Star-Brite Distributing, Inc.

Trademark Trial and Appeal Board

Mar 29, 2013

No. 77762719 (T.T.A.B. Mar. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
March 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Star-Brite Distributing, Inc.
_____

Serial No. 77762719
_____

John Christopher of Christopher & Weisberg PA for Star-Brite Distributing, Inc.

William T. Verhosek,1 Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_____

Before Kuhlke, Taylor and Shaw, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Star-Brite Distributing, Inc. (“applicant” or “appellant2), by amendment
during prosecution of the application, seeks to register on the Supplemental
Register the following mark:

1 A different examining attorney was responsible for the application prior to the May 6,
2010, Office Action.
2 Throughout its briefs, Star-Brite Distributing, Inc. referred to itself as “Appellant,”
however, during prosecution of the application, Star-Brite referred to itself as “applicant.”
To lessen confusion, except for direct quotes, we shall refer to Star-Brite as “applicant.”
Serial No. 77762719

2

for goods ultimately described as “Non-chemical additives for oils and fuels” in
International Class 4.3 The application includes the following color statement:
“The color(s) translucent blue is/are claimed as a feature of the mark.” The mark is
also described, as amended, in the application as follows:
The mark consists of translucent blue to be used for a container
body and not the cap. The dotted lines are intended to show the
position of the mark and are not part of the mark as shown.
Registration has been finally refused on the ground that a likelihood of
confusion exists between applicant’s mark and the mark in Registration No.
2186938 (on the Supplemental Register) issued September 1, 1998, renewed; and
shown below

for “petroleum based fuel additive” in International Class 4. The registration
includes the following color statement: “The drawing is lined for the color blue, and
color is claimed as a feature of the mark.” The mark is also described in the
registration as follows:
The mark consists of the color blue as applied to the goods visible
through a transparent tube. The dotted outline of the goods is
intended to show the position of the mark and is not a part of the
mark.
Applicant appealed the Section 2(d) refusal. Both applicant and the
examining attorney filed briefs, and applicant filed a reply brief.

3 Application Serial No. 77762719 filed June 18, 2009, and claiming first use of the mark
anywhere and in commerce on February 28, 2004.
Serial No. 77762719

3

Before we begin our likelihood of confusion analysis, we must discuss several
preliminary matters. First, the examining attorney has objected to certain evidence
referenced by applicant for the first time with its appeal brief.4 This evidence
consists of hyperlinks to the Wikipedia entry for “petroleum” and to several third-
party websites. Apart from being untimely, see Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d) which provides, in pertinent part, that “[t]he record in the application
should be complete prior to the filing of an appeal,” the evidence is not properly of
record. Links to websites are insufficient to make such evidence of record. See
Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213,
1216-19 (TTAB 2011). This is so because there is no assurance that the content of
the linked material is the same today as it was when applicant read it. As a result,
even if timely, we could give this changeable or changing evidence no probative
value.5 The better practice was for applicant to have requested remand for the
purposes of making additional evidence of record and, if granted, to have submitted
copies of the web pages or screen shots of the web pages that were in existence at
the time they were accessed.

4 By this evidence applicant seeks to “rebut” the presumption that the goods listed in the
cited registration move through all normal trade channels.
5 With particular regard to the Wikipedia “evidence,” as just stated, it is not properly of
record. However, we address for completeness applicant’s contention that if the Board
takes judicial notice of dictionary definitions as requested by the examining attorney, “the
same courtesy” should be extended to it with respect to the Wikipedia entry. “[T]he Board
will consider evidence taken from Wikipedia so long as the non-offering party has an
opportunity to rebut that evidence by submitting other evidence that may call into question
the accuracy of the particular Wikipedia information. Our consideration of Wikipedia
evidence is with the recognition of the limitations inherent with Wikipedia (e.g., that
anyone can edit it and submit intentionally false or erroneous information)”. In re IP
Carrier Consulting Group, 84 USPQ2d 1028, 1032-33 (TTAB 2007). As in this case, at
briefing, there is no opportunity for the non-offering party to submit rebuttal evidence.
Serial No. 77762719

4

For those reasons, the examining attorney’s objection is sustained and the
evidence has not been considered in this decision.6 We hasten to add that even if we
had considered these materials, our decision would be the same.
Next, applicant’s “request for reconsideration,” buried on page 10 of its main
brief, is denied as manifestly untimely. Requests for reconsideration should be filed
with the Trademark Examining Operation before the deadline for filing an appeal
to the Board. See Trademark Rule 2.64(b), 37 C.F.R. § 2.64(b), Trademark Rule
2.64(b).7
We turn then to the merits of this case. Applicant maintains that its mark
and the cited mark have different appearances such that confusion is unlikely and,
in that regard, contends that “no reasonable consumer would look at a translucent
blue bottle with clear goods and a cap, and confuse it with a transparent tube with
blue goods.” Applicant characterizes the cited mark (as shown in the specimen
provided by registrant during prosecution of the application and made of record by
the examining attorney) as “a nearly purple-black fluid disposed within a toothpaste
tube with transparent edges.” Applicant’s br. p. 6. Applicant argues:
Registrant’s tube is transparent – Appellant’s container is
translucent blue. If translucence is not a color, as the Examining
Attorney concludes, then consumers should have no problem
determining the differences between a transparent tube and a blue
container. What color the goods are is not paramount. The
Examining Attorney is over broadening Registrant’s trademark,

6 Applicant’s additional arguments with respect to its continued position that the goods are
unrelated and do not travel in the same trade channels are not affected by this ruling.
However, they are largely unsupported and, accordingly, may have little probative value.
7 We point out that the examining attorney in his brief addressed applicant’s position
regarding the sophistication of the purchasers. As such, the issue applicant sought to
address by reconsideration is moot.
Serial No. 77762719

5

and overly simplifying Appellant’s application. Simply, it doesn’t
matter what color Registrant’s goods are because its tube must be
clear, and Appellant’s bottle must be blue with a non blue cap.
These are readily determinable differences even for
unsophisticated consumers.
Applicant’s reply br. p. 4. With respect to the goods, applicant argues that they are
mutually exclusive of one another by definition; one is petroleum based and the
other non-chemical. As such, applicant continues, the respective goods are unlikely
to encounter each other in the marketplace. Last, applicant contends that the
sophistication of the consumers of both applicant’s and registrant’s goods minimize
any chance of confusion.8
The examining attorney maintains that applicant’s color mark “blue” is
legally identical to registrant’s color mark “blue,” specifically asserting that “there
is no such thing as ‘translucent blue’.” With respect to the goods, the examining
attorney argues that they are identical and otherwise closely related because
applicant’s identification is broad enough to cover the more specific goods of the
registrant, that they have the same purpose of treating fuels and oils, and that they
are marketed to the same consumers who use such products in their engines and
vehicles. In support of the refusal, the examining attorney has made of record
dictionary definitions, excerpts from third-party websites and copies of third-party
registrations.

8 Because applicant misidentified the registrant’s mark in its assertion that “[c]onsumers
would readily perceive the differences between a blue bottle (Appellant’s mark) and a clear
squeeze tube (Registrant’s mark) regardless of what color the goods are,” Applicant’s reply
br. p. 3, this argument has not been considered.
Serial No. 77762719

6

Our determination under Section 2(d) is based on an analysis of all of the
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. 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”). These factors, and any other relevant
du Pont factors in the proceeding now before us, will be considered in this decision.
This case requires a less traditional likelihood of confusion determination
involving the comparison of two color marks. As pointed out in the recent Board
decision, In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB
2012), “in the seminal case on color trademarks, Qualitex Co. v. Jacobson Products
Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995) (“Qualitex”), the Supreme Court
indicated that the practical problem of deciding an issue of shade confusion is no
more difficult than determining whether differences in word marks would be likely
to cause confusion. Id. at 1164-65 (‘We do not believe, however, that color, in this
respect, is special.’).” Here, we are asked to compare the color blue as applied to
the goods with the color “translucent” blue to be used for a container body
(discussed, infra).
Serial No. 77762719

7

We consider first the goods and compare applicant’s “non-chemical additives
for oils and fuels” with the registrant’s “petroleum based fuel additive.” In
analyzing the relatedness of these goods, it is well-settled that they need not be
identical or competitive, or even offered through the same channels of trade, to
support a finding of likelihood of confusion. It is sufficient 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 similarity of the
marks, give rise to the mistaken belief that they originate from the same source.
See In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012). The issue, of
course, is not whether purchasers would confuse the goods, but rather whether
there is a likelihood of confusion as to the source of the goods. In re Binion, 93
USPQ2d 1531, 1535 (TTAB 2009).
The examining attorney has made of record several use based third-party
registrations to show that applicant’s identification of goods is broad enough to
encompass the more specific goods of the cited registration, i.e., that applicant’s
non-chemical additives could be petroleum based. These registrations, specifically,
Registration No. 1643301 for the mark RPM X1000 RED LINE SYNTHETIC OIL
and design, Registration No. 1938720 for the mark PRO-MA SYSTEMS,
Registration No. 2478740 for the mark SUN COAST RESOURCES, INC and design
and Registration No. 3928296 for the mark RACING INTO THE RED ZONE,
Serial No. 77762719

8

include goods identified as “non-chemical petroleum based additives” for oils and
fuels.9
The examining attorney also made of record evidence from third-party
websites showing that enzyme fuel treatments, as a non-chemical based fuel
additive, and petroleum based fuel additives have the same purpose of treating
fuels and oils, are marketed to the same consumers who use such products in their
engines and vehicles.10 Examining Attorney’s Final Office Action, (TICRS
Outgoing) at pp. 54-65. For example, an article from the website of Alternative
Energy, www.alternative-energy-news.info/green-fuel-additive-production/ entitled
“Fuel Additive Production Takes the Green Route” states:
Research is on for the organic production of isobutene
(isobutylene) [generally used as a fuel additive]. Thomas Bobik,
Professor of Biochemistry, Biophysics and Molecular Biology and
David Gogerty, a doctoral student are doing pioneer research for
producing isobutylene with the help of a new but natural enzyme
rather than from the traditional petroleum-based products.
Another example is from the article “To Store Your Boat With a Full or Empty Fuel
Tank?” which includes a discussion of fuel additives and, in pertinent part, states:
(SeaFoam) … A 100% pure petroleum product for use in a;
gasoline & diesel type engines. Both 2 & 4 cycles. … Cleans
dirty engine parts internally by removing harmful gums, varnish &
carbon. … Removes moisture from ols crankcases & fuel tanks.
***

9 Registration No. 3893550 also includes goods identified as “non-chemical petroleum based
additives,” but we note that it is owned by the same entity that owns Registration No.
1643301 listed above.
10 Notably, applicant’s product advertising states: “the unique enzyme formula actually
improves fuel quality, allowing any engine to run better on Star-Tron treated fuel.”
Applicant’s November 1, 2010, Response to Office Action, Exh. A.
Serial No. 77762719

9

(Startron) … Their catalog says – New enzyme-based additive
increases fuel economy and engine power while reducing
emissions. … Increases octane and removes water from the fuel…
***
(Soltron) … This is called an enzyme fuel treatment & uses 100%
natural enzyme technology to deliver multiple benefits to gasoline
and & diesel engines. … It is a powerful dispersant & may loosen
& dislodge heavy accumulations of sludge, including deposits
caused by overuse of other fuel additives.
The examining attorney has also made of record several used-based third-
party registrations showing that a single entity adopted a single mark for goods of
the type identified in both applicant’s application and the cited registration. In that
regard, we have considered registrations that list fuel additives without any
limiting language to encompass both petroleum-based and non-chemical additives.
Third-party registrations that individually cover different items and that are based
on use in commerce serve to suggest that the listed goods and services are of a type
that may emanate from a single source. See In re Mucky Duck Mustard Co., 6
USPQ2d at 1467, 1470 n.6 (TTAB 1988) (“Although third-party registrations are
“not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, [they] may nonetheless 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 also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993). The registrations include, by way of example:
Registration No. 2905589 for inter alia “non-chemical additives
and petroleum based additives for motor oil”;
Registration No. 0687067 for, inter alia, “oil additives and fuel
additives”;
Serial No. 77762719

10

Registration No. 0900046 for, inter alia, “motor fuel additives”;
and
Registration No. 0954863 for, inter alia, “motor fuel additives.”11
We find the third-party registrations and website evidence sufficient to show
not only that applicant’s broadly worded non-chemical additives for oils and fuels
may encompass registrant’s petroleum based fuel additive, but also that applicant’s
goods are closely related to those of registrant, both types of additives being used to
improve fuel quality in engines and commonly emanating from the same source.
The du Pont factor of the relatedness of the goods thus favors a finding of
likelihood of confusion.
Applicant’s argument that the goods differ because its fuel additives are non-
chemical whereas the registrant’s fuel additive is petroleum based is not well taken.
As stated, the goods need not be identical to find a likelihood of confusion; they need
only be related in a manner which leads to a mistaken belief that they emanate
from the same source. In re Accelerate s.a.l., supra. As just stated, both applicant’s
and registrant’s fuel additives will be purchased by consumers for the same
purpose, often emanate from the same source, and may be purchased in the same
trade channels (discussed below). Accordingly, their particular formulation is not
distinguishing.12

11 The following third-party registrations have no persuasive value because they did not
list goods of the type identified in both applicant’s application and the cited registration:
Registration Nos. 1680891, 2423760, 2988410, 3131927, 3183089, 3334531 and 3608910.
12 Applicant also contends that “the goods … are different owing to the office’s own
taxonomy classifying the respective goods differently.” Applicant’s reply br. p. 2. It is
unclear what applicant means by this statement. We note that the goods are classified in
the same international class. And, even if they were not, the classification of goods and
services by the USPTO is merely an administrative determination and has no bearing on
Serial No. 77762719

11

Further, because there are no limitations as to channels of trade or classes of
purchasers in the identifications of goods in the application and cited registration, it
is presumed that applicant’s and registrant’s goods move in all channels of trade
normal for those goods, and that they are available to all classes of purchasers for
those goods. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139 (CCPA 1958); and In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992). Both applicant’s and registrant’s fuel additives are presumed to be sold
through automotive stores, marine stores and hardware stores and, in fact, the
record confirms this presumption. In addition, applicant’s advertising material
offers insight into the purpose of applicant’s goods and, by extension, its consumers.
For example, in one advertisement applicant states that its goods “work[] in any 2
or 4- cycle engine of any size, from the smallest string trimmer to the largest RV, as
well as boats, motorcycles, trucks, generators, lawn mowers, jetskis [sic], cars or any
other gas-powered engine.” Applicant’s November 1, 2010, Response to Office
Action, Exh. A. Given that applicant’s fuel additives are formulated for use in the
engines of yard and garden machinery, such as string trimmers and lawn mowers,
as well in those of cars and trucks, we conclude that applicant’s consumers will
include members of the general public seeking to improve fuel quality in various
types of engines. Accordingly, the trade channels and classes of purchasers overlap.

the issue of likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d
1771 (Fed. Cir. 1993); and National Football League v. Jasper Alliance Corp., 16 USPQ2d
1212 (TTAB 1990).
Serial No. 77762719

12

Applicant erroneously attempts to rebut the presumptions concerning trade
channels and classes of purchasers by arguing that while its goods are sold in brick
and mortar stores as well as online, and marketed to “marine owners,” it found no
such presence of registrant’s goods. However, in considering the scope of the cited
registration, we look to the registration itself, and not to extrinsic evidence about
the registrant’s actual goods, customers, or channels of trade. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119
USPQ 139 (CCPA 1958).
The du Pont factors of the relatedness of the goods, channels of trade and
classes of purchasers thus favor a finding of likelihood of confusion.
We turn then to the marks, the similarity of which is the key point of this
appeal. When, as here, the marks at issue are non-literal design marks, the
similarity of the marks must be decided primarily on the basis of visual similarity.
General Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 828 (TTAB 1983) (the
comparison of design marks comes down to a “subjective ‘eye ball’ reaction”); cf.
Diamond Alkali Co. v. Dundee Cement Co., 343 F.2d 781, 145 USPQ 211, 213
(CCPA 1965) (“When symbol marks...are being considered, appearance is most
significant. Symbols of this kind do not sound.”) (citation and internal quotation
marks omitted). “When comparing the color marks at issue, we are mindful that
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 appearance and overall commercial impression so that confusion as to the
Serial No. 77762719

13

source of the goods offered under the respective marks is likely to result.” Cook
Medical Technologies, 105 USPQ2d at 1381, citing San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
and Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
In addition, where, as here, the goods are closely related, the degree of
similarity necessary to find likelihood of confusion need not be as great as where
there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); and Schering-
Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
Further, in analyzing the marks, we of course must compare them as they
appear in the drawings. However, our analysis does not end there because the
record includes descriptions of the involved marks and they, too, must be considered
in determining the commercial impressions conveyed to relevant consumers and
whether the marks are, or are not, confusingly similar. As set forth in TMEP
§ 807.07(a)(ii) (2012): “The color location statement must include the generic name
of the color claimed. The statement may also include a reference to a commercial
color identification system. The USPTO does not endorse or recommend any one
commercial color identification system.” TMEP § 1202.05(e) reads as follows:
The description of the mark must be clear and specific, use
ordinary language, and identify the mark as consisting of the
particular color as applied to the goods or services. If the color is
Serial No. 77762719

14

applied only to a portion of the goods, the description must
indicate the specific portion. Similarly, if the mark includes
gradations of color, the description should so indicate. If the
applicant is claiming a shade of color, the shade must be described
in ordinary language, for example, “maroon,” “turquoise,” “navy
blue,” “reddish orange.” This is required even if the applicant also
describes the color using a commercial coloring system.
With these principles in mind, we now compare the marks, focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance. In re E.
I. du Pont de Nemours & Co., 177 USPQ at 567.
Registrant’s mark is described as follows: “The drawing is lined for the color
blue, and color is claimed as a feature of the mark. The mark consists of the color
blue as applied to the goods visible through a transparent tube.” Applicant’s mark
is described as follows: “The color(s) translucent blue is/are claimed as a feature of
the mark. The mark consists of translucent blue to be used for a container body and
not the cap.” We also find it helpful to reproduce both applicant’s and the
registrant’s specimens showing how each mark is actually used in commerce, but we
hasten to add with respect to registrant’s mark that, despite the depiction of
registrant’s color mark showing a particular shade, because we decide this ex parte
appeal on the information on the face of the registration, registrant’s mark covers
all shades of “blue.”13

13 We note that at the time registrant applied for registration of the cited mark, the
practice and rules governing applications for color marks only required: 1) a black and
white drawing depicting color in the Office’s color lining system; and 2) a description
describing the color(s) in the application which matched one of the twelve colors (namely,
brown, blue, green, orange, red or pink, gray or silver, violet or purple, yellow or gold) set
forth in prior Trademark Rule 2.52(e). An applicant was only asked to explain a particular
color/shade if that color was significantly different from the colors set out in the rule.
Contrary to applicant’s contention, registrant was not required to set forth a gradient or
shade of color.
Serial N

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19

trant’s spe
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15

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Serial No. 77762719

16

registrant’s goods through the transparent tubes in which they are contained and,
as such, registrant’s mark is visible, and is therefore subject to comparison. See,
e.g., Smithkline Beckman Corp. v. Pennex Products Co., Inc., 605 F. Supp 746, 225
USPQ 963 (E.D. Pa. 1985) (Where a trademark is asserted in the color orange of a
type of non-prescription aspirin, defendant does not infringe if its container is
opaque and customers cannot see that its tablets are orange, but if the container is
translucent, then likely confusion is possible). As regards placement of the colors,
they almost completely comprise both registrant’s and applicant’s goods. Although
the container caps for applicant’s containers are not blue, they are much smaller in
size as compared to the containers, and do not serve to distinguish applicant’s mark
from registrant’s mark.
There is some dispute as to whether applicant’s mark is “translucent blue” in
color or is the color blue with translucent qualities. While we are unaware of the
color, “translucent blue,” however viewed, our findings lead to the same outcome.
Because registrant’s “blue” mark is not limited to a certain shade of blue, it would
encompass the “color” “translucent blue.” That applicant’s blue color mark may
appear translucent, which is defined as “transmitting and diffusing light so that
objects beyond cannot be seen clearly,”14 is not sufficient to distinguish the goods for
purposes of our likelihood of confusion analysis. In certain lighting conditions, the

14 We take judicial notice of the definition of “translucent” taken from the Merriam-
Webster Online Dictionary (11th ed.), and retrieved at www.merriam-
webster.com/translucent on March 4, 2013, instead of the one requested by the examining
attorney. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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translucence may not be noticed. Because the marks are similar in appearance, we
find they have similar commercial impressions when applied to closely related
goods.
The similarity between the marks thus favors a finding of likelihood of
confusion.
Applicant argues with respect to the du Pont factor of conditions under which
sales are made that consumers who decide to purchase one or another of “non-
chemical additives” or “petroleum based fuel products” are sophisticated and know
exactly what they are buying and from whom they are buying it, thus minimizing
any chance of confusion. Applicant further argues that “because consumers of fuel
additives are knowledgeable, slight differences in the products, (i.e., a blue [sic]
translucent blue bottle with enzyme additives versus [a] transparent bottle with
blue petroleum) would further distinguish the products in the minds of
sophisticated consumers.” Applicant’s br. p. 9.
The problem with this argument is that applicant has introduced no evidence
whatsoever to support its position. On the other hand, the examining attorney
made of record with his November 3, 2010, Office Action, a copy of a screen shot
taken from the website of ACE Hardware showing that a bottle of applicant’s fuel
additive may be purchased for $4.99.15 Although we have no information
concerning the specific cost of registrant’s fuel additives, we believe they may
include relatively low cost items. We base this belief on examples of other relatively

15 Retrieved on November 3, 2010, at
http://www.acehardwareoutlet.com/productdetails.aspx?sku=8239378&source=GoogleBase.
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low cost fuel additives, e.g., a gas stabilizer from Fuel Fresh cost $9.95. See
Exhibits to the Office Action issued November 3, 2010. Based on the relatively
inexpensive costs of fuel additives, we believe that consumers would exercise no
more than an ordinary degree of care in their purchasing decisions. However, even
assuming arguendo that purchasers of fuel additives would exercise some degree of
care in their purchasing decisions, even knowledgeable and careful purchasers can
be confused as to source, where, as here, very similar marks are used in connection
with overlapping goods. See In re Research Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories
even of discriminating purchasers … are not infallible."). See also Refreshment
Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to
a sophisticated purchaser does not automatically eliminate the likelihood of
confusion because “[i]t must also be shown how the purchasers react to trademarks,
how observant and discriminating they are in practice, or that the decision to
purchase involves such careful consideration over a long period of time that even
subtle differences are likely to result in recognition that different marks are
involved”).
We thus find this du Pont factor neutral.
After careful consideration of the arguments and all of the evidence of record,
even if not specifically addressed, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s mark and the cited mark,
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their contemporaneous use on closely related goods sold in overlapping trade
channels is likely to cause confusion as to the source or sponsorship of such goods.
To the extent that any of applicant's points raises a doubt about likelihood of
confusion, that doubt is required to be resolved in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin's Famous Pastry Shoppe, Inc., 223 USPQ at 1290.
Decision: The refusal to register is affirmed.