Mahindra Vehicle Sales and Service, Inc.

Trademark Trial and Appeal Board

Jan 15, 2021

88343768 (T.T.A.B. Jan. 15, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Mahindra Vehicle Sales and Service, Inc.
_____

Serial No. 88343768
_____

Bryan J. Schomer of Dickenson Wright PLLC,
for Mahindra Vehicle Sales and Service, Inc.
Alina Morris, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
_____

Before Cataldo, Goodman and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Mahindra Vehicle Sales and Service, Inc., applied to register the mark
ROXWRAP, in standard characters, on the Principal Register for “Pre-designed
vehicle wraps specifically adapted for utility terrain vehicles (UTVs)” in International
Class 12.1

1 Application Serial No. 88343768 was filed on March 18, 2019 based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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The Trademark Examining Attorney refused registration 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 the identified goods, so resembles the registered mark ROX
SPEED FX,2 in standard characters on the Principal Register for various goods and
services in International Classes 12, 25, and 35 (“the Registration”), including, in
relevant part, the below-identified goods in Class 12, as to be likely to cause
confusion:3
Parts and accessories for snowmobiles, namely, handlebars, handlebar
risers, handguards, handguard mounts, handguard flares, running
board grip strips, running board edge grippers, running board traction
plates, running board powder grips, number plates, snake straps, bar
pads and sticker wraps; parts and accessories for all-terrain vehicles
(ATVs), namely, handlebars, handlebar risers, handguards, handguard
mounts, handguard flares, dash panels, relocation plates, ring levers,
bar pads, lock spacers and sticker wraps; parts and accessories for
motorcycles, namely, handlebars, handlebar risers, handguards,
handguard mounts, handguard flares, dash panels, bar pads, lock
spacers and sticker wraps,” in International Class 12.

When the refusal was made final, Applicant filed a request for reconsideration,
which was denied. Applicant then filed an appeal. The appeal is fully briefed.
We affirm the refusal.
I. Applicable Law
The fundamental purpose of Trademark Act § 2(d) is to prevent confusion as to
source, and to protect registrants from damage caused by registration of confusingly

2 Registration No. 4438298, registered November 26, 2013, Sections 8 and 15 (declarations of
use and incontestability) acknowledged/accepted.
3 The Registration also includes the following goods in International Classes 25 and 35:
“Clothing, namely, hats” (Class 25), and “Retail store services and online ordering services
featuring clothing (Class 35).
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similar marks. Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ
327, 331 (1985). Our analysis is based on all of the probative evidence of record. In re
E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”). In making our determination, we consider each DuPont factor for which
there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various
evidentiary factors may play more or less weighty roles in any particular
determination”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”).
A. Similarity of the Goods and Trade Channels

The second DuPont factor considers the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” and the third
DuPont factor considers the “similarity or dissimilarity of established, likely-to-
Serial No. 88343768
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continue trade channels.” DuPont, 177 USPQ at 567.
In analyzing the second DuPont factor, we look to the identifications in the
application and cited registrations, and not extrinsic evidence of actual use. See In re
Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749); Octocom Sys., Inc.
v. Hous. Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
It is “not necessary that the goods be identical or even competitive to support a finding
of a likelihood of confusion.” Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). “[L]ikelihood of confusion can be found ‘if the
respective goods are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they
emanate from the same source.’” Id.
1. Examining Attorney’s Evidence and Arguments
The Examining Attorney contends that “the parties’ goods are similar, closely
related, and provided by the same sources.”4 “Most relevantly,” she argues,
Applicant’s “Pre-designed vehicle wraps specifically adapted for utility terrain
vehicles (UTVs)” are “very similar and closely related” to Registrant’s “Parts and
accessories for snowmobiles, namely…sticker wraps; parts and accessories for all-
terrain vehicles (ATVs), namely…sticker wraps; parts and accessories for
motorcycles, namely … sticker wraps” because “they are all wraps used for the

4 8 TTABVUE 9 (Examining Attorney’s Brief).
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purpose of decorating and/or refinishing light and sporty outdoor land vehicles,” and
“the same entities commonly provide wraps for these goods.”5 She further asserts that
“the goods travel in the same channels of trade.”6
In support of her contentions, the Examining Attorney provides Internet evidence
consisting of screenshots from a number of third-party retailers that she asserts show
that “the same entities commonly provide wraps for ATVs, UTVs, and motorcycles,”
including the following excerpts taken therefrom:
Camo Wraps7

5 Id. at 10.
6 Id.
7 May 31, 2019 Office Action, TSDR 8-9.
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Wake Graphics8

Allterrain Depot9

8 Id. at 13.
9 November 26, 2019 Final Office Action, TSDR 9.
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The Examining Attorney provides additional third-party retailer screenshots to
show that “the same entities commonly produce, market, and/or provide wraps in the
nature of body stickers or decals for UTVs, ATVs, snowmobiles and motorcycles,
including these excerpts taken therefrom:
Bonanza.com10

10 November 26, 2019 Final Office Action, TSDR 12-17.
Serial No. 88343768
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Botgals11

11 Id. at 18-20.
Serial No. 88343768
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Serial No. 88343768
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CreatorX Custom Graphics12

12 Id. at 21.
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Ebay13

13 Id. at 22.
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Mossy Oak Graphics14

14 Id. at 25.
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TCSLAW Market15

Vivid Racing16

15 Id. at 26.
16 Id. at 27-31.
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2. Applicant’s Evidence and Arguments
Applicant argues that “likelihood of confusion is avoided because the goods of the
parties are different … Clearly, [Applicant’s] goods and the cited goods in the
registration do not directly compete, as [Applicant’s] goods are specifically adapted
for UTVs and the registered goods are parts or accessories for snowmobiles, ATVs
Serial No. 88343768
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and motorcycles.”17
Additionally, Applicant argues that Registrant’s use of the term “sticker wraps”
in the Registration is ambiguous:18
As shown by the evidence made of record by the Examining Attorney,
‘sticker wraps’ or ‘vehicle wraps’ are large, cocoon-like, stretchy decals
that are designed by vehicle type and model to cover all or substantially
all of the body of the vehicle. … These fully-body decals are made of
protective material (such as vinyl) and are meant to last permanently or
semi-permanently. Providing protection, these products are functional
and not merely decorative.

While registrant’s identification of goods refers to registrant’s goods as
“sticker wraps,” the registrant’s specimen shows that registrant’s goods
are actually 12” or 24” “Vinyl Stickers” that function only as advertising
for registrant and its website:

Registrant’s goods are not the type of protective, full-body vehicle
adhesives that the trade denotes as “vehicle wraps” or “sticker wraps”.

Because the registrant’s use of the term “sticker wraps” in the
identification of goods was ambiguous, the Examining Attorney should
have considered the registrant’s actual use. When registrant’s actual
use is considered, there is little to no evidence of record showing that
consumers would deem the parties’ respective goods related. The
evidence cited by the Examining Attorney predominantly shows full-
body graphic adhesives.

17 6 TTABVUE 13-14 (Applicant’s Brief).
18 Id. at 14-15 (citations omitted).
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Applicant quotes from In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB
1990), cited in TMEP § 1207.01(a)(iii), as support for its contention that extrinsic
evidence should be considered in evaluating relatedness of the goods. There, the
Board held that “‘when the description of goods for a cited registration is somewhat
unclear … it is improper to simply consider that description in a vacuum and attach
all possible interpretations to it when the applicant has presented extrinsic evidence
showing that the description of goods has a specific meaning to members of the
trade.”19
3. Discussion
As a preliminary matter, we note that neither the Examining Attorney nor
Applicant submitted definitions of “utility terrain vehicles (UTVs)” or “all-terrain
vehicles,” assuming, perhaps, that the nature of those goods are generally known or
otherwise self-evident by their commercial names. Nor did they provide evidence
explaining the difference between these two categories of terrain vehicles. We take
judicial notice of the meaning of “all-terrain vehicle,” which is a “small motor vehicle
with three or four wheels that is designed for use on various types of terrain,”20 but
we find no accompanying definition for “utility terrain vehicles (UTVs) in readily
accessible dictionary sources. Nonetheless, based on the identifications of goods

19 Id. at 14.
20 https://www.merriam-webster.com/dictionary/all-terrain%20vehicle (accessed January 8,
2020). The Board may take judicial notice of dictionary definitions from online sources when
the definitions themselves are derived from dictionaries that exist in printed form or have
regular fixed editions. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB
2013); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Serial No. 88343768
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themselves, as well as the Internet evidence of record, we see no reason to find those
vehicles as anything but closely related. For the most part, the UTVs of record appear
to be a beefier version of the ATVs with two or more seats (versus the single seating
seen on ATVs) and, perhaps, a small cargo area. As the Examining Attorney observes,
both types of terrain vehicles are “sporty outdoor land vehicles,” as are Registrant’s
motorcycles.21 We therefore consider those vehicles related notwithstanding
Applicant’s unsupported contention that the parties’ goods are not competitive.
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1737 (Fed. Cir. 2017) (an applicant’s and registrant’s goods need not
be “competitive or intrinsically related” to find a likelihood of confusion).
Moreover, having carefully reviewed the evidence in its entirety, we agree with
the Examining Attorney that Applicant’s “Pre-designed vehicle wraps specifically
adapted for utility terrain vehicles (UTVs)” are “very similar and closely related” to
Registrant’s “Parts and accessories for snowmobiles, namely…sticker wraps; parts
and accessories for all-terrain vehicles (ATVs), namely…sticker wraps; [and] parts
and accessories for motorcycles, namely … sticker wraps” because “they are all wraps
used for the purpose of decorating and/or refinishing light and sporty outdoor land
vehicles,” and “the same entities commonly provide wraps for these goods.”22
With respect to Applicant’s ambiguity argument, the Examining Attorney argues

21 8 TTABVUE 10 (Examining Attorney’s Brief).
22 Id.
Serial No. 88343768
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that23
[T]here is no evidence that the vinyl stickers from registrant’s website
are the “sticker wraps” identified in the cited registration. Instead, the
evidence shows that the everyday understanding in the field of the term
“sticker wraps” are the same or closely similar goods to the “vehicle
wraps” of applicant. Moreover, the plain reading of “sticker wraps” in
registrant’s identification of goods is that these are indeed “sticker
wraps,” not vinyl stickers, due to the deliberate use of the word “wrap”
in the identification. Applicant seeks to recast registrant’s clear and
definite “sticker wraps” into an entirely different product in order to
advance its argument that the goods are not related, but there is no
doubt that the nature of the goods in the registration are closely related
to the “vehicle wraps” identified by applicant.

We agree. Indeed, we find that the evidence in this case is more than sufficient to
establish that the terms “stickers” and “wraps” (as well as “decals,” “graphics,” and
“kits,” or some combination of the foregoing) are routinely used, interchangeably, to
describe wrap around designs used on sports vehicles, including ATVs, UTVs,
motorcycles, and snowmobiles, in order to dress up and embellish those sporting
vehicles. As the Examining Attorney observes, “Applicant seeks to recast registrant’s
clear and definite ‘sticker wraps’ into an entirely different product in order to advance
its argument that the goods are not related, but there [is] no doubt that the nature of
the goods in the registration are closely related to the ‘vehicle wraps’ identified by
applicant.”24 Hence, we do not find that the identification of “sticker wraps” is
ambiguous.25 The Trackmobile decision is therefore distinguishable from and

23 Id. at 11.
24 Id. at 11.
25 Nor does Applicant’s evidence show, as Applicant contends, that Registrant only uses its
mark for “12” or 24” ‘Vinyl Stickers’ that function only as advertising for registrant and its
website,” and not “sticker wraps.” As the Examining Attorney notes, there is no evidence that
the vinyl stickers shown in Registrant’s specimen of use for its Class 35 retail store services
Serial No. 88343768
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inapplicable to the facts in this case.
Applicant’s argument and evidence regarding Registrant’s “sticker wraps,” veiled
as an ambiguity problem, also constitutes an impermissible collateral attack on the
Registration.26 According to Applicant, we should consider extrinsic evidence of
Registrant’s use in order to narrow the identification and distinguish it from
Applicant's goods. However, we find the plain language in the cited registration clear
and unambiguous, needing no interpretation. Cf. In re Trackmobile, Inc., 15 USPQ2d
1152 (TTAB 1990) (considering extrinsic evidence to interpret “vague” terminology
with special meaning in the industry). Therefore, we must rely on the identifications
of goods, not extrinsic evidence. Octocom Sys., 16 USPQ2d at 1787.
Based on the foregoing, we find that Applicant’s ““Pre-designed vehicle wraps
specifically adapted for utility terrain vehicles (UTVs)” and Registrant’s “Parts and
accessories for snowmobiles, namely…sticker wraps; parts and accessories for all-
terrain vehicles (ATVs), namely…sticker wraps; parts and accessories for
motorcycles, namely … sticker wraps” are closely related.
In addition, we find based on the record that the same entities commonly provide
sticker wraps, also known as vehicle wraps, for a variety of sports vehicles, including
UTVs, ATVs, motorcycles, and snowmobiles, which are available to the same end

are the “sticker wraps” identified in the cited registration. 8 TTABVUE 11 (Examining
Attorney’s Brief).
26 Under Trademark Act Section 7(b), a certificate of registration is prima facie evidence of
the validity of the registration. 15 U.S.C. § 1057(b). See In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB
2007); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 716.02(a)
(October 2018).
Serial No. 88343768
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customers interested in customizing and embellishing their outward appearance,
through some of the same channels of trade, namely, stores that offer vehicle wrap
customization.
The first and second DuPont factors weigh in favor of finding likelihood of
confusion.
B. Consumer Sophistication

The fourth DuPont factor, considers “[t]he conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. On the one hand, circumstances suggesting care in purchasing
may tend to minimize the likelihood of confusion between similar marks. See, e.g., In
re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985)
(concluding that, because only sophisticated purchasers exercising great care would
purchase the relevant goods, there would be no likelihood of confusion merely because
of the similarity between the marks NARCO and NARKOMED). On the other hand,
the fact that purchasers are sophisticated or knowledgeable in a particular field does
not mean they are immune to source confusion. See In re Shell Oil Co., 26 USPQ2d
at 1690 (“even sophisticated purchasers can be confused by very similar marks”).
Board precedent requires our decision to be based “on the least sophisticated
potential purchasers.” Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746
F.3d 1317, 1325, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (quoting Gen. Mills, Inc. v.
Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set
aside on other grounds, 110 USPQ2d 1679 (TTAB 2014).
Serial No. 88343768
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Applicant argues that “consumers of the parties’ respective products are
sophisticated” because Registrant’s snowmobiles and ATVs “for which registrant sells
accessories retail at prices ranging from $2,000 to $10,000 and up” and “[t]he 2020
base model of Appellant’s … UTVs begin at approximately $16,000. … Moreover,
adhesive wraps for UTVs range in price from about $300 to over $2,000. Accordingly,
purchasers of both parties’ goods are likely to exercise a high degree of care in a
purchasing decision and not buy on impulse, which further minimizes the likelihood
of consumer confusion” (internal citations omitted).27 The Examining Attorney, in
turn, argues that “[t]he evidence of record does not support the assertion that the
purchasing process for [the relevant] goods are subject to a higher degree of care by
sophisticated consumers.”28
Although Applicant emphasizes the high cost of Registrant’s snowmobiles and
UTVs as starting at $2,000, and Applicant’s own ATVs as starting at $16,000, the
goods in this case are not snowmobiles, ATVs, or UTVs; they are parts and accessories
for those vehicles. Thus, while consumers may give careful consideration before
spending thousands of dollars on a sports vehicle, the same cannot be assumed for
parts and accessories, here vehicle and sticker wraps. Neither Applicant’s
identification of goods nor the goods identified in the cited registration restrict the
vehicle and sticker wraps to more expensive or “high end” wraps. Thus, the identified
goods must be presumed to encompass more modestly priced vehicle and sticker

27 6 TTABVUE 16 (Applicant’s Brief) (referring to evidence provided with Applicant’s May
26, 2020 Request for Reconsideration, TSDR 30-67).
28 8 TTABVUE 12 (Examining Attorney’s Brief).
Serial No. 88343768
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wraps as well expensive ones. As the Examining Attorney points out, her evidence
“shows prices for numerous wraps under $100, including as low as $26.40.” See, for
example, the Botgals and TCSLAW Market wraps highlighted above in the
relatedness section of this decision.
Moreover, even to the extent consumers are careful, they are not immune to source
confusion. In re Shell Oil Co., 26 USPQ2d at 1690. We thus find the fourth DuPont
factor neutral in this case.
C. Similarity and Strength of the Marks

We turn now to the first DuPont factor, which requires us to determine the
similarity or dissimilarity of the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial impression. Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). The test is not whether the marks can be distinguished
in a side-by-side comparison, but rather whether their overall commercial
impressions are so similar that confusion as to the source of the goods offered under
the respective marks is likely to result. See Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (citing Coach Servs., 101 USPQ2d at 1721).
Our focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. See Neutrogena Corp. v.
Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers
“may have but dim recollections from having previously seen or heard one or the other
Serial No. 88343768
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of the involved marks.”); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740
(TTAB 2014).
Applicant’s mark is ROXWRAP and Registrant’s mark is ROX SPEED FX. Each
mark shares the term “ROX” followed by other wording that is either descriptive or
generic. In Applicant’s mark, the term “WRAP” appears to be a generic term
identifying Applicant’s pre-designed vehicle wraps specifically adapted for UTVs. 29
In Registrant’s mark, “SPEED FX” may be descriptive of Registrant’s goods.30
Applicant appears to assume this to be true, arguing that “the term ‘SPEED’ and the
abbreviation ‘FX’ (short for ‘effects’). Thus, the registered mark ROX SPEED FX
overall connotes that registrant’s goods are performance enhancing accessories.”31
The Examining Attorney argues that “applicant’s mark ‘ROXWRAP’ creates a
confusingly similar overall commercial impression as [sic] the cited registered mark
‘ROX SPEED FX’” because “ROX” is the dominant element in both marks.32 This is
based on her assertion that (1) both marks lead with the identical and distinctive
term ROX; (2) the other wording in Applicant’s compound mark, “WRAP,” is generic

29 “[A] term can be generic for a genus of goods or services if the relevant public …
understands the term to refer to a key aspect of that genus.” Royal Crown Co. v. Coca-Cola
Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (quoting In re Cordua Rests.,
823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016). “[A] term is generic if the relevant
public understands the term to refer to part of the claimed genus of goods or services, even
if the public does not understand the term to refer to the broad genus as a whole.” Id. (citing
Cordua Rests., 188 USPQ2d at 1638 (emphasis added).
30 Although the Examining Attorney points out that “SPEED FX” is disclaimed in the
Registration, there is no evidence of record that the disclaimer was made pursuant to an
examining attorney requirement rather than a voluntary submission.
31 6 TTABVUE 13 (Applicant’s Brief).
32 8 TTABVUE 5-6 (Examining Attorney’s Brief).
Serial No. 88343768
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for Applicant’s vehicle wraps; and (3) the other wording in Registrant’s mark,
“SPEED FX.” is descriptive of Registrant’s sticker wraps.33 Thus, she finds that “[i]t
is the identical term “ROX” in both marks that carries the source-identifying
significance, and including additional descriptive or generic terms is not sufficient to
change the overall connotation or commercial impression to one which is not
confusingly similar.”34 To the contrary, she argues that “‘ROXWRAP’ and ‘ROX
SPEED FX’ are confusingly similar, and consumers encountering the marks in the
same commercial channels are likely to confuse the marks or at least mistake the
underlying sources of closely-related goods provided under the marks.”35
Applicant disputes that the marks are similar, arguing that the refusal “fail[ed]
to give due consideration to the marks as a whole, and improperly places undue
weight on the shared term [ROX],” which Applicant contends argues is conceptually
weak.36 As support for this contention, Applicant asserts that it is “undisputed that
‘ROX’ is a common alternative spelling for ‘ROCKS,’ and that the term ‘rock’ refers to
‘a large mass of stone forming a hill, cliff, promontory, or the like’ and also means ‘to
be very good, impressive, exciting or effective[.]’37 Therefore, Applicant urges, when

33 Id.
34 Id. at 7.
35 Id. at 9.
36 6 TTABVUE 9 (Applicant’s Brief).
37 Id. at 8. Applicant did not provide evidence showing “ROX” to be a “common alternate
spelling,” or the asserted definition of “ROCKS,” and instead notes the definitions in its brief
purportedly obtained from The Free Dictionary’s Acronym Finder (for the acronym “ROX”)
and the Dictionary.com (for the definition for “ROCKS”). Applicant requests that we take
judicial notice of them. The Examining Attorney did not object to these requests. While the
record should be complete upon filing of the appeal, Trademark Rule 2.142(d), 37 C.F.R. §
2.142(d), the Board may take judicial notice of dictionary definitions from online sources
Serial No. 88343768
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ROX in connection with the parties’ respective goods, the term is “conceptually weak
because it is highly suggestive of the terrain on which such sport vehicles would be
driven. The term is also laudatory.” Applicant concludes that “[t]he conceptual
weakness of the shared term “ROX” suggests that consumers will look to other
elements of Appellant’s mark and the cited registration to identify and distinguish
source.”
We are unpersuaded by this argument. Although the Examining Attorney does
not challenge Applicant’s assertion that ROX is a common alternative spelling for
ROCKS, that does not make it fact.38 Moreover, Applicant’s unsupported contention
that consumers would perceive the ROX element in Applicant’s mark as being “highly
suggestive of the terrain on which sports vehicles would be driven,” or laudatory for
the goods that are “very good, impressive or exciting,” is dubious and speculative at
best. As the Examining Attorney puts it, “the series of mental leaps undertaken by
applicant to get from the coined term ‘ROX’ to the contention that it is laudatory (i.e.,
‘[it] rocks!’) or suggestive (of rocks, e.g., rocky terrain) is the very hallmark of a

when the definitions themselves are derived from dictionaries that exist in printed form or
have regular fixed editions, and we do so here. See In re White Jasmine LLC, 106 USPQ2d
1385, 1392 n.23 (TTAB 2013); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
https://www.dictionary.com/browse/rocks?s=t
https://acronyms.thefreedictionary.com/ROX, accessed on January 13, 2020)

38 The Free Dictionary, from which we judicially noticed the ROX acronym definitions, is
invites users to “Suggest [a] new definition” (https://acronyms.thefreedictionary.com/ROX).
The website’s acronym dictionary is “powered by Acronym Finder”
(https://acronyms.thefreedictionary.com/), which explains that its data “Acronym Finder is
not a glossary of terms, web search engine, or dictionary or a thesaurus -- it is only designed
to search for and expand acronyms and abbreviations” (emphasis added) (pages accessed
January 14, 2021).
Serial No. 88343768
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distinctive term.”39 She also points out that Applicant, in its request for
reconsideration of the refusal, argued that “‘ROX’ is a clear reference to Applicant’s
well-known registered, house mark ROXOR under which Applicant sells utility
terrain vehicles (‘UTVs’) and related accessories.” While this argument is also
unsupported, it suggests that Applicant also considers the term distinctive.
Consequently, we do not find the shared term ROX to be weak or “highly suggestive”
in a manner that limits the scope of protection afforded to the registration. See Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir.
2015) (“Marks that are descriptive or highly suggestive are entitled to a narrower
scope of protection.”); Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 750 (TTAB 1986)
(“there is nothing in our trademark law which prescribes any different protection for
suggestive, nondescriptive marks than that which is accorded arbitrary and fanciful
marks”); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“the fact
that a mark may be somewhat suggestive does not mean that it is a ‘weak’ mark
entitled to a limited scope of protection”).
Nor do we find that the Examining Attorney “improperly places undue weight on
the shared term [ROX]” in the marks. Although marks must be considered in their
entireties, it is settled that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this dominant feature in
determining the similarity of the marks. In re Viterra, 101 USPQ2d 1908; In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing

39 8 TTABVUE 8.
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improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed, this type of analysis appears
to be unavoidable.”).
Applicant argues that Applicant’s and Registrant’s marks “look and sound very
different” because of they are “structured differently and end in completely different,
unrelated words (‘ROXWRAP’ vs. ‘ROX SPEED FX’), and they “differ significantly in
meaning, connotation and commercial impression.”40 In particular, Applicant argues
that
[Applicant’s] mark is a single, seven-letter word. It is visually and
aurally distinctive because it is a coined term and because of the
rhythmic alliteration created by the repeated letter “r” at the beginning
of each syllable when the term is spoken aloud. Also, when [Applicant]
fused the words “rox” (rocks) and “wrap” it created a unitary term that
is conceptually arbitrary (i.e., the meanings, if any, of “rocks wrap” are
uncertain at best) and not descriptive of Appellant’s claimed vehicle
wrap products in any meaningful way despite containing the term
“wrap”.

[Registrant’s] mark is not a compound word; it comprises three separate
words of three, five and two letters each. It creates a different
alliterative sound because the repeated letter is an “x” (not an “r”) that
comes at the end of the first and third syllables (rather than the
beginning). Also, its visual presentation is different because it relies on
alternative spellings for common words, e.g., “ROX” for “ROCKS” and
“FX” for “EFFECTS”.41

Applicant lays much stress on its combination of “ROX,” which is at most
suggestive of the parties’ goods, and “WRAPS, which is descriptive or generic of them,

40 6 TTABVUE 12-13 (Applicant’s Brief).
41 Id. at 12-13.
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which Applicant argues results in a coined term that is “unitary and conceptually
arbitrary.” However, it is immaterial that Applicant’s is a compound term that lacks
a space between the terms ROX and WRAPS, and we find that the absence of a space
does not alter the overall commercial impression of Applicant’s mark or distinguish
it from Registrant’s mark. See, e.g., In re ING Direct Bancorp, 100 USPQ2d 1681,
1690 (TTAB 2011) (finding “Person2Person Payment” generic despite deletion of
spaces); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009)
(finding that DESIGNED TO SELL does not create a distinct commercial impression
from DESIGNED2SELL).
We likewise see no merit in Applicant’s contention that the purported “rhythmic
alliteration created by the repeated letter ‘r’ at the beginning of each syllable” in
Applicant’s mark results in a visual and aural difference that meaningfully
distinguishes its mark from Registrant’s ROX SPEED FX mark. Applicant cites no
precedent, nor are we aware of any, holding that a descriptive or generic term, such
as WRAPS here, is to be given more weight if it starts with the same letter as a
preceding, distinctive term.
We hasten to add that because both Applicant’s and Registrant’s marks are in
standard characters, we must consider that both marks may be presented in the same
font, size and color. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB
2018). As such, Registrant’s mark could be depicted in any font size, style or color
that Applicant might adopt for its mark. In re Viterra Inc., 101 USPQ2d at 1909-11;
Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259
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(Fed. Cir. 2011) cited in Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1823 (TTAB 2015).
Applicant relies heavily on In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238
(Fed. Cir. 1992), where the Federal Circuit reversed a Board decision that refused
registration of VARGA GIRL because there was a likelihood of confusion with the
registered mark VARGAS. While noting that the determination is highly fact-specific,
the Court stated:
The appearance, sound, sight, and commercial impression of VARGA
GIRL derive significant contribution from the component “girl”. By
stressing the portion “varga” and diminishing the portion “girl”, the
Board inappropriately changed the mark. Although the weight given to
the respective words is not entirely free of subjectivity, we believe that
the Board erred in its diminution of the contribution of the word “girl”.
When GIRL is given fair weight, along with VARGA, confusion with
VARGAS becomes less likely.

982 F.2d at 1239 (footnote omitted).
For the reasons discussed earlier, the Hearst decision cited by Applicant is
distinguishable. There, the first term in the applicant’s mark VARGA GIRL was
similar but not identical to the registrant’s mark VARGAS, and the Court found that
“[t]he appearance, sound, sight, and commercial impression of VARGA GIRL derives
significant contribution from the component ‘girl.’” In re Hearst Corp., 25 USPQ2d at
1239. “The Court recognized that the weight given terms in a mark is “not entirely
free of subjectivity” and provided examples to “illustrate the fact-dependency of such
determinations.” Id. at 1239, n.2. This case differs significantly from Hearst, as the
first term in Applicant’s mark is identical to the first term in Registrant’s mark, is
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distinctive, and the remaining wording in both marks are either descriptive or
generic.
Summarizing, while we acknowledge there are differences between Applicant’s
mark ROXWRAP and Registrant’s mark ROX SPEED FX, we find that they are more
similar than dissimilar. They share the leading and dominant term, ROX, upon which
consumers are more inclined to focus, and the other elements in the respective marks
are either descriptive, generic, or highly descriptive. See Palm Bay Imps., Inc., 73
USPQ2d at 1692 (finding similarity between VEUVE ROYALE and two VEUVE
CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the
first word in the mark and the first word to appear on the label’); Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed Cir.
1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA
in part because “consumers must first notice th[e] identical lead word”).
Consequently, when viewed in their entireties, we find that the marks share the same
overall commercial impression and are thus confusingly similar.
The first DuPont factor weighs in favor of finding likelihood of confusion.
II. Conclusion
In sum, we find that Applicant’s mark ROXWRAP and Registrant’s ROX SPEED
FX mark, when considered in their entireties, are confusingly similar, particularly as
to their overall commercial impression, and that Applicant’s and Registrant’s goods
are commercially related to each other and the classes of purchasers overlap. In view
thereof, we find Applicant’s mark for its identified goods to be likely to cause
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confusion with Registrant’s mark for its identified goods.
Decision: The refusal to register is affirmed.