Goodyear Swap Meet, L.C.

Trademark Trial and Appeal Board

Mar 3, 2005

No. 76476149 (T.T.A.B. Mar. 3, 2005)

3/3/2005

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

Trademark Trial and Appeal Board
_____________

In re Goodyear Swap Meet, L.C.
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Serial No. 76476149
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Scott E. Johnson for Goodyear Swap Meet, L.C.

Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
______________

Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Goodyear Swap Meet, L.C. (applicant) seeks to register
in typed drawing form GOODYEAR MARKET PLACE SWAP MEET for
“publications, namely, newsletters reporting upcoming
social events, bumper stickers, pens and pencils” (Class
16); “housewares, namely, coffee cups, sports bottles sold
empty, sipper cups, and thermal insulated holders for
contained beverages” (Class 21); and “clothing, namely,
shirts and caps” (Class 25). The application was filed on
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December 19, 2002 with a claimed first use date as to all
types of goods of November 1, 1999. Applicant disclaimed
the exclusive right to use MARKET PLACE SWAP MEET apart
from the mark in its entirety.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as used in connection with applicant’s
goods, is likely to cause confusion with five previously
registered marks. The first is GOODYEAR and design
registered for “erasers.” Registration No. 502,320. The
second is GOODYEAR and design registered for “retail store
services” featuring, among other goods, “glassware.”
Registration No. 909,784. The third is GOODYEAR and design
registered for “clothing, namely, caps, t-shirts,
sweatshirts and jackets.” Registration No. 1,202,797. We
have not reproduced the design features in the foregoing
three registered marks because applicant has never
contended that said design features in any way distinguish
these three marks from applicant’s mark. Indeed, at page 3
of its brief applicant even states that “all of the
trademark registrations cited by the Examining Attorney …
consist entirely of the word GOODYEAR.” (emphasis added).
The other two registrations cited by the Examining Attorney
–- namely, Registration Nos. 1,037,899 and 1,467,482 –- are
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not pertinent to our likelihood of confusion analysis
because they cover goods which are decidedly more
dissimilar from applicant’s goods than are the goods and
services of the aforementioned three registrations.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.”).
Because applicant has filed a multi-class application,
we must compare the goods in each of applicant’s three
classes with the goods of one or more of the three
pertinent cited registrations. Applicant’s Class 16 goods
include pencils. Pencils are extremely closely related to
the goods of Registration No. 502,320, namely, erasers.
Many, if not most, pencils come with erasers.
Ser. No. 76476149
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Applicant’s Class 21 goods include housewares such as
coffee cups, sports bottles and sipper cups. The services
of Registration No. 909,784 include retail store services
featuring glassware. We find that retail store services
featuring glassware and various types of cups including
coffee cups are extremely closely related. Glassware and
cups are used to hold liquids for human consumption.
Finally, applicant’s Class 25 goods include caps and
shirts. These goods are identical to certain of the goods
of Registration No. 1,202,796, namely, caps and t-shirts.
Turning to a consideration of the marks, we note at
the outset that when applicant’s goods are extremely
closely related or identical to the goods or services of
the cited registrations as is the case here, “the degree of
similarity [of the marks] 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).
In considering the marks, we recognize that we are
obligated to compare the marks “in their entireties.” In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750
(Fed. Cir. 1985). However, in comparing the marks in their
entireties, it is completely appropriate to give less
weight to a portion of a mark that is merely descriptive of
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the relevant goods or services. National Data, 224 USPQ at
751 (“That a particular feature is descriptive … with
respect to the relevant goods or services is one commonly
accepted rationale for giving less weight to a portion of
the mark.”). In the first Office Action, the Examining
Attorney stated that the phrase MARKET PLACE SWAP MEET in
applicant’s mark was merely descriptive of applicant’s
goods and hence must be disclaimed. Thereafter, applicant
submitted, as previously noted, a disclaimer of MARKET
PLACE SWAP MEET, thereby conceding that this phrase was
indeed descriptive of its goods in that it indicated where
the goods could be purchased.
Hence, we find that the most prominent feature of
applicant’s mark is GOODYEAR, which is identical to the
word portion of the three pertinent cited marks. While the
three pertinent cited marks contain design features, said
features are entitled to extremely minimal weight in any
likelihood of confusion analysis because they are so minor.
In this regard, as previously noted, applicant even stated
at page 3 of its brief that “the trademark registrations
cited by the Examining Attorney … consist entirely of the
word GOODYEAR.” (emphasis added).
Moreover, GOODYEAR is the most prominent portion
applicant’s mark for two other reasons. First, the fact
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that GOODYEAR is “the first word” in applicant’s mark and
the only word in the three pertinent registered marks is a
factor which makes “the marks similar.” Palm Bay Imports,
Inc. v. Veuve Clicquot, F.3d , USPQ2d (Fed. Cir.
2004). See also Presto_Products v. Nice-Pak Products, 9
USPQ2d 1825, 1897 (TTAB 1988) (The fact that two marks
share the same first word is “a matter of some importance
since it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered.”)
Second, and of far greater importance, is the fact
that applicant seeks to register its mark GOODYEAR MARKET
PLACE SWAP MEET in typed drawing form. This means that
applicant’s mark is not limited to being “depicted in any
special form,” and hence we are mandated to “visualize what
other forms the mark might appear in.” Phillips Petroleum
Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971). See also INB National Bank v. Metrohost Inc.,
22 USPQ2d 1585, 1588 (TTAB 1992).
If applicant were to obtain a typed drawing
registration of GOODYEAR MARKET PLACE SWAP MEET, then
applicant would be free to depict the GOODYEAR portion of
its mark in large lettering on one line, and then to depict
the descriptive phrase MARKET PLACE SWAP MEET in decidedly
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smaller lettering on a second line. When so depicted,
applicant’s mark would be extremely similar to the marks of
the three pertinent cited registrations.
Finally, if there is any doubt on the issue of likely
confusion (and there is not), said doubt is totally
eliminated when we take into account applicant’s concession
that at least the marks of cited Registration Nos. 909,784
and 1,202,797 are very famous, or to use applicant’s
precise words “so famous.” (Applicant’s Brief page 4). As
our primary reviewing Court has made crystal clear on
numerous occasions, the fame of a prior mark plays a
“dominant role” in any likelihood of confusion analysis.
Famous marks enjoy a wide latitude of legal protection.
Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir.
2000). See also Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 353 (Fed. Cir. 1992).
One final comment is in order. Applicant’s only real
argument as to why there is no likelihood of confusion
involving its mark GOODYEAR MARKET PLACE SWAP MEET and the
marks of the cited registrations is based on the fact that
the GOODYEAR portion of applicant’s mark refers to
Goodyear, Arizona. In this regard, applicant states that
the “GOODYEAR MARKET PLACE SWAP MEET is a famous flea
market venue in Goodyear, Arizona.” (Applicant’s Brief page
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4). See also Applicant’s Reply Brief page 2. Applicant
also contends that the Goodyear Tire & Rubber Co. “has not
requested that applicant discontinue use of GOODYEAR MARKET
PLACE SWAP MEET.” (Applicant’s Reply Brief page 2).
The issue before this Board is not whether there is a
likelihood of confusion in Goodyear, Arizona involving the
use of applicant’s mark and the marks of the pertinent
cited registrations. Applicant is now seeking nationwide
rights in its mark GOODYEAR MARKET PLACE SWAP MEET.
Applicant has simply offered no proof whatsoever that
consumers located outside the vicinity of Goodyear, Arizona
would not confuse its mark with the various registered
GOODYEAR marks. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987)
(It is well settled that in Board proceedings, “the
question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-à-
vis the goods and/or services recited in [the cited
registrations], rather than what the evidence shows the
goods and/or services to be.”). The fact that in actuality
applicant’s goods may be offered only in Goodyear, Arizona
is of no consequence because there is no limitation in
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applicant’s application restricting the sale of applicant’s
goods only to Goodyear, Arizona.
Decision: The refusal to register is affirmed.