a term
by others can be powerful evidence of the term’s weakness. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Evidence of third-party use may reflect
commercial weakness, while third-party registration evidence, which does not prove

46 See definition of “industry” as “Commercial production and sale of goods,” “A specific branch
of manufacture and trade,” and “any general business activity.” Definitions from
, Office Action of April 2, 2013 at 10-11.
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third-party use, may bear on conceptual weakness if a term is commonly registered
for similar goods or services. See Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917
(CCPA 1976).
Applicant argues that MOAB is conceptually and commercially weak. The
record shows that MOAB is the name of a geographic location in Utah, known for its
backcountry trails which are a popular destination for 4-wheel drive enthusiasts.47
To the extent that Applicant’s automobiles include vehicles capable of off-road driving
and Registrant’s services involve upfitting vehicles for off-road use, MOAB is
suggestive of the purpose of the goods and services, rendering the term somewhat
weak conceptually.48 Applicant has also made of record two third-party registrations,
as follows:49
Reg. No. 4072245 MOAB TAXI “Taxi transport.”
Reg. No. 1866329 MOAB “Bicycles.”
Another third-party registration, No. 4078497 for the mark MOAB STAR (and
design) for headlights, other lights for vehicles, brake pads, skid plates, and other
automotive accessories, was cancelled in 2013.50 These registrations do little to prove

47 Applicant’s response of March 4, 2013 at 34-46; Applicant’s response of December 23, 2016
at 68-79.
48 The District Court too observed: “The Court finds that the Moab mark, which both
[Registrant and Applicant] affix to JEEP WRANGLER vehicles, is relatively weak, lying for
purposes of this case somewhere between suggestive and arbitrary.” Decision ¶ 33.
49 Response of March 4, 2013 at 28-33.
50 Applicant’s response of December 23, 2016 at 23.
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the conceptual weakness of MOAB, because only one relates to the field of automotive
goods or services.
To demonstrate the commercial weakness of the term MOAB, Applicant has
submitted short excerpts of web sites advertising the following businesses:
M40 MOAB 4X4 OUTPOST referring to “customer vehicles we’ve had the
privilege of working on.”51

MOAB MOTORSPORTS “a full service offroad fabrication and repair
shop located in Moab, UT.”52
MOAB OFFROAD
in Lexington, KY. referring to “Specializing in 4x4 for over 10
years!”; “Moab’s Retro YJ Built”; and “You
Told Us the Ultimate Jeep and Now We Are
Building It.”53

Applicant also points to ¶¶ 21-22 of the District Court decision as evidence that
automotive conversion businesses exist under the names “Moab Offroad” in
Lexington, KY and “Moab 4x4 Outpost” in Moab, Utah, and that other MOAB marks
exist in the fields of stores featuring clothing, camping gear, and sporting goods;
juices and fruit drinks; cutlery; eyewear for sports; computer tools; and anger
management training. However, with the exception of the two automotive conversion
marks, we would consider these third-party uses to be of minimal probative weight
in demonstrating the weakness of MOAB in the automotive field. Applicant points
out that in the District Court case Registrant produced no evidence of the commercial

51 Id. at 60-61.
52 Id. at 62-66.
53 Id. at 59.
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strength of its mark.54 On the other hand, here Applicant has introduced only a few
examples of third-party use, other than those discussed in MIL v. Chrysler.
There is a degree of inherent weakness in the term MOAB, but the weakness
relates only to a subset of the goods and services at issue: i.e., automobiles for off-road
driving and conversion services for upfitting cars to make them suitable for off-road
use. We doubt that the suggestiveness of MOAB would be appreciated in the context
of other types of cars (e.g., small hybrids or light-weight electric automobiles) or other
types of vehicle conversion. Therefore, we find that, while the inherent weakness of
MOAB diminishes the likelihood of confusion, the degree to which it is diminished is
minor.
(f) Absence of actual confusion.
Applicant argues in its brief that a lack of substantial evidence of actual
confusion weighs against a finding of likelihood of confusion.55 Generally, in an ex
parte proceeding a lack of evidence of actual confusion carries little weight, because
the cited registrant is not a party to the proceeding and the typical contentions of the
applicant’s witnesses, to the effect that they are not aware of any instances of actual
confusion, tell only one side of the story and are often uncorroborated. See In re
Majestic Distilling Co., 315 F.3d.1311, 65 USDPQ2d 1201, 1205 (“we agree with the
Board that Majestic's uncorroborated statements of no known instances of actual

54 See also Decision ¶ 33 (“Plaintiff has produced no evidence of the commercial strength of
the MOAB mark as used by plaintiff. Defendant has produced no evidence of the commercial
strength of the MOAB mark as used by defendant, and defendant no longer uses the MOAB
mark on its vehicles.”).
55 Applicant’s brief at 7-8, 12 TTABVUE 12-13.
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confusion are of little evidentiary value. [Citation omitted.] A showing of actual
confusion would of course be highly probative, if not conclusive, of a high likelihood
of confusion. The opposite is not true, however. The lack of evidence of actual
confusion carries little weight, [citation omitted], especially in an ex parte context.”).
In the present case, we have an unusual situation: in MIL v. Chrysler,
Applicant and Registrant squarely confronted each other and Registrant offered “live
and deposition testimony” of seven witnesses who professed to have suffered
confusion. Applicant’s expert Dr. Dhar also testified, providing his analysis of the
testimony of four of the confusion witnesses. The Court, in its Decision, discussed the
testimony of the confusion witnesses, finding that it constituted “no substantial
evidence of confusion on the part of customers for [Registrant’s] MOAB vehicles.”56
Applicant has not entered into our record the testimony of the confusion witnesses;
accordingly, we have only evidence showing that Registrant was not able to persuade
the District Court that confusion had occurred. Registrant’s failure has limited
relevance to our analysis, because Registrant attempted to demonstrate actual
confusion caused by Applicant’s use of MOAB on vehicles that were also branded
JEEP and WRANGLER. Here we are concerned only with the likelihood of confusion
between the marks MOAB and MOAB INDUSTRIES.
Applicant has also made of record Dr. Dhar’s expert report, based upon the
results of a survey that he conducted.57 Dr. Dhar found:

56 Decision ¶¶ 36-39, Applicant’s response of December 23, 2016 at 277-280.
57 Although Applicant’s brief seems to suggest that Dr. Dhar’s survey was before the District
Court in MIL v. Chrysler, the Court’s decision indicates otherwise: “Dr. Dhar did not perform
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After controlling for noise, my survey shows that the net
level of confusion between the MOAB INDUSTRIES word
mark and Chrysler Group’s MOAB mark used in
connection with the Jeep brand is 2.33%. Stated another
way, I find that the level of confusion between the MOAB
INDUSTRIES word mark and Chrysler Group’s MOAB
mark used in connection with the Jeep brand is de minimis
when tested in realistic marketplace conditions.58
After careful consideration, we find that, for numerous reasons, the survey upon
which Dr. Dhar based his opinion does not provide reliable guidance for our purpose.
As we noted above in our discussion of customer care and sophistication, Dr. Dhar’s
survey did not consider the entire universe of customers for automobiles, trim and
structural parts; rather he limited his survey to customers for vehicles capable of off-
road driving, a universe of customers that is much more limited than the one that
concerns us in this case. For this reason alone, the Dhar survey is of limited probative
value here.
In determining registrability, we must consider the mark that Applicant
actually seeks to register. The Dhar survey, however, did not test the public’s reaction
to that mark, MOAB, but instead to the “MOAB mark used in connection with the
Jeep brand.” Dr. Dhar described the purpose of the survey as follows:
Specifically, I was asked to conduct a consumer survey to
provide an expert opinion concerning whether or not
relevant consumers are confused as to source, affiliation,
sponsorship or approval regarding the Jeep brand’s use of

nor did [Registrant] undertake any survey evidence addressing the subject of customer
confusion.” Decision ¶ 38.
58 Dhar Report ¶ 14, Applicant’s response of December 23, 2016 at 302.
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the MOAB mark on the 2013 Jeep Wrangler Moab Edition
vehicle.59
Applicant does not now seek to register the mark JEEP MOAB or the mark MOAB
as “used in connection with the JEEP brand.” The mark at issue is MOAB.
Considering Applicant’s contention that JEEP is a famous mark,60 the display of the
mark MOAB in association with or in close proximity to the JEEP mark would create
a very different commercial impression than MOAB alone. In the Dhar survey,
subjects were shown the following stimulus:61

59 Dhar Report ¶ 10, id. at 300.
60 See ¶ 15 of Applicant’s Counterclaim in MIL v. Chrysler, Applicant’s response of December
23, 2016 at 92.
61 Dhar Report at E-17, Applicant’s response of December 23, 2016 at 358.
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Survey subjects would very likely be influenced by the above display to perceive the
MOAB product as originating from the same source as JEEP products.
Another aspect of the Dhar survey that raises doubt is that it was designed to
test forward confusion, rather than reverse confusion. “My survey was designed to
assess the likelihood that ordinary purchasers of certain vehicles would, upon
encountering the Jeep Wrangler Moab Edition vehicle in the marketplace, believe
that the Jeep Wrangler Moab Edition is associated with or sponsored or approved by
Moab Industries.”62 The assumption that this was the type of confusion most likely
to arise is counterintuitive, considering the fame of the JEEP brand (as well as the
WRANGLER brand, another mark that Applicant characterizes as famous), with
which the MOAB brand would be associated in the survey. Indeed, in MIL v. Chrysler,
Registrant asserted a claim of reverse confusion.63 The District Court’s explanation
of the distinction is illuminating:
Forward confusion occurs when consumers believe that
goods bearing the junior mark [here defendant] came from,
or were sponsored by, the senior mark holder [here
plaintiff]. By contrast, reverse confusion occurs when
consumers dealing with the senior mark holder [here
plaintiff] believe that they are doing business with the
junior one [here defendant]. In such a case, the smaller
senior user, such as [plaintiff], seeks to protect its business
identity from being overwhelmed by a larger junior user
who has saturated the market with publicity.64

62 Dhar Report ¶ 11, id. at 300.
63 Decision Part B, preamble.
64 Id. (internal quotations omitted; citations omitted).
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The very modest size of Registrant’s operations (Registrant upfitted “53 vehicles in
2011, 70 in 2012, and 92 in 2013”)65 strongly suggests that, in a confrontation between
the goods and services of Applicant and Registrant in the marketplace, the more
likely type of confusion would be reverse confusion, i.e., a mistaken perception of the
commercially weaker brand emanating from the source of the commercially stronger
brand.
The Eveready format66 of the Dhar survey also gives rise to doubt. In an
Eveready survey, respondents are shown one party’s mark and are asked open-ended
questions about its source. Accordingly, any response indicating confusion with the
other party’s mark must result from the respondent’s unaided recollection of the other
mark. In the Dhar survey, respondents were shown the stimulus reproduced above,
in which the mark JEEP was prominently displayed in proximity to MOAB, and were
asked questions about the source of the pictured vehicle, including:
If you have an opinion, which company do you think makes
or puts out this vehicle?
What other products or services, if any, are offered by the
company that makes the vehicle in front of you?
If you have an opinion, does or doesn’t the company that
makes the vehicle in front of you have a business
connection or affiliation with another company? [3 optional
answers offered]

65 Id. ¶ 16.
66 See Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 188 USPQ 623, 640-43 (7th Cir.
1976). See also 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:174 (5th ed.);
Anheuser-Busch, LLC v. Innvopak Sys. Pty. Ltd., 115 USPQ2d 1816, 1828 (TTAB 2015).

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With which other company does the company that makes
the vehicle in front of you have a business connection or
affiliation?
If you have an opinion, did or didn’t the company that
makes the vehicle in front of you receive permission or
approval from another company to make the vehicle? [3
optional answers offered]
From which other company did the company that makes
the vehicle in front of you receive permission or approval?
The stimulus shown to subjects contains many strong suggestions of the source of the
MOAB brand: prominent display of the assertedly famous mark JEEP; repeated
references to the assertedly famous mark WRANGLER; and references to MOAB as
an “Edition” of JEEP and WRANGLER. Considering the modest scope of Registrant’s
operations, the likelihood that survey respondents would have knowledge of the
MOAB INDUSTRIES brand is small. We find that this survey does not fairly test
whether relevant customers, exposed to both marks, would experience confusion as
to source.
Overall, as the Dhar survey did not test the impact of the mark that Applicant
seeks to register; addressed an underinclusive universe of relevant customers; and
was ill-suited to test the type of confusion that is most likely to occur, we give little
weight to the survey’s results. We treat the absence of a showing of actual confusion
as a neutral factor.
(g) Balancing the factors.
The marks are similar. The common term MOAB is not inherently particularly
strong, because it is suggestive of the intended off-road driving purpose of some of the
goods and services; however, there is very little indication of commercial weakness.
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The goods (in particular, automotive structural parts) and services are related and
are of types that customers would expect to emanate from a single source. Although
the goods and services are not likely to be marketed through the same channels of
trade, Registrant’s service is a channel through which Applicant’s goods (in particular
structural parts) reach their ultimate customers: that is, Registrant would install
structural parts on customers’ automobiles and might also be the source through
which such structural parts are purchased. Applicant’s goods and Registrant’s
services are likely to be selected with an elevated degree of care, and the involvement
of salespersons at the point of sale would reduce the likelihood of confusion.
Balancing all of these factors, we find that Applicant’s mark, as intended to be
used on the identified goods, so resembles Registrant’s registered mark, as used in
connection with Registrant’s identified services, as to be likely to cause confusion.
Decision: The refusal under Section 2(d) is AFFIRMED.