Patrick J. McGroder, III

Trademark Trial and Appeal Board

Mar 28, 2001

No. 75184809 (T.T.A.B. Mar. 28, 2001)

03/28/01
Paper No. 20
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Patrick J. McGroder, III
________
Serial No. 75/184,809
_______
Frank J. McGue for applicant.
Steven R. Berk, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______
Before Simms, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Patrick J. McGroder, III
to register the mark ROYAL PONTIAC for goods ultimately
identified as “clothing, namely, T-shirts, [and] leather
jackets sold in connection with a museum of high powered
automobiles.”1
The Trademark Examining Attorney refused registration
1 Application Serial No. 75/184,809, filed October 21, 1996,
based on an allegation of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/184,809
2
under Sections 2(a) and 2(d) of the Trademark Act. With
respect to Section 2(a), the Examining Attorney maintains
that applicant’s mark falsely suggests a connection with
General Motors Corporation which manufactures automobiles
under the mark PONTIAC. As to Section 2(d), the Examining
Attorney’s position is that applicant’s mark, when applied
to applicant’s goods, so resembles the previously
registered mark PONTIAC for various goods and services, as
to be likely to cause confusion. The cited registrations,
all of the mark PONTIAC (typed form) and owned by General
Motors Corporation, are as follows: “maintenance and
repair service for automotive vehicles, parts, and
accessories”;2 “automobiles and truck dealership services”;3
“radios, calculators, and pre-recorded audio tapes
concerning automobile operation for automobile purchasers”;4
“motor vehicle accessories, namely, windshield sunshades”;5
“printed materials, namely, manuals, brochures, and
catalogs pertaining to the features and controls,
operation, maintenance, service and repair, and technical
2 Registration No. 647,239, issued June 18, 1957; renewed.
3 Registration No. 1,667,109, issued December 3, 1991; combined
Sections 8 and 15 affidavit filed.
4 Registration No. 1,704,693, issued August 4, 1992; combined
Sections 8 and 15 affidavit filed.
5 Registration No. 1,708,004, issued August 18, 1992; combined
Sections 8 and 15 affidavit filed.
Ser No. 75/184,809
3
facts and specifications of motor vehicles”;6 “snow brushes
for motor vehicle windows”;7 and “motorists’ emergency kits
consisting of battery booster cables, water bag, flat-tire
fixer, first-aid kit, safety flares, rain poncho, bungee
cord, tape, hand cleaner with towel, repair wire, and a
help signalling flag.”8
When the refusals were made final, applicant appealed.9
Applicant and the Examining Attorney filed briefs.10 An
oral hearing was not requested.
With respect to the Section 2(a) refusal, applicant
argues that consumers would not be likely to assume a
connection between applicant’s mark and registrant.
Applicant also asserts that his mark does not uniquely
6 Registration No. 1,708,167, issued August 18, 1992; combined
Sections 8 and 15 affidavit filed.
7 Registration No. 1,725,765, issued October 20, 1992; combined
Sections 8 and 15 affidavit filed.
8 Registration No. 1,748,293, issued January 26, 1993; combined
Sections 8 and 15 affidavit filed.
9 The Examining Attorney originally issued a final refusal under
Section 2(d) only, solely on the basis of Registration No.
1,711,830 owned by General Motors Corporation of the mark PONTIAC
for “clothing, namely, caps.” After an appeal and appeal brief
were filed, the application was remanded to the Examining
Attorney for consideration of an amendment to the identification
of goods. The Examining Attorney, in an Office action dated July
13, 1998, accepted the amendment, and went on to refuse
registration under Section 2(a), and to add seven registrations
as cites under Section 2(d). It later came to light that the
first registration cited, Registration No. 1,711,830, was
canceled pursuant to Section 8, and the refusal based thereon was
withdrawn.
10 The Examining Attorney named above assumed responsibility of
this case at the time of the filing of the appeal brief.
Ser No. 75/184,809
4
point to registrant. As to likelihood of confusion,
applicant points to differences between the marks and
goods. In support of his position on the two refusals,
applicant submitted an article from a printed publication,
a copy of a canceled registration of registrant’s, a copy
of a portion of applicant’s Web page, listings from an
encyclopedia and a gazetteer, and copies of correspondence
between applicant and registrant. The correspondence,
according to applicant, evidences registrant’s acquiescence
to the registration sought herein.
The Examining Attorney maintains that the term
“persons” in Section 2(a) includes legally created entities
such as corporations and that the “person” in this case is
General Motors Corporation. The Examining Attorney argues
that “[h]ere, the applicant simply modifies the term
PONTIAC with the word ROYAL to suggest a regalness to the
applicant’s particular car and/or suggest some type of
alteration making the applicant’s particular automobile
better than the typical PONTIAC automobile. Therefore, the
first prong [of the Section 2(a) test, i.e., that the
involved mark is the same as, or a close approximation of
the name or identity of registrant, and that it would be
recognized as such] is most certainly met.” The Examining
Attorney notes that applicant’s goods have no connection
Ser No. 75/184,809
5
with registrant. The Examining Attorney does not dispute
that there are different meanings for the term “Pontiac,”
but that applicant’s clothing is connected to his planned
museum containing PONTIAC cars and that, therefore,
consumers will presume a connection with General Motors
Corporation.
With respect to the Section 2(d) refusal, the
Examining Attorney contends that the marks are similar,
that the goods are related inasmuch as large automakers
have expanded into ancillary goods, and that the cited mark
is famous.
The Examining Attorney also contends that the
correspondence between applicant and registrant does not
evidence registrant’s consent to the registration sought in
the present application.
The Examining Attorney introduced the following
evidence pertaining to the refusals: excerpts of seven
printed publications retrieved from the NEXIS database
showing use of the term “Royal Pontiac,” and a Web page
retrieved from the Internet showing a third-party’s museum
featuring the history of General Motors Corporation, all of
which demonstrate, in the Examining Attorney’s view, “that
the prospective customer of ROYAL PONTIAC T-shirts or
leather jackets from a car museum is likely to believe the
Ser No. 75/184,809
6
clothing to be related to General Motor[‘s] PONTIAC cars”;
a listing of automotive links which, according to the
Examining Attorney, show that “[c]ar buffs associate
different car makes and models with diverse goods and
services”; and listings of nine car clubs in connection
with the Examining Attorney’s statement that “the PONTIAC
is so famous that there are at least nine car clubs devoted
to cars of that make.”
Mr. McGroder and his factory “muscle car” collection
have been the subjects of several articles in printed
publications, one of which is of record. The article in
Autoweek (April 17, 1995) indicates that applicant’s
collection of 43 “muscle cars” ranks among the finest of
such collections in the world. According to the article,
Mr. McGroder collects nothing but factory cars designed
exclusively for either racing or the street. Applicant
restores the cars to exact factory condition. Applicant’s
mark ROYAL PONTIAC has a connection with a specific car,
and a brief review of the history of this car, as set forth
at applicant’s Web page, follows:
1963 Pontiac “Swiss Cheese” Catalina
The Pontiac Super Duty program, which
had begun in 1961, had progressed
rapidly throughout 1962. Pontiac’s
engineers became research and
development leaders by constantly
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testing their new 421 SD...In a radical
move, Pontiac created eleven very
special hand-built cars, destined for a
hand-picked elite team of drivers.
These vehicles came to be known as the
“Swiss Cheese” cars.
The base for the cars was a Catalina
two-door sedan chassis because its open
channel design made it considerably
lighter. This chassis received a
series...of holes to further reduce
weight--hence the name Swiss Cheese.
Of the eleven “Swiss Cheese” Pontiac
Catalinas built, two are in the
McGroder Collection. The very first
car built was one of two cars delivered
to the late racing legend Mickey
Thompson. The car was used as a back-
up for his program and as such has less
than 100 miles. It has been restored
to concours condition with all correct
original parts.
The second Swiss Cheese car in the
McGroder Collection is the car assigned
to Royal Pontiac and driven by Jim
Wagners. It was constantly raced and
updated and has been restored to
concours race condition including all
proper lettering. The car was the
national record holder and class winner
at the NHRA National meet. Notably, it
is one of the most photographed and
publicized Pontiacs in racing history.
Further historical perspective is added by the NEXIS
articles furnished by the Examining Attorney. The articles
indicate that “ROYAL PONTIAC” was used by Ace Wilson in
connection with his drag racing car and his car dealership
in Royal Oak, Michigan.
Ser No. 75/184,809
8
False Suggestion of a Connection
In order to warrant a refusal under this portion of
Section 2(a), the Examining Attorney, who has the burden of
proof, must show that (i)the mark is the same as, or a
close approximation of, the name or identity previously
used by the other person; (ii)the mark would be recognized
as such in that it points uniquely and unmistakably to that
person; (iii)the person named by the mark is not connected
with the activities performed by the applicant under the
mark; and (iv)the prior user’s name or identity is of
sufficient fame or reputation that a connection with such
person would be presumed when applicant’s mark is used on
applicant’s goods. In re Urbano, 51 USPQ2d 1776 (TTAB
1999); In re North American Free Trade Association, 43
USPQ2d 1282 (TTAB 1997); and In re Kayser-Roth Corp., 29
USPQ2d 1379 (TTAB 1993). This test to be met for finding a
false suggestion of a connection with another’s persona
differs from that for finding a likelihood of confusion as
to the source of one’s goods.
In the present case, the sparse record introduced by
the Examining Attorney falls short of establishing that
applicant’s mark is the same as or even a close
approximation of registrant’s name or identity. Although
it is common knowledge that PONTIAC is a brand name for an
Ser No. 75/184,809
9
automobile which has been around for many years, and that
American consumers are likely to know about this brand, we
cannot conclude based on this record that this trademark
functions as the persona of registrant. That is to say,
there is nothing in the record to demonstrate that PONTIAC
is a persona of General Motors Corporation. On this basis
alone, the Section 2(a) refusal must be reversed.
In addition, the Examining Attorney has failed to show
that the mark ROYAL PONTIAC, or even PONTIAC, points
uniquely to General Motors Corporation. In contrast to the
Examining Attorney’s insufficient evidence, applicant’s
evidence establishes other meanings of the term “Pontiac”
which the Examining Attorney has acknowledged. The
encyclopedia and dictionary entries of the term “Pontiac”
show it to be the name of the Ottawa Indian chief, as well
as the name of a city in Michigan and other geographic
locations. Thus, based on the record in this case, there
is insufficient proof that the term “Pontiac” would be
recognized as pointing uniquely to General Motors
Corporation.
The refusal under Section 2(a) fails for lack of
proof, and accordingly is reversed.
Ser No. 75/184,809
10
Likelihood of Confusion
Although we have found that the record falls short of
showing that applicant’s mark falsely suggests a connection
with registrant, we find that the refusal based on a
likelihood of confusion with registrant’s mark is well
taken.
Our determination under Section 2(d) is based on an
analysis of all of the 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 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to compare applicant’s mark ROYAL
PONTIAC with registrant’s mark PONTIAC. Although we stress
that we have considered these marks in their entireties,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided [that] the ultimate conclusion
rests on consideration of the marks in their entireties.”
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). In this connection, “PONTIAC,” which
Ser No. 75/184,809
11
identifies the brand of car that is the subject identified
by applicant’s clothing items, is the dominant part of
applicant’s mark. The term “ROYAL” is a laudatorily
suggestive term meaning, in pertinent part, “of superior
quality.” Webster’s Third New International Dictionary
(unabridged ed. 1993).11 In view thereof, the term “ROYAL”
is relegated to a subordinate role in the source-
identifying function of the mark. In comparing the marks,
we further note that the record is devoid of evidence of
any third-party uses or registrations of the same or
similar marks in the automobile and clothing fields.
With respect to the goods and/or services, it is not
necessary that the goods and/or services be identical or
even competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the goods and/or services originate from or are in
some way associated with the same source. In re
11 Dictionary definitions are proper subject matter for judicial
notice.
Ser No. 75/184,809
12
International Telephone and Telegraph Corp., 197 USPQ 910
(TTAB 1978).
We recognize the obvious differences between clothing
and the goods and/or services identified in registrant’s
registrations. Nonetheless, given the facts that the
registrations cover automobile services and related goods
and accessories, and that applicant’s T-shirts and leather
jackets are intended to be sold in an automobile museum, we
find there to be a sufficient relationship between them
such that, when sold under similar marks, there is likely
to be confusion in the marketplace. In passing, we also
note, in this regard, that one of registrant’s
registrations covers, at least as an item included in an
emergency kit, rain ponchos.
It is common knowledge that T-shirts, jackets and
other logo-imprinted products are widely used as
promotional items for a diverse range of goods and
services, not to mention for specific brands of cars. In
point of fact, as acknowledged by applicant, his clothing
items are intended to be sold as souvenirs at his car
museum. In connection with this practice, the Board, in
other cases, has stated that the licensing of commercial
trademarks for use on collateral products such as clothing,
which are unrelated in nature to goods on which the marks
Ser No. 75/184,809
13
are normally used, has become a common practice in recent
years. See: Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 n. 3 (CCPA
1981)[“‘collateral product’ use is a matter of textbook
discussion”], aff'g, 204 USPQ 396 (TTAB 1979)[collateral
product use “has become a part of everyday life which we
cannot ignore”]; and Turner Entertainment Co. v. Nelson, 38
USPQ2d 1942, 1945-46 (TTAB 1996) and cases cited thereat.
See also: Jaguar Cars Ltd. v. Skandrani, 18 USPQ2d 1626
(S.D. FL 1991). We also point out that applicant’s
clothing likely would be relatively inexpensive and the
subject of an impulse purchase. See: Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223
USPQ 1281, 1282 (Fed. Cir. 1984).
Another factor to consider in this case is that
registrant’s PONTIAC mark is well known. Although the
Examining Attorney’s evidence bearing on fame is weak, we
view it as beyond dispute that the PONTIAC mark has been
used for many years by registrant, and that the mark, as a
brand name in the automobile industry, has had extensive
exposure to the purchasing public. The renown of
registrant’s PONTIAC mark is a factor weighing in favor of
affirmance of the refusal to register. See: Recot Inc. v.
Becton, 54 USPQ2d 1894 (Fed. Cir. 2000), on remand, 56
Ser No. 75/184,809
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USPQ2d 1859 (TTAB 2000); and Kenner Parker Toys Inc. v.
Rose Art Industries Inc., 22 USPQ2d 1453 (Fed. Cir. 1992).
In point of fact, applicant’s mark is an adaptation of
registrant’s well known brand of automobile and related
goods and services.
In urging that the refusals to register be reversed,
applicant places significant weight on his correspondence
with registrant which, according to applicant, indicates
that registrant is aware of applicant’s use of the mark and
acquiesces thereto. Registrant initiated the contact upon
its review of an advertisement run by applicant in the
printed publication Musclecar Review.12 Registrant’s
trademark licensing manager wrote that he “had been advised
that you are using Chevrolet Motor Divisions’ names, logos
and body designs in connection with your business.” The
letter went on as follows:
This is to advise you that your use of
the Chevrolet names, logos and body
designs constitutes trademark
infringement and is deceptive toward
the public. I must insist that you
immediately discontinue using these or
any other General Motors trademarks in
advertising or in any other manner in
connection with your business (e.g., on
invoices, business cards and signs)
which implies your business is endorsed
or sponsored by Chevrolet Motor
Division.
12 A poor photocopy of the advertisement is of record.
Ser No. 75/184,809
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Applicant responded by letter,13 indicating that Mr.
McGroder’s passion is to collect rare factory-backed muscle
cars from the 1960s, with his ultimate goal of opening a
museum to display these cars. The letter further indicated
that applicant’s collection “is widely recognized as the
premier collection of these particular automobiles in the
world,” pointing out that applicant “has worked to restore
the sixteen Chevrolet automobiles in his collection to
perfection.” The letter expressed a desire to amicably
resolve the matter with registrant, stating that “Mr.
McGroder has done much to perpetuate Chevrolet motor
history and wishes to have an amicable relationship with
Chevrolet.” In addition to requesting more information
from registrant, the letter concluded by stating that “Mr.
McGroder is dedicated to the preservation of this era of
American motor cars” and that registrant “would want to
support rather than try to restrict his devotion to
history.”
13 This letter, dated April 21, 1998, was first submitted with
applicant’s reply brief. In doing so, applicant acknowledged
that submission of evidence after appeal is generally untimely.
See: Trademark Rule 2.142(d). As applicant pointed out,
however, the submission here came after the Examining Attorney
first raised a question in his brief relative to the
correspondence between applicant and registrant. We agree with
applicant that he is entitled to respond and, accordingly, we
have considered the letter in reaching our decision.
Ser No. 75/184,809
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The final letter in this round of correspondence is
from registrant wherein registrant writes as follows:
General Motors owns many Federally
Registered Trademarks including
Chevrolet, the Bow Tie logo, Chevy,
Heartbeat of America, Corvette, the
Corvette emblems, Monte Carlo, Camaro
and many others. General Motor [sic]
also has several pending registrations
in the apparel category including
Impala, Impala Emblem, and Impala body
design.
In regard to Mr. McGroder [sic] use of
the Impala name and body designs, we
were unaware the vehicles depicted in
the identified advertisement are
restored vehicles owned by your client.
Since Mr. McGroder was obviously
promoting his personal vehicles as well
as his museum and there is no evidence
of deception to the public, I will
consider the matter closed.
Although we have considered this evidence in making
our decision, it is not dispositive of the issues herein.
Firstly, the letters from registrant make no mention of the
mark PONTIAC which is the mark involved herein. This is
not surprising inasmuch as applicant’s advertisement, which
prompted registrant’s contact with applicant, does not
include use of the mark PONTIAC. Although the
advertisement shows a T-shirt bearing a picture of the 1963
Pontiac “Swiss Cheese” Catalina with the name “ROYAL” on
its side, it does not appear that the PONTIAC mark is used.
Secondly, in this particular case, a consent or
Ser No. 75/184,809
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acquiescence to registration of a mark featuring “PONTIAC”
does not necessarily follow from any consent to use the
various Chevrolet marks. Simply put, the correspondence
falls short of establishing registrant’s consent or, in
applicant’s term, “acquiescence” to the specific
registration sought by applicant herein.
Likewise, registrant’s canceled registration does not
compel a different result in this appeal. As indicated
above, registrant owned a registration of the mark PONTIAC
for “clothing, namely, caps” which was canceled under
Section 8. Applicant contends that this fact is evidence
that registrant has lost interest in the clothing field.
We simply cannot draw the inference proposed by
applicant by the mere cancellation of registrant’s prior
registration for clothing. Moreover, the issue before us
involves likelihood of confusion with registrant’s existing
registrations.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Ser No. 75/184,809
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We conclude that consumers familiar with registrant’s
cars sold under the mark PONTIAC would be likely to
believe, upon encountering applicant’s mark ROYAL PONTIAC
for T-shirts and leather jackets sold in connection with a
museum of high powered automobiles, that the goods
originated with or were somehow associated with or
sponsored or licensed by registrant.
Decision: The Section 2(a) refusal is reversed. The
Section 2(d) refusal is affirmed.
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