Hyundai Motor America

Trademark Trial and Appeal Board

Sep 14, 2009

No. 78889340 (T.T.A.B. Sep. 14, 2009)

Hearing: Mailed:
June 3, 2009 September 14, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hyundai Motor America
________

Serial No. 78889340
_______

Howard N. Aronson, Nancy Dwyer Chapman, Cathy E. Shore-
Sirotin and Renee L. Duff of Lackenbach Siegel LLP for
Hyundai Motor America.

David H. Stine, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Bucher, Zervas and Taylor, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Hyundai Motor America seeks registration on the
Principal Register of the mark ECHELON (in standard character
format) for “automobiles” in International Class 12.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to

1 Application Serial No. 78889340 was filed on May 22, 2006
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. The application initially identified the
goods as “automobiles and structural parts therefor.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78889340
- 2 -
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the identified goods, so resembles
the mark ECHELON (in standard character format) for
“automotive tires”2 in International Class 12, as to be
likely to cause confusion, to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the issues involved in this case and an oral
hearing was held on June 3, 2009. We reverse the refusal to
register.
In support of its position, applicant cites the
admonition from In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973) [emphasis in
original]:
It is at least difficult to maintain a subjective
view that confusion will occur when those directly
concerned say it won’t. A mere assumption that
confusion is likely will rarely prevail against
uncontroverted evidence from those on the firing
line that it is not.

Applicant stresses that the Board should recognize and
acknowledge present realities “from those on the firing
line.” Given that twenty-five pairs of substantially

2 Registration No. 1745163 issued to Treadways Corporation on
January 5, 1993, renewed.

Serial No. 78889340
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identical marks for automobiles and for automotive tires
currently exist on the federal Trademark Register, applicant
implores us to respect the boundaries of use in these
industries:
… In this sense, the registrations tend to define
fields of use and, conversely, the boundaries of use
and protection surrounding the marks and marks
comprising the same word … for their various
products. The mutual respect and restraint exhibited
toward each other by the owners of the plethora of
marks, evidenced by their coexistence on the
Register, are akin to the opinion manifested by
knowledgeable businessmen … .

Keebler Company v. Associated Biscuits Limited, 207 USPQ
1034, 1038 (TTAB 1980).
The Trademark Examining Attorney assigned to this case
made, and then maintained, his Final refusal with
substantial reliance on the holding of In re Jeep
Corporation, 222 USPQ 333 (TTAB 1984). However, he also
subsequently made of record websites offering evidence
supporting the position of applicant. The Trademark
Examining Attorney argues that although the refusal is
supported, if not mandated, by case law such as In re Jeep
Corp., all the evidence of record supports the position
taken by applicant.3 Notably, at the oral hearing, the

3 While TMEP § 710.01 (5th ed. 2007) provides that “the
examining attorney may also present evidence that may appear
contrary to the USPTO’s position, with an appropriate explanation
as to why this evidence was not considered controlling,” this
case is unusual because the Trademark Examining Attorney
Serial No. 78889340
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Trademark Examining Attorney and applicant both argued that
this mark should be registered inasmuch as the evidence
supports our reversing this refusal to register.
Our likelihood of confusion determination must be based
upon our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Each of
these factors may, from case to case, play a dominant role.
Id at 567.
We should point out initially that we agree with the
concurring opinion that to the extent In re Jeep Corp. has
been interpreted as presenting a per se rule – e.g., that
automobiles and automotive tires are per se related, such
that there must be a likelihood of confusion from the use of
the same or similar marks in relation to this pairing of
goods – this is an incorrect reading of the In re Jeep Corp.
case and its progeny. Rather, we need to look at the
factual evidence of record to determine whether these goods
are related as closely under trademark law as tires are when
securely mounted on auto wheels.

presented evidence contrary to the USPTO’s position and argued
that such evidence is, in fact, controlling.

Serial No. 78889340
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Inasmuch as the marks herein are identical, this factor
supports a finding of likelihood of confusion. Nonetheless,
that is clearly not the end of our determination in a case
such as this. Specifically, we should not overlook the
critical role played by well known/famous marks for
automobiles in reported decisions4 -- such as PACKARD,5
CADILLAC,6 COBRA,7 MERCEDES-BENZ and FORD,8 where likelihood

4 In General Motors Corporation v. Pacific Tire & Rubber
Company, 132 USPQ 562, 564 (TTAB 1962) [Opposer’s BEL-AIR
automotive vehicles versus applicant’s BEL-AIR tires and
tubes], the Board cited, inter alia, to two pre-Lanham Act
cases from the 1920’s. Akron-Overland Tire Co. v. Willys-
Overland Co., 273 F. 674, 676 (3rd Cir. 1921); and Wall v.
Rolls Royce of America, 4 F.2d 333 (3rd Cir. 1925). Yet, in
a 1978 decision citing to these same two auto/auto parts
decisions, the Third Circuit discussed these as examples
where it had earlier found that a well-known mark provided
protection against goods in “non-competing” markets. See
Scott Paper Company v. Scott’s Liquid Gold, Inc., 589 F.2d
1225, 200 USPQ 421, 424 (3rd Cir. 1978).

5 Nash-Kelvinator Corporation v. Imperial Tire Company,
45 USPQ 587, 588-89 (Com’r. 1940).

6 General Motors Corporation v. Aluminum Products, Inc., 120
USPQ 502 (TTAB 1959) [GM’s long and extensive use and promotion
of its CADILLAC mark means it is “exceedingly well-known” in the
automotive trade. Moreover, applicant has chosen to display its
CADILLAC mark using “an exact simulation of a style of lettering
long used by opposer” in displaying its CADILLAC mark!].

7 Ford Motor Company v. Hi-Performance Motors, Inc., 186 USPQ
64 (TTAB 1975) [Applicant’s use of visual representation of a
coiled snake for automobile wheels, and opposer’s use of the word
COBRA and coiled snake design for automobiles and automobile
components was likely to cause confusion]. As to the fame of the
COBRA mark, a reported decision almost forty years later noted the
continuing fame of Ford’s COBRA mark. Ford Motor Co. v. A.C. Car
Group Ltd., 62 USPQ2d 1701 (E.D.Mi. 2002).

8 Jetzon Tire & Rubber Corporation v. General Motors
Corporation, 177 USPQ 467 (TTAB 1973) [In a case where “GM” was
Serial No. 78889340
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of confusion was found. Granted, the renown of a registered
mark is often difficult to determine in the ex parte
context. And while the record in this case does not contain
any information on this factor, it is significant to our
understanding of the continuing reach of cases such as In re
Jeep Corp. That is, a registration for a mark of some
renown registered in connection with automobiles should
remain a good ex parte citation against the manufacturer or
merchant with the temerity to adopt and use an identical
mark for tires. In the event that the Trademark Examining
Attorney cannot demonstrate such renown, then certainly the
automobile manufacturer qua opposer or cancellation
petitioner should be permitted to make such a showing in an
inter partes proceeding. By contrast, where the Trademark
Examining Attorney, like trademark tribunals, is faced with
less well-known marks like IMPERIAL9 or GRAND PRIX,10
presumably no likelihood of confusion would be found.

part of one of applicant’s marks, opposer made of record two
third-party registrations to show that the marks MERCEDES-BENZ and
FORD have been registered in the United States Patent and
Trademark Office by a single party for both automobiles and
tires].

9 In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910 (TTAB
1988) [Due to weakness of IMPERIAL marks, no likelihood of
confusion between registered mark for automobiles and structural
parts, and applicant identical mark for automotive products.

10 In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992)
[Applicant was applying for GRAND PRIX for “motor vehicles; namely,
Serial No. 78889340
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While we could well go back through a century of
history, and focus at length on conclusory statements made
over the years by various tribunals as to the relationship
of automotive tires to automobiles, we are much more
interested in the relevant evidence (or lack thereof) on
that relationship contained within this record.
Clearly, tires are included on virtually every new
automobile sold, and are absolutely necessary for the
operation of such vehicles throughout their useful life.
These are clearly not “competitive” goods, but neither do we
believe they should be considered to be “complementary
goods” as that term is used in likelihood of confusion
decisions.” Some goods will be regarded as related because
they are complementary in the sense that they might be used
together (e.g., skirts and blouses, pancakes and syrup,
camera and film). Generally, the focus is on products that
the consumer might well purchase separately but routinely
use together. With such products, when faced with identical
or highly similar marks, consumers will have the expectation
of some connection or sponsorship. “Complementary goods”
continues to be a useful category of related goods, whether

automobiles, engines therefor, and structural parts thereof”
versus a variety of GRAND PRIX marks for automotive tires; no
likelihood of confusion found where during a thirty year interval
of contemporaneous usage and “sustained success,” there were
reportedly no instances of actual confusion].
Serial No. 78889340
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from the standpoint of current and prospective trademark
owners and their counsel, or as a rationale for intellectual
property tribunals in determining the relatedness of goods.
However, merely because two products are attached or used
together does not necessarily mean they are closely related.
Consumers do not purchase an automobile without tires, and
then later go looking for tires. Nothing in this record
points to a single source for automobiles and tires.
Accordingly, there is no reason to presume such a perception
on the part of consumers of automobiles. We find nothing in
the record to support a conclusion that automobiles and
their tires are “closely related,” as that term is used in
the jurisprudence developed around likelihood of confusion.
We now turn to trade channels, another critical factor
when dealing with the nexus of the automobile and tire
industries. As to the respective channels of trade employed
by the automotive industry and the tire industry, the file
contains evidence of the virtual separation of these trade
channels. For example, according to “Market Profile,” a
2007 annual report put out by Tire Review Online, a global
website that covers the tire industry, it appears that at
present, only two to four percent of aftermarket automobile
Serial No. 78889340
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tires in the United States are sold through automotive
dealerships.11
Furthermore, each automobile is an expensive item
(e.g., generally, from thousands to tens-of-thousands of
dollars), presumably purchased with a great deal of care.
See In re General Motors Corp., 23 USPQ2d at 1471 [the
purchase of an automobile is “typically a major and
expensive purchase”]. One cannot assume quite the same
level of purchaser care for tires – even when multiple tires
are marketed for hundreds of dollars. However, according to
this record, the motorist in need of new tires will go to
the local tire dealer located in a traditional brick-and-
mortar establishment, or may order tires online to be
shipped, and then mounted and balanced locally. To make
this point more clearly, the Trademark Examining Attorney
submitted evidence from an online tire retailer which
explained in detail the online purchasing process facing the
hypothetical owner of a 2006 Camry.12 Hence, unsophisticated

11 We have considered the evidence from “Market Profile,” at 16
http://www.tirereview.com/files/PDF/marketprof07revA.pdf,
although there may well be an element of hearsay to this
evidence. Inasmuch as this is a website that covers the tire
industry, we detect no bias in the evidence. The Board generally
takes a somewhat more permissive stance with respect to the
introduction and evaluation of evidence in an ex parte proceeding
than it does in an inter partes proceeding. See In re Hudson
News Co., 39 USPQ2d 1915 (TTAB 1996); and In re Broadway Chicken,
Inc., 38 USPQ2d 1559 (TTAB 1996).

12 http://www.tirerack.com/tires/
Serial No. 78889340
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tire purchasers would not be able to purchase tires without
the assistance of expert, trained store personnel, or
without computerized matrices, to ensure proper fitment
based upon the make, model, year, rim size, etc., of their
vehicles. This hypothetical automobile owner in need of
replacement tires (who assumes a separate source for the
tires) checks carefully the specifications for the tire but
is not concerned about matching the brand of tires to the
automobile.
Another hypothetical consumer, one so ill-informed that
he mistakenly assumes source connection of tires based merely
upon a coincidence that they bear the same mark as his car,
would be disabused quickly of this notion. Practically, the
Trademark Examining Attorney has shown from his TireRack
example that (1) the pull-down matrices prevent the
selection of a tire with an incorrect fitment, and (2) the
chance that one would find a brand of tires that fits a car
of the same name appears to be infinitesimally small. In
the local brick-and-mortar location, a capable sales person
would not agree to sell and mount tires that do not fit the
auto’s wheels. Hence, despite themselves, such consumers
are forced to exercise a high degree of care when purchasing
tires.
Serial No. 78889340
- 11 -
Similarly, applicant has demonstrated from examples of
real-world, online sources that some of the largest auto
manufacturers and the most well-known tire manufacturers
readily permit the same mark to coexist for automobiles and
automobile tires.
CHARGER tire/auto pairing as seen in the marketplace:
Applicant demonstrates that the
Charger performance radial tire by
Kelly/Springfield is available online in
14”, 15” and 16” tires.
http://www.kellytires.com/auto/products/c
sr.html

Charger® By
Kelly
Performance
Radial

By contrast, the 2008 Dodge
Charger is a muscle car
available with 17”, 18” and
20” wheels.
http://www.dodge.com/en/2008/
charger/

EXPLORER tire/auto pairing as seen in the marketplace:
Applicant demonstrates that
the Explorer radial tire by
Kelly/Springfield is available
online in 13”, 14” and 15” tires.
http://www.kellytires.com/auto/pro
ducts/exp.html
Explorer®
All-Season
Steel-Belted
Radial
Serial No. 78889340
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By contrast, the 2008 Ford
Explorer is a sports utility
vehicle available with 18” and
20” wheels. http://www.ford
vehicles.com/suvs/explorer/
NAVIGATOR tire/auto pairing as seen in the marketplace:

Applicant demonstrates that the
Navigator tire by Kelly/Springfield is
available in 15”, 16” and 17” tires.13 By
contrast, the 2008 Lincoln Navigator is
the largest luxury SUV made by Ford Motor
Company, with 18” and 20” tires.

PILOT tire/auto pairing as seen in the marketplace:
Finally, PILOT includes Michelin’s line of ultra-high
performance tires (ranging from 17” to 22”) for exotic
sports cars, “Y” rated for speeds up to 186 miles per hour.
By contrast, although Honda’s PILOT registration lists “all

13 http://www.kellytires.com/kellytires/display_tire.jsp?prodli
ne=Navigator+Touring+Gold&mrktarea=Passenger
Serial No. 78889340
- 13 -
terrain vehicles,” applicant has submitted for the record
online ads showing that the 2008 Honda PILOT is a somewhat-
bulky, midsized, crossover SUV.
We emphasize that even twenty-five pairs of
substantially identical marks for automobiles and for
automotive tires currently existing on the federal Trademark
Register does not the have persuasive value of a written,
mutual consent between an applicant and senior
user/registrant. There is simply no way of knowing whether
the owners of a particular pair of registrations actually
had any dealings whatsoever. As such, our decision herein
is not meant to imply that third-party registrations should
be given such evidentiary weight. On the other hand, the
fact that there are numerous third-party registrations for
similar marks owned by different entities for tires and
automobiles is consistent with the conclusion that trademark
owners in these respective industries do not believe that
there is a likelihood of confusion between these marks for
the listed goods.
The U. S. Patent and Trademark Office itself seems to
be of two minds on how best to handle applications such as
the present one. While some Trademark Examining Attorneys
take the position that the holding of cases like In re Jeep
Corp. mandates this refusal, others have over the years
repeatedly registered identical, arbitrary marks for
Serial No. 78889340
- 14 -
automobiles and for auto tires. The junior users/
registrants in many of the following pairs were issued
federal trademark registrations in the years since In re
Jeep Corp. was decided. This provides additional evidence
corroborating contemporary marketplace realities, namely,
that the automobile and tire industries permit co-terminus
use and open coexistence on the federal Trademark Register
of substantially identical marks for vehicles and tires
without any evidence anyone has been confused thereby. Here
are some of the examples placed into the record:
AUTOMOBILES / LAND VEHICLES TIRES
ASTRA14 ASTRA15
AVALANCHE16 AVALANCHE17
CHARGER18 19

14 Registration No. 3403244 for “motor land vehicles” (Owned by
Saturn Corporation) issued on March 25, 2008.

15 Registration No. 1216617 for “tires” (owned by Continental
Tire North America, Inc.) issued on November 16, 1982, renewed.

16 Registration No. 2866966 for “motor land vehicles, namely
automobiles, trucks, sport utility vehicles, vans, engines
therefor and structural parts thereof excluding railcars or parts
thereof” (owned by General Motors Corporation) issued on July 27,
2004.

17 Registration No. 2289115 for “tires for motor vehicles”
(owned by Hercules Tire Company of Canada, Inc.) issued on
October 26, 1999, renewed.

18 Registration No. 2985653 for “motor vehicles, namely
automobiles and structural parts therefore” (owned by Chrysler
Group LLC) issued on August 16, 2005.

Serial No. 78889340
- 15 -
AUTOMOBILES / LAND VEHICLES TIRES
20 21
EXPLORER22 EXPLORER23
GENESIS24 GENESIS25
GRAND PRIX26
27

19 Registration No. 0833697 for “tires” (owned by the Kelly-
Springfield Tire Company) issued on August 15, 1967, second
renewal.

20 Registration No. 0591601 for “motor cars” issued on June 22,
1954, third renewal; and Registration No. 2908822 for the mark
CONTINENTAL for “vehicles, namely cars, trucks, vans and sport
utility vehicles” issued on December 7, 2004 (both owned by Ford
Motor Company).

21 Registration No. 0622300 for “pneumatic tires and solid
rubber tires for bicycles, passenger cars, trucks, tractors,
lorries, wheel barrows, and motor cars” (owned by Continental
Aktiengesellschaft) issued on February 28, 1956, third renewal.

22 Registration No. 1193137 for “pick up trucks and their
structural parts” (owned by Ford Motor Company) issued on April
6, 1982, renewed.

23 Registration No. 0607305 for “tires” (owned by The Goodyear
Tire & Rubber Company) issued on June 14, 1955.

24 Registration No. 3531628 for “automobiles” (owned by Hyundai
Motor America) issued on November 11, 2008.

25 Registration No. 2934609 for “vehicle tires” (owned by
Treadways Corporation) issued on March 22, 2005.

26 Registration No. 1889797 for “motor vehicles; namely,
automobiles, engines therefor, and structural parts thereof”
(owned by General Motors Corporation) issued on April 18, 1995,
renewed. Board found no likelihood of confusion with tires, In
re General Motors Corp., 23 USPQ2d 1465, (TTAB 1992).

Serial No. 78889340
- 16 -
AUTOMOBILES / LAND VEHICLES TIRES
HIGHLANDER28 29
LARAMIE30 LARAMIE31
LEGACY32 LEGACY33
LEGEND34 LEGEND35
MAXIMA36 MAXIMA37

27 Registration No. 0690249 for “automobile tire[s]”
issued on December 22, 1959, second renewal; and
Registration No. 1164594 for GRAND PRIX RADIAL G/T (with
the term "Radial G/T" disclaimed, shown in a special
form drawing, as shown at right for “automotive vehicle
tires” issued on August 11,1981, renewed (owned by TBC
Corporation).

28 Registration No. 2249838 for “automobiles and structural
parts thereof” issued on June 1, 1999, renewed; and Registration
No. 2339104 for “land motor vehicles, namely, sport utility
vehicles, and structural parts thereof” issued on April 4, 2000,
(both owned by Toyota Jidosha Kabushiki Kaisha).

29 Registration No. 0696074 for “tires’ (owned by The Goodyear
Tire & Rubber Company) issued on April 12, 1960, second renewal.

30 Registration No. 1973148 for “motor vehicles and structural
parts therefore” (owned by Chrysler LLC) issued on May 7, 1996,
renewed.
31 Registration No. 1088647 for “vehicle tires” (owned by
Treadways Corporation) issued on April 4, 1978, second renewal.

32 Registration No. 1721734 for “automobiles and structural
parts thereof (excluding tires)” (owned by Fuji Jukogyo Kabushiki
Kaisha) issued on October 6, 1992, renewed.

33 Registration No. 1393967 for “vehicle tires” (owned by Big O
Tires, Inc.) issued on May 20, 1986, renewed.

34 Registration No. 1574715 for “automobiles and structural
parts thereof” (owned by Honda Giken Kogyo Kabushiki Kaisha)
issued on January 2, 1990, renewed.

35 Registration No. 3039122 for “vehicle tires” (owned by
Treadways Corporation) issued on January 10, 2006.

36 Registration No. 1432854 for “automobiles and structural
parts therefor, excluding tires” (owned by Nissan Jidosha
Kabushiki Kaisha) issued on March 17, 1987, renewed.
Serial No. 78889340
- 17 -
AUTOMOBILES / LAND VEHICLES TIRES
NAVIGATOR38 39
ODYSSEY40 ODYSSEY41
PATRIOT42 PATRIOT43
PILOT44 PILOT45

37 Registration No. 0926329 on the Supplemental Register for
“non-metallic tires” (owned by Continental Tire North America,
Inc.) issued on December 28, 1971, second renewal.

38 Registration No. 1749362 for “vehicles; namely, motor homes”
(owned by International Truck Intellectual Property Company,
LLC.) issued on January 26, 1993, renewed; also Registration No.
2111095 for “motor vehicles, namely trucks and their structural
parts” (owned by Ford Motor Company) issued on November 4, 1997,
renewed.

39 Registration No. 0812177 for “tires” (owned by The Goodyear
Tire & Rubber Company) issued on August 2, 1966, second renewal.

40 Registration No. 2039315 for “passenger land motor vehicles,
namely, minivans, and structural parts thereof” (Owned by Honda
Giken Kogyo Kabushiki Kaisha) issued on February 18, 1997,
renewed.

41 Registration No. 1687087 for “automotive tires” (owned by
Treadways Corporation) issued on May 12, 1992, renewed.

42 Registration No. 2841486 for “motor vehicles, namely,
automobiles and structural parts and engines therefor, sold
exclusively through authorized dealerships to its retail
customers and excluding buses” (owned by Chrysler LLC) issued on
May 11, 2004.

43 Registration No. 3320224 for “tires” (owned by The Goodyear
Tire & Rubber Company) issued on October 23, 2007.

44 Registration No. 1596280 for “all terrain vehicles and
structural parts thereof” (owned by Honda Giken Kogyo Kabushiki
Kaisha) issued on May 15, 1990, renewed.

45 Registration No. 1342457 for “tires” (owned by Michelin
North America, Inc.) issued on June 18, 1985, renewed.

Serial No. 78889340
- 18 -
AUTOMOBILES / LAND VEHICLES TIRES
46 SABRE47
48 TRACKER49
VIPER50 VIPER51
WRANGLER52 53
Although we often remind litigants that the federal
Trademark Register may not actually reflect what is
happening in the real world, applicant has shown in detail
how many of these respective pairs are currently used in the
marketplace using Internet evidence of contemporary usage.

46 Registration No. 0573739 for “automobiles and parts thereof”
(owned by General Motors Corporation) issued on April 28, 1953,
third renewal.

47 Registration No. 0926463 for “pneumatic tires” (owned by
Treadways Corporation) issued on January 4, 1972, second renewal.

48 Registration No. 1520766 (owned by General Motors
Corporation) issued on January 17, 1989; Section 8 affidavit
(six-year) accepted and Section 15 affidavit acknowledged.

49 Registration No. 1074959 (owned by The Goodyear Tire &
Rubber Company) issued on October 11, 1977; second renewal.

50 Registration No. 1800654 for “automobiles and structural
parts therefore” (owned by Chrysler LLC) issued on October 26,
1993; renewed.

51 Registration No. 2153975 for “tires for automobiles” (owned
by Cooper Tire & Rubber Company) issued on April 28, 1998;
renewed.

52 Registration No. 1557843 for “automobiles” (owned by
Chrysler Group LLC) issued on September 26, 1989.

53 Registration No. 0811711 for “tires” (owned by The Goodyear
Tire & Rubber Company) issued on July 26, 1966, second renewal.
Serial No. 78889340
- 19 -
Finally, applicant points to the current tire industry
practice for sidewall markings based upon federal
regulations. Although the regulations do not explicitly
require that the ultimate corporate source of the tires be
listed on the sidewall, this reality reduces even further
any chance of inadvertent confusion, i.e., with both the
manufacturer’s name and the product/tire name appearing
prominently on the tire sidewall.
54
Accordingly, the du Pont factor focusing on the
conditions under which sales are made favors reversal.

54 http://www.safercar.gov/portal/site/safercar/menuitem.13dd5c
887c7e1358fefe0a2f35a67789/?vgnextoid=8e1c4507fe526110VgnVCM10000
02fd17898RCRD; 49 CFR Part 575, 575.6(a); 46 FR 13193,
02/17/1981; 64 FR 51920, 09/27/1999; Uniform Tire Quality Grading
Standards (UTQGS) of the Consumer Information Regulations at 49
CFR 575.104, and the tire labeling sections of the Federal Motor
Vehicle Safety Standards (FMVSS) at 49 CFR 571.109, 117, and
119).

Serial No. 78889340
- 20 -
We thus find that automobiles and automobile tires are
not closely-related goods given the current marketing
conditions for the replacement tire industry and the totally
disparate channels of trade between tires and automobiles.
With the possible exception of automobile marks of
demonstrated renown – a fact pattern not shown to be the
case herein – the chances for likelihood of confusion in the
real world are de minimis under these circumstances. After
all, as our reviewing court has stated, “[w]e are not
concerned with mere theoretical possibilities of confusion,
deception, or mistake or with de minimis situations but with
the practicalities of the commercial world, with which the
trademark laws deal.” Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388,
1391 (Fed. Cir. 1992).
The cumulative evidence in this case, assembled between
2006 and 2008, is substantial and overwhelming, and supports
a reversal herein. When it comes to likelihood of
confusion, trademark practitioners and jurists know that
there are no per se rules as to the relatedness of goods.
Therefore, contrary to the positions of both applicant and
the Trademark Examining Attorney, we cannot discern a rule
of law from In re Jeep Corp. in need of being overturned.
Furthermore, although the briefing and oral arguments urge
Serial No. 78889340
- 21 -
us to do so, we do not find it necessary to take a position
herein on whether precedential cases decided decades ago
were then supported by the realities of the marketplace or
their respective factual records.
We do emphasize that this is not simply a case where
the Trademark Examining Attorney relied solely upon the
results of a previous decision, thereby losing the appeal
because of a failure to gather evidence. To the contrary,
it is apparent that the Trademark Examining Attorney sought
mightily to support the Office’s refusal with evidence, but
after a most thorough investigation, found only evidence
supporting applicant’s position that automobiles and
automobile tires are not closely-related goods.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby reversed.

CONCURRING OPINION
Zervas, Administrative Trademark Judge:
In my view, the refusal must be reversed, not for the
reasons stated by the majority, but rather because the
examining attorney has not made out a prima facie case of
likelihood of confusion.
Serial No. 78889340
- 22 -
The examining attorney did not introduce any evidence
regarding the du Pont factors in his first Office action or
in his final Office action. It was only in his denial of
his request for reconsideration that he introduced any
evidence; this evidence, however, favored applicant’s
position.55
The Federal Circuit, our primary reviewing Court,
requires that the Office make out a prima facie case of
likelihood of confusion supported by evidence. In re Pacer
Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir.
2003) (“we look only for substantial evidence, or more than
a scintilla of evidence, in support of the PTO’s prima facie
case”). The Trademark Manual of Examining Procedure
(“TMEP”) requires an examining attorney to “always support

55 The examining attorney explains at unnumbered p. 4 of his
brief:
As the arguments and supporting evidence featured at
pp. 11-14 of applicant’s Appeal Brief were raised for
the first time therein, a remand of the file was
requested to permit further review of this material,
and to supplement the record. This remand was granted,
and extensive further research pertaining to applicable
marketplace conditions was conducted. Additional
evidence resulting from this research was made of
record by Office Action issued October 27, 2008. It is
noted that the results of additional research conducted
by the undersigned clearly support and further buttress
applicant’s arguments at pp. 11-14 of the Appeal Brief
…. Accordingly, it is respectfully suggested that a
considered review of the specific holding of In re Jeep
Corp, 222 USPQ 333 (TTAB 1984), along with its
predecessors and progeny, is clearly warranted.

Serial No. 78889340
- 23 -
his or her action with relevant evidence.” TMEP Section
710.01.56
In lieu of evidence and in the context of the du Pont
factors regarding the goods and the trade channels, the
examining attorney relied on several Board decisions which
found the use of identical or similar marks on automobiles
and on tires likely to cause confusion. One problem with
the examining attorney’s reliance on these decisions is
succinctly stated in TMEP §1207.01(a)(iv); because “[t]he
facts in each case vary and the weight to be given each
factor may be different in light of the varying
circumstances … there can be no rule that certain goods …
are per se related, such that there must be a likelihood of
confusion from the use of similar marks in relation thereto
(citations omitted).” A second problem is that we cannot
take judicial notice of facts in a prior case where the
Board found goods or trade channels to be related under the
facts presented in the prior case:
In the instant case, although it may be said that
the opinions of the U.S. District Court for the
Northern District of California and the U.S. Court
of Appeals for the Ninth Circuit may be relevant
under the broad definition of “relevant evidence”
in Rule 401, the Board remains of the opinion that

56 TMEP Section 710.01 adds that when an examining attorney
introduces evidence contrary to the USPTO’s position “[i]n
appropriate cases,” he or she should provide “an appropriate
explanation as to why this evidence was not considered
controlling.”
Serial No. 78889340
- 24 -
such “evidence” is not competent evidence in a
proceeding before it to prove uniqueness,
notoriety or market power of opposer’s mark in the
marketplace today. For it is well settled that a
decision in a prior case is incompetent as proof
of any fact recited therein as against one who was
not a party thereto. See: Aloe Creme
Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ
146 (TT&A Bd., 1970), and cases cited therein.

Chicken Delight, Inc. v. Delight Wholesale Co., 193 USPQ
175, 177 (TTAB 1976).
In the context of the goods, the TMEP could not be
clearer:
The examining attorney must provide evidence
showing that the goods and services are related to
support a finding of likelihood of confusion.
Evidence of relatedness might include news
articles and/or evidence from computer databases
showing that the relevant goods/services are used
together or used by the same purchasers;
advertisements showing that the relevant
goods/services are advertised together or sold by
the same manufacturer or dealer; or copies of
prior use-based registrations of the same mark for
both applicant’s goods/services and the
goods/services listed in the cited registration.

TMEP § 1207.01(a)(vi)(emphasis added). Prior Board
decisions are not listed as factual evidence in support of a
refusal.57

57 I view it unlikely that the Federal Circuit, if given an
opportunity to consider an appeal in this case, would consider
itself bound by the Board decisions cited by the examining
attorney or find that the Board decisions alone are “substantial
evidence” of the similarity of particular goods.

Serial No. 78889340
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Thus, I too would reverse, but on the basis that the
examining attorney has not made out a prima facie case in
support of his likelihood of confusion refusal. I believe
that if it is the position of the examining attorney’s law
office that a likelihood of confusion does not exist between
a registered mark and an applicant’s mark, and the evidence
does not support such a refusal, the examining attorney
should not refuse to register the applicant’s mark. As
stated above, “there can be no rule that certain goods … are
per se related, such that there must be a likelihood of
confusion from the use of similar marks in relation
thereto.” TMEP §1207.01(a)(iv).