BP Amoco p.l.c.

Trademark Trial and Appeal Board

Sep 28, 2001

No. 75672371 (T.T.A.B. Sep. 28, 2001)

9/28/01 Paper No. 12
RLS/kes

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BP Amoco p.l.c.
________

Serial No. 75/672,371
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Robert E. Blankenbaker for BP Amoco p.l.c.

William J. Sauers, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Simms, Chapman and Bucher, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

BP Amoco p.l.c. (applicant), a United Kingdom
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark VISCO for
lubricants for automobiles.1
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 32,900, issued May 16, 1899 (renewed for

1 Application Serial No. 75/672,371, filed April 1, 1999, under
Section 44(e) of the Trademark Act, 15 USC §1126(e), on the basis
of United Kingdom Registration No. 609,540, covering the same
mark for lubricating oils. That registration issued on October
31, 1939, and is currently valid until October 31, 2002.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/672,371
2
the fourth time in 1989) for the mark VISCOLITE for
lubricating oils. The Examining Attorney has also refused
registration under Section 2(e)(4) of the Act, 15 USC
§1052(e)(4), arguing that applicant’s mark is primarily
merely a surname. Applicant and the Examining Attorney
have submitted briefs but no oral hearing was requested.
We affirm on both grounds.
Likelihood of Confusion Refusal
Arguing that one feature of a mark may be given more
weight in the likelihood-of-confusion analysis, the
Examining Attorney contends that VISCO, the only shared
portion of the respective marks, is the dominant part of
registrant’s trademark. The Examining Attorney points out
that this word appears at the beginning of registrant’s
mark, and contends that the “LITE” part of registrant’s
mark is descriptive or suggestive of a characteristic of
registrant’s goods—-that they may be lighter in grade or in
some other quality—-and that this part of registrant’s mark
does not significantly change the commercial impression of
the mark.
With respect to the goods, the Examining Attorney
contends that both are lubricants and that, moreover, the
identification in the registration (lubricating oils) is
broad enough to include applicant’s automobile lubricants.
Ser. No. 75/672,371
3
Therefore, the goods of applicant and registrant are
presumed to move in similar channels of trade and are
presumed to be available to all potential purchasers of
those goods. The Examining Attorney also contends that, if
applicant’s goods are not considered to be within the scope
of the registrant’s goods, applicant’s goods do
nevertheless fall within registrant’s “expansion of trade.”
The Examining Attorney has submitted printouts of five use-
based registrations which include the goods of both
applicant and registrant. Finally, the Examining Attorney
requests us to resolve any doubt on this issue in favor of
the registrant and prior user.
Applicant, on the other hand, contends that
registrant’s (now Exxon Mobil Corporation’s) goods,
according to information apparently obtained from
registrant’s Web site, are for heavy-duty machinery. These
goods, according to applicant, would be purchased by
sophisticated corporate purchasers through distributors for
the purpose of lubricating industrial machinery. In view
of the specific nature of registrant’s goods, applicant
maintains that LITE is not suggestive of those goods but is
inherently distinctive because registrant’s lubricating
oils are used in connection with heavy machinery. Because
applicant’s automotive lubricants are sold through retail
Ser. No. 75/672,371
4
stores, automobile dealerships and repair shops, applicant
argues that the different channels of trade, different
classes of purchasers and different marks show that
confusion is not likely. Finally, applicant’s attorney
states that both its mark and registrant’s mark have been
registered in at least five countries as well as the
Benelux countries without any instances of actual confusion
having arisen.
Likelihood of confusion must be determined on the
basis of the identification of goods set forth in the
application and the cited registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990), Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987) and Paula Payne Products Co.
v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USP Q76
(CCPA 1973). Viewed in this light, and not with respect to
what registrant’s actual lubricating oils may be, we
conclude that the respective products here are very closely
related if not identical. Registrant’s lubricating oils
and applicant’s automotive lubricants are similar products
which, as identified, may be sold in the same channels of
trade (automotive retail stores, auto repair shops, etc.)
to the same classes of potential purchasers. Also, viewed
Ser. No. 75/672,371
5
in this light, we cannot accept applicant’s argument that
the purchasers of registrant’s goods are sophisticated
heavy equipment operators.2 Finally, automotive lubricants
and lubricating oil are relatively inexpensive items that
are likely to be purchased without a great deal of care.
This is a factor which tends to increase the likelihood of
confusion.
Concerning the marks, we also agree with the Examining
Attorney that these marks are very similar, differing only
in the descriptive or suggestive component “LITE.” We
conclude, therefore, that purchasers, aware of registrant’s
VISCOLITE lubricating oils, who then encounter applicant’s
VISCO automotive lubricants, are likely to believe that
both these lubricating products come from the same source.
Surname Refusal
With respect to this refusal, the Examining Attorney
has submitted over six pages of “Visco” surnames from the
Phonedisc database showing that a total of 2,199
residential listings of this surname were found. The
Examining Attorney argues that no minimum number of
directory listings is required. The Examining Attorney

2 Moreover, as the Examining Attorney has pointed out, applicant
has provided no evidentiary support for the argument that
registrant’s purchasers are sophisticated.
Ser. No. 75/672,371
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also argues that there is no other meaning to the term
“VISCO.” Accordingly, the Examining Attorney argues that
he has made out a prima facie case of primary surname
significance.
Applicant, on the other hand, argues that the surname
“Visco” is relatively rare because only 2,199 surnames were
found out of a total of 115 million, or one out of every
50,000 people. Applicant’s attorney indicates that in the
Chicago telephone directory, only 3 “Visco” surnames appear
(out of a population of 3 million). Moreover, applicant
maintains that the mark was adopted to connote “viscosity,”
an important attribute of lubricants. Applicant maintains
that no one associated with applicant has this surname,
that there is no recognized meaning of this term and that
the asserted mark does not have the “look and feel” of a
surname. Accordingly, it is applicant’s position that the
term VISCO will be seen as an arbitrary brand of
lubricants.
A mark is primarily merely a surname if its primary
significance to the purchasing public is that of a surname.
In re Kahan and Weisz Jewelry Manufacturing Corp., 508 F.2d
831, 184 USPQ 421 (CCPA 1975). See also In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652
(Fed. Cir. 1985).
Ser. No. 75/672,371
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We agree with the Examining Attorney that a prima
facie case of surname significance has been established by
the introduction of a listing of a not insignificant number
of persons having this surname in this country. Also,
applicant has admitted that the asserted mark has no
recognized meaning (although applicant does argue that it
suggests “viscosity”). Moreover, as the Examining Attorney
contends, there is no evidence to support applicant’s
argument that the mark has the connotation applicant
alleges, or would be so perceived. Accordingly, we believe
that applicant has failed to rebut the prima facie case of
surname significance.
Decision: The refusal of registration is affirmed on
both grounds.