Robbie Pierce

Trademark Trial and Appeal Board

Oct 26, 2004

No. 76404296 (T.T.A.B. Oct. 26, 2004)

UNITED STATAES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robbie Pierce
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Serial No. 76404296
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Donn K. Harms, Esq. for Robbie Pierce.
Brian Neville, Trademark Examining Attorney, Law Office 114
(Leslie Bishop, Acting Managing Attorney).
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Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Robbie Pierce (applicant) seeks to register in typed
drawing form RUBICON BY MASTERCRAFT for “racing and
performance after-market automobile interior parts, namely,
seats, headrests, safety upholstery, safety nets, safety
belts for automobile seats, and fittings for the same.”
The application was filed on April 25, 2002 with a claimed
first use date of November 1, 1999.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark RUBICON previously
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB Mailed: 10-26-2004
Ser. No. 76404296
2
registered in typed drawing form for “motor vehicles,
namely automobiles and structural parts therefor.”
Registration No. 2,666,854.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the marks, we note that applicant
has adopted the registered mark RUBICON in its entirety and
merely added to it what applicant acknowledges is his house
mark MASTERCRAFT. (Applicant’s brief page 2). As applied
to applicant’s goods and registrant’s goods, the mark
RUBICON is entirely arbitrary, and applicant does not
contend otherwise. As a general rule, one may not adopt
another’s mark in its entirety and escape a finding of
likelihood of confusion simply by adding his house mark.
Ser. No. 76404296
3
3 J. McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 23:43 at page 23-93 (4th ed. 2002).
In addition, it must be noted that applicant seeks to
register RUBICON BY MASTERCRAFT in typed drawing form.
This means that applicant’s mark is not limited to being
“depicted in any special form,” and hence we are mandated
“to visualize what other forms the mark might appear in.”
Phillips Petroleum Co. v. C.J. Webb Inc., 442 F.2d 1376,
170 USPQ 35, 36 (CCPA 1971). In particular, we must give
special consideration to the manner or manners in which
applicant has actually depicted his mark. Id. See also INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB
1992).
Applicant’s own specimen of use depicts the word
RUBICON in extremely large lettering on one line, and then
depicts on a second line in far smaller lettering the words
BY MASTERCRAFT. Applicant’s specimen of use shows its mark
being depicted in block letters. Because the cited mark
RUBICON is also registered in typed drawing form, then
registrant would likewise be free to depict its mark in
block letters. Considering the manner in which applicant
actually depicts his mark with the RUBICON portion in
extremely large lettering on one line and the BY
MASTERCRAFT portion in far smaller lettering on a second
Ser. No. 76404296
4
line, the two marks are extremely similar. Indeed, a
consumer familiar with registrant’s mark RUBICON for
automobiles, upon seeing applicant’s mark as actually used
for automobile interior parts, could well overlook the BY
MASTERCRAFT portion of applicant’s mark, or at the very
least, could easily assume that registrant has now simply
added “registrant’s” house mark (i.e. BY MASTERCRAFT).
In sum, the two marks are extremely similar. Thus,
the first Dupont “factor weighs heavily against applicant”
because applicant’s mark could be and indeed is depicted in
a manner such that it is extremely similar to the
registered mark. In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to a consideration of applicant’s goods and
registrant’s goods, we note that because the marks are
extremely similar, their contemporaneous use can lead to
the assumption that there is a common source “even when
[the] goods or services are not competitive or
intrinsically related.” In re Shell Oil Co., 922 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). However, in
this case we find that applicant’s goods and registrant’s
goods are clearly related. Indeed, applicant does not even
contend to the contrary. While arguing the obvious that
his goods and registrant’s goods are not “identical,”
Ser. No. 76404296
5
applicant acknowledges at page 5 of his brief that his
goods and registrant’s goods are of the “same class of
product” and travel through the same “venues of sale.”
In sum, given the fact that applicant’s mark is
extremely similar to registrant’s mark and the additional
fact that applicant’s goods and registrant’s goods are
clearly related, we find that there exists a likelihood of
confusion.
Decision: The refusal to register is affirmed.