The Boler Company

Trademark Trial and Appeal Board

Feb 17, 2009

No. 77059048 (T.T.A.B. Feb. 17, 2009)

Hearing: Mailed:
January 7, 2009 February 17, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Boler Company
________

Serial No. 77059048
_______

Rodney L. Skoglund of Renner, Kenner, Grieve, Bobak, Taylor
& Weber for The Boler Company.

Dannean J. Hetzel, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Cataldo, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

The Boler Company (“applicant”) filed an intent-to-use
application on the Principal Register for the mark
QUAANTUM, in standard character form, for “trailer
suspension systems, incorporating wheel end systems,” in
Class 12.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the registered mark
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77059048
2
QUANTUM, in standard character form, for “tires,” in Class
12.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
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”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,

1 Registration No. 3042761, issued January 10, 2006.
Serial No. 77059048
3
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988).
In comparing the marks, we are mindful that 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 so that confusion as to the
source of the goods and services offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than a specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
Serial No. 77059048
4
The applicant’s mark QUAANTUM is virtually
indistinguishable from the registered mark QUANTUM. The
only difference between the two marks is applicant’s use of
the double letter “A” in the middle of its mark. If a
consumer even noticed the use of the double “A,” he/she
would likely recognize it as a mere variation of the word
“Quantum,” or as a typographical error.
Applicant contends that its use of the double letter
“A” is significant because applicant owns three other
registrations that include a double letter “A”:
1. Registration No. 1898081 for the mark INTRAAX for
“axle suspension assemblies for heavy duty land
vehicles”;
2. Registration No. 2134996 for the mark VanTraax
for “suspension systems for land vehicles”; and,
3. Registration No. 2925975 for the mark TIREMAAX
for a “tire inflation system.”2
Accordingly, applicant asserts that consumers will
associate applicant’s QUAANTUM mark with its previously
registered marks.
[A]n average purchaser of a trailer
suspension system is familiar and
knowledgeable with the industry and the
types of suspension systems available

2 Copies of the registrations were made of record in applicant’s
August 2, 2007 response.
Serial No. 77059048
5
for tractor trailers.3 Thus, given that
Applicant already has marks for its
other suspension systems or assemblies
that employ a “AA” construct in the
marks INTRAAX and VANTRAAX, an average
purchaser will be aware of those
trademarks and will know that the
QUAANTUM trademark is from the same
source as the INTRAAX and VANTRAAX
goods. To say otherwise, would be to
assert that average purchasers are not
aware of the other types of suspension
systems they would put on tractor
trailers.4

There are two problems with applicant’s argument.
First, absent evidence of actual use of applicant’s
previously registered marks, they are entitled to little
weight in our analysis. Copies of applicant’s previously
registered marks are not evidence that the marks are in use
on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Second, applicant is essentially asking us to find
that it has a family of marks incorporating the double
letter “A.” In essence, applicant contends that it is the

3 Applicant’s description of goods is not limited to “tractor
trailers.” The import of this fact is discussed in our analysis
of the similarity or dissimilarity and nature of the goods.
4 Applicant’s Brief, pp. 11-12.
Serial No. 77059048
6
owner of a group of different marks that incorporate the
double letter “A” that have been used in such a way that
consumers would recognize all the different double letter
“A” marks used in connection with trailer suspension
systems as emanating from a single source. See J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1891 (Fed. Cir. 1991). However, applicant did not
submit any evidence to support its theory.
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, connotation and
commercial impression.
B. The similarity or dissimilarity and nature of the
goods described in the application and registration.

Applicant is seeking to register its mark for “trailer
suspension systems, incorporating wheel end systems.”
However, in its brief, applicant asserted that it sells
suspension systems for tractor trailers.5 In this regard,
the likelihood of confusion is determined on the basis of

5 Applicant’s Brief, p. 6. At oral argument, applicant’s counsel
confirmed that the QUAANTUM suspension system is proposed for use
in connection with a tractor trailer. A “tractor trailer” is
defined as “a combination trucking unit consisting of a tractor
[“a short truck with a driver’s cab but no body, designed for
hauling a trailer or semitrailer”] hooked up to a full trailer or
semitrailer.” Random House Dictionary of the English Language
(Unabridged), p. 2005 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 77059048
7
the goods and services as they are identified in the
application at issue. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47,
48 (TTAB 1976). See also Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
As the Court of Customs and Patent Appeals, the
predecessor of our primary reviewing court, explained in
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in
its actual use which it argues on this
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

Likewise, in this case, we must also analyze the
similarity or dissimilarity and nature of the goods based
on the description of the goods set forth in the
Serial No. 77059048
8
application. In other words, we may not limit applicant’s
trailer suspension systems to tractor trailer suspension
systems. By the same token, we cannot limit or restrict
the tires listed in the cited registration. Therefore, we
must construe registrant’s tires as encompassing tires for
trailers.
The Examining Attorney contends that “the goods are
similar in nature in that both are related automotive
parts. Registrant’s tires are used on land vehicles, as
are applicant’s goods.”6 To properly analyze the
relationship of the goods, we must first discuss what they
are. The relevant products are defined below:
1. “Automotive” means “pertaining to the design,
operation, manufacture or sale of automobiles.”
“Automobiles” are “passenger vehicles designed for
operation on ordinary roads and typically having four
wheels and a gasoline or diesel internal-combustion
engine.”7 Because applicant is seeking to register its mark
for a trailer suspension system, automotive parts are not
relevant to the issue before us.8

6 Examining Attorney’s Brief, unnumbered page
7 Random House Dictionary of the English Language (Unabridged),
p. 141.
8 The Examining Attorney did not submit any evidence showing a
connection or relationship between trailer parts and automotive
parts.
Serial No. 77059048
9
2. A “trailer” is defined as “a large van or wagon
drawn by an automobile, truck, or tractor, used esp. in
hauling freight by road.”9
3. A “suspension system” is defined as “the
arrangement of springs, shock absorbers, hangers, etc. in
an automobile, railway car, etc. connecting the wheel-
suspension units or axles to the chassis frame.”10
4. A “vehicle” is defined as “any means in or by
which someone travels or something is carried or conveyed;
a means of conveyance or transport . . . a conveyance
moving on wheels, runners, tracks of the like, as a cart,
sled, automobile, or tractor.”11 Accordingly, a trailer is
a vehicle.
5. Neither the Examining Attorney, nor the
applicant, defined or explained the meaning of a “wheel end
system.”12 In its request for reconsideration, applicant

9 Random House Dictionary of the English Language (Unabridged),
p. 2007.
10 Random House Dictionary of the English Language (Unabridged),
p. 1917. See also the WIKIPEDIA entry attached to the October 3,
2007 Office Action.
11 Random House Dictionary of the English Language (Unabridged),
p. 2109.
12 At oral argument, applicant’s counsel explained that a “wheel
end system” comprises all the components for attaching the wheel
to the suspension system. However, arguments made at oral
hearing must be based on the evidence of record at the time the
appeal was filed. An oral hearing may not be used to introduce
evidence. TBMP §1216 (2nd ed. rev. 2004). See also In re
Caterpillar, 43 USPQ2d 1335, 1337 (TTAB 1997) (exhibits proffered
at the oral hearing were not considered). Accordingly,
Serial No. 77059048
10
attached an advertisement published in the December 2007
issue of Heavy Duty Trucking magazine for “Hendrickson
Quaantum FX For Vocational Trailers.”13 The advertisement
provides the following information:
The Quaantum FX melds suspension
components, including extended service
brakes and wheel ends, air springs and
shock absorbers to work as part of a
cohesive, long-life unit.

We find this description of applicant’s products sufficient
to corroborate applicant’s explanation at the oral hearing
that a wheel end system comprises all of the components for
attaching the wheel to the suspension system.
The Examining Attorney submitted 11 third-party
registrations that cover, inter alia, both tires and
suspension systems as evidence that such products are a
type that may emanate from a single source. In re Infinity
Broadcasting Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001).
However, only two of the registrations include trailer
suspension systems and tires:
1. Registration No. 3116346 for the mark BUILT FOR
OFF-ROAD; and,

applicant’s explanation is not evidence, and it was not
considered.
13 Applicant claimed ownership of the house mark HENDRICKSON.
(Applicant’s March 27, 2008 request for reconsideration, p. 2).
Serial No. 77059048
11
2. Registration No. 3032748 for the mark
TRAILER PRO.
One other registration was for “land vehicle parts,”
including tires and suspension systems: Registration No.
2696675 for the mark GRABATRAK. The remaining
registrations were for automotive suspension systems and
one for bike and motorcycle suspension systems. Because
there was no evidence that the marketing of trailer
suspension systems and tires is similar to the marketing of
automotive suspension systems and tires, the registrations
involving automobiles, bikes and motorcycles do not have
any probative value.14
The Examining Attorney also submitted excerpts from a
number of websites purportedly “demonstrating these goods

14 Applicant contends that the TRAILER PRO registration does not
have any probative value because the specimen of use submitted in
that application did not show the mark used with either tires or
suspension systems. (Applicant’s August 2, 2007 Response).
TRAILER PRO was registered for numerous products in Class 12. If
more than one item of goods is specified in an application in one
class, it is not necessary to have a specimen for each product.
TMEP §904.01(a)(5th ed. 2007). Accordingly, we cannot draw any
negative inference from the specimens filed in that application.

Applicant also asserts that the registrations for the TRAILER PRO
and BUILT FOR OFF-ROAD marks do not have any probative value
because “Applicant was unable to find any evidence that the cited
marks . . . are actually used on either tires or suspension
systems.” (Applicant’s August 2, 2007 Response). However,
applicant did not provide any corroborating evidence such as
copies of the relevant websites.

Serial No. 77059048
12
marketed and/or sold through the same retail outlets.”15 In
fact, there were only two websites that showed trailer
suspension systems and tires sold by the same retailer
(wholesaletrailersupplies.com and centrevilletrailer.com).
However, these websites do not show any trailer parts,
including suspension systems, and tires sold under the same
mark. Moreover, even if the websites for the automotive
retailers were relevant, they do not show suspension
systems and tires being sold under the same mark.
Based on this evidentiary showing (i.e., three third-
party registrations covering both trailer or vehicle
suspension systems and tires and two websites for retail
sales services, including trailer suspension systems and
tires), we do not find that the Examining Attorney met her
burden of proving that purchasers encountering trailer
suspension systems and tires under the same or similar
marks would conclude that they originate from the same
source.
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

The Examining Attorney relies on the third-party
registrations and websites discussed in the previous
section to support her argument that trailer suspension

15 October 3, 2007 and April 27, 2008 Office Actions.
Serial No. 77059048
13
systems and tires move in the same channels of trade and
are sold to the same classes of consumers. Applicant,
however, argues that the evidence is insufficient to prove
that the products move in the same channels of trade and
are sold to the same classes of consumers. Because this
factor deals with how and to whom the products are sold, we
find that the two websites for retail sales services,
including trailer suspension systems and tires, demonstrate
that trailer suspension systems and tires are sold through
the same channels of trade and are sold to the same
consumers.
D. The conditions under which and buyers to whom sales
are made, i.e., “impulse” vs. careful, sophisticated
purchasing.

Applicant contends that purchasers of trailer
suspension systems are knowledgeable purchasers, and that
the Examining Attorney has provided no evidence to the
contrary. Applicant argues that relevant purchasers
exercise a high degree of care for the following reasons:
Trailer suspension systems are custom
designed and carefully crafted for
various trailer models and
applications. They must be purchased
by those knowledgeable in the field of
trailer construction and repair. The
typical consumer is primarily a
purchasing agent for trailer
manufacturers. The suspension system
must be carefully selected based upon a
number of factors, including the make,
Serial No. 77059048
14
model, and intended use of the trailer.
Thus, the consumer must be
sophisticated and exercise a high
degree of care in making the purchase.16

Applicant’s argument is corroborated in part by the
information in the Trailer411.com website.17
When choosing your [trailer] suspension
system you are going to need to make a
few considerations.

1. Trailer Size . . .

2. Capacity Options . . .

3. Number of Axles . . . You also
need to consider the type of cargo you
will be hauling. . . .

* * *

The key is that you match the right
trailer suspension with your specific
application.

This du Pont factor focuses on the degree of care
consumers use in purchasing the products at issue. For our
purposes, the issue of consumer care relates to the degree
to which consumers consider the marks, as well as any other
information regarding source. Thus, we analyze consumer
care based on the role trademarks play in the decision
making process and how relevant consumers react to the
QUAANTUM and QUANTUM trademarks. In considering the role

16 Applicant’s Brief, p. 18.
17 October 3, 2007 Office Action.
Serial No. 77059048
15
of consumer care in the likelihood of confusion analysis,
we must determine whether the products at issue are sold
under circumstances to insure care in discerning the source
of the goods. Industrial Nucleonics Corp. v. Hinde, 475
F.2d 1197, 177 UPQ 386, 387 (CCPA 1973).
In this regard, applicant did not explain how
trademarks affect the purchasing decision. However, we are
convinced that purchasers of trailer suspension systems, as
well as trailer suspension systems incorporating wheel end
systems, will exercise a high degree of care before
purchasing applicant’s products. A trailer suspension
system is an unusual and complex product. Therefore, the
purchase thereof involves considerable planning and a
reasonably focused need for the product. It will be bought
and sold by knowledgeable people. Undoubtedly, it will be
a relatively expensive purchase. Accordingly, we believe
that consumers will exercise a high degree of care in
selecting a trailer suspension system, and consequently pay
attention to the source of the product.
While any trailer owner may purchase tires for the
trailer, the only overlap in customers would be the
careful, sophisticated purchasers of applicant’s products.
Only the purchasers of trailer suspension systems would be
exposed to both marks. Therefore, we find that the degree
Serial No. 77059048
16
of care likely to be exercised by purchasers of trailer
suspension systems and tires does not support a finding of
likelihood of confusion.
E. The number and nature of similar marks in use on
similar goods.

Applicant argues that QUANTUM is a weak mark entitled
to only a narrow scope of protection. In this regard,
application points out that the word “Quantum” is the
subject of over 1,000 marks in the Trademark Office
database and that “there are 136 current marks in which
“QUANTUM” is the full mark, and 116 of these are live
registrations.”18 In addition, applicant submitted copies
of four third-party registrations for the mark QUANTUM for
wheelchairs, boats, truck accessories, and bicycles.19

18 Applicant’s Brief, p. 19. Applicant submitted the hit list
from the searches in its August 2, 2007 Response. The hit lists
are not proper evidence of third-party registrations. To make
registrations of record, soft copies of the registrations or the
electronic equivalent thereof (i.e., printouts or electronic
copies of the registrations taken from the electronic search
records of the USPTO) must be submitted. Raccioppi v. Apogee
Inc., 47 USPQ2d 1368 (TTAB 1998); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230 (TTAB 1992); In re Hub Distributing, Inc., 218 USPQ
284 (TTAB 1983). Moreover, third-party use is relevant only to
the extent that it establishes that the consuming public is
exposed to similar marks on similar goods. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d
1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Because the
hit lists do not display the goods and services, they do not have
any probative value.

19 Applicant’s March 27, 2008 request for reconsideration.
Serial No. 77059048
17
As indicated in Section A, absent evidence of actual
use, third-party registrations have little probative value
because they are not evidence that the marks are in use on
a commercial scale or that the public has become familiar
with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177
USPQ at 463. See also In re Hub Distributing, Inc., 218
USPQ at 285.
[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
(sic) registrations are still in use.
Because of this doubt, third party
(sic) registration evidence proves
nothing about the impact of the third-
party marks on purchasers in terms of
dilution of the mark in question or
conditioning of the purchasers as their
weakness in distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286.
In view of the foregoing, applicant’s argument that
the mark QUANTUM is a weak mark entitled to only a narrow
scope of protection is not well taken.
F. Balancing the factors.

Because the record fails to show that the goods on
which the marks will be used are similar, and because the
relevant consumers will exercise a high degree of care in
purchasing the products at issue, we find that the marks
and the goods would not be encountered under circumstances
likely to give rise to the mistaken belief that they
Serial No. 77059048
18
originate from the same source. Accordingly, we find that
applicant’s registration of the mark QUAANTUM for “trailer
suspension systems, incorporating wheel end systems” is not
likely to cause confusion with the registered mark QUANTUM
for tires. We hasten to point, however, that on a
different and more complete record, we might arrive at a
different result.
Decision: The refusal to register is reversed.