Moonshine, L.L.C.

Trademark Trial and Appeal Board

Nov 2, 2009

No. 77144109 (T.T.A.B. Nov. 2, 2009)

Mailed:
November 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Moonshine, L.L.C.
________

Serial No. 77144109
_______

Lawrence R. Oremland of Lawrence R. Oremland, P.C. for
Moonshine, L.L.C.

Thomas M. Manor, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney)
_______

Before Seeherman, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Moonshine, L.L.C. has appealed from the final refusal
of the trademark examining attorney to register MOONSHINE
and design, as shown below, for the following goods and
services:
Vehicle care products, specifically
designed for automobile, motorcycle and
boat enthusiasts, featuring
preparations for cleaning, maintaining
and preserving automobiles, motorcycles
and boats, namely soap, detergent,
upholstery cleaner, window cleaner,
wheel cleaner, rubber cleaner and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77144109
2
preservative, plastic cleaner and
preservative, rubbing compound,
cleaning clays; preparations for
polishing and protecting automobiles
and boats, namely, polish, chrome
polish, steel polish, aluminum polish,
wood polish, leather polish, polymer
sealant, wax (Class 3); and

on line [sic] retail store and catalog
ordering services for automobile,
motorcycle and boat enthusiasts,
featuring, products and accessories for
the cleaning, repair, restoration and
maintenance of automobiles, motorcycles
and boats (Class 35).1

The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§2(d), on the ground that applicant’s mark so resembles the

1 Application Serial No. 77144109, filed March 29, 2007, based
on Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b)
(intent-to-use). The application also includes goods in Class
25. No refusal issued with respect to these goods, so regardless
of the outcome of this appeal, a registration will issue for the
Class 25 application. It is noted that applicant, in its recital
of the prosecution history, stated that its attorney telephoned
the examining attorney after the filing of its appeal and offered
a further restriction to the identification of goods and services
to characterize them as “boutique” items. Applicant further
states that the examining attorney said that such a restriction
would not overcome the refusal of registration. Applicant never
formally requested remand in order to amend its identification,
or otherwise submitted an amendment, and the issue on appeal
remains the refusal based on the identification recited above.
Ser No. 77144109
3
mark MOONSHINE, registered in standard character form for
“polishing cloths” in Class 21,2 that it is likely to cause
confusion or mistake or to deceive.
The appeal has been fully briefed.
As a preliminary matter, we note that with its brief
applicant has resubmitted most of the exhibits that were
previously made of record, totaling more than 85 pages. It
is not necessary to resubmit such exhibits, as they are
already part of the file, and the Board discourages such a
practice. In re SL&E Training Stable Inc., 88 USPQ2d 1216,
1220 n.9 (TTAB 2008) (attaching exhibits to the brief of
material already of record only adds to the bulk of the
file, and requires Board to determine whether attachments
had been properly made of record); In re Thor Tech Inc., 85
USPQ2d 1474, 1475 n. 3 (TTAB 2007) (material attached to
briefs that is duplicative of matter submitted during
examination is already part of application file and its
submission with briefs is unnecessary).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic

2 Registration No. 3016030, issued November 15, 2005.
Ser No. 77144109
4
Distilling Co., 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 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).
Turning first to the marks, they are identical in
pronunciation and connotation. Although applicant’s mark
is depicted in a particular font, this does not serve to
distinguish the marks because the cited mark is registered
in standard character form. Therefore, the protection to
be accorded that mark is not limited to a particular font,
and would include the font in which applicant’s mark is
shown.3 See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings
are not limited to any particular rendition of the mark).
We acknowledge that in applicant’s mark the word MOONSHINE

3 Applicant has argued, based on evidence of third-party uses of
various marks, e.g., SELVYT, TORQUE CARS, MEGUIAR’S, that in the
marketplace for the products at issue the products are promoted
by highly distinctive logos. Aside from the fact that many of
these logos show the marks in block letters or rather ordinary
fonts, this argument has no effect on the protection to be
accorded the cited registration. That protection extends to the
depiction of the registered mark in the same font used by
applicant.
Ser No. 77144109
5
is shown on a slant, and has a curlicue design below it,
but these elements do not distinguish the marks either. As
a general rule, if a mark comprises both a word and a
design, then the word is normally accorded greater weight
because it would be used by purchasers to request or refer
to the goods or services. In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). That is the situation in the
present case; consumers are unlikely to note or remember
that the word in applicant’s mark is shown on a slant,
while the curlicue does not convey a separate impression,
but merely emphasizes the word MOONSHINE.4 The fact that,
when the marks are compared side-by-side, one can point out
specific differences in appearance is not a sufficient
basis on which to distinguish the marks. Under actual
marketing conditions, consumers do not necessarily have the
luxury of making side-by-side comparisons between marks,
and must rely upon their imperfect recollections. Dassler
KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB
1980). Further, even if they were to note the slant of and
curlicue design in applicant’s mark, and the absence of
these elements in the registrant’s, the differences are so

4 Even if we posit, as applicant argues, that consumers will note
the appearance of applicant’s mark on its website, they will
refer to the online retail services verbally by the word
MOONSHINE.

Ser No. 77144109
6
minor that consumers are likely to regard the marks as
variations of each other, identifying goods and services
emanating from a single source. Overall, the marks convey
identical commercial impressions.
This du Pont factor strongly favors a finding of
likelihood of confusion.
As for the goods, the registrant’s polishing cloths
and applicant’s identified “preparations for polishing and
protecting automobiles and boats, namely, polish, chrome
polish, steel polish, aluminum polish, wood polish, [and]
leather polish” are, on their face, complementary products.
That is, the various types of polish named in applicant’s
identification can be applied and used with the polishing
cloths identified in the cited registration.5 Although it
is obvious that polish can be applied with a polishing
cloth, we also have evidence submitted by the examining
attorney in support of this point. See, for example, the
article in Torque Cars, www.torquecars.com, about car
cleaning tips, which describes how one polishes a car,
stating that “Use one cloth to apply the polish, another to

5 We have limited our discussion to those of applicant’s goods
and services that we deem most similar to the registrant’s goods,
since likelihood of confusion must be found if there is likely to
be confusion with respect to any item that comes within the
identification of goods and services in each class of the
application. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Ser No. 77144109
7
buff it off and then with a really soft cloth buff up the
polish to a showroom finish.” The examining attorney has
also submitted evidence to show that polishing cloths are
used to polish automobiles and motorcycles and boats, and
that car polishes and polishing cloths and pads are sold
through the same websites. For example, the BizRate
website, www.bixrate.com, lists, under “Polish in
Automotive Care,” Turtle Wax Color Cure Car Polish, 3M Hand
Glaze Imperial Car Polish, Ultimate Glaze Car Polish,
Polish-Pad and Flitz Buff N Polish Ball Cloth. Mothers
Vehicle Care Kits, http://shopping.yahoo.com, lists, inter
alia, Mothers PowerBall Metal Kit with products to clean
and shine metal surfaces and Mothers Polish Brush & Towel
Kit containing exterior and interior brushes and towel,
while the Pinnacle Supplies website,
www.pinnaclesupplies.com, lists metal polishes and
polishing cloths.
Applicant’s services and the registrant’s goods are
also complementary: the items sold through applicant’s
identified “on line retail store and catalog ordering
services for automobile, motorcycle and boat enthusiasts,
featuring, products and accessories for the cleaning,
repair, restoration and maintenance of automobiles,
motorcycles and boats” can include, as such products and
Ser No. 77144109
8
accessories, polishing cloths. Thus, one could order a
polishing cloth through applicant’s website and later
encounter a MOONSHINE polishing cloth in an automotive or
other brick and mortar store. We also point out that goods
and the services involving the sales of such goods have
frequently been held to be commercially related. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); Safety-Klean Corporation v. Dresser
Industries, Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA 1975);
Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003); and
Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983).
It is not necessary that the goods or services of
applicant and the registrant be similar or competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
sufficient that the respective goods or services are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. See In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Here, the complementary nature of applicant’s goods
and services, and the registrant’s goods, as well as the
fact that goods of this type are advertised and sold
Ser No. 77144109
9
together, and goods such as those identified in the cited
registration are sold through online retail stores, are
sufficient to demonstrate the relatedness of the goods and
services and that they are sold through the same channels
of trade.
Moreover, the greater the degree of similarity between
the applicant's mark and the cited registered mark, the
lesser the degree of similarity between the applicant's
goods or services and the registrant's goods or services
that is required to support a finding of likelihood of
confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB
2001). Here, as noted, the marks are identical in
pronunciation, connotation and commercial impression, and
virtually identical in appearance. Accordingly, only a
viable relationship between applicant’s goods and services
and the registrant’s goods is necessary. The complementary
nature of the goods and services, and the evidence
submitted by the examining attorney, demonstrate more than
just a viable relationship. Accordingly, the du Pont
factors of the similarity of the goods and services and the
channels of trade favor a finding of likelihood of
confusion.
Applicant has pointed to evidence it obtained from a
Google search (submitted with the response filed August 5,
Ser No. 77144109
10
2008) that shows the registrant’s mark is used for a
“jewelry polishing cloth.”6 To the extent that applicant is
suggesting that “in the real world” there would be no
likelihood of confusion because these are the registrant’s
goods, that argument can be given no consideration. The
question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-à-
vis the goods and/or services recited in the cited
registration, rather than what the evidence shows the goods
and/or services to be. See In re Dixie Restaurants Inc.,
41 USPQ2d at 1534; Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). That is because the registrant is entitled to

6 The examining attorney attached a “more complete image” with
his brief. Although normally we would not consider evidence
submitted with an appeal brief, see Trademark Rule 2.142(d), in
the present situation applicant, in its reply brief, specifically
consented to our consideration of the exhibit, and therefore we
deem it stipulated into the record. Moreover, even without such
stipulation, it would be permissible for us to consider it
because it merely enlarges an exhibit that applicant had
previously made of record, and therefore the applicant must be
deemed to have been aware of it. See In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986); TBMP
§ 1207.01. However, we have not accepted applicant’s suggestion
that we view registrant’s web site, the address for which
applicant provided in its reply brief. The material on that
website, other than the webpage submitted applicant and the
examining attorney, is not of record. In any event, as discussed
in the opinion, such evidence cannot serve to restrict the scope
of protection of the cited registration, which is for “polishing
cloths” without any limitation as to use for particular types of
goods.
Ser No. 77144109
11
the presumptions provided by Section 7(b) of the Trademark
Act, including the exclusive right to use the mark on the
goods specified in the certificate of registration.
Therefore, in determining the issue of likelihood of
confusion, we must deem the cited mark to be used for
“polishing cloths” of all types, including those used to
apply polish to automobiles, motorcycles and boats.
Applicant’s primary argument is that its goods and
services, as reflected in its identification, are directed
to automobile, motorcycle and boat enthusiasts, and that
they are discriminating purchasers. We accept that
enthusiasts would be more interested in the products they
use for their vehicles, and therefore would pay greater
attention to the trademarks for those products.7 However,

7 In reaching our conclusion that enthusiasts are discriminating
purchasers, we have given no evidentiary value to applicant’s
exhibit A, submitted on January 16, 2008, which is a “narrative
prepared by applicant’s representative.” It appears to be
nothing more than attorney argument submitted in the form of an
exhibit. And if the reference to “representative” is meant to be
someone other than applicant’s counsel, the individual’s position
has not been identified. Such material, if it were by someone
knowledgeable in the field, would have had far more persuasive
value if it had been submitted in the form of a declaration.
Similarly, the anecdotal statement reported in applicant’s
response filed August 5, 2008 has limited probative value:
“Based on a conversation undersigned [applicant’s attorney] had
recently with a relative who is an automobile enthusiast,
…undersigned believes, and based on that conversation submits,
that ….” Applicant’s attorney’s conclusory views that he arrived
at based on a hearsay conversation with a relative cannot
substitute for a declaration from a person with actual knowledge
or experience.

Ser No. 77144109
12
even careful consumers are likely to be confused by the use
of virtually identical marks used for related goods and
services. As explained in our discussion of the marks, the
particular font in which applicant’s mark is displayed
cannot serve to distinguish applicant’s mark from the
registrant’s because the cited registration is not limited
to a particular format. Thus, we cannot assume that
consumers will be alerted by the different manners in which
the marks are displayed that they represent a difference in
source. Moreover, applicant’s argument suggests that the
enthusiasts who are the consumers of the goods and services
would not be confused because they would go behind the
trademarks to “check out who made the products (i.e. who is
the source of the products).” (emphasis in original)
Response filed August 5, 2008. That argument is not
persuasive. The purpose of the trademarks themselves is to
identify the source of the goods and services. We must
determine the issue of likelihood of confusion based on the
trademarks involved, not on whether a company name may also
appear on the label or website, or whether the consumer
would use information other than the trademark to ascertain
the source of the goods or services. Thus, while the du
Pont factor of the conditions of purchase favor applicant,
because, in this case, the marks are virtually identical,
Ser No. 77144109
13
the conditions of purchase factor does not outweigh the
other factors favoring a finding of likelihood of
confusion.
We also consider the strength of the cited mark.
MOONSHINE is an inherently distinctive mark and, therefore,
on the arbitrary/suggestive/descriptive/generic spectrum,
must be considered strong. It also, because of the double
(or quadruple) entendre of “shine” for a polishing cloth
and as meaning “moonlight,” “nonsense” and “illegally
distilled whiskey,”8 is rather memorable. There is no
evidence of third-party use of MOONSHINE marks. Although
applicant has pointed to a now-cancelled third-party
registration for MOONSHINE for, inter alia, compact discs,9
third-party registrations do not show that a mark is in
use, or that the public is familiar with them. Nor does a
single registration, and for goods that are different from
polishing cloths, show that MOONSHINE has significance for
polishing cloths or for polishes that would indicate that
it is not a strong mark, or that the cited registration is

8 The American Heritage Dictionary of the English Language, 4th
ed. © 2000. We take judicial notice of this definition, which
the examining attorney submitted in his brief. 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).
9 Applicant did not submit a copy of this registration, but the
examining attorney made the registration of record.
Ser No. 77144109
14
not entitled to a broad scope of protection. Applicant
appears to rely on the cancelled registration to argue that
because 1) this registration co-existed for a time with the
cited registration (the third-party registration issued on
December 26, 2000, and was cancelled in 2007, while the
cited registration issued on November 15, 2005); 2)
polishing cloths can be used with compact discs; and 3) the
Office found no likelihood of confusion between those
marks, we should similarly find no likelihood of confusion
in the present case. There are many problems with this
argument, not least of which is the well-established
principle that even if some prior registrations have some
characteristics similar to the applicant’s, the USPTO’s
allowance of such prior registrations does not bind the
Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). Moreover, we do not find the
combination of compact discs and polishing cloths analogous
to the combination of applicant’s identified polishes and
online store services that include polishing cloths and the
registrant’s identified polishes.10 There are such
significant differences between the third parties’ goods

10 It would be a closer analogy if applicant were attempting to
register its mark for automobiles, as a product on which a
polishing cloth might be used, as opposed to polishes, which are
applied with a polishing cloth.

Ser No. 77144109
15
and applicant’s goods and services that the fact that the
third-party registration and the cited registration
coexisted is not persuasive.
We have focused our discussion on the above du Pont
factors because we have found them to be most relevant. To
the extent that any other factors are applicable, we treat
them as neutral.
After considering all the evidence and arguments in
light of the du Pont factors, we find that applicant’s mark
for its identified goods and services is likely to cause
confusion with the cited registration. To the extent that
there is any doubt on this issue, we follow the well-
established principle that such doubt must be resolved in
favor of the registrant and prior user. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration as to Classes 3
and 35 are affirmed. After the period for appeal has
passed, the application will be forwarded to publication
for the goods in Class 25.