Mattel Inc.v.Stephen Daniel Scott

Trademark Trial and Appeal Board

Nov 21, 2006

No. 91123052 (T.T.A.B. Nov. 21, 2006)

Oral Hearing: Mailed:
March 9, 2006 November 21, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mattel Inc.
v.
Stephen Daniel Scott
_____

Opposition No. 91123052
to application Serial No. 78004035
filed on April 13, 2000
_____

Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for
Mattel Inc.

Stephen Daniel Scott, pro se
______

Before Rogers, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Stephan Daniel Scott, seeks registration of
the mark shown below

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91123052
2
for goods identified in the application as “magazine with
pictures and editorials on high performance vehicles such as
boats, cars, trucks, motorcycles with female models
included” in International Class 16; and “Internet based
classified advertising web-site consisting of high-
performance boats, cars, motorcycles, trucks, accessories,
and all other forms of motorized vehicles” in International
Class 35.1
Opposer, Mattel Inc., opposed registration of
applicant’s mark, on the grounds that, as applied to
applicant’s magazines and Internet-based classified
advertising services, the mark so resembles opposer’s
previously used and registered HOT WHEELS and HOT formative
marks2 for various goods and services, including toy
vehicles, entertainment services in the nature of automobile
races and sponsorship, and informational services providing
data and information via the Internet about collectible toy
vehicles, professional automobile racing cars, professional
automobile races, and standard, custom, and classic
automobiles, as to be likely to cause confusion, to cause

1 Serial No. 78004035, filed April 13, 2000 based on a bona fide
intention to use the mark in commerce under Trademark Act Section
1(b). 15 U.S.C. §1051(b).

2 Opposer pleaded 28 registrations and 21 applications which are
discussed infra.

Opposition No. 91123052
3
mistake, or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d).3
Applicant filed an answer by which it denied the
salient allegations of the notice of opposition.
The evidence of record includes the pleadings; the file
of the opposed application; and the testimony deposition
(with exhibits) of Mr. John Buchanan, Senior Brand Manager
Worldwide Hot Wheels Marketing for Mattel Inc. In addition,
opposer submitted, under a notice of reliance, status and
title copies of 15 of opposer’s pleaded registrations,
status and title copies of 3 registrations subsequently
issued from pleaded applications, status and title copies of
2 unpleaded registrations, and copies of several
applications.4 Finally, opposer submitted, under a notice
of reliance, opposer’s first set of interrogatories;
opposer’s first set of requests for admissions; applicant’s
responses to opposer’s first set of interrogatories;
applicant’s responses to opposer’s first set of requests for
admissions; applicant’s second supplemental responses to
opposer’s first set of requests for admissions,

3 In the brief and at the oral hearing opposer also argued
dilution under Section 43(c) of the Trademark Act; however, this
claim was not pleaded and the record does not support a finding
that dilution was tried by the implied or express consent of the
parties. We, therefore, have given no consideration to the
arguments concerning dilution.

4 Opposer did not submit status and title copies of all of the
pleaded registrations.

Opposition No. 91123052
4
interrogatories and document requests; and articles from
various printed publications.5 Applicant did not submit any
evidence or testimony.
Although opposer pleaded a family of “HOT” marks
opposer did not pursue that argument in its brief or submit
sufficient evidence to prove a family based on the common
element “HOT.” Further, opposer’s arguments in the brief,
regarding the numerous registrations for the mark HOT
WHEELS, do not support a finding of a family of “HOT WHEELS”
marks. Mere ownership of various marks with a common
feature, or registrations thereof, does not suffice to
establish a family of marks. See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991); and Consolidated Foods Corp v. Sherwood Medical
Industries, Inc., 177 USPQ 279 (TTAB 1973). Therefore, our
analysis of Section 2(d) priority and likelihood of
confusion is based separately on certain of opposer’s
pleaded marks. The more relevant HOT WHEELS registrations
are summarized as follows:
Registration No. 884563 for the mark

5 We note that some of the documents referred to as printed
publications appear to be merely printouts of web pages that are
not available in printed format in general circulation. These
documents are not proper matter for submission under a notice of
reliance because they are not self authenticating. Raccioppi v.
Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). However, we note
that applicant discussed exhibits to opposer’s notice of reliance
in his brief but did not object to these documents. Therefore,
they have been considered for whatever probative value they may
have. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1266 (TTAB 2003).
Opposition No. 91123052
5

for “toy miniature automobiles and accessories
therefor” in International Class 28, filed May 12,
1969, issued January 20, 1970, Section 8 accepted,
Section 15 acknowledged, renewed;

Registration No. 1961774 for the mark

for “clothing, namely tee shirts” in International
Class 25, filed on February 21, 1995, issued on
March 12, 1996, Section 8 accepted, Section 15
acknowledged, renewed;

Registration No. 2152706 for the mark

for “prerecorded computer storytelling software,
audio and video cassettes featuring games and
storytelling, musical sound recordings featuring
games and storytelling, audio sound recordings
featuring games and storytelling and video sound
recordings featuring games and storytelling,
screensaver programs, CD-ROM featuring directories
of toy vehicles, all for informational,
educational and entertainment uses; and,
merchandising kiosks for use with computer
software, audio sound and video sound recordings,
and the like, for informational, educational and
entertainment uses” in International Class 9,

“coin-operated arcade games, prerecorded computer
game cartridges, cassettes, cards, discs and
programs for informational, educational and
entertainment uses; electronic hand-held games;
computer game joysticks, adapters, connectors and
Opposition No. 91123052
6
controllers for use with prerecorded computer
software, audio and video cassettes, CD-ROM, game
cartridges, game cassettes, game cards and game
discs, all for informational, educational and
entertainment uses” in International Class 28,

“providing access to interactive computer on-line
services featuring games, stories and directories
for toys, games and sporting goods” in
International Class 42, filed March 16, 1995,
issued April 21, 1998, Section 8 accepted, Section
15 acknowledged;

Registration No. 1906461 for the mark HOT WHEELS
(typed form) for “watches and clocks” in
International Class 14, filed January 15, 1993,
issued July 18, 1995, Section 8 accepted, Section
15 acknowledged, renewed;

Registration No. 2105646 for the mark HOT WHEELS
(typed form) for “clothing, namely jackets, coats,
vests, sweatshirts, shirts, T-shirts, pants,
belts, suspenders, ties, scarves, mittens, gloves
and undergarments such as boxer shorts; footwear;
and headwear” in International Class 25, filed
December 20, 1993, issued October 14, 1997,
Section 8 accepted, Section 15 acknowledged;

Registration No. 2782148 for the mark6 HOT WHEELS
(typed form) for “entertainment services in the
nature of automobile races and sponsorship” in
International Class 41, filed June 24, 1999,
issued November 11, 2003;

Registration No. 2310162 for the mark HOT WHEELS
(typed form) for “entertainment, educational and
information services, namely, providing data and
information concerning collectible toy vehicles,
professional automobile racing cars, professional
automobile races, and standard, custom, and
classic automobiles, providing general interest

6 The underlying application was pleaded in the notice of
opposition and the registration issued during the course of the
proceeding, in view thereof, we consider the pleadings amended to
include this registration. Cf. Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (opposition deemed
amended to include opposer’s claim of ownership of previously
unpleaded registrations where opposer filed notice of reliance on
those registrations at trial and applicant did not object
thereto).
Opposition No. 91123052
7
stories directed toward toy vehicle collectors and
enthusiasts all of which are provided via a global
computer network” in International Class 41, filed
November 12, 1996, issued January 25, 2000,
Section 8 accepted, Section 15 acknowledged.

For purposes of our analysis we will focus our
consideration on Registration No. 884563 and Registration
No. 2310162.
Because opposer has made its pleaded registrations of
record, opposer has established its standing to oppose
registration of applicant’s mark, and its priority is not in
issue. See King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In addition,
applicant admitted opposer’s prior use of its word mark HOT
WHEELS and its composite mark HOT WHEELS with a flame
design. See Opposer’s Notice of Reliance Exh. No. 4
Applicant’s Responses to Opposer’s Requests for Admissions
1-6.
Our likelihood of confusion determination under Section
2(d) 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 and 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, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Opposition No. 91123052
8
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). However, another key factor, is the fame of the
prior mark. Palm Bay Imports, Inc. v. Veuve Clicquot, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). Opposer
has argued that its HOT WHEELS marks are famous and we begin
our analysis with this factor, because fame “plays a
‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000).
Opposer’s testimony and evidence establish that opposer
has sold toy vehicles under the HOT WHEELS marks for over 37
years (Buchanan Dep. pp. 17, 20-27); opposer has
manufactured at least two billion toy vehicles (Buchanan
Dep. pp. 45-46); sales of products under the HOT WHEELS
product line have generated substantial revenue7 per year
for many years (Buchanan Dep. pp. 92-96; 103-114; 121-127;
Exh. Nos. 41-49; 52-55); opposer has sold 800,000-900,000
units of Hot Wheels products at a single retailer in a
single week (Buchanan Dep. p. 59); opposer spends a
substantial amount per year advertising the HOT WHEELS line

7 We note that some of the evidence submitted to support
opposer’s assertion of fame has been redacted pursuant to the
parties’ protective agreement; therefore, certain evidence must
be discussed in more general terms.
Opposition No. 91123052
9
of products and services (Buchanan Dep. pp. 92-96; 103-114;
121; Exh. Nos. 41-49; 52-55); opposer advertises nationwide
on television and radio and in magazines (Buchanan Dep. pp.
89-91; 96); opposer also gains exposure for its HOT WHEELS
marks in catalogs, on its websites, on its retailers’
websites, and through automotive sponsorships, fast food
promotions, and retailer promotions; HOT WHEELS marks
regularly appear in print advertisements of large retail
outlets including Ames, K-Mart, KB Toys, Target, Toys-R-Us,
Walgreens and Wal-Mart (Buchanan Dep. pp. 68-84; Exh. Nos.
23-40); HOT WHEELS marks are regularly the subject of
substantial unsolicited publicity from major media in the
United States, with 100 separate media impressions occurring
in 2003 alone, including The Atlanta Journal-Constitution,
The Chicago Tribune, CNN, The Los Angeles Times, The New
York Post, The New York Times, USA Today, and The Washington
Times (Buchanan Dep. 97-98; Exh. Nos. 10-12, 13-125); HOT
WHEELS marks and products also are promoted through product
placement in movies (Buchanan Dep. pp. 98-99); opposer
oversees two HOT WHEELS collectors clubs with approximately
122,000 members ranging in age from 18 to 80 years (Buchanan
Dep. 45-46, 133); opposer’s HOT WHEELS website receives a
very high number of visitors each month (Buchanan Dep. 101-
102; 117-118); opposer currently has approximately 100
licensees of the HOT WHEELS marks selling a variety of
Opposition No. 91123052
10
products, including home accessories, clothing, backpacks,
stationery, pens, pencils, sporting goods and various
electronics (Buchanan Dep. pp. 116-117); opposer sponsors
race cars, bearing the HOT WHEELS logo, on the NASCAR
circuit and in Monster Jam events (Buchanan Dep. 50-51, 53);
The Petersen Automotive Museum in Los Angeles, California
opened a HOT WHEELS exhibit in 2003, which continues to this
day and houses and displays life-size HOT WHEELS cars
(Buchanan Dep. 141); a book about HOT WHEELS has been
written by a third party that features HOT WHEELS toy
vehicles through the years (Buchanan Dep. 17-18; 65);
opposer owns registrations for HOT WHEELS marks in
connection with various types of merchandise, including toy
vehicles, watches and clocks, clothing, video games, audio
tapes, arcade games, construction toys, and in connection
with various services, including online retail services,
online provision of information in the field of collectible
toy vehicles and professional auto racing, online games, and
sponsorship of automobile races.8
As applicant presented no evidence, there is no
evidence rebutting opposer’s evidence of fame. Nor did
applicant argue that opposer’s marks are not famous.

8 Applicant’s reference in its brief to a survey is unavailing
inasmuch as no survey is of record in this case and one conducted
in an unrelated case is of no probative value.
Opposition No. 91123052
11
As shown through the testimony and other evidence,
opposer has extensive sales under and advertising
expenditures in connection with the HOT WHEELS marks.
Moreover, opposer’s advertising and sales statistics are
placed in the context of a broad, organized and aggressive
marketing strategy that places its HOT WHEELS marks in front
of consumers in a variety of ways (e.g., promotional events,
sponsorships, merchandising, television and radio
advertising, feature films, national magazines with wide
circulation, etc.). The HOT WHEELS marks have been used for
over thirty seven years and are displayed prominently on the
product packaging. HOT WHEELS toy vehicles have been
extensively promoted and heavily advertised in a variety of
media. On this record, we find that opposer’s HOT WHEELS
typed mark and flame design mark are famous, at a minimum
for its toy vehicles, and entitled to broad protection.
Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002) (“[T]he fame of a mark
may be measured indirectly, among other things, by the
volume of sales and advertising expenditures of the goods
traveling under the mark, and by the length of time those
indicia of commercial awareness have been evident.”).
We turn next to the first du Pont factor, i.e., whether
applicant’s mark and opposer's marks are similar or
dissimilar when compared in their entireties in terms of
Opposition No. 91123052
12
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, is 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
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).
Opposer’s mark HOT WHEELS is in typed form in
Registration No. 2310162 and in stylized form with a flame
design in Registration No. 884563.
Applicant’s mark is in stylized form with a flame
design. The literal portions of the parties’ marks begin
with the identical word HOT and the second word in each mark
begins with a capitalized letter and ends in a plural form.
The similarity of the marks continues with the design
elements in applicant’s and one of opposer’s marks where the
words are depicted in a similar slanted font, as part of a
flame design, and as opposer notes the letters “bend in
accord with the flames.” Br. p. 20. Further, as opposer
Opposition No. 91123052
13
notes, the H in HOT in applicant’s mark and in opposer’s
design mark flows in the direction of the flames and the O’s
are similarly elongated. We find the design elements to be
strikingly similar. We note that opposer’s mark registered
in typed form could appear in any reasonable form of
stylization, and because opposer actually uses HOT WHEELS in
stylized, slanted script it is certainly reasonable to
assume it will continue to do so. Opposer’s and applicant’s
stylized forms of lettering are also strikingly similar.
As to connotation, while WHEELS and TOYZ are
technically different words that have different meanings,
taken in the context of the goods and services in issue
here, toy vehicles which include reproductions of classic
cars, information provided over the Internet about
automobiles and auto racing, and magazines and classified
advertising related to high-performance automobiles and
motorcycles, the different literal meaning of TOYZ from
WHEELS does not serve to distinguish the marks. In
particular, we note that WHEELS is a term used not just to
refer to components of wheeled vehicles, but also to entire
vehicles. We take judicial notice of the following
definition for WHEELS: 9. pl. slang: a wheeled vehicle;
esp: AUTOMOBILE. Merriam-Webster’s Collegiate Dictionary
(10th ed. 1999). University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
Opposition No. 91123052
14
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Also
the general connotation of TOYZ as it relates to opposer’s
goods and services similarly is of entire vehicles as the
“toys” of those who would use them. Thus, both marks,
despite utilizing different second words, have the same
connotation of “hot vehicles.” In addition, applicant’s
use of the word TOYZ in combination with the first word HOT
creates a direct connection to opposer’s toy goods. In
deciding to use the word TOYZ, applicant has chosen one of
the few words that directly applies to opposer, famous for
toy vehicles.
Thus, the appearance, connotation and overall
commercial impressions of the marks are highly similar.
Given the fame of opposer’s HOT WHEELS marks, and the broad
scope of protection to which they are entitled, we find that
the similarities in the parties’ marks outweigh their
differences.
In arguing that the marks are dissimilar, applicant
contends that its mark is depicted as one word and opposer’s
marks are depicted as two words. However, applicant’s mark,
as depicted, does not support applicant’s argument in view
of the capitalization of the second word TOYZ, similar to
the capitalization of WHEELS in opposer’s stylized mark, and
the flame that divides the two words. Applicant also argues
that the exhibits attached to applicant’s supplemental
Opposition No. 91123052
15
responses to opposer’s interrogatories9 “clearly
demonstrated the wide spread [sic] use of the word HOT in
the automotive industry and lack of opposer’s exclusive
rights to the word.” Br. p. 16. We first point out that
only applicant’s answers to opposer’s interrogatories are of
record. No responsive documents were made of record during
trial. The relevant interrogatories and the responses are
set forth below:
Interrogatory No. 31: Identify all third parties
of which Applicant is aware that currently use the
term HOT in a mark used for vehicles, toy
vehicles, or related products or services.

Response: Hot Rod, Hot Boat, Hot Bike, Hot
Trucks.

Supplemental Response: My response was not a list
of Vehicles rather a list of Publications of which
it is general public knowledge and are available
at most Magazine retailers.
Applicant is aware of Opposer's use of the term
HOT in its sale of miniature cars (Hot Wheels)
Applicant has no knowledge of any other products
or services other than the magazines stated in my
initial answer, Please see Exhibit 3, for copies
of said publications.

Interrogatory No. 32: Identify all third parties
of which Applicant is aware that currently use the
term HOT in a mark used for magazines or other
publications related to vehicles or toy vehicles.

Response: Hot Rod, Hot Boat, Hot Bike, Hot
Rodding.

9 We note applicant’s reference to pages 4 and 5 of its answer as
evidence in support of his assertion of third-party use of the
word HOT. However, statements in an answer do not constitute
evidence and documents attached to an answer are not considered
of record. Trademark Rule 2.122(c); TBMP § 317 (2d ed. rev.
2004).
Opposition No. 91123052
16
Supplemental Response: My response was not a list
of Vehicles rather a list of Publications of which
it is general public knowledge and are available
at most Magazine retailers.

Interrogatory No. 33: Identify all third parties
of which Applicant is aware that currently use the
term HOT in a mark used for internet-based
classified advertising websites related to
vehicles or toy vehicles.

Response: None that I am aware of at this time.

These unsupported statements are simply not sufficient
to make a determination that the word HOT is weak in the
automotive magazine field. Moreover, there is no evidence
to support a finding that HOT is weak for opposer’s
identified goods and services.
We turn next to the second, third and fourth du Pont
factors, i.e., the similarities between opposer's and
applicant's goods and services and the similarities between
opposer's and applicant's trade channels and classes of
purchasers of these goods and services. We must make our
determinations under these factors based on the goods and
services as they are recited in the application and
registrations, respectively. See In re Elbaum, 211 USPQ 639
(TTAB 1981).
The goods or services need not be identical or directly
competitive in order for there to be a likelihood of
confusion. Rather, the respective goods or services need
only be related in some manner or the conditions surrounding
their marketing be such that they could be encountered by
Opposition No. 91123052
17
the same purchasers under circumstances that could give rise
to the mistaken belief that the goods or services come from
a common source. In re Martin's Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Opposer’s Registration No. 884563 is for “toy miniature
automobiles and accessories therefor” which includes
reproductions of classic and racing cars. Registration No.
2310162 is for “entertainment, educational and information
services, namely, providing data and information concerning
collectible toy vehicles, professional automobile racing
cars, professional automobile races, and standard, custom,
and classic automobiles, providing general interest stories
directed toward toy vehicle collectors and enthusiasts all
of which are provided via a global computer network.” The
conditions surrounding the marketing of these goods and
services include the production and display of life-size
fully functional versions of HOT WHEELS vehicles. Buchanan
Dep. p. 141. In addition, consumers encounter opposer’s HOT
WHEELS marks at automobile races displayed on life-size race
cars in the flame logo format (Buchanan Dep. pp. 50-51), in
a variety of retail stores where the automobile toy replicas
are sold, and on the Internet, both in typed form and with
the flame design, where they can purchase the toy vehicles
and obtain information about professional automobile racing
cars, professional automobile races, and standard, custom,
Opposition No. 91123052
18
and classic automobiles on the same website. Finally,
opposer’s marks are widely advertised on television, radio
and in magazines.10
Applicant has admitted that “the products sold or
promoted under the mark HOT WHEELS relate to cars”
(Opposer’s Notice of Reliance Exh. No. 4 Request for
Admission No. 19). Applicant’s classified advertising that
features high-performance vehicles shares the same subject
matter as opposer’s website and has a close relationship to
opposer’s toy vehicles, some of which are replicas of high-
performance vehicles. Consumers familiar with opposer’s
website, which offers for sale miniature replicas of high-
performance vehicles and provides information on standard,

10 With regard to magazines, we further note that opposer also
testified that some of its licensees use the HOT WHEELS logo mark
in connection with magazines. Mr. Buchanan testified as follows:

Q. Are there any Hot Wheels magazines or collectors
magazines?
A. Yes.
Q. Are those products of Mattel, or any of them?
A. No. We traditionally license those out to people to
publish them for us. But they use the Hot Wheels
logo.
Q. In other words, they are authorized Hot Wheels
magazines or collector magazines? That’s what I’m
driving at.
A. Yes. Buchanan Dep. p. 130.

We note that opposer did not specify which of the HOT WHEELS
marks were used (for example, on this record there are two HOT
WHEELS logo marks) or when such use began; nor did opposer
provide examples of such use. Thus, we are not able to make a
determination as to opposer’s common law rights to a specific HOT
WHEELS mark with regard to magazines; however, such evidence of
record, although limited in probative value, provides additional
facts to understand the conditions under which the HOT WHEELS
brand goods and services in issue are sold.
Opposition No. 91123052
19
custom, and classic vehicles, and who subsequently encounter
applicant’s website, could reasonably believe opposer is now
offering classified advertising on these same types of
vehicles. Similarly, applicant’s magazines share the same
subject matter as opposer’s website. With regard to
opposer’s toy vehicles, the subject matter of applicant’s
magazine also relates to opposer’s high-performance vehicle
replicas and adult collectors of opposer’s toy vehicles,
when confronted with applicant’s magazine, could reasonably
believe opposer is offering a magazine related to high-
performance vehicles. Further, as noted above, applicant’s
mark is strikingly similar to opposer’s logo mark used and
registered in connection with its toy vehicles. We find
that the goods and services of the parties are related and,
on this record establishing the marketing conditions and the
fame of opposer’s marks, we find that consumers would view
the respective goods and services as having common source or
sponsorship. Recot, supra, 54 USPQ2d at 1898 (“Indeed, this
court and its predecessor court have consistently stated
that fame of the mark is a dominant factor in the likelihood
of confusion analysis for a famous mark independent of the
consideration of the relatedness of the goods.”)
With regard to the channels of trade and potential
purchasers, the record establishes that in addition to
children, opposer also targets adults 18 to 80 years of age
Opposition No. 91123052
20
(Buchanan Dep. p. 133) and has a large adult collectors
club. These adult collectors are purchasing toy vehicles
and also of the demographic likely to be seeking information
about high-performance vehicles and racing on opposer’s
website. Those adult members of opposer’s collectors club
seeking to purchase a life-size high-performance vehicle
could be confused as to source when encountering applicant’s
services under its HOT TOYZ logo mark. Moreover, Internet
users seeking information on vehicles for sale, as through
applicant’s website, would also be likely to frequent other
websites providing information on vehicles, as at opposer’s
website. Thus, such prospective purchasers could easily
encounter both applicant’s mark and opposer’s famous marks.
With regard to applicant’s magazines, given the
notoriety of opposer’s marks and their frequent appearance
in print media, consumers would be exposed to the marks in
printed publications. In addition, applicant intends to
sell its magazines in the same types of stores opposer sells
and advertises its toy vehicles. Specifically, as to its
magazines, applicant has described its trade channels as
including “grocery stores, convenience stores, magazine
stands and mail order subscriptions.” Notice of Reliance
Exh. No. 5, Applicant’s Supplemental Response to
Interrogatory No. 16. Opposer’s toy vehicles are sold in
grocery stores (Safeway, Albertsons), convenience stores
Opposition No. 91123052
21
(Rite Aid, 7-Eleven) and gas stations (Chevron, Exxon
Mobil). Buchanan Dep. p. 118-120. While the sale of
different types of goods in a large store is not
particularly dispositive in the likelihood of confusion
analysis, Federated Foods, supra, 192 USPQ at 29, in this
case, where opposer’s marks are famous, the sale of the
parties respective goods in the same venue enhances the
possibility of confusion.
Finally, as to the sophistication of the purchasers, we
agree with applicant that, in connection with its classified
advertising services, buyers of automobiles, using
applicant’s website to find automobiles to purchase, and
sellers, purchasing space on his website to advertise their
automobiles, would exercise care in their purchasing
decision. However, given the fame of opposer’s marks the
relative importance of this factor is minimized. Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (“The fame of a
trademark may affect the likelihood purchasers will be
confused inasmuch as less care may be taken in purchasing a
product under a famous name.”) We further note that some of
opposer’s goods that can be found and purchased on opposer’s
website are also very expensive. Buchanan Dep. p. 86.
Thus, consumers of opposer’s goods are accustomed to seeing
Opposition No. 91123052
22
the HOT WHEELS marks used in connection with expensive
items.
Considering the respective marks in their entireties,
we conclude that the evidence of record as it pertains to
the relevant du Pont factors clearly supports a finding of
likelihood of confusion as to the marks in opposer’s
Registration Nos. 884563 and 2310162 and that registration
of applicant’s mark, therefore, is barred under Trademark
Act Section 2(d). Finally, to the extent there is any doubt
with regard to the question of likelihood of confusion, such
doubt must be resolved in favor of opposer, the prior
registrant. Hewlett-Packard Co. v. Packard Press, inc., 281
USPQ2d 1001, 1003 (Fed. Cir. 2002) (“This court resolves
doubts about the likelihood of confusion against the
newcomer because the newcomer has the opportunity and
obligation to avoid confusion with existing marks”); In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988).
Decision: The opposition is sustained.