Daystar Products International, Inc.

Trademark Trial and Appeal Board

Sep 24, 2020

87765368 (T.T.A.B. Sep. 24, 2020)

Mailed: September 24, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re Daystar Products International, Inc.
————
Serial Nos. 87765368 and 87765385
————
David A. Lowe of Lowe Graham Jones, PLLC,
for Daystar Products International, Inc.
Sasha Rios, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
————
Before Bergsman, Pologeorgis, and Coggins,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:

Daystar Products International, Inc. (“Applicant”) seeks registration on the
Principal Register of the standard character mark HCT1 and the composite mark
,2 both for the following goods and services:

1 Application Serial No. 87765368, filed on January 22, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and claiming (1)
September 30, 2017 as both the date of first use and first use in commerce for the identified
Class 7 goods; (2) September 30, 2015 as both the date of first use and first use in commerce
for the identified Class 9 goods and Class 35 services; and (3) October 2016 as both the date
of first use and first use in commerce for the identified Class 12 goods.
2 Application Serial No. 87765385, filed on January 22, 2018, based on an allegation of use in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial Nos. 87765368 and 87765385
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Exhaust manifold for engines; Exhaust mufflers for motors;
Aftermarket automobile engine exhaust systems comprised of pipes,
collectors, mufflers, particulate traps, exhaust dumps, headers and
spark arrestors, in International Class 7;

Electronic motor vehicle ignition tuning kits comprised of an electronic
control unit that monitors engine performances and delivers re -
calculated sensor values to the original engine control unit to increase
engine performance, in International Class 9;

Automotive structural parts, namely, self-sealing tanks for fuel storage,
coolant storage, oil storage, and/or water storage, in International Class
12; and

On-line wholesale and retail store services featuring auto parts, in
International Class 35.3

The Trademark Examining Attorney refused registration of each of Applicant’s
marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
of likelihood of confusion with the composite mark (“TECH”
disclaimed) registered on the Principal Register for “Vehicle parts, namely, master
cylinders for brakes and clutches, especially for motorcycles; brakes and clutches for

commerce under Section 1(a) of the Trademark Act, and claiming (1) September 30, 2017 as
both the date of first use and first use in commerce for the identified Class 7 goods; (2)
September 30, 2015 as both the date of first use and first use in commerce for the identified
Class 9 goods and Class 35 services; and (3) October 2016 as both the date of first use and
first use in commerce for the identified Class 12 goods. The application includes the following
description of the mark: “The mark consists of the stylized term HCT to the right of a skull
design.” Color is not claimed as a feature of the mark.
3 Both of Applicant’s involved applications, as originally filed, also identified services in
International Class 37. Applicant filed a request to divide the Class 37 services in each of its
involved applications. Each request was granted. Thus, these appeals only concern the
original “parent” applications for the goods and services identified in International Classes
7, 9, 12, and 35.
Serial Nos. 87765368 and 87765385
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vehicles and parts thereof, especially master cylinders, especially for motorcycles” in
International Class 12.4
When the refusals were made final, Applicant appealed. The appeals are fully
briefed.5 After Applicant submitted its appeal briefs, the Board granted the
Examining Attorney’s motion to consolidate the appeals.6 We therefore decide both
appeals in a single opinion. For the reasons explained below, we affirm the refusals
to register.7
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65

4 Registration No. 4962726, issued on May 24, 2016. The registration includes the following
description of the mark: “The mark consists of Square shape darkly shaded with lighter
continuous line around the perimeter and lighter circle centered within the square containing
the initials ‘HCT’ in uppercase with the words ‘HARD CORE TECH’ in uppercase centered
below the circle in the darkly shaded area of the square shape.” Color is not claimed as a
feature of the mark.
5 After Applicant filed a brief in each appeal, the Examining Attorney requested that
jurisdiction be restored in each application so that the newly-assigned Examining Attorney
be allowed to submit additional evidence to supplement the evidence of record. 8 TTABVUE
in application Serial No. 87765368 and 7 TTABVUE in application Serial No. 87765385. The
Board granted each request and also permitted Applicant to file a supplemental brief in each
appeal to address any new evidence submitted by the newly-assigned Examining Attorney. 9
TTABVUE in application Serial No. 87765368 and 8 TTABVUE in application Serial No.
87765385. Applicant filed a supplemental brief in each appeal. 12 TTABVUE in application
Serial No. 87765368 and 11 TTABVUE in application Serial No. 87765385.
6 9 TTABVUE 1 in application Serial No. 87765368; 8 TTABVUE in application Serial No.
87765385.
7 Unless otherwise specified, all TTABVUE and Trademark Status and Document Retrieval
(“TSDR”) citations reference the docket and electronic file database for application Serial No.
87765368. All citations to the TSDR database are to the PDF version of the documents.
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USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there
is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and [services] and differences in the marks.”). “[E]ach
case must be decided on its own facts and the differences are often subtle ones.” Indus.
Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal
citations removed).
A. Similarity of the Marks
We first address the DuPont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). “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) (quotation omitted).
Because this factor is based on the marks in their entireties, our analysis cannot
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be predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); 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.”). On the other
hand, there is nothing improper in assigning more or less weight to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
Applicant’s marks are HCT in standard characters and . The cited
mark is . In challenging the refusal, Applicant argues that its standard
character HCT mark is quite dissimilar from the cited mark because its mark does
not include a design element nor does it include the additional wording HARD CORE
TECH found in the cited mark which suggests a certain type of technology.8 With
regard to its mark, Applicant maintains that although each mark
includes the similar HCT term, its mark is highly stylized and located to the right of
a prominent skull design.9 Additionally, Applicant similarly argues that its
mark does not include the additional wording HARD CORE TECH found

8 Applicant’s Appeal Brief pp. 2-3, 4 TTABVUE 3-4 in application Serial No. 87765368.
9 Applicant’s Appeal Brief pp. 2-3, 4 TTABVUE 3-4 in application Serial No. 87765385.
Serial Nos. 87765368 and 87765385
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in the cited mark.10
We are not persuaded by Applicant’s arguments. We initially note that the cited
mark issued on the Principal Register without a showing of acquired distinctiveness
under Section 2(f) of the Trademark Act. Accordingly, we find Registrant’s
mark, when viewed in its entirety, is inherently distinctive and,
therefore, is entitled to the normal scope of protection accorded an inherently
distinctive mark.
We also note that there is no evidence of record demonstrating that third parties
use or have registered marks similar to the cited mark for similar goods. Thus, the
cited mark, based on this record, is not weakened either commercially
or conceptually by any third-party uses or third-party registrations.
Further, due to the shared term HCT, the marks are similar in appearance,
sound, connotation and commercial impression. The addition of a merely descriptive
or generic term in the cited mark, i.e., TECH, which has been disclaimed, does not
detract from the similarity of the marks. Disclaimed matter that is descriptive of or
generic for a party’s goods or services is typically less significant or less dominant
when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41

10 Id. at p. 3, 4 TTABVUE 4.
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USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (‘TMEP”) §§ 1207.01(b)(viii) and (c)(ii) (October 2018).
Moreover, the letters HCT in the cited mark appear larger than the rest of the
wording in the mark and are prominently displayed in the center of the mark. As
such, we find that the letters HCT are the dominant feature of the cited mark.
Further, the fact that the cited mark and one of Applicant’s marks incorporate a
design element does not lessen the dominance of the letters HCT in either
Registrant’s mark or Applicant’s mark. Indeed, “the verbal portion of the
mark is the one most likely to indicate the origin of the goods [or services] 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 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 101, 1911 (Fed. Cir. 2012). We similarly find that the
additional wording HIGH CORE TECH in the cited mark also does not diminish the
dominance of the letters HCT because the additional wording appears in a smaller
size at the bottom of the mark and the wording merely reinforces the dominance of
the acronym HCT in the cited mark.
As to stylization, Applicant’s HCT mark is a standard character mark, and marks
appearing in standard character form may be displayed in any font style, color and
size, including the identical stylization of the literal portion of the cited mark, because
Serial Nos. 87765368 and 87765385
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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) (“[T]he
argument concerning a difference in type style is not viable where one party asserts
rights in no particular display. By presenting its mark merely in a typed drawing, a
difference cannot legally be asserted by that party.”); In re Aquitaine Wine USA, LLC,
126 USPQ2d 1181, 1186-87 (TTAB 2018). Thus, because Applicant’s standard
character HCT mark may be displayed in the identical manner as the literal HCT
portion of the cited mark, the mere stylization of the term HCT in the cited mark is
insufficient to distinguish these marks. Additionally, we find that the degree of the
stylization of the term HCT in either Applicant’s mark or the cited
mark is not sufficiently striking, unique or distinctive so as to
create a commercial impression separate and apart from the letters HCT.
Quite simply, the dominant portion of Applicant’s marks, i.e., the letters HCT, is
identical to the dominant element in the cited mark in appearance,
sound, connotation and commercial impression. For the reasons discussed above,
consumers are more likely to remember the term HCT than the other elements in
either Applicant’s marks or Registrant’s mark. Nat’l Data, 224 USPQ at 751. While
we have not overlooked the design element, the additional wording HARD CORE
TECH, or the disclaimer of the term TECH in the cited mark, or the addition of the
Serial Nos. 87765368 and 87765385
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skull design in one of Applicant’s involved marks, we nonetheless conclude that
Applicant’s marks and the cited mark, when considered in their entireties, are
substantially similar.
Thus, the first DuPont factor favors a finding of likelihood of confusion.
B. Similarity of the Goods and Services
We next compare the goods and services under the second DuPont factor. In
making our determination regarding the relatedness of the goods and services, we
must look to the goods and services as identified in Applicant’s applications and the
goods listed in the cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys., Inc. v. Hous. Comput. Servs. 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 identificat ion of goods [or
services] set forth in the application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of goods [or services] are
directed.”)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
It is well-settled that the goods or services need not be identical or competitive to
support a holding of likelihood of confusion. It is sufficient that the respective goods
and services are related in some manner, or that the conditions and activities
surrounding the marketing of the goods and services are such that they would or
could be encountered by the same persons under circumstances that could, because
Serial Nos. 87765368 and 87765385
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of the similarity of the marks, give rise to the mistaken belief that they originate from
the same source. See Coach Servs. Inc., 101 USPQ2d at 1722 (citation omitted);
Hilson Research, Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1432 (TTAB
1993). The issue here, of course, is not whether consumers would confuse Applicant’s
goods and services with Registrant’s goods, but rather whether there is a likelihood
of confusion as to the source of these goods and services. L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).
Applicant’s goods and services are identified as follows:
Exhaust manifold for engines; Exhaust mufflers for motors;
Aftermarket automobile engine exhaust systems comprised of pipes,
collectors, mufflers, particulate traps, exhaust dumps, headers and
spark arrestors, in International Class 7;

Electronic motor vehicle ignition tuning kits comprised of an electronic
control unit that monitors engine performances and delivers re-
calculated sensor values to the original engine control unit to increase
engine performance, in International Class 9;

Automotive structural parts, namely, self-sealing tanks for fuel storage,
coolant storage, oil storage, and/or water storage, in International Class
12; and

On-line wholesale and retail store services featuring auto parts, in
International Class 35.

The goods listed in the cited registration are “Vehicle parts, namely, master
cylinders for brakes and clutches, especially for motorcycles; brakes and clutches for
vehicles and parts thereof, especially master cylinders, especially for motorcycles” in
International Class 12.
To demonstrate that Applicant’s goods and services are related to Registrant’s
goods, the Examining Attorney submitted screenshots from various third-party
Serial Nos. 87765368 and 87765385
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websites to demonstrate that motorcycle parts, utility task vehicle (UTV)11 parts, and
electronic control panels are provided under the same mark and, in some instances,
are also provided under the same mark as the online retailer that sells the goods.12 A
representative sample is provided below:
WEBSITE GOODS
www.partsfish.com Motorcycle and UTV parts under the
name “KAWASAKI”
www.hondapartshouse.com UTV and motorcycle parts under the
name “HONDA”
www.babbittsonline.com Motorcycle parts and UTV parts under
the name “YAMAHA”
www.shopyamaha.com Online retail store services and
electronic controls under the mark
“YAMAHA.”
www.cam-am.brp.com Motorcycle parts, UTV parts, online
retail store services under the name
“CAN-AM”

In challenging the refusal, Applicant argues that Applicant’s goods and services
directly relate to certain automobile engine parts while Registrant’s goods relate to
certain motorcycle parts. More specifically, Applicant asserts that its goods are
intended for use with complex off-road vehicles, namely, utility task vehicles (UTVs),
rather than just automobiles in general.13 Applicant further maintains that its goods

11 A “utility vehicle” or “utility task vehicle” is identified as “a small 2- to 6-person four-wheel
drive off-road vehicle.” See December 12, 2019 Final Office Action, TSDR p. 166.
12 December 12, 2019 Final Office Action, TSDR pp. 8-164.
13 See Declaration of Chad Smriga, Regional Sales Manager for Applicant (“Smriga Decl.”),
at ¶ 2, October 30, 2018 Response to Office Action; TSDR pp. 12-13 and Declaration of Mark
Turner, Applicant’s CEO, (“Turner Decl.”) at ¶ 3; 4 TTABVUE 12. We note that Mr. Turner’s
declaration was submitted with Applicant’s brief, and was not previously submitted during
the prosecution of Applicant’s involved applications. Thus, the submission of th is declaration
is technically untimely. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). However, since
Serial Nos. 87765368 and 87765385
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are not essential components or replacement parts of Registrant’s goods and,
therefore, the goods cannot be related.
Applicant’s arguments are unavailing. We initially note that Applicant has
inappropriately limited the goods listed in the cited registration to motorcycle parts
and its own goods to parts for UTVs. While the identification of goods in the cited
registration states that the goods are “especially for motorcycles,” the identification
is not limited solely to motorcycle parts and therefore could encompass “master
cylinders for brakes and clutches” and “brakes and clutches” for other types of
vehicles, including automobiles. Similarly, Applicant’s own identifications include
parts for goods not limited to UTVs. We do not, as suggested by Applicant, read
limitations into the identification of goods or services of either its involved
applications or the cited registration.14 In re i.am.symbolic, 866 F.3d 1315, 123
USPQ2d 1744, 1748 (Fed. Cir. 2017); SquirtCo, 216 USPQ at 940 (“There is no specific

the Examining Attorney did not object to this evidence as untimely and has referred to the
declaration in her own brief, we have considered the declaration for whatever probative value
it merits, if any. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 1207.03 (June 2020) (“Evidence submitted after appeal, without a granted request to
suspend and remand for additional evidence, see TBMP § 1207.02, may be considered by the
Board, despite its untimeliness, if the nonoffering party (1) does not object to the new
evidence, and (2) discusses the new evidence or otherwise affirmatively treats it as being of
record.”).
14 Even if we were to consider the limitations to the identifications proposed by Applicant, we
note the evidence submitted by the Examining Attorney demonstrates that parts for
motorcycles and UTVs are provided by a single entity under the same mark and, therefore,
are related. See In re G.B.I. Tile and Stone, 92 USPQ2d 1366, 1369 (TTAB 2009) (finding
goods related based on Internet evidence showing the goods originating from a common
source); In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (finding goods
related based on third-party Internet evidence showing applicant’s and registrant’s goods
sold by a single source).
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limitation and nothing in the inherent nature of Squirtco’s mark or goods that
restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board,
thus, improperly read limitations into the registration”); In re Thor Tech Inc., 90
USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or
limitations into the registrant’s description of goods.”). Further, Applicant’s broadly-
worded Class 7 “exhaust manifold for engines” and “exhaust mufflers for motors,” as
well as Applicant’s Class 9 “electronic motor vehicle ignition tuning kits” could
encompass parts for both automobiles and motorcycles.15 Thus, we find that both
Applicant’s identified goods and Registrant’s goods cover both automobile and
motorcycle parts.
As for Applicant’s “on-line wholesale and retail store services featuring auto
parts,” we note that the use of similar marks on or in connection with both products
and retail store services has been held likely to cause confusion where the evidence
showed that the retail store services featured the same type of products. See In re
Detroit Athletic Co., 128 USPQ2d at 1051 (holding the use of similar marks for various
clothing items, including athletic uniforms, and for retail shops featuring sports team
related clothing and apparel likely to cause confusion); In re Thomas, 79 USPQ2d
1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail -

15 We take judicial notice of the definition of “motorcycle” which is defined as “a motor
vehicle similar to a bicycle but usually larger and heavier, chiefly for one rider but
sometimes having two saddles or an attached sidecar for passengers.” (emphasis added)
(accessed from www.dictionary.com based on The Random House Unabridged Dictionary).
The Board may take judicial notice of dictionary definitions, including online dictionaries.
See, e.g., In re Omniome, Inc., 2020 USPQ2d 3222, *2 n.17 (TTAB 2019).
Serial Nos. 87765368 and 87765385
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jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
Because we have found that Registrant’s goods could include automobile parts and
since Applicant provides “on-line wholesale and retail store services featuring auto
parts,” we find that Registrant’s goods and Applicant’s online wholesale and retail
services are related.
We also find unavailing Applicant’s argument that because its identified goods
are not essential components or replacement parts of Registrant’s goods, the goods
cannot be related. While it is true that goods which are essential components or
replacement parts for other goods may be deemed related goods, see Davey Prods. Pty.
Ltd., 92 USPQ2d at 1202, goods do not have to be components of or replacement parts
for other goods to be considered related. As noted above, goods need not be identical
or competitive to support a holding of likelihood of confusion. The respective goods
need only be related in some manner or marketed in such a way that could give rise
to the mistaken belief that the goods emanate from the same source. See Coach Servs.
Inc., 101 USPQ2d at 1722.
While it is clear that Applicant’s goods and Registrant’s goods are specifically
different products, they nevertheless both comprise vehicle parts and accessories
which could be purchased, as discussed more fully below, through the same channels
of trade including dealers, service stations, automotive accessory and supply stores
and outlets by the same classes of purchasers such as mechanics, dealers and even
some motorists. See In re Magic Muffler Service Inc., 184 USPQ 125 (TTAB, 1974).
Since these products are sold under substantially similar marks, it is likely that they
Serial Nos. 87765368 and 87765385
15
would mistakenly be attributed to the same source.
Thus, the second DuPont factor also favors a finding of likelihood of confusion.
B. Similarity of Trade Channels and Classes of Purchasers
We now consider the third DuPont factor involving the established, likely-to-
continue channels of trade of the goods and services. Because there are no limitations
as to channels of trade or classes of purchasers in either Applicant’s identification of
goods and services or the goods listed in the cited registration, we must presume that
the goods and services move in all channels of trade normal for those goods and
services, and that they are available to all usual classes of purchasers for those goods
and services. See Coach Servs., 101 USPQ2d at 1723 (absent limitation, “goods [or
services] are presumed to travel in all normal channels ... for the relevant goods [or
services].”); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys “R” Us, Inc. v. Lamps R Us, 219
USPQ 340, 343 (TTAB 1983).
The Examining Attorney submitted screenshots from the following online
retailers – www.shop.adavanceautoparts.com, autopartswarehouse.com, holley.com,
victorymotorcycles.com, and shopyyamaha.com –16 which establish that, at a
minimum, the parties’ goods and services travel in similar trade channels, i.e., online
retailers, and that they are offered to overlapping consumers.
Accordingly, the third DuPont factor also weighs in favor of finding a likelihood
of confusion.

16 January 11, 2019 Office Action, TSDR pp. 7-84.
Serial Nos. 87765368 and 87765385
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C. Sophistication of Consumers
The fourth DuPont factor concerns the “conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. Applicant argues that its purchasers are sophisticated and
discriminating.17 In support of its argument, Applicant submitted the declaration of
its CEO, Mr. Mark Turner, who declares the following: (1) Applicant’s goods are
“highly specialized and require meaningful pre-sale dialogue with [Applicant] along
with often unique specification requests from a very sophisticated and limited pool of
Utility Task Vehicle (“UTV”) race engine builders,”18 and (2) “[p]urchases [of
Applicant’s goods] are often preceded by one or more in person, telephone or web chats
with [Applicant’s] technical staff to work out the desired performance of the
customers’ engine build.”19 Additionally, Applicant submitted the declaration of its
regional sales manager, Mr. Chad Smriga, who declares that (1) the goods sold under
Applicant’s involved marks are “highly specialized parts and services,”20 (2)
Applicant’s “distributors and customers are knowledgeable mechanics or vehicle
owners familiar with the manifolds, mufflers, exhaust systems, ignition tuning kits”
which Applicant sells,21 and (3) both the selection and installation of Applicant’s

17 Applicant’s Appeal Brief, pp. 6-7; 4 TTABVUE 7-8.
18 Turner Decl. at ¶ 2; 4 TTABVUE 12.
19 Id. at ¶ 5; 4 TTABVUE 13.
20 Smriga Decl. at 2; 4 TTABVUE 10.
21 Id.
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goods “requires a level of sophistication that demands research and careful
consideration.”22
We agree with Applicant that its identified goods are clearly not ordinary
household items that would be purchased by the average consumer based on impulse.
The goods are technical in nature and would require some knowledge in purchasing
and installing the goods. This factor therefore would appear to favor a finding of no
likelihood of confusion.
But a finding that customers would exercise a higher degree of care in purchasing
Applicant’s goods is not necessarily conclusive of the question of likelihood of
confusion. While the goods at issue suggest that Applicant’s customers are
sophisticated and likely exercise heightened care in their purchases, such
sophistication and heightened care is outweighed by the other factors at hand,
namely, the similarity of the marks at issue and the relatedness of the parties’
respective goods and services. Under such circumstances, confusion is often found
likely despite a higher degree of purchasing care or sophistication. See In re Shell Oil
Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that
“even sophisticated purchasers can be confused by very similar marks”); Top Tobacco,
LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011); TMEP
§ 1207.01(d)(vii). Indeed, “[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 [or services]. ‘Human memories even of

22 Id.
Serial Nos. 87765368 and 87765385
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discriminating purchasers . . . are not infallible.’” In re Research & Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)); In re
Wilson, 57 USPQ2d 1863, 1865–66 (TTAB 2001) (where marks are very similar and
goods [or services] related, confusion may be likely even among sophisticated
purchasers).
Thus, the fourth DuPont factor is neutral.
II. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors of which there is evidence of record. Because we have found that the
marks at issue are similar and that Applicant’s identified goods and services are
related to Registrant’s listed goods and that they would move in the same or
overlapping trade channels and would be offered to the same or overlapping classes
of purchasers, we conclude that Applicant’s marks, as used in connection with the
goods and services identified in its involved applications, so resemble the cited mark
as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the
Trademark Act. In reaching this conclusion, we bear in mind that, when analyzing
the DuPont factors, the overriding concerns are not only to prevent buyer confusion
as to the source of the goods or services, but also to protect the registrant from adverse
commercial impact due to the use of a similar mark by a newcomer. See In re Shell
Oil Co., 26 USPQ2d at 1690.
Decision: The refusals to register Applicant’s marks in application Serial Nos.
87765368 and 87765385 under Section 2(d) of the Trademark Act are affirmed.