General Motors Corp.

Trademark Trial and Appeal Board

Feb 8, 2008

No. 78729760 (T.T.A.B. Feb. 8, 2008)

Mailed: February 8, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re General Motors Corp.
________

Serial No. 78729760
_______

Karen A. Merkle for General Motors Corp.

Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______

Before Grendel, Rogers and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by General Motors Corp. to
register the mark shown below on the Principal Register for
“perfumes” in International Class 3 and “watches” in
International Class 14.1

1 Application Serial No. 78729760 was filed on October 10, 2005,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. In addition, applicant provided the
following description of the mark: The mark consists of a shield
with rectangle, star and stripes.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78729760
2

The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used on its goods, so resembles the
following marks, previously registered on the Principal
Register, as to be likely to cause confusion:

for “hair conditioner and hair shampoo” in International
Class 3;2

for “cosmetics, namely, skin lotions and creams” in
International Class 3;3

2 Registration No. 1140591 issued on October 21, 1980,
subsequently assigned to Roux Laboratories, Inc. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.

3 Registration No. 1854407 issued on September 20, 1994 to
Neoteric Cosmetics, Inc. Section 8 affidavit accepted; Section
15 affidavit acknowledged. Renewed.
Ser No. 78729760
3

for “watches; watch bands; watch straps; watch chains;
buckles plated with precious metal; imitation jewelry;
electric clocks and watches; wristwatches; watch cases; and
watch glasses” in International Class 14;4 and

for “watches and chronometers with crystals containing
artificial sapphire” in International Class 14.5 When the
refusals were made final, applicant appealed. Applicant
and the examining attorney have filed briefs on the issue
under appeal.
Applicant contends that its mark conveys a different
commercial impression from the marks in the cited

4 Registration No. 3027832 issued on December 13, 2005 to Ramesh
Holoram Ahuja and HK Watchbands Corp with the following
description of the mark: “The mark consists of a stylized ‘a’
positioned above the word ALFA.”

5 Registration No. 2915444 issued on January 4, 2005 to Jacques
Lemans GesmbH with a disclaimer of “saphir” and the following
translation: “The English translation of ‘Saphir’ is
‘Sapphire.’”

Ser No. 78729760
4
registrations. Applicant further contends that the term
“ALPHA” is weak and thus entitled to a narrow scope of
protection. Applicant also contends that the coexistence
of the two cited registrations in both classes “without any
known instances of actual confusion” (brief, p. 9)
demonstrates that consumers can distinguish between various
ALPHA marks as applied to these goods. With regard to the
marks cited against its application in International Class
3, applicant argues in addition that “each of the Class 3
Cited Marks, as used in the marketplace, are not used on
their own but rather are used in conjunction with other
words” (brief, p. 6); and that the goods in such cited
registrations are dissimilar from its Class 3 goods and are
marketed through different channels of trade. With regard
to the marks cited against its application in International
Class 14, applicant argues in addition that “based on the
price of a watch and the personal nature of a watch,
purchasers are apt to conduct extensive research, and
thoroughly shop and compare watches prior to making their
purchase decision, thereby minimizing the likelihood of
confusion over the source of one or more watches” (brief,
p. 16).
In support of its position, applicant has made of
record a printout from the United States Patent and
Ser No. 78729760
5
Trademark Office’s (USPTO’s) Trademark Electronic Search
System (TESS) of a list of the first 50 of a total of 1032
“ALPHA” formative marks. Applicant further has made of
record printouts from the Internet websites of the owners
of the above-noted Registration Nos. 1140591 and 1854407,
displaying the marks as used thereupon in connection with
the identified goods, as well as the website of a third
party displaying the mark ALPHA-CELL used in connection
with a skin product.
The examining attorney, in support of the refusal to
register, has made of record the following dictionary
definition of ALFA: another spelling of “ALPHA.”6 The
examining attorney further has made of record the following
definition of ALPHA:7
-n.
1. the first letter of the Greek alphabet;
2. the vowel sound represented by this letter;
3. the first, beginning;
4. (cap.) Astron. Used to designate the brightest star
in a constellation;
5. Chem. One of two or more isomeric compounds;
6. the first in a series of related items: frequently
used in chemistry and physics;
7. Chiefly Brit. A mark or grade corresponding to an
A. Cf. beta, gamma.
-adj.
1. (esp. of animals) having the highest rank of its
sex in a dominance hierarchy: the alpha female;

6 Encarta World English Dictionary [North American Edition],
(2005).

7 www.infoplease.com/dictionary/alpha
Ser No. 78729760
6
2. Chem. Pertaining or linked to the carbon atom
closest to a particular group in an organic
molecule.

In addition, the examining attorney made of record a
number of use-based, third-party registrations which show
that various entities have adopted a single mark for goods
in International Class 3 that are identified in both
applicant’s application and the cited registrations. See,
for example:
Registration No. 2950244 for, inter alia,
“perfume, hair shampoo, hair conditioners;

Registration No. 3045920 for, inter alia,
“perfume, hair shampoo, hair conditioner;

Registration No. 3004519 for, inter alia,
“perfume, hair shampoo, hair conditioner;

Registration No. 3121361 for, inter alia,
“perfume, skin lotion;

Registration No. 2903891 for, inter alia,
“perfume, skin lotion; and

Registration No. 2946847 for, inter alia,
“perfume, skin cream, skin lotion.

Evidentiary Matters
We first address an evidentiary point. As noted
above, with its request for reconsideration applicant
submitted a listing of 50 marks taken from the USPTO’s TESS
database for marks containing the word “ALPHA.” This
listing is insufficient to make the applications and
registrations of record. See In re Ruffin Gaming LLC, 66
Ser No. 78729760
7
USPQ2d 1924, 1925 n.3 (TTAB 2002). We note in addition
that the examining attorney advised applicant of the
insufficiency in his Office action denying the request for
reconsideration. Accordingly, this list has not been
considered. We also point out that, even if we were to
consider the list, it has no probative value since it does
not show the goods or services for which the marks were
registered. In that regard, it appears from the wording in
the marks themselves that many are for goods or services
that have no relation to the goods at issue herein, e.g.,
ALPHA SEARCH ADVISORY PARTNERS; DYNAMIC ALPHA STOCK
SELECTION MODEL; ALPHASTAFF; and A ALPHA DRIVING ACADEMY.
In addition, almost all of the listed marks are for
applications, rather than registrations. Third-party
applications have no evidentiary value other than to show
that they were filed. See In re Juleigh Jeans Sportswear
Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).
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 also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Ser No. 78729760
8
Cir. 2003). In any likelihood of confusion analysis,
however, 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). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997). We will separately consider the
refusals to register with regard to each of the
registrations cited against the applied-for mark in each
class of goods identified in the application.
Registration Nos. 1140591 and 1854407
The marks in Registration Nos. 1140591 and 1854407
were cited by the examining attorney as bars to
registration of the mark in the application at issue as to
the goods identified therein as “perfumes” in International
Class 3. Turning first to our consideration of the
similarity or dissimilarity of the recited goods, it is
clear that applicant’s “perfumes” differ from registrants’
respective “hair conditioner and hair shampoo” and
“cosmetics, namely skin lotions and creams.” However, it
is not necessary that the goods at issue be identical or
even directly competitive to support a finding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
Ser No. 78729760
9
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, and as noted above, the examining
attorney has made of record a number of use-based, third-
party registrations showing that various entities utilize a
single mark to identify the goods of both applicant and
registrants. That is to say, the same marks are used by
these entities to identify “perfumes” on the one hand, and
“hair conditioner and hair shampoo” and/or “skin lotions
and creams” on the other. Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
We are not persuaded by applicant’s arguments and
extrinsic evidence that the “unique and distinct nature” of
registrants’ goods are such that they are highly
specialized and directed toward specific consumers. The
Ser No. 78729760
10
question of likelihood of confusion must be determined
based on an analysis of the goods or services recited in
applicant’s application vis-à-vis the goods or services
recited in the registrations, rather than what the evidence
shows the goods or services actually may be. See Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Thus, as identified, registrants’ goods must be presumed to
respectively include all manner of hair shampoos and
conditioners, and all manner of skin lotions and creams,
and to be suitable for use by any normal purchasers of such
goods.
Nor are we persuaded that “purchasers of expensive
scents are likely to devote a high degree of care to their
selection and be extremely discriminating in such purchase”
(brief, p. 14). First, there are no limitations recited as
to the type of perfumes offered by applicant. Accordingly,
they are presumed to include both expensive and inexpensive
varieties that may be purchased without a great deal of
care. Second, even assuming arguendo that purchases of
applicant’s or registrants’ goods would involve a
Ser No. 78729760
11
deliberate decision, this does not mean that the purchasers
are immune from confusion as to the origin of the
respective goods, especially when the similarity of the
marks and goods outweigh any sophisticated purchasing
decision. See HRL Associates, Inc. v. Weiss Associates,
Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates,
Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990) [similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods]. See also In re Research Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) [“Human memories
even of discriminating purchasers...are not infallible.”].
Thus, applicant’s attempts to distinguish its goods
from those of the registrants by articulating limitations
on such goods and their trade channels that are not present
in the identifications thereof are unavailing because our
analysis is constrained to a comparison of the goods
recited in the cited registrations with those in the
application. In re Elbaum, 211 USPQ 639 (TTAB 1981).
We next turn to a comparison of the marks. In coming
to our determination, we must compare the marks in their
entireties as to appearance, sound, connotation and
Ser No. 78729760
12
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). The test 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 their entireties that confusion as to the source
of the goods offered under the respective marks is likely
to result.
Applicant’s mark

Mark in Reg. No. 1140591

Mark in Reg. No. 1854407

In comparing the marks, we find that the word portion
of applicant’s mark, namely, “ALPHA,” is identical to the
marks in the cited registrations in sound, and highly
similar in appearance in that the word portion of
applicant’s mark is the same as the cited marks. In so
finding, we note that the marks cited against applicant in
International Class 3 both are presented in distinctive,
stylized forms. We find, nonetheless, that the similarity
in appearance resulting from the presence of the identical
Ser No. 78729760
13
wording in the marks outweighs the dissimilarity resulting
from the manner in which they are stylized. In terms of
connotation, we find that the connotations of the marks are
nearly identical inasmuch as the term “ALPHA” has the same
meaning in both applicant’s mark and registrants’ marks.
In addition, we find that the design element in applicant’s
mark is insufficient to distinguish it from registrants’
marks. If a mark comprises both a word and a design, then
the word is normally accorded greater weight because it
would be used by purchasers to request the goods or
services. See In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). For this reason, we consider the word
portion, i.e., “ALPHA,” to be the dominant feature of
applicant’s mark.
We further find that, on the facts before us, and in
the absence of any probative evidence to the contrary,
ALPHA is a strong mark as applied to the goods in question,
and as such is entitled to a broad scope of protection.8 We

8 Applicant’s reliance upon Alpha Industries, Inc. v. Alpha Steel
Tube & Shapes, Inc., 205 USPQ 981 (9th Cir. 1980) is noted. In
that case, involving trademark and trade name infringement,
unfair competition, and false designation of origin with regard
to goods unrelated to those at issue herein, the 9th Circuit Court
held the District Court’s finding that “ALPHA” was a weak mark to
be not clearly erroneous. However, that case does not stand for
the general proposition that “ALPHA” per se is a weak mark. In
any event, we are not privy to the facts and evidence leading to
the District Court’s determination in that case.

Ser No. 78729760
14
note in that regard that even if ALPHA were found to be a
relatively weak mark, it would still be entitled to
protection against registration of a highly similar mark
for related goods. Nor are we persuaded by applicant’s
argument that we must look to the product packaging or
other extrinsic evidence of the manner in which the cited
marks are used “in the marketplace” to determine the
similarities between the marks. Rather, for purposes of
our Section 2(d) analysis, we must compare the marks as
they appear in the cited registrations and application.
Thus, based upon a comparison of the marks in their
entireties, we find that applicant’s mark is highly similar
to registrants’ marks in appearance, sound and connotation,
and that the marks convey highly similar commercial
impressions.
Finally, applicant argues that there is no evidence of
any actual confusion between the two cited marks and that
the co-existence of these marks mitigates against a finding
of likelihood of confusion with its applied-for mark. We
do not accord significant weight to applicant’s contention,
unsupported by any evidence, that there have been no
instances of actual confusion despite contemporaneous use
of the registrants’ respective marks. We hasten to add
that the owners of the cited registrations are not parties
Ser No. 78729760
15
to this ex parte proceeding, and as a result there is no
evidence of record regarding any actual confusion between
the marks presented therein, or whether an opportunity for
such confusion has ever occurred.
Registration Nos. 2915444 and 3027832
The marks in Registration Nos. 2915444 and 3027832
were cited by the examining attorney as bars to
registration of the mark in the application at issue as to
the goods identified therein as “watches” in International
Class 14. Turning first to our consideration of the
similarity or dissimilarity of the recited goods, we find
that “watches” are fully encompassed within the goods
identified in Registration No. 3027832, which include
“watches; watch bands, watch straps; watch chains; electric
clocks and watches; wristwatches.” In addition,
applicant’s goods encompass in part the goods recited in
Registration No. 2915444, namely, “watches…with crystals
containing artificial sapphire.”
Because the goods are identical and/or closely related
and there are no restrictions as to their channels of trade
or classes of purchasers, we must assume that the goods
are, or will be, sold in all the normal channels of trade
to all the usual purchasers for such goods, and that the
channels of trade and the purchasers for applicant’s and
Ser No. 78729760
16
registrants’ goods would be the same. See Interstate
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000). It is clear that if these identical and closely
related goods were offered under similar marks there would
be a likelihood of confusion.
Thus, we turn to the marks, keeping in mind that when
marks would appear on identical goods, as they do here, the
degree of similarity between the marks necessary to support
a finding of likely confusion declines. See Century 21
Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992).
Applicant’s mark
Mark in Registration No. 2915444
Mark in Registration No. 3027832
Here, too, in comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Again, 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
Ser No. 78729760
17
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods or services 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 Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant’s involved mark consists of the term ALPHA
in a block outline superimposed over the design of a shield
containing a star and vertical stripes. The wording ALPHA
in applicant’s mark is encompassed by the wording ALPHA
SAPHIR in the mark in Registration No. 2915444. As a
result, the marks are highly similar in sound and
appearance. We note that likelihood of confusion is often
found where the entirety of one mark is incorporated within
another. In re Denisi, 225 USPQ 624, 626 (TTAB
1985)(PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB
Ser No. 78729760
18
1983)(LIL’ LADY BUGGY for toy doll carriages and LITTLE
LADY for doll clothing).
Furthermore, we note that ALPHA, the word which the
marks share in common, and the only distinctive word
element in the mark in the cited Registration No. 2915444,
is also the first word in the marks. Presto Products, Inc.
v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)(“…[it is] a matter of some importance since it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.”).
The descriptive, disclaimed term SAHPIR in the mark in
Registration No. 2915444 does little to create a different
commercial impression from applicant’s mark. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1692 (“The presence of this strong
distinctive term as the first word in both parties’ marks
renders the marks similar, especially in light of the
largely laudatory (and hence non-source identifying)
significance of ROYALE.”).
We similarly find that the relatively minor design
elements in applicant’s mark and the mark in Registration
No. 2915444 should be accorded comparatively less weight in
our comparison thereof because the word portions of the
marks are more likely to be remembered and used by
Ser No. 78729760
19
purchasers to identify the goods. See In re Appetito
Provisions Co., supra. As such, the marks when taken as a
whole are highly similar in connotation and convey similar
overall commercial impressions.
Turning to the mark in Registration No. 3027832, we
find that the wording ALFA in the cited mark is nearly
identical to the word ALPHA in applicant’s mark in
appearance and sound. The similarity in appearance
resulting from the presence of ALPHA in applicant’s mark
and ALFA in the cited mark outweighs the dissimilarity
resulting from the stylized manner in which the marks are
presented. In accordance with the above analysis, we
consider the wording in these marks to be the dominant
portions thereof. See Id. The above-noted evidence of
record shows that ALFA is an alternative spelling of ALPHA.
Further, there is nothing in the record to suggest that
ALFA has a different meaning from ALPHA, or that the
difference in spelling would result in a different
pronunciation. Thus, the word portions of applicant’s mark
and the mark in Registration No. 3027832 are nearly
identical in appearance and sound.
In addition, we find that whether purchasers view the
“α” symbol in the registered mark as a stylized letter “A,”
the Greek letter “alpha,” or simply a design, the presence
Ser No. 78729760
20
of that symbol in the mark in Registration No. 3027832 is
not sufficient to create a commercial impression that is
distinct from that of applicant’s mark, especially in light
of the nearly identical wording therein. For the same
reasons we find that the relatively less significant design
in applicant’s mark is insufficient to create a commercial
impression that is distinct from that of registrant’s mark.
See Id. As a result, we find that applicant’s mark and the
mark in cited Registration No. 3027832 are highly similar
in appearance, sound and commercial impression, and that
the marks when taken as a whole convey highly similar
commercial impressions.
Nor are we persuaded that because of the price and
personal nature of a watch, purchasers are likely to
exercise great care in their selection thereof. First, and
as noted above, there are no limitations recited as to the
types of watches offered either by applicant or the owner
of either cited registration. Accordingly, they are
presumed to include both expensive and inexpensive watches
that may be purchased without a great deal of care.
Second, even careful and sophisticated purchasers are not
immune from confusion as to the origin of identical goods
offered under highly similar marks. See HRL Associates,
Inc. v. Weiss Associates, Inc., supra.
Ser No. 78729760
21
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We will
say, briefly, that none seems to be applicable, as we have
no evidence with respect to them.
In sum, after considering all evidence of record
bearing on the pertinent du Pont factors, we conclude that
there is a likelihood of confusion in this case with regard
to the subject matter of all the cited registrations. We
conclude so principally due to the similarity between
applicant’s mark and the marks in the cited registrations
and the close relationship between applicant’s goods and
the goods identified in the cited registrations.
Finally, to the extent that any of the points raised
by applicant raise a doubt about likelihood of confusion,
that doubt is required to be resolved in favor of the prior
registrants. See In re Hyper Shoppes (Ohio), Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ
1289 (Fed. Cir. 1984).
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed with regard to
Reg. Nos. 1140591, 1854407, 2915444, and 3027832.