Motor City Sunroofs, Inc.

Trademark Trial and Appeal Board

Jan 13, 2000

No. 75176395 (T.T.A.B. Jan. 13, 2000)

Paper No. 10
TEH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 1/13/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Motor City Sunroofs, Inc.
________
Serial No. 75/176,395
_______
Andrew R. Basile of Young & Basile, P.C. for Motor City Sunroofs,
Inc.
Jason Turner, Trademark Examining Attorney, Law Office 108 (David
Shallant, Managing Attorney).
_______
Before Cissel, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Motor City Sunroofs, Inc.
to register the mark shown below for "wholesale distributorship
of sunroofs."1

1 Application Serial No. 75/176,395; filed October 3, 1996; alleging a
date of first use on February 1, 1996 and first use in commerce on July
8, 1996. The application contains a statement that the drawing is
lined for the color blue.
Ser No. 75/176,395
2
The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so resembles
the previously registered mark MCS for "pneumatic tires" as to be
likely to cause confusion.2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
In any likelihood of confusion analysis, two key
considerations are the similarity of the marks and the similarity
of the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976), and In
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
The Examining Attorney contends that the marks are highly
similar and that a likelihood of confusion can exist between
distributorship services for the goods on one hand and "for goods

2 Registration No. 1,155,497; issued May 26, 1981; Sections 8 and 15
affidavits filed.
Ser No. 75/176,395
3
related to the goods used in the service" on the other. The
Examining Attorney maintains that applicant’s services and
registrant’s goods are offered in the same channels of trade,
directed to the same customers, such as retailers and dealers,
and that sunroofs and tires are related as structural and/or
component parts of vehicles. In support of his position, the
Examining Attorney has submitted copies of six registrations to
demonstrate that a single entity may offer both tires and
sunroofs under the same mark. In addition, the Examining
Attorney points to a number of cases holding that the use of
similar marks on various types of automotive parts is likely to
cause confusion.
Applicant does not dispute the similarity of the marks.
Applicant argues instead that there is no likelihood of confusion
because registrant’s goods and the goods distributed by applicant
move in different channels of trade and are "so different" that
relevant purchasers would not assume that they emanate from the
same source. Applicant challenges the probative value of the
Examining Attorney’s third-party registrations, pointing out that
the registrations are not based on use in commerce.
The marks in this case are quite similar, applicant’s mark
differing only to the extent that it is displayed in a slightly
stylized form.
Ser No. 75/176,395
4
The question, then, is whether applicant’s services and
registrant’s goods are sufficiently related and/or whether the
circumstances surrounding the marketing of the goods and services
are such that purchasers encountering them would, in view of the
similarity of the marks, mistakenly believe that the goods and
services emanate from the same source. See Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB
1978). Even if the marks are identical, if these conditions do
not exist, we have held that confusion is not likely. See In re
Unilever Limited, 222 USPQ 981 (TTAB 1984) and In re Fesco, Inc.,
219 USPQ 437 (TTAB 1983).
In this case, the channels of trade for these respective
goods and services may, to some extent, be the same. It must be
presumed that the registrant’s tires are offered to all potential
customers, including the dealers, retailers or even vehicle
manufacturers that comprise at least some of applicant’s
customers. It is also true that likelihood of confusion may
result from the use by different parties of the same or similar
marks in connection with goods, on the one hand, and services
which deal with or are related to those goods, on the other. See
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) and
Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983).
Ser No. 75/176,395
5
The problem in the case before us is that despite any
overlap in general trade channels, we have no evidence to show
that sunroofs and tires are related goods, or that purchasers who
come in contact with those goods would expect the same companies
which manufacture tires to sell sunroofs. The fact that
particular products are sold in a common industry through the
same channels of trade to the same class of purchasers does not,
in and of itself, establish that such products are related. See
Canada Dry Corporation v. American Home Products Corporation, 175
USPQ 557 (CCPA, 1972); Chase Brass and Copper Co., Inc. v.
Special Springs, Inc., 199 USPQ 243 (TTAB 1978); and Autoc, Inc.
v. Walco Systems, Inc., 195 USPQ 11 (TTAB 1977).
The Examining Attorney has attempted to demonstrate the
relatedness of these goods by his submission of six third-party
registrations showing that a number of entities have registered
their marks for both tires and sunroofs. This is the only
evidence of record and it is not persuasive. All six
registrations issued under the provisions of Section 44(e) of the
Trademark Act solely on the basis of ownership of foreign
registrations. Without any use in commerce, these registrations
have little, if any, probative value and are not useful to our
analysis. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
Ser No. 75/176,395
6
We note the line of cases holding that the use of similar
marks on various automotive parts and accessories is likely to
cause confusion. However, there is nothing in these cases which
mandates a finding that any and all car parts and accessories,
regardless of their nature or type are, per se, related goods.
Cf. In re Quadram Corporation, 228 USPQ 863 (TTAB 1985);
Interstate Brands Corporation v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151 (CCPA 1978) and cases cited therein; In re
Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977); and Autac
Incorporated v. Walco Systems, Inc., supra. Moreover, there is
at least one Board decision holding that identical marks used on
certain automotive components is not likely to cause confusion.
See Chase Brass and Copper Co., Inc. v. Special Springs, Inc.,
supra.
Thus, aside from the fact that tires and sunroofs may both
be broadly characterized as automotive parts, the Examining
Attorney has failed to submit proof that these particular goods
are related such that customers are likely to assume a common
source. Without such proof, we have no basis on which to
conclude that purchasers would believe that a manufacturer of
tires would also be engaged in the sale of sunroofs.
Finally, the potential customers that these goods and
services have in common, namely dealers, retailers, and
manufacturers, are relatively informed and sophisticated and as
Ser No. 75/176,395
7
such, would be expected to exercise greater care in making
purchasing decisions. See Electronic Design & Sales v.
Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed.
Cir. 1992).
In view of the foregoing, we find that although the marks in
this case are very similar, the record does not show that the
respective goods and services are related or marketed under
circumstances which would give rise to the mistaken belief that
the goods and services emanate from a single source.
Decision: The refusal to register is reversed.
R. F. Cissel
P. T. Hairston
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board