Rojenco Inc.

Trademark Trial and Appeal Board

Mar 12, 2008

No. 78619172 (T.T.A.B. Mar. 12, 2008)

Mailed:
12 March 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rojenco Inc.
________

Serial No. 78619172
_______

Lisa N. Kaufman of Litman Law Offices, LTD. for Rojenco
Inc.1

Thomas V. Shaw, Managing Attorney, Law Office 102.2
_______

Before Drost, Taylor, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 28, 2005, applicant Rojenco Inc. filed an
application to register on the Principal Register the mark
BUGGY BATHE AUTO WASH, LUBE & DETAIL SHOPPE (standard
character form) for “automobile cleaning and maintenance
services” in Class 37. The application (Serial No.

1 After applicant’s main brief was filed, the board learned that
applicant’s original counsel died and, subsequently, current
counsel was substituted.

2 Trademark examining attorney Mary E. Crawford prosecuted the
trademark application prior to the briefing stage.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78619172
2
78619172) contains a disclaimer of the words “Auto Wash,
Lube” and “Detail Shoppe” and it alleges a date of first
use anywhere and in commerce of October 1, 2002.
The examining attorney refused to register applicant's
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a registration for the mark YE OLDE
BUGGY BATH (in typed or standard character form) for
“automobile cleaning and car washing services” in Class 37.
Registration No. 2905417 issued November 30, 2004.
After the examining attorney made the refusal final,
this appeal followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods [or services]
and differences in the marks.” Federated Foods, Inc. v.
Ser No. 78619172
3
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The first factor we will consider is whether
applicant’s and registrant’s services are related.
Applicant’s services include automobile cleaning services,
and registrant’s services are also for automobile cleaning
services. Therefore, the services are in part identical.
“When marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992).
We add that the examining attorney has also included
evidence, consisting of third-party, use-based
registrations, to show that applicant’s automobile
maintenance services are related to registrant’s automobile
cleaning services. Registrations can suggest that goods or
services are related. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
Ser No. 78619172
4
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
These registrations include:

No. 1487114 – “automobile cleaning and car wash
services, repair services”

No. 2089581 – “automobile maintenance and repair…
automobile cleaning”

No. 2177440 – “automobile cleaning and maintenance
services”

No. 2812667 – “automobile cleaning and car washing,
automobile detailing, automobile repair and
maintenance”

No. 3007661 – “automobile cleaning and car washing;
automobile service station services, vehicle repair
and maintenance”

No. 3046781 – “automobile cleaning services and
automotive repair and maintenance services, namely oil
change services”

No. 3053652 – “automobile cleaning and car wash
services; automobile service station services;
automobile repair and maintenance services”

Furthermore, since the services are identical, we must
presume that the channels of trade and purchasers would be
the same. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”). See also
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
Ser No. 78619172
5
the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”).
The next factor we will consider is the similarities
and dissimilarities of applicant’s and registrant’s marks.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005), quoting, du Pont, 177 USPQ at 567 (“The first
DuPont factor requires examination of ‘the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial
impression’”).
Registrant’s mark is for the words YE OLDE BUGGY BATH,
while applicant’s mark is for the words BUGGY BATHE AUTO
WASH, LUBE & DETAIL SHOPPE. Applicant has disclaimed the
terms “Auto Wash, Lube” and “Detail Shoppe.” Applicant’s
specimen identifies its services as: “Full Service Auto
Wash,” “Full Service Lube Shoppe,” and “Full Service Detail
Shoppe.” Therefore, this part of applicant’s mark, which
informs purchasers that its shop provides automobile
washing, lube, and detailing services, would not be as
significant to consumers in distinguishing the marks
Ser No. 78619172
6
because it exactly describes applicant’s services.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)
(“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of
confusion’”). See also M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006) (“When comparing the similarity of marks,
a disclaimed term, here ‘COMMUNICATIONS,’ may be given
little weight, but it may not be ignored”); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(Disclaimed matter is often “less significant in creating
the mark’s commercial impression”).
Regarding the term “Buggy” and “Bath,” both applicant
and the examining attorney have put in definitions of the
terms. Among the definitions of “Buggy,” the most relevant
for these services is “informal, an automobile.” See
Response dated June 6, 2006, Attachment. See also Final
Office Action, Attachment (“Older Slang an automobile, esp.
an old or dilapidated one”). “Bath” has numerous
definitions including “the act of soaking or cleansing the
body, as in water or steam” and “a vessel containing liquid
Ser No. 78619172
7
in which something is immersed (as to process it or to
maintain it at a constant temperature or to lubricate it).
See Response dated June 6, 2006, Attachments. While
“Bathe” can be use as a verb and defined as “to take a
bath” or to “to wash in a liquid” (Response dated June 6,
2006, Attachment), in the context of the mark BUGGY BATHE
AUTO WASH, LUBE & DETAIL SHOPPE, most purchasers are likely
to view the term as a quaint spelling of “Bath,” as the
term “Shoppe” is a quaint spelling of shop. See The Random
House Dictionary of the English Language (unabridged) (2d
ed. 1987) (Shoppe – “shop (Used chiefly for quaint
effect).”3
Applicant argues that “Buggy” and “Bath” are “common
and weak terms.” Brief at 4. Applicant has attached
printouts of numerous marks that contain these words. The
lists consist of the serial and registration numbers, the
mark, and whether the mark is “Live” or “Dead.” We cannot
consider this information because applicant submitted
similar lists (although these lists were from a commercial
service and they also included the class for the mark) in
response to the examining attorney’s first Office action.

3 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 78619172
8
In her final Office action (p. 3, parenthetical omitted),
the examining attorney specifically advised applicant that
a commercial search report was not proper evidence and “the
submission of a list of registrations does not make these
registrations part of the record… To make registrations of
record, soft copies of the registrations or the complete
electronic equivalent must be submitted.” Applicant did
not request reconsideration and its submission of another
list of registrations with its appeal brief is untimely.
In re First Draft Inc., 76 USPQ2d 1183, 1192 (TTAB 2005)
(“Submission of the TARR printout with its appeal brief,
however, is an untimely submission of this evidence”). We
also point out that a list of registrations that includes
only the mark and registration number does not make them of
record. In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974)
(“[T]he submission of a list of registrations is
insufficient to make them of record”). Furthermore, the
inclusion of expired registrations and pending and
abandoned applications is not relevant to the issues on
appeal. Action Temporary Services Inc. v. Labor Force
Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989)
(“[A] canceled registration does not provide constructive
notice of anything”) and In re Phillips-Van Heusen Corp.,
63 USPQ2d 1047, 1049 n.4 (TTAB 2002) (“While applicant also
Ser No. 78619172
9
submitted a copy of a third-party application …, such has
no probative value other than as evidence that the
application was filed”). Therefore, we do not rely on this
evidence.
Based on the definitions of record, we do find that
the term “BUGGY BATH(E)” would have a suggestive meaning
for the services of car cleaning. However, the evidence
does not show that the combined term BUGGY BATH(E) is a
commonly used term, much less that it is used by others in
relation to the services of applicant or registrant.
Therefore, we cannot conclude that the term is entitled to
only a narrow scope of protection.
When we view the marks, we must consider whether the
marks YE OLDE BUGGY BATH and BUGGY BATHE AUTO WASH, LUBE &
DETAIL SHOPPE in their entirety are similar. The marks
have several differences, including the descriptive wording
in applicant’s mark, the presence of “Ye Olde” in the
registered mark, and different spellings of “Bath.” For
their similarities, we find that the common term, “Buggy
Bath(e),” would dominate both marks.4 It is less likely

4 Applicant itself uses the term BUGGY BATHE separately on its
specimens. In re Nationwide Industries, 6 USPQ2d 1882, 1884
(TTAB 1984) (“Thus, it is settled that evidence of the context in
which a mark is used on labels, packaging, advertising, etc., is
probative of the significance which the mark is likely to project
to purchasers”).
Ser No. 78619172
10
that the descriptive matter or the “Ye Olde” portions of
the marks would be used to differentiate the marks. The
managing attorney points out that “both marks include the
antiquated Middle-English spelling of several terms. The
applicant’s use of the antiquated term SHOPPE in its mark
mirrors the registrant’s use of the antiquated
term YE OLDE and reinforces the similarity of the ‘old-
fashioned’ commercial impression of both marks.” Brief at
4. We also add that neither applicant’s nor registrant’s
mark is limited to any specific style. Therefore, we must
assume that they can be displayed in a similar style such
as in an Olde English script. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000)
(“Registrations with typed drawings are not limited to any
particular rendition of the mark”).
We find that the marks would have similarities in
appearance and pronunciation inasmuch as the dominant part
of both marks is virtually the same. Their suggestive
meaning of a car wash as a “bath for buggies” is also the
same. Furthermore, their commercial impression would be
similar because of the Olde English or quaint impression
that both marks present. Therefore, we find that the
similarities of the marks in their entireties outweigh
their differences. Baseball America Inc. v. Powerplay
Ser No. 78619172
11
Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004) (“The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks”). See also Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
When we consider that marks are used in association
with identical and closely related automobile services and
that the marks are similar, we hold that confusion is
likely. We add that to the extent that we had any doubts
about whether there was a likelihood of confusion, we have
resolved in registrant’s favor. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988).
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.