AutoZone Parts, Inc.v.Dent Zone Companies, Inc.

Trademark Trial and Appeal Board

Aug 30, 2011

No. 92044502 (T.T.A.B. Aug. 30, 2011)

Hearing: February 23, 2011 Mailed: August 30, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

AutoZone Parts, Inc.

v.

Dent Zone Companies, Inc.
_____

Cancellation No. 92044502
_____

Alan S. Cooper of Wiley Rein LLP for AutoZone Parts, Inc.

John M. Cone of Hitchcock Evert LLP for Dent Zone Companies,
Inc.
_____

Before Grendel, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Petitioner, AutoZone Parts, Inc., has petitioned to
cancel the following registrations owned by respondent, Dent
Zone Companies, Inc.:
Registration No. 2604916 for the mark DENT ZONE (typed
or standard characters, DENT disclaimed) for “vehicle repair
and maintenance services, namely vehicle paint blemish
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92044502
2
repair, paintless dent removal, and windshield repair”;1
Registration No. 2829174 for the mark shown below

(DENT and AUTO BODY disclaimed) for “providing extended
service agreements for vehicle repair and maintenance
services, namely paintless dent repair”;2 and
Registration No. 2885624 for the mark shown below

(DENT and AUTO BODY disclaimed) for “vehicle repair and
maintenance services, namely paint blemish repair, paintless
dent removal and windshield repair”.3
Petitioner alleges priority and likelihood of confusion
as a ground for cancellation. Petitioner specifically
alleges that it and its predecessor have continuously used

1 Issued August 6, 2002 on the Principal Register, asserting July
11, 1994 as a date of first use of the mark in commerce in
connection with the services. Section 8 affidavit accepted.
2 Issued April 6, 2004 on the Principal Register, asserting
December 6, 2000 as a date of first use of the mark in commerce
in connection with the services. Section 8 affidavit accepted.
3 Issued on the Principal Register on September 21, 2004,
asserting August 8, 1997 as a date of first use of the mark in
commerce in connection with the services. Cancelled under
Section 8 effective April 22, 2011.
Cancellation No. 92044502
3
the trade name, trademark and service mark AUTOZONE for
retail auto parts store services, automotive testing,
repair, diagnostic and installation services, since long
prior to respondent’s dates of first use; that its retail
auto parts store services offer products including dent
repair, windshield products and related items, that
petitioner's AUTOZONE mark has become “exceedingly well-
known and a famous mark within the meaning of §43(c) of the
Federal Trademark Act” prior to the dates of first use
claimed in the challenged registrations; and that
respondent's marks, when used in connection with the
identified services, so resemble petitioner’s AUTOZONE mark
as to be likely to cause confusion.4 Petitioner pleaded
ownership of the following registrations:
Registration No. 1550569 issued August 1, 1989 (Section 8
affidavit accepted; Section 15 affidavit accepted; first
renewal) for the mark AUTOZONE (typed drawing) for “retail
auto parts store services”;
Registration No. 1501718 issued August 23, 1988 (Section
8 affidavit accepted; Section 15 affidavit acknowledged;

4 Petitioner further asserted a dilution claim under Section 43
of the Trademark Act but did not pursue the claim at trial.
Accordingly, it is deemed waived. In addition, in its reply
brief on the merits of the case, petitioner indicates that it
“reserves the right to petition for cancellation of Registration
Nos. 2604916 and 2885624 on the ground of abandonment….” (Reply
brief, p. 3, FN 2.) We note, however, that the issue of
abandonment was neither pleaded nor tried in this case and thus
is not before us.

Cancellation No. 92044502
4
first renewal) for the mark shown below, for “retail auto
parts store services”;

Registration No. 2397635 issued October 24, 2000
(Section 8 affidavit accepted; Section 15 affidavit
acknowledged; first renewal) for the mark shown below, for
“retail automobile parts and accessories store services”;
and

Registration No. 2721079 issued June 3, 2002 (Section 8
affidavit accepted; Section 15 affidavit acknowledged) for
the mark AUTOZONE (typed drawing) for “automotive repair
services, namely, testing, repair, diagnosis and
installation of automotive parts and accessories”.
Respondent filed an answer to the petition to cancel
wherein it denied the essential allegations thereof.5
Respondent’s Registration No. 2885624
Subsequent to the parties’ briefing and oral hearing in
this case, respondent allowed its involved Registration No.
2885624 to be cancelled under Section 8 of the Trademark
Act. On July 22, 2011, the Board issued an order allowing

5 In addition, respondent asserted certain affirmative defenses
but did not pursue them at trial. Accordingly, they are deemed
waived.
Cancellation No. 92044502
5
respondent 15 days in which to show cause why such
cancellation should not be deemed to be the equivalent of a
cancellation by request of respondent without petitioner’s
consent, and should not result in entry of judgment against
respondent as to that registration as provided by Trademark
Rule 2.134(a).
On August 5, 2011, respondent submitted a response to
the July 22, 2011 show cause order, along with the
declaration of it executive vice chairman, Mr. Troy Good, in
support thereof. In its response, respondent declares that
at the time for filing a Section 8 affidavit for its
Registration No. 2885624, respondent ceased using the mark
in that registration and had no intention to resume use
thereof.6 Respondent further declares that the “decision to
phase out use of DENT ZONE The Autobody Alternative was not
made for the purpose of avoiding a decision”7 on the
petition to cancel but rather was a business decision to
brand the services identified thereby under a different mark
“to distinguish it from the service contract/affinity club
business conducted under the marks DENT ZONE and DENT ZONE
The Autobody Guard and Design trademarks.”8 Accordingly,
respondent requests that the Board enter judgment against
its Registration No. 2885624 solely on the ground of

6 Declaration of Troy Good, para. 6.
7 Id. at 3.
8 Id.
Cancellation No. 92044502
6
abandonment.
On August 11, 2011, petitioner filed a response thereto
requesting that, based upon respondent’s showing, the Board
(1) deem its petition for cancellation to be amended to
include a claim of abandonment against respondent’s
Registration No. 2885624; and (2) enter judgment against
Registration No. 2885624 on the ground of abandonment.
It is settled that when a respondent concedes that its
failure to file a Section 8 affidavit was occasioned by a
deliberate business decision made prior to commencement of
the proceeding to discontinue use of its mark, and not to
avoid judgment on the cancellation, the Board will enter
judgment against that registration on the ground of
abandonment. See, for example, Marshall Fields & Co. v.
Mrs. Fields Cookies, 11 USPQ2d 1154, 1156 (TTAB 1989). See
also TBMP § 602.02(b) (3d ed. 2011) and authorities cited
therein. Given the circumstances of this case, and further
because petitioner consents thereto, judgment is hereby
entered against respondent as to Registration No. 2885624 on
the ground of abandonment.9
The Record
By rule, the record consists of the pleadings and the
files of the involved registrations. In addition, during

9 Petitioner’s request to amend its petition to cancel to assert
abandonment against respondent’s Registration No. 2885624 is
moot.
Cancellation No. 92044502
7
its assigned testimony period petitioner took the testimony
deposition, with exhibits, of its vice-president of
marketing, Mr. Brett Shanaman. Petitioner further
introduced a notice of reliance upon printed copies of its
pleaded registrations; printed copies of third-party
registrations; and excerpted portions of the discovery
deposition of respondent’s executive vice chairman, Mr. Troy
Good. Respondent, during its assigned testimony period,
took the testimony depositions, with exhibits, of Mr. Troy
Good and the president of third party Automotive Service
International, LLC, Mr. Douglas Hansen.
General Facts
The record in this case establishes that petitioner
first used the mark AUTOZONE in connection with retail auto
parts store services and auto parts and accessories in
1987.10 Petitioner currently operates approximately 4,050
AUTOZONE auto parts stores throughout the continental U.S.
and Puerto Rico.11 Virtually every type of auto part and
accessory is sold at petitioner's stores, including products
for use in auto collision repair.12 Petitioner's sales
associates are “trained and encouraged to go the extra mile
to assist customers” by offering to test automobile
batteries, alternators and starters; providing diagnostic

10 Shanaman Testimony, p. 24-34.
11 Id., p. 12.
12 Id. at 11-18, 67; Exhibits 1-5.
Cancellation No. 92044502
8
services that relate to checking engine lights; and
installing parts if requested by a customer or if it appears
that a customer needs help.13 Petitioner’s stores feature a
“LOAN-A-TOOL” program through which petitioner's customers
may borrow certain tools, including tools used in collision
repair.14 Petitioner provides a website (autozone.com)
offering “how-to” and repair information, various auto parts
for sale, and directions to petitioner’s physical retail
stores.15 Petitioner's website receives visits from
approximately 3.4 million unique visitors per month.16
Petitioner’s physical stores collectively receive
approximately 6 million customers per week.17 Petitioner’s
customers are the general public, professional automotive
installers and personnel from automobile repair shops.18
Petitioner's AUTOZONE mark appears on signs on the
exterior of petitioner's retail stores, on freestanding
signs outside of the stores, on banners, posters and other
point-of-sale materials inside the stores, and on products
sold in the stores.19 Petitioner advertises its services
and products on its Internet website and third-party
websites; in newspapers, magazines and circulars; on radio

13 Id. at 18-20, 46-47; and Exhibit 17.
14 Id. at 20-1, 49, 52; and Exhibits 18, 20.
15 Id. at 13-18, 55-57; Exhibits 1-5, 23.
16 Id. at 57.
17 Id. at 22-23.
18 Id.
19 Id. at 34-39; Exhibits 10-15.
Cancellation No. 92044502
9
and television, including channels such as FOX, the History
Channel, and Speed TV.20
Petitioner and its related companies annually
distribute between 30 million and 100 million circulars to
consumers in stores, as newspaper inserts and direct
mailers.21 Petitioner's television advertising reaches
approximately ninety percent of the U.S. population 40 times
per year.22 For the past seven years, petitioner's radio
advertising has reached approximately ninety-five percent of
the U.S. population approximately 100 times per year.23
Petitioner’s combined radio and television advertising of
the AUTOZONE mark generates 9.5 billion commercial
impressions per year.24 In addition, petitioner advertises
by means of courtside and electronic signage at college and
professional sporting events including professional
basketball, soccer and baseball, as well as college football
at the AutoZone Liberty Bowl.25
Petitioner’s annual sales of auto parts, accessories
and services under the AUTOZONE mark have increased from
more than one billion dollars in 1992 to approximately 6.5
billion dollars in 2008 with a cumulative total of over $75

20 Id. at 4-62; Exhibits 16-24.
21 Id. at 54-55.
22 Id. at 43.
23 Id. at 43-47.
24 Id. at 43-44.
25 Id. at 40-62; Exhibits 16-24.
Cancellation No. 92044502
10
billion since 1987.26 In addition, since 1987 petitioner
and its predecessor in interest have spent in excess of $750
million in advertising and promoting its automotive parts
store services and related parts and accessories under the
AUTOZONE mark.27
In 1994, respondent got into the then-novel business of
providing paintless dent repair of hail-damaged vehicles.28
Paintless dent repair (PDR) is used to repair minor dents to
vehicle bodies and differs from the techniques used to
repair larger damage to vehicle bodies and uses different
tools.29 Respondent later ceased providing PDR services and
shifted its focus to offering fulfillment services to
insurance companies, affinity clubs and pre-paid service
providers who provide PDR services to vehicle owners. Thus,
respondent presently does not provide PDR services directly
to the general public, but rather uses its DENT ZONE marks
in connection with promotion and sale of its fulfillment
services to the above-mentioned customers by arranging PDR
services to be performed by a network of independent
technicians on behalf of third parties.30
Petitioner’s Standing
Because petitioner has properly made its pleaded

26 Id. at 62-64; Exhibits 25.
27 Id. at 65.
28 Good Testimony, p. 30-40.
29 Id. at 9-10.
30 Id. at 6-7, 17-23 30, 40.
Cancellation No. 92044502
11
registrations of record, and further has shown, by its use
and registration of marks that are at least arguably similar
to respondent’s marks that it is not a mere intermeddler, we
find that petitioner has established its standing to
petition to cancel respondent’s registrations for its
involved marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority
It is well-settled that in the absence of any evidence
of earlier use, the earliest date upon which a respondent
may rely is the filing date of its underlying applications.
See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See
also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995). In this case, the applications that
matured into respondent’s registrations at issue both were
accorded filing dates of April 1, 2002. Inasmuch as
respondent has neither alleged nor introduced any evidence
to support a finding that it made earlier use of its DENT
ZONE marks, we find that April 1, 2002 is the earliest date
upon which respondent is entitled to rely for purposes of
priority.
The filing dates of petitioner’s pleaded registrations
are as follows: November 20, 1987 for Reg. No. 1501718;
Cancellation No. 92044502
12
September 14, 1988 for Reg. No. 1550569; September 8, 1999
for Reg. No. 2397635; and July 9, 2002 for Reg. No. 2721079.
Because the filing date of the applications which matured
into petitioner’s pleaded Registration Nos. 1501718, 1550569
and 2397635 predate the April 1, 2002 filing dates of
respondent’s underlying applications, petitioner clearly has
established its priority as to three of its four pleaded
registrations.
In addition, as to petitioner’s pleaded Registration
No. 2721079, the testimony of Brett Shanaman establishes
that petitioner and its predecessor used the AUTOZONE mark
in that registration in connection with the automotive
repair services recited therein as early as 1987.31 In its
brief, respondent objects to this testimony on the ground
that Mr. Shanaman joined petitioner in 2001 and thus lacks
direct knowledge of such use. However, respondent never
objected during Mr. Shanaman’s testimony deposition on the
basis of his competency to testify on this issue. Neither
did respondent cross-examine Mr. Shanaman regarding his
testimony on this issue. As a result, petitioner was not
afforded an opportunity to correct the deficiencies raised
by such an objection during Mr. Shanaman’s testimony
deposition. Accordingly, respondent’s objection, raised for
the first time in its brief, is deemed waived. See

31 Shanaman Testimony, p. 33-4; Exhibit 9.
Cancellation No. 92044502
13
Trademark Rule 2.123(k) and Fed. R. Civ. P. 32(d)(3)(A). In
view thereof, we find that Mr. Shanaman’s testimony is
sufficient to establish petitioner’s priority of use with
regard to its pleaded Registration No. 2721079. “Oral
testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark
proceeding.” Powermatics, Inc. v. Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). See also
National Bank Book Co. v. Leather Crafted Products, Inc.,
218 USPQ 826, 828 (TTAB 1993).
Likelihood of Confusion
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 likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We also
must bear in mind that the fame of a plaintiff's mark, if it
exists, plays a “dominant role in the process of balancing
the DuPont factors.” Recot Inc. v. M.C. Becton, 214 F.3d
Cancellation No. 92044502
14
1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
Petitioner’s AUTOZONE Mark In Registration No. 1550569
We note that petitioner has neither pleaded nor proven
that it owns a family of AUTOZONE marks. Therefore, we will
concentrate our discussion of the issue of likelihood of
confusion on that registration pleaded by petitioner for the
mark and services most similar to those in respondent’s
challenged registrations; namely, petitioner’s Registration
No. 1550569 for the mark AUTOZONE for “retail auto parts
store services”. If we find that there is no likelihood of
confusion with this registered mark in connection with the
listed services, there is no need for us to consider the
likelihood of confusion with the other registered marks.
See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Fame of Petitioner's AUTOZONE Mark
As noted, we are required to consider evidence of the
fame of petitioner's mark(s) and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002); Recot Inc. v. M.C. Becton, supra; and Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
350, 22 USPQ2d 1453 (Fed. Cir 1992). “Famous marks thus
enjoy a wide latitude of legal protection.” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1897. This is true as famous marks
Cancellation No. 92044502
15
are more likely to be remembered and associated in the
public mind than a weaker mark, and are thus more attractive
as targets for would-be copyists. Id. Indeed, “[a] strong
mark … casts a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A
famous mark is one “with extensive public recognition and
renown.” Id. See also Bose Corp. v. QSC Audio Products
Inc., supra, 63 USPQ2d at 1305.
In this case, we find that petitioner's AUTOZONE mark
is famous in the field of retail auto parts store services.
Petitioner has used its AUTOZONE mark for over 23 years and
now has over 4000 retail auto part stores in the continental
U.S. and Puerto Rico. Petitioner advertises in virtually
every medium and its advertising and promotional
expenditures have totaled over $750 million since 1987.
Petitioner's television advertising reaches approximately
ninety percent of the U.S. population 40 times per year and
its radio advertising reaches approximately ninety-five
percent of the U.S. population approximately 100 times per
year. Petitioner's website receives approximately 3.4
million visitors per month. Since 1992 petitioner's net
sales have increased over six-fold and totaled 6.5 billion
dollars in 2008.
Based on this evidence, we find that petitioner's
AUTOZONE mark is famous. We recognize that petitioner has
Cancellation No. 92044502
16
not placed its sales and advertising figures in context,
i.e., we do not know how substantial these figures are in
terms of businesses that offer retail auto parts store
services. We further recognize that petitioner has not
provided direct evidence of recognition of its AUTOZONE mark
on the part of consumers. However, we do not believe that
is necessary here in view of the volume of sales and
advertising expenditures and the fact that petitioner's
advertising reaches over 90% of the U.S. population numerous
times each year. In this regard, we note that our primary
reviewing Court has accepted sales and advertising figures
as indicia of the fame and strength of a mark even in the
absence of the context for such figures. See Bose Corp. v.
QSC Audio Products Inc., supra, 63 USPQ2d at 1306.
Similarity of the Marks
We must now determine whether respondent's marks,
DENT ZONE (typed or standard characters); and

and petitioner's AUTOZONE mark (typed drawing) when compared
in their entireties in terms of appearance, sound and
connotation are similar or dissimilar in their overall
commercial impressions. See Palm Bay Imports, Inc. v. Veuve
Cancellation No. 92044502
17
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
The test 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 services offered under the marks is likely to
result. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ2d
106 (TTAB 1975). Furthermore, although the marks at issue
must be considered in their entireties, it is well settled
that one feature of a mark may be more significant than
another and it is not improper to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Initially, we find that in respondent's mark DENT ZONE
THE AUTO BODY GUARD and design, the dominant feature of the
mark is the term DENT ZONE. The wording DENT ZONE is
presented in significantly larger characters than the
wording THE AUTO BODY GUARD and also appears first in the
mark. Thus, the significance of DENT ZONE in respondent’s
mark DENT ZONE THE AUTO BODY GUARD and design is reinforced
by its location as the first portion of the mark. Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark
Cancellation No. 92044502
18
which is most likely to be impressed in the mind of a
purchaser and remembered”). Further, consumers are often
known to use shortened forms of names, and it is foreseeable
that respondent’s services will be referred to as DENT ZONE.
Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 219 (CCPA 1978) (Rich, J., concurring: “the users of
language have a universal habit of shortening full names –
from haste or laziness or just economy of words”). Also, we
find that the wording THE AUTO BODY GUARD is in the nature
of an advertising tagline emphasizing the dominant element
DENT ZONE.
The design adds little impact to the commercial
impression of the mark as the oval rings serve as a carrier
for the wording and the lightning bolt emphasizes the letter
Z in DENT ZONE. The design element also is subordinate to
the wording DENT ZONE. Thus, it is the term DENT ZONE that
persons would use in calling for respondent's services. To
be clear, we do not ignore the wording THE AUTO BODY GUARD
and design element in respondent's mark; however, we find
that they do not suffice to distinguish the marks in terms
of overall commercial impression.
Both of respondent’s marks and petitioner’s AUTOZONE
mark consists of or contain the distinctive term ZONE
preceded by a descriptive term which pertains to
automobiles; AUTO, in petitioner's case, signifying
Cancellation No. 92044502
19
automobiles, and DENT, in respondent's case, signifying
automobile dent repair. In addition, because both parties'
marks include the word ZONE, they consequently are similar
in connotation. Petitioner's AUTOZONE mark suggests a place
where automobile parts and supplies may be purchased.
Respondent's marks DENT ZONE and DENT ZONE THE AUTO BODY
GUARD and design suggest a place where dents in automobiles
are repaired. Thus, both petitioner's and respondent's
marks suggest a place or zone for automobile-related
services.
Finally, with respect to the sound of the respective
marks, there is some similarity to the extent that they all
contain the distinctive term ZONE. While we recognize that
there is no similarity between the other words in the
parties' marks, this difference in outweighed by the other
similarities in the marks.
For the reasons discussed above, and particularly in
view of the fame of petitioner's AUTOZONE mark, we find that
when the parties' marks are compared in their entireties,
they are more similar than dissimilar in appearance, sound
and, in particular, connotation and convey similar
commercial impressions.
Similarity of the Services
We turn next to a consideration of petitioner's “retail
auto parts store services” and respondent's “vehicle repair
Cancellation No. 92044502
20
and maintenance services, namely vehicle paint blemish
repair, paintless dent removal, and windshield repair” and
“providing extended service agreements for vehicle repair
and maintenance services, namely paintless dent repair.”
It is well established that the services of the parties
need not be similar or competitive, or even that they move
in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
respective services of the parties are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the services are such that they
could or would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same source. See In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978); and Monsanto
Company v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978).
As noted above, petitioner's services, as identified in
the relevant registration, are “retail auto parts store
services.” As shown by the testimony, petitioner offers its
services to the general public, primarily do-it-yourselfers,
professional automotive installers, and personnel from
automobile repair shops. Respondent’s services, as
identified in the involved registrations, are “vehicle
repair and maintenance services, namely vehicle paint
Cancellation No. 92044502
21
blemish repair, paintless dent removal, and windshield
repair” and “providing extended service agreements for
vehicle repair and maintenance services, namely paintless
dent repair.” As shown by the testimony, respondent's
services are offered primarily to insurance companies,
affinity clubs and pre-paid service providers who provide
PDR services to the general public, namely, vehicle owners.
Comparing the parties' services, we find that they are
sufficiently related in the marketplace that confusion is
likely to result from contemporaneous use of the marks. In
this regard, the testimony establishes that petitioner sells
and loans tools and also sells parts used to repair dents in
automobiles. Petitioner further made of record twenty-two
use-based third-party registrations in which “retail auto
parts store services” as well as automobile repair and
maintenance services are included in the recitation of
services. Although these registrations are not evidence
that the marks shown therein are in commercial use, or that
the public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
services identified therein are of a type which emanate from
a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988).
Cancellation No. 92044502
22
In short, both parties are offering services that
pertain to the maintenance and repair of automobiles.
Petitioner provides tools and parts used, inter alia, for
dent repair, while respondent provides paintless dent repair
and extended service agreements therefor. Petitioner
further has shown that in addition to using the AUTOZONE
mark for its retail auto parts services, it has also
established prior use of the mark on auto parts and
accessories themselves. In addition, petitioner has shown
that it offers testing, repair, diagnosis and installation
of automotive parts and accessories at its stores. Because
of the range of goods and services in connection with which
petitioner has used the AUTOZONE mark, persons would be
likely to believe that respondent's services related to
paintless dent repair offered under the marks DENT ZONE and
DENT ZONE THE AUTO BODY GUARD and design are somehow
affiliated with or sponsored by petitioner.
Channels of Trade and Classes of Purchasers
We have determined above that respondent’s services are
related to those of petitioner. In addition, there are no
recited restrictions as to the channels of trade or classes
of purchasers in either of the challenged registrations or
petitioner’s registration for AUTOZONE. It is settled that
in making our determination regarding the relatedness of the
parties’ goods and/or services, we must look to the services
Cancellation No. 92044502
23
as identified in respondent’s involved registrations and
petitioner’s pleaded registrations. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973). Because, as identified, the parties’
services are unrestricted as to their manner of use, we must
assume that respondent’s paintless dent removal services and
extended service agreements therefor are available to the
same consumers at petitioner’s retail auto parts store
services, i.e., by automobile owners as well as those
involved in repairing, maintaining and insuring automobiles.
Furthermore, to the extent that the parties’ services
may be the subjects of sophisticated purchases, even careful
purchasers are likely to be confused by similar marks used
in connection with related services. As stated by our
primary reviewing court, “[t]hat the relevant class of
buyers may exercise care does not necessarily impose on that
class the responsibility of distinguishing between similar
trademarks for similar goods. ‘Human memories even of
discriminating purchasers ... are not infallible.’” In re
Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) quoting Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970). Therefore, the fact that some purchasers may
Cancellation No. 92044502
24
exercise care before utilizing these services does not mean
there can be no likelihood of confusion. In the present
case, the similarity between respondent’s marks and
petitioner’s famous AUTOZONE mark as well as the
relationship between the services as identified outweigh any
sophisticated purchasing decision. See HRL Associates, Inc.
v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods].
Third-Party Use
The next factor we consider is the number and nature of
similar marks in use in connection with similar services.
In this regard, respondent submitted the testimony of Mr.
Douglas C. Hansen, president of Automotive Services
International. Mr. Hansen testified that since 2000, his
company has offered automotive services, including repair
service, under the mark TECHZONE.32 However, Mr. Hansen
further testified that his company’s services primarily
involve automotive airbag systems, occupant safety systems,
wire harness repair and electrical repair.33 Further, there
is insufficient testimony regarding the nature and extent of

32 Hansen Testimony, p. 5, Exhibit 8.
33 Id. at 6.

Cancellation No. 92044502
25
use of the TECHZONE mark by this third party such that we
may determine the extent to which the public has been
exposed to this mark.
In addition, respondent cites to AutoZone Inc. v.
Strick, 95 USPQ2d 1790 (N.D. Ill. 2010) in support of its
contention that the defendant in that case used “WASH ZONE
and OIL ZONE for car wash services since 1994 without any
actual confusion.”34 However, the evidence in the district
court case is not evidence in this proceeding. Moreover,
defendant’s use of WASH ZONE and OIL ZONE in the above case
and the third-party use of TECHZONE discussed above is not
sufficient to show that the public has had such widespread
exposure to ZONE marks in the automotive field that
petitioner’s AUTOZONE mark should be entitled to only a
narrow scope of protection. Apart from the fact that this
shows at most three third-party uses, the evidence is of
very limited probative value as there is no information
about the extent of use or promotion of these uses. In
short, this limited evidence does not prove that
petitioner's AUTOZONE mark is weak and that confusion is
unlikely. To the contrary, as we have already found,
petitioner's AUTOZONE mark is a famous mark that is entitled
to a broad scope of protection.

34 Brief, p. 18.
Cancellation No. 92044502
26
Actual Confusion
The final du Pont factor discussed by the parties is
the lack of instances of actual confusion despite over 16
years of use by the parties of their respective marks.
Respondent asserts that that the DENT ZONE mark has been
used in 20-30 states since the mid-1990s.35 Respondent
further asserts that its business is substantial, currently
averaging approximately 100,000 PDR contracts worth $399 to
$699 per year. Respondent argues that the absence of actual
confusion under the facts of this case suggests no
likelihood of confusion.
While we acknowledge this factor weighs in respondent’s
favor, we also note that it is often difficult to adduce
reliable evidence of actual confusion. See, for example,
Mallory & Church Corp., 25 USPQ2d 1236 (TTAB 1992).
Furthermore, it is not necessary to show actual confusion in
order to establish likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223
USPQ 1025 (Fed. Cir. 1990). Finally, the absence of actual
confusion often is outweighed by other factors including, in
this case, the fame of petitioner’s AUTOZONE mark, the
similarities between the marks and related nature of the
services. See, for example, Han Beauty, Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001).

35 Good Testimony, p. 34.
Cancellation No. 92044502
27
Summary
When all of the relevant du Pont factors are
considered, particularly the similarity of the identified
services, the range of petitioner's goods and services, the
commercial impressions of the marks, and the fame of
petitioner's AUTOZONE mark, we find that respondent's use of
DENT ZONE and DENT ZONE THE AUTO BODY GUARD and design for
its recited services in the field of paintless dent repairs
for automobiles is likely to cause confusion with respect to
the retail auto parts store services offered by petitioner
under its AUTOZONE mark.
Decision:
As discussed above, judgment is hereby entered against
respondent on the ground of abandonment as to Registration
No. 2885624.
The petition to cancel is granted on the ground of
priority and likelihood of confusion as to both of
respondent’s challenged registrations. In view thereof,
Registration Nos. 2604916 and 2829174 will be cancelled in
due course.