TBC Corp.v.The Hercules Tire & Rubber Co.

Trademark Trial and Appeal Board

Aug 13, 1999

No. 91103349 (T.T.A.B. Aug. 13, 1999)

Paper No. 22
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/13/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
TBC Corporation
v.
The Hercules Tire & Rubber Company
_____
Opposition No. 103,349 to application Serial No. 75/000,029
filed on October 2, 1995
_____
Marsha G. Gentner and Andrew J. Gray, IV of Jacobson, Price,
Holman & Stern, PLLC for TBC Corporation.
Donald R. Fraser and Richard G. Martin of MacMillan, Sobanski &
Todd, LLC for The Hercules Tire & Rubber Company.
______
Before Hohein, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Hercules Tire & Rubber Company has filed an
application to register the mark "GRAND VALLEY" for "tires for
motor vehicles".1
TBC Corporation has opposed registration on the ground
that, "long prior to the filing date of the application opposed
herein, Opposer has, and is now, engaged in the marketing,

1 Ser. No. 75/000,029, filed on October 2, 1995, which alleges a bona
fide intention to use the mark in commerce.
Opposition No. 103,349
2
distribution and sale of vehicle tires, wheels and other motor
vehicle products ... under and in connection with the trademarks
GRAND PRIX, GRAND AM, GRAND SPORT and GRAND SPIRIT [hereinafter
... referred to as Opposer’s ’GRAND Mark(s)’]"; that opposer is
the owner of valid and subsisting registrations for the following
"GRAND Mark(s)" and associated goods and services:
(1) the mark "GRAND PRIX," which is
registered for (a) "automobile tires";2 (b)
"motor vehicle parts--namely, wheels";3 (c)
"motor oil" and "filters and oil filters for
land vehicles and shock absorbers";4 (d)
"storage batteries for automobiles and
trucks";5 (e) "mufflers and brake parts for
automotive vehicle[s]";6 (f) "battery
chargers and battery cables";7 (g) "car wash
services";8 and (h) "vehicle chassis parts;
namely, ball joints, bushings, control arms,
drag links, idler arms, stabilizer links, tie

2 Reg. No. 690,249, issued on December 22, 1959, which sets forth a
date of first use of February 13, 1959 and a date of first use in
commerce of March 17, 1959; renewed.
3 Reg. No. 1,075,901, issued on October 25, 1977, which sets forth
dates of first use of November 6, 1975; renewed.
4 Reg. No. 1,157,619, issued on June 16, 1981, which sets forth dates
of first use of August 17, 1978; combined affidavit §§8 and 15.
5 Reg. No. 1,183,571, issued on December 29, 1981, which sets forth
dates of first use of March 6, 1980; combined affidavit §§8 and 15.
6 Reg. No. 1,224,147, issued on January 18, 1983, which sets forth
dates of first use of November 5, 1981; combined affidavit §§8 and 15.
As subsequently amended, such registration shows the mark in the
format reproduced below:
7 Reg. No. 1,258,438, issued on November 22, 1983, which sets forth
dates of first use of July 14, 1982; affidavit §8.
8 Reg. No. 1,655,035, issued on August 27, 1991, which sets forth dates
of first use of August 5, 1987; affidavit §8.
Opposition No. 103,349
3
rod ends, constant velocity joints, and king
bolts";9
(2) the mark "GRAND PRIX RADIAL G/T" and
design, as illustrated below,
which is registered for "automobile vehicle
tires";10
(3) the mark "GRAND SPORT," which is
registered for "vehicle tires";11 and
(4) the mark "GRAND SPIRIT," which is
registered for "vehicle tires";12
and that applicant’s mark, when used in connection with its
goods, so resembles opposer’s "GRAND Mark(s)" as to be likely to
cause confusion, mistake or deception.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.

9 Reg. No. 1,926,381, issued on October 10, 1995, which sets forth
dates of first use of December 1992.
10 Reg. No. 1,164,594, issued on August 11, 1981, which sets forth
dates of first use of March 3, 1980; combined affidavit §§8 and 15.
The terms "RADIAL G/T" are disclaimed.
11 Reg. No. 1,421,825, issued on December 23, 1986, which sets forth
dates of first use of February 25, 1986; combined affidavit §§8 and
15.
12 Reg. No. 1,958,273, issued on February 27, 1996, which sets forth
dates of first use of January 1987.
Opposition No. 103,349
4
The record includes the pleadings; the file of the
involved application; and, as part of opposer’s case-in-chief,
the testimony, with exhibits, of its director of communications,
James R. Pascover. Opposer, as the rest of its case-in-chief,
submitted notices of reliance upon: certified copies of its
pleaded registrations; applicant’s responses to opposer’s
requests for admissions;13 and applicant’s answers to certain of
opposer’s interrogatories and requests for production of
documents.14 Applicant, however, did not take testimony, nor did
it otherwise introduce any evidence in its behalf. Briefs have
been filed,15 but an oral hearing was not requested.
Opposer’s priority of use of its "GRAND PRIX," "GRAND
SPORT" and "GRAND SPIRIT" marks is not in issue inasmuch as the
certified copies of its registrations therefor show that, in each
instance, such registrations are subsisting and owned by opposer.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). The record, as noted below,
establishes in any event that opposer’s use of such marks in
connection with automobile or vehicle tires is prior to the

13 While several of applicant’s requests for admissions refer to
attached copies of exhibits A and B, which assertedly are copies of
letters from counsel for opposer to applicant’s attorney, such
exhibits are not attached to the notice of reliance and thus are not
of record herein.
14 Although responses to requests for production of documents are not
proper subject matter for a notice of reliance, inasmuch as applicant
has in effect treated such responses as constituting part of the
record, they are considered to have been stipulated into the record
pursuant to Trademark Rule 2.123(b).
15 Opposer’s consented motion for an extension of time to file its
reply brief is granted.
Opposition No. 103,349
5
October 2, 1995 filing date of applicant’s application, which is
the earliest date upon which applicant can rely in this case
since it failed to take testimony or otherwise present any
evidence in its behalf.16 The record also indicates that opposer
likewise has priority of use of its "GRAND AM" mark for tires for
automobiles. The only real issue to be determined in this
proceeding,17 therefore, is whether applicant’s "GRAND VALLEY"
mark, when used in connection with tires for motor vehicles, so
resembles opposer’s "GRAND PRIX," "GRAND AM," "GRAND SPORT"

16 See, e.g., Lone Star Manufacturing Co., Inc. v. Bill Beasley, Inc.,
498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974) and Columbia Steel Tank
Co. v. Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA
1960).
17 Opposer, in its main brief, contends that this proceeding presents
an additional "issue as to whether Applicant actually had a bona fide
intent to use the ... GRAND VALLEY mark as of the filing date of that
application." Specifically, citing Commodore Electronics Ltd. v. CBM
Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), opposer insists that
"the record herein reveals an absence of any evidence to establish
that Applicant ... possessed ... a bona fide intent to use the GRAND
VALLEY mark at the time it filed the opposed application." Opposer’s
claim that applicant lacked a bona fide intention to use such mark,
however, was neither pleaded in the notice of opposition nor, despite
the fact that applicant has responded to the merits thereof in its
brief, can it be fairly said that the pleadings should be deemed to be
amended in accordance with Fed. R. Civ. P. 15(b) because the issue was
tried by the express or implied consent of the parties. Thus, not
only has applicant not been given adequate notice of such a claim, but
in any event the record is simply devoid of any evidence to establish
that as of the filing date of the opposed application, applicant
lacked a bona fide intention to use such mark. While opposer asserts
that applicant’s responses to certain interrogatories and requests for
production show that applicant had no documents to support its claim
of a bona fide intent to use the "GRAND VALLEY" mark for tires, a
careful reading of such responses demonstrates that applicant actually
referred to "a search printout received from Applicant’s attorney
dated September 21, 1995" and stated that it did not have any
documents "apart from the documents produced in response to preceding
requests." In view thereof, and since it is clear from the admission
in the record that applicant is a competitor of opposer that applicant
has the capacity to market and/or manufacture tires and thus is not a
newcomer to the field, the claim by opposer that applicant lacked a
bona fide intention to use the "GRAND VALLEY" mark for tires is
plainly without merit. See Commodore Electronics Ltd. v. CBM
Kabushiki Kaisha, supra at 1507.
Opposition No. 103,349
6
and/or "GRAND SPIRIT" marks for vehicle tires18 that confusion is
likely as to the source or sponsorship of the parties’ respective
goods.19
According to the record, opposer began business in 1956
as Cordovan Associates and, upon going public in 1983, became
known as TBC Corp. Opposer’s business consists of marketing and
distributing private brand vehicle tires,20 including replacement
passenger tires and performance tires, which it does under its
three principal house marks of "CORDOVAN," "MULTI-MILE" and
"SIGMA". Opposer does business in every state of the United
States and, in terms of units sold, is the fourth largest seller
of tires,21 trailing only Goodyear, Firestone and Michelin, which
constitute the three major manufacturers of tires. Opposer sells
its vehicle tires to regional distributors, who resell such goods
to retailers within the distributor’s territory, and directly to

18 In light of the statement in opposer’s main brief that "the only
issue ... is whether there exists a likelihood of consumer confusion
between TBC’s GRAND Marks and the Opposed mark, both as used for
tires," no further consideration will be given as to whether
applicant’s "GRAND VALLEY" mark is likely to cause confusion with
opposer’s "GRAND PRIX" mark for car wash services or for any of its
automotive products other than vehicle tires.
19 Although applicant argues at length in its brief that opposer has
failed to establish that it has a family of "GRAND" marks, opposer in
its reply brief stresses that it "has neither pleaded, nor argued
herein, the existence of a family of GRAND Marks." The issue of
likelihood of confusion, as indicated above, must accordingly be
determined by comparing applicant’s mark for its goods with each of
opposer’s marks for its vehicle tires.
20 Such a tire, according to Mr. Pascover’s testimony, is one which "is
"marketed under a brand name which is different from the name of the
tire’s manufacturer." (Pascover dep. at 11.)
21 In particular, opposer holds a market share of "six and a half
percent," which Mr. Pascover testified is "an enormous share of the
replacement tire market." (Id. at 17.)
Opposition No. 103,349
7
major retailers, who in turn sell opposer’s vehicle tires through
independent tire retailing outlets. Opposer’s tire retailers
include free-standing tire stores, major automotive retailers,
gas stations and service garages. Most of such retailers also
sell other brands of tires.
Opposer uses the marks "GRAND PRIX" and "GRAND AM" in
connection with passenger tires and performance tires and has
continuously done so since, respectively, about 1959 and the late
1970s. Opposer uses the mark "GRAND SPORT" for passenger tires
and light truck tires and has continuously done so since the
middle to late 1980s. Opposer, in addition, uses the mark "GRAND
SPIRIT" for passenger tires and has continuously done so since
the late 1980s. In each case, such marks appear on the sidewalls
of such tires and on tire labels affixed to the goods. The marks
are also used on a variety of point-of-sale merchandising
materials including posters, banners, tire centers, tire toppers,
display racks, outdoor signs, product specification sheets,
pocket catalogs and warranty booklets. Opposer distributes such
materials for use by its dealers and their retail outlets, and it
also prepares occasional radio ads and provides camera-ready art
for use in newspaper advertising.
While opposer’s "GRAND SPIRIT" passenger tires are sold
under each of its three house marks, its "CORDOVAN" dealers also
sell its "GRAND PRIX" tires. Similarly, its "MULTI-MILE" dealers
also offer its "GRAND AM" tires, while its "SIGMA" dealers,
instead, additionally carry its "GRAND SPORT" tires. Opposer

Opposition No. 103,349
8
also has customers who buy all four of such brands of tires.22
According to Mr. Pascover, opposer’s retail customers are
accustomed to seeing more than one brand of tire with a "GRAND"-
formative mark being sold in the same retail outlet and thus, in
his opinion, applicant’s "GRAND VALLEY" tire "would look like
another TBC tire in a retailer’s showroom." (Pascover dep. at
112.) However, while acknowledging, on cross-examination, that
tires bearing all four of its "GRAND"-based marks would not
typically be sold together by a retailer which opposer directly
supplies, Mr. Pascover reiterated that opposer has wholesale
customers "who buy all four brands" and that "they could in turn
sell them all to a single retail outlet." (Id. at 124-25.)
From 1991 until September 1997, opposer has had "sales
of about seven hundred million ... on behalf of the Grand marks"
for its vehicle tires. (Id. at 94.) In particular, Mr. Pascover
indicated that opposer’s sales of its "GRAND PRIX" tires were "in
the neighborhood of about two hundred million dollars," while

22 Specifically, Mr. Pascover testified as follows:
Q. Do any of TBC’s customers sell tires from more
than one of TBC’s product lines?
A. Yes.
....
Q. Does TBC have any customers who buy Grand Prix,
Grand Am, Grand Sport and Grand Spirit tires?
A. Yes, we do.
Q. Could you name one of these?
A. Carroll Tire in Hapeville, Georgia, would buy all
four.
(Id. at 92-93.)
Opposition No. 103,349
9
those of its "GRAND SPORT" tires were approximately "fifty
million" dollars, its "GRAND SPIRIT" tires were "about a hundred
million" dollars and its "top selling" "GRAND AM" tires were
"about three hundred and fifty million" dollars. (Id. at 94-95.)
During the same period, opposer has spent $2.3 million on
advertising materials featuring its pleaded marks and estimates
that sellers of its tires have, in turn, expended a comparable
amount to advertise such goods.
Opposer has policed its marks, having in particular
"opposed [the mark] Grand Country [for tires] and ... received a
preliminary injunction against the manufacturer and their use of
that designation." (Id. at 114.) Other than such mark, Mr.
Pascover testified that he is not aware of any two-word marks for
tires which include the word "grand" in the marks. Mr. Pascover
nevertheless acknowledged on cross-examination that, as to marks
for tires in which the terms "grand" or "gran" have been run
together to form a single designation, he has "twice" seen the
mark "Grandtrek" and that opposer has "had some discussions
about" the "name Grandtour, one word." (Id. at 123-24.) No
indication was given, however, as to the extent of such uses, nor
were there any other reported instances of third-party use.
The record contains relatively little information about
applicant, although it does establish that applicant is a
competitor of opposer. Like opposer, applicant sells its motor
vehicle tires to tire wholesalers, distributors and retailers.
In particular, applicant intends for its "GRAND VALLEY" mark to

Opposition No. 103,349
10
be used in connection with tires which will be sold through
independent tire dealers in the tire replacement market.
Although, prior to adopting its "GRAND VALLEY" mark, applicant
was aware of opposer and its "GRAND PRIX," "GRAND AM," "GRAND
SPORT" and "GRAND SPIRIT" marks for tires, there is nothing in
the record which suggests that applicant adopted its mark in bad
faith or otherwise seeks to trade on the goodwill in opposer’s
marks. Applicant, however, has yet to use its "GRAND VALLEY"
mark in connection with any products or services. Moreover,
while it has received various communications which mention
opposer and/or opposer’s "GRAND"-prefixed marks, such have been
in the form of "catalogs, advertisements and other general
business communications." (Answer to Interrogatory No. 16(b).)
Turning to the issue of likelihood of confusion, we
find upon consideration of the pertinent factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), that confusion as to source or affiliation is
likely to occur. As a starting point, the parties’ vehicle tires
must be considered to be legally identical goods and, as such,
would be sold through the same channels of trade to the identical
classes of purchasers. Consequently, if the goods were to be
sold under the same or similar marks, confusion as to the source
or sponsorship of the parties’ tires would be likely to occur.
Applicant, with respect to the parties’ marks, contends
among other things that opposer’s marks "are weak and should be
afforded a narrow scope of protection" because each contains "the
common, laudatory prefix GRAND." The record, however, is devoid
Opposition No. 103,349
11
of any evidence that such term is in common use by third parties
in connection with marks for tires or other automotive products.
Moreover, while the term "GRAND" undoubtedly possesses a
laudatory significance, our principal reviewing court (one panel
member dissenting), in reversing this Board and finding a
likelihood of confusion between the mark "GRAND SLAM" for tires
for motor vehicles and opposer’s mark "GRAND AM" for automobile
tires, stressed in TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44
USPQ2d 1315, 1318 (Fed. Cir. 1997), that:
It does not matter that GRAND is "laudatory,"
a characteristic the Board thought
contributed to its "weakness" as a trademark.
It is a major contributor to overall
similarity.
Moreover, while opposer’s advertising expenditures have been
relatively meager, it has nevertheless enjoyed substantial sales
during the most recent several years for which sales figures were
provided. As a result of such sales success, opposer’s "GRAND
PRIX," "GRAND AM," "GRAND SPORT" and "GRAND SPIRIT" marks must be
regarded as strong marks which have gained a measure of customer
recognition and are entitled to a correspondingly broader scope
of protection, notwithstanding the suggestiveness inherent
therein.
Applicant nevertheless further asserts that confusion
is not likely because the respective marks are readily
distinguishable by their suffix portions, which in combination
with the term "GRAND" create marks which "are distinct in their
sound, appearance, meaning and overall commercial impression."
However, as opposer correctly notes, our principal reviewing
Opposition No. 103,349
12
court has pointed out that, as a general proposition, "[w]hen
marks would appear on virtually identical goods ..., the degree
of similarity [of the marks] necessary to support a conclusion of
likely confusion declines." Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). Here, despite
their differences in sound and connotation, the respective marks
are otherwise substantially similar in their overall structure,
general appearance and commercial impression, due to the fact
that each of opposer’s marks and applicant’s mark are two-word
marks which begin with the identical term "GRAND". Moreover, as
was the case with the "GRAND SLAM" mark in Holsa, the differences
in connotation between the respective marks would appear to be
"entitled to little or no weight." 44 USPQ2d at 1318. Here,
applicant’s mark "GRAND VALLEY," like the mark "GRAND SLAM," "is
wholly arbitrary, i.e., it has no meaning at all" with respect to
tires for motor vehicles. 44 USPQ2d at 1317.
In view thereof, and considering that vehicle tires are
sold to all manner of people, we are constrained to agree with
opposer that contemporaneous use of its "GRAND PRIX," "GRAND AM,"
"GRAND SPORT" and/or "GRAND SPIRIT" marks and applicant’s "GRAND
VALLEY" mark, in connection with vehicle tires, would be likely
to cause confusion as to the origin or affiliation of such goods.
Particularly in the absence of any evidence of significant third-
party use in the tire and related automotive products field of
marks which consist of or include the term "GRAND," it would not
be unreasonable, for example, for ordinary consumers, familiar
Opposition No. 103,349
13
with the "GRAND PRIX" and "GRAND SPIRIT" tires available at
opposer’s "CORDOVAN" retailers, the "GRAND AM" and "GRAND SPIRIT"
tires offered by its "MULTI-MILE" dealers and/or the "GRAND
SPORT" and "GRAND SPIRIT" tires marketed through its "SIGMA"
retail outlets, to believe, upon encountering applicant’s
substantially similar "GRAND VALLEY" tires, that opposer has
introduced a new product line which is specifically for sale
through the retailers offering such goods.
As a final consideration in this regard, we note that
to the extent that we may have any doubt as to our conclusion
that confusion is likely, we resolve such doubt, as we are
required to do, in favor of opposer as the prior user and
registrant. See, e.g., TBC Corp. v Holsa Inc., supra at 1318;
and In re Pneumatiques Caoutchouc Manufacture et Plastiques
Kelber-Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The opposition is sustained and registration
to applicant is refused.
G. D. Hohein
H. R. Wendel
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board