Groupcars, LLC

Trademark Trial and Appeal Board

Jun 24, 2013

No. 85638066 (T.T.A.B. Jun. 24, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Groupcars, LLC
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Serial Nos. 85629693 and 856380661
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John Alumit of Alumit IP for Groupcars, LLC.

Nicholas A. Coleman, Trademark Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
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Before Kuhlke, Mermelstein and Greenbaum, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Groupcars, LLC, seeks registration on the Principal Register of
the marks AUTOAMIGO (in standard characters)2 and 3 for services
identified as “Advertising, promotion, and marketing services in the nature of a
website marketing program for sellers of new and used motorized vehicles,

1 In view of the common issues in these separate appeals we are issuing our determination
as to each in a single decision.

2 Application Serial No. 85629693, filed on May 30, 2012, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1(a), alleging first use and use in commerce on January 1, 2012.

3 Application Serial No. 85638066, filed on May 30, 2012, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1(a), alleging first use and use in commerce on January 1, 2012.
Serial Nos. 85629693 and 85638066

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motorized vehicle parts and accessories, and motorized vehicle repair, customization
and restoration services; Providing a searchable online advertising website and
informational guide featuring the goods and services of other vendors via the
internet in the field of automotive sales,” in International Class 35 and “Providing a
website featuring on-line non-downloadable software that enables users to search
for, research, purchase and sell motorized vehicle,” in International Class 42.
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used in connection
with its identified services, so resembles the registered mark AMIGO (in standard
characters) for services identified as “Automobile dealerships; retail store services
featuring automobiles and used automobiles,” in International Class 35;4 as to be
likely to cause confusion, mistake or deception.
When the refusals were made final, applicant filed requests for
reconsideration in each application, which were denied on February 25, 2013.
Thereafter, applicant appealed the refusal and briefs were filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks

4 Registration No. 3203902, issued on January 30, 2007, Sections 8 and 15 declaration
accepted and acknowledged.

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and the similarities between the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We begin with the du Pont factor of the relatedness of the services. We base
our evaluation on the services as they are identified in the registration and
applications. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
The record shows that applicant’s and registrant’s services are related and
the channels of trade and classes of consumers overlap, and applicant does not
dispute this. The examining attorney submitted web pages from several websites of
automotive dealers and retailers selling automobiles, and providing a searchable
website that offers information on automobiles and markets automobiles of various
manufacturers. See September 10, 2012 Office Action. This evidence supports a
finding of relatedness as to applicant’s International Class 35 services. As to
applicant’s website, which features non-downloadable software that enables the
online research, purchase and sale of vehicles, this service is essentially
complementary to applicant’s Class 35 web services, in that it enables use of the
website, and, as such, we also find these services to be related to registrant’s
automobile dealerships. It is settled that it is not necessary that the respective
services be identical or even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is, the issue is not whether
consumers would confuse the services themselves, but rather whether they would
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be confused as to the source of the services. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984). With regard to the channels of trade, because the services are so
closely related, and there are no limitations in the identifications of the application
and cited Registration Nos. 3203902, we must presume that they are offered in the
same channels of trade to the same classes of customers. Hewlett-Packard Co., 62
USPQ2d 1001. While registrant’s services do not specify if they are also offered
online, the record demonstrates that it is common for “brick and mortar” automobile
dealers to also provide or, at least, advertise their retail services online.
We turn then to the du Pont factor of the similarities and dissimilarities
between applicant’s marks AUTOAMIGO and , and registrant’s
mark AMIGO. We analyze “the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567.
The dominant portion of applicant’s mark is the word AMIGO which is
identical to the entirety of registrant’s mark. The addition of the generic term
AUTO is not sufficient to distinguish the marks. In addition, the stylization and
smile design in the mark in Application No. 85638066 is minimal and does not
overcome the dominance of the literal element AMIGO shared by both applicant’s
and the registrant’s marks. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553
(TTAB 1987). Moreover, at least as to applicant’s stylization, because the cited
mark is registered in standard characters it is not limited to any particular display,
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but can be used in any stylization, including that similar to applicant’s mark.
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1258-59 (Fed. Cir. 2011). In view thereof, we find the marks to be very similar.
Applicant argues that the word AMIGO is widely used in the automobile
industry including with automobile dealerships such that the addition of the word
AUTO and, in the case of Application Serial No. 85638066, the smile design
incorporating the last two letters, G and O, are sufficient to distinguish the marks.
Applicant submits that the evidence shows “24 third-party uses in the automobile
industry, including 17 automobile dealerships, throughout the country, … [of]
trademarks incorporating the term ‘AMIGO.’” App Br. p. 5.
First, with regard to the three third-party registrations, which may be used
to show that a term has some significance in the industry such that consumers
would look to other elements of the mark to distinguish source, the goods and
services (scooter vehicles, vehicle insurance and ridesharing services) are different
from those involved in this proceeding. Thus, they have little probative value on
this point. As to the use of the word AMIGO with the 17 dealerships, that does
indicate to some extent that the term is used by third parties, but there is no
evidence as to the extent of such use or if some of them are somehow related to each
other, for example, as a franchise. However, even considering that the term
AMIGO may be “weak” and accorded only a narrow scope of protection, we find the
marks to be sufficiently similar and the services closely related that confusion is
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likely between applicant’s and registrant’s marks. King Foods, Inc. v. Town &
Country Food Co., Inc., 159 USPQ 44 (TTAB 1968).
In conclusion, we find that because the services are closely related, the
channels of trade and classes of consumers are the same, and the marks are similar,
confusion is likely between applicant’s AUTOAMIGO marks and registrant’s mark
AMIGO.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.