I.F.R.A. SRL

Trademark Trial and Appeal Board

Jul 22, 2005

No. 75878447 (T.T.A.B. Jul. 22, 2005)

Mailed:
July 22, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re I.F.R.A. SRL
________

Serial No. 75878447
_______

Jules E. Goldberg, Reed Smith LLP.

Vivian Micznik First, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

I.F.R.A. SRL filed, on December 22, 1999, an
application to register on the Principal Register the mark
IT’S for “steering wheels, shift knobs, alloy wheels; pedal
kits comprising brake pedal[s], acceleration pedals, and
clutch pedals; [and] products for decoration of cars,
namely, side door stops, aluminum frame housing for shift
handles, seat covers and steering wheel covers” in
International Class 12. The application is based on a bona
fide intent to use the mark in commerce under Trademark Act
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 75878447
2
Section 1(b), 15 U.S.C. §1051(b). Applicant asserted a
second basis for filing, namely a right of priority under
Trademark Act Section 44, 15 U.S.C. §1126, based on an
Italian application that eventually matured into Italian
Registration No. 873901.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark IT-S for “antitheft alarms
for vehicles” in International Class 12.1
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs.
Applicant did not request an oral hearing.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between

1 Registration No. 2369274, issued July 18, 2000.
Ser No. 75878447
3
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 turn initially to the first du Pont factor, i.e.,
whether applicant's mark and the cited registered mark are
similar or dissimilar when compared in their entireties in
terms of appearance, sound, connotation and commercial
impression. In this case, the marks both consist of the
letters “i,” “t” and “s,” have such letters in the same
order, and have punctuation between the “t” and the “s.”
Thus, we disagree with applicant's contention that the
marks are different in appearance and find that the marks
are highly similar in appearance.
We recognize that the marks may differ somewhat in
sound and connotation. Insofar as sound is concerned,
because the registered mark does not form a word in the
English language, registrant's mark, when spoken,
conceivably may be identified by the letters appearing in
the mark, i.e., as "eye-tee-es." However, there is no
"correct" pronunciation of a trademark because it is
impossible to predict how the public will pronounce a mark.
See, e.g., In re Great Lakes Canning, Inc., 227 USPQ 483
(TTAB 1985). Thus, it is just as likely that the mark may
Ser No. 75878447
4
be pronounced as "its," that is, the same way as
applicant's mark. We also recognize that registrant's mark
has no apparent meaning whereas applicant's mark does have
meaning in the English language (applicant states it is
“the possessive of the word 'it'” -- see p. 2 of
applicant's brief). However, inasmuch as registrant's mark
may be perceived as “its,” consumers in that case would
ascribe similar meanings to the marks.
Notwithstanding any differences in sound and meaning
between the marks, the similarities in appearance are so
strong in view of the shared letters “i,” “t” and “s” in
both marks, in the same letter order and with punctuation
in the same location, that they outweigh any differences in
sound and connotation. We find, therefore, that the
overall commercial impressions of the marks are very
similar, particularly in view of the fallible memories of
consumers, who retain general impressions of marks and
cannot be presumed to have the luxury of being able to
compare applicant's and registrant's marks side-by-side.
See Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d
1735 (TTAB 1991), aff'd. No. 92-1086 (Fed. Cir. June 5,
1992).
We now turn to the second du Pont factor, i.e., the
similarity or dissimilarity and nature of the goods of the
Ser No. 75878447
5
application and registration. It is well settled that
goods need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
is sufficient that the goods are related in some manner or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of the goods and/or services. See In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
For the reasons set forth below, we find that
applicant's goods are sufficiently related to the goods
identified in the cited registration, so that confusion is
likely to occur in the marketplace. First, “it has been
frequently been found that the marketing by different
parties of different types of vehicular parts under the
same or similar marks is likely to cause confusion.” In re
Jeep Corp., 222 USPQ 333 (TTAB 1984). Applicant's
"steering wheels, shift knobs, alloy wheels; pedal kits
comprising brake pedal[s], acceleration pedals, and clutch
pedals; [and] products for decoration of cars, namely, side
Ser No. 75878447
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door stops, aluminum frame housing for shift handles, seat
covers and steering wheel covers," and registrant’s
"antitheft alarms for vehicles,” as vehicular parts or
enhancements, are commercially closely related. See
Permatex Company, Inc. v. California Tube Products, Inc.,
175 USPQ 764 (TTAB 1972). Second, the examining attorney
has submitted numerous third-party registrations, based on
use in commerce, in which the identifications of goods
include one or more of applicant's goods and antitheft
alarms for vehicles. Although such registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they nonetheless have
probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may
emanate from a single source under a single mark. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988).
Applicant has argued that “all of the cases which have
been cited by the Examiner,” e.g., In re Jeep, supra, are
inapposite because they involve:
… automotive parts which are generally sold in
the same type of store or retail outlet [e.g.]
vehicle tires are … sold in the same outlets as
antifreeze or automobile tires …. These are all
essentially “parts” for automobiles. This is in
Ser No. 75878447
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complete contrast to the goods identified for the
present application which are in essence parts
which are generally used for decoration of cars
or for add on’s [sic] to automobiles, e.g., shift
knobs, alloy wheels and pedal kits. Such parts
are normally sold in after market retail outlets
as opposed to repair shops where one would obtain
a new muffler, clutches, brakes, tires, and the
like for automobiles.

We disagree. Applicant's identification of goods includes
goods such as steering wheels which are basic to any
vehicle. Further, we do not consider such basic items to
be purely “decorative” or “add on’s” [sic], as applicant
maintains, because applicant's identification of goods does
not include such limitations. Rather, we assume that
applicant's goods are used in all normal uses – including
non-decorative uses (other than, of course, the claimed
“products for decoration of cars”) - because restrictions
may not be read into an identification of goods. See
Kangol Ltd. v. KangaROOS U.S.A., Inc. 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992). Such goods would likely be
sold in the same locations as those goods described in the
cases cited by the examining attorney.
We next consider the third du Pont factor, i.e., the
similarity or dissimilarity of established, likely-to-
continue trade channels of applicant's and registrant's
goods. With respect to trade channels, applicant maintains
that while applicant's goods are “used for decoration of
Ser No. 75878447
8
cars or for add on’s” [sic] and sold in after market retail
outlets, registrant's goods:
… are normally electronic devices which are sold
in shops which specialize in electronic devices
for cars, e.g., radios, in-car stereo units and
CD players, and the like. They require
professional installation usually either by the
particular shop where the device is purchased, or
if it is purchased through the internet, an
installer with a special skill.

However, neither the application nor the cited registration
is in any way restricted as to channels of trade for the
respective goods. It is therefore presumed that the goods
identified in the application and cited registrations
encompass all goods of the type described, that the goods
move in all normal channels of trade, and that the goods
are available to all potential customers of such products.
In re Elbaum, 211 USPQ 639 (TTAB 1981). Such channels of
trade would not be limited to specialty shops for
electronic devices. We hence find that applicant's goods
travel in the same trade channels as registrant's antitheft
alarms.
Next, we consider the fourth du Pont factor, i.e., the
purchasers of applicant's and registrant's goods. We have
no proof that buying registrant's and applicant's goods
involves a deliberative process or that a great deal of
care and discrimination would usually be exercised by
Ser No. 75878447
9
purchasers in making the decision to buy these parts and
accessories. The primary purchasers of applicant's and
registrant's automotive parts must be deemed to be members
of the general public. Thus, we find that purchasers of
the array of automotive parts and accessories set forth in
the application also would encounter antitheft alarms for
vehicles in the same retail locations and that purchasers
of the goods would exercise nothing more than ordinary
care. The fourth du Pont factor hence is resolved against
applicant in our likelihood of confusion determination.
In view of the foregoing, we conclude that applicant's
mark IT’S for “steering wheels, shift knobs, alloy wheels;
pedal kits comprising brake pedal[s], acceleration pedals,
and clutch pedals; [and] products for decoration of cars,
namely, side door stops, aluminum frame housing for shift
handles, seat covers and steering wheel covers” is likely
to cause source confusion among purchasers with the
registered mark IT-S for “antitheft alarms for vehicles.”
To the extent that any doubt might exist as to the
correctness of this conclusion, we resolve such doubt
against applicant. 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 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Ser No. 75878447
10
Decision: The refusal to register under Section 2(d)
is affirmed.