Palm Beach Motoring Accessories, Inc.

Trademark Trial and Appeal Board

Jul 2, 2013

No. 85264259 (T.T.A.B. Jul. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Palm Beach Motoring Accessories, Inc.
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Serial No. 85264259
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Leo Zucker of Law Office of Leo Zucker for Palm Beach Motoring Accessories, Inc.

Giancarlo Castro, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
_____

Before Bergsman, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Palm Beach Motoring Accessories, Inc. (“applicant”) seeks registration of the
mark AUTOPIA CAR CARE, in standard characters and with CAR CARE
disclaimed, for “On-line retail store services featuring products for cleaning,
polishing and detailing motor vehicles” and “Providing on-line publications in the
nature of instructional guides in the fields of cleaning, polishing and detailing motor
vehicles.”1

1 Application Serial No. 85264259, filed March 11, 2011, based on first use dates of
April 21, 1999.
Serial No. 85264259
2

The examining attorney refused registration of the mark under Section 2(d)
of the Act, on the ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the previously-registered mark AUTOPIA in
typed form for “automobile repair and service” as to be likely to cause confusion.2
After the refusal was made final, applicant appealed, and after its request for
reconsideration was denied, applicant and the examining attorney filed briefs. We
affirm the refusal to register.
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (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, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). We discuss each of the
du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence. To the extent that any other du Pont factors for which no

2 Registration No. 2046127, issued March 18, 1997; renewed.
Serial No. 85264259
3

evidence or argument was presented may nonetheless be applicable, we treat them
as neutral.
Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is,
we may not dissect the marks into their various components. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). The test
is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods and
services offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks (in this case car owners).
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l Data Corp., 224 USPQ at 751
(“There is nothing improper in stating that, for rational reasons, more or less weight
Serial No. 85264259
4

has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”); Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d
759, 105 USPQ 266, 268 (CCPA 1955).
In this case, the dominant element of applicant’s mark is the word AUTOPIA,
which is the entirety of registrant’s mark. Indeed, applicant’s services relate to
caring for (i.e. “cleaning, polishing and detailing”) cars, and accordingly applicant
has disclaimed CAR CARE, which therefore has little significance in our likelihood
of confusion determination. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224
USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not
disclaimed word ROADHOUSE, is dominant element of BINION’S ROADHOUSE);
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed
matter is often “less significant in creating the mark’s commercial impression”).
Furthermore, AUTOPIA appears first in applicant’s mark, which also
establishes that it is the dominant element of applicant’s mark. Presto Prods. Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”); Palm Bay Imports Inc., 73 USPQ2d 1692; Century 21 Real
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Serial No. 85264259
6

for, automobile-related products and services. Applicant’s Appeal Brief at 2.
Therefore, in order to determine whether registrant’s mark is nevertheless entitled
to protection against registration of AUTOPIA CAR CARE for applicant’s services
requires us to compare applicant’s services to registrant’s.
Accordingly, turning to the services, it is settled that they need not be
identical or even competitive in order to support a finding of likelihood of confusion.
It is enough that the services are related in some manner or that the circumstances
surrounding their marketing are such that they would be likely to be seen by the
same persons under circumstances which could give rise, because of the marks
used, to a mistaken belief that applicant’s and registrant’s services originate from or
are in some way associated with the same source or that there is an association
between the sources of the services. Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp.,
18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504,
507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854
(TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The issue is not whether purchasers would confuse the services, but
rather whether there is a likelihood of confusion as to the source of the services. In
re Rexel Inc., 223 USPQ at 832.
Here, applicant provides retail store services and publications online, all
relating to “cleaning, polishing and detailing motor vehicles,” while registrant
provides “automobile repair and service.” By definition, the service component of
Serial No. 85264259
7

registrant’s “automobile repair and service,” which is unlimited in scope, could
encompass automobile “cleaning, polishing and detailing” services, which are closely
and directly related to, and indeed the subject of, applicant’s online services.5
Furthermore, the examining attorney introduced evidence that automobile
repair and automobile cleaning and detailing, the subject of applicant’s online
services, are related. For example, the following marks are registered to different
owners for automobile cleaning-related services on the one hand and automobile
repair or maintenance services on the other: 06 GOLEO VI & Design (Registration
No. 3081901); ROCKSTARS (Registration No. 3933577); A COUNTRY CLUB FOR
CAR PEOPLE (Registration No. 3926921); ATACAMA (Registration No. 3378973);
GEELY & Design (Registration No. 3587328); DAIMLER (Supplemental
Registration No. 3871657); FIRST STOP AUTO CENTER & Design (Registration
No. 3677669); AUTO STOP (Registration No. 3774067); COBBLESTONE & Design
(Registration No. 3053651); LOVE YOUR CAR (Registration No. 3086600);
DALLAS SPEED SHOP & Design (Registration No. 3241366); G & Design
(Registration No. 3132912); CAR COSMETICS & Design (Registration No.
3243817); CAR PROS PLAZA ONE STOP AUTO CARE (Registration No. 4041079);
and DENT RECON (Registration No. 4073747). Office Actions of September 15,
2011 and March 27, 2012. “Third-party registrations which cover a number of

5 While “automobile service” may often be understood to mean automobile repair or
maintenance, registrant identifies “automobile repair” separately and “service” is an
exceedingly broad term. See e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 n.
3 (Fed. Cir. 1983) (where applicant’s identification of goods is broad, “[i]t is proper to
construe applicant’s description of its goods in the manner most favorable to opposer.”);
Hurst Performance, Inc. v. Torsten Hallman Racing, Inc., 207 USPQ 671, 674-75 (TTAB
1980).
Serial No. 85264259
8

differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See, In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); In re Davey Prods. Pty. Ltd., 92 USPQ2d
1198, 1203 (TTAB 2009).6 Similarly, the examining attorney introduced printouts
from websites showing that Pep Boys, AC Delco, AutoZone, Mike & Henry’s Auto
Service, Katy Auto Care, 5 Star Auto Spa, Urgent Care Automotive Repair, Five
Star Auto Care, Neil’s Auto Repairs and Murphy’s Autocare offer automotive
cleaning products or services on the one hand and automotive repair-related
services on the other. Office Actions of September 15, 2011 and March 27, 2012.
Finally, it does not escape notice that applicant submitted printouts from
registrant’s website in connection with its office action response of August 24, 2011

6 Here, although the registrations only establish that automobile repair and
automobile cleaning are related, and applicant does not directly offer automobile cleaning
services itself, applicant’s identified services are so inextricably intertwined with
automobile cleaning that these registrations are relevant. See e.g., In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding “overlap” between
“retail grocery and general merchandise store services” and furniture); In re H.J. Seiler Co.,
289 F.2d 674, 129 USPQ 347 (CCPA 1961) (“a customer who attends a banquet which he
knows is catered by the appellant would, when he encounters a food product in the grocery
store under an almost identical mark, naturally assum[e] that it came from the catering
firm”); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“consumers would be likely to
believe that jewelry on the one hand and retail stores selling jewelry on the other emanate
from or are sponsored by the same source …”); In re Peebles Inc., 23 USPQ2d 1795, 1796
(TTAB 1992) (“As we have said before there is no question that store services and the goods
which may be sold in that store are related goods and services …”).
Serial No. 85264259
9

which makes clear that in addition to “car repair services,” registrant offers “hand
car wash” services.
Based on this evidence, and registrant’s unlimited identification of
“automobile service,” which could, and in fact does encompass automobile cleaning
services, we have no difficulty finding that the parties’ services are related, and
closely so. Furthermore, the evidence of record establishes that automobile repair-
related services travel in the same channels of trade and are sold to the same
classes of consumers as automobile cleaning-related services. These factors both
weigh in favor of a finding of likelihood of confusion.7
In fact, the parties’ services and channels of trade are more than close enough
that confusion is likely if applicant and registrant were to both use AUTOPIA,
notwithstanding our assumption, for purposes of this decision, that AUTOPIA is
suggestive. In other words, while registrant’s mark may not be entitled to an
exceedingly broad scope of protection, it is entitled to protection against applicant’s
very similar and partially identical mark used for closely-related services.
Furthermore, the evidence establishes that the descriptive and disclaimed term
CAR CARE in applicant’s mark could just as easily refer to registrant’s services as
applicant’s, and registrant is entitled to use its mark with CAR CARE, which would
make the marks identical.

7 Applicant points out that its customers are “car enthusiasts” who use the products
applicant offers online to clean their own cars. We do not believe this makes confusion
unlikely, because just as these “car enthusiasts” could have a need for registrant’s repair
services, registrant’s customers could rely on registrant for car repairs while
simultaneously relying on the products applicant makes available to clean their own cars.
Serial No. 85264259
10

Finally, while applicant is unaware of any instances of actual confusion
despite concurrent use of applicant’s and registrant’s marks for 14 years, that does
not mean that confusion is unlikely. In fact, “[t]he test is likelihood of confusion not
actual confusion … It is unnecessary to show actual confusion in establishing
likelihood of confusion.” Weiss Associates, 902 F.2d at 1546, 14 USPQ2d at 1842-43.
The Court of Appeals for the Federal Circuit has observed “[a] showing of actual
confusion would of course be highly probative, if not conclusive, of a high likelihood
of confusion. The opposite is not true, however. The lack of evidence of actual
confusion carries little weight, especially in an ex parte context.” In re Majestic
Distilling Co., Inc., 65 USPQ2d at 1205 (internal citation omitted). While 14 years
is not an insignificant amount of time, there is no evidence as to the amount of use
and whether there has been any meaningful opportunity for confusion to occur. We
therefore find this factor to be neutral.
As stated, in the absence of relevant evidence or argument, we find that the
remaining likelihood of confusion factors are also neutral.
Conclusion
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors, including applicant’s arguments and evidence, even if not
specifically discussed herein. In view of our findings that the marks are quite
similar, the services related and the channels of trade overlap, we find that use of
applicant’s mark is likely to cause confusion with the cited registered mark as
applied to registrant’s goods. To the extent that applicant’s arguments raise any
Serial No. 85264259
11

doubt concerning the likelihood of confusion, we resolve any such doubt in
registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, 223 USPQ at 1290.
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.