A-Fab, LLC

Trademark Trial and Appeal Board

Mar 14, 2011

No. 77639758 (T.T.A.B. Mar. 14, 2011)

Mailed: March 14, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re A-Fab, LLC
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Serial No. 77639758
_______

Charles J. Meyer of Woodard, Emhardt, Moriarty, McNett &
Henry LLP for A-Fab, LLC.

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Karen Strzyz, Managing Attorney).
_______

Before Bucher, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

A-Fab, LLC (“applicant”) filed an application to
register in standard characters on the Principal Register
the mark AFCO for
radiators for land vehicles ordered through
specialty racing product ordering services

in International Class 7;
automotive measuring instruments, namely, water
temperature gauges, oil pressure gauges, oil
temperature gauges, fuel pressure gauges, brake
pressure gauges, and engine RPM gauges ordered
through specialty racing product ordering
services
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77639758
2
in International Class 9; and
land vehicle suspension components, namely, coil
springs, leaf springs, torsion/sway bars,
suspension struts, shock absorbers, control arms,
torque absorbing devices, spindles, ball joints,
suspension bushings, suspension mounting and
linkage components; vehicle parts, namely, shock
absorbers, suspension springs for land vehicles;
braking systems for vehicles and parts thereof;
steering components for land vehicles, namely,
power steering pumps, rack and pinion boxes,
steering boxes, steering quickener devices,
steering wheels; steering and suspension systems
and parts for vehicles, namely, upper ball
joints, lower ball joints, ball joints with
control arms, bushing kits, inner tie rod ends,
outer tie rod ends, sleeves, idler arms, center
links, stabilizer kits, inner sockets and pitman
arms; all ordered through specialty racing
product ordering services

in International Class 12.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark AFCO, previously registered on the
Principal Register in typed or standard characters for
“fuel pumps and replacement parts and mounting brackets
therefor” in International Class 7 and “fuel pumps and
replacement parts and mounting brackets therefor, for land

1 Application Serial No. 77639758 was filed on December 24, 2008,
based upon applicant’s assertion of 2004 as a date of first use
of the mark in commerce on or in connection with all three
classes of goods.

Ser No. 77639758
3
vehicle engines” in International Class 12,2 as to be likely
to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the matter under appeal and applicant filed a reply brief.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Similarity of the Marks
“The first DuPont factor requires examination of ‘the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports Inc. v. Veuve

2 Registration No. 1884155 issued on March 14, 1995. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
Ser No. 77639758
4
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). Regarding the first factor, we note that
there is no dispute but that the marks are identical. The
fact that the marks are identical results in this factor
strongly supporting the examining attorney’s position. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed.
Cir. 1993) (“Without a doubt the word portion of the two
marks are identical, have the same connotation, and give
the same commercial impression. The identity of the words,
connotation, and commercial impression weighs heavily
against the applicant”). We note in addition that
applicant has neither argued nor presented evidence that
the mark AFCO is weak or otherwise entitled only to a
limited scope of protection. Thus, we accord AFCO a normal
scope of protection as applied to the identified goods.
Furthermore, “even when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common
source.” Id. at 1689. See also Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981) (When both
parties are using or intend to use the identical
designation, “the relationship between the goods on which
the parties use their marks need not be as great or as
Ser No. 77639758
5
close as in the situation where the marks are not identical
or strikingly similar”). Bearing this in mind, we turn to
a consideration of the similarity of the goods.
Similarity of the Goods
We next compare applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973).
The recited goods need not be identical or even
competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. It is
sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source. See In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
Ser No. 77639758
6
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In this case, applicant’s goods are radiators for land
vehicles; gauges to measure automotive water and oil
temperature, oil, fuel and brake pressure, and engine RPMs;
and land vehicle suspension components, braking systems,
steering components, and steering and suspension systems
for vehicles, all of the aforesaid goods available through
specialty racing product ordering services. Registrant’s
goods are identified as fuel pumps, replacement parts and
mounting brackets therefor, both for general use and
specifically for land vehicle engines. To state the
obvious, both applicant and registrant use their respective
marks in connection with parts for land vehicles. Thus, as
identified in the subject application and cited
registration, applicant’s goods appear to be related to
those of registrant on that basis.
In addition, the examining attorney has made of record
a substantial number of use-based third-party registrations
which show that various entities have adopted a single mark
for goods of the type that are identified in both
applicant’s application and the cited registration. We
find the following ten examples to be most relevant:
Ser No. 77639758
7
Registration No. 3564970 for, inter alia, fuel
pumps and radiators;

Registration No. 2873519 for, inter alia,
mechanical and electric fuel pumps and shock
absorbers;

Registration No. 3154938 for, inter alia, fuel
pumps and radiators for motors and engines;

Registration No. 3285586 for, inter alia, fuel
pumps and land vehicle suspension parts, namely,
prongs, struts and sway bars;

Registration No. 3015016 for, inter alia, fuel
pumps, radiators and shock absorbers;

Registration No. 2775525 for, inter alia, fuel
pumps, radiators, gauges for fuel pressure, oil
pressure and water temperature, and high
performance automotive equipment and accessories,
namely, shock absorbers;

Registration No. 3549125 for, inter alia, fuel
pumps, land vehicle parts, namely, brakes and
parts therfor, and shock absorbers;

Registration No. 3443337 for, inter alia, fuel
pumps, radiators and oil pressure gauges;

Registration No. 2909511 for, inter alia, fuel
pumps and replacement parts, radiators,
automotive temperature gauges, brakes, brake
drums, brake rotors, brake calipers, braking and
stability control systems, steering and
suspension parts, namely, control arms, shock
absorbers and struts; and

Registration No. 2593986 for, inter alia, fuel
pumps, shock absorbers, ball joints, tie rods,
control arms, center links, pitman arms and idler
arms.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
Ser No. 77639758
8
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
Applicant strenuously argues that there is no
presumptive rule that automotive parts are necessarily
related, and that the examining attorney must make a prima
facie case of likelihood of confusion based upon the
evidence of record in cases involving marks used in
connection with automobile parts. We agree. Even in those
cases in which identical marks are used in connection with
parts for vehicles, we do not presume that such goods are
per se related. Rather, we look to the evidence of record
as we have done in this case to determine the similarity of
the identified good, automotive or otherwise. See, for
example, In re Jeep Corp., 222 USPQ 333 (TTAB 1984); In re
Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1984); and
In re Delbar Products, Inc., 217 USPQ 859 (TTAB 1981).3 We
find in this case that the evidence made of record by the
examining attorney is sufficient to make a prima facie case

3 Applicant has made of record and relies upon a number of the
Board’s non-precedential decisions involving likelihood of
confusion between marks applied to various goods, including
automotive parts. We observe that our determinations in these
non-precedential cases are consistent with our precedential
decisions in that none apply a per se rule with regard to the
relatedness of various automotive or other goods.
Ser No. 77639758
9
that the goods recited in the involved application are
related to the goods in the cited registration.
We are not persuaded by applicant’s argument that the
goods are dissimilar because its goods do not include
registrant’s fuel pumps “or any other component responsible
for forcing fuel through a vehicle’s fuel system.”4
Applicant cites to no authority for its apparent position
that automotive goods must perform identical functions in
order to support a finding of likelihood of confusion. In
short, the evidence of record demonstrates that applicant’s
goods are of a type that are related to or otherwise may be
encountered with those of registrant, and this du Pont
factor also favors a finding of likelihood of confusion.
Channels of Trade and Classes of Consumers
As identified, applicant’s goods are available for
purchase “through specialty racing product ordering
services.” Applicant further has made of record the
declaration of its officer, Mr. Jeffrey B. Scales and a
product catalog in support of its position that applicant’s
goods “are marketed as premium racing components of the
highest quality to ensure greater speed and enhance vehicle
performance;”5 and that such goods “are highly specialized

4 Applicant’s brief, p. 11.
5 Scales Declaration, para. 1.
Ser No. 77639758
10
and complex products.” We note, however, that the goods in
the cited registration are not limited as to type and, as
such, must be presumed to include fuel pumps for ordinary
automotive use as well as fuel pumps for high performance
or racing use. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”). See also
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”).
In this case, because the goods identified in the
cited registration do not contain any limitations as to the
marketing channels or prospective purchasers thereof,
registrant’s goods are presumed to move in all normal
channels of trade and be available to all classes of
potential consumers. See In re Elbaum, 211 USPQ 639, 640
Ser No. 77639758
11
(TTAB 1981). These would include consumers of high
performance and automobile racing parts. Therefore, we
find that the same consumers would encounter both
applicant’s and registrant’s goods and they would be sold
in some of the same channels of trade.
Degree of Purchaser Care
Applicant further argues that due to the highly
specialized and expensive nature of its goods, purchasers
thereof are “sophisticated and highly knowledgeable with
respect to the racing industry.”6 While we accept, in
considering the fourth du Pont factor, applicant’s
assertion that its involved goods may be the subject of
sophisticated purchases, even careful purchasers are likely
to be confused by identical marks. As stated by our
primary reviewing court, “[t]hat the relevant class of
buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even
of discriminating purchasers ... are not infallible.’” In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986) quoting Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112

6 Scales Declaration, para. 5.

Ser No. 77639758
12
(CCPA 1970). Therefore, the fact that the purchasers may
exercise care before purchasing these goods does not mean
there can be no likelihood of confusion. In the present
case, the identity between the marks and the similarity
between goods as identified outweigh any sophisticated
purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing
decision, and expensive goods].
Summary
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its identical
mark that the goods originated with or are associated with
or sponsored by the same entity.
Decision: The refusal to register is affirmed.