Sprint Lube Corp.

Trademark Trial and Appeal Board

Oct 29, 2003

No. 78017580 (T.T.A.B. Oct. 29, 2003)

Mailed: October 29, 2003
Paper No. 18
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sprint Lube Corporation
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Serial No. 78017580
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Jeffrey M. Furr for Sprint Lube Corporation.
John M. Gartner, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Simms, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Sprint Lube
Corporation to register the mark SPRINT LUBE for “retail
store services featuring motor oil, automobile fluids,
automobile filters and automobile lubricants” in
International class 35 and “vehicle preventative
maintenance services, namely, changing oil and air filters
in International class 37.”1
1 Serial No. 78017580 filed July 20, 2000 alleging dates of first
use of April 24, 1989. The word “LUBE” is disclaimed apart from
the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78017580
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
used in connection with the identified services, so
resembles the previously registered marks SPRINT for
“automobile service station services”2 and SPRINT 500 for
“automotive products, namely, motor oil, automotive
lubricants, and transmission fluid,”3 as to be likely to
cause confusion. The cited registrations are owned by
different entities.
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have submitted briefs
on the case. An oral hearing was not requested.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E. I. duPont de Nemours &
Co., 476 F.2d 1357, 17 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most
2 Registration No. 1,323,714 issued March 5, 1985; combined
Sections 8 and 15 affidavit filed.
3 Registration No. 2,225,097 issued June 8, 1999.
Ser No. 78017580
3
important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services.
Refusal in view of Registration No. 1,323,714
Although applicant’s application includes retail store
services featuring motor oil, automobile fluids, automobile
filters and automobile lubricants, it is clear from the
Examining Attorney’s brief that the refusal to register in
view of Registration No. 1,323,714 is directed to
applicant’s vehicle preventative maintenance services,
namely, changing oil and air filters. Thus, our
determination of likelihood of confusion in connection with
this refusal is limited to the relationship between
applicant’s vehicle preventative maintenance services and
registrant’s automobile service station services.
In urging reversal of this refusal to register,
applicant argues that its vehicle preventative maintenance
services are very different from registrant’s automobile
service station services because its services are done in a
quick and efficient manner. Further, applicant contends
that the word LUBE is the dominant portion of its mark
SPRINT LUBE and serves to set its mark apart from the
registrant’s mark SPRINT.
Ser No. 78017580
4
It is well established that the issue of likelihood of
confusion must be determined on the basis of the goods
and/or services as they are set forth in the involved
application and the cited registration, and not in light of
what such goods and/or services are shown or asserted to
actually be. See, e.g., Octocom Systems Inc. v. Houston
Computer Services Inc., 818 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); and Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987).
In this case, registrant’s recitation of services
contains no limitations with respect to type or nature and
therefore we must presume that registrant offers all of the
types of services generally offered by automobile service
stations, including the services of changing oil and air
filters. Indeed, it is common knowledge that automobile
service stations offer such services. Moreover, although
applicant argues that its vehicle preventative maintenance
services are of a type that are done in a quick manner,
applicant’s recitation of services contains no such
limitation. Even if it did contain such a limitation, it
would be of no consequence because registrant’s services
are broadly described and therefore must be presumed to
include the services of changing oil and air filters in a
Ser No. 78017580
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quick manner. Thus, for purposes of our likelihood of
confusion analysis, applicant’s and registrant’s services
are considered to be the same. Moreover, the services must
be deemed to be sold to the same classes of customers,
which in this case would be the general public.
Turning then to the marks, our consideration thereof
is based on whether applicant’s mark and the registrant’s
mark, when viewed in their entireties, are similar in
sound, appearance, connotation and commercial impression.
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 impressions that confusion as to
the source of the services offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See, Sealed Air Corp. v. Scott Paper Co., 190 USPQ 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 determining the commercial impression created by
a mark. See, In re National Data Corp., 753 F.2d 1056, 224
Ser No. 78017580
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USPQ 749 (Fed. Cir. 1985). For instance, “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark ….”
224 USPQ at 751.
The word LUBE in applicant’s mark is merely
descriptive of a feature of vehicle preventative
maintenance services. In this regard, we note applicant’s
disclaimer of the word and the excerpt submitted by the
Examining Attorney from The American Heritage Dictionary of
the English Language (3d ed. 1996) wherein “lube” is
defined as: To lubricate (a car’s joints, for example).”
Because SPRINT is the first word in applicant’s mark and is
followed by a merely descriptive word, SPRINT is likely to
be perceived by consumers as the dominant portion of
applicant’s mark.
Given the fallibility of consumers’ memories and the
fact that they are unlikely to encounter marks at the same
time or side-by-side, we find that applicant’s mark SPRINT
LUBE and registrant’s mark SPRINT, considered in their
entireties, are substantially similar in sound, appearance,
connotation and commercial impression.
Even if we were to assume that consumers did note the
differences in the marks, they may well believe that
Ser No. 78017580
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applicant’s vehicle preventative maintenance services are a
branch of registrant’s automobile service station services
or are somehow sponsored by or associated with registrant,
i.e., the SPRINT automobile service stations are now
operating a SPRINT LUBE branch. Therefore, we conclude
that consumers familiar with registrant’s automobile
service station services offered under the mark SPRINT
would be likely to believe, upon encountering applicant’s
mark SPRINT LUBE for vehicle preventative maintenance
services, namely, changing oil and air filters, that the
services originated with or were somehow associated with or
sponsored by the same entity.
Refusal in view of Registration No. 2,250,097
It is clear from the Examining Attorney’s brief that
the refusal to register in view of Registration No.
2,250,097 is directed to applicant’s retail store services
featuring motor oil, automobile fluids, automobile filters
and automobile lubricants. Thus, our determination of
likelihood of confusion in connection with this refusal is
limited to the relationship between applicant’s retail
store services featuring motor oil, automobile fluids,
automobile filters, and automobile lubricants, on the one
hand, and registrant’s automotive products, namely, motor
Ser No. 78017580
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oil, automotive lubricants, and transmission fluid, on the
other hand.
It is well settled that goods and/or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that goods and/or services are related in some
manner or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of the goods and/or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
In this case, applicant’s retail store services
involve the sale of automotive products which are identical
to the automotive products marketed by registrant. Thus,
applicant’s retail store services featuring motor oil,
automobile fluids, automobile filters and automobile
lubricants and registrant’s automotive products, namely,
motor oil, automotive lubricants, and transmission fluid,
are clearly complementary, closely related goods and
Ser No. 78017580
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services. We note that applicant does not dispute that its
services and registrant’s goods are closely related. In
this regard, we note that confusion may result if the same
or similar marks are used for goods, on the one hand, and
for services involving those goods, on the other. See,
e.g., In re Hyper Shoppes (Ohio) Inc., 837 F. 2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988).
Considering then the marks, applicant asks us to give
little weight to the fact that both of the marks begin with
the word SPRINT and to focus on the second term in each
mark to reach a conclusion that the marks SPRINT LUBE and
SPRINT 500 are not likely to cause confusion. However, as
we have already discussed, SPRINT is the dominant portion
of applicant’s mark SPRINT LUBE and therefore is entitled
to more weight when considering the respective marks in
their entireties. Similarly, SPRINT makes a strong
impression in registrant’s mark SPRINT 500 because it is
the first word in the mark. The word SPRINT dominates both
marks, and is therefore more likely to be perceived and
recalled as the primary source-indicating feature of the
marks. The fact that the final term in the marks is
different is not sufficient to avoid a likelihood of
confusion.
Ser No. 78017580
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Again, given the fallibility of consumers’ memories
and the fact that they are unlikely to encounter marks at
the same time or side-by-side, we find that applicant’s
mark SPRINT LUBE and registrant’s mark SPRINT 500,
considered in their entireties, are similar in sound,
appearance, connotation and commercial impression.
In reaching this conclusion, we have not overlooked
applicant’s argument that the marks have very different
connotations, namely, that applicant’s mark SPRINT LUBE
connotes a “fast lube”, whereas registrant’s mark SPRINT
500 suggests the Indianapolis 500 or Daytona 500. Although
consumers may well view applicant’s mark SPRINT LUBE as
connoting a “fast lube”, we are not persuaded that
consumers would associate SPRINT 500 with the Indianapolis
500 or Daytona 500. Consumers may view the 500 portion of
registrant’s mark as simply a grade or model designation.
In any event, contrary to applicant, we do not view the
marks as having vastly different connotations, but instead
find that because both marks include the word SPRINT, they
suggest something that is quick or fast.
Accordingly, we conclude that consumers familiar with
registrant’s automotive products, namely, motor oil,
automotive lubricants, and transmission fluid offered under
the mark SPRINT 500 would be likely to believe, upon
Ser No. 78017580
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encountering applicant’s mark SPRINT LUBE for retail store
services featuring motor oil, automobile fluids, automobile
filters and automobile lubricants, that the services
originated with or were somehow associated with or
sponsored by the same source.
Applicant argues that there has been no actual
confusion between its mark and the registrants’ marks, and
that this shows that confusion is not likely. We are not
persuaded by this argument. Applicant has not provided any
evidence as to the extent of its use, nor is there any
evidence as to either of the respective registrants’ use,
such that we can determine whether there has been an
opportunity for confusion to occur. Moreover, the issue
before us is not one of actual confusion, but only the
likelihood of confusion.
Finally, to the extent that any of applicant’s
contentions raise a doubt on the issue of likelihood of
confusion, such doubt must be resolved in favor of the
respective registrants. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1789 (Fed. Cir.
1984).
Decision: The refusal to register applicant’s mark
for “retail store services featuring motor oil, automobile
fluids, automobile filters and automobile lubricants” and
Ser No. 78017580
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“vehicle preventative maintenance services, namely,
changing oil and air filters” is affirmed in both
instances.