Rally Manu-facturing, Inc.

Trademark Trial and Appeal Board

Sep 14, 2007

No. 78576497 (T.T.A.B. Sep. 14, 2007)

SMH/PC Mailed: September 14, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rally Manufacturing, Inc.
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Serial No. 78576497
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Matthew F. Johnston of Liniak Berenato & White for Rally
Manufacturing, Inc.

James Rauen, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
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Before Hohein, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Rally Manufacturing, Inc. has filed an application to
register on the Principal Register the mark WEATHER GUARD
in standard character form for goods ultimately identified
as “floor mats for land vehicles sold through distinct
channels of trade of mass retails [sic] outlets and
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78576497
2
automotive after market retail stores” in International
Class 27.1
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
used in connection with its goods, so resembles the mark
WEATHER GUARD, which is registered in typed or standard
character form for:
prepackaged van and minivan interior modules for
storage and shelving; van shelves, cabinets and
shelf accessories, namely, work tops, bin boxes
and bin dividers, shelf work covers, hard hat
racks, fire extinguisher racks, retainer lips,
stacking brackets, shelf mats, doors and back
panels; freon tank racks and tank rings, wire
spool racks; file boxes; window screens; vehicle
bulkhead panels and bulkhead custom accessories,
namely, binder files, spare tire chocks,
literature holders, hard hat racks, fire
extinguisher holders, extension cord brackets,
spare tire brackets, first aid kit trays, window
covers and safety reflectors; stabilizers; floor
mats for vans and minivans; cab screens and cab
protectors for attachment to rear windows of
trucks; vehicle service body racks; ladder
guides; sliding platforms and rails for all land
vehicles

in International Class 12,2 as to be likely to cause
confusion or to cause mistake or to deceive.

1 Serial No. 78576497 was filed on February 28, 2005, based on
applicant’s allegation of a bona fide intent to use the mark in
commerce.
2 Registration No. 2228051 issued on December 12, 1997. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Ser No. 78576497
3
When the Examining Attorney made the refusal final,
applicant appealed. Applicant and the examining attorney
have filed briefs. We affirm the refusal to register.
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, 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, 27 (CCPA
1976); see also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). Here,
inasmuch as the respective marks are identical in sound,
appearance, connotation and commercial impression, as
applicant essentially concedes,3 the focus of our inquiry
accordingly is primarily on the goods at issue.

3 "Applicant concedes the similarity of the marks." (Brief, p.
3.)
Ser No. 78576497
4
The Goods
We turn then to consideration of the goods, noting at
the outset that because the marks are identical, the extent
to which applicant’s and registrant’s goods must be the
same or similar to support a finding of likelihood of
confusion is lessened. See In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). Where the marks are the same, as
in this case, it is only necessary that there be a viable
relationship between the goods to support a finding of
likelihood of confusion. See In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Furthermore, it is not necessary that the goods at
issue 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 instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the identity or 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).
Ser No. 78576497
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In this case applicant’s goods are floor mats for land
vehicles while registrant’s goods include floor mats for
vans and minivans. As the examining attorney notes,
registrant’s floor mats for vans and minivans are clearly
encompassed under the umbrella of applicant’s floor mats
for land vehicles. Thus, we may presume that applicant’s
floor mats for land vehicles include and are otherwise
related to the registrant’s floor mats for vans and
minivans. As a result, registrant’s goods are identical in
part to those identified in the involved application.
Channels of Trade
Applicant argues that the respective goods “are not
competitive given the substantial differences in the
channels of trade and historical interface between
applicant and registrant” (brief, p. 3). It is settled,
however, that in our determination of the issue of
likelihood of confusion, we must look to the goods as
identified in the involved application and cited
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
Ser No. 78576497
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the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) See also Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”) In this case, the identification of goods in the
cited registration does not contain any limitations as to
channels of trade or class of purchasers. As a result,
registrant’s goods must be presumed to move in all channels
of trade common for such goods and be available to all
purchasers thereof.
In addition, applicant relies upon a district court
decision, Knaack Mfg. Co. v. Rally Accessories, Inc., 42
USPQ2d 1649 (ND Ill. 1997), to support its argument that
its channels of trade differ from the registrant’s channels
of trade.4 In that case, the district court made findings
of fact with regard to certain goods of applicant not
covered by the involved application (vehicle covers) and
determined, inter alia, that the parties’ goods moved in

4 We note that the assignment of cited Registration No. 2228051,
from registrant Knaack Manufacturing Company to Knaack LLC, is
recorded with the Assignment Branch of this Office at Reel
2573/Frame 0375.

Ser No. 78576497
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channels of trade that were distinct from one another.
However and as noted above, in the context of this ex parte
proceeding, we must base our consideration of applicant’s
and registrant’s trade channels solely upon the
identification of goods in the involved application and
cited registration. See In re Linkvest S.A., 24 USPQ2d
1716 (TTAB 1992). See also Paula Payne Products Co. v.
Johnson Publishing Co., Inc., supra. Inasmuch as there are
no restrictions as to trade channels in registrant’s
identification of goods, they must be presumed to encompass
applicant’s more narrowly defined channels of trade. As a
result, the finding of the district court does not compel a
similar result herein.
Third Party Use
In its brief, applicant argues that the mark WEATHER
GUARD is weak and that third-party registrations of WEATHER
GUARD for various goods weigh against a finding of
likelihood of confusion. In support of its contention,
applicant asserts that there are “scores of registrations
and additional applications for the mark ‘Weather Guard’
and its close variants both within and outside of class
012”5 (brief, p. 4). However, applicant did not make either

5 We note that if applicant had submitted evidence consisting of
the referenced third-party applications, they would not be
Ser No. 78576497
8
these registrations or any other evidence of third-party
use of WEATHER GUARD of record at any time during the
prosecution of its application.6 Furthermore, applicant did
not introduce any evidence of the asserted weakness of the
WEATHER GUARD mark. As a result, we find on this record
that there is no evidence of either the relative strength
of the WEATHER GUARD mark or third-party use of WEATHER
GUARD such that that confusion between the marks in the
cited registration and involved application is unlikely.
Moreover, even if the WEATHER GUARD mark was found to be
weak, such mark nonetheless is entitled to protection
against the registration of an identical mark for goods
that are identical in part to those recited therein.
Actual Confusion
Another du Pont factor discussed by applicant is that
of lack of instances of actual confusion. Applicant

probative in any event. “The Board has long held that third
party applications are evidence only of the fact that they were
filed; they have no other probative value.” Interpayment
Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB
2003). In addition, third-party registrations are not evidence
that the marks therefor are in use or that the consuming public
is accustomed to encountering such marks. See AMF Inc. v.
American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973) ("The existence of [third party] registrations is not
evidence of what happens in the market place or that customers
are familiar with them").

6 We note in addition that if applicant had submitted evidence of
third party use with its brief on appeal, it would be untimely.
See Trademark Rule 2.142(d).
Ser No. 78576497
9
asserts that the absence of actual confusion suggests no
likelihood of confusion between contemporaneous use of its
mark for its goods and registrant’s use of its mark for its
goods. However, it is not necessary to show actual
confusion to establish likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990). Particularly in an ex parte
proceeding, applicant’s assertion of the absence of actual
confusion is of little probative value in our determination
of the issue of likelihood of confusion because the Board
is not privy to whether the registrant is likewise unaware
of any instances of actual confusion, or whether there has
been a significant opportunity for actual confusion to have
occurred, such that the absence of confusion is meaningful.
See In re Opus One Inc., supra at 1817; In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984); and In re Jeep Corp.,
222 USPQ 333 (TTAB 1984). In those situations where the
Board has recognized the absence of actual confusion as
probative in an ex parte setting, there existed a
“confluence of facts” which together strongly suggested
that the absence of confusion was meaningful and should be
given probative weight. See Opus One, supra; and Jeep,
supra. The “confluence of facts” is not present in this
record.
Ser No. 78576497
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Common Law Rights
Finally, applicant claims that it “is currently using
its mark WEATHER GUARD for several product [sic] including
Wiper [sic] blades, fitted car covers, and floor mats for
land vehicles in the retail trade channels,” “is unaware of
any other use of the mark Weather Guard for floor mats in
the retail channel of trade” and “therefore currently has
common law rights in the mark” (brief p. 6-7). However,
applicant has submitted no evidence of use of its mark or
cited to any authority for the proposition that such use
entitles it to register a mark that is identical to a
previously registered mark for goods that are identical in
part.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its mark would
be likely to believe, upon encountering applicant’s goods
sold under its identical mark, that the goods originated
with or are somehow associated with or sponsored by the
same entity.
Decision: The refusal to register is affirmed.