In-N-Out Burgersv.Fast Lane Car Wash & Lube, L.L.C.

Trademark Trial and Appeal Board

Mar 14, 2013

No. 91183888 (T.T.A.B. Mar. 14, 2013)

Mailed: March 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In-N-Out Burgers
v.
Fast Lane Car Wash & Lube, L.L.C.
________

Opposition No. 91183888
to application Serial No. 77234104
________

Robert J. Lauson of Lauson and Tarver LLP for In-N-Out Burgers.

Richard L. Schnake of The Law Firm of Neale & Newman LLP for
Fast Lane Car Wash & Lube, LLC.

Before Quinn, Cataldo and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Fast Lane Car Wash & Lube, L.L.C. (“applicant”) filed an
application to register the mark IN & OUT CAR WASH, with “CAR
WASH” disclaimed, on the Principal Register in standard
characters, for “automobile cleaning and car washing; automobile
washing; car washing; vehicle washing” in International Class
37.1 Applicant filed the application based on use in commerce,

1 Application Serial No. 77234104 was filed on July 19, 2007 and published for
opposition in the Official Gazette on January 8, 2008.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91183888
2

pursuant to Trademark Act § 1(a), 15 U.S.C. § 1051(a), asserting
first use anywhere and in commerce as of April 15, 2005.
Registration has been opposed by In-N-Out Burgers
(“opposer”) on grounds of (1) priority and likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d);
and (2) dilution under Trademark Act Section 43(c), 15 U.S.C.
§ 1125(c).2 Opposer, in its second amended notice of opposition,
alleges that since as early as 1948, it has continuously used in
interstate commerce the mark IN-N-OUT BURGERS in connection with
drive-through restaurant services, and obtained a registration
for its IN-N-OUT mark (Reg. No. 1085163) in connection with
restaurant and carry-out restaurant services on February 7,
1978. Since that time, opposer has obtained registrations for
marks containing the wording “IN-N-OUT” in standard characters
as well as composite marks incorporating an arrow design and the
wording “IN-N-OUT BURGER” for various menu items (Reg. Nos.
1522799, 1525982, 1101628, and 1101638) and promotional goods
(Reg. Nos. 2217307, 1514689 and 1960015). Opposer also owns a
composite mark incorporating an arrow design and the wording
“IN-N-OUT BURGER” for financial sponsorship of race cars and

2 Opposer also pleaded (1) mere descriptiveness based upon its assertion that
the mark directly conveys information concerning the function,
characteristics, qualities, purpose and underlying use of applicant’s
services within the meaning of Trademark Act § 2(e)(1), 15 U.S.C.
§ 1052(e)(1), and (2) that applicant’s use of its mark in connection with the
services set forth in the application is not use in “commerce” within the
meaning of Trademark Act § 45, 15 U.S.C. § 1127. However, these claims are
deemed waived because opposer failed to argue and present evidence with
regard thereto at trial or in its briefs.
Opposition No. 91183888
3

race car drivers (Reg. No. 33674713), and has subsequently
acquired4 ownership of a registration for IN & OUT in standard
characters in connection with motor vehicle body repairing and
painting, which has been used in commerce since February 1981
(Reg. No. 1780587).
Opposer alleges that as a result of such use, its marks
have achieved a high degree of public recognition and renown,
and have received extensive media attention. Opposer alleges,
therefore, that applicant’s use of its IN & OUT CAR WASH mark in
connection with car wash and related services will likely lessen
the capacity of opposer’s marks to identify and distinguish
opposer’s services and goods, regardless of the presence or
absence of competition between the parties, and is likely to
cause confusion, mistake and deception.
In its answer, applicant has denied all of the salient
allegations in the second amended notice of opposition.5

3 Opposer filed the application for Registration No. 3367471 on November 14,
2006, alleging a date of first use in commerce of 1985, and it matured to
registration on January 15, 2008.
4 Opposer acquired ownership of Registration No. 1780587 on March 13, 2009,
after commencement of this proceeding. See Assignment Reel/Frame 3952/0116.
5 Also, in its answer to the second amended notice of opposition, applicant
asserts as affirmative defenses matters that are more in the nature of
amplifications of its denials of opposer’s claims and have been so construed.
In addition, the exhibits to applicant’s answer to the second amended notice
of opposition are not evidence on behalf of applicant, except to the extent
that they were identified and introduced in evidence during applicant’s
period for the taking of testimony. Trademark Rule 2.122(c); and TBMP §317
(October 2012).

Opposition No. 91183888
4

The Record
By rule, the record includes the pleadings and the file
history of the subject application. Trademark Rule 2.122(b), 37
CFR § 2.122(b). In addition, the parties introduced the
following testimony and evidence:
Opposer’s evidence
1. Opposer’s Notice of Reliance comprising (“Opp. NOR”):

a. Transcript and exhibits from the discovery deposition of
applicant’s co-owner and Managing Member, Greg Byler,
taken on August 26, 2011 (“Opp. Byler Test.”).

b. Transcript and exhibits from the discovery deposition of
opposer’s Vice President and General Counsel, Arnold
Wensinger, taken on September 6, 2011 (“Opp. Wensinger
Test.”).

c. Transcript and exhibits from the testimony deposition of
Mr. Byler, taken on October 27, 2011 (“App. Byler
Test.”).

d. Transcript and exhibits from the video conference
testimony deposition of Mr. Wensinger, taken on September
21, 2010 (“App. Wensinger Test.”).

e. Applicant’s response to opposer’s request for admissions.

f. Applicant’s response to opposer’s first set of
interrogatories and requests for production of documents.

g. Applicant’s response to opposer’s second set of
interrogatories and requests for production of documents.

h. Applicant’s supplemental responses to opposer’s first set
of interrogatories and requests for production of
documents.6

6 Portions of the responses and documents have been designated “confidential.”
In this decision, we have endeavored to discuss those portions of the
parties’ testimony and evidence that truly contain confidential information
only in general terms.
Opposition No. 91183888
5

i. Publicly available articles, documents, Internet
materials and books relied upon to demonstrate opposer’s
use, fame, and association with cars and car-culture.

2. Opposer’s Notice of Reliance in Rebuttal comprising (“Opp.
Rebuttal NOR”):

a. Publicly available articles and Internet materials relied
upon to demonstrate the fame of opposer’s marks through
unsolicited word-of-mouth marketing.

b. DVD entitled “California’s Gold: In-N-Out Burger” relied
upon to demonstrate the fame of opposer’s marks through
unsolicited word-of-mouth marketing.

c. Third-party registrations relied upon to demonstrate that
certain of applicant’s types of services are offered
alongside opposer’s types of services.

d. Third-party Internet evidence relied upon to demonstrate
that certain of applicant’s types of services are offered
alongside opposer’s types of services under common law
marks.

Applicant’s evidence
1. Transcript and exhibits from the trial deposition of Mr.
Byler, taken on October 27, 2011 (“App. Byler Test.” in
opposer’s 1(c) above).

2. Applicant’s Notice of Reliance comprising (“App. NOR”):

a. Excerpts from transcript and exhibits from the video
conference deposition of Mr. Wensinger, taken on
September 21, 2010 (“App. Wensinger Test.” in opposer’s
1(d) above).

b. Specific requests from applicant’s first request for
admissions to opposer, deemed admitted because of
opposer’s failure to respond.

c. Opposer’s responses and objections to applicant’s third
set of interrogatories to opposer.

d. Opposer’s first supplementation of its responses and
objections to applicant’s second set of interrogatories
to opposer.
Opposition No. 91183888
6

e. Opposer’s responses and objections to applicant’s second
set of interrogatories to opposer.

f. Opposer’s supplementation of its responses and
objections to applicant’s revised first set of
interrogatories and requests for production.

g. Opposer’s responses and objections to applicant’s
revised first set of interrogatories to opposer and
applicant’s first revised request for production.

h. Publicly available Internet documents and articles
relied upon to demonstrate the extent of actual
recognition of opposer’s marks, and that opposer’s marks
are not famous because they are not widely recognized by
the general consuming public of the United States.

i. Third-party registrations relied upon to demonstrate
that opposer’s marks are not famous because they are not
widely recognized by the general consuming public of the
United States, and the extent to which opposer is
engaged in substantially exclusive use of its marks.

j. Official TTAB records for opposer’s oppositions against
third-party marks relied upon to demonstrate that
opposer’s marks are not famous because they are not
widely recognized by the general consuming public of the
United States, and the extent to which opposer is
engaged in substantially exclusive use of its marks.

k. Official records from civil action proceedings in
various U.S. district courts involving opposer, relied
upon to demonstrate that opposer’s marks are not famous
because they are not widely recognized by the general
consuming public of the United States, and the extent to
which opposer is engaged in substantially exclusive use
of its marks.7

Opposer and applicant filed main briefs on the case, and
opposer filed a reply brief.

7 In response to an inquiry made by the Board, applicant’s attorney has advised
the Board that Exhibit 887 of applicant’s Notice of Reliance was not made
part of the record, and requested the Board to decide the case based on the
existing record.
Opposition No. 91183888
7

Evidentiary Matters
Before addressing the merits of the case, certain
evidentiary matters require our attention. Opposer has objected
to applicant’s reliance on survey evidence, third-party
registrations, and prior oppositions initiated by opposer against
third parties. We note that none of the evidence sought to be
excluded or restricted with regard to the purpose for which it
has been submitted is outcome determinative. Therefore, we see
no compelling reason to discuss the objections in a detailed
fashion. Suffice it to say that we have considered all of the
testimony and exhibits submitted by the parties. In doing so, we
have kept in mind the various objections raised by the parties,
and we have accorded whatever probative value the subject
testimony and exhibits merit.
The Parties
Opposer
Beginning in 1948, opposer began a regional chain of IN-N-
OUT BURGER drive-through restaurants, which at the time of trial
number 262 restaurants, exclusively within the states of
California, Nevada, Utah, Arizona and Texas. Opp. Brief at p.
4; Opp. Wensinger Test. at 35, 134, 136-37. Opposer also sells
gift cards, apparel, and collectibles through its store
locations, catalogs and website. Opp. Brief at p. 4; Opp.
Wensinger Test. at 88-91, 113-14, Exs. 640-644; App. Wensinger
Test. at 36.
Opposition No. 91183888
8

Opposer additionally is involved in the financial
sponsorship of race cars and race car drivers,8 Opp. Wensinger
Test. at 85, Ex. 637; App. Wensinger Test. at 49-51, Ex 10, as
well as motor vehicle body repairing and painting through its
controlled licensee. Sec. Amend. Opp. at para. 9; Opp.
Wensinger Test. at 98-99, Ex. 649.
Applicant
Applicant began using its IN & OUT CAR WASH mark in commerce
in April of 2005. App. Byler Test. at 7. Applicant is in the
car wash business and owns two car wash facilities, the Joplin,
Missouri facility that opened in 2005 and the Springfield,
Missouri facility that opened in 2007. Applicant also is in the
business of providing consulting services to car wash operators.
Id. at 3-4, 7; Opp. Byler Test. at 23.
Mr. Byler had initially selected the mark “Fast Lane Car
Wash & Lube” for applicant’s business, but decided on IN & OUT
CAR WASH instead because a “Fast Lane Car Wash” already existed
nearby. App. Byler Test. at 26-27; Opp. Byler Test. at 26. Mr.
Byler derived the concept of a faster car wash in response to a
common complaint from consulting clients that car wash services
operate slowly, so he sought a mark that conveyed a message of
quick car wash services. App. Byler Test. at 3, 13-15, 26-27;
Opp. Byler Test. at 55-57. He ultimately selected the IN & OUT
CAR WASH mark because it suggests to consumers that their cars

8 Mr. Wensinger has testified that opposer’s financial sponsorship of race cars
and race car drivers is not actually a service that opposer provides to
customers, but is used to promote brand recognition for its restaurant
services. App. Wensinger Test. at 53.
Opposition No. 91183888
9

will be washed quickly, and that applicant’s car wash services
include the inside and outside of a vehicle. App. Byler Test. at
27; Opp. Byler Test. at 27. The only clearance search that Mr.
Byler conducted when deciding on the IN & OUT CAR WASH mark was a
search for available domain names, which only revealed a similar
mark for a car wash in Canada. App. Byler Test. at 27-28; Opp.
Byler Test. at 27-28. Mr. Byler had no knowledge of opposer
until after applicant’s car wash opened in Joplin, when a
customer visiting from California asked him if he had ever heard
of In-N-Out Burger.9 Id. at 24-26; Opp. Byler Test. at 29.
Applicant’s car wash services feature cleaning services for
the interior and exterior of vehicles, including detail cleaning.
App. Byler Test. at 5, 28-30; Opp. Byler Test. at 25. The
polishing services that applicant offers may involve rubbing some
scratches off a car’s painted surface; however, applicant’s car
wash services do not include repair of scratches, dent removal,
windshield repair, or paint touchup. App. Byler Test. at 30-31;
Opp. Byler Test. at 25-26.
Until May 2008, applicant also provided lube services at its
Joplin location, which involved basic maintenance of vehicles in
a short amount of time, such as oil changes, fluid checks,
transmission services, air filter changes, and tire setting.
App. Byler Test. at 18; Opp. Byler Test. at 24-25.

9 It is worth mentioning that the Mr. Byler’s testimony about the conversation
with this customer does not indicate that the customer was confused as to the
source of applicant’s car wash or believed applicant’s car wash services were
in any way related to opposer’s drive-through restaurant services. Without
testimony from the customer herself, which does not exist in the record, we
cannot rely on the conversation for any other purpose than as evidence as to
when Mr. Byler first learned of opposer.
Opposition No. 91183888
10

Standing
In determining whether opposer has established its standing
to bring this proceeding, we first consider whether opposer has
proven that it is the owner of valid and subsisting
registrations for its pleaded marks. In this case, opposer
introduced a copy of Registration No. 1780587 under Trademark
Rule 2.122(d)(1) with its second amended notice of opposition on
January 4, 2010.10 Sec. Amend. Opp. at para. 9. Opposer
indicates it submitted copies of its other nine pleaded
registrations with its original and two amended notices of
opposition. However, no copies of opposer’s other pleaded
registrations were made of record with its pleadings. Opposer
further submitted a copy of its pleaded Registration No. 3367471
with its notice of reliance.
In its answer to the second amended notice of opposition,
applicant admits to opposer’s ownership of several of its
pleaded registrations, but not to their status. Sec. Amend.
Answer at paras. 2–9. As a result, applicant’s admissions are
insufficient to prove that opposer’s pleaded registrations are
valid and subsisting. In addition, applicant made of record
copies of opposer’s pleaded Registration Nos. 1085163, 1522799,
1525982, 1101628, 1101638, and 2217307 showing status and title

10 Opposer submitted its second amended notice of opposition to plead
ownership of this registration, acquired by assignment as discussed above.
Opposition No. 91183888
11

to opposer as of 2007, and 3367471, showing status and title to
opposer as of 2009. App. NOR. at 874-891. We observe that
applicant submitted these registrations as part of the official
records of lawsuits involving opposer and third parties during
its assigned testimony period in November 2011 to demonstrate
that the marks in opposer’s pleaded registrations are not
famous. However, none of this evidence calls into question
opposer’s ownership of these registrations or their status as of
the date the referencing documents were created. Indeed, in
their respective summaries of the record in their briefs, both
opposer and applicant assert that opposer’s pleaded
registrations are of record and so treat them. (Opp. Brief at
2; App. Brief at 8).
We therefore accept that opposer’s pleaded Registration
Nos. 1780587, 1085163, 1522799, 1525982, 1101628, 1101638,
2217307 and 3367471 are valid and subsisting and that, as a
result, opposer has established its standing with regard to the
marks protected thereby and the goods or services recited
therein.11 See Cunningham v. Laser Golf Corp., 222 F.3d 943,
945, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 1026-1027, 213 USPQ
185 (CCPA 1982).

11 Because neither party made of record copies of opposer’s pleaded
Registration Nos. 2285823 and 2291183, we will not consider them in our
determination herein.
Opposition No. 91183888
12

Priority of Use
Priority is not in issue in an opposition if an opposer
establishes that it is the owner of a subsisting registration on
the Principal Register. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); Otter
Products, 105 USPQ2d 1252, 1254-55 (TTAB 2012), and cases cited
therein. Because opposer established ownership of its above-
listed registrations, priority is not an issue with respect to
Registration Nos. 1085163, 1522799, 1525982, 1101628, 1101638,
2217307, 3367471 and 1780587.
We note that opposer has acquired rights to the mark in
Registration No. 1780587 by assignment as a result of a purchase
and license back agreement. Opposer is correct, and applicant
does not dispute, that rights in this registration accrue to
opposer. Visa, U.S.A., Inc. v. Birmingham Trust Nat'l Bank, 696
F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982). Therefore, opposer
has established priority with respect to this registration,
notwithstanding its acquisition by opposer subsequent to the
commencement of this proceeding.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) 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
Opposition No. 91183888
13

F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003);
and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Family of marks not asserted
We begin by observing that opposer does not contend that
all or a portion of the marks in its pleaded registrations
constitute a family of marks. Therefore, we will determine the
issue of likelihood of confusion based on the individual marks
that are the subject of opposer’s registrations of record.
Opposer’s Registration No. 1780587
In our analysis, we will concentrate our discussion of the
issue of likelihood of confusion on opposer’s registration of
record which is most similar to that of applicant, namely,
Registration No. 1780587 for the mark IN & OUT (typed or
standard characters) reciting “motor vehicle body repairing and
painting” in International Class 37. If likelihood of confusion
is found between the application at issue and this registration,
it will be unnecessary to determine whether confusion is likely
as to the remainder of opposer’s registrations of record.
Conversely, if likelihood of confusion is not found between the
involved application and this registration, we would also find
Opposition No. 91183888
14

that confusion is not likely with opposer’s remaining pleaded
registrations, for the marks IN-N-OUT; IN-N-OUT and arrow
design; and IN-N-OUT BURGER and arrow design, reciting:
“restaurant services and carry-out restaurant
services;”

“milk and French fried potatoes for consumption on or
off the premises;”

“lemonade and soft drinks for consumption on or off
the premises;”

“cheeseburgers, hamburgers, hot coffee and milkshakes
for consumption on or off premises;”

“watches;”

“decals in the nature of bumper stickers, publications
in the nature of house organs, gift certificates;”

“backpacks;”

“coffee mugs and thermal mugs;”

“shirts, baseball caps, letterman’s jackets, and cooks
aprons;” and

“financial sponsorship of race cars and race car
drivers.”

Fame of opposer’s IN-N-OUT marks
We note that opposer has argued and introduced testimony
and evidence that its IN-N-OUT marks are famous for its
restaurant services and menu items. While, as discussed above,
we are concentrating our likelihood of confusion analysis on
opposer’s Registration No. 1780587 for the mark IN & OUT (typed
or standard characters) reciting “motor vehicle body repairing
Opposition No. 91183888
15

and painting,” we nonetheless address opposer’s assertions
regarding fame of its marks as to restaurant services and the
menu items served therein.
Fame plays a dominant role in the likelihood of confusion
analysis due to the fact that famous marks enjoy a broad scope
of protection or exclusivity of use. A famous mark has
extensive public recognition and renown. Bose Corp. v. QSC
Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1897 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992). Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time those
indicia of commercial awareness have been evident,” by
widespread critical assessments and through notice by
independent sources of the products and services identified by
the marks, as well as by the general reputation of the branded
products and services. Bose, 63 USPQ2d at 1305-06, 1309.
Although raw numbers of product and service sales and
advertising expenses may have sufficed in the past to prove fame
of a mark, raw numbers alone may be misleading. Some context in
which to place raw statistics may be necessary (e.g., the
Opposition No. 91183888
16

substantiality of the sales or advertising figures for
comparable types of products or services). Id. at 1309.
Because of the extreme deference that we accord a famous
mark in terms of the wide latitude of legal protection it
receives, and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of the party asserting that
its mark is famous to prove it clearly. Leading Jewelers Guild,
Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Upon careful review of the record in this case, we find
that although opposer has established that its marks are strong
and have gained notoriety for its restaurant services and menu
items, we are not persuaded that opposer’s IN-N-OUT marks are
famous for any of its goods or services.
Opposer’s sales
Opposer operates 262 restaurant locations within five
states, California, Nevada, Utah, Arizona and Texas, and does
not have facilities in any other state. Opp. Brief at p. 4;
Opp. Wensinger Test. at 35, 134. Opposer’s only means for
selling food is its 262 restaurant locations. Opp. Wensinger
Test. at 113-114. However, opposer sells gift cards, apparel,
and collectibles through its store locations, catalogs and
website. Opp. Brief at p. 4; Opp. Wensinger Test. at 88-91,
113-14, Exs. 640-644; App. Wensinger Test. at 36.
Opposition No. 91183888
17

Opposer states that because it is a private company, it is
not required to, and does not, release annual sales figures.12
Opp. Brief at p. 4. Therefore, opposer simply relies on Mr.
Wensinger’s testimony that opposer’s sales figures on record are
“significantly lower than actual,” and that sales are routinely
underrepresented when ranked alongside other nationally famous
brands. Opp. Brief at p. 4; Opp. Wensinger Test. at 31-32, Ex.
608. For example, Mr. Wensinger explained that QSR Magazine
ranked opposer only 48th nationally in overall sales in 2005, but
that this rank is likely much lower than opposer’s actual rank
in yearly sales because opposer’s sales per location are the
highest in the United States. Id. Mr. Wensinger further
testified that even though opposer’s sales are strong, they are
not near the level of sales of a restaurant chain such as
McDonalds. Opp. Wensinger Test. at 129-30. With respect to its
merchandising products, Mr. Wensinger testified that, for
instance, less than 1% of its gross sales of logo merchandise
were to consumers in Missouri and Arkansas (states in which
opposer does not operate restaurants) between the years 2004 to
2008. App. Wensinger Test. at 37, 41-43.
Opposer does not offer any evidence to support its asserted
sales figures or that its sales per location are indeed the

12
We note that opposer had the option of releasing its sales figures under
protective order and seal of confidentiality. See TBMP § 412 (October 2012).
Opposition No. 91183888
18

highest in the United States. Moreover, Mr. Wensinger’s
testimony does not provide any market share context represented
by its sales, making it very difficult for us to determine
whether they are substantial for the purpose of determining
fame. To the contrary, testimony that its system-wide sales are
not near McDonald’s comparable sales, and that its merchandise
sales to Missouri and Arkansas only represent less than 1% of
its gross merchandise sales, all indicate that opposer’s sales
are made to a limited market share of the general consuming
public in the United States.
Opposer’s marketing and advertising
Mr. Wensinger testified that opposer’s current advertising
budget is just under $10 million per year, and that it has spent
a minimum of $6.5 million per a year on conventional advertising
over the past ten years. Opp. Brief at 5; Wensinger Test. at
21. Mr. Wensinger also testified that opposer’s advertising is
nationwide, through promotion for sporting events that are
picked up for national broadcasts, as well as advertising on AM
radio stations, social media outlets, opposer’s website, and
interstate highway billboards seen by drivers from all across
the country. Opp. Brief at 5; Wensinger Test. at 23-25, Exs.
605-606.
Closer examination of Mr. Wensinger’s testimony and related
exhibits, however, indicate that opposer’s radio and television
Opposition No. 91183888
19

advertising for 2005, which Mr. Wensinger testified is
representative of opposer’s media plan for the past ten years,
appears to be limited to geographic areas local to opposer’s
business locations, such as Los Angeles, Las Vegas, and Phoenix.
Opp. Wensinger Test. at 23-25, Ex. 605. Similarly, opposer’s
interstate billboards promote specific store locations and are
strategically placed in close proximity to the respective
locations with directional information. Opp. Wensinger Test. at
26, Ex. 606. Based on the evidence, consumers must be within
the physical range of opposer’s marketing efforts for exposure
to the advertisements. While non-local travelers to the area
may be exposed to the advertisements, we cannot speculate as to
the market share of the general consuming public in the United
States that those travelers represent.
The same is true for Mr. Wensinger’s testimony and evidence
that opposer has 2,000,000 fans or “likers” on Facebook. Opp.
Wensinger Test. at 28. There simply is no supporting evidence
as to where those fans are located and what share of the
relevant consuming public they represent for us to determine the
question of fame. Presumably, a significant portion of
opposer’s Facebook fan-base represents consumers local to
opposer’s business establishments who are specifically familiar
with opposer. It is impractical for us to determine fame based
on the marketing evidence before us.
Opposition No. 91183888
20

Opposer’s word-of-mouth marketing
Mr. Wensinger testified that opposer focuses on the quality
of its products and customer experience, which results in the
word-of-mouth advertising that opposer seeks. Opp. Wensinger
Test. at 38-39. For that reason, Mr. Wensinger testified that
opposer’s reputation is national in scope, even global with
brand recognition reaching as far as Japan, the United Kingdom
and Australia. Opp. Wensinger Test. at 46-47. However, Mr.
Wensinger’s testimony is wholly unsupported and speculative
without evidence of specific context and reference.
Unsolicited media attention and celebrity recognition
The record demonstrates that opposer is the subject of very
favorable and unsolicited attention from media sources and
celebrities, and includes the following representative sample:
1. Ed Levine, The Burger Takes Center Stage, N.Y.
Times, Jan. 15, 2003. Opposer’s NOR, para. 5,
Ex. 705 (See para. 3);

2. Raymond Sokolov, The Best Burger, Wall St. J.,
March 10, 2007. Opposer’s NOR, para. 6, Ex. 706
(See para. 19);

3. Winning Weight, People Mag., Oct. 16, 2006.
Opposer’s NOR, para. 7, Ex. 707 (See para. 1);

4. Editorial board information page of Glamour Mag.
in Nov., 2007. Opposer’s NOR, para. 9, Ex. 709;

5. Monica Eng, Fast Food that Even a Foodie Could
Love, Chicago Tribune, Oct. 4, 2005. Opposer’s
NOR, para. 10, Ex. 710 (See paras. 3-16);

Opposition No. 91183888
21

6. Deb Peterson, Local Pals Make Movie for Texas
Film Festival, St. Louis Post-Dispatch, Feb. 16,
2008. Opposer’s NOR, para. 11, Ex. 711 (See
para. 4); and

7. Bruce Horovitz, In-N-Out Burger Gives Ad Business
to Seattle Agency, L.A. Times, Oct. 11, 1989.
Opposer’s NOR, para. 13, Ex. 713 (See paras. 1-
9).

While the evidence certainly indicates that opposer has
received favorable mention and recognition beyond its regional
presence, it is not an indication of how significant that
recognition is with the general consuming public overall.
Consumers who do not read the specific articles, do not watch
the specific Internet videos, and do not observe the celebrity
attention that opposer and its marks receive cannot be presumed
to be familiar with opposer and its marks. Again, opposer has
not provided any evidence whatsoever demonstrating the level of
recognition the general consuming population in the United
States has of its marks.
As we noted in a case with some similarities (but a better
developed record on fame):
Opposer certainly has enjoyed considerable success with
its restaurants. Opposer's sales in the period 1986-
1992 exceed $3.3 billion, with 1992 sales of over $614
million. Opposer traditionally spends 4% of its gross
sales revenues on advertising. Opposer's figures for
the period 1983-1990 show that opposer spent almost
$247.5 million on advertising, with expenditures in
1990 of $39.2 million.

The evidence of record, when taken as a whole,
indicates that opposer's star marks are well known in
its specific area of operation, namely California,
Arizona, Oregon and Nevada. In other words, the
Opposition No. 91183888
22

evidence does not establish that opposer's marks are
nationally famous. Rather, opposer has established
local notoriety in its trading area.

Carl Karcher Enters. Inc. v. Stars Rests. Corp., 35 USPQ2d 1125,
1130 (TTAB 1995).
Similarly, the totality of opposer’s evidence in this case
falls short of convincing us that opposer’s IN-N-OUT marks are
famous. While opposer undoubtedly enjoys a devoted following
and business success, at least within its areas of operation, it
has not clearly shown a level of recognition for its mark which
would justify the heightened scope of protection afforded truly
famous marks.
Decisions of other courts
Finally, opposer relies on a decision by the Supreme Court
of the Philippines and the Bureau of Legal Affairs findings that
opposer’s IN-N-OUT mark is famous. Opp. Brief at 6. However, a
“decision by another court based upon a different record is not
evidence in this proceeding.” Citigroup Inc. v. Capital City
Bank Group Inc., 94 USPQ2d 1645, 1665 (TTAB 2010), aff’d, 637
F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). By statute, this
Board has the duty to decide the right to federal registration
in an opposition. 15 U.S.C. § 1067(a). “This duty may not be
delegated by the adoption of conclusions reached by another
court on a different record. Suffice it to say that an
Opposition No. 91183888
23

opposition must be decided on the evidence of record.”
Citigroup Inc., 94 USPQ2d at 1665.
Again, in view of the extreme deference that is accorded to
a famous mark in terms of the wide latitude of legal protection
it receives, and the dominant role fame plays in the likelihood
of confusion analysis, it is the duty of opposer, the party
asserting that its marks are famous, to clearly prove it. Based
on the evidence presented by opposer, we cannot conclude that
its marks are famous for purposes of a likelihood of confusion
analysis.
Inherent distinctiveness and mark strength
In addition to the fame or renown of a mark, we also
consider the inherent distinctiveness of the mark, i.e., where
it fits in the continuum described as ranging from generic
through fanciful. See Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 189 USPQ2d 759, 764 (2d Cir. 1976). While
“the lines of demarcation ... are not always bright,” id., it is
axiomatic that those marks which are highly distinctive are
usually entitled to a broader scope of protection, while marks
falling towards the other end of the spectrum typically enjoy
little or no protection.
We find in this case that both opposer’s and applicant’s
marks are suggestive in that they both convey a message about
the respective services. That is, the marks both indicate to
Opposition No. 91183888
24

the prospective customer that the services are performed
quickly, in particular that the customer can drive “in and out.”
App. Byler Test. at 27; Opp. Byler Test. at 27; Opp. Wensinger
Test. at 78; App. Wensinger Test. at 12-13, 28, 30; App. NOR at
para. 4, Ex. 804 (para. 53 therein); Opp. Brief at 21. In this
respect, while both marks are inherently distinctive, they are
less distinctive than purely arbitrary or fanciful marks. As a
result, any similarity of the marks is less likely to cause
confusion than would be the case if the marks were arbitrary or
fanciful. Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d
158, 117 USPQ 295, 297 (CCPA 1958)(“Where a party chooses a weak
mark, his competitors may come closer to his mark than would be
the case with a strong mark without violating his rights.”).
Third-party registrations for similar marks
In our determination of the strength of opposer’s marks, we
have also considered applicant’s evidence and arguments that
“countless” marks containing various permutations of the terms
“in and out” are in use by third parties. In this regard,
applicant submitted third-party evidence in the nature of
numerous registrations for marks consisting in whole or in part
of the terms “in and out” for a wide variety of goods and
services. However, the probative value of this evidence is
limited because applicant presented no evidence concerning the
extent to which these third-party marks are used in commerce.
Opposition No. 91183888
25

See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir.
2005). Moreover, a review of the third-party registrations
reveals that none recite goods or services that are particularly
similar to those at issue in this case, and most recite goods
and services that are quite different. Thus, applicant’s
evidence does not establish that there is widespread use of
similar marks on related goods and services such that opposer’s
marks are weak and entitled to only a narrow scope of
protection. This factor, therefore, is at best neutral or
somewhat favors a finding of likelihood of confusion.
The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression

We now turn to the first du Pont factor, which focuses on
the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression.
See Id. In a particular case, any one of these means of
comparison may be critical in finding the marks to be similar.
See, e.g., In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988); and In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.4 (TTAB
1987).
With these principles in mind, we begin our analysis by
noting that applicant’s IN & OUT CAR WASH mark fully
incorporates as its distinctive portion opposer’s mark, IN &
Opposition No. 91183888
26

OUT. Likelihood of confusion has frequently been found where
one mark incorporates the entirety of another mark. See, e.g.,
Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526
F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL for gin and
BENGAL LANCER for nonalcoholic club soda, quinine water and
ginger ale); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ
155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); and In re S. Bend Toy Mfg. Co.,
218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUG for toy doll
carriages and LITTLE LADY for doll clothing).
The wording IN & OUT in both marks is identical in
appearance and sound. Similarity in sound alone may be
sufficient to support a finding that the marks are confusingly
similar. See In re White Swan Ltd., 8 USPQ2d at 1535 (TTAB
1988); and In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581,
1586 (TTAB 2007). The marks also share the same connotation of
quick services, i.e., getting “in and out” without delay.
However, because the similarity or dissimilarity of the
marks is determined based on the marks in their entireties, the
test for similarity cannot be predicated on dissecting the marks
into their various components; that is, the decision must be
based on the entire marks, not just on part of the marks. In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); and e.g., Franklin Mint Corp. v. Master Mfg. Co., 667
Opposition No. 91183888
27

F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that
a mark should not be dissected and considered piecemeal; rather,
it must be considered as a whole in determining likelihood of
confusion.”).
Applicant contends that its mark, in its entirety,
engenders a different commercial impression than that of
opposer’s mark. Applicant states that the wording “CAR WASH” in
its mark is a significant distinguishing factor because the “in
and out” element of the respective marks is weak. App. Brief at
26-27. However, the wording “CAR WASH” in applicant’s mark
clearly is generic for its services in this case, and thus
incapable of functioning as an indicator of source to
distinguish the source of its services from those of opposer.
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987); and In re Pennzoil Prods. Co., 20 USPQ2d 1753 (TTAB
1991). Thus, notwithstanding the suggestive nature of the
wording IN & OUT, it is the dominant wording in applicant’s mark
and the sole feature of opposer’s. Our primary reviewing court
instructs us that “[t]here is nothing improper in stating that,
for rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties.” See
In re National Data Corp., 224 USPQ at 751. For instance, “that
a particular feature is descriptive or generic with respect to
Opposition No. 91183888
28

the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark….” Id.
at 244 USPQ 751.
We find, therefore, that the dominant and distinctive
portion of applicant’s mark is identical to opposer’s mark and
that, when viewed in their entireties, the marks IN & OUT and IN
& OUT CAR WASH are more similar than dissimilar in appearance,
sound, connotation and overall commercial impression. As a
result, this du Pont factor favors a finding of likelihood of
confusion.
The similarity or dissimilarity and nature of the services
in the application and the services in opposer’s
registration

In determining whether services are related, this du Pont
factor requires that we must consider the services as they are
identified in the respective descriptions in the application and
registration. See, e.g., Paula Payne Prods. v. Johnson Publ’g
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). It is not
necessary that the services of applicant and opposer be similar
or competitive to support a holding of likelihood of confusion.
It is sufficient that the services be related in some manner, or
that the circumstances surrounding their use be 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
Opposition No. 91183888
29

some way associated with the same source. Miss Universe L.P. v.
Community Mktg. Inc., 82 USPQ2d 1562, 1568 (TTAB 2007).
Here, applicant is seeking to register its mark for
“automobile cleaning and car washing; automobile washing; car
washing; vehicle washing.”13 Meanwhile opposer, through its
licensee, is engaged in “motor vehicle body repairing and
painting.”14
Opposer relies on twenty-four15 third-party registrations
and Internet evidence from eleven third parties to demonstrate
that car washing services originate from the same source as
vehicle body repairing and painting services. Opp. Brief at 20;
Opp. Rebuttal NOR at paras. 17-40, 41-51, Exs. 817-840, 841-851.
We note that a number of the third-party registrations are owned
by foreign entities, and many of these in addition recite myriad
goods and services in multiple classes. Because these

13 Opposer also argues that its services are related to applicant’s oil change
services. Opp. Brief at 20. However, since the application at issue does
not recite oil change services, any relationship between oil change services
and motor vehicle body repairing and painting services is irrelevant to our
determination herein.
14 Opposer further argues that it is the original drive through restaurant, it
sponsors auto race cars and drivers, and its image and advertisements are
immersed in “car culture,” and that, as a result of these activities, its
core goods and services are related to those of applicant. Opposer points
out in addition that both it and applicant rely upon automobile traffic for
their business. Nonetheless, opposer acknowledges that it does “not have its
associates wash any vehicles at [its] restaurants” and further that its
sponsorship of race cars and drivers does not relate to car wash services.
Wensinger Test. at 15-16, 52. In any event, we are not relying upon
opposer’s registrations reciting these goods and services and, as a result,
the issue of their relationship to applicant’s recited services is not before
us.
15 The twenty-four third party registrations represent nineteen owners that
identify both car washing or cleaning services and vehicle repair or painting
services.
Opposition No. 91183888
30

registrations are not based on use in commerce they have no
probative value in showing the relatedness of the services, and
they have not been considered. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). However, opposer’s evidence
includes approximately fifteen third-party registrations owned
by fourteen different entities that are based on use in commerce
and recite services including those identified by both parties
herein.
We observe that third-party registrations are of very
limited probative value on the issue of likelihood of confusion
because they are “not evidence of what happens in the market
place or that customers are familiar with them.” AMF Inc. v.
Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269
(CCPA 1973). See also In re theDot Communications Network LLC,
101 USPQ2d 1062, 1067 (TTAB 2011). However, opposer
additionally made of record the following Internet evidence in
support of the relatedness of the services:
1. Anthony’s Car Wash and Detail Centers, at
www.anthonyscarwash.com (last visited Nov. 16, 2011)
(featuring car wash, detail, automotive, paint and body
services). Opp. Rebuttal NOR at para. 41, Ex. 841.

2. Collision Masters, at www.collisionmasters.us/Index.html
(last visited on Jan. 16, 2011) (no specific services
identified other than collision). Opp. Rebuttal NOR at
para. 42, Ex. 842.

3. Starbright Auto Body, at www.yelp.com/biz/starbright-
auto-body-phoenix (last visited Jan. 16, 2011) (no
Opposition No. 91183888
31

specific services identified other than auto body). Opp.
Rebuttal NOR at para. 43, Ex. 843.

4. Tidal Wave USA, at www.tidalwaveusa.com (last visited
Jan. 16, 2011) (relevant exterior services include
detailing, hand waxing, swirl free-buffing and scratch
removal, headlight restoration, overspray/graffiti
removal, paintless dent repair, bumper repair, “clear
bra” paint protection film). Opp. Rebuttal NOR at para.
44, Ex. 844.

5. The Yard, at www.superiorcarcare.com/yard.html (last
visited Jan. 16, 2011) (relevant services include hand
car wash, hand wash & wax, exterior detail, interior
detail, color sanding & paint correction, bumper repair,
scratch repair, paint touch up, wheel & rim repair,
paintless dent repair, windshield replacement, paint
protection film). Opp. Rebuttal NOR at para. 45, Ex.
845.

6. Arapahoe Collision and Mechanical, at
www.arapahoeauto.com/services.php (last visited Jan. 16,
2011) (detailing services include steam clean, blow out
air vents, clean windows & mirrors, leather treatment,
steam clean, buff, polish and wax exterior; collision
repair services include mechanical repairs, paint
matching, paintless dent removal, brake service, oil and
filter changes). Opp. Rebuttal NOR at para. 46, Ex. 846.

7. T&J Auto Body, at www.tandjautobody.com (last visited
Jan. 16, 2011) (no specific services listed other than
fixing cars). Opp. Rebuttal NOR at para. 47, Ex. 847.

8. My Premium Car Wash, at www.mypremiumcarwash.com (last
visited Jan. 16, 2011) (relevant services include hand
wash, auto detailing, power washing, pressure cleaning).
Opp. Rebuttal NOR at para. 48, Ex. 848.

9. Preston Auto Body, at www.sprestonautobody.com (last
visited Jan. 16, 2011) (no specific services listed other
than collision repair). Opp. Rebuttal NOR at para. 49,
Ex. 849.

10. Berardi’s Detailing, at www.berardisdetailing.com
(last visited Jan. 16, 2011) (relevant services listed
include auto detailing, auto body repair, auto painting,
Opposition No. 91183888
32

car repair, auto glass replacement, paintless dent
removal). Opp. Rebuttal NOR at para. 50, Ex. 850.

11. River City Auto Body, at www.rivercityautobody.net
(last visited Jan. 16, 2011) (no specific services listed
other than repairs). Opp. Rebuttal NOR at para. 50, Ex.
850.

Based on the information available from the evidence of
record, five of the above sources state that they offer car
washing, cleaning or detail services in addition to auto repair
or paint services. However, the probative value of such
Internet documents is limited. While they can be used to
demonstrate what the documents show on their face, documents
obtained through the Internet may not be used to demonstrate the
truth of what has been printed. See TBMP § 704.08(b) and
authorities cited therein. Thus, the Internet evidence made of
record by opposer does not prove that the five above-noted
entities actually provide car washing and cleaning services as
well as car repair and painting services, but simply that the
third parties responsible for the Internet postings of record
state that such services are available therefrom.
A party may increase the weight given website evidence by
submitting testimony and proof of the extent to which a
particular website has been viewed. Id. However, opposer does
not provide such testimony. Rather, Mr. Wensinger testified
that, “the primary business of a car wash business is distinct
from the primary business of a paint and body shop . . .,” and
Opposition No. 91183888
33

the washing of a vehicle would be incidental to the repair or
painting of a vehicle. App. Wensinger Test. at 114. Thus, the
testimony made of record in this case tends to support a finding
that the parties’ services are unrelated, and does not support
opposer’s evidence.
Determinations are reached based on the evidence of record.
In this case, the evidence falls short of establishing that
applicant’s car wash services are in fact related to opposer’s
services. As a result, this du Pont factor favors a finding of
no likelihood of confusion.
Channels of trade and classes of consumers
As is readily apparent, neither party’s recitation of
services contains any limitations as to their channels of trade
or the purchasers to whom its services are marketed. As a
result, and in accordance with our established case law, we must
presume that applicant’s services move in all channels of trade
that are normal therefor and are available to all the usual
purchasers thereof.
However, and as discussed above, opposer has failed to
introduce sufficient evidence to support a finding that its
services under its mark are related to applicant’s services in
its involved application. As such, we cannot presume that the
channels of trade for its services are the same as or
overlapping with those in which applicant’s services may be
Opposition No. 91183888
34

encountered. Cf. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any restrictions
in the identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold to
the same classes of purchasers through the same channels of
trade.”).
Further, aside from incidental sales of opposer’s ancillary
merchandise in the State of Missouri in which applicant is
located, neither the nature of the services themselves nor the
evidence of record supports a finding that such services travel
in common trade channels or are made available to the same
customers.
Actual confusion
The final du Pont factor discussed by the parties is the
lack of instances of actual confusion. Opposer acknowledges
that there have been no instances of actual confusion. App.
Wensinger Test. at 16-20. Applicant asserts that the absence of
actual confusion for seven years at the time of trial suggests
no likelihood of confusion. However, as has been said many
times, 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). Furthermore, it has often been recognized that such
Opposition No. 91183888
35

evidence is very difficult to obtain. See Lebanon Seaboard
Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB
2012). Thus, while evidence of actual confusion would mitigate
in favor of a finding of likelihood of confusion, the absence
thereof is not as compelling in our determination. As a result,
this du Pont factor is neutral, or at best, slightly favors
applicant.16
Balancing the factors
We have carefully considered all of the evidence pertaining
to the relevant du Pont factors, as well as the parties’
arguments with respect thereto. In balancing the relevant
factors, we conclude that despite the similarities between the
parties’ marks, there is insufficient evidence that applicant’s
“automobile cleaning and car washing; automobile washing; car
washing; vehicle washing” services are related to opposer’s
“motor vehicle body repairing and painting,” or that the
services are offered in common channels of trade to the same
classes of consumers. Based on the foregoing, opposer has not
proved likelihood of confusion.
Dilution by Blurring

16 We further note that while the “territorial separation” of the regions in
which opposer and applicant operate may be relevant to the absence of actual
confusion, because both the involved application and cited registration are
unrestricted as to their geographic scope, the question of geographic
limitations is otherwise irrelevant to our determination herein.
Opposition No. 91183888
36

Opposer claims that use of applicant’s mark would be likely
to “lessen the capacity of [o]pposer’s ... marks to identify and
distinguish [o]pposer’s services and goods.” Sec. Amend. Opp.
at para. 13. In order to prevail on a claim of dilution,
opposer must prove, as a threshold matter, that its mark became
famous prior to applicant’s first use. Trademark Act
§ 43(c)(1). As we have noted in other cases, “[f]ame for
dilution purposes is difficult to prove. ... The party claiming
dilution must demonstrate by the evidence that its mark is truly
famous.” Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1180 (TTAB
2001). In other words, the requirement for proving “fame” for
dilution purposes under Trademark Act § 43(c) is considerably
more stringent than the proof of “fame” in a likelihood of
confusion analysis. Moreover, while proof of the fame or renown
of the plaintiff’s mark is optional in a likelihood of confusion
case, it is a statutory requirement in a dilution analysis.
As noted, we do not find opposer’s marks famous for
likelihood of confusion purposes. Since it is even harder to
prove fame for dilution purposes, we need go no further; because
opposer has not established that its marks are famous, it cannot
prevail in its dilution claim.
Decision: The opposition to the registration of applicant’s
mark is dismissed.