Chrysler LLCv.Anthony S. Pimpo

Trademark Trial and Appeal Board

Jul 30, 2008

No. 91171962 (T.T.A.B. Jul. 30, 2008)

Mailed: 7/30/08

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Chrysler LLC
v.
Anthony S. Pimpo
_____

Opposition No. 91171962
to application Serial No. 78647106
filed on June 9, 2005
_____

Judy A. Powell, Theodore H. Davis, Jr., and Jonathan D.
Goins of Kilpatrick Stockton for Chrysler LLC.1

Anthony S. Pimpo, pro se.
______

Before Quinn, Rogers and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Anthony S. Pimpo filed an application to register the
mark RAMBLER for “automobiles and structural parts
therefor.”2
Chrysler LLC opposed registration under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground of

1 Present counsel did not make an appearance in this case until
the briefing stage after trial.
2 Application Serial No. 78647106, filed June 9, 2005, alleging a
bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91171962
2
priority and likelihood of confusion. Opposer alleged that
applicant’s mark, as applied to applicant’s goods, so
resembles opposer’s previously used mark RAMBLER for
automobiles, and parts and accessories for automobiles, and
other related merchandise, as to be likely to cause
confusion. Opposer also alleged, in pertinent part, that:
From 1950 through 1969, Opposer, through
its predecessors-in-interest, used the
RAMBLER mark to identify and distinguish
compact motor vehicles.

Upon information and belief, over
4,200,000 RAMBLER vehicles had been
manufactured and sold.

Since prior to the filing date of
Application Serial No. 78/647,106,
Opposer has licensed, and continues to
license, others to use the RAMBLER mark
for parts and accessories for motor
vehicles and other related merchandise.

A reservoir of goodwill in the RAMBLER
trademark exists that inures to Opposer
as a consequence of the large number of
RAMBLER vehicles manufactured and still
on the road.

A reservoir of goodwill in the RAMBLER
trademark exists that inures to Opposer
as evidenced by the existence of RAMBLER
enthusiast clubs.

Applicant, in his answer, stated “[i]t is correct that
AMC [American Motors Corporation, a predecessor of opposer]
did use this mark Rambler in commerce”; “the mark’s use by
AMC in commerce was not limited to just ‘compact’ motor
vehicles”; “I believe [over 4.2 million RAMBLER vehicles had
been manufactured and sold] to be a true statement”; “my
Opposition No. 91171962
3
Rambler mark may be similar in appearance and sound to a
long forsaken mark”; and “my mark may indeed resemble the
original mark, #71597895.”3 Nevertheless, applicant goes on
to essentially deny the allegation of likelihood of
confusion because his mark “can in no way cause confusion or
to mistake or deceive for [RAMBLER] has no direct
association with Opposer.” Applicant also alleged, in
pertinent part, that:
AMC itself obviously lost interest in
the use of mark #71597895 as evidenced
by its lack of use of the mark in
commerce since 1969, and although the
purchase of the aforementioned
corporation would entitle Opposer, as
its new owner to legal rights in all of
the company’s current trademarks,
Opposer displayed a clear lack of
interest in mark #71597895 by not
renewing the application at its time of
expiration, neither pursuing it any
further, therefore relinquishing rights
in any such name and allowing it to be
available to any interested party.

There truly may be a reservoir of
goodwill and negative feelings alike in
the Rambler trademark and there is truly
a portion of Rambler vehicles still on
the road today, however, this name has
never been personally associated with
Opposer in commerce, and if such
goodwill existed to the Opposer, they
would have concluded it valuable to them
and put it into usage years ago, which

3 This is a reference to the serial number of the underlying
application that subsequently matured into Reg. No. 586425 of the
mark RAMBLER (stylized) for “passenger automobiles and structural
parts therefor.” The registration issued on March 9, 1954 to
Nash-Kelvinator Corp., one of opposer’s predecessors in interest.
The registration expired on December 12, 1994 due to the failure
to file an affidavit of continued use.
Opposition No. 91171962
4
would have included the renewing of
trademark #71597895. Opposer’s lack of
doing such is the obvious evidence that
they themselves have considered it
worthless.

The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by opposer; and an excerpt from a printed
publication and portions of the discovery deposition, with
corresponding exhibits, of applicant, introduced by
opposer’s notice of reliance.4 Applicant submitted the
entirety of his discovery deposition and a copy of an email
to him from opposer’s former counsel, together with a paper
captioned “Testimony for Defendant” that reads like a brief.
Although a party may not rely on its own discovery
deposition (except in a very limited circumstance not
present herein), and an email is not proper subject matter
for introduction by a notice of reliance (moreover it
includes settlement proposals), opposer, in its brief,
stated, “[I]t is unclear as to whether Applicant’s
‘Testimony for Defendant’ pleading is the equivalent of what
should have been filed as Applicant’s Notice of Reliance;
nonetheless Opposer treats it as such given that Applicant
is pro se.” (Brief, p. 1, n. 1). Thus, we deem applicant’s
“testimony” to be stipulated into the record by opposer.

4 Opposer’s notice of reliance on certain admissions in
applicant’s answer to the notice of opposition is superfluous
inasmuch as the pleadings are automatically of record.
Opposition No. 91171962
5
The email discussing settlement, however, has not been
considered. Only opposer filed a brief at final hearing.5
The Parties
Opposer’s earliest predecessor-in-interest began using
the mark RAMBLER in connection with automobiles in 1900.
The last year of production of automobiles under the mark
RAMBLER was 1969. As admitted by applicant, opposer’s
predecessors-in-interest produced over 4.2 million
automobiles under the mark. It is undisputed that neither
opposer nor any predecessor manufactured an automobile or
other motor vehicle under the mark RAMBLER after the 1969
model year.
The discovery deposition of Mr. Pimpo sheds light on
his selection of the mark RAMBLER. Applicant’s application
originally listed “automobiles and automobile associated
goods; parts and memorabilia pertaining to this specific
brand.” As set forth earlier, the identification of goods
was later amended to “automobiles and structural parts
therefor.” Mr. Pimpo operates his own company that does
business in the car field. Applicant’s plans include a new
business called “Rambler Coachbuild” and, in this
connection, applicant has created computer-generated
pictures of a Rambler series car. To date, however,

5 In this regard, we have considered applicant’s remarks in his
“Testimony for Defendant” that, as noted above, reads much like a
brief at final hearing.
Opposition No. 91171962
6
applicant has not used the mark on an actual car. Mr. Pimpo
acknowledged that he was aware of AMC’s use of the mark back
in the 1960s. Mr. Pimpo also admitted that he has seen
RAMBLER cars on the road, and is aware of car clubs
dedicated to RAMBLER cars. Applicant testified that he
chose the mark because he thought his son would like it, and
it is an “All American” sounding name. (Pimpo Discovery
Dep., pp. 25-26).
Opposer asked Mr. Pimpo about his other attempts to
register marks previously used by automobile manufacturers,
including opposer. These marks include ASPEN (previously
used by opposer) and STINGRAY (previously used by General
Motors). With respect to the ASPEN mark (Pimpo Dep., p. 34,
Ex. No. 4), Mr. Pimpo indicated that “the reason why we
picked ‘Aspen’ and ‘Rambler’ is we thought that there’s been
enough time that has gone by that people would not associate
our product with something in the past that wasn’t
necessarily very successful.” (Pimpo Dep., p. 50). Mr.
Pimpo went on to indicate that ASPEN was selected to suggest
a connection with Aspen, Colorado--“think of people who have
a desire to do things luxuriously, maybe people who have
money.” (Pimpo Dep., p. 61). The STINGRAY mark was
selected, according to Mr. Pimpo, because one of his sons
“likes the way it sounds.” (Pimpo Dep., pp. 37-38, Ex. No.
5).
Opposition No. 91171962
7
Standing
A party has standing to oppose within the meaning of
Section 13 of the Trademark Act if that party can
demonstrate a “real interest” in the proceeding. Ritchie v.
Simpson, 170 F.3d 1092, 41 USPQ2d 1859 (Fed. Cir. 1996). In
its pleading, opposer has alleged that it is the owner of
the mark RAMBLER that it continues to license to others.
Opposer introduced testimony and exhibits showing that its
predecessors used the mark RAMBLER for automobiles until
1969, and that opposer presently licenses the mark RAMBLER.
Thus, the record establishes that opposer has a personal
interest in this proceeding beyond that of the general
public and, therefore, opposer has standing.
Priority
In order to prevail on the ground of likelihood of
confusion, opposer must also prove, by a preponderance of
the evidence, that it has priority of use.
Inasmuch as applicant did not take testimony or submit
any other evidence, his priority date is determined by his
application. In such a situation, applicant can rely on the
filing date of his involved application. In this case, the
filing date is June 9, 2005. Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
1991). Thus, applicant’s priority date is June 9, 2005.
Opposition No. 91171962
8
Insofar as opposer’s priority is concerned, its
Registration No. 586425 of the mark RAMBLER for automobiles
and structural parts therefor expired on December 12, 1994.
Because opposer is not claiming ownership of a valid and
subsisting registration, it must show, by a preponderance of
the evidence, that it has common law rights prior to
applicant’s priority date. Hydro-Dynamics Inc. v. George
Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773
(Fed. Cir. 1987).
Opposer’s predecessors produced the RAMBLER automobile
between 1900 and 1969. To state the obvious, if opposer had
continuously used the mark since that time, opposer would
have priority of use for automobiles. It is undisputed,
however, that neither opposer nor its predecessors produced
an automobile under the RAMBLER mark since the 1969 model
year.
This almost forty-year period of nonuse for automobiles
raises the issue of whether opposer has abandoned its mark
RAMBLER. The Trademark Act specifically states that
“[n]onuse for 3 consecutive years shall be prima facie
evidence of abandonment.” 15 U.S.C. §1127. The statutory
presumption of abandonment applies equally to a registered
mark and “to a party’s unregistered common-law mark.”
Miller Brewing Company v. Oland’s Breweries [1971] Limited,
548 F.2d 349, 192 USPQ 266, 267 (CCPA 1976). Evidence of
Opposition No. 91171962
9
nonuse of the mark for three consecutive years constitutes a
prima facie showing of abandonment and shifts the burden to
the party contesting the abandonment to produce either
evidence to disprove the underlying facts showing three
years of nonuse and triggering the presumption of
abandonment, or evidence of an intent to resume use to
disprove the presumed fact of no intent to resume use.
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575,
14 USPQ2d 1390, 1393 (Fed. Cir. 1990); and Rivard v.
Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998)
[“This presumption shifts the burden to the registrant to
produce evidence that he either used the mark during the
statutory period or intended to resume or commence use.”].
Opposer has not shown that it or its predecessors ever
used the mark on automobiles during the nearly forty-year
period since the last RAMBLER automobile was produced.
Moreover, the record is devoid of any testimony or other
evidence relating to plans to resume use of the mark RAMBLER
on automobiles. So as to be clear on this point, there is
not a single statement or document indicating that opposer
or any of its predecessors ever had an intention to resume
use of the mark on automobiles; there is not even a bare
assertion of possible future use on automobiles (which, in
any event, would not be enough to preserve rights in a
mark). “Use” of a mark means “the bona fide use of such
Opposition No. 91171962
10
mark made in the ordinary course of trade, and not made
merely to reserve a right in the mark.” 15 U.S.C. §1127.
Merely because a party used a mark a long time ago and it
could use the mark in the future is not enough to avoid
abandonment. Silverman v. CBS Inc., 870 F.2d 40, 9 USPQ2d
1778 (2d Cir. 1989).
Opposer contends that there is residual goodwill in the
mark for automobiles, and even goes so far as to argue that
“[o]pposer’s extensive length of use, sales, and advertising
of numerous product lines bearing the RAMBLER mark on or in
connection with automobiles, accessories, structural parts
and merchandise spanning over 100 years should leave little
doubt that it has become a very well-known mark.” (Brief,
p. 16). In this connection opposer points to an earlier
Board decision involving the same mark as the one at issue
here. See American Motors Corp. v. Action-Age, Inc., 178
USPQ 377 (TTAB 1973). In that case, the Board found that
the mark RAMBLER was a very well known mark in the
automotive industry, recounting the number of RAMBLER
automobiles still on the road in the early 1970s, and AMC’s
continued sales of replacement parts. However, that
decision issued thirty-five years ago, and since then
neither opposer nor any predecessor used the mark RAMBLER
for automobiles.
Opposition No. 91171962
11
In attempting to avoid a finding of abandonment of its
mark for automobiles opposer points to the reintroduction of
“heritage” brands in the automotive industry, and the
existence of several car enthusiast clubs dedicated to the
RAMBLER automobile.
As to the first point, to reiterate, opposer’s
witnesses did not testify about any plans, specific or
speculative, to reintroduce the RAMBLER mark on automobiles.
Moreover, the Board has recently discussed the heritage
brand issue:
The fact that brands in the automobile
industry are sometimes re-introduced
does not exempt the industry in toto
from the normal statutory presumption
that trademarks can become abandoned and
that trademark owners must have an
intent to resume use and an explanation
for any nonuse.

General Motors Corp. v. Aristide & Co., Antiquaire de
Marques, 87 USPQ2d 1179, 1183 (TTAB 2008).
Opposer introduced the testimony of Donna Berry,
opposer’s senior staff trademark attorney, and of Debra
Joester, president and chief executive officer of Joester-
Loria Group, a licensing agency representing various
clients, including opposer. They testified that opposer has
never intended not to use the RAMBLER mark in the future.
While Ms. Berry and Ms. Joester testified that opposer
did not intend to abandon the RAMBLER mark for automobiles,
this testimony does not by itself show that opposer did not
Opposition No. 91171962
12
abandon the mark for automobiles long prior to the filing
date of applicant’s application. Even “[a] registrant’s
proclamations of his intent to resume or commence use in
United States commerce during the period of nonuse are
awarded little, if any, weight.” Rivard v. Linville, 45
USPQ2d at 1376. In this case, opposer has not even
proclaimed an intent to resume use, but only denies an
intent to abandon the mark for automobiles. The record,
however, is to the contrary and is entirely devoid of any
evidence convincing us that, after almost a forty-year
hiatus, opposer has any serious intent to reintroduce a
RAMBLER automobile that was last produced in 1969.
With respect to the second point, Ms. Berry opined that
“there’s a tremendous amount of residual goodwill from our
production of these [RAMBLER] vehicles.” (Berry Dep., p.
45). In this connection, she pointed to the “vehicle
enthusiast population that to this day maintains and
restores Rambler vehicles.” The record also includes the
testimony of Michelle DeCarlo, a trademark litigation
paralegal for the law firm formerly representing opposer in
this proceeding. Ms. DeCarlo was asked to conduct a search
of the Internet for references to the mark RAMBLER in an
effort “[t]o show that the Rambler mark is still in use and
it’s still in the public eye.” (DeCarlo Dep., p. 7). The
exhibits to Ms. DeCarlo’s testimony include printouts from
Opposition No. 91171962
13
the National AMC Rambler Car Club (www.amcrc.com); Galvin’s
AMC Rambler Parts (www.ramblerparts.com); and AMC Rambler
Connection (www.amcconnection.com), to name a few. The
record shows the websites of several other car enthusiasts’
clubs dedicated to the RAMBLER automobile.
The simple fact that there are collectors of an item,
or that clubs exist for enthusiasts of a certain item (in
this case, RAMBLER automobiles) does not, by itself, defeat
the statutory presumption of abandonment by the mark’s owner
after almost forty years of nonuse in the ordinary course of
trade. General Motors Corp. v. Aristide & Co., Antiquaire
de Marques, 87 USPQ2d at 1183.
We also are not convinced that Encyclopedia of American
Cars, A Comprehensive History of American Automakers from
1930 to Today (2006) shows residual goodwill in the mark.
Opposer relied upon an excerpt from this book “to show how
Opposer’s mark RAMBLER is perceived by members of the public
and to show that the mark is still in the public eye.”
Although the article chronicles the life of the RAMBLER
automobile, it falls far short of showing the state of mind
of the public and the degree to which the public still
recognizes the mark as a source indicator for automobiles.
Opposer operates a vehicle museum on its campus in
Auburn Hills, Michigan; and according to Ms. Berry, it
opened “seven or eight years” ago. The museum includes a
Opposition No. 91171962
14
1902 RAMBLER vehicle on display. About 50,000 patrons visit
the museum each year. Contrary to opposer’s arguments,
these facts hardly establish continued use sufficient to
fend off a finding of abandonment.
Simply put, we find that the totality of the record
does not support a finding that there is sufficient residual
goodwill in the mark RAMBLER for automobiles so as to avoid
a finding of abandonment. A finding of abandonment cannot
be avoided where the asserted residual goodwill is generated
through subsequent sales of a product by distributors and
retailers. Societe des Produits Marnier Lapostolle v.
Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1244 n. 5 (TTAB
1989).6 Nonetheless, opposer urges that the licenses it has
granted (see infra) evidence residual goodwill inasmuch as
each license shows an entity is willing to pay for the right
to use the mark. We are not inclined to reach that
conclusion, however, without more evidence. It may very
well be that the licensees were willing to pay an amount of
consideration (in this case, the amount is unknown) simply

6 We add that we do not find that the licensed products are so
closely related to opposer’s automobiles such that sales of these
products preclude a finding of abandonment of the mark for
automobiles. See generally J.T. McCarthy, McCarthy on Trademarks
and Unfair Competition, §17:23 (4th ed. 2008). Stated
differently, the licensed uses, begun some twenty-five years
after cessation of production of RAMBLER automobiles, do not
evidence an intent to resume use on automobiles. This finding is
to be contrasted with our later finding herein that the licensed
products are sufficiently related to applicant’s identified goods
for purposes of the likelihood of confusion analysis.
Opposition No. 91171962
15
as a way of avoiding being sued.
In finding abandonment we have taken into account the
nature of opposer’s goods, automobiles. We recognize that
automobiles generally are a long-lasting product, and that
the goodwill value of a mark used for automobiles may
persist long after production of automobiles with that mark
has ceased. See Emergency One, Inc. v. American FireEagle,
Ltd., 228 F.3d 531, 56 USPQ2d 1343, 1348 (4th Cir. 2000)
[dealing with fire engines]; Ferrari S.p.A. Escercizio
Fabriche Automobili e Corse v. Roberts, 944 F.2d 1235, 20
USPQ2d 1001 (6th Cir. 1991); and Ferrari S.p.A. Esercizio
Fabriche Automobilie e Corse v. McBurnie, 11 USPQ2d 1843
(S.D. Cal. 1989). The time lapse in the present case,
however, far exceeds the years of nonuse in the cited cases.
Although opposer pleaded that there are a “large number” of
RAMBLER vehicles “still on the road,” no specific number is
given. Here, the period of almost four decades of nonuse on
automobiles presents a persuasive case for abandonment. See
L. J.G. Stickley, Inc. v. Canal Dover Furniture Co., 79 F.3d
258, 38 USPQ2d 1202 (2d Cir. 1996) [sixty years of nonuse
resulted in abandonment].
Opposer’s nonuse of the RAMBLER mark for automobiles
for almost forty years constitutes a prima facie showing of
abandonment. Furthermore, opposer has not introduced
Opposition No. 91171962
16
evidence of an intent to resume use to disprove the
presumption of no intent to resume use.
In view of our finding of abandonment and the absence
of sufficient residual goodwill in the RAMBLER mark for
automobiles, we now look to opposer’s licensing of its mark
beginning in 1995 to see if opposer has established a new
priority date based on use of the mark for various licensed
products. AmBRIT Inc. v. Kraft Inc., 812 F.2d 1531, 1
USPQ2d 1161, 1170 (11th Cir. 1986) [a subsequent use does
not retroactively cure a past abandonment].
Licensing activity may indicate that a trademark owner
has not abandoned its mark because it intends to resume use.
See Sands, Taylor & Wood Co. v. The Quaker Oats Co., 978
F.2d 947, 24 USPQ2d 1001 (7th Cir. 1992). In the present
case, however, we have found that opposer abandoned its mark
long before it began licensing its mark. Thus, the question
now is whether its licensing evidence has established a new
priority date for opposer and, if so, for what specific
goods. See Stromgren Supports Inc. v. Bike Athletic Co., 43
USPQ2d 1100, 1112 (TTAB 1997) [“[T]hese later efforts, had
actual use ever commenced, would represent a new and
separate use which cannot serve to cure the abandonment.”].
According to Ms. Berry, she is “personally involved in
the restoration parts and merchandise licensing program that
uses the Rambler trademark.” She testified that opposer has
Opposition No. 91171962
17
a licensing program for its marks and that “the fame of our
marks lend themselves to leveraging of the trademarks for
use on products outside of the automotive industry
directly.” (Berry Dep., p. 10). Ms. Berry refers to the
mark RAMBLER as a “heritage mark,” and further that opposer
has “an active restoration parts program and a heritage mark
licensing program.” (Berry Dep., p. 11). She testified
that opposer uses the mark on a “variety of automotive-
related parts and accessories, such as batteries, decal
strips, restoration manuals and service specification
documents, a wide variety of things.” (Berry Dep., p. 14).
Ms. Berry testified that opposer has not stopped use of
the mark at any time in the past ten years; that it is
currently using the mark; and that opposer has never
intended to discontinue use of the Rambler mark. (Berry
Dep., p. 17). Ms. Berry gave the following testimony:
Has Daimler Chrysler either directly or
through its predecessors ever licensed
the Rambler mark?

Yes.

When is the earliest year that you’re
aware of that DaimlerChrysler licensed
the Rambler mark?

Well, the database that we currently
maintain shows the earliest license to
be with a July 1995 effective date. I
believe that was with the Franklin Mint
Corporation.

Opposition No. 91171962
18
Has DaimlerChrysler obtained revenues
through use of the Rambler mark during
the past ten years?

Yes.

And how has it obtained that revenue?

Primarily through royalties obtained
from our authorized Rambler trademark
licensees.

Any parts sales?

Yes. (Berry Dep., pp. 18-19)

A significant exhibit to Ms. Berry’s testimony is Exhibit
No. 2, “a spreadsheet compiling trademark licensees for the
Rambler trademark past and present from the database that we
currently maintain. So, the records in the database with
respect to the Rambler trademark only go back as far as
1995.” (Berry Dep., pp. 20-21). Ms. Berry identifies the
products listed:
Automobile batteries, clothing,
collector cards, lapel pins; the little
popular chrome steel air filter wall
clocks; automotive decals and stripes;
video games. We have several toy
replica licensees; key rings, calendars,
cell phone cases, MP3 cases, tote bags,
tapestry throws, decorative pillows,
reproduction owners manuals, parts books
and shop manuals, technical manuals;
reproduction engine designation decals;
photographs, paper weights, playing
cards, license plate frames, nostalgic
signage. (Berry Dep., p. 22)

Ms. Berry testified that “all of our license agreements
contractually obligate our licensees to submit to us for
approval prior to production a certain number of samples of
Opposition No. 91171962
19
every product that they intend to produce, and it’s only
after we reviewed and approved the quality and ensure that
the market [sic] is depicted correctly that our licensees
are allowed to produce and sell the merchandise.” (Berry
Dep., p. 34).
Ms. Joester describes her firm as “a full service
licensing company,” and she testified about her firm’s
efforts on behalf of opposer. More specifically, Ms.
Joester identified the firm’s work: “We develop and execute
licensing strategies for our clients, so we will start with
strategic planning for their marks and execute those
programs, including negotiating terms of agreements,
developing the contracts, reviewing product for quality
control and appropriateness, and managing the retail
distribution and revenue collection.” (Joester Dep., p. 5).
Ms. Joester testified that “[a]ll royalty statements are
kept in-house as well. So we do have a history of sales and
what product is actually marketed.” (Joester Dep., p. 8).
Ms. Joester began negotiating licenses for the RAMBLER mark
around 1995. Ms. Joester indicated that at least one of the
licenses has been ongoing for the entire period 1995-2007.
Do you have personal knowledge of the
use of the Rambler trademark?

Yes.

How do you have that knowledge?

Opposition No. 91171962
20
I see product that has been submitted by
licensees from time to time and the
samples internally and we have line
reviews.

Have revenues been generated from
DaimlerChrysler’s licenses for the mark
Rambler during the past 10 years?

Yes.

Continuously, would you say?

Yes. (Joester Dep., p. 14)

Ms. Joester identified a particular trend in the licensing
industry over the past 10 years:
One of the most important trends of the
last several years has certainly been
the return of retro or heritage
intellectual property, and that includes
vehicles, muscle cars and other vehicles
from the ‘50s, ‘60s and ‘70s. (Joester
Dep., p. 17)

In this connection Ms. Joester further testified:
How would you define a retro or heritage
mark?

It is a mark that existed sometime 20,
30 years ago, had built an affinity and
emotional connection with the consumer
as a result of the original product that
was in the marketplace, and continues to
have nostalgia appeal with consumers who
are still interested in acquiring
product that is built around the mark’s
core values and replicates the markets
and the mark itself.

Would you say it’s kind of a resurgence
in a pre-existing mark, resurgence in
interest?

In interest and in consumer demand for
product that reflects those nostalgic
memories in many cases.
Opposition No. 91171962
21

Is Rambler a retro or heritage mark?

Yes, we actually manage Rambler as part
of the retro/heritage marks that we
proactively develop licenses for
DaimlerChrysler. (Joester Dep., p. 18)

During the course of her testimony Ms. Joester testified
about some of the uses already identified earlier in this
opinion, as for example, calendars, key rings and toy
replicas. Ms. Joester also testified about another company
that produces die-cast replica vehicles and, in this
connection, she identified a website of a collector shown to
be reselling these replicas. (www.jlcollector.com).
Ms. Joester identified licenses for products that “may
be in the product development stage or pre-product
development stage now, so [the licensees] have not produced
product that’s been shipped to market.” (Joester Dep., p.
37). She specifically identified fabrics, lighters,
carrying bags and another manufacturer of toy replicas.
(Joester Dep., pp. 37-38). There is no further testimony or
evidence to show that these products have been manufactured
and offered for sale. Mere entry into licensing
arrangements is not by itself use of the mark. Use of the
mark on the licensed product must occur for the licensed use
to inure to the licensor’s benefit. Accordingly, we accord
no rights in the mark for these products that are merely in
development.
Opposition No. 91171962
22
We now turn to determine the specific products for
which opposer has established licensed use for purposes of
priority.
Opposer first would have us conclude that it has rights
in the mark RAMBLER for automobile parts. Ms. Berry
testified as follows:
[I]n connection with these restoration
vehicle enthusiasts, we maintain a parts
locator database that all of our dealers
and our dealer network can access. So,
for example, if a consumer is looking
for, I don’t know, an emergency brake
cable or a windshield wiper blade or
something that was authentic to the
Rambler, they would go to our dealer.
The dealer would access this database
that DaimlerChrysler maintains to
determine how to get his hands on one of
those parts from someone else within the
dealer database if that dealer himself
did not already have it in stock.

So there are dealers that are currently
selling the Rambler parts?

Yes.

Automotive parts?

Yes. (Berry Dep, p. 15)

Notwithstanding this testimony, the record is
completely devoid of any evidence that opposer directly
sells automobile parts under the RAMBLER mark. Although
opposer may sell fungible parts, such as windshield wipers,
that fit several different models of cars, including RAMBLER
automobiles still on the road, there is no indication that
these parts are sold under the RAMBLER mark. The record
Opposition No. 91171962
23
shows that there are various third-party suppliers in the
trade that stock parts for RAMBLER automobiles. These third
parties, however, are not related to opposer, and there is
not even a hint that these suppliers are licensees of
opposer such that any use of the mark would inure to
opposer’s benefit. Opposer failed to introduce any pictures
of parts bearing the mark, or any labels or packaging
bearing the mark. Accordingly, we see no basis upon which
to accord any rights to opposer in the mark RAMBLER for
automobile parts.
Opposer contends that it has rights in metal or die
cast replica model toy vehicles. Exhibit 13 comprises two
catalogs of one of opposer’s licensees, Franklin Mint. The
most recent license runs until 11/30/09, covering metal or
die cast replica model toy vehicles. The toy vehicles are
produced in a 1:43 scale, approximately 4.5 inches in size.
These replicas are displayed in the catalog as a set along
with other “Cars of the 60s Collection” or “The Classic Cars
of the Fifties.”
We find that the testimony and evidence fall short of
establishing rights in toy vehicles. It is telling, we
think, that opposer needed to resort to the use of Post-it
brand notes on catalog pages to identify a RAMBLER model
shown among the other toy replicas. In each instance, the
note, presumably prepared by counsel, has a printed arrow
Opposition No. 91171962
24
pointing to the toy RAMBLER replica. Nowhere is the mark
RAMBLER displayed and, given the small size of the toys,
anyone other than a tried and true car enthusiast would be
hard pressed to identify the particular replica that is the
RAMBLER model. While the catalog page specifically lists
some of the replicas as licensed products of General Motors,
Chevrolet or Ford, no mention is made of opposer or any
predecessor, let alone the RAMBLER mark itself.
Based on the record before us, we find that opposer has
not established rights in RAMBLER for the toy replicas. The
mark is conspicuously absent from any of the sales
literature, and the mark does not appear to be shown on any
of these very small toy replicas.
Also included in the record are printouts from a
private individual’s listing on eBay. (www.ebay.com). This
individual was attempting to resell the Franklin Mint
collection of cars, and the seller specifically mentioned
the various models of cars in the set, including the RAMBLER
model. Ms. Joester testified that Franklin Mint tends to
produce collectable offerings in cycles, and it is likely
that this collection has been “retired,” thereby presumably
creating a market for the product on eBay. (Joester Dep.,
p. 32). While one of the close-up and enlarged photographs
of the very small toy replicas appears to show the RAMBLER
mark, the photograph is not particularly clear. Moreover,
Opposition No. 91171962
25
given that this toy replica is being offered for sale by a
third party, we are not inclined to accord any value to this
use as inuring to opposer’s benefit. See Societe des
Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10
USPQ2d at 1244, n. 5.
There is testimony and evidence regarding use of
RAMBLER on decals for placement on automobiles, presumably
RAMBLER models that are still on the road. The evidence
includes a printout from a website of Graphic Express that
shows for sale a RAMBLER decal. (Berry Dep., Ex. No. 3).
This entity is listed as one of opposer’s licensees in
Exhibit No. 2, and the most recent term of the license is
shown as 1/1/05 to 12/31/07.7
Exhibit 4 is a 2007 calendar captioned “American Muscle
Cars.” Included in the calendar, as the pictured car for
May, is a 1969 AMC SC/Rambler (listing production as 1,512
units). The back of the calendar indicates the licensing
stamps of “Chrysler Licensed Product,” as well as of General
Motors and Ford. Ms. Berry indicates that the first
calendar listing a RAMBLER automobile was dated 2001.
(Berry Dep., pp. 25-27). Exhibit 2 shows the licensing term
running until 12/31/08.
Exhibit 5 is a licensing agreement with a third-party

7 Ms. Berry and Ms. Joester testified in June, 2007, that is,
prior to the expiration of this license.
Opposition No. 91171962
26
to produce a variety of decals and manuals. The agreement
runs through 12/31/09. Ms. Berry indicated that the
products, continuously available since 1998, are
reproduction vehicle decals, sales literature, stripe kits,
specification sheets and owner’s manuals, all dealing with
the RAMBLER mark. (Berry Dep. pp. 27-29).
Exhibit 10 is a key ring displaying the RAMBLER mark;
the most recent license term ran from 4/1/04 to 12/31/07.
Opposer, in order to establish priority, need only show
that it is using the mark in the United States prior to
applicant’s priority date. First Niagara Insurance Brokers
Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81
USPQ2d 1375, 1378 (Fed. Cir. 207). Although it is a bit
surprising that opposer did not offer any testimony or
evidence regarding the extent of the sales of licensed
products (e.g., sales revenues, sales volume in units),
applicant neither attacked nor questioned this aspect of
opposer’s licensed use. That is to say, applicant has not
argued that the licensed uses have been token or de minimis.
Thus, we see no reason to question, sua sponte, this aspect
of the licensed uses.
Oral testimony, even of a single witness, if
“sufficiently probative,” may be sufficient to prove
priority. Powermatics, Inc. v. Glebe Roofing Products Co.,
341 F.2d 127, 144 USPQ 430 (CCPA 1965); and 4U Co. of
Opposition No. 91171962
27
America, Inc. v. Naas Foods, Inc., 175 USPQ 251 (TTAB 1972).
In the present case, the testimony of Ms. Berry and Ms.
Joester is not “characterized by contradictions,
inconsistencies and indefiniteness,” but rather carries with
it “conviction of its accuracy and applicability.” B.R.
Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232 (CCPA
1945). Further, the oral testimony is buttressed by
corroborating evidence, most significantly, by the actual
licensed products themselves. See Elder Mfg. Co. v.
International Shoe Co., 194 F.2d 114, 92 USPQ 330 (CCPA
1952).
At this point, we take into consideration the Federal
Circuit’s admonition when we are determining dates of use
for priority purposes:
The TTAB concluded that each piece of
evidence individually failed to
establish prior use. However, whether a
particular piece of evidence by itself
establishes prior use is not necessarily
dispositive as to whether a party has
established prior use by a
preponderance. Rather, one should look
at the evidence as a whole, as if each
piece of evidence were part of a puzzle
which, when fitted together, establishes
prior use. The TTAB failed to
appreciate this. Instead, the TTAB
dissected the evidence to the point that
it refused to recognize, or at least it
overlooked, the clear interrelationships
existing between the several pieces of
evidence submitted. When each piece of
evidence is considered in light of the
rest of the evidence, rather than
individually, the evidence as a whole
Opposition No. 91171962
28
establishes by a preponderance that West
used the “FAST EDDIE’S” mark prior to
Jet’s admitted first use of the mark.

West Florida Seafood Inc. v. Jet Restaurants, 31 F.3d 1122,
31 USPQ2d 1660, 1663 (Fed. Cir. 1994).
Similarly, when we consider all the pieces of the
puzzle relating to opposer’s licensed use of its mark
RAMBLER on certain products, we conclude that opposer has
established a priority date earlier than the filing date of
the involved application. That is not to say, however, that
opposer has established priority on all of the items
mentioned by the witnesses, at least not on the present
record. Ms. Berry and Ms. Joester mentioned several
additional licensed items, but they did not offer the
products themselves or any specifics about such uses (e.g.,
on batteries, clothing and video games). Although Exhibit
No. 2 lists licenses for those products, opposer failed to
present any evidence that its licensees actually
manufactured such products, let alone that its licensees
actually sold such goods with the RAMBLER mark appearing
thereon. To reiterate, licensing is not by itself use of
the mark. Nonetheless, opposer’s credible testimony,
coupled with corroborating evidence, satisfies its burden of
proof in showing, by a preponderance of the evidence, that
it has priority of use, at the very least with respect to
Opposition No. 91171962
29
key rings, calendars, decals, specification sheets and
owner’s manuals, all relating to RAMBLER automobiles. The
testimony regarding the licensed uses, coupled with the
production of the licensed goods themselves, form critical
distinctions between this record and the one in General
Motors Corp. v. Aristide & Co., Antiquaire de Marques.
Thus, we will decide the likelihood of confusion issue
on the basis of these goods on which opposer established
rights prior to the filing date of the involved application.
Likelihood of Confusion
We accordingly turn to the issue of likelihood of
confusion. 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 and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). Opposer must establish that there is a likelihood of
confusion by a preponderance of the evidence.
Turning first to the marks in this proceeding, they are
identical in sound, appearance, meaning and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Opposition No. 91171962
30
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). This factor heavily favors opposer.
With respect to the goods, it is well established that
the goods of the parties need not be similar 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 of the parties 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 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 & Telephone
Corp., 197 USPQ 910, 911 (TTAB 1978). 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 comparing the goods, we initially note that where
identical marks are involved, as is the case here, the
degree of similarity between the parties’ goods that is
required to support a finding of likelihood of confusion
declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
Opposition No. 91171962
31
1687, 1688-1689 (Fed. Cir. 1993); Time Warner Entertainment
Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812 (TTAB 2001).
Based on the particular set of facts in this case, we
find that opposer’s key rings, calendars, decals,
specification sheets and owner’s manuals, all being
collateral products licensed in connection with the RAMBLER
mark, formerly used by opposer’s predecessors for
automobiles, are sufficiently related to applicant’s
automobiles so that consumers would ascribe a single source
to the products. See Tiffany & Co. v. Classic Motor
Carriages, 10 USPQ2d 1835 (TTAB 1989).
It is common knowledge that items such as key rings,
decals and calendars are widely used as promotional items
for a diverse range of goods and services, including
automobiles. See L.C. Licensing, Inc. v. Cary Berman, 86
USPQ2d 1883, 1889 (TTAB 2008) [“It is common knowledge, and
a fact of which we can take judicial notice, that the
licensing of commercial trademarks on ‘collateral products’
has become a part of everyday life.”]. See also Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 n. 3 (CCPA 1981) [“‘collateral product’
use is a matter of textbook discussion”], aff’g, 204 USPQ
396 (TTAB 1979) [collateral product use “has become a part
of everyday life which we cannot ignore”]; and Turner
Opposition No. 91171962
32
Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1945-46 (TTAB
1996).
We find that the du Pont factors, on balance, weigh in
favor of a finding of likelihood of confusion.
Lastly, to the extent that there may be any doubt on
our finding of likelihood of confusion, we resolve that
doubt, as we must, in favor of opposer as the prior user.
See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
In reaching our conclusion, we are cognizant of the
unusual set of facts surrounding opposer’s use/nonuse of the
mark RAMBLER. We have determined that the record falls
short of establishing residual goodwill in the mark RAMBLER
for automobiles sufficient to avoid a finding of abandonment
of the mark for such goods. Nonetheless, there is
undeniably present some degree of goodwill in the mark, so
that if applicant were to use the mark on automobiles, then
confusion would be likely among consumers familiar with
opposer’s various licensed products, when it might not be
absent such goodwill. In the present case, we cannot ignore
the fact that purchasers of opposer’s licensed goods or
applicant’s automobile may be buying such goods because they
know of the earlier RAMBLER automobile, and these purchasers
would view both types of goods as originating from the same
Opposition No. 91171962
33
source, namely the manufacturer of the old line of RAMBLER
automobiles.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.