Big O Tires, Inc.v.Big 10 Tire Company, Inc.

Trademark Trial and Appeal Board

Nov 30, 2006

No. 91078343 (T.T.A.B. Nov. 30, 2006)

Mailed:
November 30, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Big O Tires, Inc.
v.
Big 10 Tire Company, Inc.
_____

Opposition No. 91078343
to application Serial No. 73654393
filed on April 10, 1987
_____

Marsha Gentner and Philip O’Neill of Jacobson Holman PLLC
for Big O Tires, Inc.

Bruce W. Baber of King & Spaulding for Big 10 Tire Company,
Inc.
______

Before Hairston, Bucher and Zervas, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Big 10 Tire Company,
Inc. to register the mark BIG 10 TIRES (TIRES is disclaimed)
for “new, used and recapped vehicle tires, tubes, valve
stems, automotive vehicle parts, namely wheels, shocks and
struts” in International Class 12; “auto lubricating,
maintenance and repair services” in International Class 37;
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91078343
2
and “retail store services in the field of auto parts and
accessories” in International Class 42.1
Registration has been opposed by Big O Tires, Inc.
under Section 2(d) of the Trademark Act. Opposer alleges
that it and its predecessor-in-interest have used the mark
BIG O in connection with products and services related to
vehicle tires and retail tire and accessory store services;
that opposer is the owner of the following registrations:
Registration No. 993415 (issued September 24, 1974,
renewed) for the mark BIG-O for “vehicle tires;”
Registration No. 994466 (issued October 1, 1974; renewed)
for the mark BIG O for “retail tire and accessory store
services and rendering technical assistance in connection
with the establishment and/or operation of retail tire and
accessory stores;” Registration No. 1611160 (issued August
28, 1990; renewed) for the mark BIG O TIRES and tire tread
design (TIRES is disclaimed) as shown below,

1 Serial No. 73654393, filed April 10, 1987, alleging a date of
first use anywhere of September 27, 1957 and a date of first use
in commerce of November 15, 1957.

Opposition No. 91078343
3
for “tires” in International Class 12 and “retail tire store
services” in International Class 42; and Registration No.
1952457 (issued January 30, 1996; renewed) for the mark COST
U LESS BIG O TIRES and design (TIRES is disclaimed) as shown
below,

for “vehicle tires” in International Class 12, “tire
installation, alignment, balancing, rotation, and repair
services; maintenance and repair of automobile parts, namely
brakes, shock absorbers, front end suspension parts,
bearings, struts and batteries” in International Class 37,
and “retail tire and automotive accessory store services;
automotive inspection of automobile parts, namely brakes,
shock absorbers, front end suspension parts, bearings,
struts and batteries” in International Class 42; and that
applicant’s mark, when applied to applicant’s goods and
services, so resembles opposer’s previously registered marks
as to likely to cause confusion.2

2 Opposer did not plead ownership of Registration Nos. 1611160
and 1952457 in the notice of opposition inasmuch as these
registrations issued after this opposition was filed by more than
three and six years respectively. However, opposer, during its
testimony period, filed a notice of reliance on these
registrations and applicant did not object thereto. Under the
circumstances, the notice of opposition is deemed amended to
Opposition No. 91078343
4
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.3
Evidentiary Matters
We note that opposer has submitted a notice of reliance
on several newspaper and magazine articles and two press
releases. In its brief on the case, opposer cites to
information in the newspaper and magazine articles and press
releases concerning its business activities, e.g., the
length of time during which opposer has been in business,
the number of stores operated by opposer, and opposer’s
ranking among retail tire franchisors.
Insofar as the press releases are concerned, we have
given them no consideration in reaching our decision herein.
Press releases are not proper subject matter for a notice of
reliance. See Hard Rock Café Licensing Corp. v. Elsea, 48
USPQ2d 1400, 1403 (TTAB 1998) and Colt Industries Operating
Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74
n.2 (TTAB 1983).

include opposer’s claim of ownership of these registrations and a
likelihood of confusion with the marks therein. See Fed. R.
Civil P. 15(b) and TBMP § 507.03 (2nd ed. rev. 2004).
3 Applicant also counterclaimed to cancel opposer’s pleaded
Registration No. 994466 on the ground of fraud. After
proceedings were extended/suspended for twelve years for
settlement discussions, on October 6, 2000, judgment was entered
against applicant on the counterclaim and the counterclaim was
dismissed with prejudice. This proceeding was then suspended for
another four years while the parties discussed settlement. Now,
the only remaining claim for decision is opposer’s likelihood of
confusion claim.

Opposition No. 91078343
5
Further, newspaper and magazine articles are admissible
in evidence under Rule 2.122(e), only for what they show on
their face, not for the truth of the matters contained
therein, unless a competent witness has testified to the
truth of such matters. See TBMP §704.08 and cases cited
therein. In this case, opposer did not take testimony and,
therefore, the articles may not be relied on to establish
that the activities mentioned therein have occurred.
The Record
The record, therefore, consists of the pleadings, the
file of the involved application, and opposer’s notices of
reliance on certified copies of its pleaded registrations,
and newspaper and magazine articles.
Applicant did not take testimony or submit any other
evidence. Only opposer filed a brief.
Priority
Inasmuch as certified copies of opposer’s pleaded
registrations are of record, there is no issue with respect
to opposer’s priority. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
The central issue in this case is likelihood of
confusion. Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
Opposition No. 91078343
6
in In re E. I. duPont 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). 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
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).
As noted previously, the only evidence properly of
record consists of certified copies of opposer’s pleaded
registrations and newspaper and magazine articles concerning
opposer. These articles make reference to opposer’s BIG O
vehicle tires and retail tire and accessory store services,
and its franchising activities. We have no information
about applicant and its activities.
We consider first the goods and services of the
parties. Opposer’s goods and services, as identified in its
registrations are “vehicle tires” (Registration No. 993415);
“retail tire and accessory store services and rendering
technical assistance in connection with the establishment
and/or operation of retail tire and accessory stores”
(Registration No. 994466); “tires and retail tire store
services” (Registration No. 1611160); and “vehicle tires;
Opposition No. 91078343
7
tire installation, alignment, balancing, rotation, and
repair services; maintenance and repair of automobile parts,
namely brakes, shock absorbers, front end suspension parts,
bearings, struts and batteries; retail tire and automotive
accessory store services; and automotive inspection of
automobile parts, namely brakes, shock absorbers, front end
suspension parts, bearings, struts and batteries”
(Registration No. 1952457).
Applicant’s goods and services, as identified in its
application are “new, used and recapped vehicle tires,
tubes, valve stems, automotive vehicle parts, namely wheels,
shocks and struts”; “auto lubricating, maintenance and
repair services,” and “retail store services in the field of
auto parts and accessories.” It is clear that there is a
substantial overlap in the goods and services identified in
opposer’s pleaded registrations and the goods and services
identified in applicant’s application (e.g., vehicle tires,
auto maintenance and repair, and retail tire store services
which is encompassed within retail store services in the
auto parts field). Such goods and services may be offered
in the same channels of trade and may be purchased by the
general public.
Turning then to the marks, we note that the most
relevant of opposer’s marks are the BIG-O, BIG O and BIG O
Opposition No. 91078343
8
TIRES and tire tread design marks.4 We must determine
whether these marks and applicant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks 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). Furthermore, 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 commercial impression that
confusion as to the source of the goods and/or services
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). Finally, “when marks would appear on
virtually identical goods or services, the degree of

4 Indeed, in its brief on the case, opposer’s arguments with
respect to likelihood of confusion are directed to these three
marks and applicant’s mark. Thus, we have given no further
consideration to opposer’s COST U LESS BIG O TIRES and design
mark (Registration No. 1952457).

Opposition No. 91078343
9
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed Cir. 1992).
When we compare opposer’s BIG-O, BIG O and BIG O TIRES
and tire tread design marks and applicant’s BIG 10 TIRES
mark in their entireties, we find that they are very similar
in sound, appearance, connotation and commercial impression.
The word “TIRES” in opposer’s BIG O TIRES and tire tread
design mark and applicant’s BIG 10 TIRES mark is merely a
generic or descriptive term for opposer’s and applicant’s
respective goods and services. Further, insofar as the tire
tread design in opposer’s mark is concerned, when a mark
comprises both words and a design, the words are normally
accorded greater weight because they would be used by
purchasers to request the goods or services. In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Here, the tire
tread design simply reinforces the word “TIRES” in opposer’s
mark.
Thus, it is the term BIG(-)O in each of opposer’s marks
that is dominant, and it is the term BIG 10 in applicant’s
mark that is dominant. Due to the shared term BIG plus an
arbitrary element with no apparent relationship to the goods

Opposition No. 91078343
10
or services of either party, namely the single letter “O” in
the case of opposer’s marks and the two digit number “10” in
the case of applicant’s mark, the dominant portions of the
marks are very similar. We note that is often the first
part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered. See Presto Products
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988).
Because the marks are dominated by the terms BIG(-)O and BIG
10, we find that the marks are similar in sound and
appearance when considered in their entireties. Although
the marks can be distinguished when viewed side by side,
under actual marketing conditions consumers do not
necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980).
With respect to meaning, we recognize that the letter
“O” and the number “10” in the respective marks, leads to
somewhat different connotations. Nonetheless, we find that
the similarities in sound and appearance outweigh the
differences in connotation.
In sum, when each of opposer’s marks and applicant’s
mark are considered in their entireties, the marks are
sufficiently similar in sound, appearance and commercial
Opposition No. 91078343
11
impression that when used on identical goods and services,
confusion would be likely to occur.
Finally, we note that opposer, in its brief on the
case, argues that its BIG O mark is famous and entitled to a
broad scope of protection. However, there is no proper
evidence of the extent of opposer’s use of the BIG O mark,
its sales, and its advertising/promotional activities. The
evidence that opposer’s BIG O vehicle tires and its retail
tire and accessory stores have been the subject of some
articles in the press is simply insufficient evidence to
demonstrate that the mark is famous. Opposer’s failure,
however, to prove the fame of its BIG O mark is not a
critical factor in this case.
In view of the similarity in sound, appearance, and
commercial impressions of each of opposer’s marks and
applicant’s mark, the identity of the respective goods and
services, trade channels and purchasers, confusion as to the
source or sponsorship of such goods and services is likely
to result.
Decision: The opposition is sustained.