StreetCar ORV, LLC d/b/a American Expedition Vehiclesv.K2 Motor Corp.

Trademark Trial and Appeal Board

Sep 17, 2021

91248740 (T.T.A.B. Sep. 17, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

StreetCar ORV, LLC d/b/a American Expedition Vehicles
v.
K2 Motor Corp.
_____

Opposition No. 91248740
_____

Staci R. DeRegnaucourt of Varnum LLP,
for StreetCar ORV, LLC d/b/a American Expedition Vehicles.
Aaron P. Bradford and Nina P. Brewer of Bradford, LTD,
for K2 Motor Corp.
_____

Before Kuhlke, Lykos, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
On Request for Reconsideration
On May 3 and 7, 2021 the Board issued final decisions in two companion
opposition proceedings between the same parties.
In one proceeding, Opposition No. 91248742 (the “‘742” Opposition), the Board
sustained the opposition brought by StreetCar ORV, LLC d/b/a American Expedition
Vehicles under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), to registration
Opposition No. 91248740

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on the Principal Register of Applicant K2 Motor Corporation’s design mark,
, for “land vehicle parts, namely, fender flares, bumpers, running boards,
side step bar, bull bars, light guards” in International Class 12.1 Opposer based its
opposition on likelihood of confusion with its following design and composite marks,
registered generally for “automobiles and structural parts therefor” in International
Class 12 and “automobile customization services” in International Class 37:
2
3
4

1 Application Serial No. 88197871, filed on November 16, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).

2 Reg. No. 3691651 (Class 12), issued October 6, 2009, renewed. Section 8 declarations of use
accepted and Section 15 declaration of incontestability acknowledged.
3 Reg. No. 4177842 (Class 12), issued July 24, 2012, Section 8 declaration of use accepted and
Section 15 declaration of incontestability acknowledged.
4 Reg. No. 5269486 (Classes 12 and 37), issued Aug. 22, 2017.
Opposition No. 91248740

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5
The Board sustained that opposition because, inter alia, the parties’ marks were more
similar than dissimilar, and the balance of DuPont factors weighed in favor of finding
a likelihood of confusion. No appeal was taken from that decision in Opposition No.
91248742, and the subject application, Serial No. 88197871, was abandoned after the
inter partes decision.
In the other, present opposition proceeding, Opposer claimed a likelihood of
confusion between its registered marks cited above and Applicant’s word and design
mark, 6 (with “OFF-ROAD DESIGN” disclaimed) for the
same respective goods and services. The Board dismissed this opposition because the
parties’ marks, taken in their entireties, were more dissimilar than similar, and
Opposer failed to prove a likelihood of confusion by a preponderance of the evidence.
29 TTABVUE (the “Decision”).
Opposer requests reconsideration under Trademark Rule 2.129(c), 37 C.F.R.
§ 2.129(c), arguing that the Board’s Decision in this case is inconsistent and
contradictory with its decision in the other case. 30 TTABVUE. Although Applicant
was not required to respond to Opposer’s request for reconsideration, Applicant has

5 Reg. No. 6102258 (Class 12), issued July 14, 2020; Reg. No. 6045109 (Class 37), issued May
5, 2020.
6 Application Serial No. 88197875 was filed on November 16, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
Opposition No. 91248740

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wisely chosen to do so. 31 TTABVUE. See Volkswagenwerk AG v. Ridewell Corp., 201
USPQ 410, 411 (TTAB 1979) (“While there is no requirement in Rule 2.129(c) that
the prevailing party must file a response to a request for reconsideration in order to
preserve a victory, nevertheless it is the better part of wisdom for the victorious party
to submit its views on the loser’s request for reconsideration unless it is crystal clear
that the request is an utter exercise in futility.”). Applicant points out that Opposer’s
arguments are, in the main, “merely restatements of arguments already made by
Opposer earlier in these proceedings.” 31 TTABVUE 5-6.
Even though this opposition and its companion case were considered and decided
together, we bear in mind that “each case must be decided on its own facts and the
differences are often subtle ones.” In re St. Helena Hospital, 774 F.3d 747, 113
USPQ2d 1082, 1087 (Fed. Cir. 2014).
I. Applicable Law
The TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE states the
standard for reconsidering final decisions:
Generally, the premise underlying a request for rehearing,
reconsideration, or modification under 37 C.F.R. § 2.129(c) is that, based
on the evidence of record and the prevailing authorities, the Board erred
in reaching the decision it issued. The request may not be used to introduce
additional evidence, nor should it be devoted simply to a reargument of the
points presented in the requesting party’s brief on the case. Rather, the
request normally should be limited to a demonstration that, based on the
evidence properly of record and the applicable law, the Board’s ruling is in
error and requires appropriate change.

TBMP § 543 (2021). See, e.g., Steiger Tractor Inc. v. Steiner Corp., 3 USPQ2d 1708,
on reh’g, 3 USPQ2d 1708 (TTAB 1984) (reconsideration granted in Section 2(d) case,
opposition sustained).
Opposition No. 91248740

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Opposer argues that this case is analogous to Steiger Tractor v. Steiner, where the
Board sustained Steiger Tractor’s opposition to one application for STEINER and
dismissed its opposition to another STEINER application, only to sustain the second
opposition later, on reconsideration.7 Id.
As Applicant K2 rightly notes, however,8 the issue there was not so much the
similarity of the parties’ marks, but the relatedness of their goods. The marks in that
case were opposer’s STEIGER for “tractors,” compared with applicant’s STEINER for
“light utility tractors” and stylized STEINER for “machines namely, taper board
livestock feeders, feed mixers, wood silage conveyors and snow blowers.” The literal
elements of the marks differed by only one letter. The Board initially sustained
Steiger Tractor’s opposition to STEINER for light tractors, but found that their
similarity had “diminished effect in the case of the ‘STEINER’ mark as applied to
livestock feeding equipment and mixers and to snowblowers” Steiger Tractor v.
Steiner, 221 USPQ at 173. On reconsideration, however, the Board found inter alia
that “the snowblowers manufactured by applicant are tractor-mounted machines
designed to be used with tractors…,” and the relatedness of the goods tipped the
balance in Steiger Tractor’s favor. Steiger Tractor v. Steiner, 3 USPQ2d at 1710. The
present case poses different issues.
Here, Opposer takes issue with three aspects of the Board’s Decision: its findings
on the similarity or dissimilarity of the marks; the conceptual weakness of Opposer’s

7 Opposer’s Request for Reconsideration, 30 TTABVUE 5.
8 Applicant’s Response to Request for Reconsideration, 31 TTABVUE 3.
Opposition No. 91248740

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design element; and the care exercised by potential purchasers. We address them in
turn.
A. Similarity or Dissimilarity of the Marks, Taken in Their Entireties
Under the first DuPont factor, we consider the similarity or dissimilarity of the
parties’ marks “in their entireties as to appearance, sound, connotation and
commercial impression.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”).
Opposer adverts to the companion ‘742 Opposition, in which the Board found that
Applicant’s design mark was more similar than dissimilar to the bison
design in Opposer’s marks:9

9 E.g., Opposer’s Request for Reconsideration, 30 TTABVUE 3, 13.
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In this opposition, where Applicant’s mark is ,
Opposer argues that the Board Decision “improperly ignored” Opposer’s bison design
standing alone, and only compared Applicant’s composite mark to
Opposer’s composite marks, shown above.10 “In light of its improper comparison of
composite marks,” Opposer argues, “the Board improperly focuses on the literal
elements of the Applicant’s mark as ‘markedly different from that in certain of
Opposer’s marks: ‘AMERICAN EXPEDITION VEHICLES’ and ‘AEV.’”11 But if
Applicant’s composite mark is comparing Opposer’s bison logo, standing alone, “the
literal elements added to the Applicant’s mark are insufficient to prevent confusion
resulting from the visual similarity and similarity of commercial impression created
by the dominant design elements,” Opposer maintains.12
Opposer’s argument misapprehends the Board’s Decision, and fails for several
reasons. Because the marks must be compared in their entireties, our analysis cannot
be predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. DuPont, 177
USPQ at 567; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered

10 Id. 30 TTABVUE 6, 12.
11 Id. 30 TTABVUE 13.
12 Id. 30 TTABVUE 13, 15.
Opposition No. 91248740

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piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”).
That said, different features may be analyzed to determine whether the parties’
marks are confusingly similar. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (citing In re Nat’l Data Corp., 224 USPQ at 751 (“[I]n
articulating reasons for reaching a conclusion on the issue of confusion, 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 the ultimate conclusion rests on
consideration of the marks in their entireties.”)).
In composite marks, the wording is normally dominant:
In the case of marks, such as Applicant’s, consisting of words and a design,
the words are normally accorded greater weight because they are likely to
make a greater impression upon purchasers, to be remembered by them,
and to be used by them to request the goods. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). The verbal portion of
a word and design mark “likely will appear alone when used in text and
will be spoken when requested by consumers.” Id. at 1911; see also In re
Solid State Design Inc., 125 USPQ2d 1409, 1411 (TTAB 2018) (citing L.C.
Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2007) (“[I]t is well
settled that if a mark comprises both a word and a design, then the word
is normally accorded greater weight because it would be used by
purchasers to request the goods.”)).

In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018).

That holds true here, where Applicant’s composite mark contains the prominent,
dominant word BULKEN:
.
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Displayed in a large, bold typeface at the top of the mark, BULKEN comprises
the largest, most prominent portion of the mark in terms of size, position, and
emphasis. Because of its position, size and bolding, it dominates the commercial
impression of Applicant’s mark. Id. at 1184-85. Even though it is framed in the
periphery by its design and disclaimed words, BULKEN is likely to make a greater
impression upon purchasers, to be remembered by them, and to be used by them to
request the goods. See In re Viterra, 101 USPQ2d at 1908.13
That is the finding the Board made in the Decision, that “Applicant’s mark,
, emphasizes the distinctive word BULKEN in large,
bold capital letters atop the smaller, disclaimed wording ‘OFF-ROAD DESIGN.’”14
The Board compared Applicant’s composite mark with all of Opposer’s cited marks,
noting that “In addition, its wording is markedly different from that in certain of

13 The cases on which Opposer would rely are distinguishable. 30 TTABVUE 14. For instance,
In Time Warner Ent. Co. L.P. v. Jones, 65 USPQ2d 1650 (TTAB 2002) the Board found a
cartoon depiction of a roadrunner bird over the wording ROADRUNNER MAPS similar to
the standard character mark ROAD RUNNER and the design mark depicting the Warner
Brothers’ roadrunner cartoon character. In Odom Sausage, Inc. v. Doskocil Sausage, Inc., 169
USPQ 379, 382 (TTAB 1971) the marks’ large, prominent designs of “farm boys” bearing
fishing rods, as used on sausage products, eclipsed the smaller, subordinate script
‘DOSKOCIL’S” in applicant’s mark. And in Abercrombie & Fitch Trading Co. v. Schnittger,
2019 BL 350483 (TTAB 2019) (nonprecedential) the Board found a registered mark depicting
the silhouette of a moose similar to an applied-for mark depicting the silhouette of a deer,
both for clothing goods, even though the deer image appeared atop the words “RED DEAR.”
The Board noted that “the words RED DEAR are dwarfed by Applicant’s deer design, which
is dominant because of how big it is in relation to the words. Moreover, notwithstanding the
difference in spelling, the word ‘dear’ in Applicant’s mark may serve to highlight Applicant’s
deer design….” Id. at *6. (Although parties are permitted to cite to any Board decision,
citation to non-precedential decisions is not encouraged and such decisions are not binding
on the Board.” Int’l Dairy Foods Ass’n v. Interprofession du Gruyère and Syndicat
Interprofessionnel du Gruyère, 2020 USPQ2d 10892, *21 n. 162 (TTAB 2020)).
14 29 TTABVUE 40.
Opposition No. 91248740

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Opposer’s marks: ‘AMERICAN EXPEDITION VEHICLES’ and ‘AEV.’”15 Opposer’s
insistence that we focus on its design mark standing alone, and focus on its similarity
to Applicant’s design element, would run afoul of the principle that we must compare
marks in their entireties. DuPont, 177 USPQ at 567. Even though the design
elements are similar, the Board found in its Decision that “On the whole, then, the
parties’ marks, considered in their entireties, are more dissimilar than similar, and
the first DuPont factor weighs against a likelihood of confusion.”16 We see no error on
the part of the Board in making these findings.
That finding of dissimilarity, standing alone, is dispositive of this opposition.
See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“We know of no reason why, in a particular case, a single duPont factor
may not be dispositive”); Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826
F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (“a single DuPont factor may be
dispositive in a likelihood of confusion analysis, especially when that single factor is
the dissimilarity of the marks”) (quoting Odom’s Tenn. Pride Sausage, Inc. v. FF
Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (“[E]ven if
all other relevant DuPont factors were considered in [opposer’s] favor, as the board
stated, the dissimilarity of the marks was a sufficient basis to conclude that no
confusion was likely.”)); Champagne Louis Roederer S.A. v. Delicato Vineyards, 148
F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (“[O]ne DuPont factor may be

15 Id. (emphasis added).
16 Id.
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dispositive in a likelihood of confusion analysis, especially when that single factor is
the dissimilarity of the marks”) cited in Sock It to Me, Inc. v. Aiping Fan, 2020
USPQ2d 10611, *13 (TTAB 2020).
We nonetheless address the fourth through sixth DuPont factors because they
tend to confirm that the Board made no error in finding that the purchasing public
would focus on the wording of Applicant’s mark, and
distinguish that mark, in its entirety, from Opposer’s marks.
B. Conceptual Weakness of the Design Element
Under the fifth and sixth DuPont factors, we consider the strength of an opposer’s
marks, and the extent to which that strength may be attenuated by “[t]he number
and nature of similar marks in use on similar goods.” DuPont, 177 USPQ at 567.
In the Decision, the Board found, based on the entirety of the evidence—including
length of use, sales, advertising, social media use, unsolicited media coverage,
sponsorships, and awards—that Opposer’s registered marks, consisting of or
comprising its bison design, are not “famous,” but have achieved a sizeable amount
of exposure among motorists seeking customized structural parts for their vehicles.17
Applicant sought to attenuate the strength of the bison design element in
Opposer’s marks by adducing approximately three dozen third-party registrations
that use some version of a bull or a bison in their marks to promote goods or services

17 Decision, 29 TTABVUE 25.
Opposition No. 91248740

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for vehicles.18 Applicant contended that these registrations were “extensive evidence
of third-party use and registrations, and thus are powerful on their face regardless of
the extent of the usage of these third-party registrations in the marketplace.”19
(Citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015).)
The Board Decision pointed out that Applicant’s reliance on Jack Wolfskin was
misplaced, for in that case, the applicant adduced evidence of 87 third-party
registrations of paw logos and 28 web page excerpts of the use of paw logos on
clothing; the Federal Circuit characterized this as “voluminous evidence of paw print
design elements that have been registered and used in connection with clothing….”
Jack Wolfskin, 116 USPQ2d at 1136 (emphasis added). Applicant’s third-party
registration evidence fell far short of this voluminous evidence, and did not attenuate
the commercial strength of Opposer’s marks.20
The Decision further noted, however, that with respect to conceptual strength,
Jack Wolfskin states:
[E]vidence of third-party registrations is relevant to show the sense in
which a mark is used in ordinary parlance, … that is, some segment that
is common to both parties’ marks may have a normally understood and
well-recognized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak….

116 USPQ2d at 1136.

18 Id., 29 TTABVUE 25-29.
19 Applicant’s brief, 25 TTABVUE 39.
20 Decision, 29 TTABVUE 29-32.
Opposition No. 91248740

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The third-party registrations showed that it is not uncommon for companies selling
automotive parts to adopt and register marks with bison or bull imagery that carries
a suggestive connotation of rugged durability and strength—i.e., that the automotive
parts are “strong as a bull.”21 This is the very same suggestive connotation Opposer
seeks to impart by its bison logo.22 The Decision concluded that Applicant’s third-
party registrations do not diminish the commercial strength of Opposer’s marks, but
do undermine the conceptual or inherent strength of its bison design element to a
degree by underscoring its suggestive nature. So it is relatively weak conceptually,
and can be distinguished by other elements, such as wording.23
Unsurprisingly, Opposer approves of the Decision’s commercial strength
analysis,24 and disapproves of its conceptual strength analysis.25 “In reaching this
finding of relative conceptual weakness, the Board points to no more than four (4) of
the third-party registrations…,” Opposer asserts.26 Those four registrations are a far
cry from the large quantum of third-party use and third-party registrations found to
be significant in Jack Wolfskin, Opposer notes.27 (Citing Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015) and In re Inn
at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx.

21 Decision, 29 TTABVUE 33.
22 Opposer’s Messink decl. ¶13, 14 TTABVUE 6.
23 Decision, 29 TTABVUE 34.
24 Request for Reconsideration, 30 TTABVUE 6-8.
25 Id., 30 TTABVUE 8-11.
26 Id., 30 TTABVUE 9.
27 Id., 30 TTABVUE 10.
Opposition No. 91248740

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516 (Fed. Cir. 2019)). Further, Opposer contends, its Bison design has sufficient
commercial strength to be considered strong despite any perceived conceptual
weakness.28 (Citing Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 126
USPQ2d 1505, 1511 (4th Cir. 2018)). Opposer concludes that the sixth DuPont factor
should be neutral.29
Opposer once again misapprehends the Decision, as well as the governing case
law and the evidence. Of the cited cases, Jack Wolfskin is most on point because it
compares a design mark with a word-and-design mark. In that case, Jack Wolfskin
applied to register a design mark consisting of a paw print: over the
opposition of New Millenium, which owned a word and design mark:
, both for clothing products. Jack Wolfskin, 116
USPQ2d at 1131. The Board found the two marks confusingly similar based on
comparison of the design elements, just as Opposer would have us do here. But the
Federal Circuit reversed, holding that the marks must be compared in their
entireties:
“[M]arks must be viewed ‘in their entireties,’ and it is improper to dissect
a mark when engaging in this analysis, including when a mark contains
both words and a design.” In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir.
2012). We have also explained that when a mark consists of both words
and a design, “the verbal portion of the mark is the one most likely to
indicate the origin of the goods to which it is affixed.” CBS Inc. v. Morrow,
708 F.2d 1579, 1581-82 (Fed. Cir. 1983).

28 Id. 30 TTABVUE 10-11.
29 Id. 30 TTABVUE 10.
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…

We agree with Jack Wolfskin that the Board failed to adequately account
for the presence of the literal, KELME component of the New Millennium
mark. Contrary to the guideposts in our case law, the Board essentially
disregarded the verbal portion of New Millennium's mark and found that
the two paw print designs were substantially similar. This analysis did not
consider the marks as a whole.
…

See Viterra, 671 F.3d at 1366 (recognizing that emphasis on the literal
portion of a mark “makes sense given that the literal component of brand
names likely will appear alone when used in text and will be spoken when
requested by consumers.”).

Id. at 1134-35.

In accord with Jack Wolfskin, the Decision accorded greater weight to the literal
portion of the parties’ marks, especially in Applicant’s
mark. It found that Applicant’s third-party evidence was less persuasive than Jack
Wolfskin’s evidence, but it still undermined the conceptual strength of Opposer’s
bison design element. Contrary to Opposer’s representation, though, the Decision did
not limit its focus to only four of the third-party registrations. Rather, it stated that:
“the third-party registrations show that it is not uncommon for companies selling
automotive parts to adopt and register marks with bison or bull imagery that carries
a suggestive connotation of rugged durability and strength—i.e., that the automotive
parts are ‘strong as a bull.’ For example:
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” 30
At least a dozen of the cited third-party registrations carry the same sort of
suggestive imagery, which evinces, to some degree, the conceptual weakness of the
design relative to the wording. For example, for “truck accessories,
namely, … body side mouldings, and fender flares” has a bison design much like
Opposer’s, yet is distinguished by its prominent wording, as in Jack Wolfskin.
True, Opposer’s cited Fourth Circuit decision states that “in certain
circumstances, the commercial strength of a mark can be more important than the
conceptual strength.” Variety v. Wal-Mart, 126 USPQ2d at 1511. But it also states
that “if the plaintiff's mark was truly a distinctive term, it is unlikely that . . . many
other businesses in the … industry would independently think of using the same
mark or similar variants of it.” Id. (internal punctuation omitted). In this case, a
considerable number of businesses in the automotive parts industry have
independently adopted bull or bison designs and variants thereof; the purchasing
public would in consequence naturally tend to focus on the wording of their marks to
distinguish one from another.

30 Decision, 29 TTABVUE 33 (emphasis added).
Opposition No. 91248740

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In view thereof, we find that the Board made no error regarding its finding that
conceptual weakness of the designs relative to their wording weighs against a
likelihood of confusion.
C. Care Exercised by Potential Purchasers
The fourth DuPont factor is “[t]he conditions under which and buyers to whom
sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177
USPQ at 567.
Opposer asserts that “The Board Erred in Determining that Sophisticated
Consumers are Immune From Confusion with Respect to Similar Marks for Identical
Goods.”31 Again, this misapprehends the Decision. The Decision never stated that the
parties’ customers were sophisticated, or that they were immune from confusion. It
stated that “Motorists seeking structural modifications for their vehicles could come
from all walks of life, and are not necessarily sophisticated. Cf. Speedbar, Inc. v. JEC
Dev., Inc., 76 USPQ2d 1034, 1040 (TTAB 2005) (finding purchasers of auto repair
services are ‘ordinary consumers who are not necessarily sophisticated.’).”32
The Decision instead made the commonsense observation that potential
purchasers—those contemplating customized structural modifications of their
vehicles—would by virtue of the inherent nature and cost of the goods and services
tend to avoid impulse purchases, and to exercise care in their purchases. See In re
Info. Builders Inc., 2020 USPQ2d 10444, at *4 (“[I]n light of the inherent nature of

31 Request for Reconsideration, 30 TTABVUE 15.
32 Decision, 29 TTABVUE 41.
Opposition No. 91248740

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the goods and services involved, some degree of purchasing care may be exercised by
Applicant’s potential or actual consumers.”). See also Electronic Design & Sales Inc.
v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992)
(“[T]here is always less likelihood of confusion where goods are expensive and
purchased after careful consideration.”); Tiffany & Co. v. Classic Motor Carriages
Inc., 10 USPQ2d 1835, 1841 (TTAB 1989) (automobiles would be purchased only upon
careful consideration).
Opposer protests that this analysis differs from the ‘742 Opposition, where the
Board found that even careful buyers may not distinguish between similar marks.33
That is true because the marks in the ‘742 Opposition were more similar. Here, the
marks are more dissimilar, due to the prominent placement of BULKEN in
Applicant’s mark: . Potential purchasers exercising care
commensurate with costly custom modifications can be expected to read the literal
portion of Applicant’s mark, and to differentiate it from Opposer’s marks.
Accordingly, we find that the Board in its Decision made no error in determining
that purchaser care also weighs against a likelihood of confusion.
II. Conclusion
For the foregoing reasons, the applicable law and the evidentiary record amply
support the Board’s Decision concerning the dissimilarity of the marks, the
conceptual weakness of Opposer’s design element, and customer care. We find no

33 Request for Reconsideration, 30 TTABVUE 16.
Opposition No. 91248740

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error in the Decision. TBMP § 543. Opposer failed to prove likelihood of confusion by
a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1848 (Fed. Cir. 2000).
Decision: The request for reconsideration is denied.