Supplemental Restraint Specialists, Inc.v.Safety Restraint Systems, Inc.

Trademark Trial and Appeal Board

Dec 20, 2001

OPP (T.T.A.B. Dec. 20, 2001)

12/20/01 Paper No. 48
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Supplemental Restraint Specialists, Inc.
v.
Safety Restraint Systems, Inc.
_______

Opposition No. 107,476
to Application No. 75/041,691
filed on January 11, 1996
and
Cancellation No. 26,722
_______

Elizabeth L. Swanson, Esq. for Supplemental Restraint
Specialists, Inc.

Joseph F. Schmidt and Brian J. Lum of Laff, Whitesel,
Conte & Saret for Safety Restraint Systems, Inc.
_______

Before Simms, Seeherman and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Supplemental Restraint Specialists, Inc. (plaintiff)
filed its opposition to the application of Safety
Restraint Systems, Inc. (defendant) to register the mark
shown below on the Principal Register for “installing
airbags and airbag sensors in automobiles in which the
previous airbags have been deployed,” in International
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 107,476 and Cancellation No. 26,722
2
Class 37.1 The application includes a disclaimer of SRS
SAFETY RESTRAINT SYSTEMS INC. apart from the mark as a
whole.
Plaintiff also filed a petition to cancel
defendant’s registration of the mark shown below on the
Supplemental Register for “installing airbags and airbag
sensors in automobiles in which the previous airbags have
been deployed,” in International Class 37.2 The
registration includes a disclaimer of exclusive rights to
use the letters SRS apart from the mark as shown.

1 Application Serial No. 75/041,691, filed on the Principal Register
January 11, 1996, based upon a Canadian registration and alleging
priority based upon the Canadian application filing date of July 12,
1995. Plaintiff points out that this application was amended to the
Supplemental Register. However, the application was amended back to the
Principal Register by Examiner’s Amendment of April 28, 1997.

2 Registration No. 2,068,125, issued on the Supplemental Register on
June 3, 1997, based on a claim of priority and a Canadian registration,
under Section 44.

Opposition No. 107,476 and Cancellation No. 26,722
3
As grounds for both the opposition and the petition
to cancel, plaintiff asserts that defendant’s marks, when
applied to defendant’s services, so resemble plaintiff’s
previously used mark SUPPLEMENTAL RESTRAINT SPECIALISTS,
and its previously used design mark incorporating SRS and
SUPPLEMENTAL RESTRAINT SPECIALISTS, INC., shown below,
for the “service and installation of automobile airbag
parts”3 as to be likely to cause confusion, under Section
2(d) of the Trademark Act.4

3 Plaintiff has filed application Serial No. 75/249,910 for the mark SRS
SUPPLEMENTAL RESTRAINT SPECIALISTS, INC. and application Serial No.
75/249,910 for the mark SUPPLEMENTAL RESTRAINT SPECIALISTS, each for
services identified as “mobile reinstallation of automobile airbag
parts.”

4 For the first time in its brief, plaintiff has argued that defendant’s
marks are merely descriptive; and that defendant has not established
that its marks have acquired distinctiveness. Claims of mere
descriptiveness and lack of acquired distinctiveness are not relevant to
a mark registered on the Supplemental Register. With respect to the
opposed application, these issues were not pleaded, tried or
established. We have given these arguments no consideration.
Similarly, defendant has not argued that plaintiff’s marks are
not inherently distinctive, nor was the issue tried by the parties. We
note the statement by the Federal Circuit, our primary reviewing court,
in Towers v. Advent Software, Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041
(1990), that “a petitioner in a trademark cancellation proceeding who
alleges likelihood of confusion under section 2(d) of the Lanham Act
(15 U.S.C. @ 1052(d) (1988)) must establish that the term he claims to
be his mark is distinctive of his goods, whether inherently or through
the acquisition of secondary meaning.” However, in Towers, the parties
raised and tried before the Board the issue of whether petitioner’s
mark was inherently distinctive. In the case before us, on the other
hand, the trial record clearly indicates that the parties shared the
assumption that, except for defendant’s mark on the Supplemental
Register, the marks involved herein are inherently distinctive. Thus,
in reaching our decision, we have considered plaintiff’s mark and the
mark in defendant’s pending application to be inherently distinctive.

Opposition No. 107,476 and Cancellation No. 26,722
4
Defendant, in its answer in each proceeding, denied
the salient allegations of the claim. The opposition and
cancellation proceedings have been consolidated and are
considered together in this opinion.
Procedural Matters
As a preliminary matter we address the fact that
several of the testimony depositions, exhibits and briefs
have been submitted as “Confidential.” In this regard,
we note the relevant provisions of Trademark Rule
2.125(e), 37 CFR §2.125(e):
Upon motion by any party, for good cause, the
Trademark Trial and Appeal Board may order that
any part of a deposition transcript or any
exhibits that directly disclose any trade secret
or other confidential research, development, or
commercial information may be filed under seal
and kept confidential under the provisions of
§2.27(e).

However, as noted in the Board’s order of June 10, 1999,
neither plaintiff nor defendant has requested a
protective order with respect to such materials, nor have
the parties filed a stipulated protective order.
Moreover, only those portions of filings which are truly
Opposition No. 107,476 and Cancellation No. 26,722
5
confidential in nature should be filed under seal as
confidential.
Therefore, within thirty days of the date of this
decision, the parties must resubmit their respective
materials designated as “confidential” by placing them in
a separate envelope clearly designated as confidential,
with those portions which are not confidential being
submitted in the normal manner; moreover, only those
pages which truly contain confidential material should be
submitted as such.5 In connection therewith, plaintiff or
defendant is directed to prepare a protective order,
preferably upon terms mutually agreeable to the other
party, for the Board’s consideration, including an
explanation of why those portions submitted under seal
are deemed to be confidential in nature. We will keep
the materials that are presently stamped “confidential”
under seal until we decide the motion upon resubmission.
If no resubmission is made within the specified period,
we will treat both parties’ entire submissions as part of
the public record.
We consider, next, defendant’s August 17, 1999
motion to strike plaintiff’s exhibits nos. 79-87. The

5 To the extent possible, the Board encourages plaintiff to redact
confidential information from its exhibits.

Opposition No. 107,476 and Cancellation No. 26,722
6
Board, in its order of February 22, 2000, deferred
decision on defendant’s motion until final decision, so
we consider this motion now. Defendant contends that
these exhibits are inadmissible because they were
submitted during plaintiff’s rebuttal period6 by notice of
reliance and they are not printed publications or
official records which may be submitted by notice of
reliance; and that the exhibits were not previously
produced or identified in response to defendant’s
discovery requests.
While it is clear from the record that the exhibits
were submitted by notice of reliance7 on July 31, 1999
during plaintiff’s rebuttal testimony period, it is not
necessary for us to consider whether or not such evidence
is properly the subject of a notice of reliance or
whether the unsigned notice of reliance is valid.8 The
same exhibits (nos. 79-87) were also submitted with the
July 30, 1999 rebuttal testimony of Bruce Strain, and
properly introduced in connection therewith.

6 This objection is not based on any allegation that the matter
submitted is not proper for rebuttal.

7 In its order of September 30, 1999, the Board noted that plaintiff’s
notice of reliance was unsigned and directed plaintiff to file a signed
copy within twenty days. A signed copy was never submitted.

8 Although the Board, in its order of February 22, 2000, deferred
decision on defendant’s motion to strike until final decision, the Board
Opposition No. 107,476 and Cancellation No. 26,722
7
Defendant’s objection that the evidence was not
disclosed during discovery is also not well taken.
Defendant has not pointed to any specific discovery
request that would have required the disclosure of this
evidence. Therefore, defendant’s motion to strike
exhibits nos. 79-87 is denied.
We consider, next, plaintiff’s request in its brief
that the Board take judicial notice of two exhibits
submitted with its brief. Exhibit A to the brief is a
copy of a newspaper article and Exhibit B is an excerpt
from an atlas. The newspaper article is inappropriate
subject matter for judicial notice. Further, plaintiff’s
request is merely an attempt to introduce additional
evidence outside of its testimony period. We have given
exhibit A no consideration. While we do not condone
plaintiff’s attempt to supplement the record at this late
stage, Exhibit B, a map of Ontario from the Rand McNally
Cosmopolitan World Atlas (1987), is amenable to judicial
notice and, thus, we take judicial notice thereof. We do
not, however, separately take judicial notice of the
distances between cities shown on that map.
Next, we consider various objections by plaintiff to
defendant’s evidence submitted as exhibits to testimony.

noted therein that exhibits nos. 79, 85 and 86A, at least, are clearly
Opposition No. 107,476 and Cancellation No. 26,722
8
Plaintiff contends that defendant’s exhibits nos. 8-10,
12 and 15 should be excluded as hearsay. Exhibit no. 8
is a third-party letter to defendant stating that the
writer has received defendant’s information package;
exhibit no. 9 is a third-party letter to defendant
stating that defendant has purchased airbag books and
electrical repair manuals from the writer’s company since
September 1993; exhibit no. 10 is a third-party letter to
defendant asking for an information packet regarding
possible franchising; exhibit no. 12 is a third-party
letter to defendant thanking defendant’s Mr. Bunker for
participation in a 1995 appraisers conference; and
exhibit no. 15 is a third-party letter from a graphics
and printing company stating that the company did
printing for defendant. These exhibits would be hearsay
only if they are considered for the truth of the
statements contained therein.9 To the extent that exhibit
nos. 8-10, 12 and 15 are submitted to show that defendant
had received these letters, the exhibits are acceptable
and have been considered as part of the record.

official records.
9 Further, the statements contained therein do not attest to, and are
not probative of, defendant’s use of its mark in connection with the
rendering of the services identified in defendant’s application and
registration.

Opposition No. 107,476 and Cancellation No. 26,722
9
Finally, plaintiff contends that defendant’s
exhibits nos. 10-14 and 16-26 should be excluded as
irrelevant.10 Because these exhibits pertain to matters
in issue in this proceeding, we have considered them for
whatever probative value they may have.
The Record
The record consists of the pleadings; the files of
the involved application and registration; a U.S. Postal
Service statement submitted by plaintiff’s notice of
reliance; and the testimony depositions, with
accompanying exhibits, of defendant’s witnesses, Bradley
James Bunker and Joseph J. Pawlak, and of plaintiff’s
witness, Bruce Strain.11 Both parties filed briefs on the
case but a hearing was not requested.
Analysis
We consider, first, the issue of likelihood of
confusion. In its brief (pg. 14), defendant makes the
following statement with respect to the marks and
services:

10 Plaintiff also argues that certain specified portions of its own
witness’s testimony, that of Mr. Strain, are admissible. However,
defendant’s brief contains no objections to Mr. Strain’s testimony.
Thus, we have not considered plaintiff’s comments, although we have
considered Mr. Strain’s testimony.

11 Plaintiff submitted Mr. Strain’s testimony from its case in chief,
with accompanying exhibits nos. 1-77, by notice of reliance. Use of a
notice of reliance is unnecessary for the submission of testimony and
Opposition No. 107,476 and Cancellation No. 26,722
10
[Defendant] does not deny that its marks … are
confusingly similar to [plaintiff’s] marks ….
Furthermore, it is clear that both [defendant’s
and plaintiff’s] respective marks are used in
connection with substantially similar, if not
identical, services.

We consider defendant’s statement in its brief to be a
concession that the parties’ marks are substantially
similar; that the parties’ services of installing airbags
and airbag sensors in automobiles in which the previous
airbags have been deployed are substantially similar, if
not identical; and that, thus, confusion as to source is
likely if both parties use their respective marks in
connection with these services.
Thus, the only issue before us, and the issue
principally argued by the parties, is priority. We begin
by reciting the pertinent facts of record about the
airbag reinstallation business and plaintiff’s and
defendant’s respective businesses in the United States.12
The evidence establishes that airbags became
optional in 1987-model domestically-manufactured
passenger cars; that, to comply with federal regulations,
manufacturers put driver airbags in all passenger cars

accompanying exhibits; and it is an inappropriate use of a notice of
reliance.
12 Defendant’s evidence regarding its use of its mark in connection with
services rendered in Canada is not relevant to our determination of use
and priority in the United States.

Opposition No. 107,476 and Cancellation No. 26,722
11
manufactured after September 1, 1989; and that driver and
front passenger airbags became mandatory in passenger
cars manufactured after September 1, 1997, and in vans
and light trucks manufactured after September 1, 1998.13
The 1991 Mitchell Airbag Service and Repair Manual
(Exhibit 82, testimony of Mr. Strain) includes entries
for domestic passenger car model-years beginning in 1988
and imported passenger car model-years beginning in 1985.
According to the testimony of Mr. Strain, prior to 1992,
autobody shops did not have the specialized tools
necessary to diagnose or test airbag systems, so all such
testing and replacements were done by auto dealerships
prior to 1992.
Mr. Strain testified that he registered SUPPLEMENTAL
RESTRAINT SPECIALISTS as a fictitious name with the state
of California on June 17, 1992; that, in 1992, plaintiff
began using the marks SRS and SUPPLEMENTAL RESTRAINT
SPECIALISTS and design in connection with its airbag
diagnostic and installation business; and that, through
1993, plaintiff was also conducting a substantial amount
of market research and distributing promotional materials

13 We take judicial notice of these facts contained in Exhibit 79 to Mr.
Strain’s testimony. Exhibit 79 is a December 1996 report to Congress by
the National Highway Traffic Safety Administration entitled
“Effectiveness of Occupant Protection Systems and Their Use.”

Opposition No. 107,476 and Cancellation No. 26,722
12
to determine if its business would flourish and to ensure
that its prices were competitive. In 1994 plaintiff
began operating its airbag diagnostic and installation
business at a profit.14 Also in 1994, plaintiff began
conducting workshops on airbag system diagnostics and
installation to autobody shops and insurance company
adjusters. In 1995 plaintiff began selling airbag system
diagnostic tools. Plaintiff’s business, including the
sale of the above described services and products, has
been continuous to the present.
Plaintiff’s diagnostic and installation services
have been offered only in California.15 Plaintiff’s

14 At p. 19 of Mr. Strain’s October 14, 1998 testimony, he states that
in 1992 plaintiff was rendering its described diagnostic and
installation services under its marks. However, at p. 206 of the same
deposition, Mr. Strain states that he “received [his] first payment for
income toward the business” in 1994. From other statements made in
proximity to these two statements, we conclude that plaintiff began
offering and rendering its airbag diagnostic and installation services
under its mark in 1992, but first realized a profit in 1994.

15 Defendant argues, for the first time in its brief, that plaintiff has
not offered its services outside of the state of California. Defendant
appears to acknowledge plaintiff’s priority of use in California and
asks that defendant be granted registrations for all of the United
States except California. This is not a concurrent use proceeding, and
issues of concurrent use have not been tried or established. Therefore,
we have given defendant’s statements in this regard no consideration.
To the extent defendant is challenging plaintiff’s standing by
asserting that plaintiff’s installation services have been rendered only
in California, such an argument is not well taken. Plaintiff has shown
that it is in the identical business as defendant and, thus, plaintiff
has established its interest.
Finally, to the extent defendant is challenging plaintiff’s
priority by asserting that plaintiff’s use of its mark must be on
services rendered across state lines, this argument is also not well
taken. The Trademark Act prohibits the registration of a mark which is
Opposition No. 107,476 and Cancellation No. 26,722
13
services are rendered to autobody shops; however,
insurance company adjusters and/or managers consider and
approve the estimates submitted by plaintiff to the
autobody shop. The evidentiary record supports Mr.
Strain’s statements.
Additionally, the record includes copies of several
articles about airbag reinstallation in nationally
distributed publications for the autobody and insurance
industry. The articles refer to plaintiff’s services
rendered under its mark. The evidence indicates,
further, that plaintiff advertises its services
identified by its mark in these publications; that its
employees author articles in these publications; and that
its employees participate in workshops and conferences
regarding the diagnosis and reinstallation of airbags
offered by insurance companies and professional
organizations in this field.
Defendant’s principal witness was Mr. Bunker,
defendant’s president, who testified that defendant has
been in business installing airbags in Canada since 1989.
Mr. Bunker stated that defendant has been advertising its
services in the United States since 1989; and that

likely to cause confusion with a mark previously used in the United
States; there is no requirement that such use be in interstate commerce.

Opposition No. 107,476 and Cancellation No. 26,722
14
defendant has performed services in the United States for
body shops referred to defendant by U.S. insurance
companies. However, Mr. Bunker was very vague about the
first date of use, and nature, of the services performed
in the United States; and he was vague regarding any
services performed in the United States up to the
present. Furthermore, defendant has submitted no
documentary evidence to support Mr. Bunker’s statements
regarding use of the mark in the United States.16
Defendant’s deposition of Mr. Pawlak, a De Witt, New
York, field supervisor with Kemper Insurance Company,
attests only to his having been contacted by Mr. Bunker
in 1992 and 1998; and Mr. Pawlak confirms that he did not
purchase any goods or services from Mr. Bunker or
defendant. Exhibits to Mr. Bunker’s testimony include
defendant’s file copies of promotional letters to third
parties and letters from third parties acknowledging
receipt of promotional/informational materials. However,
this is not evidence that actual sales have taken place
in the United States. Similarly, evidence indicating
printing purchases and seminars and services rendered in

16 Mr. Bunker stated that defendant maintains records for only a period
of five years; however, defendant has produced no invoices or other
evidence of use of its mark in connection with services rendered in the
United States during the five years preceding the testimony period, the
period for which defendant allegedly keeps records.
Opposition No. 107,476 and Cancellation No. 26,722
15
Canada do not establish defendant’s use of its mark in
connection with services rendered in the United States.
Thus, we find that defendant has not established use
of its marks in the United States on this record.
Defendant’s priority filing date of its opposed
application (July 12, 1995) is the only date upon which
defendant may rely for establishing priority in the
opposition. In the cancellation, it is clear that a
Supplemental Register registration is incompetent as
evidence to establish priority of use of defendant’s
mark; the Supplemental registration is evidence of
nothing more than the fact that the registration issued
on the date printed thereon. It is entitled to no
presumptions of validity, ownership, use or priority.
See Andrea Radio Corporation v. Premium Import Co., Inc.,
191 USPQ 232 (TTAB 1975); Nabisco, Inc. v. George Weston
Limited, 179 USPQ 503 (TTAB 1973); Aloe Crème
Laboratories, Inc. v. Bonne Bell, Inc., 169 USPQ 246
(TTAB 1970); and Nautalloy Products, Inc. v. Danielson
Manufacturing Company, 130 USPQ 364 (TTAB 1961).
While the actual date of first use of plaintiff’s
marks is not entirely clear from Mr. Strain’s testimony,
the body of evidence of record establishes that plaintiff

Opposition No. 107,476 and Cancellation No. 26,722
16
first used its mark in connection with its airbag
reinstallation services in 1992.
Thus, we conclude that plaintiff has established its
priority of use of its pleaded marks in connection with
its services with respect to both defendant’s mark in its
pending application and its mark in its Supplemental
Register registration; and that there exists a likelihood
of confusion with respect to the parties’ marks and
identical services.
Decision: The opposition is sustained and the
petition to cancel is granted. Defendant’s registration
will be cancelled in due course.