Speedbar, Inc.v.JEC Develop-ment, Inc.

Trademark Trial and Appeal Board

Feb 24, 2005

No. 91153050 (T.T.A.B. Feb. 24, 2005)

Hearing: Mailed: February 24, 2005
November 9, 2004 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Speedbar, Inc.
v.
JEC Development, Inc.
_____

Opposition Nos. 91124064 and 91153050
_____

Alan S. Cooper, Alisa C. Key and Caroline C. Smith of Shaw
Pittman LLP for AutoZone Parts, Inc.

Kevin W. Bates of Hatch, James & Dodge, P.C. for JEC
Development, Inc.
______

Before Hairston, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

JEC Development, Inc. has filed applications to
register the marks shown below,

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition Nos. 91124064 and 91153050
2
for services identified as “automobile repair and
maintenance;”1 and

for ”automobile repair and finishing services for others.”2
Speedbar, Inc. filed notices of opposition against the
marks, alleging priority and likelihood of confusion and
dilution, as grounds for opposition.3 Opposer (the term
“opposer” is used herein to refer collectively to Speedbar,
Inc. and its predecessor) specifically alleges in each
opposition that it and its predecessor have continuously
used the trade name, trademark and service mark AUTOZONE for
retail auto parts store services and automotive products and
accessories since long prior to applicant’s date of first
use; that opposer’s AUTOZONE mark has become “an exceedingly
well-known and famous mark within the meaning of §43(c) of
the Federal Trademark Act” prior to applicant’s date of

1 Serial No. 76046200, filed June 12, 2000, alleging a date of
first use anywhere on November 1, 1998 and a date of first use in
commerce on November 1, 1999.
2 Serial No. 76045639, filed May 11, 2000, alleging a date of
first use anywhere on November 1, 1998 and a date of first use in
commerce on November 1, 1999.
3 The oppositions were consolidated by the Board on September 29,
2003.
Opposition Nos. 91124064 and 91153050
3
first use; that applicant’s mark dilutes the distinctive
qualities of opposer’s famous AUTOZONE mark; and that
applicant’s mark, when used in connection with the
identified services, so resembles opposer’s AUTOZONE mark as
to be likely to cause confusion. Opposer pleaded ownership
of the following registrations:
(1) Registration No. 1,496,638 issued July 1988 (Section 8
affidavit accepted; Section 15 affidavit received) for the
mark shown below,

(hereinafter referred to as “AUTOZONE and design”) for
“automotive batteries;”
(2) Registration No. 1,550,569 issued August 1, 1989
(Section 8 affidavit accepted; Section 15 affidavit
received) for the mark AUTOZONE (typed drawing) for “retail
auto parts store services”;
(3) Registration No. 1,501,718 issued August 23, 1988
(Section 8 affidavit accepted; Section 15 affidavit
received) for the mark AUTOZONE and design for “retail auto
parts store services”;
(4) Registration No. 1,700,101 issued July 14, 1992
(renewed) for the mark AUTOZONE and design for “cleaning
Opposition Nos. 91124064 and 91153050
4
preparations for hands and automobiles” in class 3, and
“vehicles engine parts, namely thermostats” in class 9; and
(5) Registration No. 2,225,191 issued February 23, 1999 for
the mark AUTOZONE and design for “windshield washing
fluid.”4
Applicant filed answers to the oppositions wherein it
denied the essential allegations thereof. Further,
applicant asserted the following defense in the oppositions:

Speedbar’s Opposition should be dismissed because
there is no likelihood of confusion between
Speedbar’s marks and JEC’s marks because JEC only
uses its marks in connection with the provision of
automobile body and chassis repair and finishing
services for others. There is no likelihood of
confusion between Speedbar’s marks and JEC’s marks
as JEC actually uses the marks. In the event the
Board finds that Speedbar is entitled to relief
with JEC’s services as broadly identified, JEC is
entitled to registration of its mark with a
restricted identification reflecting the actual
nature of its services.

PRELIMINARY MATTERS
Before turning to the record and merits of the case, we
must discuss several preliminary matters. The first
involves opposer’s objection to exhibits 4, 5, and 6 to the
testimony deposition of applicant’s president and owner John
Chevalier. The exhibits are purported evidence of third-

4 Opposer also pleaded ownership of Registration No. 1,704,811
for the mark AUTOZONE for “automobile and truck engines.”
However, PTO records show that this registration was canceled
under Section 8 of the Trademark Act. Thus, we have given no
consideration to this registration.
Opposition Nos. 91124064 and 91153050
5
party use of the term “zone”: exhibit 4 consists of the
results of an Internet search of “parts zone”; exhibit 5
consists of the results of an Internet search of “auto parts
zone”; and exhibit 6 consists of the Internet home pages of
businesses with names that include “zone.” Opposer
maintains that during discovery, it requested applicant to
produce all documents upon which applicant intended to rely
to prove that there is no likelihood of confusion in this
case, and that applicant failed to produce these documents.
In response, applicant maintains that it retrieved
these documents only shortly before Mr. Chevalier’s
testimony deposition. Under the circumstances, we decline
to strike the documents on the basis that they were not
produced in response to discovery.
Opposer has objected to applicant’s exhibit 6 also on
the ground that Mr. Chevalier lacked the requisite personal
knowledge to testify concerning this exhibit. As noted
above, exhibit 6 consists of the Internet home pages of
businesses with names that include “zone.” Mr. Chevalier
testified that his receptionist conducted the Internet
search for these home pages. Fed. R. Evid. 602 provides
that a witness may not testify with respect to a matter
unless evidence is introduced sufficient to support a
finding that the witness has personal knowledge of the
matter. Because the foundation for exhibit 6 relies on Mr.
Opposition Nos. 91124064 and 91153050
6
Chevalier’s testimony concerning a matter as to which he
does not have personal knowledge, namely, a search performed
by his receptionist, opposer’s objection to exhibit 6 is
sustained. We have not considered this exhibit in reaching
our decision herein.
Further, opposer objects to a “correction” to Mr.
Chevalier’s testimony deposition. The testimony involves
the following question:
Q. Do you envision that CollisionZone will
sell automobile parts as stand-alone items
in the future?

Mr. Chevalier answered “yes” to this question at the
deposition. However, in the filed transcript, the answer
has been changed to “no.” Opposer argues that that is a
material change to Mr. Chevalier’s testimony and thus is not
permitted. Applicant contends that it is a mere correction
and reflects applicant’s actual intention. There is no
question that this is a material change, i.e., a direct
contradiction, in the answer to the question. In view
thereof, and inasmuch as opposer’s counsel had no
opportunity to cross-examine Mr. Chevalier in connection
with his “corrected” answer, we have not considered this
portion of the testimony in reaching our decision herein.
Applicant objects to the certified copy of opposer’s
Registration No. 2,721,079 which was introduced as exhibit J
to opposer’s first notice of reliance and exhibit 33 during
Opposition Nos. 91124064 and 91153050
7
the testimony deposition of opposer’s vice-president Anthony
Dean Rose. Opposer did not plead ownership of this
registration in the notice of opposition and did not seek
amendment of the opposition to plead ownership thereof. We
find applicant’s objection to be well taken and we have not
considered this registration in reaching our decision
herein.
Lastly, as noted above, applicant asserted as a defense
in its answers, that in the event the Board finds a
likelihood of confusion vis-à-vis opposer’s goods and
services and applicant’s services as set forth in
applicant’s applications, applicant is entitled to
registration of its marks with a restricted identification
reflecting the actual nature of its services. Opposer
argues that the Board may not consider such a restriction
because applicant did not file a formal motion to amend the
recitation of services in its involved applications.
TBMP 514.03 (2d ed. rev. 2004) states, in pertinent
part, that:
If a defendant whose application or registration
is the subject of a Board inter partes proceeding,
wishes to defend by asserting that it is at least
entitled to a registration with a particular
restriction, the defense should be raised either
in the defendant’s answer to the complaint, or by
way of a timely motion to amend the application or
registration to include the restriction. The
proposed restriction should be described in
defendant’s pleading, or in its motion to amend,
in sufficient detail to give the plaintiff fair
notice thereof. (citations omitted).)
Opposition Nos. 91124064 and 91153050
8

We find that applicant properly raised its defense in its
answer and that applicant set forth its proposed restriction
(i.e., automobile body and chassis repair and finishing
services for others) in sufficient detail to give opposer
fair notice thereof. Thus, if we find in opposer’s favor on
the issue of likelihood of confusion vis-à-vis opposer’s
goods and services and the services set forth in applicant’s
applications, we will then consider applicant’s alternative
defense.
THE RECORD
The record consists of the pleadings; the files of the
opposed applications; the testimony deposition (with
exhibits) of opposer’s vice-president Anthony Rose; five
notices of reliance submitted by opposer on third-party
registrations, portions of the discovery deposition of
applicant’s president John Chevalier, and applicant’s
responses to interrogatories; and certified copies of
opposer’s pleaded registrations introduced during Mr. Rose’s
deposition and under notice of reliance. In addition,
applicant submitted the testimony deposition (with exhibits)
of its president Mr. Chevalier; and three notices of
reliance on opposer’s responses to interrogatories and
portions of the discovery deposition of opposer’s vice-
president Mr. Rose.
Opposition Nos. 91124064 and 91153050
9
THE PARTIES
The record shows that opposer first used the mark and
trade name AUTOZONE in connection with retail auto parts
store services and auto parts and accessories in November
1987. Opposer currently operates approximately 3200 retail
auto parts stores throughout the continental U.S. Virtually
every type of auto part and accessory is sold at opposer’s
stores, including products for use in auto collision repair.
Opposer’s sales associates are trained and encouraged to “go
the extra mile” to assist customers by offering to test auto
batteries, alternators, starters, solenoids, voltage
regulators, oxygen sensors and other engine management type
parts; and by offering to turn brake drum and rotors;
provide diagnostic services that relate to the check engine
light; and install parts if requested by a customer or if it
appears that a customer needs help. Opposer’s stores have a
“LOAN-A-TOOL” program through which opposer’s customers may
borrow certain tools, including tools used in collision
repair. Opposer also has a website at which it provides
“how-to” and repair information and contains links to a
third-party website that provides in-depth repair and
diagnostic information and lists various parts sold in
opposer’s stores. Opposer’s website receives approximately
one million visitors per month. Opposer’s customers are the
general public, in particular automobile owners who are “do-
Opposition Nos. 91124064 and 91153050
10
it-yourselfers,” professional automotive installers and
personnel from automobile repair shops.
Opposer’s AUTOZONE mark appears on signs on the
exterior of opposer’s retail stores, on freestanding signs
outside of the stores, on banners, posters and other point-
of-sale materials inside the stores, and on products sold in
the stores. Opposer advertises its services and products in
newspapers, on radio and television, including cable
channels such as The Discovery Channel, Home & Garden TV,
Speed Channel, MTV, DIY Network, CNN, TBS, TNT, Lifetime,
VH-1, and traditional broadcast channels including ABC, CBS,
NBC and FOX.
Opposer’s television advertising reaches approximately
ninety-six percent of the general population 38 times per
year. Opposer’s radio advertising reaches approximately
ninety-six percent of the U.S. population approximately 144
times per year. Opposer’s other advertising efforts include
billboards, Yellow Pages advertising, direct mail
advertising, magazine advertising, and appearance of the
AUTOZONE mark on the sides of tractor-trailers transporting
goods for sale in opposer’s stores. In addition, opposer
advertises at the indoor arenas and stadiums where
professional sports teams play, including the Delta Center
in Salt Lake City, Utah where the Utah Jazz basketball games
are held. Game season schedules such as pocket schedules
Opposition Nos. 91124064 and 91153050
11
for the Utah Jazz basketball team also display the AUTOZONE
mark.
Opposer’s net sales of auto parts and accessories have
increased from more than one billion dollars in 1992 to
approximately 5.5 billion dollars in fiscal year in 2003.
In addition, since 1987 opposer has spent in excess of
$330,000,000 in advertising and promoting its automotive
parts store services and related parts and accessories.
Further, opposer has policed its mark by taking action
against what it considers to be infringing uses of marks
containing the term “zone.”
Applicant JEC Development, Inc. has two locations in
Salt Lake City, Utah where it performs automobile body and
chassis repair. Applicant began business in November 1998.
According to applicant’s president, Mr. Chevalier, he came
up with the mark COLLISIONZONE during a fishing trip with a
friend. The friend’s boat was named “Twilight Zone.” Mr.
Chevalier liked the name and settled on COLLISIONZONE. The
vast majority of applicant’s customers are members of the
public who have been involved in automobile accidents and
are referred to applicant by insurance adjusters. The
remainder of applicant’s customers are referrals to
applicant by automobile dealerships and individual walk-in
traffic. The nature of applicant’s business requires the
Opposition Nos. 91124064 and 91153050
12
employment of sophisticated and specialized tools and
equipment costing many thousands of dollars.
PRIORITY
Priority is not at issue with respect to the services
and goods identified in opposer’s pleaded registrations,
namely, retail auto parts store services, automotive
batteries, cleaning preparations for hands and automobiles,
thermostats, and windshield washing fluid. See King Candy
Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we 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 and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). We also must bear in
mind that the fame of a plaintiff’s mark, if it exists,
plays a “dominant role in the process of balancing the
Opposition Nos. 91124064 and 91153050
13
DuPont factors.” Recot Inc v. M.C. Becton, 214 F.3d 1322,
1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
Fame of Opposer’s Mark
As noted, we are required to consider evidence of the
fame of opposer’s mark and to give great weight to such
evidence if it exists. See Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002);
Recot Inc. v. M.C. Becton, supra; Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir 1992).
Fame of an opposer’s marks or mark, if it exists
plays a “dominant role in the process of balancing
the DuPont factors.” Recot, 214 F.3d at 1327, 54
USPQ2d at 1897, and “[f]amous marks thus enjoy a
wide latitude of legal protection. Id. This is
true as famous marks are more likely to be
remembered and associated in the public mind than
a weaker mark, and are thus more attractive as
targets for would-be copyists. Id. Indeed, “[a]
strong mark … casts a long shadow which
competitors must avoid.” Kenner Parker Toys, 963
F.2d at 353, 22 USPQ2d at 1456. A famous mark is
one “with extensive public recognition and
renown.” Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
In this case, we find that opposer’s AUTOZONE mark is
indeed a famous mark in the field of retail auto parts store
services. Opposer has used its AUTOZONE mark for over 15
years and now has some 3200 retail auto part stores in the
continental U.S. Opposer has advertised in virtually every
medium and its advertising and promotional expenditures have
Opposition Nos. 91124064 and 91153050
14
totaled over $330,000,000 since 1987. Opposer’s television
advertising reaches approximately ninety-six percent of the
general population 38 times per year and its radio
advertising reaches approximately ninety-six percent of the
U.S. population approximately 144 times per year. Opposer’s
website receives approximately one million visitors per
month. Since 1992 opposer’s net sales have increased five-
fold and totaled 5.5 billion dollars in 2003.
Based on this evidence, we find that opposer’s AUTOZONE
mark is famous. We recognize that opposer has not placed
its sales and advertising figures in context, i.e., we do
not know how substantial these figures are in terms of
businesses that offer retail auto parts store services.
However, we do not believe that is necessary here in view of
the volume of sales and advertising expenditures and the
fact that practically the entire U.S. population is reached
by opposer’s advertising numerous times each year. In this
regard, we note that our primary reviewing Court has
accepted sales and advertising figures as indicia of the
fame and strength of a mark even in the absence of the
context for such figures. See Bose Corp. v. QSC Audio
Products Inc., supra, 63 USPQ2d at 1306.

Opposition Nos. 91124064 and 91153050
15
Similarity of the Marks
We first must determine whether applicant’s marks as
shown below,

and opposer’s marks AUTOZONE (typed drawing) and

when compared in their entireties in terms of appearance,
sound and connotation are similar or dissimilar in their
overall commercial impressions. The test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods/services offered
under the marks is likely to result. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ2d 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another and it is not
improper to give more weight to this dominant feature in
Opposition Nos. 91124064 and 91153050
16
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Initially, we find that in applicant’s mark CZ
COLLISIONZONE and design, the dominant feature of the mark
is the term COLLISIONZONE. The “CZ” design adds little
impact to the commercial impression of the mark as it simply
reinforces the letters “C” and “Z” as they appear in the
term COLLISIONZONE. Also, it is the term COLLISIONZONE
that persons would use in calling for applicant’s services.
Thus, the “CZ” design element is subordinate matter.
Similarly, we find that in opposer’s mark AUTOZONE and
design, the dominant feature of the mark is the term
AUTOZONE. The design element adds little to the commercial
impression of opposer’s mark and it is the term AUTOZONE
that persons would use in calling for opposer’s services.
Thus, while we do not ignore the respective design elements
in opposer’s and applicant’s marks, we find that they do not
suffice to distinguish the marks in terms of overall
commercial impression.
Each of the respective marks consists of the
distinctive term “ZONE” preceded by a descriptive/highly
suggestive term which pertains to automobiles; “AUTO,” in
opposer’s case, signifying automobiles, and “COLLISION”, in
applicant’s case, signifying automobile collision repair.
Opposition Nos. 91124064 and 91153050
17
Also, the term COLLISIONZONE in applicant’s marks as
shown below,

is displayed in a very similar fashion to the term AUTOZONE
in opposer’s AUTOZONE and design mark as shown below,

The term AUTOZONE in opposer’s mark is slanted forward and
the first letter of “AUTO” and “ZONE” is capitalized.
Similarly, the term COLLISION in applicant’s marks is
slanted forward and the first letter of “COLLISON” and
“ZONE” is capitalized.
In addition, because both parties’ marks include the
word “Zone,” there are consequent similarities in
connotation. Opposer’s marks AUTOZONE and AUTOZONE and
design suggest a place where automobile parts and supplies
may be purchased. Applicant’s marks COLLISIONZONE and CZ
COLLISIONZONE and design suggest a place where automobiles
are repaired after a collision. Both opposer’s and
Opposition Nos. 91124064 and 91153050
18
applicant’s marks then suggest a place for automobile-
related services.
Finally, with respect to the sound of the respective
marks, there is some similarity to the extent that they end
with the word “ZONE.” While we recognize that there is no
similarity between the first words in the parties’ marks,
this difference in outweighed by the other similarities in
the marks.
For the reasons discussed above, and particularly in
view of the fame of opposer’s AUTOZONE mark, we find that
when the parties’ marks are compared in their entireties,
they are similar in commercial impressions.
Similarity of the Services
We turn next to a consideration of opposer’s most
relevant goods and services, namely retail auto parts store
services, and applicant’s automobile repair and maintenance
and automobile repair and finishing services for others.5
It is well established that the services of the parties need
not be similar or competitive, or even that they move in the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective services
of the parties are related in some manner, and/or that the

5 Opposer’s evidentiary record is primarily devoted to its retail
auto parts store services, and as we have found, opposer’s
AUTOZONE mark is famous in this field.
Opposition Nos. 91124064 and 91153050
19
conditions and activities surrounding the marketing of the
services are such that they could or would be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978); Monsanto Company v. Enviro-Chem Corporation,
199 USPQ 590 (TTAB 1978).
Opposer’s services, as identified in the relevant
registration, are retail auto parts store services. As
shown by the testimony, opposer’s services are directed to
the general public, primarily do-it-yourselfers,
professional automotive installers, and personnel from
automobile repair shops.
Applicant’s services, as identified in the involved
applications, are automobile repair and maintenance and
automobile repair and finishing services for others. As
shown by the testimony, applicant’s services are offered to
the general public usually by way of referral by insurance
adjusters.
Comparing the parties’ services, we find that although
not competitive, they nonetheless are sufficiently related
in the marketplace that confusion is likely to result from
contemporaneous use of the marks. In this regard, opposer
made of record seven third-party registrations in which
Opposition Nos. 91124064 and 91153050
20
“retail auto parts store services” and “auto repair and
maintenance services” are included in the recitation of
services. Although these registrations are not evidence
that the marks shown therein are in commercial use, or that
the public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
services identified therein are of a type which emanate from
a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
In this case, both parties are offering services that
pertain to the maintenance and repair of automobiles. Also,
the relevant classes of purchasers for the respective
services are the same or overlapping. Further,
notwithstanding applicant’s argument to the contrary,
purchasers and users of the parties’ services are ordinary
consumers who are not necessarily sophisticated.
Opposer has shown that in addition to using the
AUTOZONE mark for its retail auto parts services, it has
also established prior use of the mark on auto parts and
accessories themselves. Further, opposer has shown that it
offers testing, repair, diagnosis and installation of
automotive parts and accessories at its stores. Because of
the range of goods and services in connection with which
opposer has used the AUTOZONE mark, persons would be likely
Opposition Nos. 91124064 and 91153050
21
to believe that applicant’s automobile repair, maintenance
and finishing services offered under the marks COLLISIONZONE
and CZ COLLISIONZONE and design are somehow affiliated with
or sponsored by opposer.
Further, we find that there is a likelihood of
confusion even with respect to opposer’s retail auto store
services and applicant’s actual services, i.e., automobile
body and chassis repair and finishing services. In this
regard, opposer made of record three third-party
registrations in which “auto retail parts store services”
and “auto body repair services” are included in the
recitation of services. Again, these respective services
pertain to the maintenance and repair of automobiles; the
relevant classes of purchasers are the same or overlapping;
and the purchasers are ordinary consumers who are not
necessarily sophisticated. In short, applicant’s proposed
restriction to the recitation of services in its involved
applications would not overcome the likelihood of confusion.
Third-party Use
We recognize that evidence of widespread and
significant use by third parties of marks containing an
element in common with the mark being opposed can serve to
demonstrate that confusion is not likely to occur. This is
because the presence in marks of a common element
extensively used by others, unrelated as to source, may
Opposition Nos. 91124064 and 91153050
22
cause purchasers to not rely upon such elements as source
indicators, but to look to other elements as a means of
distinguishing the source of the goods and/or services.
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1992).
In this case, however, the evidence provided by
applicant is not sufficient to show that the public has had
such widespread exposure to “ZONE” marks. The evidence
consists simply of the results of an Internet search of
“auto parts” and “auto parts zone.” This search reveals
three “hits” of purported marks or trade names that include
“ZONE”: VWBugzone.com”; “Hondazone.com”; and “ONLINE Parts
Zone.com.” Apart from the fact that this shows at most
three third-party uses, the evidence is of very limited
probative value as there is no information about the extent
of use or promotion of these uses. In short, this limited
evidence does not prove that opposer’s AUTOZONE mark is weak
and that confusion is unlikely. To the contrary, as we have
already found, opposer’s AUTOZONE mark is a famous mark that
is entitled to a broad scope of protection. Moreover, we
note that the record shows that in four instances, opposer
has taken action, ranging from a federal civil action to a
petition to cancel in the United States Patent and Trademark
Office, with respect to what it considers to be infringing
uses of marks containing the term ZONE. At the time of
Opposition Nos. 91124064 and 91153050
23
trial, three of these proceedings had been resolved in a
manner favorable to opposer.
Actual Confusion
Opposer relies on an incident relayed by applicant’s
president, Mr. Chevalier, as evidence of actual confusion.
Mr. Chevalier testified that a telephone call was received
at applicant’s business wherein the caller asked whether
he/she had reached AUTOZONE. We are not persuaded that this
is evidence of actual confusion, particularly since it
appears there was at least a question in the caller’s mind
as to whether he/she had reached AUTOZONE. In any event,
the fact that there may well be no evidence of actual
confusion does not persuade us to find that confusion is not
likely. Evidence of actual confusion is not a prerequisite
for finding likelihood of confusion. Moreover, it is well
recognized that evidence of actual confusion is notoriously
difficult to obtain.
CONCLUSION
When all of the relevant du Pont factors are
considered, including the similarity of the identified
services, the range of opposer’s goods and services, the
commercial impressions of the marks, the fame of opposer’s
mark, and the lack of sophistication of purchasers/users of
opposer’s and applicant’s services, we find that applicant’s
use of COLLISIONZONE and CZ COLLISIONZONE and design for
Opposition Nos. 91124064 and 91153050
24
“automobile repair and maintenance” and “automobile repair
and finishing services for others” respectively, is likely
to cause confusion with respect to the retail auto parts
store services offered by opposer under its marks AUTOZONE
and AUTOZONE and design. In particular, persons familiar
with opposer’s retail auto parts stores under the marks
AUTOZONE and AUTOZONE and design, upon encountering
applicant’s automobile repair, maintenance and finishing
services under the marks COLLISIONZONE and CZ COLLISIONZONE
and design, are likely to believe that such services are
affiliated with or sponsored by opposer.
DILUTION
Having found a likelihood of confusion in this case, we
need not reach opposer’s dilution claim.
Decision: The opposition is sustained as to each of
applicant’s involved applications on the ground of
likelihood of confusion.