A-Fab, LLC

Trademark Trial and Appeal Board

Jul 11, 2011

No. 77639815 (T.T.A.B. Jul. 11, 2011)

Mailed: 7/11/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re A-Fab, LLC
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Serial No. 77639815
_______

Charles J. Meyer of Woodard, Emhardt, Moriarty, McNett &
Henry for A-Fab, LLC.

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Holtzman and Cataldo, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

A-Fab, LLC filed, on December 24, 2008, an application
to register the mark DYNATECH (in standard characters) for
“engine exhaust system components, namely, pipes,
collectors and mufflers ordered through specialty racing
product ordering services.” The application was filed
under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a), alleging first use anywhere and first use in
commerce at least as early as 1990.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77639815
2
The trademark examining attorney refused registration
under Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles the previously registered mark DYNATEK
(in standard characters) for “ignition systems for motor
vehicles comprising, ignition coils and fuel injection
controllers for motor vehicles; [and] crank sensor ignition
triggers for motor vehicles”1 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the examining attorney has
impermissibly applied a per se rule by presuming that the
involved goods are related merely because they are
automotive in nature. Moreover, applicant asserts that the
likelihood of confusion decision must be based on the
factual evidence of record, and that the examining
attorney’s evidence falls short of establishing a
sufficient relationship between the goods upon which to
base a finding of likelihood of confusion. More
specifically, applicant critiques in great detail the
deficiencies of the third-party registrations relied upon
by the examining attorney to show a relatedness between the

1 Registration No. 3479598, issued August 5, 2008.
Ser No. 77639815
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goods. Applicant also contends that the relevant
purchasers are unlikely to be confused because of the
differences between the goods, the specialized channels of
trade, the high degree of consumer care, the crowded nature
of the automotive field with similar marks, and the
differences in overall commercial impression between the
marks. Because of the limitation in applicant’s
identification of goods, namely “specialty racing product
ordering services,” applicant asserts that the likelihood
of confusion analysis must focus on this narrow trade
channel where registrant’s and applicant’s products could
possibly overlap. Applicant further reports that despite
thirteen years of contemporaneous use of the marks,
applicant is unaware of any instances of actual confusion.
In urging that the refusal be reversed, applicant submitted
a declaration with accompanying exhibits. Applicant also
introduced third-party registrations in connection with its
argument that the cited mark is entitled to a narrow scope
of protection.
The examining attorney maintains that the marks and
goods sold thereunder are similar. As to the degree of
distinctiveness of registrant’s mark, the examining
attorney states that the third-party registrations
submitted by applicant, in the absence of evidence showing
Ser No. 77639815
4
actual use, are entitled to little probative value. As for
the relatedness of the goods, the examining attorney points
to his introduction of third-registrations that serve to
suggest that engine exhaust system components and ignition
systems for motor vehicles are goods that may emanate from
a single source under the same mark. Lastly, the examining
attorney is not persuaded by the assertion of no actual
confusion given that there is no way to ascertain whether
there has been a meaningful opportunity for confusion to
have occurred in the marketplace.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to compare applicant’s mark DYNATECH
with registrant’s mark DYNATEK. We must compare the marks
in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Ser No. 77639815
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Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The test,
under the first 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 impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. Applicant
concedes that the marks “have portions in common,” but adds
that they are not identical. (Brief, p. 15). Applicant
argues that the visual differences between the “-TECH” and
“-TEK” suffixes provide the marks with different commercial
impressions, and that applicant’s “-TECH” suffix is an
easily recognizable shortening of the word “technology,”
thereby suggesting a meaning that the cited mark, employing
“-TEK,” lacks.
The marks DYNATECH and DYNATEK are identical in sound.
As to appearance, the first portion of the marks, “DYNA-"
is identical, and the second portion of the marks, namely
“-TECH” and “-TEK,” differ only slightly. We question
whether this difference would even be noted by purchasers.
As to meaning, contrary to applicant’s argument, we doubt
whether purchasers would attribute a different meaning to
the marks based on the difference in spelling between
Ser No. 77639815
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“-TECH” and “-TEK”; to state the obvious, “-TEK” is often
used in marks in the same manner as is “-TECH,” that is, as
a shortened form of the word “technology.” It is likely
that purchasers would view both marks as suggesting the
same idea, namely that the respective goods employ “dynamic
technology.” Given the identity in sound and meaning, and
the similarity in appearance, the marks DYNATECH and
DYNATEK engender similar overall commercial impressions.
The similarity between the marks weighs in favor of a
finding of likelihood of confusion
Applicant argues that the number of third-party
registrations of DYNATECH and similar marks show that the
cited mark is entitled to only a narrow scope of
protection. In this connection, applicant introduced
thirteen third-party registrations of marks comprising
DYNATECH and variations thereof (e.g., DYNATEC, DYNATEX and
DYNETEK). Although we have considered applicant’s
evidence, it is of limited probative value to support
applicant’s position because “[t]he existence of [third-
party] registrations is not evidence of what happens in the
market place or that consumers are familiar with them nor
should the existence on the register of confusingly similar
marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.” AMF Inc. v. American
Ser No. 77639815
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Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973); and In re Max Capital Group Ltd., 93 USPQ2d
1243, 1248 (TTAB 2010). Moreover, in the present case,
only one of the registrations covers goods in the
automotive field (DYNOTECH MOTORSPORTS for automobile
aftermarket driveline components); the other twelve
registrations cover different goods, ranging from vinyl
replacement windows to fishing rods and reels. As
correctly pointed out by the examining attorney, these
registrations for goods unrelated to the goods at issue are
irrelevant to our analysis. See In re Melville, 18 USPQ2d
1386, 1388-89 (TTAB 1991).
In sum, the existence of one third-party registration
of the mark DYNOTECH MOTORSPORTS in the automotive field
does not diminish the distinctiveness of the cited mark
DYNATEK. This factor is neutral in the du Pont analysis.
We next turn to a comparison of the goods. It is well
settled that the goods need not be identical or
competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
Ser No. 77639815
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circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same source. See Hilson Research, Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993);
and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). The question of likelihood of
confusion is determined based on the identification of
goods in the application vis-à-vis the goods as set forth
in the cited registration. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and In re
Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). The
issue, of course, is not whether purchasers would confuse
the goods, but rather whether there is a likelihood of
confusion as to the source of the goods. In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
In considering this du Pont factor, it must be noted
at the outset that there is no per se rule governing
likelihood of confusion cases involving all types of
automotive products. To the extent that the Board’s
decision in In re Jeep Corp., 222 USPQ 333 (TTAB 1984) has
been interpreted as presenting a per se rule, namely that
all automotive goods are per se related, such that there
must be a likelihood of confusion from the use of the same
or similar marks in relation to the goods, this is an
Ser No. 77639815
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incorrect reading of the In re Jeep Corp. case and its
progeny. Rather, the likelihood of confusion analysis is
governed by the record before the Board.
The only evidence introduced by the examining attorney
comprises twenty-one third-party registrations that,
according to the examining attorney, cover both types of
goods involved herein, namely automotive ignition products
and automotive exhaust products.
Applicant, on its behalf, submitted the declaration of
Jeffrey Scales, applicant’s chief operating officer and
executive vice president. Mr. Scales has over 20 years of
experience in the vehicle racing component industry, and he
states that he has substantial knowledge regarding the
marketing and sale of vehicle racing components in the
vehicle racing industry, particularly racing components
ordered through specialty racing product ordering services,
that is, the type of trade channel for applicant’s engine
exhaust system components. Applicant’s goods, according to
Mr. Scales, are highly specialized and complex products,
marketed as premium racing components of the highest
quality to ensure greater speed and enhance vehicle
performance. Mr. Scales further states that exhaust system
components are typically provided in varying specific
sizes, designs and configurations, and that purchasing such
Ser No. 77639815
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components requires great care to ensure that the component
is compatible with a particular vehicle and will fit and
operate properly. In the purchasing process, which
involves care and sophistication, applicant typically
provides personalized guidance to customers ordering
components over the telephone. Mr. Scales indicates that
applicant’s goods sell at “relatively high price points,”
often selling for several hundreds of dollars, and some for
over one thousand dollars, and are typically sold to
purchasers who are sophisticated and highly knowledgeable
about the racing industry. The declaration is accompanied
by excerpts from applicant’s website.
Inasmuch as the examining attorney has the burden to
make a prima facie showing that the goods are related, we
first turn to consider the twenty-one third-party
registrations. “Third-party registrations which cover a
number of differing goods and/or services, 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 or services are of a type which
may emanate from a single source.” In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See In
Ser No. 77639815
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re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
Applicant has critiqued this evidence in considerable
detail, beginning by pointing out that four of the
registrations are not based on actual use in the United
States. These four registrations, not based on use, have
no probative value whatsoever. In re 1st USA Realty
Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007).
Further, two of the other registrations are owned by the
same entities, each for a different mark setting forth the
same goods, which renders them redundant. We are left,
therefore, with fifteen registrations that may have
probative value.
Applicant’s principal criticism of the remaining
registrations is that “many” of the registered marks are
“house or brand marks including laundry lists of various
goods, diminishing the argument that any two goods found in
the extensive listings are naturally related.” (Brief, p.
8). Indeed, the following registrations (9) include
lengthy identifications of goods, covering a large number
of automotive components, spanning a wide range: Reg. No.
3171805 for S SPORTEC and design; Reg. No. 3443337 for
VALUEPART; Reg. No. 3555825 for ZICRON; Reg. No. 3404404
for AUTOPART INTERNATIONAL; Reg. No. 3629275 for PRIME
Ser No. 77639815
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CHOICE; Reg. No. 3678282 for WE ENABLE MACHINES THAT MAKE
LIFE BETTER; Reg. No. 3670585 for KURYAKYN; Reg. No.
3044874 for VITO’S PERFORMANCE; and Reg. No. 3403698 for C1
CONCEPT-1 and design.
The other registrations (6) set forth shorter
identifications of goods, with no clear indication that the
marks are in the nature of house or brand marks. The
registrations include the following: Reg. No. 3367520 for
PASSION FOR PERFORMANCE for a relatively short list of
automotive products, including tubular exhaust pipes and
electronic fuel injection modules; Reg. No. 3480137 for
CXRACING for a relatively small number of automotive parts,
including exhaust system components and fuel injectors;
Reg. No. 3523602 for C4ORCE and design for a small number
of products, including electronic fuel injectors and
exhaust system headers and mufflers; Reg. No. 3657377 for
TAB PERFORMANCE RIDE EVERYDAY, PERFORM EVERY SECOND and
design for fuel injection modules and exhaust pipes; Reg.
No. 3040031 for PROWLER for a short list of goods,
including ignition and exhaust parts; and Reg. No. 3378706
for TECHNIK ENGINEERING for a short list of goods,
including fuel injectors and exhaust components.
In sum, nine of the fifteen registrations may be
considered to be in the nature of house or brand marks for
Ser No. 77639815
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automotive parts, and we have given less probative weight
to them. See In re HerbalScience Group LLC, 96 USPQ2d
1321, 1324 n.3 (TTAB 2010). The other six registrations do
not appear to be in the same category, and these
registrations support the examining attorney’s assertion
that goods of the kind involved herein (exhaust and
ignition systems components for motor vehicles) are of a
type that may emanate from a single source. However, so as
to be clear, none of the registrations include both
registrant’s goods and the specific goods of applicant,
namely exhaust system components sold through specialty
racing product ordering services. Given the amendment to
applicant’s identification to specify the specific trade
channel, the examining attorney’s registration evidence
loses some of its probative value.
In comparing the goods, we readily recognize that
while applicant’s goods are limited to a specific trade
channel, namely “specialty racing product ordering
services,” the identification of goods in the cited
registration does not include any limitation. However, in
view of the restriction in applicant’s identification, we
must focus our analysis on the only relevant trade channel,
namely “specialty racing product ordering services.”
Ser No. 77639815
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As indicated above, applicant has countered with Mr.
Scales’ declaration and accompanying evidence. Mr. Scales
has over twenty years of experience in the vehicle racing
component industry. According to Mr. Scales, goods for
specialty racing are complex and relatively expensive
components that must be properly matched in terms of size,
design and configuration to be compatible with different
types of motor vehicle engines. The purchase of such goods
is made by a knowledgeable consumer or one who is guided to
properly match the parts. As indicated by Mr. Scales,
applicant’s exhaust components are sold through specialty
outlets, with applicant typically providing personalized
guidance to ensure compatibility with the motor vehicle.
As shown by applicant’s website, the exhaust system
components are provided in varying sizes and configurations
that are only available for certain vehicles. Further,
given that applicant’s goods are intended for the racing
industry, purchasers tend to be sophisticated and highly
knowledgeable when it comes to components for engines; the
purchase of such components is done with a higher degree of
care than when buying parts for the everyday car used for
commuting.
To state the obvious, exhaust components and ignition
components are specifically different goods, with different
Ser No. 77639815
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purposes and functions. Moreover, we find that the
limitation present in applicant’s identification of goods,
coupled with Mr. Scales sworn-to statements regarding the
sophisticated nature of racing components and of the
purchasers therefor, outweigh the registration evidence
submitted by the examining attorney. Further, given the
size of the automotive parts industry, the presence of a
mere six registrations listing both exhaust and ignition
components is an insufficient basis upon which to find a
likelihood of confusion as to source. Simply put, although
we readily acknowledge that exhaust and ignition components
are both automotive parts, the registration evidence is an
insufficient basis for us to conclude that the goods are
related, especially when considered in the context of Mr.
Scales’ statements about the degree of care and
sophistication when it comes to purchasing specialty racing
components. Because the only overlap among customers are
the careful, knowledgeable purchasers of applicant’s goods
(due to the limitation in applicant’s identification),
these are the only purchasers who might be exposed to both
marks. Therefore, we find that the degree of care likely
to be exercised by purchasers of the goods does not support
a finding of likelihood of confusion. The specific
differences between the goods, as well as the relatively
Ser No. 77639815
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sophisticated decision-making involved in purchasing
applicant’s specialty racing exhaust components, warrant a
finding that there is no likelihood of confusion.
Applicant’s assertion of no actual confusion between
the marks is entitled to little weight. In re Majestic
Distilling Co., 65 USPQ2d at 1205 (“uncorroborated
statements of no known instances of actual confusion are of
little evidentiary value”). See In re Bisset-Berman Corp.,
476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of applicant’s corporate president’s
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that
there was no likelihood of confusion). The lack of
evidence of actual confusion carries little weight, J.C.
Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ
435, 438 (CCPA 1965), especially in an ex parte context.
In any event, the record is devoid of probative evidence
relating to the extent of use of registrant’s and
applicant’s marks and, thus, whether there have been
meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont
Ser No. 77639815
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factor of the length of time during and conditions under
which there has been contemporaneous use without evidence
of actual confusion is considered neutral.
Based on the record before us, we see the likelihood
of confusion refusal as amounting to only a speculative,
theoretical possibility. Based on the specific differences
between the goods, and the degree of care of knowledgeable
purchasers when buying specialty racing components for
motor vehicles, we find that the examining attorney, by
submitting only the third-party registrations, has not met
his burden of establishing that confusion is likely to
occur, even when similar marks are involved. Language by
our primary reviewing court is helpful in resolving the
likelihood of confusion issue in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de
minimis situations but with the
practicalities of the commercial world,
with which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391 (Fed. Cir. 1992), citing Witco
Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d
1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g 153 USPQ
412 (TTAB 1967).
Decision: The refusal to register is reversed.