Vetronix Corp.v.American Financial Warranty Corp.

Trademark Trial and Appeal Board

Feb 5, 2004

No. 91150901 (T.T.A.B. Feb. 5, 2004)

Mailed: 2/5/2004
Paper No. 24
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Vetronix Corporation
v.
American Financial Warranty Corporation
_____
Opposition No. 91150901
to application Serial No. 75943880
filed on March 14, 2000
_____
Jaye G. Heybl of Koppel, Jacobs, Patrick & Heybl for
Vetronix Corporation.
Joan L. Long and Aric S. Jacover of Mayer, Brown, Rowe and
Maw, LLP for American Financial Warranty Corporation.
______
Before Seeherman, Chapman and Drost, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Vetronix Corporation has opposed, on the ground of
likelihood of confusion, the application of American
Financial Warranty Corporation to register "MASTERTECH
Vehicle Protection Program and design," as shown below, and
with the words "Vehicle Protection Program" disclaimed, for
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91150901
2
"vehicle service contracts, namely agreements covering
mechanical breakdown or failure in which a vehicle dealer
will provide repairs to the purchaser's vehicle, which
contracts are insured and ordinarily financed as part of the
purchase of a vehicle" in Class 36.1
Specifically, opposer has alleged that it owns a federal
registration for the mark MASTERTECH for "hand held tester
for automobile electronics systems"; that opposer's use of
its mark for its goods is prior to the first use claimed by
applicant; that opposer's goods and applicant's services are
related in that opposer's goods relate to the servicing of
vehicles and applicant's services relate to vehicle service
1 Application Serial No. 75943880, filed March 14, 2000 and
asserting first use and first use in commerce on January 1, 1999.
In reviewing the application file, we note that during
examination the Examining Attorney required applicant to amend
its identification to be more definite, proposing the
identification "Providing and administering insured vehicle
service contracts which cover motor vehicle maintenance and
repair." Applicant did not respond to this requirement, and
apparently the Examining Attorney withdrew it, because the
application was approved for publication with the original
identification. Thus, although applicant's identification is for
a contract, which is an object, it is clear that applicant offers
services, which been classified in Class 36, and we consider the
identification as referring to services despite the fact that the
parties sometimes refer to the contract or warranty services as a
"product."
Opposition No. 91150901
3
contracts; and that applicant's mark so resembles opposer's
mark that, when it is used with applicant's services, it is
likely to cause confusion.
In its answer, applicant has denied all of the salient
allegations in the notice of opposition, and has asserted
affirmatively that there is no likelihood of confusion.
The record includes the pleadings and the file of the
opposed application. The parties have stipulated to the
admission in evidence of opposer's first set of requests for
production of documents, and applicant's response thereto;
opposer's first set of interrogatories and applicant's
response thereto; applicant's first request for production
of documents and opposer's response thereto; applicant's
first set of interrogatories and opposer's response thereto;
and a status and title copy of opposer's pleaded
registration for MASTERTECH.2
Both parties have submitted briefs on the case, but
neither requested an oral hearing.3
2 Registration No. 1,745,088, issued January 5, 1993; Section 8
and 15 affidavits accepted and acknowledged; renewed.
3 With its brief opposer submitted copies of registrations and
applications for MASTERTECH marks which were obtained from the
electronic records of the U.S. Patent and Trademark Office, and
asked that the Board take judicial notice of them. The Board
does not take judicial notice of records residing within the
Office. See In re Duofold Inc., 184 USPQ 638 (TTAB 1978).
However, in its brief applicant has discussed these documents,
and therefore we consider them to have been stipulated into the
record.
Opposition No. 91150901
4
Based on the interrogatory responses provided, we find
that opposer uses, has used or intends to use MASTERTECH
SERIES MTS (followed by a specific number) for gas
analyzers, a scan tool, a noise vibration and harshness
analyzer, an engine analyzer, a storage cart and a roll
cart.4 In the United States these goods are sold through
Vetronix Sales Corporation, whose sales staff directly
markets the goods to opposer's customers. The customers for
these goods are automobile dealerships and their repair
shops, and independent automotive repair shops, and the
class of consumers includes automotive dealership owners and
managers; automotive dealership repair shop owners, managers
and automotive technicians; and independent automotive
repair shop owners, managers and automotive technicians.
Opposer objected to providing information as to the
approximate dollar amount of its annual sales of its goods
(Interrogatory No. 9), stating that such information "is not
relevant nor reasonably calculated to lead to the discovery
of relevant information." Opposer provided a similar
response to applicant's interrogatory (No. 12), which sought
opposer's annual expenditures for advertising and marketing
opposer's goods and services associated with the mark.
4 In its brief, opposer has stated that it uses its mark "only
in connection with the hand held equipment described in the
registration," brief, p. 13, i.e., for "hand held tester for
automobile electronics systems."
Opposition No. 91150901
5
Opposer did state, with respect to applicant's request for
information about advertising (Interrogatory No. 10), that
"in the past, Opposer has advertised in a number of industry
trade publications, many of which are no longer publishing.
Opposer currently advertises in the industry trade
publications ‘Motor Age’ and ‘Motor.’"
Applicant first began using the mark MASTERTECH VEHICLE
PROTECTION PROGRAM in connection with its vehicle service
contracts in April 1999. It markets and distributes its
warranties to car, boat and RV dealerships, which in turn
sell the warranties to their customers. The dealerships
operate mainly as sales outlets for applicant's warranty
products. Applicant does not intend to use the mark with
any other products, or to expand the class of consumers to
which it sells its warranties.
Applicant markets its warranty products primarily
through individual salesmen to the various dealerships. Its
promotion efforts are focused on person-to-person marketing,
rather than print ads. It has displayed its marketing
materials at the National Auto Dealer Association convention
and at various state auto dealer association conventions.
Neither party is aware of any instances of actual
confusion.
Priority is not in issue in view of opposer's
registration for MASTERTECH, which it has made of record.
Opposition No. 91150901
6
King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Turning to the issue of likelihood of confusion, our
determination 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).
The first factor we consider is the similarity of the
marks. The dominant feature of applicant's mark is the term
MASTERTECH, which is identical in pronunciation and
connotation to opposer's mark. Further, because the
protection accorded opposer's mark, which is registered in
"typed" drawing form, extends to stylizations of the mark,
opposer's mark could be depicted in the same manner as
applicant's. Thus, we consider MASTERTECH to have the same
appearance as well.
We recognize that marks must be compared in their
entireties, and therefore the additional elements in
applicant's mark cannot be ignored. However, it is well
established that, for rational reasons, more or less weight
may be accorded to a particular feature of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). In this case, the descriptive and disclaimed
Opposition No. 91150901
7
words VEHICLE PROTECTION PROGRAM have no source-indicating
significance. Consumers will regard these words as merely
describing the type of service offered under the mark. Nor
are the design element and the three horizontal lines in the
MASTER portion of the mark likely to make an impression on
consumers. Rather, it is the word MASTERTECH, by which
consumers will refer to and call for the services, that they
will remember. Thus, we think it appropriate to follow the
general rule that, if a mark comprises both a word and a
design, the word is normally accorded greater weight. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Although the factor of the similarity of the marks
favors opposer, virtually all of the other duPont factors
favor applicant.
Turning to the goods and services, opposer's primary
argument to show that they are related appears to be that:
Opposer's products are used to locate
the source of problems with the vehicle
during service. Applicant's product
provides coverage to the customer in the
event that vehicle service is need.
Both products are reasonably related to
the service and repair of automobiles.
Brief, p. 9.
In previous decisions we have stated that it is not enough
to find one term that may generically describe the goods.
See General Electric Company v. Graham Magnetics
Incorporated, 197 USPQ 690 (TTAB 1977). Here, we find
opposer's efforts to put its goods and applicant's services
Opposition No. 91150901
8
into a single category to be, to say the least, a real
"stretch." Opposer's tester for automobile electronics
systems and applicant's vehicle service insurance plans are
very different. There is no evidence that the same
companies market both kinds of products/services, nor has
opposer submitted any evidence to show why consumers would
expect both types of products and services to emanate from a
single source.
It is true that opposer's tester and applicant's
vehicle service contracts are both marketed to automobile
dealerships. However, the goods and services themselves are
very different. To a large extent, the employees of
automobile dealerships would not come in contact with both
opposer's goods and applicant's services. That is,
opposer's goods would be used by the employees who do
automotive repair, but applicant's vehicle service contracts
would be offered by the salesmen who sell the automobiles.
There may, of course, be some overlap, in that owners or
managers may make decisions to buy opposer's testers for
electronic systems and to offer applicant's repair
contracts. However, such people will be sophisticated and
careful purchasers. The decision as to which service
contract--in effect, an insurance contract--to offer one's
customers would not be made lightly, since any problems with
the performance of that contract would necessarily reflect
Opposition No. 91150901
9
on the dealership. Similarly, the decision to purchase
equipment for testing the electronics system of an
automobile--equipment used in the maintenance and repair of
the vehicle, would be made with care, and not on impulse.
Given the substantial differences in the nature of the goods
and services—a tester for electronics systems and an
automobile service contract, the common purchasers of these
goods and services are not likely to assume that they come
from a single source simply because they are offered under
very similar marks.
It must also be noted that the mark MASTERTECH cannot
be considered a strong mark. Certainly it is not, as
opposer contends, a famous mark. Opposer has provided no
evidence regarding the amount spent on advertising and
promoting its products or the amount of its sales which
might prove that its mark is famous. On the contrary,
opposer stated in its answers to applicant's interrogatories
that such information was not relevant. We cannot conclude
based on the evidence of record that opposer's MASTERTECH
trademark is famous. Instead, we find that MASTERTECH is a
suggestive mark. As opposer has acknowledged, it is a
combination of the word "master" and the word "tech," which
opposer states in an abbreviation for "technician,"
"technical" or "technology." The suggestiveness of this
term is demonstrated by the third-party registrations for
Opposition No. 91150901
10
MASTERTECH marks, which include registrations for handtools
and for providing technical training courses in automotive
service and repair.5
We note that there is no evidence of third-party use of
MASTERTECH marks (third-party registrations do not
constitute proof of use of the marks shown therein). This
duPont factor favors opposer but is outweighed by the
suggestiveness and lack of strength of the MASTERTECH mark.
We will follow the parties' lead and discuss the
remaining duPont factors only briefly. There is no evidence
of actual confusion. In view of the lack of evidence as to
either party's sales and market presence, and the difficulty
in obtaining evidence of actual confusion, we regard this
factor as neutral in our analysis. As for the variety of
goods on which a mark is used, because opposer uses its mark
MASTERTECH only on the hand held tester identified in its
registration, consumers will not expect opposer to expand
its use of the mark to such substantially different services
as vehicle service contracts. Both parties have also
discussed in their briefs that applicant uses MASTERTECH
ETCH on anti-theft products. We do not regard this factor
as favoring either party.
5 The former registration has been cancelled, but it is still
evidence of the suggestive nature of the mark. Third-party
registrations are competent to show the meaning of a mark in the
same way that dictionaries are employed. Mead Johnson & Company
v. Peter Eckes, 195 USPQ 187 (TTAB 1977).
Opposition No. 91150901
11
In conclusion, although such factors as the similarity
of the marks and the lack of third-party uses favor opposer,
they are outweighed by such factors as the differences in
the goods and services, the care and sophistication of the
common purchasers, and the suggestiveness of the term
MASTERTECH. Accordingly, we find that opposer has failed to
prove that applicant's use of MASTERTECH VEHICLE PROTECTION
PROGRAM and design for its identified services is likely to
cause confusion with opposer's mark MASTERTECH for a hand
held tester for automobile electronics systems.
Decision: The opposition is dismissed.