GITI Tire Pte Ltd.

Trademark Trial and Appeal Board

Apr 11, 2007

No. 78539794 (T.T.A.B. Apr. 11, 2007)

Mailed: April 11, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GITI Tire Pte Ltd.
________

Serial No. 78539794
_______

Perry J. Viscounty of Lathan & Watkins, LLP for GITI Tire
Pte Ltd.

Esther Borsuk, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Drost, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by GITI Tires Pte Ltd. to
register the mark MAXTOUR in typed or standard character
form on the Principal Register for the following goods, as
amended: “tires for highway use on land passenger
vehicles” in International Class 12.1

1 Application Serial No. 78539794 was filed December 29, 2004,
based on applicant’s assertion of November 7, 2004 as a date of
first use of the mark anywhere and in commerce.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78539794
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used in connection with
its goods, so resembles the mark TOURMAX, previously
registered on the Principal Register in typed or standard
character form for “pneumatic tires for vehicles” in
International Class 12,2 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the issue under appeal.
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. 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, 27 (CCPA

2 Registration No. 1344263 issued on June 25, 1985. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
Ser No. 78539794
3
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Goods
We turn first to our consideration of whether the
goods of applicant and registrant are related. In making
our determination, we look to the goods as identified in
the involved application and cited registration. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that 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
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
In this case, registrant’s broadly identified
“pneumatic tires for vehicles” are presumed to include
applicant’s more narrowly identified “tires for highway use
on land passenger vehicles.” In other words, applicant’s
Ser No. 78539794
4
tires intended for use on land passenger vehicles that
travel on highways are a subset of registrant’s pneumatic
tires intended for use on vehicles. We take judicial
notice of the following definition of the term “pneumatic”
in registrant’s identification of goods: “Filled with air,
esp. compressed air, as a tire.”3 Inasmuch as the term
“pneumatic” merely indicates that registrant’s tires are
filled with air, we find that such a characteristic does
not serve to distinguish its goods from those of applicant.
Nor are we persuaded by applicant’s argument that
registrant’s tires are actually used on golf carts and thus
are dissimilar from its own high mileage tires for
passenger vehicles. First, the identification of goods in
the cited registration contains no such limitations. Thus,
and as noted above, we must base our determination with
regard to the relatedness of the parties’ goods upon the
identification of goods set forth therein. See Octocom
Systems, Inc. v. Houston Computers Services Inc., supra.
Second, even in the event applicant’s goods may be
distinguished from those of registrant based upon the
intended use therefor, it does not necessarily relieve

3 Webster’s II New Riverside University Dictionary, © 1994
Houghton Mifflin Company. The Board may take judicial notice of
dictionary definitions. See University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982);
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78539794
5
consumers from experiencing confusion as to the source or
sponsorship of those goods. As the Federal Circuit stated
in Recot, Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d
1895, 1898 (Fed. Cir. 2000), “Even if the goods in question
are different from, and thus not related to, one another in
kind, the same goods can be related in the mind of the
consuming public as to the origin of the goods. It is this
sense of relatedness that matters in the likelihood of
confusion analysis.” See also Bose Corp. v. QSC Audio
Products, Inc., 293 F.2d 1367, 63 USPQ2d 1303, 1309-10 (Fed
Cir. 2002) (“Hence the products as described in the
pertinent registrations are not the same. But they are
related as required by du Pont.”); and Hewlett-Packard Co.
v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (“Even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services.”).
Trade Channels
Furthermore, inasmuch as the identifications of goods
either in the cited registration or application are not
limited to any specific channels of trade, we presume an
overlap and that the goods would be offered in all ordinary
trade channels for these goods and services and to all
Ser No. 78539794
6
normal classes of purchasers. See In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., supra. As noted above,
neither applicant’s nor registrant’s goods contains any
limitations as to trade channels or intended consumers.
Accordingly, both applicant’s and registrant’s goods are
presumed to move in all normal channels of trade and be
available to all classes of potential consumers. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
The Marks
Next we consider the similarities and dissimilarities
between the marks. In coming to our determination, we must
compare the marks in their entireties as to appearance,
sound, connotation and 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).
In this case, registrant’s mark is TOURMAX while
applicant’s mark is MAXTOUR. Both marks contain the
identical words “max” and “tour.” Applicant has taken the
only two words in registrant’s mark and transposed them.
These differences do not serve to distinguish the marks in
terms of sound and appearance. Further, we are not
persuaded that reversing the order of the words in the
Ser No. 78539794
7
marks makes a significant difference in commercial
impression. As the Board has previously stated:
Further, the reversal in one mark of the
essential elements of another mark may serve as a
basis for a finding of no likelihood of confusion
only if the transposed marks create distinctly
different commercial impressions. See Bank of
America National Trust and Savings Assn. v.
American National Bank of St. Joseph, 201 USPQ
842 (TTAB 1978), and cases cited therein. Here,
where the goods in question are legally
identical, and where both marks, when applied to
the goods in question, are likely to be perceived
by purchasers as signifying that the product sold
thereunder busts through, or breaks up, rust, we
agree with the Examining Attorney that the marks
create substantially similar commercial
impressions, and there is a likelihood of
confusion. Cf. In re Inco, 154 USPQ 629 (TTAB
1967) [“GUARDIAN OF POSTURE for mattresses versus
“POSTURGUARD” for mattresses – registration
refused], and McNamee Coach Corp. v. Kamp-A-While
Industries, Inc. v. 148 USPQ 765 (TTAB 1965)
[“KING KAMPER” for camping trailers versus “KAMP
KING KOACHES” for campers – registration
refused].

See In re Nationwide Industries, Inc., 6 USPQ2d 1882, 1884
(TTAB 1988)(RUST BUSTER for rust-penetrating spray
lubricants confusingly similar to BUST RUST for penetrating
oil).
While applicant disagrees with the examining
attorney’s determination that applicant’s and registrant’s
marks have the same commercial impression, its argument on
this point is unpersuasive. Specifically, applicant argues
that its mark MAXTOUR suggests the maximum extent of a
Ser No. 78539794
8
journey on high-speed highways and that registrant’s mark
TOURMAX suggests golf vehicles used in competitive golf
matches. Although there may be subtle differences in the
meanings of the marks when they are subjected to close
analysis, we do not believe that consumers will undertake
such an analysis. The test for likelihood of confusion is
not whether the marks can be distinguished when subjected
to a side-by-side comparison. Also, in evaluating
similarities between the marks, the emphasis must be 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). Registrant’s mark TOURMAX and applicant’s mark
MAXTOUR convey highly similar meanings and commercial
impressions when used in connection with tires. Both marks
suggest goods, in this case tires, that allow for maximum
touring. Thus, when the marks are considered in their
entireties, we find that they are similar in sound,
appearance, meaning and commercial impression.
Family of Marks
In coming to our determination with regard to the
similarities between the marks, we note applicant’s claim
of ownership of several marks containing MAX as a prefix
and its argument that confusion in this case is unlikely
Ser No. 78539794
9
because it owns a family of MAX formative marks. However,
applicant’s ownership of a family of MAX formative marks,
even if proven, is irrelevant. We must decide the issue of
likelihood of confusion based upon applicant’s MAXTOUR mark
in its application at issue herein. See In re Lar Mor
International, Inc., 221 USPQ 180 (TTAB 1983); In re U.S.
Plywood-Champion Papers, Inc., 175 USPQ 445 (TTAB 1972);
cf. Baroid Drilling Fluids, Inc. v. Sun Drilling Products,
24 USPQ2d 1048 (TTAB 1992). Thus, applicant’s claim of a
family of marks is unavailing in this case.
Conditions of Sale
Another du Pont factor discussed by applicant is that
of the conditions of sale. Applicant asserts that its
goods are expensive and would be purchased by careful and
sophisticated users. However, there is no evidence that
either applicant’s or registrant’s goods would be purchased
only by highly sophisticated persons. In fact, tires may
be purchased by anyone who owns a car and, therefore, tires
may be purchased even by ordinary consumers. Further,
sophisticated purchasers are not necessarily knowledgeable
in the field of trademarks or immune from source confusion.
See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
Moreover, even if some degree of care were exhibited in
making the purchasing decision, the marks MAXTOUR and
Ser No. 78539794
10
TOURMAX are so similar that even careful purchasers are
likely to assume that the marks identify goods emanating
from a single source.
Third Party Use
In its January 27, 2006 response to the examining
attorney’s August 3, 2005 Office action, applicant argues
that third party use of both MAXTOUR and TOURMAX to
identify tires weighs against a finding of likelihood of
confusion. In support of its contention, applicant
submitted an electronic mail posting from an Internet
mailing list in which the author refers to a “TourMax”
motorcycle tire.4 In addition, applicant submitted a
printout from an Internet retail website offering “MAXTOUR
130/70 HB18 GL1500 motorcycle tires for sale.5
We note, however, that the only reference to “TourMax”
is in an e-mail posting and provides no indication as to
whether such mark is either registered or currently in use.
The single reference to “MAXTOUR” does not indicate whether
that mark is registered or currently in use, and further is
unclear whether the mark stands alone or includes the
numerical and letter designation that follows. We further

4 Archives.itg.uiuc.edu.virago//2001

5 www.motorcycleproshop.com

Ser No. 78539794
11
note that both references are for motorcycle tires which,
while not identical to applicant’s goods, are nonetheless
presumed to be included among registrant’s more broadly
recited goods. As a result, we do not find on this record
that there is such extensive third party use of MAXTOUR or
TOURMAX that confusion between the cited registration and
challenged registration is unlikely.
Actual Confusion
The final du Pont factor discussed by applicant and
the examining attorney is that of the lack of instances of
actual confusion. Applicant asserts that the absence of
actual confusion for over two years suggests no likelihood
of confusion. However, and as pointed out by the examining
attorney, it is not necessary to show actual confusion in
order to establish likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223
USPQ 1025 (Fed. Cir. 1990). Particularly in an ex parte
proceeding, applicant's assertion of the absence of actual
confusion is of little probative value in our determination
on the issue of likelihood of confusion because the Board
cannot readily determine whether there has been a
significant opportunity for actual confusion to have
occurred, such that the absence of confusion is meaningful.
See In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001);
Ser No. 78539794
12
In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and In
re Jeep Corp., 222 USPQ 333 (TTAB 1984). In those
situations where the Board has recognized the absence of
actual confusion as probative in an ex parte setting, there
existed a "confluence of facts" which together strongly
suggested that the absence of confusion was meaningful and
should be given probative weight. See In re Opus One Inc.,
supra; and In re Jeep Corp., supra. The "confluence of
facts" is not present in this record.
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists. Moreover, 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 registrant. 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 of registration is affirmed.