Redan Management Corp., Inc.

Trademark Trial and Appeal Board

May 21, 2003

No. 76101636 (T.T.A.B. May. 21, 2003)

Mailed:
May 21, 2003
Paper No. 14
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Redan Management Corporation, Inc.
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Serial No. 76/101,636
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Daniel R. McClure of Thomas Kayden Horstemeyer & Risley,
LLP for Redan Management Corporation, Inc.
Jennifer D. Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Hairston, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Redan Management Corporation, Inc. seeks registration
on the Principal Register for the mark shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/101,636
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used in connection with services recited as “automobile
cleaning and washing,” in International Class 37.1
This case is now before the Board on appeal from the
final refusal to register applicant’s mark based upon
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). The
Trademark Examining Attorney has held that applicant’s
mark, when used in connection with the identified services,
so resembles the mark WINNER’S CIRCLE that is registered
for “cleaning preparations for automotive use,” in
International Class 3,2 as to be likely to cause confusion,
to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal but applicant did not request an
oral hearing.
We affirm the refusal to register.
Applicant contends that the goods and services herein
are different, that the channels of trade are not the same,
that the marks are dissimilar, and that all the WINNER’S
CIRCLE marks already co-existing on the federal trademark
register mandate that the cited registration be accorded a
1 Application Serial No. 76/101,636 was filed on August 2,
2000 based upon applicant’s allegation of use in commerce since
at least as early as September 1999.
2 Registration No. 2,193,353, issued on October 6, 1998.
Serial No. 76/101,636
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narrower range of protection than that accorded it by the
Trademark Examining Attorney.
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the goods and services, it is not
necessary that registrant’s goods and applicant’s services
be identical 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 goods and 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).
We find that applicant’s automobile cleaning and
washing services are closely related to registrant’s
Serial No. 76/101,636
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cleaning preparations for automotive use. As correctly
argued by the Trademark Examining Attorney:
Here, the applicant’s services clearly utilize cleaning
preparations. The applicant submits that the cleaning
products supplied are dispensed after coins are
inserted into a machine “and the brand of the product
dispensed is unknown to the user.” Applicant's
Response of August 21, 2001, at p. 6. Nevertheless,
the applicant’s specimens of use clearly show use of
and even promote the marks of cleaning products that
are also available for purchase in a variety of retail
settings where car cleaning preparations are sold. The
applicant’s specimen uses the ARMOR ALL® marks and
clearly shows the coin-operated cleaning stations as
offering such products as options for use during the
self-service cleaning. A customer of the applicant’s
services, familiar with the ARMOR ALL® family of car
cleaning products, would believe that the products
dispensed under such a mark are emanating from the same
source as those products bearing such marks found in
auto parts stores, discount department stores, hardware
stores, etc. The reverse situation could occur when a
consumer, familiar with the applicant’s services,
encounters the registrant’s goods in an auto parts
store and presumes, incorrectly, that there is a common
source for the goods and the services. Similarly, if a
consumer [who] was familiar with the registrant’s goods
came across the applicant’s coin-operated cleaning
stations bearing a highly similar mark, the consumer
could mistakenly believe that the applicant’s services
are in some way sponsored by or authorized by the
registrant.
The examining attorney has submitted evidence of the
relatedness of these goods and services. Both are
offered by common sources. As evidence of this, the
examining attorney enclosed with the final Office
action copies of eleven current use-based trademark
registrations which include both cleaning preparations
for vehicles and automobile cleaning and appearance
maintenance services. This evidence shows that it
would be reasonable for purchasers to expect both goods
and services to emanate from common sources, often
under the same trademark. In re Kangaroos U.S.A., 223
USPQ 1025 (TTAB 1984); See Sterling Drug Inc. v.
Sebring, 185 USPQ 649 (CCPA 1975).
Serial No. 76/101,636
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Indeed, although applicant argues that, contrary to
the position of the Trademark Examining Attorney, the
chance for confusion is de minimis in this case, the close
relationship of registrant’s goods to applicant’s services,
and the overlap in the channels of trade seems to jump out
from an image contained in applicant’s specimen of record:
We turn then to the similarity of the marks. The
cited trademark is WINNER’S CIRCLE. The only wording in
applicant’s service mark is THE WINNER’S CIRCLE. We
recognize that applicant’s composite mark, in addition to
the words (THE WINNER’S CIRCLE) contains a circle, two
checkered racing flags, and a happy, sparkling automobile.
However, the only way in which consumers could call for
this service would be by speaking the words, “The Winner’s
Circle.” For this reason, as noted by the Trademark
Examining Attorney, it is not an improper dissection of
applicant’s composite mark to give greater weight to this
Serial No. 76/101,636
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literal portion of the mark in making a determination as to
likelihood of confusion.
Finally, we turn to applicant’s contention that the
registered mark has been shown to be so weak that its scope
of protection should be significantly narrowed. In support
of this proposition, applicant attached to its appeal brief
an exhibit consisting of forty-seven pages of a private
trademark search. Applicant alleges that this exhibit
contains twenty-eight federal registrations of marks
including the term “Winner’s Circle.”
The Trademark Examining Attorney has correctly
objected to the form and timing of this submission, and so
we have not considered it in reaching our decision.3
However, even if we were to consider this exhibit, it
would not change the result of this decision. In the
absence of any evidence of actual use of those marks, such
a search report is of little probative value in connection
with a question of likelihood of confusion. The appearance
3 These alleged, third-party registrations were not properly
made of record. In order to make third-party registrations of
record, soft copies of the registrations or photocopies of the
appropriate United States Patent and Trademark Office electronic
printouts should be submitted. See Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230 (TTAB 1992). This was not done. Furthermore, the
printouts of the search results were merely an exhibit attached
to applicant’s appeal brief. Copies of the registrations are to
be made part of the record prior to the time of the appeal. See,
37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994).
Serial No. 76/101,636
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of these third-party marks in trademark search results does
not prove that they are in use in the marketplace, or that
the public is familiar with them. Unless applicant
establishes that the third-party marks shown in these
computerized search results are being used, there is no way
an assessment can be made as to what, if any, impact those
marks may have made in the marketplace. Thus, we cannot
assume that the public will come to distinguish between
them. As the Court of Appeals for the Federal Circuit
stated in the case of Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992):
“Under du Pont, ‘[t]he number and nature of similar
marks in use on similar goods’ is a factor that must be
considered in determining likelihood of confusion. 476
F.2d at 1361, 177 USPQ at 567 (factor 6). Much of the
undisputed record evidence relates to third party
registrations, which admittedly are given little weight
but which nevertheless are relevant when evaluating
likelihood of confusion. As to strength of a mark,
however, registration evidence may not be given any
weight. AMF Inc. v. American Leisure Prods., Inc., 474
F.2d 1403, 1406, 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. ...’) [emphasis in
original].”
See also Seabrook Foods, Inc. v. Bar-Well Foods, Limited,
568 F.2d 1342, 196 USPQ 289 (CCPA 1977).
Furthermore, none of the third-party registrations
recites goods or services similar in any way to the
services at issue herein. Thus, even if copies of these
Serial No. 76/101,636
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registrations in the correct form had been timely entered,
or if applicant had proven actual use of these particular
marks by third parties, any actual uses on dissimilar goods
or services in unrelated fields would be irrelevant. See
Sheller-Globe Corporation v. Scott Paper Company, 204 USPQ
329 (TTAB 1979) and Charrette Corp. v. Bowater
Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989).
Specifically, the goods and services in these registrations
are related to horses, advertising services, real estate
contests, casinos, bourbon, cheerleaders’ uniforms,
toiletries, vegetables, window blinds, golfing equipment,
trading cards and toys. In its brief, applicant
specifically highlights the registration for toy vehicles.
While this may well be the closest of twenty referenced
extant registrations containing the words “Winner’s
Circle,” it is not nearly as closely related to either
registrant’s goods or to applicant’s services as these
latter two are related to each other. Accordingly, even if
we were to consider these registrations, applicant has not
even established conceptually that the cited mark is a weak
one.
In any event, even weak marks are entitled to the
statutory presumptions of Section 7(b) of the Act, and
hence should be protected against the registration by a
Serial No. 76/101,636
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subsequent user of a nearly identical mark for closely
related goods and services. See Hollister Incorporated v.
Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976).
In conclusion, we find that applicant’s services are
closely related to the cited goods, that the literal
element of applicant’s mark is identical to the cited mark
in overall commercial impression, and that applicant has
failed to demonstrate the weakness of the cited mark for
these and related goods.
Decision: The refusal to register is affirmed.