Xcaliber, LLC

Trademark Trial and Appeal Board

Feb 19, 2008

No. 78742284 (T.T.A.B. Feb. 19, 2008)

Mailed: February 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re XCaliber, LLC
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Serial No. 78742284
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Douglas J. McEvoy of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski for XCaliber, LLC.

Tina L. Snapp, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
____________

Before Quinn, Walters and Kuhlke, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

XCaliber, LLC has filed an application to register the
standard character mark XCALIBER on the Principal Register
for “automotive tires and wheels,” in International Class
12, and “wholesale distributorships and retail store
services for tires and wheels,” in International Class 35.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Serial No. 78742284, filed October 28, 2005, based on an allegation of
a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78742284

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1052(d), on the ground that applicant’s mark so resembles
the previously registered marks shown below, and owned by
the same registrant, that, if used on or in connection with
applicant’s goods and services, it would be likely to cause
confusion or mistake or to deceive.
Registration No. 0596332 [registered October 5, 1954;
renewed for a period of ten years from October 5, 2004;
Section 15 affidavit acknowledged]
Mark: EXCALIBUR
Goods: “automobiles,” in International Class 12
Owner: Camelot Classic Cars Inc.

Registration No. 1300467 [registered October 16, 1984;
renewed for a period of ten years from October 16, 2004;
Section 15 affidavit acknowledged]
Mark:

Goods: “automobiles,” in International Class 12
Owner: Camelot Classic Cars Inc.

Registration No. 1514523 [registered November 29, 1988;
Sections 8 and 15 affidavits accepted and acknowledged,
respectively]
Mark:

Goods: “automobiles,” in International Class 12
Owner: Camelot Classic Cars Inc.

Serial No. 78742284

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The appeal is fully briefed. After careful
consideration of the evidence and arguments of record, we
affirm the refusal to register.
As a preliminary matter, applicant submitted new
evidence with its appeal brief and the examining attorney
has objected thereto. Applicant did not comply with the
established rule that the evidentiary record in an
application must be complete prior to the filing of the
notice of appeal or with a request for reconsideration filed
during the period for filing an appeal. See, 37 CFR
2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994). We sustain the objection and will not further
consider the exhibits attached to applicant’s brief.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
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Section 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); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
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National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Considering, first, the registered marks, the mark in
Registration No. 0596332 consists solely of the word, in
standard character form, EXCALIBUR. The mark in
Registration No. 1514523 consists of the word EXCALIBUR in a
slightly stylized script that is of little significance in
determining the overall commercial impression of the mark.
Clearly, the word EXCALIBUR is the dominant portion of this
mark. Moreover, applicant seeks to register its mark in
standard character format and, thus, applicant could
conceivably display its mark in any lettering style,
including that of the word EXCALIBUR in the registered mark.
37 C.F.R. § 2.52(a); In re Pollio Dairy Products Corp., 8
USPQ2d 2012, 2015 (TTAB 1988) (when registering mark in
block letters, now characterized as standard character form,
registrant remains free to change the display of its mark at
any time).
The design mark in Registration No. 1300467 consists of
a drawing of a sword in a double oval border. The oval
border contains the word EXCALIBUR repeated twice in an
undistinguished font style. We take judicial notice of the
definition submitted with the examining attorney’s brief
from the American Heritage Dictionary of the English
Language, 4th ed. 2000 (downloaded from Bartleby.com), of
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“Excalibur” as “in Arthurian legend, the sword belonging to
King Arthur.” We find that the sword design simply
reinforces the dominant wording, EXCALIBUR, in this mark.
Moreover, it is the wording EXCALIBUR that would be used by
purchasers asking for registrant’s goods. Thus, the wording
would make a greater impression on purchasers and is the
portion that is more likely to be remembered as the dominant
and source-signifying portion of the registered mark. In re
Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words
are normally accorded greater weight because they would be
used by purchasers to request the goods”). See also, e.g.,
In re Appetito Provisions Co., 3 USPQ2d 1553 (1987).
We find that applicant’s mark, XCALIBER, is
substantially similar in sound and appearance to the
registered marks. While there is no correct pronunciation
for trademarks, In re Teradata Corporation, 223 USPQ 361,
362 (TTAB 1984), the “X” portion of applicant’s mark and the
“EX” portion of the registered marks are likely to be
pronounced exactly the same, as are the “ER” and “UR”
endings of the respective marks. Thus, the marks are likely
to sound the same. Further, these minor differences in
spelling do not distinguish the marks visually. Applicant’s
mark is virtually identical to the registered word marks and
to the dominant portion of the registered design mark.
There is also no indication in the record that the
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connotations of the respective marks would not be the same.
Further, we find that the overall commercial impressions of
the marks are substantially similar. We do not find
applicant’s arguments to the contrary persuasive.
Additionally, in view of the definition of “Excalibur,”
we find this to be an arbitrary mark in connection with both
applicant’s and registrant’s identified goods and services.
In the absence of evidence of any third-party use or
registration of this mark in connection with the identified
goods, it would appear to be a strong mark. Applicant
essentially admits this point, stating that “no other marks
other than applicant’s and registrant’s are noted having to
do with vehicles or tires” (brief, p. 5).
We turn now to the similarities or dissimilarities in
the goods and services, trade channels and classes of
purchasers involved in this case. Concerning the goods and
services, the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
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USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some manner or
that some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein; and Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002).
In support of her position that the respective goods
and services are related, the examining attorney submitted
four third-party registrations that include, in the
identification of goods, both automobiles or vehicles and
wheels and tires therefor.2 Three of these registrations,
for the marks TOM’S, IAC INTERNATIONAL and ASIASONIC,
respectively, appear to identify aftermarket and/or

2 A fifth third-party registration does not include vehicles, only motor
vehicle parts, in the identification of goods and, thus, is not
probative.
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customized vehicles and parts. The fourth registration,
owned by Honda Motor Co., Ltd., for the mark A-SPEC for
“automobiles with, and custom packages of, such premium
structural parts as … alloy wheels, tires …” also appears to
identify customized and/or aftermarket vehicles and parts.
The examining attorney submitted excerpts from Internet
websites for several major automotive manufacturers,
Ford.com, GM.com, Toyota.com, and Dodge.com, as evidence
that these companies offer automobiles and automotive parts
for sale, and that automobiles contain wheels and tires.
She also submitted excerpts from a Ford racing parts website
and a GM performance parts website, both offering “wheels.”3
An excerpt from the Toyota website includes the following
language:
Your Toyota’s tires are a specifically engineered
component of your vehicle, helping to provide its
unique driving and safety characteristics. That’s
why it’s important to use tires that are exactly
matched to your Toyota.
And getting your tires from the Toyota Tire Center
at many Toyota Dealerships is your assurance that
you’ll get those tires – and only those tires.

We take judicial notice of the definitions submitted by
the examining attorney with her brief from American Heritage
Dictionary of the English Language, 4th ed. 2000

3 The examining attorney submitted an excerpt from mopar.com showing the
Dodge logo and offering tires for sale under the brands Goodyear,
Dunlop, Michelin and Continental. This evidence is not probative of the
examining attorney’s position that autos and tires may be identified by
the same mark.

Serial No. 78742284

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(www.Bartleby.com), of “tire” as “a covering for a wheel,
usually made of rubber reinforced with cords of nylon,
fiberglass, or other material and filled with compressed
air”; and from the Cambridge Advanced Learner’s Dictionary
(www.dictionary.Cambridge.com) of “wheel” as “a circular
object connected at the centre to a bar, which is used for
making vehicles or parts of machines move.”
There is no question that wheels and tires are
structural parts of automobiles; although, this fact alone
is insufficient to establish a relationship between and
among the goods and services for the purpose of determining
likelihood of confusion. The examining attorney cites
several cases finding likelihood of confusion involving
automobiles and tires; however, we note that there is no per
se rule in this regard as each case must be decided on its
own facts.
Applicant makes the following argument that the goods
and services are not substantially similar such that
confusion is likely (brief, p. 4-5):
[T]he present mark is directed to tire sales and
services, for all vehicles, whereas the prior
marks identify only custom vehicles and parts.
Confusion on this point is, for all practical
purposes, impossible considering that, and in
order to be confused, a prospective purchaser of
the registrant’s classic car products would have
to confuse applicant’s general tire sales and
services (i.e., to clarify being the name of
applicant’s store and not the names of the tires
it sells) as originating from registrant’s custom
vehicle products (unlikely at best).
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. . .
Given further the customized nature of the classic
car services provided by Excalibur (i.e., as the
Examiner clearly understands, they do not
manufacture cars, rather they at most customize or
modify existing vehicles including providing such
as taillights and other customization features),
it would be a significant stretch to presume that
an ordinary classic car customer of registrant
would exhibit any degree of confusion with
applicant’s tire wholesale distributorship and
retail store services.

Applicant also argues that the respective goods and services
appeal to different classes of purchasers, stating that
registrant’s goods would be bought only by classic car
enthusiasts, whereas applicant’s goods and services would be
bought by the general consumer.
We are not persuaded by applicant’s arguments. The
identifications of goods in the cited registrations contain
no limitations and, thus, encompass all automobiles.
Likewise, the identification of goods and services in the
application contain no limitations and, thus, encompass all
automotive tires and wheels, including those for classic
cars, and distributorship and retail store services for all
tires and wheels. We find the evidence from the Internet
websites of several major automotive manufacturers,
supported by the few third-party registrations, sufficient
to conclude that at least some types of automotive wheels
and tires originate from the same sources and are identified
by the same marks as automobiles. And, certainly, a
wholesale or retail establishment of the same name selling
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the such products, is likely to be perceived as similarly
related to automobiles. In other words, we find the goods
and services sufficiently related that, if identified by
confusingly similar marks, confusion as to source is likely.
Inasmuch as the identifications of goods and services
in the involved application and the goods in the cited
registrations are not limited to any specific channels of
trade, we presume that the goods and services would be
offered in all ordinary trade channels for these goods and
services and to all normal classes of purchasers for the
same. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
Therefore, we find the trade channels and classes of
purchasers are at least overlapping.
Having considered the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that in view of
the substantial similarity in the commercial impressions of
applicant’s mark, XCALIBER, and registrant’s EXCALIBUR
marks, their contemporaneous use on the related goods and
services involved in this case is likely to cause confusion
as to the source or sponsorship of such goods and services.
Decision: The refusal under Section 2(d) of the Act is
affirmed.