Atlas Oil Co.

Trademark Trial and Appeal Board

Jun 26, 2001

No. 75543197 (T.T.A.B. Jun. 26, 2001)

06/26/01 Paper No. 12
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Atlas Oil Company
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Serial No. 75/543,197
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Raymond M. Galasso of Simon, Fakhoury, Tangalos, Frantz & Galasso
PLC for Atlas Oil Company.
Melvin T. Axilbund, Trademark Examining Attorney, Law Office 113
(Meryl Hershkowitz, Managing Attorney).
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Before Cissel, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Atlas Oil Company has filed an application to register
the mark "FAST TRACK" for "retail store services featuring
gasoline and convenience store items."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its goods, so resembles the
mark "J.J.'S FASTRAC," which is registered for "retail
1 Ser. No. 75/543,197, filed on August 25, 1995, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/543,197
2
convenience store services,"2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
or services and the similarity of the marks.4
Turning first to consideration of the respective
services, it is readily apparent that they are identical in part
with respect to retail convenience store services. Moreover, the
record contains evidence, including numerous excerpts from
stories obtained from the "NEXIS" database, showing that it is a
2 Reg. No. 2,153,115, issued on April 21, 1998, which sets forth dates
of first use of August 1, 1997.
3 The Examining Attorney, in his brief, has properly objected to
consideration of both an evidentiary affidavit and information about
several third-party registrations which were attached as appendices to
applicant's brief. As the Examining Attorney correctly notes, the
submission of such evidence for the first time with applicant's brief
is untimely under Trademark Rule 2.142(d). Accordingly, while the
Examining Attorney's objection is sustained, it is also pointed out
that even if such evidence were to be considered at this stage, it
would make no difference in the outcome of this appeal.
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Ser. No. 75/543,197
3
common practice for many retail convenience stores to sell
gasoline in addition to sundry convenience items. Thus, insofar
as applicant's retail convenience store services also feature the
sale of gasoline, such services are closely related to
registrant's retail convenience store services. Applicant, we
observe, does not contend to the contrary and, instead, appears
to treat the respective services as if they were in fact
identical in all significant respects, given the overlap of its
services, as identified in the application, with those recited in
the cited registration.
In view of the above, the principal focus of our
inquiry is on the similarities and dissimilarities in the marks
at issue when considered in their entireties. Nonetheless, as
pointed out in Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992),
cert. denied, 506 U.S. 1034 (1994), "[w]hen marks would appear on
virtually identical goods or services, the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines."
Applicant maintains that the respective marks are not
likely to cause confusion because the presence of the term
"J.J.'S" in registrant's mark, which applicant asserts is the
dominant portion thereof, results in a mark which is "dissimilar
in sight, sound, meaning, and commercial impression" to its mark,
which lacks such term. According to applicant:
essential characteristics of the goods [or services] and differences
in the marks."
Ser. No. 75/543,197
4
"J.J.'S" is more than a "fairly common and
nondistinctive nickname" as asserted by the
Examining Attorney. The usage of J.J.'s
indicates ownership of the services by a
distinct individual which is memorable in the
minds of consumers. Appellant's mark is
easily distinguished from Registrant's mark
due to the ownership term in Registrant's
mark. Additionally, Registrant's mark
incorporates a novel spelling of the phonetic
equivalent of FAST TRACK. .... These
differences in appearance are substantial and
serve to distinguish the marks in the minds
of consumers.
Appellant further respectfully submits
that the marks sound dissimilar. .... The
[Registrant's] mark begins with the
repetition of the "J" sound, which serves to
distinguish the mark from Applicant's mark.
Due to being a substantially longer mark with
a distinctive repetition of the "J" sound,
Registrant's mark has a dramatically
different auditory effect than Registrant's
mark, and as a result ..., no likelihood of
confusion exists in the case at hand.
Finally, the different meanings and
commercial impressions of the conflicting
marks underscore that no likelihood of
confusion between the marks exists. In
Appellant's mark, FAST TRACK, the term FAST
modifies the term TRACK and creates the
commercial impression of speedy service. On
the other hand, ... [Registrant's mark]
J.J.'S FASTRAC creates a different impression
on consumers. Due to the mark beginning with
the possessive of a first name or nick name
[sic], a sense of ownership is imparted.
.... While the term J.J.'S is a nickname,
its use in connection with the term FASTRAC
is not common or nondistinctive. Instead of
merely being speedy service, it is a service
brought to you personally by J.J. This
ownership serves to distinguish Registrant's
mark and Appellant's mark. In conclusion,
the respective marks ... create very
different commercial impressions in the mind
of consumers. As a result, the likelihood of
confusion between the marks at hand is
completely negated.
Ser. No. 75/543,197
5
We agree with the Examining Attorney, however, that
this appeal is governed by the general rule that a likelihood of
confusion is not avoided between otherwise confusingly similar
marks merely by adding or deleting a house mark or trade name
element. See, e.g., In re Apparel Ventures, Inc., 229 USPQ 225,
226 (TTAB 1986) and In re Riddle, 225 USPQ 630, 632 (TTAB 1985).
Here, the absence of the apparent house mark or trade name
element "J.J.'S"5 from applicant’s "FAST TRACK" mark does not
serve to avoid a likelihood of confusion since such mark and
registrant’s "J.J.'S FASTRAC" mark, when considered in their
entireties, both create substantially the same commercial
impression due to the respective presence of the terms "FAST
TRACK" and "FASTRAC." Such terms, in addition to being "phonetic
equivalents," as applicant has admitted, are also virtually
identical in appearance and connote the same notion of what
applicant characterizes as "speedy service." Overall, the
respective marks project substantially the same commercial
impression and their contemporaneous use in connection with
legally identical retail convenience store services is likely to
cause confusion as to source or sponsorship.6
5 The cited registration, we observe, issued to J.J. Fast Stops, Inc.
6 It is clear, in this regard, that to potential customers familiar
with registrant's "J.J.'S FASTRAC" mark for its retail convenience
store services, applicant's "FAST TRACK" mark for its retail store
services featuring gasoline and convenience store items would appear
to be a shortened form of registrant's mark. See, e.g., In re U.S.
Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) [Board noted, in holding
that confusion is likely from an applicant's use of mark "CAREER
IMAGE" for women's clothing (namely, dresses, blouses, pants,
pantyhose, suits, jackets, skirts, shoes and sweaters) and a
registrant's use of mark "CREST CAREER IMAGES" on uniforms (consisting
of tops, blazers, skirts, pants, dresses, jumpsuits, culottes, hats,
Ser. No. 75/543,197
6
Applicant further contends, however, that confusion is
in fact unlikely because, as stated in its brief, it "has been
using the trademark 'FAST TRACK' since at least 1998" without any
reported incidents of actual confusion with registrant's mark
"J.J.'S FASTRAC." While the absence of any instances of actual
confusion over a significant period of time is indeed a du Pont
factor which is indicative of no likelihood of confusion, it is a
meaningful factor only where the record demonstrates appreciable
and continuous use by the applicant of its mark in the same
markets as those served by registrant under its mark. See, e.g.,
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). In particular, there must be evidence showing that there
has been an opportunity for actual confusion to occur. See,
e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000).
In this case, there is simply no supporting affidavit
or declaration from anyone associated with applicant who has
personal knowledge as to the asserted period, which appears to be
scarves, ties, vests and aprons), that "[a]pplicant's mark would
appear to prospective purchasers to be a shortened form of
registrant's mark"]. As to the converse, the Examining Attorney
cogently observes that, to customers acquainted with applicant's "FAST
TRACK" mark for its convenience store services, the possessive term
"J.J.'S" in registrant's "J.J.'S FASTRAC" mark would signify the same
"FAST TRACK" brand of convenience store services, even though
"offered, sponsored, endorsed or otherwise presented by J.J." See,
e.g., In re Apparel Ventures, Inc., supra at 226 [in finding stylized
mark "SPARKS BY SASSAFRAS" for women's blouses, skirts and sweaters is
likely to cause confusion with mark "SPARKS" for shoes, boots and
slippers, Board stated that "[t]he words 'by sassafras' indicate to
prospective purchasers that 'sassafras' is the name of the entity
which is the source of the 'SPARKS' brand clothing" and that such
consumers "do not necessarily know or care which business calls itself
'sassafras,' but they would assume that when 'SPARKS' appears on two
similar products that they both come from the same source"].
Ser. No. 75/543,197
7
exceedingly short, of contemporaneous use of the respective
marks, including information concerning details of the nature and
extent of the sales and marketing activities of applicant and
registrant. Aside therefrom, what little information which is
available plainly reveals that there has been no real opportunity
for any incidents of actual confusion to take place since, as
stated in applicant's brief, its "operations and customers are in
the Midwest whereas ... registrant's operations and customers are
mainly in Texas." Furthermore, the claimed lack of any instances
of actual confusion would not appear to be a mitigating factor in
any event, since for customers of retail convenience store
services, the typical purchase or transaction would be relatively
inexpensive and, thus, any actual confusion experienced in the
course thereof would not be expected to be reported and therefore
come to the attention of applicant and/or registrant. Compare In
re General Motors Corp., 23 USPQ2d 1465, 1470-71 (TTAB 1992).
Accordingly, we conclude that purchasers and
prospective customers, familiar with registrant’s "J.J.'S
FASTRAC" mark for retail convenience store services, could
reasonably believe, upon encountering applicant’s substantially
similar "FAST TRACK" mark for retail store services featuring
gasoline and convenience store items, that such legally identical
services emanate from, or are otherwise sponsored by or
affiliated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.