Raceway Lube Inc.

Trademark Trial and Appeal Board

Jul 8, 1998

No. 74635846 (T.T.A.B. Jul. 8, 1998)

Paper No. 13
GDH/BG
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 8, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Raceway Lube Inc.
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Serial No. 74/635,846
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Steve Bouldin for Raceway Lube Inc.
Jacqueline A. Lavine, Trademark Examining Attorney, Law Office
109 (Deborah Cohn, Managing Attorney).
_______
Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Raceway Lube Inc. has filed an application to register
the mark "RACEWAY LUBE" for "vehicle lubrication and oil change
services".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 74/635,846, filed on February 17, 1995, which alleges a bona
fide intention to use the mark in commerce. The word "LUBE" is
disclaimed.
Ser. No. 74/635,846
2
applicant’s mark, when applied to its services, so resembles the
mark "RACEWAY," which is registered for "motor oil,"2 as to be
likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Turning first to consideration of the respective marks,
we note, as has the Examining Attorney, that applicant has not
raised any argument that the marks are distinguishable nor, in
any event, could applicant make a persuasive argument in this
respect. While, of course, applicant’s "RACEWAY LUBE" mark and
registrant’s "RACEWAY" mark must be considered in their
entireties, it is nevertheless the case that, in articulating
reasons for reaching a conclusion on the issue of likelihood of
confusion, "there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, "that a particular
feature is descriptive ... with respect to the involved [services
or] goods ... is one commonly accepted rationale for giving less
weight to a portion of a mark ...." 224 USPQ at 751.
Here, in light of the merely descriptive significance
of the term "LUBE" (as confirmed by applicant’s disclaimer), the

2 Reg. No. 1,136,548, issued on June 3, 1980, which sets forth dates of
first use of November 24, 1976; combined affidavit §§8 and 15.
Ser. No. 74/635,846
3
distinguishing element of applicant’s mark, when considered as a
whole, is the word "RACEWAY," which is identical to registrant’s
mark "RACEWAY". Consequently, the presence of the merely
descriptive term "LUBE" in applicant’s "RACEWAY LUBE" mark does
not change the commercial impression created by the term
"RACEWAY" alone. The respective marks, when considered in their
entireties, are clearly so substantially similar in sound,
appearance, connotation and commercial impression that, if used
in connection with services and goods which are closely related,
confusion as to the source or the sponsorship of those services
and goods would be likely to occur. See, e.g., In re Sunmarks
Inc., 32 USPQ2d 1470, 1472 (TTAB 1994) [in finding likelihood of
confusion between "ULTRA" mark for gasoline and motor oil and
registered "ULTRA LUBE" marks for lubricating oils, greases, and
related automotive products, Board gave "more weight to the
identical ULTRA portion in registrant’s marks, because of the
descriptive nature of the word ’LUBE.’"].
Turning, then, to consideration of the respective
services and goods, applicant argues that confusion is not likely
because its vehicle lubrication and oil change services are
different from registrant’s motor oil products3 and that

3 While such is indeed correct, we hasten to note that, as pointed out
in In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984):
[T]he question to be determined herein is not whether the
[services and] goods are likely to be confused but rather
whether there is a likelihood of confusion as to the source
of the [services and] goods because of the marks used
[therewith] .... See: Chemetron Corp. v. Self-Organizing
Systems, Inc., 166 USPQ 495 (TTAB 1970), and cases cited
therein, and MRI Systems Corp. v. Wesley-Jessen Inc., 189
Ser. No. 74/635,846
4
registrant "does not offer the same type of service" as applicant
does. However, as the Examining Attorney correctly observes, it
is well settled that the services and goods at issue need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the services and goods are related in some manner and/or
that the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Moreover, it is
also well established that the issue of likelihood of confusion
must be determined in light of the services and goods
respectively set forth and the involved application and cited
registration and, in the absence of any specific limitations
therein, on the basis of all normal and usual channels of trade
and methods of distribution therefor. See, e.g., CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).

USPQ 241 (TTAB 1975). Thus, it is not necessary that the
[services and] goods of applicant and registrant be similar
or competitive in order to support a finding of likelihood
of confusion ....
Ser. No. 74/635,846
5
The Examining Attorney, in support of her position that
"consumers may indeed believe that motor oil and vehicle
lubrication and oil change services are related," has made of
record, among other things, several third-party registrations,
all of which are based upon use in commerce, which show that in
each instance the same entity has registered either the same or a
virtually identical mark for motor oil or lubricating oil, on the
one hand, and automotive service station services or gas station
services, on the other hand. While such registrations are not
evidence that the different marks shown therein are in use or
that the public is familiar with them, they nevertheless have
some probable value to the extent that they serve to suggest that
such goods and services, which would include vehicle lubrication
and oil change services, are of the kinds which may emanate from
a single source. See, e.g., In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
In addition, the Examining Attorney has made of record
a number of excerpts of articles from her search of the "NEXIS"
computerized database to show that "many companies market both
oil and the service of oil changes." The most pertinent of such
excerpts are as follows (emphasis added):
At Quick Lube, a "full-service" oil
change, in which all fluids and belts are
checked, costs $28.95; an oil change alone is
$23.95. -- Idaho Business Review, February
24, 1977, at 10A;
Among the other moves Denton
anticipates: possible link-up of Ashland’s
Valvoline lube-oil brand, and its second-
Ser. No. 74/635,846
6
ranked Instant Oil Change retail outlets,
with another chain to match the clout of No.
1 Pennzoil’s Jiffy Lube brand. -- Platt’s
Oilgram News, December 10, 1996, at 1;
Ashland Inc. said its Valvoline Instant
Oil Change division has agreed to provide oil
changes in 20 Sears Auto Centers in three
markets next year. -- Chicago Sun-Times,
November 12, 1996 at 44;
In 1987, we analyzed and predicted the
takeover of the young quick-oil-change
business by the major oil companies. Today,
a mature fast-oil-change industry is
dominated by Pennzoil, Quaker State, and
Valvoline. -- Automotive Marketing, November
1996, at 50;
Based in Irving, Texas, Quaker State is
a leading producer of brand-name motor oil
and lubricants. It runs a nationwide chain
of 466 quick oil-change and service centers
called Q Lube. Most are company owned. --
Investor’s Business Daily, October 29, 1996,
at B14; and
Belding in Chicago, a unit of True North
Communications, continues to handle
advertising for Quaker State motor oil and
the Q Lube chain of oil-change shops. -- N.Y
Times, October 16, 1996, §D, at 11, col. 2.
The above evidence merely underscores the facts that,
as everyday experience demonstrates, motor oil is essential to
the rendering of vehicle lubrication and oil change services, and
that such goods and services are frequently available at the same
locations. Clearly, motor oil and vehicle lubrication and oil
change services are closely related since the former is an
integral part of providing the latter. Customers familiar with
registrant's mark "RACEWAY" for motor oil would accordingly be
likely to believe, upon encountering applicant's substantially
identical mark "RACEWAY LUBE" for vehicle lubrication and oil
Ser. No. 74/635,846
7
change services, that such closely related goods and services
emanate from or are otherwise sponsored by or affiliated with the
same source.
Decision: The refusal under Section 2(d) is affirmed.
R. F. Cissel
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board