James M. Medlock

Trademark Trial and Appeal Board

Jul 15, 2005

No. 78176264 (T.T.A.B. Jul. 15, 2005)

Mailed:
July 15, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re James M. Medlock
________

Serial No. 78176264
_______

Timothy B. McCormack of Barnard & McCormack for James M.
Medlock.

Susan C. Hayash, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Chapman and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

James M. Medlock filed, on October 19, 2002, an
application to register on the Principal Register the mark
ROAD ARMOR for “aftermarket fitted vehicle bumpers and hard
tops” in International Class 12. The application is based
on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and April 15, 1995 is claimed in the
application as applicant's date of first use of the mark
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 78176264
2
anywhere and June 1, 1996 is claimed in the application as
applicant's date of first use of the mark in commerce.
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 OFFROAD ARMOR for “land
vehicle accessory, namely, a protective cover made of
magnetic sheeting that covers and protects the paint of the
vehicle exterior body panels while the vehicle is in
operation or being towed” 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. 2243657, issued May 4, 1999. Section 8
affidavit accepted.
Ser No. 78176264
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 first to the marks. Both marks are
constructed in the same manner – consisting of two words,
ROAD ARMOR and OFFROAD ARMOR; ROAD and ARMOR are in the
same order in both marks; and ROAD and ARMOR are both
adjacent to each other, separated by a space. Further,
applicant's mark does not include any additional wording,
which possibly could serve to distance applicant's mark
from registrant’s mark. Applicant simply did not include
the term OFF in its mark.
Applicant, in arguing that the marks are
“substantially different,” maintains that each mark has a
dominant portion; that the dominant portion is “the first
element to be articulated by the consumer”; that the
dominant portion of OFFROAD ARMOR is OFFROAD and the
dominant portion of ROAD ARMOR is ROAD; and that “there is
no visual similarity, no phonic similarity and no
similarity in meaning between the dominate [sic] portions
of the two marks.”
A term is not necessarily the dominant term in a mark
simply because the term appears first in a mark. Other
Ser No. 78176264
4
considerations are involved in determining whether a mark
has a dominant portion, such as the distinctiveness of
other terms in the mark. See 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, § 19:72 (4th
ed. 2005) (“a descriptive part of a composite is regarded
as a weaker and less dominant portion which makes a lesser
impact on the ordinary customer.”)
Applicant contends that “the armor portion of the mark
actually describes a function of the product, namely,
‘magnetic sheeting that covers and protects the paint,’”;
and that “[i]t would be improper to give any great weight
to a purely descriptive term such as ‘armor.’” Applicant
has not provided, however, any evidence of the asserted
descriptiveness of “armor” in the relevant automotive
field. ARMOR has not been disclaimed in either the cited
registration or in the involved application. Additionally,
“armor” as defined in The American Heritage Dictionary of
the English Language (2003), does not include a definition
in the automotive context.2 The nearest relevant definition

2 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). In this case, we take judicial notice
of the following definition of “armor” in The American Heritage
Dictionary of the English Language (2003):
• A defensive covering, as of metal, wood, or leather, worn
to protect the body against weapons. (footnote continued)
Ser No. 78176264
5
of “armor” would be a “protective covering,” but in the
context of military vehicles such as tanks. Simply put,
applicant has not persuaded us that ARMOR, in the context
of registrant’s goods, is descriptive thereof.
We add that there is no evidence in the record that
ARMOR is a weak term in the automotive area. Further,
there is no reason to believe that the terms ROAD or
OFFROAD would have more of an impact on the buyer in
perceiving the marks.
We therefore give ROAD, OFFROAD and ARMOR equal weight
in comparing the marks as a whole and find that the marks
are highly similar in sound, appearance and commercial
impression.
Applicant argues that his mark has a different meaning
than that of the registered mark:
“[O]ff-road” is the opposite of “on-road.” The
first means going where there is [sic] no roads.
The second means normal driving.

Although the terms “road” and “off-road” have slightly
different meanings, nonetheless, both relate to the

• A tough, protective covering, such as the bony scales
covering certain animals or the metallic plates on tanks or
warships.
• A safeguard or protection: faith, the missionary's armor.
• a. The combat arm that deploys armored vehicles, such as
tanks.
b. The armored vehicles of an army.

Ser No. 78176264
6
location a vehicle is driven. This slight difference is
not so significant as to sufficiently distinguish the marks
in terms of meaning, or of appearance, sound or commercial
impression. In saying this, we are mindful that the
comparison of the marks is not made on a side-by-side basis
and that recall of purchasers is often hazy and imperfect.
We next consider the similarity or dissimilarity of
registrant's and applicant's goods, the relevant trade
channels and the purchasers of such goods. Applicant's
“aftermarket fitted vehicle bumpers and hard tops” serve to
protect the vehicle from damage.3 Similarly, registrant’s
magnetic sheeting serves to protect the paint of the
vehicle “while the vehicle is in operation or being towed.”
Thus, the goods have an identical purpose, i.e., protection
of the vehicle. Further, because nothing in the
identification of goods restricts the goods to particular
types of vehicles, the goods could be used with all
vehicles.
Applicant states that his goods “are very different”
from registrant’s goods; that his goods “are very

3 By definition, a “bumper” functions to protect. See American
Heritage Dictionary of the English Language, Fourth Edition
(2003) definition of “bumper” (of which we take judicial notice):
“A usually metal or rubber bar attached to either end of a motor
vehicle, such as a truck or car, to absorb impact in a
collision.”

Ser No. 78176264
7
specialized and designed to actually change the look of the
automobile and make it appear to be more of a custom
automobile”; and that in contrast, registrant's goods are
“very specific in that they are sold to off-road
enthusiasts to protect the paint on their trucks.”
Applicant's arguments are not well taken in light of
registrant's and applicant's identifications of goods, as
well as applicant's substitute specimens. First,
registrant's identification of goods does not state that
registrant's goods are sold only to off-road enthusiasts –
the identification states that registrant's exterior body
panels serve to protect the exterior of the vehicle “while
the vehicle is in operation or being towed.” Thus, we do
not agree that only off-road enthusiasts are registrant’s
customers. Second, registrant's identification of goods
does not limit the use of the goods to “off-road” only.
Because restrictions may not be read into an identification
of goods, we must assume that the goods are used in all
normal uses, Kangol Ltd. v. KangaROOS U.S.A., Inc. 974 F.2d
161, 23 USPQ2d 1945 (Fed. Cir. 1992), including “while the
vehicle is in operation,” i.e., on highways, primary roads
and secondary roads. Third, applicant's substitute
specimens depict trucks, off–road, on rugged terrain.
Thus, applicant's own specimens show that its goods can be
Ser No. 78176264
8
used on trucks in an off-road environment, the very manner
in which applicant claims the registrant’s goods would be
used.
We find that the identified goods are related.4
Additionally, neither the identification of goods in
applicant's application nor the identification of goods in
the cited registration includes any restrictions as to
purchasers or trade channels. Hence, we must presume that
both registrant's and applicant's goods are suitable for
sale to all potential purchasers of such goods and will
travel in all channels of trade that would be normal for
such goods. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
It is our view that the same classes of purchasers will
likely purchase both registrant's and applicant's goods.
The “very particular car and truck buffs” – as applicant
identifies his purchasers - who purchase applicant's goods
“as specialized automobile enhancements” would also be
likely to purchase registrant's magnetic sheeting to
protect the car’s and truck’s exterior “while the vehicle
is in operation or being towed,” either by a towing service

4 In reaching this conclusion, we have not relied on the ten
third-party registrations made of record by the examining
attorney. The goods identified in these registrations are not
sufficiently related to registrant’s goods, or are not specific
enough to allow us to conclude that they actually refer to the
same goods involved in this application and the cited
registration.
Ser No. 78176264
9
or by themselves.5 Certainly, car and truck enthusiasts who
take pride in the appearance of their cars and trucks,
including the paint on their cars and trucks, would be
purchasers of both applicant's and registrant's goods.
This is evident from the substitute specimens filed by
applicant, which shows a truck with oversized wheels and
large bumpers, navigating a hill, off-road. Thus, we find
that registrant's and applicant's related products would
likely be purchased by the same or overlapping classes of
purchasers through the same or overlapping channels of
trade.
Applicant has also argued that “applicant's services
[sic] are sold as specialized automobile enhancements to
very particular car and truck buffs, the purchasers take
great care before making their purchases and are not likely
[to] be confused.” However, even if care is exercised in
making such purchases, this care is outweighed by the
similarities between the marks and the goods sold
thereunder. Quite simply, even if the purchasers are
careful enough to note the differences in the marks, they

5 Applicant suggests that the OFFROAD ARMOR goods “are sold to
very particular and very different off-road enthusiasts”; and
that the registrant's goods are “used to protect a vehicle during
‘off-road’ sessions.” However, registrant's identification of
goods is not so restricted; it provides that the goods are used
“while the vehicle is in operation [off-road or otherwise] or
being towed.”
Ser No. 78176264
10
are likely to assume that the differences relate to
different uses of the goods, rather than to differences in
the source of the goods.
Applicant next argues that there has been no actual
confusion between applicant's mark and registrant's mark.
The fact that an applicant in an ex parte case is unaware
of any instances of actual confusion is generally entitled
to little probative weight in the likelihood of confusion
analysis, inasmuch as the Board in such cases generally has
no way to know whether the registrant likewise is unaware
of any instances of actual confusion, nor is it usually
possible to determine that there has been any significant
opportunity for actual confusion to have occurred. See,
Majestic Distilling, supra at 1317; and In re Jeep
Corporation, 222 USPQ 333 (TTAB 1984).
Also, applicant maintains that “applicant's use of the
mark was first in time”; and that “any and all doubts as to
the likelihood of confusion should be drawn in applicant's
favor because they are the first user of the mark.”
However, there are no doubts as to the likelihood of
confusion in this case. Further, applicant mistakes the
test. In those ex parte cases which discuss the resolution
of doubt, doubt is resolved in favor or the registrant,
which may or may not be the prior user of the mark. Here,
Ser No. 78176264
11
applicant is obviously not the registrant, and therefore
doubt would not be resolved in its favor. Moreover, to
whatever extent applicant is asserting that it has priority
of use, priority of use is not an issue in an ex parte
appeal. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278
(CCPA 1971); and In re Wilson, 57 USPQ2d 1863 (TTAB 2001).
Accordingly, upon review of all of the relevant du
Pont factors, and particularly the similarities of the
marks and the related nature of the identified goods, and
the commonality of purchasers and trade channels, we find
that applicant's mark ROAD ARMOR for “aftermarket fitted
vehicle bumpers and hard tops” is likely to cause confusion
with the registered mark OFFROAD ARMOR for “land vehicle
accessory, namely, a protective cover made of magnetic
sheeting that covers and protects the paint of the vehicle
exterior body panels while the vehicle is in operation or
being towed.”
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.