Mack Trucks, Inc.

Trademark Trial and Appeal Board

Apr 26, 2001

No. 75386729 (T.T.A.B. Apr. 26, 2001)

4/26/01
Hearing: Paper No. 12
January 18, 2001 TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Mack Trucks, Inc.
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Serial No. 75/386,729
Serial No. 75/606,017
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Cynthia Clarke Weber of Sughrue, Mion, Zinn, Macpeak & Seas for
Mack Trucks, Inc.
Matthew J. Pappas, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Seeherman, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Mack Trucks, Inc. has filed applications to register the
marks VISION1 and VISION BY MACK,2 both for "trucks."
The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act on the basis of the
1 Application Serial No. 75/386,729; filed November 7, 1997 alleging a
bona fide intention to use the mark in commerce.
2 Application Serial No. 75/606,017; filed December 15, 1998 alleging a
bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. Nos. 75/386,729 and 75/606,017
2
registered mark VISION for "beverage delivery trailers."3
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was held.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks, the strength of the marks, and the
relatedness of the goods or services.
Turning first to the marks, it is the Examining Attorney's
position that the marks are similar in sound, appearance,
connotation and commercial impression. The Examining Attorney
argues that the dominant portion of each mark is the word VISION
and that the addition of applicant's corporate name to the
registrant's mark does not overcome the similarity. The
Examining Attorney maintains that the third-party registrations
introduced by applicant are entitled to little weight on the
issue of likelihood of confusion because those registrations are
not evidence of use or that the public is familiar with the marks
therein.
3 Registration No. 1,256,028; issued November 1, 1983; combined
affidavit under Sections 8 and 15 filed.
Ser. Nos. 75/386,729 and 75/606,017
3
Applicant's mark VISION (in the '729 application) is
identical to the mark in the cited registration. Moreover,
applicant's related mark VISION BY MACK incorporates the
registered mark in its entirety. Even with the additional
wording, the marks convey similar meanings and create similar
overall commercial impressions.
We are not persuaded by applicant's argument that the term
MACK, as a famous trademark and the subject of a number of
federal registrations, is the dominant component of VISION BY
MACK and outweighs the commercial impact of VISION in the
composite mark. First, the addition of the term BY MACK to the
mark fails to change the meaning or commercial impression
conveyed by the term VISION in the registered mark and the
meanings of the two marks remain essentially the same. Even the
fame of the term MACK, if shown, would not overcome the
likelihood that the two marks would be confused because the MACK
name would do nothing to prevent consumers from mistakenly
assuming, when the marks are used in connection with related
goods, that registrant is somehow associated with applicant or
that there is at least some relationship between them. Moreover,
it is generally held that the addition of a house mark or other
such matter to one of two otherwise similar marks will not serve
to avoid a likelihood of confusion. See, e.g., In re Pierce
Ser. Nos. 75/386,729 and 75/606,017
4
Foods Corporation, 230 USPQ 307 (TTAB 1986); and In re Dennison
Manufacturing Company, 220 USPQ 1015 (TTAB 1983).
Applicant claims that "the fact that so many VISION marks
have been permitted to coexist on the Principal Register" shows
that VISION is a "weak, diluted mark," and thereby entitled to
only a limited scope of protection. Applicant argues (without
support) that there are over 1500 current federal registrations
for VISION marks "in all classes of goods and services."
Applicant has also relied on copies of seventeen use-based third-
party registrations (including the cited registration) to show
that VISION marks "for closely related or identical
goods...coexist" in the vehicular field. We note, in particular,
applicant's claim that
"The most telling example of this is that VISION for
'beverage delivery trailers' currently coexists on the
Federal Register and in practice with NEW VISION for
'towable trailers' [Registration No. 2,216,807]" (Brief
p.5).
Based on applicant's characterization of the goods in this
manner, applicant goes on to argue that "[beverage delivery
trailers" and "towable trailers"] are, for all intents and
purposes, identical, since beverage delivery trailers are
'towable trailers.'" Relying on Massey Junior College, Inc. v.
Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272
(CCPA 1974), applicant argues that the third-party registrations
Ser. Nos. 75/386,729 and 75/606,017
5
are entitled to the assumption that the marks therein have been
placed in use. Applicant further argues that consumers are
conditioned to such use, and that therefore "consumers have
learned to distinguish between the various VISION marks, either
on the basis of minor differences in the marks, or differences in
the goods." Applicant concludes that the owners of all the
registered VISION marks in the vehicle field do not believe there
is a likelihood of confusion "and they all peacefully coexist" in
the marketplace.
There are several problems with applicant's reasoning. To
begin with, the factor to be considered in determining likelihood
of confusion under du Pont is the number and nature of similar
marks "in use on similar goods" (emphasis added). See In re E.I.
du Pont de Nemours & Co., supra. Thus, the alleged existence of
some 1500 registrations for "vision" for "all classes of goods
and services," even if true, is irrelevant to the question of
whether the marks applied to the goods involved herein are likely
to cause confusion.
Nor does it matter that third-party marks "coexist on the
register." The relevant consideration is whether those marks are
in use for similar goods, and third-party registrations are not
evidence of use of the marks therein. In this regard, applicant
has misapplied the principles of Massey to the present case.
That case involved an appeal from a decision of the Board in a
Ser. Nos. 75/386,729 and 75/606,017
6
cancellation proceeding. The Court stated, inter alia, that "a
holder of a registered mark enjoys the benefit of his certificate
as prima facie evidence of...his continued use of the mark...."
(Supra at 274). Clearly, only the owner of a registration is
entitled to rely on the evidentiary presumptions accorded a
registration. See In re Hester Industries, Inc., 231 USPQ 881
(TTAB 1986). Those registrations, when relied on by anyone other
than the owners thereof, do not establish that the marks shown
therein are actually in use, much less that the marks "coexist
peacefully" in the marketplace.4 See AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973)
and Charrette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040 (TTAB 1989).
Even if we assume that the marks in those registrations are
in use, this evidence would not convince us that the mark VISION
is "weak" for the identified goods. Contrary to applicant's
contention, none of the third-party registrations is for the same
goods as those in the cited registration. Applicant's claim that
the goods in Registration No. 2,216,807 are "identical" to the
goods in the cited registration is simply not true. Those goods,
4 Applicant's reliance on In re Broadway Chicken, Inc., 38 USPQ2d 1559
(TTAB 1996) is misplaced as well. The Board's finding of no likelihood
of confusion in that case was based on the applicant's evidence of
widespread third-party use of BROADWAY for restaurant services.
Although third-party registrations were of record in that case, those
registrations did not constitute evidence of use of the mark.
Ser. Nos. 75/386,729 and 75/606,017
7
mischaracterized by applicant as "towable trailers," are actually
"recreational vehicles, namely towable trailers, and excluding
motorhomes," goods which are distinctly different from "beverage
delivery trailers." In fact, all of the goods in the third-party
registrations, most notably, bicycles, bicycle frames, motor
homes, automobiles and recreational vehicles, are specifically
different from the "beverage delivery trailers" involved in this
case.
We are also unpersuaded by applicant's apparent claim, based
on the third-party registrations, and relying on In re Dayco
Products-Eaglemotive Inc., 9 USPQ2d 1910 (TTAB 1988), that VISION
is a weak mark because it is a "suggestively laudatory term."
Applicant maintains that VISION is suggestive of goods that are
"a product of the envisioned future...hence its popularity as a
trademark." As set forth in Dayco, third-party registrations may
be used to show the dictionary or commonly understood meaning of
a term in a particular field.5 For example, the suggestive
meaning of the word "vision" is apparent in the registered mark
HAVAVISION for trucks equipped to provide mobile television
services. We also note that eight of the other third-party
5 The Board in Dayco found the third-party registrations submitted in
that case to be probative to demonstrate that the word IMPERIAL has
been adopted by others in the vehicular field to refer to "that term's
ordinary significance as a laudatory designation."
Ser. Nos. 75/386,729 and 75/606,017
8
"vision" registrations are for various types of vehicle mirrors,
or goods such as windshield wipers, windshield wiper blades and
windshield visors, types of goods which are used to improve a
field of vision. There is no question that the term VISION has
an ordinary, well-understood, dictionary meaning in the context
of such goods, and it might explain its "popularity" as a mark
for those types of goods. However, that suggestive meaning is
simply not applicable to the goods in either the involved
applications or the cited registration. Even assuming that the
term VISION does have some vague suggestive meaning in relation
to the goods in this case, the evidence fails to establish that
the term is highly suggestive of beverage delivery trailers or
weak in relation to those goods.
Turning to the goods, the Examining Attorney argues that
trucks and trailers are related goods in that trailers are
dependent on trucks in order to haul cargo. The Examining
Attorney has relied on a dictionary definition of "trailer" as
"[a] large transport vehicle designed to be hauled by a truck or
tractor" and copies of at least fourteen use-based third-party
registrations covering both types of goods under the same marks.6
6 The Examining Attorney has also attached a number of third-party
registrations which issued on the basis of foreign registrations rather
than use in commerce and are therefore of limited probative value.
Ser. Nos. 75/386,729 and 75/606,017
9
Applicant maintains that although "[m]ost goods classified
in...Class 12...are related to each other in purpose...,in a weak
mark analysis, such relatedness is not enough to demonstrate a
likelihood of confusion." Applicant contends that both trucks
and beverage delivery trailers are expensive items, purchased by
professionals for use in business, and that there is no evidence
in the record to show that trucks and "beverage delivery
trailers" move through the same channels of trade.7
Where the marks are identical, as in one of these cases, it
is only necessary that there be a viable relationship between the
goods in order to support a holding of likelihood of confusion.
In re Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983). Nevertheless, more than a viable relationship
exists between the goods in these cases. In fact, registrant's
trailers are encompassed by the trucks identified in these
applications. As set forth in The Random House Dictionary of the
English Language (2nd ed.), of which we have taken judicial
notice, a "truck" is described as "any of various forms of
vehicle for carrying goods and materials, usually consisting of a
single self-propelled unit but also often composed of a trailer
7 At the oral hearing, applicant for the first time raised the argument
that the beverage trailers in the cited registration are
"refrigerated." There is no evidence that beverage delivery trailers
must be refrigerated, or even if so, that some form of vehicle other
than "trucks" would be required to transport such trailers.
Ser. Nos. 75/386,729 and 75/606,017
10
vehicle hauled by a tractor unit."8 (Emphasis added). It can be
seen from this definition that applicant's trucks could consist
of a tractor paired with a trailer, such as registrant's beverage
delivery trailer. As such, these are goods which purchasers
would naturally expect to emanate from the same source.
Moreover, it is not even necessary that the goods of the
applicant and registrant be similar or competitive or even sold
through the same channels of trade to support a finding of
likelihood of confusion. See Luzier Inc. v. Marlyn Chemical Co.,
Inc., 442 F.2d 973, 169 USPQ 797 (CCPA 1971) and Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
It is sufficient if the respective goods are related in some
manner and/or that the conditions surrounding their marketing are
such that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with, the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Thus, even if registrant's goods are not considered to be
specifically encompassed by applicant's goods, they are,
nonetheless, closely related. It is clear from the dictionary
8 The Board may take judicial notice of dictionary definitions. In re
3Com Corp., 56 USPQ2d 1060 (TTAB 2000). The word "tractor" in this
context refers to the "cab" of a truck or "a truck with short chassis
and no body used in combination with a trailer for the highway hauling
of freight."
Ser. Nos. 75/386,729 and 75/606,017
11
definition of "trailer" submitted by the Examining Attorney, that
trucks and trailers are complementary transport vehicles designed
to be used together for a common commercial purpose, i.e., to
haul freight. Such complementary use been recognized as a
relevant consideration in determining a likelihood of confusion.
See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
In addition, the fourteen third-party registrations
submitted by the Examining Attorney show, in each instance, that
the same marks are registered for both trucks and trailers.9
While the particular types or functions of the trailers are not
specified, the registrations suggest that the respective goods
are of a type which may emanate from a single source. See, e.g.,
In re Albert Trostel & Sons Co., supra at 1785-1786; and In re
Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).
We agree that trucks and beverage delivery trailers are
expensive, and that the overlapping customers for those goods
would be relatively careful and knowledgeable purchasers.
However, even such purchasers of expensive goods are not immune
from source confusion, particularly under circumstances where, as
9 Applicant has made of record a number of its registrations including
Registration No. 1,146,847 for the mark MACK for trucks. The Examining
Attorney has submitted a copy of applicant's pending application
(Serial No. 75/558,995) for the mark MACK for trailers.
Ser. Nos. 75/386,729 and 75/606,017
12
here, closely related goods are sold to the same purchasers under
marks which are identical in one case and substantially similar
in the other.10 See In re Total Quality Group Inc., 51 USPQ2d
1474 (TTAB 1999).
Finally, to the extent that there is any doubt on the issue
of likelihood of confusion, it is settled that such doubt must be
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register in each case is affirmed.
10 We note applicant's contention that the Board should not decide
there is a "marketplace problem" because registrant has "yet to object
to Applicant's use which has been extensive to date." For one thing,
the involved applications are based on an intent to use the marks in
commerce. There is no evidence of any use of these marks whatsoever,
let alone extensive use. In any event, we would not infer merely from
registrant's lack of objection that there is no "marketplace problem."
See, e.g., In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994).