Volkswagen AGv.Venture Works Inc.

Trademark Trial and Appeal Board

Sep 10, 2008

No. 91167392 (T.T.A.B. Sep. 10, 2008)

Mailed: September 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Volkswagen AG
v.
Venture Works Inc.
_____

Opposition No. 91167392
to application Serial No. 78456228
filed on July 25, 2004
_____

Stewart L. Gitler, Hoffman, Wasson & Gitler, P.C. for
Volkswagen AG.

Venture Works Inc., pro se.
______

Before Kuhlke, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Venture Works Inc. has filed an application to register
on the Principal Register the mark VW (in stylized format),
shown below,

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91167392

2
for “providing business consulting services with respect to
the establishment and operation of new and existing
businesses” in International Class 35.1
Registration has been opposed by Volkswagen AG.
Opposer, in its notice of opposition, specifically alleges
that it is and has, at all relevant times, been actively
engaged in the design, manufacture, development, marketing,
and sale of a wide range of products and services,
including, but not limited to, chemicals, paint, polishes,
greases, plasters, metals, motors, tools, scientific
apparatus, medical equipment, automobiles, precious metals,
firearms, musical instruments, paper goods, rubber goods,
leather goods, building materials, furniture, household and
building materials, furniture, household and kitchen
utensils, camouflage nets, yarn threads, textile goods,
clothing, games and toys, carpets, lace items, foods,
drinks, alcoholic beverages, and all facets of services
(“collectively the VW goods and services”), and that it has
provided these goods and services under the marks, VW and VW

1 Serial No. 78456228, filed on July 25, 2004, and asserting
June 2, 1989 as the date of first use of the mark anywhere and in
commerce. The application includes the following color
statements: The color(s) Blue and grey is/are claimed as a
feature of the mark. The mark consists of (The mark consists in
part of [sic]) a stylized representation of the letters “V” and
“W” in the colors blue and grey.

Opposition No. 91167392

3
and design; that it has used the VW and VW and design marks2
on the VW goods and services in commerce since as least as
early as 1956, long prior to the July 26, 2004 filing date
of applicant’s application; and that it is the owner of U.S.
Registration Nos. 0653695, 0790959, 2818615 and 2849974 and
others for the VW goods and services and that these
registrations are valid, subsisting, unrevoked and
uncancelled. Opposer further alleges that as a result of
extensive use and advertising by Opposer, the trademarks VW
and VW and design have become famous as defined in 15 U.S.C.
§1125(c), such that the marks have come to identify
opposer’s goods and services and distinguish them from the
goods of others, and that applicant’s VW (stylized) mark so
resembles opposer’s previously used and registered VW and VW
and design marks, as to be likely, when applied to the
services set forth in applicant’s application, to cause
confusion, mistake or deception as to the source of the
services.
Additionally, opposer alleges that its VW and VW and
design marks are famous and that applicant’s use of the mark
VW (stylized) will be likely to cause dilution of opposer’s
famous and distinctive marks, VW and VW and design.

2 The design marks are: and , lined for the color blue,
although no claim is made to color.

Opposition No. 91167392

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Applicant, in its answer, denied the essential
allegations of the notice of opposition. Applicant also
pleaded the affirmative defense of laches based on its prior
ownership of a registration for the same mark and services
as those listed in the involved application.
THE RECORD
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case includes the pleadings and the file
of involved application Serial No. 78456228. In addition,
during its assigned testimony period, opposer submitted, the
testimony depositions (with exhibits) of Ron Stach,
opposer’s general manager of dealer development, and Linda
Scipione, opposer’s paralegal. Opposer also submitted two
notices of reliance (filed May 11, 2007 and June 7, 2007
respectively); the first on copies prepared and issued by
the Patent and Trademark Office (“Office”) showing current
status and title of pleaded Registration Nos. 0653695,
0790959, 2818615 and 2849974, and the second on applicant’s
responses to opposer’s first set of interrogatories.
During its assigned testimony period, applicant also
submitted two notices of reliance, both filed July 20, 2007.
These notices were the subject of motions to exclude
evidence that were decided by Board order on November 23,
2007, and which were denied in part. Accordingly, as
regards the first notice, applicant may rely on copies
Opposition No. 91167392

5
prepared and issued by the Office showing current status and
title of Registration Nos. 1582892 and 1566306 and a copy of
the file history of Registration No. 1582892. As regards
the second notice, applicant may rely on opposer’s responses
to applicant’s first and second set of interrogatories and,
because they are already of record, applicant’s answer and
applicant’s responses to opposer’s first set of
interrogatories.
DISCUSSION
Opposer’s Standing and Priority of Use
Inasmuch as opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v Ralston Purina Co., 670 F.2d 1024, 213
USPQ 105 (CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, Section 2(d) priority is not an
issue in this case as to the goods and services identified
in those registrations.3 See King Candy Co. v. Eunice

3 Applicant maintains in its brief that in its pleaded U.S.
Registration No. 2818615, opposer “seems to recite virtually
everything that a company might aspire to offer including a very
broad recitation to encompass business consulting services with
its basis being foreign rights. Its U.S. registration is dated
March 2, 2004, which post-dates my original registration by 14
years.” (Br., p. 7). By this applicant appears to be asserting
priority. Such an assertion is an impermissible collateral
attack on the validity of pleaded registration No. 2818615, which
Opposition No. 91167392

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King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all 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). In considering the evidence of record on
these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
In keeping with the arguments of the parties, we will
focus our discussion of the issue of likelihood of confusion
on that registration of opposer’s which is closest to the
mark for which applicant is seeking registration for the
most similar services, namely, opposer’s Registration No.
2818615 for VW, in typed or standard character format, for

will not be heard in the absence of a counterclaim. See
Trademark Rule 2.106(b)(ii) and TBMP § 313.01 (2d ed. rev. 2004)
and the cases cited therein. Accordingly, this argument will not
be further considered. Moreover, as stated above, priority is
not in issue in this case because opposer has made its pleaded
registration of record.

Opposition No. 91167392

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“business management and consultation” in International
Class 35.
Similarity of the Services/Trade Channels/Purchasers
We first consider the du Pont factors which pertain to
the similarity or dissimilarity of the services, channels of
trade and classes of purchasers. It is well settled that
likelihood of confusion is determined on the basis of the
services as identified in the application and in the pleaded
registration. Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Where
the services in the application and/or pleaded registration
are broadly identified as to their nature and type (as is
the case herein with opposer’s identification), such that
there is an absence of any restrictions as to the channels
of trade and no limitation as to the classes of purchasers,
it is presumed that in scope the recitation of services
encompasses not only all the services of the nature and type
described therein, but that the identified services are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Herein, the services identified in opposer’s pleaded
registration are “business management and consultation.”
The services identified in applicant’s application are
Opposition No. 91167392

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“providing business consulting services with respect to the
establishment and operation of new and existing businesses.”
Although applicant’s business consulting services are
restricted to those involving the establishment and
operation of new and existing businesses, opposer’s
recitation contains no such restriction. As such, we must
assume that opposer’s broadly worded business consultation
services encompasses all types of these services including
applicant’s consulting services in the field of the
establishment and operation of new and existing businesses.
We thus find the parties’ services legally identical.
Despite the identity of the services, applicant
essentially attempts to claim that the comparison of the
services should not be based on the respective
identifications but rather on the basis of the services
actually provided by the parties. Applicant particularly
argues that there is no likelihood of confusion because
opposer does not provide its business consulting services in
the general marketplace. Rather, applicant contends that
“opposer’s provision of services to its own automobile
dealers stands in clear contrast to our [applicant’s]
registration to provide ‘business consulting services with
respect to the establishment and operation of new and
existing businesses.’ We offer our services for consulting
fees in the open marketplace of commerce to all different
Opposition No. 91167392

9
types of businesses (as well as nonprofit organizations).”
(Br., p. 6). This argument is unavailing. An applicant may
not restrict the scope of the services covered in the
pleaded registration by argument or extrinsic evidence. See
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986).
Applicant similarly attempts to claim that the parties’
respective goods travel in different trade channels and to
different classes of consumers. However, because the
identification of services in the pleaded registration is
not restricted as to channels of trade or classes of
purchasers, as previously noted, we must presume that
opposer’s business consulting services will travel in the
normal channels of trade for such services and will be
offered to all the normal purchasers of such services,
including those seeking consultation in the area of
establishing and operating new businesses. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). In short, we find,
at a minimum, the channels of trade and classes of
purchasers overlap.
We thus find the du Pont factors of the similarity of
the services, channels of trade and classes of purchasers
strongly favor opposer.

Opposition No. 91167392

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Fame
Fame of a prior mark, opposer contends, is another
factor weighing in its favor inasmuch as its mark has been
used in the United States for over fifty years and because
opposer has a presence in all fifty states. In that regard,
opposer requests the Board to take judicial notice of the
fame of its VW marks. The Board does not, however, take
judicial notice of fame of an entity’s mark. Instead, fame
must be borne out by the evidence of record. See, e.g.,
Hard Rock Café Licensing Corp. v Elsea, 48 USPQ2d 1400, 1406
(TTAB 1998) (“[W]e will not take judicial notice of fame.”);
and Bristol-Myers Company v. Texize Chemicals, Inc., 168
USPQ 670, 671 (TTAB 1971)(Board refused to take judicial
notice that parties were large, diversified corporations and
of various other facts relative to their respective
operations). Rule 201(b) of the Federal Rules of Evidence
provides that “a judicially noticed fact must be one not
subject to reasonable dispute in that it is either (1)
generally known within the territorial jurisdiction of the
trial court or (2) capable of accurate and ready
determination by resort to sources whose accuracy cannot
reasonably be questioned.” Fame of opposer’s pleaded mark
is neither. Moreover, as applicant points out, opposer
submitted no evidence establishing fame of its VW marks.
Although opposer did not explicitly refer to the decision of
Opposition No. 91167392

11
the Court of Appeals for the Fourth Circuit between opposer
and a different defendant in its brief,4 we note that while
opposer’s mark was found famous in that proceeding,
certainly applicant in this case is not bound by the actions
of defendants in another case.5 Therefore, this du Pont
factor is neutral.
Similarity or Dissimilarity of the Marks
We next consider the similarity of the marks, keeping
in mind that when marks would appear on identical services,
as they do here, the degree of similarity 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). Opposer
contends that the marks, in their entireties, are identical,
both consisting of the two letters “VW.” Opposer further
contends that “the stylized nature of Applicant’s mark does
little to distinguish the fact that both marks are referred
to as the “VW mark.” (Reply br., p. 1). Applicant, on the
other hand, maintains that the stylized representation of
its VW mark is not identical to opposer’s VW word mark or
the design marks relied on by opposer. Its mark, applicant
argues “differs in color, configuration, connotation and

4 See Applicant’s Second Not. of rel., no. 3.

5 Notably, in the Fourth Circuit decision, fame of opposer’s VW
mark was an uncontested fact.

Opposition No. 91167392

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overall commercial impression.” (Br., p. 4). Although
applicant stresses the stylization of its mark as a
distinguishing feature, because opposer’s mark is registered
in typed format, opposer’s rights therein encompass the
letters “VW” and are not limited to the depiction thereof in
any special form. See Phillips Petroleum Co. v. C. J. Webb,
Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). As the
Phillips Petroleum case makes clear, when a word mark is
registered in typed form, the Board must consider all
reasonable modes of display that could be represented,
including the same stylized lettering as that in which
applicant’s mark appears. The stylized lettering of
applicant’s mark consequently does not serve to distinguish
applicant’s mark from opposer’s mark.
Thus, the du Pont factor of similarity of the marks
favors opposer.
Actual Confusion
Applicant has argued that it is significant that
opposer has identified no instances of actual confusion
between applicant’s and opposer’s “VW” marks during the past
sixteen years. (Applicant’s second not. of rel., No. 5,
opposer’s response to applicant’s second set of
interrogatories, no. 8(b)). While it appears that the
parties’ marks have coexisted for at least sixteen years
without either party being aware of any incidents of actual
Opposition No. 91167392

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confusion, this factor is not dispositive inasmuch as
evidence of actual confusion is difficult to come by and the
evidence of record fails to reveal specifics regarding
applicant’s volume of sales and the extent of adverting of
its business consultation services provided under its VW
mark. As opposer correctly points out, the test under
Section 2(d) of the Trademark Act is likelihood of confusion
rather than actual confusion. See e.g., Gillette Canada
Inc. v. Ranir Corp., 23 USPQ 2d 1768, 1774 (TTAB 1992) and
the cases cited therein.
Accordingly, the du Pont factors of the nature and
extent of any actual confusion and the length of time during
and conditions under which there has been concurrent use
without evidence of actual confusion are neutral.
One final comment made by applicant requires
addressing. Applicant maintains that “on two occasions
trademark examiners at the United States Patent and
Trademark Office determined that they [the parties’
respective marks] were not in any way identical or even
similar enough to warrant concern.” (Br., p. 3). While we
are not unsympathetic to applicant’s situation, we simply
are not bound by the decisions of examining attorneys. The
Board must make its own findings of fact, and that duty may
not be delegated by adopting the conclusions reached by an
examining attorney. In re Sunmarks, Inc., 32 USPQ2d 1470,
Opposition No. 91167392

14
1472 (TTAB 1994); and In re BankAmerica Corp., 231 USPQ 873,
876 (TTAB 1986).
In sum, when all of the relevant du Pont factors are
considered, we conclude that contemporaneous use by
applicant of the mark VW (in stylized form) for providing
business consulting services with respect to the
establishment and operation of new and existing businesses
is likely to cause confusion with opposer’s use of its VW
mark with respect to business management and consultation.
Given our determination that opposer has priority of
use and that there is a likelihood of confusion between the
parties’ marks, we find it unnecessary to reach a
determination on the question of dilution.6
LACHES
This brings us at last to consider applicant’s
affirmative defense of laches. The defense of laches is not

6 We add that, in any event, opposer’s dilution ground would
have failed as to pleading and proof. In its pleading, opposer
never explicitly alleged that its marks became famous prior to
the filing date of the involved application. See Polaris
Industries Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000). See
also, Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). In
addition, the fame that must attach to a mark for it to be
eligible under the dilution provisions of the Trademark Act is
greater than that which qualifies a mark as famous for the du
Pont analysis of likelihood of confusion. Toro Co. v. ToroHead
Inc., 61 USPQ2d at 1170, citing I.P. Lund Trading ApS v. Kohler
Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st Cir. 1998)(“[T]he
standard for fame and distinctiveness required to obtain anti-
dilution protection is more rigorous than that required to seek
infringement protection.”). Since we have already found that, on
this record, opposer’s marks do not have the du Pont analysis
fame, then it would follow that they do not have the fame
necessary for a dilution claim.
Opposition No. 91167392

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generally available in an opposition proceeding, but as
applicant correctly observes, under certain circumstances it
may be considered based upon an opposer’s failure to object
to an applicant’s earlier registration of the same or
substantially same mark for the same or substantially
similar goods [or services]. See e.g., Aquion Partners
Limited Partnership v. Envirogard Products Ltd., 43 USPQ2d
1371 (TTAB 19997). In this case, and as evidenced by the
record, applicant owned a prior registration for the same
mark covering the same services as those involved in the
instant application. We therefore consider applicant’s
defense of laches.
In order to prevail on the affirmative defense of
laches, a defendant must establish that there was undue or
unreasonable delay by the plaintiff in asserting its rights,
and material prejudice as a result of the delay. See
Bridgestone/Firestone Research Inc. v. Automobile Club de
l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462
(Fed. Cir. 2001); and Lincoln Logs Ltd. v. Lincoln Pre-Cut
Log Homes, Inc. 971 F.2d 732, 23 USPQ 1701, 1703 (Fed. Cir.
1991). As regards the undue delay, the mark applicant now
seeks to register was according to applicant’s pleading and
evidence, the subject of a prior registration that existed
from 1990 until its was cancelled pursuant to Section 8 of
the Trademark Act for applicant’s inadvertent failure to
Opposition No. 91167392

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renew. We therefore note that the mark applicant now seeks
to register was published for opposition in 1990 and
thereafter was registered for 10 years without objection
from opposer.
As to the additional element of material prejudice
required to establish laches, applicant contends that its
mark has been the centerpiece of the company image for 19
years, having been used on stationary and promotional
information materials since 1989 and prominently featured on
applicant’s website since 1997. If it is prevented from
obtaining a registration, applicant goes on to argue, such
would significantly detract from its image, destroy its
investment in that image and significantly prejudice its
relationship with existing and potential customers.
As the Board in Aquion Partners pointed out that:
[M]ere delay in asserting a trademark right
does not constitute laches. Rather, a party
asserting laches must show not only
unreasonable delay but also circumstances
compelling enough to give rise to estoppel,
that is, that the party asserting the defense
has relied upon the delay to its detriment.

Here, the only evidence offered by applicant
which bears on the issue of material prejudice
is the declaration of its president, which
attest, inter alia, to applicant’s own use of
its mark since 1980, and furnishes applicant’s
sales figures under the mark from 1980 to
1995. An examination of the sales figures
shows that applicant’s annual sales for each
of the years from 1984 to 1995 were roughly
half the amount of its annual sales for the
years 1981, 1982, and 1983. This evidence,
without more, is insufficient to show the lack
Opposition No. 91167392

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of a genuine issue of material fact as to
whether applicant has been materially
prejudiced by opposer’s delay (if unreasonable
delay is established) in objecting to
registration of the mark RAINFRESH and design
by applicant.

Aquion Partners, 43 USPQ2d at 1373. Here, even if we assume
that opposer’s failure to object to the earlier application
by applicant which matured into its now cancelled
registration for the same mark for the same services during
the life of such registration constitutes an unreasonable
delay by opposer in asserting its rights, applicant has not
demonstrated that it has detrimentally relied or otherwise
suffered material prejudice as the result of such delay. In
other words, applicant neither asserted nor introduced one
shred of evidence showing that it changed its position to
its detriment regarding advertising and promoting its
business consulting services under its VW (stylized) mark in
reliance on petitioner’s delay. See Fishking Processors,
Inc. v. Fisher King Seafoods, Ltd., 83 USPQ2d 1762, 1766
(TTAB 2007).
We accordingly find that applicant has failed to
established its affirmative defense of laches.
Finally, even if applicant had established laches,
which it did not, if confusion is inevitable, then the
defense of laches is not applicable under any circumstances.
Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc.,
465 F.2d 891, 175 USPQ 166 (CCPA 1972); and Reflange Inc. v.
Opposition No. 91167392

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R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) (“It
is not necessary to discuss this theory because it is well
established that equitable defenses such as laches will not
be considered and applied where, as here, the marks of the
parties are identical and the goods are the same or
essentially the same.”). This is so because any injury to
applicant caused by opposer’s delay is outweighed by the
public’s interest in preventing confusion in the
marketplace. Turner v. Hops Grill & Bar, Inc., 52 USPQ
1310, 1313 (TTAB 1999), citing Coach House Restaurant Inc.
v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 19 USPQ
1401, 1409 (11th Cir. 1991). In the present case, the
record clearly establishes inevitable confusion. That is,
the marks are identical and the services are legally
identical.

Decision: Opposer’s VW mark for business and
management consultation is likely to cause confusion with
petitioner’s mark VW (stylized) for providing business
consulting services with respect to the establishment and
operation of new and existing businesses. We deny
applicant’s laches defense. The opposition is sustained.