National Automotive Parts Assn.

Trademark Trial and Appeal Board

Apr 10, 2003

No. 76175910 (T.T.A.B. Apr. 10, 2003)

Paper No. 14
TJQ
Mailed: 4/10/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re National Automotive Parts Association
________
Serial No. 76/175,910
_______
Daniel M. Riess of Cook, Alex, McFarron, Manzo, Cummings &
Mehler for applicant.
Jeffrey S. Molinoff, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Quinn, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by National Automotive
Parts Association to register the mark NAPA AUTOCARE “PEACE
OF MIND” for “business management supervision in the
administration of warranties made by independent dealers in
the field of motorized vehicle repair.”1
1 Application Serial No. 76/175,910, filed December 5, 2000,
alleging first use anywhere and first use in commerce on January
1, 1994. Applicant has claimed acquired distinctiveness under
Section 2(f) of the Trademark Act as to “Autocare.” Applicant
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/175,910
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the following previously
registered marks, both owned by the same entity, as to be
likely to cause confusion:
Both marks are for “vehicle repair and maintenance services
performed at applicant’s automobile dealership” (in
International Class 37); “automobile, van and truck leasing
claims ownership of Registration Nos. 1,782,992; 1,868,696; and
others.
Ser No. 76/175,910
3
services” (in International Class 39); and “automobile
dealership services” (in International Class 42).2
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.3 An oral
hearing was not requested.
Applicant argues that the common portion of the marks,
“PEACE OF MIND,” is “not only highly suggestive of the
services of the applicant and the cited registrant, but is
so diluted and common in use as to preclude perception by
purchaser’s [sic] as distinguishing source.” [emphasis in
original]. In support of applicant’s principal argument,
applicant submitted a Dialog electronic printout of third-
party registrations for marks which include the term “peace
of mind” as a portion thereof; photocopies of these third-
party registrations retrieved from the U.S. Trademark
Electronic Search System (TESS); Internet hits for the term
“peace of mind” pursuant to searches using www.google.com;
and printouts of lists of articles retrieved from the NEXIS
database wherein the term “peace of mind” appeared.
Applicant concludes that the diluted nature of the term
2 Registration No. 2,079,108, issued July 15, 1997, and
Registration No. 2,081,339, issued July 22, 1997, respectively.
3 Applicant, in its reply brief, refers to an attached “Exhibit
J” which apparently is a copy of applicant’s website home page.
This exhibit is not in the record file. In any event, such
submission is untimely and, thus, would not be considered.
Trademark Rule 2.142(d).
Ser No. 76/175,910
4
“peace of mind,” coupled with the presence of applicant’s
widely known and famous house mark “NAPA” together with the
term “AUTOCARE,” serve to sufficiently distinguish
applicant’s mark from the cited marks. In urging that the
reversal be reversed, applicant addresses the matter of a
Board decision involving applicant’s earlier attempt to
register the same mark for the same services. In that
decision the Board affirmed the Section 2(d) refusal based
on the same registrations as those involved herein.
Applicant essentially contends that the record relative to
the common use of the term “peace of mind” is significantly
more developed in the present case and that, therefore, a
different result is warranted.
The Examining Attorney maintains that the involved
marks are similar in that they are dominated by the phrase
“PEACE OF MIND.” The addition of the house mark “NAPA” and
the descriptive term “AUTOCARE” in applicant’s mark is,
according to the Examining Attorney, insufficient to
distinguish it from either of registrant’s marks. While
the Examining Attorney concedes that the term “peace of
mind” is suggestive, he disputes that the term is diluted
in the automotive field, pointing to the small number of
third-party registrations of marks employing the phrase in
the automotive field. Further, the Examining Attorney
Ser No. 76/175,910
5
contends that the services are closely related and that
there is an overlap in classes of consumers therefor. As
to the significance of the prior appeal, the Examining
Attorney takes the position that the issues are the same,
and that the only difference in the present case is that
applicant has submitted evidence relating to the purported
diluted nature of the phrase “peace of mind” which, the
Examining Attorney asserts, does not compel a different
result on the merits of the Section 2(d) refusal.
Our 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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Before turning to the merits of the present appeal, it
is helpful to review the Board’s determination in the
earlier appeal.4 As alluded to above, registration was
4 Application Serial No. 75/335,792, decided September 13, 2000.
The prior decision is not citable as precedent. The decision has
been considered, however, in view of the identity of issues
between that appeal and the present one. TBMP §101.03.
Ser No. 76/175,910
6
refused on the bases, inter alia, of the two registrations
cited herein. In affirming the Section 2(d) refusals to
register, the Board found the services to be related, and
the marks to be confusingly similar despite applicant’s
contention that the commonality of the phrase “peace of
mind” in the marks was an insufficient basis for a finding
of likelihood of confusion. While the Board found that the
phrase might be construed as suggestive of the desired
results of the services, the Board stated that “the marks
of registrant employing the phrase are neither merely
descriptive nor so highly suggestive that the addition of a
house mark by applicant would serve to obviate likelihood
of confusion.” The Board also made the specific remark
that the record did not include “any evidence of record
that third parties use the phrase such that it has become
commonplace in the automotive field.”
We first turn to compare applicant’s “business
management supervision in the administration of warranties
made by independent dealers in the field of automotive
repair” with registrant’s “vehicle repair and maintenance
services performed at applicant’s automobile dealership;
automobile, van and truck leasing services; and automobile
dealership services.” As is often stated, it is not
necessary that the services be identical or even
Ser No. 76/175,910
7
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
The Board, in the earlier decision, found the services
to be “directly related” and to be offered to “the same
persons.” Applicant’s appeal brief is completely silent on
this du Pont factor, and applicant has not introduced any
evidence to contravene this earlier finding. Indeed, our
own assessment is that the services are closely related.
Further, the services are offered to the same class of
purchasers, namely, ordinary consumers, as is reflected by
the specimens of record in the involved application. Thus,
we are in complete agreement with the Board’s earlier
analysis of this factor:
We completely understand that
applicant does not itself perform the
repair services or extend the warranty
related thereto; the independent
dealers affiliated with applicant
perform these services. Nonetheless,
we find the supervision of the
Ser No. 76/175,910
8
administration of this warranty program
which is performed by applicant under
the mark sought to be registered to be
not only directly related to the
warranties but also to be a service
which is proffered to the same persons
to whom the warranties have been
extended. Applicant itself has stated
that the specimens indicate to “the
ordinary customer” that applicant is
involved in the proper management of
the warranty program. (Reply brief, p.
3). If the warranty forms submitted
are true specimens of applicant’s use
of its mark, then the services being
proffered by applicant under the mark
are directed to the same persons to
whom the warranties have been made.
Applicant’s services involve the
management of the nationwide warranty
program through an administrator such
that the warranties made to the
purchasers will be fulfilled. Although
the independent dealers provide both
the repair services and the warranties
extended therewith, as the third-party
registrations show is often the case,
applicant’s supervision of the warranty
program is inextricably related to
these services.
We next turn to consider the marks, and we reach the
same conclusion as that of the earlier panel. We begin by
noting the general rule that the addition of a house mark
to one of two otherwise confusingly similar marks will not
serve to avoid a likelihood of confusion. See, e.g.: In
re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986).
Exceptions are made to this general rule, however, if (1)
there are some recognizable differences in the conflicting
Ser No. 76/175,910
9
product marks, i.e., the marks being used for the specific
goods or services, or if (2) the product marks are merely
descriptive or highly suggestive or play upon commonly used
or registered terms, so that the addition of the house mark
may be sufficient to render the marks as a whole
distinguishable. See: In re Christian Dior, S.A., 225
USPQ 533 (TTAB 1985) and the cases cited therein.
We find, as did the earlier panel, that the phrase or
slogan “PEACE OF MIND” is the dominant feature of
registrant’s marks. The design feature is minimal in
Registration No. 2,079,108 and even in Registration No.
2,081,339, the burning log design, although noticeable,
would not be the portion which would be relied upon by
purchasers in referring to the source of the services.
See: In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987) [literal portion generally dominates over design
portion]. Further, the term “STANDARD EQUIPMENT” is
suggestive when used in connection with services involving
automobiles.
That brings us now to the principal thrust of
applicant’s present attempt to register its mark herein,
namely, that there is sufficient evidence in the record
(found to be lacking in the first appeal) to support
applicant’s argument that “PEACE OF MIND” is so commonly
Ser No. 76/175,910
10
used that confusion between applicant’s and registrant’s
marks is not likely to occur among purchasers.
After carefully examining the evidence submitted
herein that was not of record in the earlier appeal, we
nonetheless reach, after balancing the relevant factors,
the same result on the merits, that is, there is a
likelihood of confusion between applicant’s and
registrant’s marks.
Exhibit A consists of an electronic printout from the
Dialog database showing third-party registrations of marks
employing the phrase “PEACE OF MIND.” Exhibit B consists
of copies of the listed registrations. As pointed out by
the Examining Attorney, however, few of the registrations
cover services that are even minimally related to the
automotive repair industry, and none of the registrations
covers services that are directly related to the industry.
Thus, other than registrant, it would appear that no third-
party owns a registration employing the subject phrase in
the automotive repair field.
The GOOGLE and NEXIS searches (Exhibits C-G) likewise
are of limited value. It is no surprise that there were
thousands of hits when the phrase “peace of mind” was
searched in connection with discussions about cars. We say
this because the phrase is an ordinary figure of speech.
Ser No. 76/175,910
11
As best we can tell from the short excerpts of record, it
would appear that the uses are in the nature of a figure of
speech, and not in the nature of a trademark. Thus, we are
not convinced by applicant’s argument that the “PEACE OF
MIND” portion of registrant’s marks should be given little
weight in comparing the marks on the rationale that
purchasers will not perceive the matter to be a source
distinguishing feature, but rather will look to other
portions of the marks, and will not be confused unless the
other portions are similar. Again, while the evidence
shows everday language uses of “peace of mind” in
connection with automobiles, the evidence falls short of
establishing that purchasers no longer would look to the
phrase as a source distinguishing feature.
There is no question but that the phrase “peace of
mind” falls within the general vernacular and has a
recognized and commonly understood meaning (in this case,
of freedom from anxiety or annoyance). However, as pointed
out by the earlier panel, so do most words which are used
as marks. We do not find that applicant’s evidence
establishes that the phrase is merely descriptive of the
services involved herein. Although the phrase “peace of
mind” may be suggestive of the desired results of the
services, the marks of registrant employing the phrase are
Ser No. 76/175,910
12
neither merely descriptive nor so highly suggestive that
the addition of applicant’s house mark NAPA and the
descriptive term AUTOCARE in applicant’s mark serves to
avoid likelihood of confusion.
To the extent that any of the points argued by
applicant may cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 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).
Decisions: The refusals to register are affirmed.