Mattel, Inc.v.Leonard Stitz

Trademark Trial and Appeal Board

Apr 20, 2004

No. 91117536 (T.T.A.B. Apr. 20, 2004)

Mailed: April 20, 2004
Paper No. 33
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Mattel, Inc.
v.
Leonard Stitz
_______
Opposition No. 91117536
to Application No. 75773292
filed on August 10, 1999
_______
Jill M. Pietrini and Andrew Klungness of Manatt, Phelps &
Phillips for Mattel, Inc.
Leonard Stitz, Pro Se.
_______
Before Quinn, Walters and Bottorff, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Mattel, Inc. filed its opposition to the application of
Leonard Stitz to register the mark COOLWHEELS.COM for
“computerized on-line retail services in the field of
automobile accessories,” in International Class 35.1

1 Application Serial No. 75773292, filed August 10, 1999, based upon use
of the mark in commerce, alleging dates of first use and first use in
commerce as of December 1, 1998.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 91117536
2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s services, so
resembles opposer’s previously used and registered HOT
WHEELS marks and family of HOT marks, listed below, for toy
vehicles and other associated goods and services, as to be
likely to cause confusion, under Section 2(d) of the
Trademark Act.2
Applicant, in its answer, denied the salient
allegations of the claim.3
The Record
The record consists of the pleadings; the file of the
involved application; certified status and title copies of
opposer’s asserted registrations and application files; and
excerpts from publications, all properly made of record by
opposer’s notices of reliance.4 Opposer did not take
testimony. Applicant did not submit evidence or take
testimony. Both parties filed briefs on the case but a
hearing was not requested.

2 Opposer also alleged ownership of a pending application for the mark
COOL WHEELS (Serial No. 75526562). However, the records of the USPTO
show that this application has been abandoned. Therefore, the
application has not been considered.
3 Applicant asserted affirmative defenses pertaining to opposer’s then-
pending application to register COOL WHEELS. In view of the abandonment
thereof, such defenses have not been considered. Applicant’s references
to an interference as the proper method for resolution of the issues
herein are incorrect and inapposite and have not been considered
further.
4 Applicant’s objections to the admissibility of this evidence are not
well taken and are overruled.
Opposition No. 91117536
3
Factual Findings
Opposer established its ownership and the status of the
following pleaded registrations5:
2,124,334
Registered
12/23/97
HOT WHEELS COLLECTIBLES “Toy vehicles”
Disclaimer of
COLLECTIBLES
2,310,162
Registered
1/25/00
HOT WHEELS “On-line retail
stores services
featuring toys,” and
“entertainment,
educational and
information services,
namely, providing
data and information
concerning
collectible toy
vehicles,
professional
automobile racing
cars, professional
automobile races, and
standard, custom and
classic automobiles,
providing general
interest stories
directed toward toy
vehicle collectors
and enthusiasts, and
providing multi-user
interactive computer
games, all of which
are provided via a
global computer
network”

5 Several registrations alleged in the notice of opposition, and for
which status and title copies were submitted, have since been cancelled.
These cancelled registrations are of no evidentiary value and have not
been listed or considered.
Opposition No. 91117536
4
884,563
Registered
1/20/70;
Renewed;
§§8 & 15
“Toy miniature
automobiles and
accessories therefor”
2,112,667
Registered
11/11/97
HO! HO! HOT ROD “Toy vehicle and
accessories”
Disclaimer of HOT ROD
1,961,774
Registered
3/12/96;
§§8&15
“Clothing, namely tee
shirts”
2,186,501
Registered
9/1/98
HOT WHEELS CRAZY CLASSICS “Toy vehicles”
Disclaimer of
CLASSICS
2,182,667
Registered
8/18/98
HOT WHEELS CUSTOM RODS “Toy vehicles and
accessories therefor”
1,906,461
Registered
7/18/95;
§§8&15
HOT WHEELS “Watches and clocks”
2,152,705
Registered
4/21/98
HOT WHEELS “Prerecorded computer
storytelling
software, audio and
video cassettes
featuring games and
storytelling, musical
sound recordings
featuring games and
storytelling, audio
sound recordings
featuring games and
storytelling and
video sound
recordings featuring
games and
storytelling,
Opposition No. 91117536
5
screensaver programs,
CD-ROM featuring
directories of toy
vehicles, all for
informational,
educational and
entertainment uses;
and merchandising
kiosks for use with
computer software,
audio sound and video
sound recordings, and
the like for
informational,
educational and
entertainment uses,”
“coin-operated arcade
games, prerecorded
computer game
cartridges,
cassettes, cards,
discs and programs
for informational,
educational and
entertainment uses;
electronic hand-held
games; computer game
joysticks, adapters,
connectors and
controllers for use
with prerecorded
computer software,
audio and video
cassettes, CD-ROM,
game cartridges, game
cassettes, game cards
and game discs, all
for informational,
educational and
entertainment uses,”
and “providing access
to interactive
computer on-line
services featuring
games, stories and
directories for toys,
games and sporting
goods”
Opposition No. 91117536
6
2,309,697
Registered
1/18/00
“Toy vehicles and
accessories therefor”
Disclaimer of “30
YEARS” and “1968-
1998”
“The lining is a
feature of the mark
and does not indicate
color. The lining is
for shading purposes
only and does not
indicate color.”
2,259,568
Registered
7/6/99
HOT WHEELS … LEADING THE
WAY!
“Toy vehicles and
accessories therefor”
2,131,224
Registered
1/20/98
HOT DRIVIN’ “Toy vehicles”
2,242,325
Registered
5/4/99
HOT RODS “Activity toys,
namely, snap together
construction toys”
907,266
Registered
2/2/71;
Renewed;
§§8&15
HOT WHEELS “candy”
2,164,633
Registered
6/9/98
HOT WHEELS “Flying discs”
2,152,706
Registered
4/21/98
“Prerecorded computer
storytelling
software, audio and
video cassettes
featuring games and
storytelling, musical
Opposition No. 91117536
7
sound recordings
featuring games and
storytelling, audio
sound recordings
featuring games and
storytelling and
video sound
recordings featuring
games and
storytelling,
screensaver programs,
CD-ROM featuring
directories of toy
vehicles, all for
informational,
educational and
entertainment uses;
and merchandising
kiosks for use with
computer software,
audio sound and video
sound recordings, and
the like for
informational,
educational and
entertainment uses,”
“coin-operated arcade
games, prerecorded
computer game
cartridges,
cassettes, cards,
discs and programs
for informational,
educational and
entertainment uses;
electronic hand-held
games; computer game
joysticks, adapters,
connectors and
controllers for use
with prerecorded
computer software,
audio and video
cassettes, CD-ROM,
game cartridges, game
cassettes, game cards
and game discs, all
for informational,
educational and
entertainment uses,”
Opposition No. 91117536
8
and “providing access
to interactive
computer on-line
services featuring
games, stories and
directories for toys,
games and sporting
goods”
2,019,877
Registered
11/26/96;
§§8&15
HOLIDAY HOT WHEELS “Toy vehicles”
2,084,614
Registered
7/29/97
HOT WHEELS WORLD “Toy vehicles”
1,810,905
Registered
12/14/93;
Renewed;
§§8&15
“Toy vehicles and
raceset; namely,
launcher, tracks,
building structures,
and accessories
therefore”
2,105,646
Registered
10/14/97;
§§8&15
HOT WHEELS “Clothing, namely
jackets, coats,
vests, sweatshirts,
shirts, T-shirts,
pants, belts,
suspenders, ties,
scarves, mittens,
gloves and
undergarments such as
boxer shorts;
footwear; and
headwear”
2,287,008
Registered
10/19/99
HOT SEAT “Toy vehicles and
accessories therefor”
2,205,918
Registered
11/24/98
HOT WHEELS “Plastic dinnerware,
and acrylic tumblers”
Opposition No. 91117536
9
Opposer also established that it filed 18 applications
for various HOT WHEELS and HOT marks for a variety of goods
and services.6 Opposer’s statements in its brief (pp. 2, 5-
6) that these applications establish its “ownership,
priority of use, show the goods offered by [opposer], and
provide presumptions of validity and ownership” or that
these applications establish opposer’s “intent to expand
into products used for ‘real’ vehicles” are incorrect.
Opposer’s status and title copies of its applications
establish only that the applications were filed at the
USPTO.
Opposer submitted by notice of reliance twenty-one
excerpts from various publications dated between 2000 and
2002 and retrieved from the LEXIS/NEXIS database. Each
article contains references to opposer’s mark HOT WHEELS in
connection with toy vehicles and several other products.
Several excerpts discuss nostalgia among adults for HOT
WHEELS toy vehicles; several excerpts discuss other products
for which the HOT WHEELS mark is licensed; and several
excerpts characterize opposer’s HOT WHEELS toy car as a top
seller in the industry. In its brief, opposer stated that
this evidence “demonstrates strength of HOT WHEELS,”

6 In its brief, opposer asserted that one of its applications has
matured to registration. However, opposer did not submit a status and
title copy of the registration or seek to amend its notice of opposition
to add this registration to its claim. Nor is there any indication that
applicant consents to its inclusion in the record. Therefore, any such
Opposition No. 91117536
10
“establishes continuous use of HOT WHEELS,” “shows
[opposer’s] channels of trade and sales,” “shows [opposer’s]
brand extension through licensing,” and “shows [opposer’s]
relationship with automobiles.” However, these excerpts
from publications indicate, at most, that the authors of the
articles and the public reading the articles were exposed to
the information contained in the excerpts. The articles
constitute hearsay as to the truth of the statements
contained therein and, thus, while this evidence has been
considered as part of the record, it has not been considered
for the truth of such statements.7
Analysis
Inasmuch as certified status and title copies of
opposer’s registrations are of record, there is no issue
with respect to opposer’s priority. King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA

additional registration is not part of the record and has not been
considered.
7 Applicant’s objection to opposer’s publications evidence as hearsay is
granted to the extent noted, but otherwise applicant’s objections are
denied because, as noted supra, the objections are without merit.
Opposition No. 91117536
11
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
See also In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999) and the cases cited therein.
Opposer contends that its HOT WHEELS marks are famous
and asks the Board to take judicial notice thereof. Opposer
also contends that it owns a family of HOT or HOT WHEELS
marks; and that the parties’ marks are similar in sound,
appearance and meaning. Opposer argues that the “.COM”
portion of applicant’s mark is merely a top level Internet
domain name and, as such, is of no source-indicating
significance; that both marks consist of a word denoting
temperature followed by the same word “WHEELS”; that the
terms “HOT” and “COOL” have opposite literal meanings, but
are associative terms; and that the slang meanings of the
two terms “HOT” and “COOL” are similar. With its brief,
opposer submitted dictionary definitions8 of “cool” as,

8 The American Heritage Dictionary of the English Language, 4th ed.,
2000.
Opposition No. 91117536
12
inter alia, “Slang. a. Excellent; first-rate. b. Acceptable;
satisfactory,” and of “hot” as, inter alia, “Slang. Very
good or impressive.”
Opposer also contends that the parties’ goods and
services are related or overlapping; that applicant’s
services are within opposer’s “demonstrated zone of natural
expansion”; and that the trade channels are overlapping.
Applicant’s contentions are inapposite or, at best,
obtuse. However, it is clear that applicant contends that
opposer has not proven facts sufficient to establish its
case.
The first du Pont factor we consider is the fame of
opposer’s marks. Opposer submitted absolutely no evidence
establishing the fame of its marks. The publications
submitted by opposer do demonstrate, as opposer argues, that
“the HOT WHEELS marks have generated significant unsolicited
publicity in major newspapers and trade publications.”
(Reply Brief, p. 7.) However, although evidence of
widespread unsolicited publicity may lend “confirmatory
context” to competent evidence of fame such as sales and
advertising numbers, see Bose Corp. v QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002),
no such competent evidence of fame has been presented by
opposer in this case. As noted above, the statements
contained in the articles are hearsay, and the articles
Opposition No. 91117536
13
therefore are not evidence of the truth of the matters
asserted in the statements. Moreover, we decline to take
judicial notice of the asserted fame of opposer’s marks
because opposer has failed to demonstrate that such fame is
a matter of which judicial notice might properly be taken.
See Fed. R. Evid. 201(b). The case before us is
distinguishable from the cited case of B.V.D. Licensing
Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d
1719 (Fed. Cir. 1988), wherein plaintiff had submitted
several dictionary excerpts showing entries and definitions
for “BVD” therein and it is well established that the Board
and Court may take judicial notice of entries in
dictionaries.
With respect to the goods and services of the parties,
we note that the majority of opposer’s registrations are for
HOT WHEELS and various other HOT marks for toys. There is
nothing in the record to warrant a conclusion that there is
any relationship between applicant’s “computerized on-line
retail services in the field of automobile accessories,” and
toys, even toy automobiles, or that purchasers would believe
that such goods and services, if identified by confusingly
similar marks, come from the same source. We also find that
opposer has not established that purchasers would believe
that applicant’s services and the other goods and services
enumerated in opposer’s many registrations would, if
Opposition No. 91117536
14
identified by confusingly similar marks, come from the same
source. Opposer’s Registration No. 2,310,162 for the mark
HOT WHEELS for, inter alia, “entertainment, educational and
information services, namely, providing data and information
concerning collectible toy vehicles, professional automobile
racing cars, professional automobile races, and standard,
custom and classic automobiles, providing general interest
stories directed toward toy vehicle collectors and
enthusiasts, and providing multi-user interactive computer
games, all of which are provided via a global computer
network” pertains to various types of non-toy automobiles,
and the services are rendered via the Internet. However,
there is no evidence in the record that would lead us to
conclude that, if identified by confusingly similar marks,
purchasers would believe that these services and applicant’s
retail services selling automobile accessories come from the
same or a related source.
Thus, we conclude that opposer has not established
that the goods and services of the parties are sufficiently
related that confusion would be likely if identified by
confusingly similar marks.
We next consider the similarity of the involved marks.
We conclude, first, that opposer has not established its
pleaded and argued contention that it has a family of HOT or
HOT WHEELS marks. Merely submitting multiple registrations
Opposition No. 91117536
15
owned by opposer for marks including the term “HOT” or “HOT
WHEELS” does not establish a family of marks. Our primary
reviewing court, in J & J Snack Foods Corp. v. McDonalds’
Corp., 932 F.2d 1460, 1463 18 USPQ2d 1889 (Fed.Cir. 1991),
stated the following about establishing a family of marks:
A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that the
public associates not only the individual marks,
but the common characteristic of the family, with
the trademark owner. Simply using a series of
similar marks does not of itself establish the
existence of a family. There must be a
recognition among the purchasing public that the
common characteristic is indicative of a common
origin of the goods. (Citations omitted.)
Recognition of the family is achieved when the
pattern of usage of the common element is
sufficient to be indicative of the origin of the
family. It is thus necessary to consider the use,
advertisement, and distinctiveness of the marks,
including assessment of the contribution of the
common feature to the recognition of the marks as
of common origin.
See also, Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66
(TTAB 1983). Opposer has submitted no evidence in this
regard.
With respect to the marks, we note that while we must
base our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
Opposition No. 91117536
16
provided the ultimate conclusion rests on consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
A number of opposer’s marks include the term HOT with
other wording (not WHEELS). We find no basis for concluding
that there is any similarity between these marks and
applicant’s mark. Regarding opposer’s HOT WHEELS marks, we
agree with opposer that both parties’ mark include a
temperature designation as an adjective to the identical
work WHEELS. However, WHEELS is a highly suggestive, if not
descriptive, term in connection with automobiles, toy or
otherwise, and, it is preceded in each mark by words that
are quite different. It is clear from the dictionary
definitions of which we have taken judicial notice that HOT
and COOL have numerous informal and slang meanings and that
one meaning of each is, as indicated supra, similar.
However, this similarity in slang meanings, to the extent
that purchasers perceive it, is outweighed by the
differences in sight and sound between the marks. Moreover,
the record contains no evidence that purchasers would
ascribe anything other than their common, rather than slang
or informal, meanings to these terms. Thus, when considered
in their entireties, we find that opposer has not
established that applicant’s mark COOLWHEELS.COM is
confusingly similar to its marks.
Opposition No. 91117536
17
In conclusion, we find that the cumulative differences
in the marks and the goods and services compel us to
conclude that opposer has not established, on this record
that there is a likelihood of confusion between applicant’s
mark, COOLWHEELS.COM, and registrant’s various HOT and HOT
WHEELS marks for the respectively identified goods and
services.
Decision: The opposition is dismissed.