Mid-USA Cycle Parts, Inc.

Trademark Trial and Appeal Board

Feb 10, 2005

No. 78085992 (T.T.A.B. Feb. 10, 2005)

Mailed: 2/10/2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mid-USA Cycle Parts, Inc.
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Serial No. 78085992
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John W. Kepler, III and Brian B. Diekhoff of Polsinelli
Shalton Welte Suelthaus for applicant.

Paula B. Mays, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
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Before Hanak, Quinn and Bottorff,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Mid-USA Cycle Parts, Inc.
to register the mark shown below

(“Performance Systems” disclaimed) for “internal combustion
engine parts for motorcycles, namely, pistons, connecting
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78085992
2
rods, bushings; crank shafts; emission reduction units for
motors and engines namely EGR valves; cam shafts; oil
pumps; alternators; generators; electronic ignitions;
ignition magnetos; spark plug wires; mufflers; carburetors;
[and] anti-noise cowlings.”1
The trademark examining attorney refused registration
on the ground of likelihood of confusion under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), based on the
prior registration of the mark POWERHOUSE for “catalytic
converters for treating exhaust gases.”2
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs. An oral hearing was not requested.
Applicant contends that the marks are dissimilar and
that the goods are not related and are not sold in the same
trade channels. Applicant also asserts that the respective
goods are bought by sophisticated purchasers, among whom
are skilled mechanics and technicians, who are familiar
with applicant’s self-described “suite” of POWER HOUSE
PERFORMANCE SYSTEMS and design marks for applicant’s

1 Application Serial No. 78085992, filed September 28, 2001,
based on a date of first use anywhere and a date of first use in
commerce of 1995. The lining in the drawing is for shading
purposes only.
2 Registration No. 1953266, issued January 30, 1996; combined
affidavits under Sections 8 and 15 filed.
Ser No. 78085992
3
product line. In this connection, applicant claimed
ownership of these previously issued registrations, all for
the same logo mark as the one sought to be registered
herein: Reg. No. 2179897 for “electrical components of
motorcycles, namely, batteries, coils, and computer
software for determining engine performance as a function
of selected engine and valve components”; Reg. No. 2349379
for “internal combustion engine parts for motorcycles,
namely, crank cases and exhaust pipes”; and Reg. No.
2672774 for “engines for land vehicles.” Applicant also
owns a prior registration of the same logo mark as the one
involved here, but with the inclusion of the stylized word
“PLUS”: Reg. No. 2516483 for “electrical components of
motorcycles, namely, batteries.” Lastly, pursuant to a
request to divide filed in the instant application after
the refusal in International Class 7 was made final,
application serial no. 78975076 was created as a child
application; the application matured into Reg. No. 2836697
for “wheel bearings for land vehicles” in International
Class 12. In support of its position, applicant submitted
excerpts of registrant’s Internet website, a patent
covering registrant’s catalytic converters and a specimen
from registrant’s registration file, all to show that
registrant’s goods are large industrial units and are not
Ser No. 78085992
4
designed for use in vehicles. Applicant contends that it
is proper to consider this extrinsic evidence inasmuch as
registrant’s recitation of goods is somewhat unclear due to
the omission of the particular use or type of catalytic
converter. Further, applicant claims, without any
supporting evidence, that motorcycles do not usually
include catalytic converters; according to applicant,
catalytic converters were invented in response to strict
emission control standards passed for automobiles.
The examining attorney maintains that applicant’s mark
is dominated by the words “POWER HOUSE,” and that
applicant’s mark is similar enough to registrant’s mark
POWERHOUSE as to be likely to cause confusion among
consumers. The examining attorney further contends that
the goods are related in that applicant’s and registrant’s
goods, as identified in the cited registration, may be used
in vehicles. According to the examining attorney, the
goods are presumed to travel in similar trade channels to
similar classes of purchasers. There is no need to
consider extrinsic evidence relating to registrant’s goods,
the examining attorney argues, because the respective goods
are defined in commonly understood terms. In support of
the refusal, the examining attorney submitted copies of
third-party applications and a registration showing,
Ser No. 78085992
5
according to the examining attorney, that entities have
adopted a single mark for both catalytic converters and a
variety of engine parts.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
With respect to the marks, we recognize that there are
similarities between them in sound, appearance and meaning.
The dominant literal portion of applicant’s mark, POWER
HOUSE, is essentially identical to the entirety of the
cited mark, POWERHOUSE. In comparing the marks, however,
we must consider the marks in their entireties, and the
other prominent, distinguishing features of applicant’s
mark cannot be ignored. Applicant’s mark includes a
Ser No. 78085992
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relatively large eagle design. Further, although
disclaimed and subordinate to “POWER HOUSE,” the additional
words “PERFORMANCE SYSTEMS” must also be considered. These
features serve, when comparing the marks in their
entireties, to distinguish applicant’s logo mark from
registrant’s typed mark. See In re Electrolyte
Laboratories, Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir.
1990); In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818 (Fed. Cir. 1986); and Spice Islands, Inc. v. The
Frank Tea & Spice Co., 505 F.2d 1293, 184 USPQ 35 (CCPA
1974).
Another factor to consider is the laudatorily
suggestive nature of the marks. In this connection, we
take judicial notice of the dictionary definition of the
term “powerhouse”: “a building in which mechanical,
electrical, or other power is generated; one having or
wielding great power.” Webster’s Third New International
Dictionary (unabridged ed. 1993). The respective marks
convey the notion that the product sold thereunder is
powerful. We find that the suggestiveness of the cited
mark limits somewhat the scope of protection to be afforded
thereto.
Turning next to the goods, although applicant urges us
to consider extrinsic evidence to limit registrant’s
Ser No. 78085992
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catalytic converters to industrial applications, we see no
reason to do so. We do not share applicant’s view that
registrant’s identification of goods “catalytic converters
for treating exhaust gases” is “somewhat ambiguous.”
(Brief, p. 11). Although the identification is a bit broad
in that the identification does not include any specific
limitation as to application, we see no need to resort to
extrinsic evidence to discern the nature of the goods.
Registrant’s identification of good is, in our view, clear.
See In re Continental Graphics Corp., 52 USPQ2d 1374 (TTAB
1999). Cf. In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB
1990). In this case, as in every proceeding, we must
compare the goods as they are identified in the involved
application and registration. See In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); and In re
Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1976).
Inasmuch as there is no limitation in registrant’s
identification of goods, the “catalytic converters for
treating exhaust gases” must be presumed to encompass all
goods of the type described, and not just large catalytic
converters for industrial applications.
Notwithstanding the above presumption, the goods are
distinctly different. Although both catalytic converters
and internal combustion engine parts for motorcycles might
Ser No. 78085992
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travel in the same trade channels (e.g., vehicle parts
distributorships and stores) to similar classes of
purchasers (e.g., both sophisticated mechanics and do-it-
yourself consumers), that nexus is too tenuous a connection
on which to base a finding of likelihood of confusion,
especially in view of the differences between the marks and
their suggestiveness.
In order to demonstrate the requisite relatedness of
the goods, the examining submitted copies of one third-
party registration and seven third-party applications
wherein the identifications of goods list both catalytic
converters and internal combustion engine parts.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods are of a type that
may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993). Third-party
applications, however, are evidence of nothing more than
that the applications were filed on a particular date.
The examining attorney’s evidence is, to say the
least, sparse. Because only one entity could be found with
a registration for both types of goods, we certainly cannot
say that consumers would assume that these goods would
emanate from the same source. And, as indicated above, the
Ser No. 78085992
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third-party applications (four of which are intent-to-use
applications) are not probative on this point. Even if the
applications had matured into registrations, issues would
remain as to the probative value of this specific evidence
in this case. Of the seven applications, two are based on
Section 44 of the Trademark Act, and all but one of the
seven applied-for marks appear to be house marks for a wide
variety of products. The Office simply has not provided
sufficient evidence for us to find that applicant’s and
registrant’s goods are related so that, when sold under the
involved marks, consumers would be likely to be confused.
Based on the record before us, we see the examining
attorney’s assessment of the likelihood of confusion as
amounting to only a speculative, theoretical possibility.
In sum, in view of the cumulative differences between the
marks and the goods sold thereunder, we find that confusion
is unlikely to occur in the marketplace.
Decision: The refusal to register is reversed.