Titan Int’l., Inc.

Trademark Trial and Appeal Board

Jun 8, 2004

No. 75630300 (T.T.A.B. Jun. 8, 2004)

Hearing: Mailed:
March 23, 2004 June 8, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Titan International, Inc.
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Serial No. 75630300
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Daniel A. Rosenberg of Davis Brown Koehn Shors & Roberts,
P.C. for Titan International, Inc.
Irene Williams, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Chapman, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Titan International, Inc. seeks registration on the
Principal Register of the mark MUD MONSTER for goods
identified in the application, as amended, as “tires, but
not tires for two-wheeled motor vehicles.”1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney
1 Application Serial No. 75630300 was filed on January 29,
1999 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75630300
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has held that applicant’s mark, when used in connection
with the identified goods, so resembles the mark MONSTER
registered for goods identified as follows:
“motors (except for land vehicles)” in
International Class 7;
“ships; boats, structural parts and fittings
therefor; air cushion vehicles, aircraft,
structural parts and fittings therefor; railway
cars, structural parts and fittings therefor;
motor vehicles, structural parts and fittings
therefor; motorcycles, bicycles, structural
parts and fittings therefor; two-wheeled motor
vehicles, structural parts and fittings
therefor, namely, chainwheels, cranks, air
pumps, alarming horns, saddles, spindles,
stands, spokes, tires, chains, chain cases,
inner tubes, mudguards, grips, luggage carriers,
hubs, handlebars, freewheels, frames, pedals,
front forks, wheel rims, tires; wheelchairs;
cable transport installations for cargo
handling; non-electric motor and vehicle parts
for land vehicles, namely, internal combustion
engines, steam engines, jet engines; machine
elements for land vehicles, namely, shafts,
axles, spindles, journals, shaft couplings,
bearings, power transmissions, shock absorbers,
springs, brakes, alternating current motors,
direct current motors, tire patches, anti-theft
devices,” in International Class 12; and
“leather jackets, pants, shirts, clothing belts,
blouses, sweaters and scarves, all for
motorcyclists,” in International Class 252
as to be likely to cause confusion, to cause mistake or to
deceive.
2 Registration No. 2454334 issued to Ducati Motor S.p.A. on
May 29, 2001.
Serial No. 75630300
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The Trademark Examining Attorney and applicant have
fully briefed the case and both appeared at an oral hearing
conducted by the Board.
The Trademark Examining Attorney argues that the
involved marks are highly similar; that applicant’s goods
are closely related, if not identical, to registrant’s
goods; that they move through the same channels of trade;
and that under the circumstances of this case, even
sophisticated purchasers might well be confused.
Applicant responds that the overall impressions of
these two marks are different; that applicant’s goods are
neither similar nor related to registrant’s goods; and that
these respective goods do not move through the same
channels of trade.
We reverse the refusal to register.
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 upon 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 relationship of the
Serial No. 75630300
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goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Accordingly, we turn first to the du Pont factor
focusing on the similarity or dissimilarity of the marks in
their entireties as to appearance, sound and connotation.
In summarizing her comparison of the involved marks,
the Trademark Examining Attorney argues that “ … the
dominant portion of both registrant’s and applicant’s marks
is MONSTER …. The addition of the term MUD to
[registrant’s mark for] tires merely specifies that these
particular “monster” tires can be used in mud …. An
applicant [sic, A potential customer] might well assume the
tires the applicant has are specialized tires from the
MONSTER house brand tires.” (Trademark Examining
Attorney’s appeal brief, p. 3)
In response, applicant argues that the Trademark
Examining Attorney has improperly dissected its mark – that
the comparison must be between MUD MONSTER and MONSTER,
compared in their entireties. Applicant argues that
because the word MUD appears first in applicant’s mark, it
should be considered the dominant and most important
portion of its mark. Moreover, applicant argues that the
Trademark Examining Attorney has unfairly dismissed the
Serial No. 75630300
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significance of the initial word of its mark, MUD, as
nothing more than a descriptive term. Applicant argues
that while the word “mud” may be suggestive of tires
designed for off-road use, it is not a grade designation
for tires. Furthermore, applicant argues that in addition
to the obvious differences in sound and appearance between
MUD MONSTER and MONSTER, the initial word, MUD, changes the
connotation of its mark. For example, while MONSTER alone
may connote a frightening creature, applicant argues that
“the phrase MUD MONSTER associated with tires conjures an
image of large tires that can tackle mud ….”
While the word “monster” is still an important
component of applicant’s mark, and shares with registrant’s
mark the idea of largeness, we also agree with applicant
that when considered in their entireties, and when applied
to the respective goods, the two terms create somewhat
different overall commercial impressions.
We turn then to the relatedness of the goods as listed
in the instant application and in the cited registration.
Applicant intends to use its mark with “tires, but not
tires for two-wheeled motor vehicles.” This amended
identification of goods was submitted during the course of
the involved prosecution in order to overcome the Section
Serial No. 75630300
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2(d) refusal to register by making it clear that applicant
did not intend to use this mark on motorcycle tires.
However, the goods in the cited registration are
clearly not limited to motorcycles and motorcycle parts.
Of primary importance to this proceeding is registrant’s
long listing of items in International Class 12, which
appears to combine two types of goods. In the first
category, we note that the cited registration is based upon
a foreign registration under Section 44 of the Trademark
Act, and the long listing of goods in the vehicle class
includes a series of disparate and broadly-stated goods
(e.g., “steam engines,” “ships,” “boats,” “air cushion
vehicles,” “jet engines,” “aircraft,” “railway cars,”
“cable transport installations for cargo handling,” and
“wheelchairs”) having nothing to do with motorcycles. The
second and larger grouping of goods in this class is
prefaced by the phrase “two-wheeled motor vehicles,
structural parts and fittings therefor.” Some of the
enumerated items that follow are, by definition, found only
on two-wheeled motor vehicles (e.g., “saddles,” “stands,”
“handlebars,” “front forks,” etc.). Other parts and
accessories (like “mudguards”) that could arguably be
interpreted as being designed either for motorcycles or for
Serial No. 75630300
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motor vehicles other than two-wheeled vehicles are listed
after an explicit limitation to parts for “two-wheeled
motor vehicles.”3
Nonetheless, the Trademark Examining Attorney argues
that the registrant’s identification of goods might be
“identical” to applicant’s goods. In her brief, she argues
as follows:
The applicant’s “Tires, but not tires for
two-wheeled motor vehicles” are similar and
related to the registrant’s “motor vehicles,
structural parts and fittings therefor” and
other parts specifically mentioned in the
identification such as mud guards. The
goods may even be identical, given the
registrant’s broad identification of goods.
A potential customer is very likely to
believe that vehicles and their parts
emanate from the same single source. In re
Jeep Corp., 222 USPQ 333 (1983)
[contemporaneous use of “Laredo” for land
vehicles and structural parts therefor, and
for pneumatic tires, is likely to cause
confusion.]
(Trademark Examining Attorney’s appeal brief, p. 6).
However, as argued by applicant, registrant’s “tires” and
“mud guards” are enumerated only for “two-wheeled motor
vehicles.”
3 While the goods listed in International Class 25 of the
cited registration do not figure prominently in the likelihood of
confusion analysis herein, we note, in the context of
registrant’s prospective customers, that the clothing items are
explicitly limited to “motorcyclists.”
Serial No. 75630300
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Of course, as pointed out by the Trademark Examining
Attorney, registrant’s long listing of goods in
International Class 12 does include the phrase “motor
vehicles, structural parts and fittings therefor.” The
Trademark Examining Attorney argues this might well include
tires. However, there is no evidence that tires are
considered to be “structural parts” for motor vehicles.
Thus, based upon our review of the cited registration,
the closest relationship of the goods herein is between
registrant’s tires as well as related parts, fittings and
accessories for two-wheeled motor vehicles, on the one
hand, and applicant’s tires for motor vehicles other than
two-wheeled vehicles, on the other hand. However, the
record does not shed any light on the commercial
relationship, if any, between motorcycle tires and tires
for motor vehicles other than two-wheeled vehicles. Nor
has the Trademark Examining Attorney placed any evidence
into the record demonstrating that the channels of trade
for motorcycle tires and tires for larger land motor
vehicles (other than two-wheeled vehicles) are ever
overlapping.
Furthermore in addition to these differences in the
goods, the marks herein are not the same, as noted earlier.
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Hence, we find that the holding of In re Jeep Corp. is not
applicable to the facts of this case.4
Accordingly, we find that the Trademark Examining
Attorney has failed to make a prima facie showing that
applicant’s goods are related to registrant’s goods.
Finally, as to the du Pont factor focusing on the
conditions under which and buyers to whom sales are made,
we acknowledge applicant’s point that vehicle tires
directed to ordinary consumers are costly enough that they
cannot be considered to be impulse purchases, the tires
must be compatible with the tire specifications set by the
vehicle manufacturer, and hence, replacement tires will be
bought with greater care than would be the case with more
inexpensive, routine purchases. Yet, applicant goes
further in arguing that it makes special off-highway tires
designed for large agricultural, construction, industrial
and military vehicles – tires that are not only quite
4 The marks in Jeep Corp. were identical (e.g., LAREDO).
Additionally, in Jeep Corp., the cited registered mark was for
pneumatic tires while the application was for land vehicles and
structural parts therefor. This is consistent with long-settled
Board precedent finding likelihood of confusion when the same or
quite similar marks have been used on different types of
vehicular parts, or when the same or quite similar marks have
been used on vehicles, on the one hand, and various vehicle parts
or accessories for those vehicles, including tires, on the other.
By contrast, here we are dealing with the difference between
tires for two-wheeled motor vehicles and tires other than those
for two-wheeled vehicles.
Serial No. 75630300
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expensive but which are substantially all bought by
sophisticated purchasers. While this is a compelling
argument, the factual record does not support the more
limited scope of these tires as argued by applicant, and
the identification of goods is not restricted to these
narrow channels of trade. Accordingly, the du Pont factor
focusing on the conditions under which and buyers to whom
sales are made must be considered to be a neutral factor in
making our determination on likelihood of confusion herein.
In summary, we find on this ex parte record that the
two terms create a somewhat different overall commercial
impression, that the goods have not been shown to be
related, and that there is no evidence as to the respective
channels of trade or the sophistication of the purchasers.
Thus, we find that a likelihood of confusion between these
marks as applied to the respective goods of applicant and
registrant has not been shown.
Decision: The refusal to register based upon Section
2(d) of the Trademark Act is hereby reversed.