Marvin Behar and Leslie E. Smith

Trademark Trial and Appeal Board

May 26, 1999

No. 75159724 (T.T.A.B. May. 26, 1999)

Paper No. 18
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Marvin Behar and Leslie E. Smith, Joint Applicants
________
Serial No. 75/159,724
_______
Marvin Behar and Leslie E. Smith, pro se.1
K. Margaret Le, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Joint applicants, Marvin Behar and Leslie E. Smith,
filed an application for registration of the mark “PORTA-
RACK” for “a spacer and positioning rack for magnetically
attaching to the top of an automotive vehicle.”2

1 Although at the time of final decision applicants appear to
be without counsel, they were represented by counsel throughout
the prosecution of this application, from the initial filing of
the trademark application through the filing of the ex parte
appeal brief before this Board.
2 Serial No. 75/159,724, filed September 3, 1996, alleging
dates of first use of August 26, 1996.
Ser. No. 75/159,724
2
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark “PORTA-RACK” when used on these portable
magnetic cushioning racks, so resembles the registered
mark, “PORT-O-RAC,” as applied to a “load rack for pickup
trucks,” as to be likely to cause confusion, or to cause
mistake, or to deceive.3
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont DeNemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
which case sets forth the factors that should be
considered, if relevant, in determining likelihood of
confusion.
Under the first of the du Pont factors, we examine
closely the sound, appearance, meaning and overall
commercial impression of the two marks. As the Trademark
Examining Attorney points out, the visual and aural
similarities are striking. In turn, the applicants point
out the different vowel (applicant’s middle letter “A”
instead of registrant’s middle letter “O”), the number of

3 Registration No. 1,192,510 issued on March 23, 1982. The
registration sets forth dates of first use of May 19, 1980; §8
affidavit accepted and §15 affidavit filed.
Ser. No. 75/159,724
3
hyphens (applicant’s single hyphen versus registrant’s two
hyphens), as well as registrant’s different, phonetic
spelling of the generic word “rack” (spelled “ R·A·C ”).
However, it is a well-established principle that likelihood
of confusion should not be judged based upon a side-by-side
comparison of the marks. Instead, we must take into
account that over a period of time, people in the
marketplace for goods such as these have an imperfect
recall of marks. See Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA
1971) [“HYDRONOL” so resembles “HYGROTON" when applied to
diuretics that confusion is likely]. When considered in
this manner, we find that consumers are unlikely to note or
remember the slight differences delineated by applicants.
Furthermore, the fact that these marks have
substantially identical commercial impressions weighs
heavily against applicants. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 1566, 223 USPQ 1289,
1290 (Fed. Cir. 1984) ["MARTIN'S" for wheat bran and honey
bread likely to be confused with "MARTINS" for cheese].
We turn next to the goods of the respective parties.
By its own terms, registrant’s load rack is limited to use
on pick-up trucks. Applicants argue that the goods are
Ser. No. 75/159,724
4
different, asserting that registrant’s truck rack is a
rigid and substantial product designed for carrying heavy
loads and is built expressly to fit the stake pockets on
the outer edges of the truck’s cargo bed. By contrast,
applicants’ portable magnetic cushioning racks seem less
substantive and can be adapted for a variety of uses in
connection with shielding the body of a car from roof-top
loads or even dings and scratches on the side panels. In
any case, we note that it is touted primarily as a
temporary cushioning and carrying device for the roof of a
car.
Clearly, one would never confuse registrant’s heavy-
duty, permanent type of rack with applicants’ product for
temporary usage. However, we are concerned herein not with
whether two types of goods can be distinguished, but rather
whether it is likely that consumers will assume that such
products emanate from the same source if they are sold
under similar marks.
In spite of the differences in construction and
flexibility of use, applicant’s own specimens suggest that
one specific use for applicant’s racks is to “protect …
pickup beds … ” In this regard, we are satisfied from the
evidence in this file that applicant and registrant are
Ser. No. 75/159,724
5
marketing products having similar functions. They are
after-market items that the owner of a motor vehicle uses
for hauling extra-large loads –- on the top of a car using
applicants’ goods, or in the bed of a truck using either
applicants’ or registrant’s goods.
The potential consumers of registrant’s load rack for
trucks as well as for applicant’s portable cushioning rack
would both be from the broad class of motor vehicle owners.
Owners of pick-up trucks with load racks may well own cars
and require the rack offered by applicants. Moreover, as
noted above, pick-up truck owners could purchase both
applicants’ and registrant’s products for use with their
pick-up trucks.
In the absence of a specific limitation in the
registration certificate, we must assume that registrant’s
load racks travel in the usual channels of trade for such
goods. In re Elbaum, 211 USPQ 639 (TTAB 1981).
Accordingly, we must conclude that such closely related
items for similar purposes reach the same class of
purchasers by moving through the same trade channels (e.g.,
automotive supply stores, stores featuring truck
accessories and parts, mail-order catalogues, or on-line
sites, etc.).
Ser. No. 75/159,724
6
Applicants have repeatedly taken the position --
during the prosecution of this application before the
Trademark Examining Operations and again during this ex
parte appeal before the Board –- that registrant is no
longer using its mark on the goods identified in its
registration. However, Section 7(b) of the Trademark Act,
15 U.S.C. §1057(b), provides that a certificate of
registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the
registrant's ownership of the mark and of the registrant's
exclusive right to use the mark in commerce in connection
with the goods or services specified in the certificate.
Accordingly, during this ex parte prosecution, applicants
will not be heard on matters that constitute a collateral
attack on the cited registration (e.g., a registrant's non-
use of the mark). See In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Cosmetically Yours,
Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515,
517 (CCPA 1970); In re Pollio Dairy Products Corp., 8
USPQ2d 2012, 2014-15 (TTAB 1988). Inasmuch as applicants
have not taken action to have this cited registration
cancelled, the Trademark Examining Attorney was warranted
in disregarding this argument by applicant as these
Ser. No. 75/159,724
7
allegations of registrant’s non-use are irrelevant to our
instant determination in this ex parte case.
In conclusion, given the strong similarities in the
sound, appearance and meaning of these two marks, the fact
that the goods are related, the identity of consumers and
the overlapping channels of trade, it is likely that one
acquainted with registrant’s load racks for trucks sold
under the mark PORT-O-RAC, upon seeing applicants’ goods
sold under the mark PORTA-RACK, would immediately assume
these portable magnetic cushioning racks also originate
with registrant.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.
E. J. Seeherman
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board