Apollo Oil & Warehouse Distributors, Inc.

Trademark Trial and Appeal Board

Sep 28, 2000

No. 75338025 (T.T.A.B. Sep. 28, 2000)

Paper No. 14
CEW
9/28/00
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Apollo Oil & Warehouse Distributors, Inc.
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Serial No. 75/338,025
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David E. Fleenor of Stoll, Keenon & Park for applicant.
John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
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Before Simms, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Apollo Oil & Warehouse Distributors, Inc. has filed a
trademark application to register the mark APOLLO OIL for
“automotive oils, greases, lubricants; motor fuels, namely,
gasoline and diesel fuel.”1 The application record includes
a disclaimer of OIL apart from the mark as a whole.
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so

1 Serial No. 75/338,025, filed August 8, 1997, in International Class 4,
based on use in commerce, alleging first use and first use in commerce
as of 1972.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/338,025
2
resembles the mark APOLLO, previously registered for
“industrial lubricants,” in International Class 4,2 that, if
used on or in connection with applicant’s goods, it would
be likely to cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
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). In the
analysis of likelihood of confusion in this case, two key
considerations are the similarities between the marks and
the similarities between the goods. 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 mark, when viewed in
their entireties, are similar in terms of appearance,
sound, connotation and commercial impression. The test is

2 Registration No. 2,029,459, issued January 14, 1997, to Apollo
Chemical Corporation. The registration also includes goods identified
Serial No. 75/338,025
3
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 National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
In this case, the first word in applicant’s mark is
identical to the registered mark in its entirety. The
second word in applicant’s mark, OIL, is clearly merely
descriptive in connection with all of applicant’s goods and
generic in connection with several. On the other hand,
there is nothing in this record to indicate that APOLLO is
other than arbitrary in connection with both applicant’s

in International Class 1, which the Examining Attorney has not
Serial No. 75/338,025
4
and registrant’s goods. Viewed in its entirety, we find
that APOLLO is the dominant portion of applicant’s mark;
and that the overall commercial impressions of applicant’s
mark, APOLLO OIL, and registrant’s mark, APOLLO, are
substantially similar.
Turning to consider the goods involved in this case,
applicant’s principal contention regarding the goods in the
cited registration is that the registered mark is used only
in connection with textile industry lubricants. However,
the question of likelihood of confusion must be determined
based on an analysis of the goods identified in applicant’s
application vis-à-vis the goods identified in the
registration, rather than what the evidence shows the goods
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 USPQ2d 1783 (Fed. Cir. 1992); and
The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991). Thus, applicant’s argument is not
well taken because the industrial lubricants in
International Class 4 in the cited registration are not
limited to the textile industry, so we must consider the
identified goods to encompass all industrial lubricants.

considered as part of the Section 2(d) refusal.
Serial No. 75/338,025
5
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.
“Industrial lubricants,” as the goods are identified
in the cited registration clearly encompass both lubricants
used by industry and lubricants of an industrial type or
nature, which could be used by a broad range of purchasers,
e.g., including, among others, large and small industrial
operations, small machinery shops and operators of heavy
machinery. Applicant’s goods, automotive oils, greases and
lubricants, and its motor fuels, are similarly broadly
identified so that use may occur across a broad range of
purchasers, e.g., including, among others, private
consumers, auto repair and machinery businesses, operators
Serial No. 75/338,025
6
of heavy equipment, and large and small industry that
operates trucks and other motor-driven mechanical devices.
Thus, it is very likely that there are common purchasers of
both applicant’s and registrant’s products.
Moreover, the Examining Attorney has made of record
copies of twelve third-party registrations in support of
his position that applicant’s and registrant’s goods are
closely related. Each of these registrations includes, in
its identification of goods, both industrial and automotive
lubricants. Third-party registrations which cover a number
of differing goods, and which are based on use in commerce,
although not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to
the extent that they may serve to suggest that such goods
are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988). All of the third-party registrations in this
case are based on use in commerce.
We find that applicant’s goods are sufficiently
related to the goods in International Class 4 in the cited
registration that, if identified by confusingly similar
marks, confusion as to the source of the goods is likely.
Serial No. 75/338,025
7
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, APOLLO OIL, and registrant’s mark, APOLLO, their
contemporaneous use on the related goods involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods.
Finally, to the extent that we have any doubt
concerning our conclusion that confusion is likely, we are
obligated to resolve such doubt in favor of the registrant.
See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); and In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir.
1988).
Decision: The refusal under Section 2(d) of the Act
is affirmed.
R. L. Simms
C. E. Walters
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board