Sunmarks, LLC

Trademark Trial and Appeal Board

Nov 1, 2013

No. 85388353 (T.T.A.B. Nov. 1, 2013)

Mailed: November 1, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sunmarks, LLC
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Serial No. 85388353
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Tara E. Langvardt and Richard J. McKenna of Foley & Lardner LLP for Sunmarks
LLC.
Matthew G. Galan, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).1
_______

Before Bucher, Lykos and Masiello, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On August 3, 2011, Sunmarks LLC (“applicant”)2 filed an application to register
on the Principal Register the mark 260 GTX in standard character format for “race
fuels” in International Class 4.3 Applicant has appealed the Trademark Examining

1 The application was reassigned from Trademark Examining Attorney Amy Kertgate to
Matthew G. Galan on July 3, 2013.
2 Applicant is a wholly-owned subsidiary of Sunoco, Inc.
3 Application Serial No. 85388353, filed pursuant to Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), alleging November 1, 2005 as the date of first use anywhere and in
commerce.
This Opinion is Not a
Precedent of the TTAB
Serial No. 85388353
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Attorney’s final refusal to register applicant’s mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so
resembles the registered marks GTX4 and GTX HIGH MILEAGE,5 also in
standard character format, for “lubricants for vehicles” in International Class 4 that
when used on or in connection with applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive. Both registrations are owned by the same entity,
Castrol Limited of the United Kingdom.
For the reasons explained below, we affirm the refusal to register.
I. Relevant Background
During ex parte prosecution of the application, the examining attorney inquired
whether the individual terms “260” and “GTX” as well as the combined term “260
GTX” had any meaning or significance as applied to applicant’s goods or in the race
fuel manufacturing industry. Applicant stated in relevant part that although
Sunoco, Inc. (the parent corporation of applicant) had offered various gasoline
blends identified by numbers ranging from “170” to “260” (with higher numbers
designating blends having a higher octane level and vice versa), “the number ‘260’
[in the applied-for mark] has never and does not stand for, mean, or refer to any
particular feature of [a]pplicant’s goods and is not directly correlated to any octane
level of [a]pplicant’s goods.” Applicant’s Request for Reconsideration (December 17,

4 Registration No. 1791230, registered on July 7, 1993; alleging 1971 as the date of first use
anywhere and in commerce; second renewal.
5 Registration No. 2754446, registered on August 19, 2003, alleging January 2002 as the
date of first use anywhere and in commerce; renewed. The registration includes a
disclaimer of the wording HIGH MILEAGE.
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2012). Applicant also stated that while “the term ‘GT’ has been used by others to
refer to grand touring or Gran Turismo cars … the ‘GT’ element of [a]pplicant’s
mark does not have any special significance or meaning in relation to [a]pplicant’s
racing fuels or the racing fuel industry generally.” Id. With respect to the “X”
portion of the term “GTX,” applicant explained that when its parent company had
previously used the mark GTX, it added the letter “X” to the existing product name
“GT” in order to distinguish race fuel as a non-oxygenated fuel. Id. Applicant
further indicated that “X” and “GTX” have no meaning in relation to applicant’s
racing fuels or in the racing fuel industry other than the consumer recognition
resulting from applicant’s parent’s long prior use of GTX to identify non-oxygenated
fuel blends. Id.
Following the institution of this appeal and subsequent denial of applicant’s
request for reconsideration, on March 1, 2013, applicant filed a request for remand
in light of the examining attorney’s determination to approve for publication
applicant’s companion applications for the marks 260 GT and 260 GT PLUS
(Application Serial Nos. 85388407 and 85388459), also for “race fuels.” Those
applications were initially refused registration under Section 2(d) based on different
cited registrations from those at issue in this appeal, namely for the marks GT-1
and GT PERFORMANCE for “motor oil” which are owned by different entities.
The refusal to register the companion applications was subsequently withdrawn
following applicant’s entry of a claim of acquired distinctiveness pursuant to Section
2(f) for both the 260 GT and 260 GT PLUS marks. Applicant, in its request for
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remand, argued that the examining attorney’s determination with respect to its
companion applications for “highly similar marks” supported its position here that
its applied-for mark 260 GTX is not confusingly similar to GTX and GTX HIGH
MILEAGE. Applicant’s Request for Remand (March 1, 2013). The examining
attorney considered applicant’s arguments but found them unpersuasive, and
maintained the refusal to register herein. Denial of Request for Reconsideration
(April 5, 2013).6
II. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In arguing against the examining attorney’s refusal to register,
applicant relies heavily on the sixth and eighth du Pont factors, namely the number
and nature of similar marks in use on similar goods and the length of time during

6 Applicant in its appeal brief reiterates its argument that the Office’s treatment of its
companion applications for the marks 260 GT and 260 GT PLUS is inconsistent with the
refusal to register applicant’s mark 260 GTX in the case before us. We disagree. As aptly
put by the examining attorney in his appeal brief, “it is not inconsistent to treat different
marks differently.” We further note that “it is well established that each case … stands on
its own facts, and prior decisions are of little value.” In re Quik-Print Copy Shop, Inc., 616
F.2d 523, 205 USPQ 505, 507 (CCPA 1980). Indeed, it is applicant, not the examining
attorney, that has adopted inconsistent positions in prosecuting its applications. Applicant’s
amendment to Section 2(f) in the companion applications for the marks 260 GT and 260
GT PLUS, for the same goods at issue here, constitutes a tacit admission that the marks
are not inherently distinctive but rather descriptive. See, e.g., Yamaha Int’l Corp. v.
Hoshino Gakki Co. , 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot
Corp., 15 USPQ2d 1224, 1229 (TTAB 1990). Yet here, applicant has stated that the term
“260” has no descriptive significance in relation to the identical goods.
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and conditions under which there has been concurrent use without evidence of
actual confusion. These factors, and the other relevant du Pont factors, in
particular, the similarities between the marks and the similarities between the
goods, are discussed below. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
A. Comparison of the Marks
First we consider the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). “[T]he 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 overall commercial impression so that
confusion as to the source of the goods offered under the respective marks is likely
to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. In re Binion, 93 USPQ2d
1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Both applicant’s and registrant’s marks are comprised, either in whole or in
part, of the term GTX. According to the record before us, the designation GTX in
applicant’s applied-for mark is arbitrary when applied to applicant’s identified
goods of “race fuels.” As previously recognized by the Board in Edison Brothers
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Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 533 (TTAB
1986), “…[c]onfusion is more likely between arbitrarily arranged letters than
between other types of marks. … We think that it is well known that it is more
difficult to remember a series of arbitrarily arranged letters than it is to remember
figures, syllables, words, or phrases. The difficulty of remembering such lettered
marks makes confusion between such marks, when similar, more likely.” For this
reason, the additional element “260” in applicant’s mark, even if distinctive, is not
sufficient to avoid the similarity in appearance, sound and connotation with
registrant’s marks.
In addition, the disclaimed term HIGH MILEAGE in the registered mark GTX
HIGH MILAGE is descriptive of registrant’s “lubricants for vehicles” and therefore
carries less significance in engendering a commercial impression. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed. Cir. 1985) (descriptive or
disclaimed matter is generally considered a less dominant portion of a mark). Thus,
it is more likely that prospective consumers will pay little attention to the
disclaimed matter in registrant’s mark and instead treat GTX as the source-
identifying element, and therefore view the marks as identifying goods as
originating from the same source since each mark contains the arbitrary term
“GTX.”
We therefore find that applicant’s mark, 260 GTX, and registrant’s marks, GTX
and GTX HIGH MILAGE, are highly similar in appearance, sound, connotation
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and commercial impression. This first du Pont factor weighs in favor of finding a
likelihood of confusion.
B. The Goods
The next step in our analysis is a comparison of the goods identified in
applicant’s application vis-à-vis the goods identified in the cited registrations. It is
well established that the respective goods do not have to be identical or even
competitive in order to determine that there is a likelihood of confusion; rather, it is
sufficient that the respective goods are related in some manner, or the conditions
surrounding their marketing must be such that the goods will be encountered by
the same purchasers under circumstances that would give rise to the mistaken
belief that they originate from the same source. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) quoting 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007); On-line Careline Inc.
v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984).
The record shows that applicant’s “race fuels” and registrant’s “lubricants for
vehicles” are closely related, complementary in nature, and are commonly offered by
the same entities and encountered at the same time by the same prospective
purchasers. The examining attorney introduced evidence from third-party Internet
websites from companies such as Renegard Racing Fuels & Lubricants, Shell,
MotorSports Racing Fuels, Torco, VP Racing, ERC, and Kelly Racing Fuels to
Serial No. 85388353
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support this finding. For example, excerpts from the Shell website state that “Shell
Racing Fuel URT 100 is specially formulated by Shell for on-road and off-road
applications” and that “Shell Lubricants is the number one global lubricant
supplier.” Office Action (June 25, 2012). Similarly, excerpts from the MotorSports
Racing Fuels website states that the company provides “the highest quality Racing
Fuel, Race Gas, Racing Lubricants, Race Additives, Race Accessories and other
great Racing Products at very competitive prices.” Id. Thus, the record reflects use
of the same mark by third parties in connection with both applicant’s and
registrant’s products. In view of the foregoing, the second du Pont factor also favors
a finding of likelihood of confusion.
C. Trade Channels
Next we consider the third du Pont factor – the similarity or dissimilarity of
established, likely to continue trade channels. Because the identifications of the
involved application and registrations are unrestricted as to trade channels, we
must presume that applicant’s and registrant’s goods travel in all ordinary trade
and distribution channels. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983).
As reflected in the record, entities offering both applicant’s and registrant’s
identified goods (“race fuels” and “lubricants for vehicles”) sell their products via
wholesale automotive racing distributorships, retail outlets featuring racing fuels
and lubricants and online. By way of illustration, the MotorSports Racing Fuels
website, which offers for sale both racing fuels and racing lubricants, specifically
Serial No. 85388353
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states “we offer WHOLESALE and RETAIL pricing as well as online ordering for
your convenience.” Office Action (June 25, 2012). Similarly, the website for Kelly
Racing Fuels notes that it markets its racing fuels and lubricants via “your local
retailer;” Southern Racing Fuels, Inc. advertises on its website that it is the largest
“race fuel distributor based in the state of Florida” featuring the Sunoco and
Valvoline brands and supplying “racetracks, dealers, speed shops, c-stores, racers,
motorcycle tracks.” Id. We find these to be the ordinary trade channels for both
applicant’s and registrant’s goods. As such, both applicant’s and registrant’s goods
will be encountered by the same prospective consumers in the racing industry.
Hence, the third du Pont factor weighs in favor of finding a likelihood of confusion.
D. Contemporaneous Use without Actual Confusion
Next, we consider the eighth du Pont factor, the length of time during and
conditions under which there has been concurrent use without evidence of actual
confusion, as argued by applicant. Applicant urges the Board to rely solely on this
factor, arguing that evidence of peaceful coexistence in the marketplace without
instances of actual consumer confusion suffices to obviate the Section 2(d) refusal.
In support thereof, applicant submitted the declaration of Robert Marro, General
Manager, Performance Products and Auto Events of Sunoco (R & M), which states
in relevant part: “I have more than 25 years experience in the business of the
promotion and sale of automotive fuel products and more than 10 years of
experience in the promotion and sale of racing fuels within the professional and
amateur automobile racing markets” (¶ 3); “[b]ased upon information and belief,
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Sunoco has made continuous, nationwide use of the marks 260 GT, 260 GT PLUS,
and 260 GTX on racing fuels since at least as early as November 1, 2005” (¶ 8);
“NASCAR racing is likely the most popular and heavily promoted car racing circuit
in the US and Sunoco’s 260 GTX fuel was promoted and sold as the official fuel for
the NASCAR racing circuit from 2007 through 2010” (¶ 6); “I am aware of and have
knowledge that Castrol Limited has used the marks GTX and GTX HIGH
MILEAGE on motor oils in the marketplace for many years, perhaps as many as 30
years” (¶ 10); “[d]espite Sunoco’s continuous nationwide use of marks incorporating
the term GT or GTX on racing fuels for more than 10 years, there have been no
instances of consumer confusion [between] Sunoco’s use of marks incorporating the
term GT or GTX and Castrol Limited’s use of the marks GT-1, GT PERFORMANCE
and GTX HIGH MILEAGE” (¶ 14); and “based upon my knowledge of the racing
fuel and lubricants business, I am confident there has been significant overlap
(perhaps nationwide) between Sunoco’s use and promotion of the marks
incorporating the term GT or GTX on racing fuels and the use and promotion of the
marks GT-1, GT PERFORMANCE, and GTX HIGH MILEAGE on motor oil and
lubricants.” Id. Relying on the declaration, applicant contends that in addition to
several years of contemporaneous use, for a period of three years applicant and
registrant simultaneously promoted and used their respective marks on the
NASCAR racing circuit without, to applicant’s knowledge, any instances of actual
confusion, and this factor alone therefore mitigates against finding a likelihood of
confusion.
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We agree with applicant that, in certain instances, a single du Pont factor may
be dispositive of the issue of likelihood of confusion. See e.g., Kellogg Co. v. Pack'em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). We do not,
however, find that to be the case here. “The fact that an applicant in an [ex parte]
case is unaware of any instances of actual confusion is generally entitled to little
probative weight in the likelihood of confusion analysis, inasmuch as the Board in
such cases generally has no way to know whether the registrant likewise is
unaware of any instances of actual confusion … .” In re Opus One Inc., 60 USPQ2d
1812, 1817 (TTAB 2001). See also In re Majestic Distilling Company, Inc., 65
USPQ2d at 1205 (“A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of confusion. The opposite is not
true, however. The lack of evidence of actual confusion carries little weight”). The
probative value of the Marro declaration is lessened to the extent that the
statements made therein regarding his lack of knowledge of actual confusion
pertain only to registrant’s mark GTX HIGH MILAGE, not GTX. In addition,
because the declaration is from applicant’s corporate representative and the
registrant did not have the opportunity to rebut the statements made therein or
present its own evidence, its probative value is lessened. See e.g., In re Bissett-
Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973). We therefore find
that the eighth du Pont factor, at best, slightly favors applicant.
E. Scope of Protection
The sixth du Pont factor requires consideration of any evidence pertaining to the
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number and nature of similar marks in use in the marketplace in connection with
similar goods. Applicant argues that the coexistence on the Principal Register of GT
and GTX formative marks in connection with automotive products makes confusion
unlikely.
We are not persuaded. As we have often stated, third-party registrations of
marks are not evidence that the registered marks are in use; accordingly, they are
of limited probative value for demonstrating weakness of the marks. See In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also 2
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:89
(4th ed. 2009) (“The mere citation of third-party registrations is not proof of third
party uses for the purpose of showing a crowded field and relative weakness.”). In
any event, even if we were to accord weight to such evidence, the third-party
registrations comprised of GT formative marks are not relevant here because
applicant’s and registrant’s marks each incorporate the term GTX, not GT.
In addition, as evidence of use in the marketplace of similar marks for similar
goods, applicant points to statements made in the Marro Declaration that
ConocoPhillips Company and Penzoil Company have used the marks GT-1 and GT
PERFORMANCE in connection with motor oil for over thirty years. Marro
Declaration ¶¶ 10-11. These statements in the Marro declaration, however, pertain
to GT formative marks, not GTX marks which are at issue here in this proceeding.
We therefore cannot find that the cited marks in this case are weak, diluted or
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entitled to only a narrow scope of protection. Accordingly, we deem this sixth
du Pont factor neutral.
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, despite the evidence of contemporaneous
use, we find that because the marks are similar in sound, appearance, connotation
and commercial impression and because the goods are related and sold in
overlapping trade channels, confusion is likely between applicant’s mark for its
identified goods and the marks in the cited registrations.
DECISION: The refusal to register under Section 2(d) is affirmed.