Dollar Rent A Car, Inc.v.Interactive Financial Marketing Group, LLC

Trademark Trial and Appeal Board

Aug 17, 2007

No. 91165095 (T.T.A.B. Aug. 17, 2007)

Mailed:
August 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Dollar Rent A Car, Inc.

v.

Interactive Financial Marketing Group, LLC
_____

Opposition No. 91165095 to application
Serial No. 76591636 filed on May 11, 2004

and

Opposition No. 91165097 to application
Serial No. 76591637 filed on May 11, 2004
_____

Samuel D. Littlepage and Jeffrey S. Molinoff of Dickinson
Wright PLLC for Dollar Rent A Car, Inc.

Matthew T. Kelly of Lanciano & Associates, L.L.C. for
Interactive Financial Marketing Group, LLC.
______

Before Walters, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Applicant, Interactive Financial Marketing Group, LLC,
seeks registration on the Principal Register of the mark
DOLLARDEALER (Serial No. 76591636) and the mark DOLLARMAX
(Serial No. 76591637) both in standard character form and
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition Nos. 91165095 and 91165097
2
both for “automobile loan and financing services” in
International Class 36. In each application, applicant has
claimed a bona fide intention to use the mark in commerce.
Opposer, Dollar Rent A Car, Inc., filed notices of
opposition to registration of applicant's marks. In the
notices of opposition, opposer pleaded ownership of the
following four registrations:1
Registration No. 0948360, registered December 5,
1972 and renewed, for the mark DOLLAR (in typed or
standard character form) for “automobile vehicle
renting and leasing services” in International
Class 39;

Registration No. 1492628, registered June 14, 1988
and renewed, for the mark DOLLAR (in typed or
standard character form) for “automotive vehicle
renting and leasing services” in International
Class 39;2

Registration No. 2182755, registered August 18,
1998 (Section 8 accepted and Section 15
acknowledged), for the mark DOLLAR and Design,
i.e.,

for “retail and wholesale used automobile sales
outlet services” in International Class 42; and

1 Opposer erroneously states at p. 1 of its brief that opposer
pleaded ownership of Registration No. 2170106 for the mark DOLLAR
and Design in its notices of opposition. Registration
No. 2170106 was not pleaded, and we do not consider the pleadings
to have been amended to assert this registration pursuant to Fed.
R. Civ. P. 15(b). See TBMP § 314 (2d ed. rev. 2004).
2 The marks and the services are identical in Registration Nos.
0948360 and 1492628. There are differences in classification of
the services and in the dates of use.
Opposition Nos. 91165095 and 91165097
3
Registration No. 2245294, registered May 18, 1999
(Section 8 accepted and Section 15 acknowledged),
for the mark DOLLAR and Design, i.e.,

lined for the colors blue, red and yellow, for
“retail and wholesale used automobile sales outlet
services” in International Class 35.3

Opposer alleges that applicant's marks so closely resembles
opposer's “Dollar” marks for automobile related services as
to be likely to cause confusion, mistake or deception in
violation of Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d).
Applicant has answered the notices of opposition by
denying the salient allegations thereof. The Board
consolidated the oppositions in an order dated August 25,
2005.
The record consists of the pleadings; the files of the
involved applications; and, pursuant to applicant's two
notices of reliance, a status and title copy of two of
opposer's registrations (Registration Nos. 0948360 and
2170106)4 and copies of registration records from the
Office’s TESS database. Additionally, pursuant to a

3 Registration Nos. 2182755 and 2245294 identify identical
services but place them in different International Classes.
4 Opposer did not plead Registration No. 2170106 for the mark
DOLLAR (in typed of special character form) for “retail and
wholesale used automobile sales outlet services.”

Opposition Nos. 91165095 and 91165097
4
stipulation between the parties allowing for the filing of
testimony by declarations, opposer filed declarations with
exhibits of the following persons:
Jeffrey Cerefice, Vice President of Dollar Thrifty
Automotive Group, Inc. (“DTAG”), opposer's parent
corporation;

Jerry Carlson, Director of Licensees for DTAG;

Michelle DiCarlo, a paralegal with opposer's law
firm;

Fred Fleischner, Vice President of Advertising for
DTAG; and

Rick Manfred, co-owner and Vice President of
Cougar Investments, Inc. (“Cougar Investments”),
one of opposer’s licensees.

Opposer has filed its brief. Applicant did not submit
any trial testimony or other evidence during his testimony
period and has not filed a brief.
Priority
Opposer has submitted (i) a status and title copy of
pleaded Registration No. 0948390 for the mark DOLLAR showing
opposer as the owner of this subsisting registration; (ii) a
copy of pleaded Registration Nos. 2182755 and 2245294 both
for the mark DOLLAR and Design, as exhibits to Mr. Carlson’s
declaration; and (iii) a copy of pleaded Registration
No. 1492628 for the mark DOLLAR, as an exhibit to Mr.
Fleischner’s deposition. Mr. Carlson has testified that
opposer is the owner of Registration Nos. 2182755 and
2245294 and that they are valid; and Mr. Fleischner has
Opposition Nos. 91165095 and 91165097
5
testified that opposer registered the mark which is the
subject of Registration No. 1492628 and that the
registration is valid. In view of this evidence, opposer
has established priority, and Section 2(d) priority of use
is not an issue in this case. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
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 issue of likelihood of
confusion. In re E. I. du Pont 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 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
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We first consider the similarity and dissimilarity of
the marks, determining whether the marks are similar in
sound, appearance, meaning, and commercial impression. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
Opposition Nos. 91165095 and 91165097
6
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
While we must consider the marks in their entireties, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Where marks have both a word and a design, such as
in opposer's DOLLAR and Design marks, the general framework
for analyzing such marks is that the literal portion, i.e.,
DOLLAR, is accorded greater weight because purchasers will
use the words to request or refer to the services. See
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983); In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Applicant's marks are compound terms composed of the
terms DOLLAR and DEALER in one mark and DOLLAR and MAX in
the other mark. The wording of opposer's pleaded marks and
applicant's DOLLAR-formative marks differ only by
applicant's addition of DEALER or MAX to DOLLAR. DOLLAR is
the beginning portion of applicant's compound term marks and
is a word by itself that would be pronounced separately and
in the same manner as in opposer's marks. It also is the
name of U.S. currency, a term which the relevant purchasing
public, consisting of the public at large, articulates
Opposition Nos. 91165095 and 91165097
7
countless times during the course of a year. We therefore
find that DOLLAR is the term in applicant's marks that is
most likely to be impressed upon the minds of purchasers.
The meaning of DOLLAR does not change when DEALER and MAX
are added to DOLLAR. Also, due to the shared term DOLLAR,
purchasers already familiar with opposer's marks would
likely view applicant's marks as variations of opposer's
marks, especially DOLLARMAX, which has the connotation of
maximizing the value of one’s dollar.5 Thus, we find that
the marks are more similar in sound and meaning than
dissimilar.
With respect to the commercial impressions of the
marks, we find that because DOLLAR creates a separate
impression from DEALER or MAX, see discussion supra, DOLLAR
stands apart from DEALER or MAX and hence plays a
significant role in forming the commercial impressions of
applicant’s marks. As DOLLAR is the only wording in
opposer's marks, we find the commercial impressions of both
parties’ marks to be similar.

5 In this regard, we note that the record includes evidence that
opposer has used marks which include DOLLAR and other terms. See
opposer’s web page and samples of advertising which are exhibits
16 and 17 to Mr. Fleischner’s deposition respectively, showing
use of marks such as DOLLAR EXPRESS, DOLLAR 4 BUSINESS and SILVER
DOLLAR CLUB. See also Humana, Inc. v. Humanomics, Inc., 3 USPQ2d
1696, 1700 (TTAB 1987) (“The fact that Humana has itself used
variations of its house mark by adding matter to it, e.g., HUMANA
CARE and HUMANA CARE PLUS, increases the likelihood that
HUMANOMICS would be perceived as another variation.”)

Opposition Nos. 91165095 and 91165097
8
Further, with respect to appearance, applicant’s marks
may be depicted in a manner so that they are highly similar
to opposer’s marks. Because applicant’s marks are in typed
form, applicant may use any reasonable stylization of
lettering, including any stylization used by opposer. See,
e.g., Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d
1376, 170 USPQ 35 (CCPA 1971) (a mark registered in typed
format is not limited to the depiction thereof in any
special form); INB National Bank v. Metrohost Inc., 22
USPQ2d 1585, 1588 (TTAB 1992) (“[a]s the Phillips Petroleum
case makes clear, when [an] applicant seeks a typed or block
letter registration of its word mark, then the Board must
consider all reasonable manners in which … [the word mark]
could be depicted”). Applicant's marks may be depicted in a
manner that highlights DOLLAR or that minimizes any
impression created by DEALER or MAX. By emphasizing DOLLAR,
and/or by depicting DOLLAR in the same lettering style used
by opposer, applicant heightens the visual similarity
between applicant's marks and opposer's marks. We add too
that the design elements in those of opposer's marks which
have design elements are largely geometric in nature; their
contribution to the overall appearance of the marks is
minor.
In view of the foregoing, we find the marks, when
considered in their entireties, are similar in sound,
Opposition Nos. 91165095 and 91165097
9
meaning, appearance and commercial impression, and that the
du Pont factor regarding the similarity of the marks weighs
in favor of a likelihood of confusion.
Turning next to the du Pont factor regarding the
similarity or dissimilarity of the services, we consider
opposer's pleaded “retail and wholesale used automobile
sales outlet services” and “automotive vehicle renting and
leasing services,” and applicant's “automobile loan and
financing services.” In connection with opposer's used
automobile sales services, Mr. Carlson has explained that
opposer licenses the DOLLAR mark for use in connection with
five automobile dealerships in Seattle and Spokane,
Washington, Coer D’Alene, Idaho and Arlington and Bedford,
Texas. One of such dealerships is Cougar Investments, which
has been a licensee of opposer since 1987. Cougar
Investments sells used automobiles under the DOLLAR
trademark.
It is well settled that services need not be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
services are related in some manner or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
thereon, to a mistaken belief that they originate from or
Opposition Nos. 91165095 and 91165097
10
are in some way associated with the same producer or that
there is an association between the producers of the
services. See In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
Of course, many of the vehicles sold by opposer in its
used automobile sales outlets are financed by purchasers.
See Manfred Dec. ¶ 15 (“Automobiles, even used automobiles,
are expensive. Most customers do not pay cash. They
finance their purchases.”). Opposer's evidence establishes
that vehicle rental companies which sell used rental
vehicles also offer financing services in connection with
the sales of such vehicles. See Manfred Dec., ¶¶ 15 – 17;
Cerefice Dec. ¶ 15; and DiCarlo Declaration, and exhibits
attached thereto, especially:
thriftycarsales.com webpage - “We offer a wide
range of financing options to help with any
budget”;

hertzcarsales.com webpage - “Hertz offers
qualified buyers a choice of financing plans
through a variety of outside institutions”;

budgetcarsales.com webpage - “Does Budget Car
Sales finance the cars they sell? Some locations
offer on-the-spot financing. Some have national
lender agreements that give you the opportunity to
take advantage of some of the lowest rates in the
industry. Some locations also offer financing
options to those who have special credit needs or
need to re-establish a … credit rating”;

avisnj.com webpage - “On the premise [sic]
financing at competitive rates enables us to
Opposition Nos. 91165095 and 91165097
11
complete your purchase quickly with simple
language contracts”; and

enterprisecarsales.com webpage - “To make driving
home in an Enterprise vehicle as easy as possible,
we gladly accept trade-ins and help used car
buyers secure financing.”

Opposer's evidence also establishes that automobile
dealerships (which do not necessarily rent vehicles) also
offer financing for vehicles they sell. See webpages from
automobile dealerships submitted with DiCarlo Dec., i.e.,
exhibits 8 – 17 thereto. This evidence shows that the
services are such that they would be encountered by the same
persons in situations that would give rise, because of the
similarity of the marks used thereon, to a mistaken belief
that there is an association between the providers of the
services. Hence, opposer has established prima facie that
opposer's retail and wholesale used automobile sales outlet
services and automobile loan and financing services are
related. Furthermore, with regards to opposer's automotive
vehicle leasing services, because purchasers may consider
leasing a vehicle at the same time they consider whether to
purchase and finance a vehicle, we find that opposer's
automotive vehicle leasing services and automobile loan and
financing services are related. This du Pont factor too
weighs in opposer's favor in connection with such services.
We now consider the similarity or dissimilarity of the
parties’ trade channels. Inasmuch as there are no
Opposition Nos. 91165095 and 91165097
12
restrictions in either the applications or the
registrations, we must assume that the services travel in
all the normal channels of trade for such services.
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989) (“[M]oreover, since there are no
restrictions with respect to channels of trade in either
applicant's application or opposer's registrations, we must
assume that the respective products travel in all normal
channels of trade ….”). In view of the relationship noted
above between vehicle sales and financing, and vehicle
leasing and financing, and because there are no restrictions
in the parties’ identifications of services, we find that
the parties’ trade channels for such services overlap. The
du Pont factor regarding trade channels thus is resolved in
opposer’s favor.
With respect to the du Pont factor regarding the fame
of the prior mark, opposer contends on p. 16 of its brief
that its DOLLAR mark is “a very well-known (and perhaps
famous) mark” used in connection with its automobile related
services such as vehicle renting and leasing services and
automobile dealership services.
The fame of a plaintiff's mark, when fame is shown in
the record, is an important factor because a famous mark
deserves a broad scope of protection. A plaintiff is
obligated to clearly prove the fame of its mark. Blue Man
Opposition Nos. 91165095 and 91165097
13
Productions, Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005).
To the extent that opposer contends that its mark is famous,
we are not persuaded on this record. Opposer has offered no
evidence of its marketing expenditures or market share in
the automobile rental or leasing fields or in the automobile
sales field. It has not offered any sales figures regarding
its vehicle sales business, and only sells vehicles at five
locations. Thus, there is insufficient evidence upon which
to conclude that the mark is famous for either its rental,
leasing or sales businesses. The evidence does support,
however, that applicant's mark is a strong mark in
connection with automobile rentals. Mr. Fleischner has
stated in his declaration that opposer has suburban and on-
airport rental locations in most major cities in the United
States; that opposer has 105 locations in airports in the
United States; that opposer is the sixth largest rental car
company of the eight nationally branded rental car companies
in the United States; and that as of December 31, 2004,
opposer had generated rental revenues of over $870,000,000
from company operated stores alone. This factor therefore
weighs in opposer's favor to the extent that we consider
opposer's rental car services, and is otherwise neutral with
respect to opposer's remaining services which it has
asserted in the notices of opposition.
Opposition Nos. 91165095 and 91165097
14
Opposer, in addressing the du Pont factor regarding the
number and nature of similar marks in use on similar goods,
has pointed out in its brief that the “trial record is
devoid of any evidence of third-party uses of ‘Dollar’ marks
for any vehicle-related goods or services.” Brief at p. 17.
While it is typically an applicant in an opposition
proceeding that would make a showing of third-party use and
our applicant has not filed any testimony or other evidence
in this proceeding, applicant is correct – the record before
us does not show any third-party uses of DOLLAR. Because we
must base our decision on the record before us, we resolve
this factor in opposer's favor to the extent that the scope
of protection accorded to opposer's marks is not reduced.
Opposer has argued in connection with the du Pont
factor regarding the conditions under which sales are made
that “there is no evidence that potential purchasers of the
services rendered by the parties exercise an elevated level
of care.” Brief at p. 16. This is true, but there is no
evidence as to what the standard of care is for any of the
services involved in this proceeding. Of course, as opposer
has noted, automobiles tend to be expensive for many
consumers. However, there is no evidence that the cost of
the vehicle enters into the purchaser’s decision in deciding
which financing company to use as opposed to the terms and
rates that the financing company offers to the purchaser.
Opposition Nos. 91165095 and 91165097
15
Thus, we disagree with opposer that this factor weighs in
favor of a finding of likelihood of confusion but rather
find this factor to be neutral.
Thus, in view of the similarities between the marks,
the relationship between the services, the overlapping trade
channels, and our finding that opposer's mark is a strong
mark in connection with vehicle rental services, we conclude
that applicant's marks, when use in connection with the
services recited in applicant's applications, are likely to
cause confusion with opposer's pleaded marks used on
automotive vehicle renting and leasing services and retail
and wholesale used automobile sales outlet services.
DECISION: Both oppositions are sustained on the basis
of likelihood of confusion under Section 2(d) and
registration to applicant of both of its marks is refused.