Ed Tucker Distributor, Inc.

Trademark Trial and Appeal Board

Jan 4, 2000

No. 75120143 (T.T.A.B. Jan. 4, 2000)

Paper No. 18
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 4, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ed Tucker Distributor, Inc.
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Serial No. 75/120,143
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Kay Lyn Schwartz of Gardere & Wynne for applicant.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Hanak, Quinn and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Ed Tucker
Distributor, Inc., doing business as Tucker-Rocky
Distributing, to register the mark BIKE IN A BOX for
“rolling chassis for a custom motorcycle sold in a kit of
prepackaged parts.”1

1 Application Serial No. 75/120,143, filed June 17, 1996,
alleging a bona fide intention to use the mark in commerce.
Ser No. 75/120,143
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the previously registered mark BRAKE-
IN-A-BOX for “brake structural and replacement parts”2 as to
be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant argues that the marks are different and that
the goods sold thereunder are different and travel in
distinct trade channels. In addition, applicant contends
that the cited mark is weak, that the relevant consumers of
applicant’s and registrant’s goods are sophisticated, and
that there has not been any actual confusion between the
involved marks. In urging that the refusal be reversed,
applicant has submitted a computerized trademark search
report and three declarations.
The Examining Attorney maintains that the marks are
similar and that the goods, as identified in the
registration and application which include no restrictions,
are related. In connection with his argument bearing on

2 Registration No. 1,003,212, issued January 28, 1975; renewed.
Ser No. 75/120,143
3
the relatedness of the goods, the Examining Attorney has
submitted third-party registrations to show that the types
of goods involved herein may be sold by the same party
under the same mark.
Our determination under Section 2(d) is based on an
analysis of all of the probative 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, two key considerations are the
similarities between the marks and the similarities between
the goods. We will first turn our attention to these
factors, and then will consider the remaining relevant du
Pont factors.
With respect to a comparison of the marks BIKE IN A
BOX and BRAKE-IN-A-BOX, we find that, when considered in
their entireties, the marks are similar in appearance,
sound and meaning. The marks are similarly constructed,
with each combining the terminology “IN A BOX,” which is
suggestive in connection with a prepackaged kit of
mechanical/structural parts for a vehicle, with the generic
term used for the assembly composed of those parts. BIKE
IN A BOX is suggestive of a kit of prepackaged parts used
to assemble a motorcycle, and BRAKE-IN-A-BOX is similarly
Ser No. 75/120,143
4
suggestive as applied to registrant’s brake parts. Because
of the similarities in overall commercial impressions of
the marks, if these marks were to be used on related goods,
confusion would be likely. In finding that the marks are
similar, we have kept in mind the fallibility of human
memory over time and the fact that consumers usually retain
a general rather than a specific impression of trademarks
encountered in the marketplace.
In discussing the differences between the marks,
applicant contends that the dominant portions of the marks
are the terms “BIKE” and “BRAKE,” and that the phrase “IN A
BOX” is weak in source-identifying significance and,
therefore, that registrant’s mark should be accorded only a
narrow scope of protection. In connection with this
argument, applicant submitted an automated trademark search
report (accompanied by the declaration of a legal assistant
at the law firm representing applicant) of applications and
registrations wherein the marks include the term “BOX,” or
the phrase “IN A BOX” or “IN THE BOX.”
Applicant also highlights the fact that the Office
allowed an intent-to-use application for the mark TOP-IN-A-
BOX for a retractable convertible car top including power
unit, despite the existence of the cited registration.
Although that application was subsequently abandoned,
Ser No. 75/120,143
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applicant contends that because the Office approved the
application for publication, the instant application should
also be allowed. Applicant views the publication of that
application as an indication that the Office has recognized
the weakness of the phrase “IN A BOX,” and has acknowledged
that purchasers of these mechanical parts look to other
components in marks which incorporate the phrase in order
to distinguish among such marks.
With respect to applicant’s contention that the
dominant portions of the marks at issue are the words
“BIKE” and “BRAKE,” this argument clearly is ill founded.
These are generic words for the products identified in the
application and registration. As generic terms, they have
no source-identifying significance in connection with these
products. It is only when they are combined with the
suggestive term “IN A BOX” that they can serve as
components of these source-identifying marks.
Insofar as the search report is concerned, such
evidence generally does not make the
registrations/applications listed therein of record. In re
Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). In the
present case, however, the Examining Attorney, in the
Office action dated May 27, 1998, treated the listed third-
party registrations/applications as if properly made of
Ser No. 75/120,143
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record. Accordingly, the registrations/applications are
considered to be part of the record. In any event, this
evidence is of limited probative value in deciding the
issue of likelihood of confusion in this case inasmuch as
the registrations/applications do not establish that the
marks shown therein are in use, much less that consumers
are so familiar with them that they are able to distinguish
among such marks by focusing on components other than the
ones shared by the marks. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973);
and Red Carpet Corp. v. Johnstown American Enterprises,
Inc., 7 USPQ2d 1404 (TTAB 1988). Moreover, out of all of
the “IN A BOX” marks listed in the search report, only one
(TOP-IN-A-BOX) appears to be for goods pertaining to motor
vehicles. This fact further diminishes the probative value
of this evidence. See, e.g., Chemical New York Corp. v.
Conmar Form Systems, Inc., 1 USPQ2d 1139, 1144 (TTAB 1986).
The Office’s action with respect to the TOP-IN-A-BOX
application likewise is of little moment herein. We have
no way of knowing what the basis was for approving that
application. Moreover, neither the present Examining
Attorney nor the Board is bound by the Examining Attorney’s
action in connection with that application.
Ser No. 75/120,143
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Turning now to a consideration of the goods, we
initially point out that both a motorcycle sold in a kit of
prepackaged parts, and brake parts are mechanical-type
products which could be purchased by the same person. With
respect to the similarities between the goods, the
Examining Attorney submitted third-party registrations to
support his contention that the same entities sell both
types of goods involved in this appeal under the same mark.
We find that these registrations have probative value to
the extent that they suggest that the listed goods (brakes
and chassis) are of a type which may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1786 (TTAB 1993).
Applicant contends, however, that its products would
move in different trade channels from the goods listed in
the cited registration. Of record is the declaration of
Frank Esposito, applicant’s president and chief operating
officer. Mr. Esposito states, in pertinent part, that
applicant does not sell its products directly to retail
customers, but rather sells to authorized distributors who
subsequently sell to retail customers. Also of record is
the declaration of a legal assistant at the law firm
representing applicant, accompanied by an excerpt from a
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web page. The page shows registrant’s goods to be
characterized as “aftermarket products.”
This evidence and applicant’s argument based thereon
are not persuasive. The issue of likelihood of confusion
between marks must be determined on the basis of the goods
as they are identified in the respective application and
registration, which here are without the restrictions or
limitations pointed to by applicant. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987); and In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). In the absence of restrictions or limitations
in the identifications of goods in the involved application
and registration, it is assumed that registrant’s brakes
could be used in connection with motorcycles, and that the
goods move in the same channels of trade to the same
classes of purchasers.
In addition, Mr. Esposito claims, in his declaration,
that applicant’s goods cost approximately $8000 and are
purchased by sophisticated buyers. Although this du Pont
factor weighs in applicant’s favor, it is outweighed by the
other relevant factors considered in our analysis.
Applicant’s contention that confusion is not likely
because the registered mark is not famous misses the mark.
This contention is without any factual support. In any
Ser No. 75/120,143
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event, fame need not be established in order to cite a
registered mark against the registration of another mark
with which it is likely to be confused.
Lastly, applicant asserts that there have not been any
instances of actual confusion despite applicant’s use and
extensive advertising of its mark since January 1996. The
statement of no actual confusion is supported by Mr.
Esposito’s declaration.
The absence of evidence of actual confusion does not
compel a different result in this appeal. Although
applicant asserts that its advertising has been extensive,
no specifics are given. Thus, we are at a great
disadvantage in assessing whether there has been a
meaningful opportunity for confusion to occur in the
marketplace. In any event, the test in deciding this
appeal is likelihood of confusion.
To the extent that any of the points raised by
applicant or the dissent may cast doubt on our ultimate
conclusion on the issue of likelihood of confusion, we
resolve that doubt, as we must, in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Ser No. 75/120,143
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Decision: The refusal to register is affirmed.
T. J. Quinn
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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