Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SUNMARKS, INC.
Serial No. 74/178,616
August 16, 1994
Raul F. Cordova
Trademark Examining Attorney
Law Office 7
(David Shallant, Managing Attorney)
Before Cissel, Seeherman and Quinn
Administrative Trademark Judges
Opinion by Quinn
Administrative Trademark Judge
The Trademark Examining Attorney refused registration under Section 2(d) of the Act, 15 U.S.C. 1052(d), on the ground that applicant's mark, when applied to applicant's goods, so resembles the previously registered marks ULTRA LUBE for "lubricating oils and greases" [FN2] and
for "chemicals, namely engine oil additives, fuel additives, radiator products and automatic transmission fluid" and for "lubricants, namely greases, engine oil and industrial lubricants" [FN3] as to be likely to cause confusion. When the refusal was made final, applicant appealed. Applicant and the Examining Attorney have filed briefs.
In refusing registration, the Examining Attorney points to similarities between the marks and the closely related (identical in part) goods sold thereunder. In addition, the Examining Attorney is not persuaded by applicant's arguments based on its ownership of prior registrations; the Examining Attorney essentially maintains that he is not bound by the Office's past issuance, perhaps improvidently, of registrations of the same mark for the same or similar goods.
Applicant counters by contending that the differences between the marks are sufficient that confusion is unlikely to occur in the marketplace. Applicant further points to the absence of any instances of actual confusion between the marks despite extensive use by applicant. In this connection, applicant submitted the declarations of William Salmon, brand manager, and Donald Johnson, applicant's counsel. Mr. Salmon asserts, in pertinent part, that since 1984 gasoline and motor oil have been sold under the mark at more than 6,000 of applicant's service stations in more than 20 states; that annual sales have been in the millions of gallons for each; and that since 1988 ULTRA motor oil has been sold through mass merchandising and commercial accounts in at least 30 states, accounting for annual sales in the millions of gallons. Mr. Johnson asserts that no instances of actual confusion between the involved marks have ever been brought to his attention, and that the owner of the cited registrations has never taken any action against applicant's use or registration of the mark ULTRA. In this regard, applicant urges us to place significant probative value on its ownership of two existing registrations which issued with no opposition by the prior registrant. Applicant is the owner of registrations of the mark ULTRA for "motor oil" [FN4] and "gasoline for use as automotive fuel, sold only in applicant's automotive service stations." [FN5] Applicant argues that "[i]n short, if the registrant had objections, or if repeated incidents of confusion had occurred, the registrant presumably would have taken some action." (supplemental appeal brief, p. 12). Applicant maintains that the refusal "is merely an administrative exercise, removed from reality of a marketplace in which no objection or evidence of confusion has arisen in 10 years" and that the Office's present "decision which utterly contradicts that of another Examining Attorney deserves special scrutiny by the Board" (supplemental appeal brief, pp. 8 and 13). Applicant concludes as follows:
*2 when the [applicant] has used the mark without incident, when the owner of the cited registrations has voiced no objections, and when the Trademark Office has already issued other registrations of the same mark for identical and related goods, the Examining Attorney should defer to the judgment of the marketplace and his colleagues.
With respect to the goods, applicant does not dispute, with good reason, that its products and those of registrant are closely related. In arguing that it is entitled to a registration for gasoline, motor and gear oil, and greases by virtue of its prior registrations covering gasoline and motor oil, applicant concedes that its goods and registrant's goods "are clearly related goods." (reply brief, pp. 9 and 11). In point of fact, the identifications overlap in part, namely as to registrant's greases and engine oil and applicant's greases and motor oil. We also should point out that the goods would appear to be relatively inexpensive and, thus, are subject to casual purchases. As stated in the past, purchasers of such products are held to a lesser standard of purchasing care and are more likely to be confused as to the source of the goods. See: Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed.Cir.1984). Applicant's argument (reply brief, p. 18) that consumers are "comparably sophisticated and careful with regard to the fuels and oils that they put in their cars as they are with the cars themselves" is strained and, in any event, not supported by any evidence of record.
We next turn to consider the marks. We find that the applied-for mark and the cited marks, when considered in their entireties as applied to the same or closely related goods, engendered similar overall commercial impressions. In considering the marks, we recognize that the word "lube" in registrant's marks and the design feature of the mark shown in Registration No. 1,087,149 cannot be ignored. See: Giant Food, Inc. v. National Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.Cir.1983). However, although we have resolved likelihood of confusion upon consideration of the marks in their entireties, there is nothing improper in giving more weight, for rational reasons, to a particular feature of the mark. See: In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.Cir.1985). In this case, we have given more weight to the identical ULTRA portion in registrant's marks, because of the descriptive nature of the word "LUBE." [FN6] Further, the design feature of the mark shown in Registration No. 1,087,149 is insufficient to distinguish it from the applied-for mark, especially in view of the fact that the marks are used in connection with the same and/or closely related goods. Finally, in finding that the marks are similar, we have kept in mind the normal fallibility of human memory over time and the fact that the average consumer retains a general rather than a specific impression of trademarks encountered in the marketplace.
*3 We are required, of course, to analyze the issue of likelihood of confusion based on all of the probative facts in evidence that are relevant to the factors bearing on this issue. See: In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA1973). Accordingly, in the present case the similarities between the marks and goods as discussed above must be weighed against other relevant duPont factors, namely "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion"; "the market interface between applicant and the owner of a prior mark"; and "any other established fact probative of the effect of use." Id. at 567.
We readily admit that in the present case it is troublesome to refuse registration when applicant already owns registrations for the identical mark for the same and/or similar goods. We find, however, that when this evidence is balanced against the other du Pont factors, the scales remain tipped in favor of affirming the refusal here.
With respect to applicant's estoppel-like arguments on this point, we initially note that the only overlap in the identification of goods in its application and its registrations is "motor oil." "Gasoline," listed in the application, also appears in one of the registrations but with significant restrictions, namely "for use as automotive fuel, sold only in applicant's automotive service stations." This Office should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods as it does here, even when the additional goods are closely related to those listed in a prior registration. As the Board stated in In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB1986):
The cases are legion holding that each application for registration of a mark for particular goods or services must be separately evaluated. See, for example, In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed.Cir.1985) [other citations omitted]. Section 20 of the Trademark Act, 15 USC § 1070, gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not be delegated by adoption of conclusions reached by Examining Attorneys on different records.
Suffice it to say that each case must be decided on its own merits based on the evidence of record. We obviously are not privy to the record in the files of the registered marks and, in any event, the issuance of a registration(s) by an Examining Attorney cannot control the result of another case.
Applicant contends that the refusal to register here is tantamount to an impermissible collateral attack on its registrations, citing Park 'N Fly v. Dollar Park and Fly, Inc., 469 U.S. 189, 224 USPQ 327 (1985), and In re The American Sail Training Association, 230 USPQ 879 (TTAB1986). Those cases clearly are distinguishable from the one now before us in that both of those cases involved incontestable registrations, a fact not present in this case. Moreover, arguments similar to that submitted by applicant herein have been rejected by the Court of Appeals for the Federal Circuit in In re Loew's Theatres, supra at 869: [FN7]
*4 The basic flaw in [applicant's] analysis is that each application for registration of a mark for particular goods must be separately evaluated. Nothing in the statute provides a right ipso facto to register a mark for additional goods when items are added to a company's line or substituted for other goods covered by a registration. Nor do the PTO rules afford any greater rights.
Applicant also asserts, as noted earlier in this opinion, that registrant has never taken any action against applicant's use or registration of ULTRA, and that there have been no instances of actual confusion despite applicant's extensive use of ULTRA.
Applicant's registrations issued in January 1992. We are not inclined, nor do we think it appropriate, to infer from the issuance of applicant's registrations over those of registrant that registrant has no objections to applicant's mark. Applicant's registrations remain vulnerable to an attack by registrant based on a claim of priority and likelihood of confusion until January 28, 1997. There is no consent agreement in place, and we have no way of knowing registrant's thoughts on this matter. A party, such as registrant, may have any number of reasons for avoiding litigation. One that immediately comes to mind here is based on the identification of goods listed in Registration No. 1,673,172. There, applicant's gasoline is restricted to "use as automobile fuel, sold only in applicant's automobile service stations." (emphasis added). One might reasonably expect that registrant is satisfied that applicant's sales are restricted to its own service stations, thereby precluding an overlap in trade channels for the goods.
Applicant has given us its version of the marketplace, pointing out the lack of actual confusion or objections from registrant. The problem for us is, quite frankly, that we do not really know the conditions in the marketplace since the picture painted by applicant is incomplete. Applicant would have us accord substantial weight to the absence of actual confusion despite its extensive use. While the "millions of gallons" of gasoline and motor oil sold per year are impressive, we note that the gasoline is sold only at applicant's service stations. And, while applicant's motor oil, according to Mr. Salmon, is sold through mass merchandising and commercial accounts, the oil, like the gasoline, also is sold at applicant's service stations. Applicant neglected to break down the sales of its motor oil in its own service stations versus the sales elsewhere. Although sales of applicant's motor oil are impressive, it may be that a high percentage occurred through applicant's service stations. In such circumstances, as with applicant's gasoline, it is easier to understand why applicant is unaware of any actual confusion or why registrant has made no objections. Moreover, we do not know the extent of use by registrant, but it is reasonable to assume that its products, given the marks involved, would not be sold at applicant's service stations to compete with applicant's identical and/or related products sold under a similar mark. We also observe that the involved goods are inexpensive, and it is reasonable to think that purchasers will not bother to report instances when they are confused by marks when buying inexpensive products.
*5 For all of the above reasons, and inasmuch as we are confined to the ex parte record before us, we place less emphasis on the absence of actual confusion and the lack of registrant's objections than does applicant. Cf. In re General Motors Corp., 23 USPQ2d 1465 (TTAB1992) [absence of actual confusion is strong evidence of no likelihood of confusion between GRAND PRIX for automobiles and GRAND PRIX for related automobile replacement parts in view of a confluence of facts, including thirty years of contemporaneous use and that automobiles involve a major and expensive purchase].
The present situation is distinguishable from the one confronted by the Board in the recently decided case of In re Schoeneman Enterprises, Inc., ____ USPQ2d ____, Serial No. 74/126,146 (TTAB Dec. 14, 1993) (copy enclosed). In that case, applicant had allowed its prior registration for the same mark and goods to lapse. Its application to reregister the mark was refused on the basis of several registrations (all owned by the same entity) which had coexisted with applicant's expired registration. The applicant made the same type of estoppel arguments that the present applicant advances here. The cases, however, are clearly distinguishable on the facts. In In re Schoeneman Enterprises, the Board focused on the very unusual circumstances found in that case. There, applicant and registrant had an unwritten understanding regarding consent to each other's use and registration, such contemporaneous use and registration spanning over fifty years with no instances of actual confusion. Those unusual circumstances simply are not present here.
We conclude that consumers familiar with registrant's lubricating oils and greases, engine oil additives, fuel additives, radiator products, automatic transmission fluid, and lubricants, namely engine oil and industrial lubricants sold under its ULTRA LUBE marks would be likely to believe, upon encountering applicant's mark ULTRA for gasoline, motor and gear oil and greases, that the goods originated with or were associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/178,616, filed June 21, 1991, alleging dates of first use of April 1983.
FN2. Registration No. 820,599, issued December 20, 1966; renewed. The word "Lube" is disclaimed apart from the mark.
FN4. Registration No. 1,673,171, issued January 28, 1992.
FN5. Registration No. 1,673,172, issued January 28, 1992.
FN6. We note that while Registration No. 820,599 includes a disclaimer of the word "lube," the other cited registration does not. We can only speculate as to the reason for this, our thought being that the Examining Attorney in the later registration viewed the mark as unitary and, therefore, not proper for a disclaimer. See, e.g.: Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed.Cir.1991). We also recognize that "ultra" is a laudatorily suggestive word found in the dictionary [of which we take judicial notice], meaning "going beyond others or beyond due limit." Webster's Third New International Dictionary (1976).
FN7. We recognize that In re Loew's Theatres and In re BankAmerica involved refusals under Section 2(e) of the Act. However, the propositions expressed therein and cited above are just as valid when considering refusals under Section 2(d).