Vision Wheel, Inc.

Trademark Trial and Appeal Board

Jul 28, 2010

No. 77498758 (T.T.A.B. Jul. 28, 2010)

Mailed: July 28, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vision Wheel, Inc.
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Serial Nos. 77498758 and 774987551
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Frank M. Caprio, Jess R. Nix and Ling Guan of Bradley Arant
Boult Cummings LLP for Vision Wheel, Inc.

Judith M. Helfman, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Bucher, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Vision Wheel, Inc. seeks registration on the Principal
Register of the marks V-TEC in standard characters2 and

1 Inasmuch as the issues raised by these appeals are similar, the
Board is addressing them in a single opinion. Citations to the
briefs refer to the briefs filed in application Serial No.
77498758, unless otherwise noted; however, we have of course,
considered all arguments and evidence filed in each case.

2 Application Serial No. 77498758, filed on June 13, 2008, based
on an allegation of first use in commerce on January 31, 2004
under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 77498758 and 77498755
2
3 for goods identified as “custom wheels for vehicles”
in International Class 12.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods, so
resembles the registered mark VTEC in typed form for
“vehicles, namely, automobiles, motorcycles, motorized
wheelbarrows and motorized land vehicles; engines for
automobiles; engines for motorcycles; engines for other
motorized land vehicles” in International Class 12,4 as to
be likely to cause confusion, mistake or deception.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(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

3 Application Serial No. 77498755, filed on June 13, 2008, based
on an allegation of first use in commerce on January 31, 2004
under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).

4 Registration No. 2784942, issued on November 18, 2003, Section
8 and 15 declaration accepted and acknowledged.
Serial Nos. 77498758 and 77498755
3
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in terms of
their appearance, sound, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
In terms of sound, applicant’s marks and registrant’s
mark are identical. Further, the marks consist of the same
lettering in the same order V T E C, and, as such, are
similar in appearance. The differences in appearance
occasioned by the hyphen and, in the case of the mark in
Serial No. 77498755, the stylization, are not sufficient to
outweigh the similarities. The hyphen does not affect the
pronunciation or overall commercial impression of
applicant’s marks, and is therefore not a basis on which to
distinguish the marks. See Goodyear Tire & Rubber Co. v.
Dayco Corp., 201 USPQ 485, 488 n.4 (TTAB 1978) (FAST-FINDER
with hyphen is in legal contemplation substantially
identical to FASTFINDER without hyphen). See also
Charrette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040, 2042 (TTAB 1989) (marks PRO-PRINT and PROPRINT
identical but for hyphen and confusion likely).
Serial Nos. 77498758 and 77498755
4
Thus, the marks are very similar in sound, appearance
and commercial impression.
With regard to connotation, applicant argues that the:
Examining Attorney’s own evidence shows the Cited
Registration is not an arbitrary term, but
rather, is an abbreviation and acronym used by
the Registrant to stand for the descriptive
wording ‘Variable Valve Timing and Lift
Electronic Control’ –a valvetrain system to
improve the volumetric efficiency of a four-
stroke internal combustion engine. ... the
Registrant’s specimen of record shows that VTEC
as used by Registrant refers to the valvetrain
system used in the engines and stands for
“Variable Valve Timing and Lift Electronic
Control.”

Br. p. 20.

In addition, applicant argues that registrant’s
specimens of record “intentionally communicated to and
educated the purchasing public about the functional
advantage and technology embedded in its VTEC engine system
as a marketing strategy to attract the purchasing public to
certain Honda and Acura vehicles [and] the term VTEC is
always used in a secondary manner together with the house
marks of Honda...” Br. p. 21. Applicant relies on In re
Hershey, 6 USPQ2d 170, 1472 (TTAB 1988) for its position
that it is appropriate to look to the specimens of use to
determine connotation or meaning of a mark. We first note,
that Hershey involved a Section 2(a) refusal that the
applied-for term was offensive. The Board needed to
Serial Nos. 77498758 and 77498755
5
determine how the term would be perceived by consumers in
view of the fact that the term had more than one meaning.
Here, VTEC by itself has no meaning, and while we
acknowledge the record shows that registrant associates
VTEC with the meaning “variable valve timing and lift
electronic control,” we must consider the marks as they
appear on the drawing pages, and, based on the drawing
pages the marks do not have a particular connotation
distinct from each other.
Applicant also argues that registrant’s mark is weak
because it stands for descriptive wording. Assertions that
the mark in a cited registration is descriptive constitute
an impermissible collateral attack. Moreover, acronyms or
initialisms are deemed to be merely descriptive of goods or
services only if the wording it stands for is merely
descriptive of the goods or services and the acronym or
initialism is readily understood by relevant purchasers to
be “substantially synonymous” with the merely descriptive
wording it represents or stands for. See, e.g., Modern
Optics, Inc. v. The Univis Lens Co., 43 CCPA 970, 234 F.2d
504, 110 USPQ 293, 295 (CCPA 1956) (“[A]s a general rule,
initials cannot be considered descriptive unless they have
become so generally understood as representing descriptive
words as to be accepted as substantially synonymous
Serial Nos. 77498758 and 77498755
6
therewith”). While there is evidence in the record that
VTEC is an abbreviation for a “variable valve timing and
lift electronic,” we do not find this sufficient to deem
this term so weak that the mere addition of a hyphen or
minor stylization distinguishes the marks enough to obviate
likely confusion. Thus, due to the points of similarities
in sound, appearance and commercial impression, we find
they outweigh any possible dissimilarity in connotation
that may be perceived.
We turn then to consider the respective goods. The
issue is not whether the goods will be confused with each
other, but rather whether the public will be confused as to
their source. Safety-Kleen Corp. v. Dresser Indus. Inc.,
518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975). It is
sufficient to find goods to be related where the
circumstances surrounding their marketing are such that
they would be encountered by the same potential purchasers
under circumstances that would give rise to the mistaken
belief that they originate from the same source. On-line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000). Finally, we must make our
determination based on the goods as they are identified in
the application and registration and not based on evidence
of their actual use. Hewlett-Packard Co. v. Packard Press
Serial Nos. 77498758 and 77498755
7
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
The examining attorney argues that:
In the field of land vehicles and related
automotive accessories and parts, the Board has
consistently upheld relatedness analysis
determinations and has found that purchasers who
would encounter same or similar marks for such
products would likely be confused as to the
source. ... Board decisions also reflect the
marketplace reality that manufacturers of
vehicles often produce parts and accessories for
vehicles marketed under the same mark, as the
original equipment manufacturer (“OEM”), and
thus, marketing by different parties of various
automotive parts under the same or similar marks
would be likely to cause confusion as to the
source.

Br. p. 6.

In support of her position that the goods are related
and travel in the same channels of trade, the examining
attorney submitted excerpts from various websites. She
highlights websites that show that Honda (the registrant)
manufactures wheels for its vehicles and argues that:
[A]n Internet search will enable a potential
purchaser to locate a replacement wheel,
customized to fit a specific model also
manufactured by applicant. ... Specifically, the
evidence demonstrates that any potential
purchasers browsing the Internet can locate the
webpages of both car dealerships and retailers of
replacement parts for land vehicles, and these
websites clearly show detailed photos of the
respective goods offered for purchase. The
evidence shows that, for example, the identical
Serial Nos. 77498758 and 77498755
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Honda trademark on the wheels of a new car ...
and on replacement wheels. ... Similarly,
consumers who would encounter the V-TEC mark on
wheels would likely be confused as to the source,
given that these consumers would also encounter
the VTEC mark on automobiles, especially
factoring that car manufacturers produce and
market many parts of new automobiles, including
wheels, under the same or similar marks. Based
on the application and registration, it is
presumed that the respective goods identified by
Applicant and Registrant would be commercially
distributed and marketed without limitation, and
would be available to purchasers at the retail
stores, distributorships, ordering services,
online retail stores, and specialty stores and
outlets.

Br. pp. 7-8.
In response, applicant argues that the examining
attorney primarily relies on several prior Board decisions
and has not provided sufficient evidence to establish,
prima facie, a relatedness between the involved goods.5

5 With its brief in Application Serial No. 77498758, applicant
submitted several exhibits consisting of either reprints of the
evidence already submitted by the examining attorney or printouts
of additional pages from the same website from which the
examining attorney submitted pages. These additional pages
simply serve to provide the context of the examining attorney’s
information and we overrule the examining attorney’s objection.
Cf. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818,
829 (Fed. Cir. 1986) (“Let it be clear that by citing only a
portion of an article, that portion is not thereby insulated from
the context from whence it came”). This is distinguished from
the circumstances presented in In re Psygnosis Ltd., 51 USPQ2d
1594, 1598 fn. 3 (TTAB 1999) wherein the applicant was attempting
to introduce full-text excerpts of additional articles that were
not part of the record on appeal. We note that had we not
considered this evidence, it would not change the result as
applicant showed through its brief in Application Serial No.
77498755 the web pages already made of record by the examining
attorney are sufficient to support applicant’s assertions.

Serial Nos. 77498758 and 77498755
9
Quoting Federated Foods, 192 USPQ at 26, applicant
asserts that “the fact that disparate goods in the same
general field may be sold by a retailer will not
necessarily support a finding that confusion is likely.”
Br. p. 5. Applicant contends that “the fact that certain
general retailers in automobile parts and accessory
industry have websites listing ‘engine’ and ‘wheels’ as
products for sell [sic] under different categories” is not
sufficient proof that applicant’s custom wheels under the
mark V-TEC would cause source confusion with registrant’s
VTEC mark on engines or vehicles. Applicant asserts that
in the actual relevant market a consumer cannot “as a
practical matter, purchase wheels or any parts of a vehicle
without first identifying the proper year, maker and model
of the specific vehicle on which the wheels or parts will
be used.” Br. p. 6.
Applicant and the examining attorney seem to agree
that the record herein supports the conclusion that
automobile makers are original equipment manufacturers
[OEM] of wheels, engines, engine components, and completely
assembled new automobiles. However, as applicant noted,
there is no per se rule regarding this relationship, as
each case presents its own specific set of facts and
commercial realities, some of which may change over the
Serial Nos. 77498758 and 77498755
10
decades. Hence, the physical relationship and use of a
house mark on an array of automobile components alone is
not sufficient for the examining attorney to establish a
prima facie case that wheels are related to automobiles,
auto engines or their parts.
Applicant argues that the automobile owner wanting to
purchase aftermarket, custom wheels will be sophisticated
enough to know the source of such wheels, or would not be
able to purchase such custom wheels without the assistance
of expert, trained store personnel, or without computerized
matrices, to ensure proper fitment based upon the make,
model, and year of the involved vehicle.
We are not convinced by the limited evidence of record
that automobiles and/or vehicle engines from the OEM are
sufficiently commercially related to custom, aftermarket
wheels such that confusion is likely. While the evidence
shows that car manufacturers use their house marks on
various parts of their automobiles and their factory
replacement parts, it does not show that they use various
product or secondary marks in such a ubiquitous fashion and
there is no evidence to establish that VTEC is a house
mark. The fact that one website may offer refurbished OEM
wheels along with custom wheels does not establish that
custom wheels and factory replacement wheels regularly
Serial Nos. 77498758 and 77498755
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travel in the same channels of trade.6 More importantly,
this does not establish that automobiles and engines travel
in the same channel of trade as custom wheels, and, in
fact, the evidence shows that automobiles are sold through
authorized dealer networks.
Thus, this record does not support a finding that
automobiles and engines are related to custom wheels or
marketed in such a way as to be likely to cause confusion.
Further, we find that the conditions of sale minimize any
potential confusion. As the record shows each purchase of
a wheel necessarily involves a careful process wherein a
consumer must identify the year, manufacturer and model of
a specific vehicle. In addition, automobiles and engines
are very expensive items and custom wheels cannot be
characterized as inexpensive general consumer items. In
view thereof, we conclude that, despite the similarity of

6 The one example in the record is the excerpt from the website
LW&T Lakeshore Wheel & Tire. It contains the following
statement:
Welcome to Lakeshore Wheel & Tire! We are your online
resource for quality refinished OEM (factory original)
aluminum alloy and chrome wheels (i.e. rims). We
offer many services including alloy wheel replacement
and repair, chrome upgrading, match painting, and a
wonderful alloy rim exchange program. Now offering
top of the line Custom Wheels, including Rozzi, HPD,
Mazzi, ION Alloys, and More! We are committed to
excellence and customer service.

Serial Nos. 77498758 and 77498755
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the marks, the examining attorney has not established a
prima facie case of likelihood of confusion.
Decision: The refusals to register under Section
2(d) of the Trademark Act are reversed.