Wheel Pros, LLCv.KMC Chain Industrial Co., Ltd.

Trademark Trial and Appeal Board

Feb 15, 2019

No. 91228424 (T.T.A.B. Feb. 15, 2019)

Mailed: February 15, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
Wheel Pros, LLC
v.
KMC Chain Industrial Co., Ltd.
————
Opposition No. 91228424
________
Mark I. Reichenthal of Branfman Law Group PC,
for Wheel Pros, LLC.
Kevin A. Thompson of Ladas & Parry LLP,
for KMC Chain Industrial Co., Ltd.
————
Before Zervas, Lynch, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
KMC Chain Industrial Co., Ltd. (“Applicant”) has applied to register the mark
KMC (in standard characters) on the Principal Register for “bicycle chains; change-
speed gears for bicycles; motorcycle accessories namely, motorcycle drive chains;
motorcycle gears; motorcycle sprockets; roller chains for land vehicles; automobile
chains in the nature of chains for motor cars; driving chains for land vehicles;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91228424
2
reduction gears for land vehicles; transmission chains for land vehicles” in
International Class 12.1
Wheel Pros, LLC (“Opposer”) opposes registration of Applicant’s mark on the
following two grounds: (1) likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), and (2) fraud.2 In support of its asserted claims, Opposer
pleaded ownership of the following registrations:3
Reg. No. Mark Identification of Goods
3010893 KMC
(in standard characters)
Wearing apparel, namely,
sweatpants, jackets,
coats, t-shirts,
sweatshirts, underwear,
tank tops, hats, and caps,
in Int’l Class 25.
3027059 KMC
(in standard characters)
accessories for
automobiles, light trucks,
sport utility vehicles,
vans, golf cars, and all
terrain vehicles, namely,
wheels; Wheel parts and
accessories for
automobiles, light trucks,
sport utility vehicles,
vans, golf cars, and all
terrain vehicles, namely,

1 Application Serial No. 86640743, filed on May 26, 2015, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming April 1,
1985 as the date of first use and January 10, 1987 as the date of first use in commerce.
2 Opposer’s Amended Notice of Opposition; 11 TTABVUE.
3 Opposer also pleaded ownership of Registration No. 3182731 for the mark KMC BUZZ in
standard characters for, inter alia, “online information and news in the field of automotive
trends” and “online retail information and retail news in the field of product offerings,
namely, wheels, wheel accessories, toys and apparel.” This registration, however, has been
canceled for failure to file timely a Section 8 affidavit of continued use. Accordingly, we have
given no consideration to this registration in our analysis herein. See Black & Decker Corp.
v. Emerson Electric Co., 84 USPQ2d 1482, 1487 n.9 (TTAB 2007) (canceled registration given
no probative value).
Opposition No. 91228424
3
Reg. No. Mark Identification of Goods
lug nuts, wheel covers,
wheel rims, wheel spokes,
hub caps and center caps,
in Int’l Class 12.
3234295 KMC
(in standard characters
Toys, games and
playthings, namely, toy
model vehicles and
related accessories sold as
units, die cast toy cars,
toy trucks, and toy
vehicles and related
accessories sold as units,
and remote-controlled toy
vehicles and related
accessories sold as units,
in Int’l Class 28.
4817228

(WHEELS disclaimed)
Automotive vehicle
wheels and components
thereof, in Int’l Class 12.
4919386

(WHEELS and SERIES
disclaimed)
Automotive vehicle
wheels and components
thereof, in Int’l Class 12.
4941362

(WHEELS disclaimed)
Clothing, namely, t-shirts,
shirts, sweat shirts, tank
tops; headgear, namely,
hats and caps, in Int’l
Class 25.
5008028

Clothing, namely, t-shirts,
shirts, sweat shirts, tank
tops; headgear, namely,
hats and caps, in Int’l
Class 25.
Opposition No. 91228424
4
Reg. No. Mark Identification of Goods
5072714

Automotive vehicle
wheels and components
thereof, in Int’l Class 12.

In its answer to Opposer’s amended pleading, Applicant admitted that (1) it filed
its involved application on May 26, 2015, that it was published on May 17, 2016, and
that the application speaks for itself; (2) Opposer’s pleaded registrations match the
registrations numbers listed in the USPTO’s records; and (3) it has no license with
Opposer. Applicant, however, denied the remaining allegations in the amended notice
of opposition.4
I. The Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Applicant’s application file. The record also comprises the evidence
summarized below.
A. Opposer’s Evidence
1. Opposer’s Notice of Reliance5 consisting of (1) status and title
copies of Opposer’s pleaded registrations (Exh. A); (2) a copy of
Applicant’s involved application (Exh. B and AB);6 (3) portions of
various retailer websites downloaded from the Internet (Exh. C-I
and R-Z); (4) screenshot of a portion of a Facebook page purportedly
owned by Opposer (Exh. J.); (5) copies of portions of magazine
articles purportedly discussing Opposer’s KMC wheels (Exh. K-M);
(5) screenshots of a website purportedly owned by Opposer (Exh.

4 Applicant’s Answer to Opposer’s amended pleading; 13 TTABVUE.
5 Opposer’s Notice of Reliance; 20 TTABVUE.
6 It was unnecessary for Opposer to submit a copy of Applicant’s involved application since it
is automatically of record. See Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
Opposition No. 91228424
5
M and AA); (6) Google search results for “KMC Wheels” (Exh. O);
(7) printout of a listing of TESS results for all live KMC marks
(Exh. P); (8) printout of a listing of TESS search results for all KMC
marks in International Class 12 (Exh. Q); (9) copies of Applicant’s
motion to amend, opposition thereto, and reply brief filed in this
proceeding (Exh. AC-AE);7 and (10) official documents from foreign
countries purportedly concerning litigations between Opposer and
Applicant (Exh. AF-AL); and
2. Testimony Declaration of Edward Burns, Opposer’s general counsel.8
Opposer filed a trial brief and a reply brief.
B. Applicant’s Evidence
Applicant did not submit any testimony or evidence during its assigned testimony
period nor did it file a trial brief.9
C. Internet Evidence
As noted, Opposer, by way of its notice of reliance, submitted printouts from
various websites downloaded from the Internet. Although admissible for what they
show on their face, see Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2), this
evidence also contains hearsay that may not be relied upon for the truth of the
matters asserted unless supported by testimony or other evidence. Fed. R. Evid.
801(c); WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d
1034, 1038 (TTAB 2018); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1039-40

7 Again, it was needless for Opposer to file Applicant’s fully-briefed motion to amend its
identification of goods since these papers are already part of the record of this case.
8 Opposer’s Notice of Reliance, 20 TTABVUE at pp. 364-372
9 Since Applicant did not file a trial brief in this case, the filing of a reply brief by Opposer
was improper since the purpose of a reply brief is to respond to the arguments made in the
opposition brief, not allowing a plaintiff to supplement or make new arguments that come to
mind after filing its main brief. Accordingly, Opposer’s reply brief will be given no
consideration.
Opposition No. 91228424
6
(TTAB 2010); Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §
704.08(b) (2018) (“The probative value of Internet documents is limited. They can be
used to demonstrate what the documents show on their face. However, documents
obtained through the Internet may not be used to demonstrate the truth of what has
been printed.”).
II. Preliminary Issue – Applicant’s Motion to Amend Identification of Goods
Before turning to the merits of Opposer’s asserted claims, we first address
Applicant’s motion to amend the identification of goods set forth in its involved
application.10 Opposer has contested the motion.11 By order dated September 22,
2016, the Board deferred consideration of Applicant’s motion to amend until final
hearing.12
By way of its motion, Applicant seeks to delete the following goods from its
identification of goods, namely, “change speed gears for bicycles,” “motorcycle gears,”
“motorcycle sprockets, and “reduction gears for land vehicles.” In support of its
motion, Applicant maintains that “[u]pon receipt of the Notice of Opposition,
Applicant underwent strict scrutiny of the goods alleged to be in use in the
Application and needs to amend to delete certain goods which Applicant, a Taiwanese
company, is no longer certain to be in use in the United States.”13 Applicant further

10 6 TTABVUE.
11 9 TTABVUE.
12 12 TTABVUE.
13 Applicant’s Motion to Amend, p. 1, 6 TTABVUE 2.
Opposition No. 91228424
7
contends that at no time did it intend to deceive anyone by previously alleging these
goods to be in use in the United States.14
Trademark Rule 2.133(a), 37 C.F.R. § 2.133(a), provides that “[a]n application
subject to an opposition may not be amended in substance nor may a registration
subject to a cancellation be amended or disclaimed in part, except with the consent of
the other party or parties and the approval of the Trademark Trial and Appeal Board,
or upon motion granted by the Board.” The conditions for entry of an unconsented
amendment of the identification of goods are as follows:
1. the proposed amendment must serve to limit the broader
identification of goods or services;
2. the applicant must consent to the entry of judgment on the
grounds for opposition with respect to the broader identification of
goods or services present at publication;
3. if the applicant wishes to avoid the possibility of a res judicata
effect by the entry of judgment on the original identification, it
must make a prima facie showing that the proposed amendment
serves to change the nature and character of the goods or services
or restrict their channels of trade and customers so as to introduce
a substantially different issue for trial; and
4. where required to support the basis of the subject application, any
specimens of record must support the goods or services as
amended; and the applicant must then introduce evidence during
its testimony period to prove use of its mark with the remaining
goods or services prior to the relevant date as determined by the
application's filing basis.
Johnson & Johnson v. Stryker, 109 USPQ2d 1077, 1078-79 (TTAB 2013); see also
Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007).
Here, Opposer clearly did not consent to Applicant’s proposed amendment.

14 Id.
Opposition No. 91228424
8
Moreover, although Applicant’s proposed amendment is limiting in nature, Applicant
did not consent to the entry of judgment on the grounds for opposition with respect
to the broader identification of goods at publication nor did Applicant make a prima
facie showing that the proposed amendment serves to change the nature and
character of the goods or restrict their channels of trade and customers so as to
introduce a substantially different issue for trial.15 In view thereof, Applicant’s
motion to amend its identification of goods is denied. Accordingly, we will entertain
Opposer’s asserted claims based on Applicant’s identification of goods as originally
filed.16
III. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” Id. (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023,

15 To the extent Applicant seeks to avoid Opposer’s asserted claim of fraud by deleting goods
from its identification, we note that it is well-settled that fraud cannot be cured merely by
deleting from the application those goods or services on which the mark was not used at the
time of the signing of a use-based application. See Grand Canyon West Ranch LLC v.
Hualapai Tribe, 78 USPQ2d 1696, 1698 n.5 (TTAB 2006); Turbo Sportswear v. Marmot
Mountain Ltd., 77 USPQ2d 1152, 1155 (TTAB 2005).
16 Even if we were to grant Applicant’s motion to amend its identification of goods, this would
not alter the outcome of this proceeding.
Opposition No. 91228424
9
1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in the
outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
Opposer has demonstrated through the USPTO database printouts made of record
that it is the owner of its pleaded registrations and that these registrations are valid
and subsisting.17 Because Opposer’s registrations are of record, Opposer has
established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind., Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
IV. Likelihood of Confusion
We will now consider Opposer’s Section 2(d) claim, focusing on two of Opposer’s
pleaded registered marks which are of record: (1) KMC in standard characters
(Registration No. 3027059) for the goods identified therein, namely, “accessories for
automobiles, light trucks, sport utility vehicles, vans, golf cars, and all terrain
vehicles, namely, wheels; Wheel parts and accessories for automobiles, light trucks,
sport utility vehicles, vans, golf cars, and all terrain vehicles, namely, lug nuts, wheel
covers, wheel rims, wheel spokes, hub caps and center caps” in International Class
12; and (2) (Registration No. 4817228; WHEELS disclaimed) for
“Automotive vehicle wheels and components thereof” also in International Class 12.
In our view, these two registrations, coupled with their corresponding identified
goods, are most likely to support a likelihood of confusion claim. If Opposer could

17 As noted supra, the submission of a USPTO database printout of Opposer’s pleaded KMC
BUZZ registration will be given no consideration since, as indicated in the printout, this
registration has been canceled.
Opposition No. 91228424
10
prevail on its Section 2(d) claim on these two registrations, then consideration of
others would be unnecessary; and if Opposer could not, then consideration of other
less relevant registrations would not assist Opposer. See, e.g., The N. Face Apparel
Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015) (citing In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”
15 U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that it has priority in the use of its mark and that use
of Applicant’s mark is likely to cause confusion, mistake, or deception as to the source
or sponsorship of Applicant’s goods, Cunningham, 55 USPQ2d at 1848, even in the
absence of contrary evidence or argument. Threshold TV, Inc. v. Metronome Enters.,
Inc., 96 USPQ2d 1031, 1040 (TTAB 2010).
A. Priority of Use
Because Opposer’s pleaded registrations for the marks KMC in standard
characters and are of record, priority is not an issue with respect to the
goods identified in these registrations. See Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy, Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
Opposition No. 91228424
11
B. Similarity of the Marks
We now consider the first du Pont likelihood of confusion factor, which involves
an analysis of 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, 1691 (Fed Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is
not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (internal citation omitted). 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, 1534 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Our analysis cannot be
predicated on dissection of the involved marks. See Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather,
we are obliged to consider the marks in their entireties. Id.; see also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). Nonetheless,
there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at
Opposition No. 91228424
12
1161.
Applicant’s mark is KMC in standard characters. Opposer’s marks are KMC in
standard characters and . Here, Applicant’s mark is identical to
Opposer’s KMC mark in standard characters. With regard to Opposer’s
mark, we find that the dominant feature of this mark, i.e., the letters KMC, is
identical to Applicant’s mark. The inclusion of the term WHEELS in Opposer’s mark
does little to distinguish the marks at issue since the term is the generic designation
of Opposer’s goods and has been appropriately disclaimed. As such, the term
WHEELS is less likely to make an impact in the minds of consumers. See In re Dixie
Rests., Inc., 41 USPQ2d at 1533-34 (disclaimed matter that is descriptive of or generic
for a party’s goods is typically less significant or less dominant when comparing
marks); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 753 (Fed. Cir.
1985). Furthermore, although Opposer’s mark includes a nondescript
background carrier, “the verbal portion of the mark [rather than a nondescript
background carrier] is the one most likely to indicate the origin of the goods to which
it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co., KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015)
(citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)).
Greater weight is often given to the wording rather than a nondescript background
carrier because it is the wording that purchasers would use to refer to or request the
goods or services. See, e.g., In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911
Opposition No. 91228424
13
(Fed. Cir. 2012).
Finally, Applicant’s mark is a standard character mark, and marks appearing in
standard character form may be displayed in any stylization, font, color and size,
including the identical stylization of the letters KMC in Opposer’s
mark, because the rights reside in the wording and not in any particular display or
rendition. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983) (a mark in standard character form is not limited to the depiction thereof in
any special form); see also Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a) (standard
character marks are “without claim to any particular font style, size, or color”).
As noted above, Applicant’s standard character mark is identical to Opposer’s
standard character KMC mark. With regard to Opposer’s mark, while
we have not overlooked the stylization of the letters KMC, the addition of a
background carrier, or the inclusion of the generic term WHEELS, we nonetheless
conclude that Applicant’s mark and Opposer’s mark, when considered
in their entireties, are substantially similar in sound, appearance, connotation and
commercial impression. Therefore, the first du Pont factor strongly supports a
conclusion that confusion is likely.
C. Strength of Opposer’s KMC marks
The fifth du Pont factor, the fame of the prior mark, and the sixth du Pont factor,
the number and nature of similar marks in use for similar goods, du Pont, 177 USPQ
at 567, may be considered in tandem to determine the strength of Opposer’s standard
Opposition No. 91228424
14
character KMC mark, as well as Opposer’s mark, and the scope of
protection to which they are entitled. Bell’s Brewery, Inc. v. Innovation Brewing, 125
USPQ2d 1340, 1345 (TTAB 2017).18 “In determining strength of a mark, we consider
both inherent strength, based on the nature of the mark itself, and commercial
strength or recognition.” Bell’s Brewery, 125 USPQ2d at 1345 (citing
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”).
We first determine the asserted fame of Opposer’s marks under the fifth du Pont
factor.19 In determining the commercial strength or fame of Opposer’s marks under
this factor, such strength “may be measured indirectly by the volume of sales and
advertising expenditures in connection with the [goods] sold under the mark, and
other factors such as length of time of use of the mark; widespread critical
assessments; notice by independent sources of the [goods] identified by the mark [];
and the general reputation of the [goods].” Tao Licensing, LLC v. Bender Consulting
Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017).

18 The Federal Circuit reiterated that “‘[w]hile dilution fame is an either/or proposition—fame
either does or does not exist—likelihood of confusion fame varies along a spectrum from very
strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d
1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps. Inc. 73 USPQ2d at
1694 (internal quotation omitted)).
19 Opposer’s Trial Brief, pp. 20-21; 21 TTABVUE 21-22.
Opposition No. 91228424
15
Here, Opposer has not submitted any evidence regarding the volume of its sales
under its KMC marks for its identified goods, revenues generated from such sales, or
the extent or dollar amount of its advertising efforts. Additionally, Opposer has failed
to submit any evidence of (1) how its sales and advertising figures compare to its
competitors in the industry, (2) the frequency with which consumers encounter its
standard character KMC mark or its mark for wheels, or (3) any
context for its achievements in the automotive wheels and accessories trade, e.g.,
market share. Without comparative numbers or market share percentages, it is
difficult to place the apparent success or renown of Opposer’s marks into context.
Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir.
2002).
Notwithstanding the foregoing, Opposer attempts to demonstrate the asserted
fame of its marks by maintaining the following: (1) that its KMC marks have been in
continuous use at least as early as June 1983; (2) that its Facebook page has received
over 157,000 “likes”; (3) that its website features hundreds of types of unique wheels;
(4) that a Google search of “KMC WHEELS” demonstrates almost 4,000 reviews of
its goods on a single website, as well as reviews on other third-party websites; and (5)
that three publications have provided unsolicited reviews of its KMC branded
wheels.20

20 Opposer’s Trial Brief, p. 21; 21 TTABVUE 22. The better practice would have been to
submit testimony attesting to the truth of the matters asserted in these Internet materials,
including that the entity identified in this Internet evidence specifically refers to Opposer.
However, since Applicant has not objected to this evidence on such grounds, we will consider
Opposition No. 91228424
16
We initially note that there is no documentary evidence or testimony of record
demonstrating that Opposer has been using its KMC and marks in U.S.
commerce since June of 1983.21 With regard to the remaining evidence pertaining to
fame, we find such evidence insufficient to demonstrate that Opposer’s KMC and
marks fall on the very strong end of the fame spectrum for likelihood of
confusion purposes and, therefore, these marks would not be entitled to a broader
scope of protection under the fifth du Pont factor. Specifically, there is no evidence of
record showing how many consumers have been exposed to Opposer’s website
www.kmcwheels.com. As to the number of “likes” on Opposer’s Facebook page, such
evidence falls short of demonstrating the extent to which these “likes” translate into
widespread recognition of Opposer’s KMC marks among the relevant consuming
public, and also lacks context. We are simply without enough information to
determine the degree to which Opposer’s Facebook “likes” are significant. Further,
there is no indication that the 4000 Google search results for the phrase “KCM
wheels” all concern Opposer nor is there any evidence regarding how many potential
consumers have seen these Google entries.22 Finally, we find that three newspaper

the evidence for whatever probative value it may have.
21 The dates of first use specified in Opposer’s registrations of record for its KMC and
marks are not evidence of such use. “The allegation in an application for
registration, or in a registration, of a date of use is not evidence on behalf of the applicant or
registrant; a date of use of a mark must be established by competent evidence.” Central
Garden & Pet Co. v. Doskocil Mfg. Co., Inc., 108 USPQ2d 1134, 1139 (TTAB 2013); see also
Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b).
22 Additionally, we do not find the Google search results to be very probative in our analysis
Opposition No. 91228424
17
articles reviewing Opposer’s goods offered under its KMC marks are insufficient to
demonstrate widespread recognzition of Opposer’s marks, particularly since there is
no evidence of record regarding the extent of circulation or subscribers of these
publications in the United States nor is there any evidence showing the number of
persons who have actually been exposed these articles.
In view thereof, we find Opposer’s “fame” evidence lacks probative value to
establish that Opposer’s KMC and marks have achieved any
appreciable commericial renown or recognition among relevant consumers. Thus, the
fifth du Pont factor is neutral.
As to conceptual or inherent strength, Applicant did not participate at trial and
hence there is no evidence demonstrating that Opposer’s KMC marks are inherently
weak. Opposer, on the other hand, has submitted evidence to demonstrate that its
KMC marks are not inherently weak. Specifically, Opposer has submitted (1) a listing
of active registrations and pending applications obtained from the Trademark
Electronic Search System (“TESS”) for all marks including the letters KMC;23 and (2)
a listing of active and dead registrations and pending applications obtained from a
TESS search for marks including the letters KMC for goods solely identified in

since the printouts are too truncated to provide context. See In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (GOOGLE search results that provided
very little context of the use of ASPIRINA deemed to be “of little value in assessing the con-
sumer public perception of the ASPIRINA mark.”); In re Tea and Sympathy, Inc., 88 USPQ2d
1062, 1064 n.3 (TTAB 2008) (truncated GOOGLE search results entitled to little probative
weight without additional evidence of how the searched term is used).
23 Opposer’s Notice of Reliance, Exh. P; 20 TTABVUE 218-19.
Opposition No. 91228424
18
International Class 12.24 Opposer argues that the number of results is relatively
small and that none of the live applications or registrations with goods in Class 12
are owned by third parties.
A TESS listing of marks is not competent evidence to demonstrate the lack of
weakness of Opposer’s KMC marks. Mere listings of third-party registrations and
applications are not sufficient to make those registrations and applications of record,
see In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011), and without
any accompanying indication of the owners of the registrations or goods or services
associated therewith, the listings have little, if any, probative value because there is
no information by which we may assess Opposer’s ownership claims, or how many of
these registrations, if any, identify goods related to those at issue herein. See Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 155 (TTAB 2012) (TESS listing has little, if
any, probative value); see also TBMP § 1208.02 and the authorities cited therein. For
these reasons, while we have considered the list, its probative value is at best limited,
and cannot demonstrate the strength or weakness of the designation KMC for
Opposer’s goods. Jonathan Drew, 97 USPQ2d at 1644 n.11.
In sum, we find that there is no probative evidence of record demonstrating any
inherent weakness of the term KMC for automobile wheels or any of the other goods

24 Id., Exh. Q; 20 TTABVUE 220. This listing includes “dead” registrations and abandoned
applications. As noted supra, canceled or “dead” registrations have no probative value and
will be given no consideration. Similarly, third-party applications, whether active or aban-
doned, have no probative value except to show that an application has been filed. See In-
terpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003) (third-
party applications are evidence only of the fact that they were filed).
Opposition No. 91228424
19
identified in Opposer’s KMC and registrations. The term KMC on this
record is arbitrary for the goods which are identified in the two registrations. In view
thereof, Opposer’s KMC marks are entitled to the scope of protection afforded to
arbitrary marks, and the sixth du Pont factor regarding the number and nature of
similar marks in use on similar goods is therefore neutral.
D. Similarity of Goods
We next address the du Pont likelihood of confusion factor focusing on the
comparison of the goods at issue. It is settled that it is not necessary that the
respective goods be identical or even competitive in order to find that they are related
for purposes of our likelihood of confusion analysis. The respective goods need only
be “related in some manner and/or if the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that goods emanate from the
same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler,
83 USPQ2d 1715, 1724 (TTAB 2007)); see also In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991).
Applicant’s goods are identified as “bicycle chains; change-speed gears for bicycles;
motorcycle accessories namely, motorcycle drive chains; motorcycle gears; motorcycle
sprockets; roller chains for land vehicles; automobile chains in the nature of chains
for motor cars; driving chains for land vehicles; reduction gears for land vehicles;
transmission chains for land vehicles.” As noted above, Opposer has demonstrated
priority as to its standard character KMC mark for “accessories for automobiles, light
Opposition No. 91228424
20
trucks, sport utility vehicles, vans, golf cars, and all terrain vehicles, namely, wheels;
Wheel parts and accessories for automobiles, light trucks, sport utility vehicles, vans,
golf cars, and all terrain vehicles, namely, lug nuts, wheel covers, wheel rims, wheel
spokes, hub caps and center caps.” Opposer has also demonstrated priority as to its
mark for “automotive vehicle wheels and components thereof.”
Opposer contends that the identification of goods for both its standard character
KMC mark and its mark are broad enough to encompass Applicant’s
goods. Specifically, Opposer argues that the prefatory phrase “accessories for
automobiles” set forth in the identification of goods for its registered standard
character KMC mark would include Applicant’s goods.25 Opposer also maintains that
“automotive wheels and components thereof” identified in its registration for the
mark also encompass many, if not all, of Applicant’s claimed goods
because Applicant’s claimed goods include chains, gears and sprockets – which are,
by definition, parts of wheels and accessories for wheels.26 More specifically, Opposer
argues that Applicant’s claimed goods “driving chains for land vehicles; reduction
gears for land vehicles; transmission chains for land vehicles” are all intricately
related to automotive wheels since they constitute accessories to automotive wheels.
We find Opposer’s arguments unpersuasive, and on this record cannot find the
goods overlapping. First, while Opposer’s identification of goods for its KMC standard

25 Opposer’s Trial Brief, p. 18, 21 TTABVUE 19.
26 Id.
Opposition No. 91228424
21
character mark includes the prefatory phrase “accessories for automobiles,” when
viewing this portion of the identification as a whole, the accessories are specifically
narrowed to only include “wheels.” Likewise, while the latter portion of the
identification of goods for Opposer’s KMC standard character mark includes the
prefatory phrase “wheel parts and accessories” for various land vehicles, the wheel
parts and accessories are also narrowed to include only “lug nuts, wheel covers, wheel
rims, wheel spokes, hub caps and center caps.” Moreover, with regard to Opposer’s
identification of goods for its mark, i.e., “automotive wheels and
components thereof,” Opposer has not submitted any evidence to demonstrate that
Applicant’s goods are “components” of Opposer’s wheels or to support its claim that
Applicant’s goods are “intricately related to automotive wheels.”27 Opposer’s
arguments are just that — mere arguments — none of which are supported by the
record.
Nevertheless, because the marks are identical in the case of KMC or substantially
similar in the case of and since there is no evidence that KMC is
commercially or inherently weak for the goods at issue, “the relationship between the
goods on which the parties use their marks need not be as great or as close as in the
situation where the marks are not identical or strikingly similar.” See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1992) (“[E]ven when goods or
services are not competitive or intrinsically related, the use of identical marks can

27 Id.
Opposition No. 91228424
22
lead to an assumption that there is a common source”); see also Amcor, Inc. v. Amcor
Ind., Inc., 210 USPQ 70, 78 (TTAB 1981).
Opposer’s and Applicant’s identifications of goods show on their face that they all
include motor vehicle parts. Moreover, while there is no per se rule that different
automobile parts and accessories are related goods, the Board, albeit on different
records, has held that marketing by different parties of different types of automotive
parts and accessories under the same or similar marks is likely to cause confusion.
See, e.g., In re Delbar Prods., Inc., 217 USPQ 859, 861 (TTAB 1981) (holding ULTRA
for outside mounted vehicle mirrors likely to be confused with ULTRA and design for
automobile parts, including pins, valves, water pumps, oil pump, universal joints,
gears, and axle shafts); In re Red Diamond Batter Co., 203 USPQ 472, 472-73 (TTAB
1979) (holding RED DIAMOND for storage batteries likely to be confused with
DIAMOND for pneumatic rubber automobile and vehicle tires); In re Trelleborgs
Gummfabriks Aktiebolag, 189 USPQ 106, 107-08 (TTAB 1975) (holding T and design
for, inter alia, hoses, namely, rubber hoses and inner tubes for tires and pneumatic,
semisolid and solid tires likely to be confused with T and design for, inter alia, motor
oil, oil additives and fuel additives); In re Magic Muffler Serv., Inc., 184 USPQ 125,
126 (TTAB 1974) (holding MAGIC for vehicle parts, namely mufflers, likely to be
confused with MAGIC for motors for motor vehicles).
Here, both Opposer’s goods and Applicant’s goods are comprised of automobile
parts or accessories which may be purchased simultaneously by the same individuals
such as automotive mechanics, automotive dealers and motorists who service their
Opposition No. 91228424
23
own vehicles. Since Opposer’s goods and Applicant’s goods are sold under the same
and substantially the same marks, it is likely that they would mistakenly be
attributed to the same source.
Stated differently, the parties’ manner of use of identical or substantially identical
marks in the automotive field are the most relevant “circumstances surrounding” the
marketing of their goods, which makes their trademarks and goods “likely to be seen
by the same persons.” These circumstances could give rise to a mistaken belief that
the parties’ goods originate from or are associated with the same source. L.C.
Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008).
In short, while the parties’ goods differ, they are “related in the mind of the
consuming public as to the origin of the goods.” Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). We find that to be the case here because
the parties are both offering goods in the automotive parts field under identical and
substantially identical marks.
Thus, the du Pont factor regarding the similarity of the goods also favors a finding
of likelihood of confusion.
E. Similarity in Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. There no restrictions as to trade channels or classes of purchasers set
forth in either the identification of goods of Applicant’s involved application or
Opposer’s KMC and registrations of record. Accordingly, we presume
Applicant’s and Opposer’s goods travel through all usual channels of trade for such
Opposition No. 91228424
24
goods, e.g., automotive parts stores and online marketplaces, and are offered to all
normal potential purchasers for such goods, i.e., automotive mechanics, automotive
dealers and even some motorists. Paula Payne Prods. Co. v. Johnson Publ’g Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA); see also Stone Lion, 110 USPQ2d at 1161.
Moreover, Opposer has submitted evidence consisting of screenshots of websites of
third-party online retailers who offer the type of goods provided by both Applicant
and Opposer, thereby demonstrating that the parties’ respective goods travel in
similar trade channels.28 Accordingly, we find that both Opposer’s goods and
Applicant’s goods travel in the same or similar channels of trade and are offered to
similar or overlapping consumers.
In view of the foregoing, the third du Pont factor also weighs in favor of finding a
likelihood of confusion.
F. Actual Confusion
We next address the seventh du Pont factor, the nature and extent of any actual
confusion. A showing of actual confusion may be highly probative, if not conclusive,
of a likelihood of confusion. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003). Evidence of actual confusion is difficult to obtain,
however, and is not necessary to show a likelihood of confusion. See In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); Weiss
Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed. Cir.
1990).

28 Opposer’s Notice of Reliance, Exh. C-I; 20 TTABVUE 85-152.
Opposition No. 91228424
25
Here, Opposer relies heavily on evidence of what it alleges to be actual confusion.
Specifically, Opposer argues that its submitted screenshots from the websites of
various online retailers, namely, Sears, Amazon, K-Mart, eBay, ShopEddies, and
Trainers4me,29 demonstrate that these retailers have experienced actual confusion
because, among other things, they have labeled and advertised Applicant’s goods
under Opposer’s KMC Wheels trade name on their website pages.30
Here, without any testimony or competent evidence attesting to the truth of the
matters asserted in these Internet materials, we find that this evidence and
Opposer’s allegations are not established by what the webpages show on their face.
Specifically, the evidence does not show that that the goods offered under the KMC
Wheels trade name are in fact Applicant’s goods nor does this evidence establish that
the referenced KMC Wheels trade name specifically refers to Opposer.
In sum, Opposer has failed to submit probative evidence to demonstrate that
actual confusion has occurred. Accordingly, this du Pont factor is neutral.
G. Extent of Potential Confusion
Last, we consider the eighth du Pont factor that concerns the extent of potential
confusion, i.e., whether de minimis or substantial. Opposer maintains that since the
marks at issue are similar and the involved goods are identical in part, there is a
substantial likelihood of confusion as to the source of the involved goods. We agree to
the extent that because we have found that the goods at issue are related and are

29 Opposer’s Notice of Reliance, Exh. R-Z; 20 TTABVUE 222-260.
30 Opposer’s Trial Brief, pp. 12-15; 21 TTABVUE 13-16.
Opposition No. 91228424
26
offered under identical and substantially similar marks and are of the type that
would be marketed to and purchased by similar or overlapping consumers, the
potential for confusion cannot be deemed de minimis. Accordingly, this du Pont factor
favors Opposer.
V. Conclusion
We have considered all of Opposer’s arguments and evidence of record, including
those not specifically discussed herein, and all relevant du Pont factors. Because we
have found that Applicant’s KMC mark is identical to Opposer’s KMC mark and that
Opposer’s mark is substantially identical to Applicant’s mark, that
Applicant’s identified goods are related to Opposer’s goods, that they would move in
the same or overlapping trade channels, that they are offered to the same or
overlapping classes of purchasers, and that potential for confusion is not de minimis,
we conclude that Applicant’s KMC mark so resembles Opposer’s KMC and
marks as to be likely to cause confusion or mistake, or to deceive under
Section 2(d) of the Trademark Act.
Decision: The opposition to registration of Applicant’s KMC mark under Section
2(d) of the Trademark Act is sustained. In view thereof, we need not address
Opposer’s remaining claim of fraud. See, e.g., Chanel, Inc. v. Makarczyk, 110 USPQ2d
2013, 2017, 2027 (TTAB 2014) (“Insofar as we are sustaining the opposition on this
ground, we need not consider opposer’s remaining claims ….”).