The Pep Boys Manny, Moe & Jack of Californiav.Kent G. Anderson

Trademark Trial and Appeal Board

Jun 19, 2014

No. 91185285 (T.T.A.B. Jun. 19, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed:
June 19, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Pep Boys Manny, Moe & Jack of California
v.
Kent G. Anderson
_____

Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
_____

Marsha G. Gentner of Dykema Gossett PLLC,
for The Pep Boys Manny, Moe & Jack of California.

Daniel S. Kirshner of Daniel S. Kirshner Atty at Law LLC,
for Kent G. Anderson.
_____

Before Quinn, Mermelstein, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
The Pep Boys Manny, Moe & Jack of California opposes Kent G. Anderson’s
applications to register the marks FUTURE – both stylized and in standard
characters – and FUTURISTIC in standard characters (collectively, “Applicant’s
FUTURE marks”) for a variety of goods and services. Opposer claims confusion is
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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likely with its marks FUTURA and CORNELL FUTURA for tires and related
automotive accessories.
These five consolidated oppositions are the latest in a series of proceedings and
appeals to the Board concerning numerous of Applicant’s applications and
registrations for the mark FUTURE for a broad array of goods and services. E.g.,
Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271 (TTAB 2014); Future Ads LLC v.
Anderson, Opposition No. 91203191 (TTAB April 10, 2014). Indeed, this is the fifth
time we have decided proceedings between Applicant and Opposer alone.1
We sustain the oppositions in part and dismiss in part.
I. Opposer’s Claims
Opposer pleads the following three registered marks in each of the five
proceedings:
1. FUTURA for “automotive accessories, namely, vehicle wheel caps and hub
caps” in International Class 12;2
2. FUTURA for “tires” in International Class 12;3 and
3. CORNELL FUTURA for “pneumatic tires for automotive vehicles” in
International Class 12.4

1 Prior TTAB opposition proceedings are Nos. 91204213 (June 18, 2014); 91196980
(April 23, 2014); 91173923 (June 18, 2009); and 91157538, 91157768, 91158277, 91158509,
91158520, 91158786, 91159159, 91164461, 91164602, 91165913, 91170501, and 91173632
(Aug. 6, 2008) (consolidated).
2 Registration No. 2454578, issued May 29, 2001; Section 8 and 15 affidavits accepted and
acknowledged. The English translation of the word FUTURA in the mark is “future.”
3 Registration No. 1582462, issued February 13, 1990; Section 8 and 15 affidavits accepted
and acknowledged; renewed.
4 Registration No. 0778767, issued October 10, 1964; Section 8 and 15 affidavits accepted
and acknowledged; renewed.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 3 -

Each of the five opposed applications was filed on an intent-to-use basis
pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). All identify
numerous goods and services, which we do not reproduce here because not all goods
and services are opposed. The opposed goods and services identified in the Notices
of Opposition are:
1. Opposition No. 91184524 to application Serial No. 76634950, filed April 4,
2005 for the mark FUTURE in standard characters: All services in
International Class 35.
2. Opposition No. 91185285 to application Serial No. 76537316, filed August
14, 2003 for the typed mark : All services in International Class
42.
3. Opposition No. 91190423 to application Serial No. 76545706, filed
September 22, 2003 for the mark FUTURISTIC in standard characters:
International Class 3: “automobile interior and exterior
polishes and cleaners,” “automobile polish, automobile
wax,” “heavy duty degreasing preparation for use on car
garage floors,” and “automotive cleaners”
International Class 5: “car deodorizer”
International Class 6: “frames and parts for vehicles,
namely, door frames of metal, metal door trim, and metal
nameplates”
International Class 7: “machines and machine tools,
namely . . . distributors for vehicles; . . . parts standards
for vehicles, namely, spark plug wires and alternators for
land vehicles; . . . mechanical engine parts for land
vehicles; mufflers for automobiles; vehicle parts for
operation, namely, carburetors; replacement parts for
vehicles, namely, automobile engine and transmission
seals; internal combustion engine parts, namely, heads,
pistons, metal seal rings for use with turbo-machinery
and centrifuges, connecting rods and coils; connecting
rods for machines, motors and engines; distributor caps;
spark plugs; ignition wires; engine bearings; . . . air
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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filters for vehicle motors and engines; oil pumps for
internal combustion engines; valves for pumps; . . .
gaskets for internal combustion engines; fuel injector
pumps for land vehicles; fuel filters; oil filters; electric
generators; . . . electronic converter, namely, emission
reduction units for motors and engines, namely, catalytic
converters; ignition parts for internal combustion engines,
namely, points; engine components, namely, electronic
fuel injection modules; electric generators; crank shafts
for internal combustion engines; rods for engines and
motor crank shafts; automobile engine blocks, exhaust
pipes for land vehicles; automotive intake manifold; . . .
cam shaft; variable speed drive train for electric motors;
carburetors; air intake and filter for starter alternators;
piston blocks; centrifugal head pumps; electric motor
water pump generator; engine cylinders for vehicles; . . .
structural parts and components for engines, namely,
anti-pollution devices”
International Class 9: “car stereos; . . . satellite systems,
namely, a global positioning system; . . . tire balancing
machines for land vehicles; tire pressure gauges; laser
object detectors for use on vehicles; odometers;
speedometers for vehicles, batteries; vehicle locking
system, namely, programmable locking systems
consisting of electronic cylindrical lock sets and keypads;
radios for vehicles; cruise control for motor vehicles and
other electronic products and technology which make up
vehicles and aircraft, namely, electronic tire pressure
monitors, electronic deer alerts and aircraft airspeed
sensors . . . ; satellites [sic] navigation systems, namely,
global positioning systems; global positioning system
consisting of computers and computer software,
transmitters, receivers and network inter face devices; . . .
radios for vehicles; . . . electric cigarette lighters for land
vehicles”
International Class 11: “tail light accessories for vehicles,
namely, vehicle headlights, reflectors, turn signal lights
and headlights” and “climate control system for vehicles
consisting of air conditioner and exhaust fan”
International Class 12: All goods.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 5 -

International Class 35: “dealerships in the field of
automobiles, cars, trucks, RV, SUV, motor cycles,
aircrafts, space craft, trains, buses, spacecraft, watercraft
and recreational vehicles; . . . retail gasoline supply
services; . . . retail store services featuring a wide variety
of consumer goods of others; . . . independent sales
representatives in the field of motorcycles, cars, trucks,
SUV, RV, water craft, land craft and aircraft; wholesale
ordering services in the field of motorcycles, cars, trucks,
SUV, RV, water craft, land craft and aircraft . . . ;
wholesale distributorships in the field of automobiles,
water craft, land craft, space craft, aircraft and
recreational vehicles; wholesale distributorships in the
field of . . . automotive parts, all-terrain vehicles . . . ;
discount stores in the field of . . . automotive parts . . . ;
retail stores featuring automobile parts and automobile
accessory; . . . retail stores featuring a wide variety of
goods and services; online retail services featuring a wide
variety of goods and services; . . . organizing exhibitions
for commercial and advertising purposes for the
promotional [sic] of . . . automotive parts . . . ; preparing
audio and visual displays in the field of consumer . . .
automobiles . . . ; manufacturers’ representatives in the
field of . . . vehicles . . . automotive parts . . . ; on-line
ordering services featuring . . . automotive parts . . . ;
wholesale ordering services in the field of . . . automotive
parts . . . ; wholesale stores featuring . . . automotive
parts, vehicles . . . ; retail outlets featuring . . . automotive
parts . . . ; retail store services featuring convenience store
items and fuel; . . . independent sales representatives in
the field of . . . land vehicles . . . automotive parts . . . ;
inventory management in the field of automobile
production and retail sale matters; . . . advertising
agencies promoting the services of the automotive,
aircraft, aerospace, watercraft [sic] and distribution of
printed and promotional materials; . . . arranging and
conducting trade show exhibitions in the field of . . .
automotive parts, aircraft, watercraft, aerospace
technology; arranging and conducting trade shows in the
field of new product introductions featuring automotive
parts, aircrafts, watercraft, and aerospace technology . . . ;
commercial information in the field of automotive, aircraft
and watercraft industries; . . . computerized on line
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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ordering services in the field of . . . automotive parts, land
vehicles . . . ; conducting an on-line trade show exhibition
in the field of automotive parts . . . ; conducting business
and market research survey [sic] in the field of
automotive . . . industries; . . . conducting trade shows in
the field of new product introductions featuring
automotive parts, aircraft, water craft and aerospace
technology; . . . cost containment in the field of
automotive, aircraft, water craft and aerospace industries;
. . . dealerships in the field of automotive parts; . . .
dealerships in the field of consumers [sic] electronic
products, industrial and home robots for personal use,
prefabricated buildings, automobiles, automotive parts . .
. ; . . . discount stores in the field of . . . automobiles . . . ;
electronic catalog services featuring . . . automotive parts
. . . ; . . . promoting the goods and services of others by
arranging for sponsors to affiliate their goods and services
associated with track and field, baseball, football, ice
hockey, field hockey competitions, automotive and water
craft racing . . . ; . . . promoting the goods and services of
others by providing a website at which users can link to
information concerning . . . automobiles, automotive parts
and accessories . . . ; providing an on-line computer
database featuring trade information in the field of
automotive, aircraft, water craft and aerospace industries;
. . . providing door to door shopping services in the field of
. . . automobiles, automotive parts . . . ; providing home
shopping services in the field of . . . automobiles,
automotive parts . . .”
International Class 37: “automobile service station
services; automotive body repair services; car washing”
International Class 40: “custom manufacturing of
automotive parts and aerospace equipment”
International Class 45: “licensing of . . . automotive parts”
4. Opposition No. 91194327 to application Serial No. 76259991, filed October
20, 2000 for the typed mark :
International Class 37: All services.
International Class 40: All services.
International Class 42: All services.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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Opposer also opposed services previously identified in this application in
International Class 35. However, the application was abandoned as to that class
after the Board sustained Opposition No. 91192939, filed by a third party, as to the
opposed Class 35. See Lincoln Nat’l Corp., 110 USPQ2d at 1286.
5. Opposition No. 91195766 to application Serial No. 76585316, filed April 6,
2004 for the mark FUTURISTIC:
International Class 9: “car stereos” and “fire
extinguishing apparatus for automobiles”
International Class 12: All goods.
International Class 35: All services.
International Class 42: “consumer product safety testing
consulting in the field of automotive design and
engineering”
II. Record
Applicant submitted no evidence. Instead, Applicant submitted his brief during
his trial period.5 The Board then reset the trial schedule to close the rebuttal period
as unnecessary.6
Opposer submitted with its Notices of Opposition current printouts from the
electronic database records of the USPTO showing the status and title of its three
pleaded registrations, thereby making them of record pursuant to Trademark Rule
§ 2.122(d)(1), 15 U.S.C. § 2.122(d)(1).

5 71 TTABVUE.
6 See Board Order of December 19, 2013, 72 TTABVUE.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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Opposer made the following of record by Notice of Reliance:
• The Pep Boys Manny, Moe & Jack of California v. Anderson, Opposition
No. 91157538 et al. (TTAB Aug. 6, 2008) (nonprecedential) (“Pep Boys I”);7
• In re Anderson, 101 USPQ2d 1912 (TTAB 2012), in which we affirmed
refusals to register Applicant’s typed marks 8 and
9 for certain goods and services due to a likelihood
of confusion with Opposer’s registered FUTURA marks;10
• Certain of Applicant’s admissions to Opposer’s Requests for Admission,
responses to Opposer’s Interrogatories, and responses to Document
Requests stating that no responsive documents exist;11 and
• Internet printouts and screenshots from Opposer’s website PepBoys.com12
and third-party websites AdvanceAutoParts.com13 and AutoZone.com.14

7 Exhibit 1, 68 TTABVUE at 4-31.
8 Application Serial No. 76511652.
9 Application Serial No. 76514799.
10 Exhibit 2, 68 TTABVUE at 32-62. Opposer did not submit the published opinion, but
neither the opinion nor a notice of reliance on it were necessary. Precedential opinions of
the Board are published in the United States Patent Quarterly and citations should be to
that source. Citation of non-precedential opinions should be to the Board’s TTABVUE
database (parallel citation to Westlaw or a similar source is permitted). If an opinion
appears in neither the USPQ nor TTABVUE, a copy of it should be attached to the paper in
which it is cited (and parallel citation to any other source is permitted). The Board
discourages the citation of non-precedential opinions unless necessary to assert claim
preclusion or issue preclusion (or a similar matter).
11 Exhibits 3-11, 69 TTABVUE.
12 Exhibit 12, 70 TTABVUE at 4-18.
13 Exhibit 13, 70 TTABVUE at 19-30.
14 Exhibit 14, 70 TTABVUE at 31-49.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 9 -

III. Analysis
A. Opposer’s Standing and Priority
Applicant Kent G. Anderson, an individual from Bismarck, North Dakota, has
not sold any of the goods or services identified in his applications.15 Applicant does
not dispute Opposer’s standing or priority.16 In any event, Opposer’s standing to
oppose registration of Applicant’s FUTURE marks is established by its pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026
(Fed. Cir. 1999). In addition, because Opposer’s pleaded registrations are of record,
priority is not an issue with respect to the goods covered by Opposer’s pleaded
registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998)
(citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974)).
B. Claim Preclusion
Opposer contends in its trial brief that claim preclusion bars relitigation of its
opposition to many of Applicant’s goods and services, based on the Board’s 2008
decision in Pep Boys I, Opposer’s consolidated opposition to twelve of Applicant’s
other applications (Exhibit 1).

15 See, e.g., Exhibit 4, Applicant’s Answers to First Set of Interrogatories Nos. 4 and 6, 69
TTABVUE at 36.
16 See Applicant’s Brief at 5, 71 TTABVUE at 6.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 10 -

At the outset, we note that Opposer pleaded neither issue nor claim preclusion in
its Notice of Opposition. Nonetheless, we find that the issue of preclusion was tried
by implied consent. First, we find that Applicant was fairly apprised that Opposer
was asserting these claims by Opposer’s Notice of Reliance. As noted supra,
Opposer’s first two exhibits were TTAB opinions in Pep Boys I, the parties’ prior
opposition decided in 2008, and In re Anderson, a 2012 ex parte affirmance of a
refusal to register two of Applicant’s other applications, citing Opposer’s FUTURA
marks. Opposer’s Notice of Reliance stated that these exhibits “are relevant to the
issues of claim and issue preclusion.”17 Second, Applicant raised no objection to
these two exhibits or to Opposer’s assertion of claim preclusion. Therefore, we deem
the pleadings to be amended under FED. R. CIV. P. 15(b)(2) to include assertion of
claim preclusion by Opposer. See, e.g., Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1924-25 (TTAB 2011).
As explained by our primary reviewing court, the doctrines of claim preclusion
and issue preclusion “preclude certain attempts at second litigation chances, but
only in defined circumstances, reflecting the need to avoid depriving litigants of
their first chances.” Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719
F.3d 1367, 107 USPQ2d 1167, 1171 (Fed. Cir. 2013). Claim preclusion, previously
known as res judicata,18 prevents litigants from pressing claims in a second suit

17 68 TTABVUE at 2.
18 Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 110 USPQ2d 1261, 1263 (Fed. Cir. 2014).
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 11 -

that were previously litigated or that they could and should have raised in earlier
litigation, even if they did not. Id. For that bar to apply, there must be:
(1) identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional
facts as the first.
Id.
The Court of Appeals for the Federal Circuit has stated that it is guided by the
analysis set forth in the RESTATEMENT (SECOND) OF JUDGMENTS § 24 (1982) in
determining whether a plaintiff’s claim in a particular case is barred by the doctrine
of claim preclusion. See Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d
1854, 1856 (Fed. Cir. 2000); Chromalloy American Corp. v. Kenneth Gordon (New
Orleans), Ltd., 736 F.2d 694, 222 USPQ 187, 189-90 (Fed. Cir. 1984). Section 24 of
the Restatement describes the concept as follows:
(1) When a valid and final judgment rendered in an action
extinguishes the plaintiff's claim pursuant to the rules of
merger or bar . . . the claim extinguished includes all
rights of the plaintiff to remedies against the defendant
with respect to all or any part of the transaction, or series
of connected transactions, out of which the action arose.
(2) What factual grouping constitutes a “transaction”, and
what grouping constitutes a “series”, are to be determined
pragmatically, giving weight to such considerations as
whether the facts are related in time, space, origin or
motivation, whether they form a convenient trial unit,
and whether their treatment as a unit conforms to the
parties’ expectations or business understanding or usage.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 12 -

As explained in Polaroid Corp. v. C & E Vision Servs. Inc., 52 USPQ2d 1954, 1957
(TTAB 1999), the Board has applied the Restatement’s analysis by looking to
whether the mark involved in the second proceeding is the same mark, in terms of
commercial impression, as the mark involved in the first proceeding.
On the facts before us, we do not apply claim preclusion in the applications to
register FUTURISTIC (Serial Nos. 76545706 and 76585316). Although the
commercial impressions are similar, FUTURISTIC is not the same as the FUTURE
mark that we have previously considered. We do, however, find that claim
preclusion applies with respect to the applications to register the mark FUTURE, in
plain and stylized form (Serial Nos. 76634950, 76537316, and 76259991). The
parties here are identical to those in Pep Boys I, satisfying the first requirement,
and the final judgment on the merits of the claim in Pep Boys I satisfies the second.
We also find that Applicant’s applications for the FUTURE mark constitute a
“series of transactions” incorporating identical marks and goods and services that
are identical in part. Miller Brewing Co. v. Coy Int’l Corp., 230 USPQ 675, 678
(TTAB 1986). Moreover, there is no argument or evidence that there has been any
change in circumstances between Pep Boys I and this case. See Litton Indus., Inc. v.
Litronix, Inc., 577 F.2d 709, 198 USPQ 280, 282 (CCPA 1978).
It has long been established that where there is a likelihood of confusion as to
any of the goods or services listed in an application, it is unnecessary to rule on
other opposed goods or services listed in the same class. See Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981);
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 13 -

Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA
1963); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1397 (TTAB 2007);
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 n.9 (TTAB
2004) (stating that “if priority and likelihood of confusion are established as to any
of the goods or services identified in an opposed class of goods or services, the
opposition to registration of the mark as to all of the goods or services identified in
that class will be sustained”); Steiger Tractor Inc. v. Steiner Corp., 3 USPQ2d 1708,
1709 (TTAB 1984):
It is also established that if one category of goods or
services listed in an application for registration presents a
likelihood of confusion when judged in relation to the
goods covered by an opposing mark, even though other
non-related or more remotely related goods are also
incorporated in the application, the prohibitions of Section
2(d) of the Trademark Act apply and will bar registration
without the need to rule on the other listed goods.
See also Lincoln Nat’l Corp., 110 USPQ2d at 1283 n.17 (“Under the second du Pont
factor, opposer need not prove and we need not find similarity as to each and/or all
of the different Class 36 services identified in the application in order to sustain the
opposition as to all of the identified Class 36 services.”).19
For that reason, we do not address piecemeal all of Applicant’s many goods or
services opposed in each class. Rather, we apply claim preclusion to the opposed
goods or services in each class comprising identified goods or services substantially

19 We do not find the circumstances to be present here that gave rise to the Board’s decision
not to apply judgment on the basis of issue preclusion as to the entire class of goods in
Nextel Commc’ns Inc. v. Motorola Inc., 91 USPQ2d 1393, 1399 (TTAB 2009).
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 14 -

identical to those the Board found in Pep Boys I likely to cause conclusion with
Opposer’s FUTURA Marks, as follows:
1. Opposition No. 91184524 to application Serial No. 76634950 for the mark
FUTURE: International Class 35 – The Class 35 services in the
application at issue in Pep Boys I are partly identical to the goods at issue
in the opposed application, namely, “automobile dealerships.” Because
only Class 35 is opposed, Opposition No. 91184524 is sustained as to all
services identified in Class 35.
2. Opposition No. 91194327 to application Serial No. 76259991 for the typed
mark – The opposition is sustained as to Classes 37 and 40,
which include the following services subject to the Board’s decision in
Pep Boys I:
International Class 37: “maintenance and repair of
automobiles, trucks” and “mechanic services”
International Class 40: “manufacture of cars, vehicles, . . .
land craft . . .”
Opposition No. 91194327 is sustained with respect to all
services in Classes 37 and 40.
C. Goods and Services Remaining for Decision
Having applied claim preclusion, the opposed goods and services remaining
before us for decision are:
• Opposition No. 91190423 to application Serial No. 76545706
(FUTURISTIC): all goods and services identified by Opposer in the
Notices of Opposition, listed supra;
• Opposition No. 91185285 to application Serial No. 76537316 ( )
and Opposition No. 91194327 to application Serial No. 76259991
( ): all services in Class 42; and
• Opposition No. 91195766 to application Serial No. 76585316
(FUTURISTIC): all goods and services in Classes 9 and 42 identified by
Opposer in the Notices of Opposition, listed supra, and all goods and
services identified in Classes 12 and 35.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 15 -

D. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all 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 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.”).
1. Similarity of the Marks
Opposer’s pleaded registrations are for the marks FUTURA and CORNELL
FUTURA. Applicant seeks to register the marks FUTURE, in plain and typed form,
and FUTURISTIC. Because opposer’s two FUTURA marks are closer to applicant’s
FUTURE marks than CORNELL FUTURA, we will focus our discussion on
opposer’s two FUTURA marks.
Consistent with Pep Boys I and In re Anderson, we find Applicant’s FUTURE
mark to be highly similar to Opposer’s FUTURA mark. The marks look and sound
alike. Furthermore, because the English translation of “futura” is “future,”20 the

20 See translation statement, Registration No. 2454578; Exhibit 6, Opposer’s First Set of
Requests for Admission to Applicant, Admission Nos. 129-33, 69 TTABVUE at 64, 69-70.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 16 -

terms are legal equivalents. In re Anderson, 101 USPQ2d at 1918. Because there is
no evidence that either FUTURE or FUTURA have any specific meaning in
connection with the goods and services of the parties, and because the marks are
similar in appearance, sound, and meaning, FUTURE and FUTURA engender
similar commercial impressions. Nor are Applicant’s typed marks sufficiently
stylized to distinguish them from Opposer’s marks. In view of the foregoing,
applicant’s FUTURE marks are highly similar to opposer’s FUTURA marks.
We also find Applicant’s mark FUTURISTIC to make an overall commercial
impression similar to Opposer’s FUTURA marks.21 Although the ending “–istic”
renders FUTURISTIC one syllable longer than FUTURA and somewhat
distinguishes the marks aurally and visually, the initial root FUTUR- is the same
for both words. Moreover, the meanings are linked; the definition of “futuristic” is
“of, relating to, or characteristic of the future, futurism, or futurology; also : very
modern.”22 Applicant admits that the term “futuristic” is perceived by the
consuming public as the adjectival form of the word “future.”23

21 In The Pep Boys Manny, Moe & Jack of California v. Anderson, Opposition No. 91173923
(TTAB June 18, 2009) (“Pep Boys II”), Opposer unsuccessfully opposed Application Serial
No. 76594751 for the mark TOMORROW/FUTURISTIC for numerous goods and services in
Classes 12 and 35. Our finding here is distinguishable because Applicant’s mark
FUTURISTIC is more similar to Opposer’s FUTURA marks than was TOMORROW/
FUTURISTIC.
22 From merriam-webster.com/dictionary/futuristic, accessed May 24, 2014. The Board may
take judicial notice of dictionary definitions, including online dictionaries that exist in
printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014);
Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).
Accordingly, we have taken judicial notice of this definition of “futuristic.” See also Exhibit
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 17 -

For these reasons, the first du Pont factor weighs in favor of a likelihood of
confusion with respect to each opposed application.
2. Similarity of the Goods and Services
In determining whether the goods and services of the parties are related, we are
mindful that there is no per se rule that products and services sold in the same field
or industry are similar or related for purposes of likelihood of confusion. Cooper
Indus., Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983) (stating that
“the mere fact that the products involved in this case (or any products with
significant differences in character) are sold in the same industry does not of itself
provide an adequate basis to find the required ‘relatedness’”). However, likelihood of
confusion may be found if the respective products and services are related in some
manner, or if the circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under conditions that could
give rise to the mistaken belief that they emanate from the same source. In re Pollio
Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Seaguard Corp. v. Seaward
Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984).
Focusing our analysis once again on Opposer’s FUTURA registrations, Opposer’s
goods are “tires” and “automotive accessories, namely, vehicle wheel caps and hub

6, Opposer’s First Set of Requests for Admission to Applicant, Admission No. 135 (“The
term ‘futuristic’ is defined as ‘of or relating to the future’.”), 69 TTABVUE at 64, 70.
23 Exhibit 6, Opposer’s First Set of Requests for Admission to Applicant, Admission Nos.
134 and 136-37, 69 TTABVUE at 64, 70.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 18 -

caps.” The most relevant of Applicant’s goods and services remaining for decision
are summarized in the following chart:
Mark Serial No. Selected Goods/Services
FUTURISTIC 76545706 Automobile interior and exterior polishes and
cleaners; automobile wax; and automotive
cleaners, in Class 3
Car deodorizer, in Class 5
Frames and parts for vehicles, namely, door
frames of metal, metal door trim, and metal
nameplates, in Class 6
Mufflers for automobiles; fuel filters; oil
filters, in Class 7
FUTURISTIC 76585316 Car stereos, in Class 9
FUTURISTIC 76545706 Tail light accessories for vehicles, namely,
vehicle headlights, reflectors, turn signal
lights and headlights, in Class 11
Tires and spare tires; tire rims, in Class 12
FUTURISTIC 76585316 Automobiles; . . . motors and engines for
land vehicles, and structural parts for all of
the above, in Class 12
FUTURISTIC 76545706 Discount stores in the field of . . . automotive
parts . . . ; retail stores featuring automobile
parts and automobile accessory; . . . on-line
ordering services featuring . . . automotive
parts . . . ; retail outlets featuring . . .
automotive parts . . . , in Class 35
FUTURISTIC 76585316 Retail automobile and vehicle parts stores;
. . . on-line ordering services in the field of . . .
automotive and vehicle parts, in Class 35
FUTURISTIC 76545706 Automobile service station services;
automotive body repair services, in Class 37
Custom manufacturing of automotive parts,
in Class 40
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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Mark Serial No. Selected Goods/Services

76537316
76259991
Research and design of automobiles,
in Class 42
FUTURISTIC 76585316 Consumer product safety testing consulting
in the field of automotive design and
engineering, in Class 42
FUTURISTIC 76545706 Licensing of automotive parts, in Class 45

We recognize that Applicant makes the following statement in his brief:
“Admittedly, the goods/services offered are somewhat related.” We do not, however,
find this admission sufficient to establish prima facie that the relationship of the
parties’ goods and services is sufficient to support a conclusion that confusion is
likely, rather than merely possible.24 Nor do we find it to be “conclusively
established” that Applicant’s goods and services are identical, similar, or related to
Opposer’s goods and services based on Applicant’s admissions, as Opposer
contends.25 Applicant’s admissions relate to “Applicant’s Goods” and “Applicant’s
Services,” which apparently are terms defined by Opposer in portions of its
interrogatories not made of record. The scope of Applicant’s admissions is unclear.
Therefore, we consider Applicant’s goods and services in turn.
a. Applicant’s Goods
Opposer made of record evidence demonstrating that it and other automotive
parts retailers offer both “tires” or “automotive accessories, namely, vehicle wheel

24 We reached the same conclusion in Pep Boys II, supra n.21, slip op. at 7.
25 Opposer’s Brief at 16.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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caps and hub caps” (or similar or related goods) on the one hand and many of
Applicant’s opposed goods on the other. Specifically, the Internet printouts
submitted by Opposer demonstrate on their face that AutoZone offers aftermarket
car parts and accessories in the categories of “tire and wheel”26 and “wheel-tire
repair.”27 The same pages from AutoZone.com show that AutoZone offers “Headlight
Replacement” accessories, which are similar or related to Applicant’s “vehicle
headlights” in Class 11.28 Similarly, printouts from Opposer’s website PepBoys.com
show on their face that Opposer offers “Tire & Wheel Related Parts,”29 as well as
“Wash & Wax” products similar or related to Applicant’s “automobile wax” in Class
3;30 “Air Fresheners” similar or related to Applicant’s “car deodorizer” in Class 5;31
“Filters”32 and “Oil Change Tools & Accessories”33 similar or related to Applicant’s
“fuel filters; oil filters” in Class 7; “Car Audio” similar or related to Applicant’s “car
stereos” in Class 9;34 and “Engines & Components”35 identical, similar, or related to
Applicant’s “engines for land vehicles” in Class 12. This evidence demonstrates that

26 Including “Custom Wheel Locks, Lug Nut Installation Tool, Tire Carrier and more . . . .”
Exhibit 14, 70 TTABVUE at 37.
27 Id., 70 TTABVUE at 41.
28 Id., 70 TTABVUE at 40.
29 Exhibit 12, 70 TTABVUE at 7.
30 Id., 70 TTABVUE at 8.
31 Id., 70 TTABVUE at 10.
32 Id., 70 TTABVUE at 12.
33 Id., 70 TTABVUE at 14.
34 Id., 70 TTABVUE at 16.
35 Id., 70 TTABVUE at 12.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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consumers have been exposed to the offer of automotive components and accessories
of the kinds identified in the opposed applications together with the goods in
Opposer’s pleaded FUTURA registrations and that such goods travel through the
same channels of trade. We also note that Application Serial No. 76545706 includes
in Class 12 tires and spare tires, which are identical to Opposer’s pleaded goods.
In our likelihood of confusion analysis, these findings under the second and third
du Pont factors weigh in favor of finding that confusion is likely for Applicant’s
identified opposed goods in Classes 3, 5, 7, 9, 11, and 12.
We find no record evidence establishing that the opposed goods identified in
Class 6 in Application Serial No. 76545706 – that is, “frames and parts for vehicles,
namely, door frames of metal, metal door trim, and metal nameplates” – are similar
or related to Opposer’s goods.36
b. Applicant’s Services
Turning next to Applicant’s services, we find that Opposer’s tires, wheel caps,
and hub caps are the types of products that consumers would expect to be sold in
“retail automobile and vehicle parts stores” and “retail stores featuring automobile
parts,” as well as through “on-line ordering services in the field of . . . automotive
and vehicle parts,” for example, through Opposer’s website.37 Therefore, we find

36 Opposer did not explain how its evidence was relevant to Applicant’s specific goods and
services. We note that Exhibit 13, screenshots from the Advance Auto Parts website,
includes “Door Parts,” 70 TTABVUE at 23, but not the goods in Opposer’s pleaded
registrations, i.e., tires, wheel caps, or hub caps.
37 See Exhibit 12, 70 TTABVUE at 4-18.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
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that Applicant’s services recited in Class 35 in application Serial Nos. 76545706 and
76585316 are related to Opposer’s products.
In Class 37, we find that Opposer’s tires, wheel caps, and hub caps are the types
of products that may be used in “automobile service station services” and
“automotive body repair services.” Accordingly, we find that the Class 37 services in
application Serial No. 76545706 are related to Opposer’s pleaded goods.
Opposer’s tires, wheel caps, and hub caps are automotive parts. On that basis,
we find that both “custom manufacturing of automotive parts” and “licensing of
automotive parts,” the services identified in Classes 40 and 45, respectively, in
Application Serial No. 76545706, are related to Opposer’s pleaded goods.
The second du Pont factor thus weighs in favor of finding that confusion is likely
for Applicant’s identified services in Classes 35, 37, 40, and 45.
Turning to the final remaining class of opposed services, there is no evidence
that Applicant’s Class 42 services are similar or related to Opposer’s goods. Opposer
asks that we apply claim preclusion for these services based on the holding in
Pep Boys I. There, we found that “custom manufacturing of general product lines in
the field of automobiles, and vehicle parts for others” in Class 40 was related to
Opposer’s products, reasoning that “the custom manufacture of vehicle parts could
include wheel caps and hub caps.”38 We find that preclusion is inappropriate
because the Class 40 services at issue in Pep Boys I are different from the Class 42

38 Pep Boys I, slip op. at 15.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 23 -

services identified in Applications Serial Nos. 76537316 (“consultation services in
the field of automotive design and engineering for others; . . . research and design of
automobiles . . .”), 76259991 (“engineering consulting, namely, rendering of designs
schematics, ideas, drawings, structure of future . . . vehicles . . . for others; . . .
research, design and development of . . . automobiles for others; . . . research and
design of automobiles . . .”), and 76585316 (“consumer product safety testing
consulting in the field of automotive design and engineering”). These services
pertain to automobiles as a whole rather than auto parts, and thus they are
different from Opposer’s tires, wheel caps, and hub caps. Due to the dissimilarity of
the parties’ goods and services, the second du Pont factor weighs against a finding
that confusion is likely with respect to Applicant’s identified services in Class 42.
IV. Conclusion
Because we have made our findings with respect to opposer’s two FUTURA
registrations (Registration Nos. 1582462 and 2454578), we need not decide the issue
of likelihood of confusion with respect to Opposer’s registration for the mark
CORNELL FUTURA (Registration No. 0778767) because, to the extent that we
have determined that there is no confusion, the addition of the term CORNELL
would further distinguish the marks. On the other hand, if we have determined that
there is confusion, there is no reason to determine whether there is confusion with
another, less similar mark.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 24 -

1. Opposition No. 91184524
Applying claim preclusion, we find that application Serial No. 76634950
for the mark FUTURE for automobile dealerships and other services is
likely to cause confusion with Opposer’s FUTURA mark registered for
tires and vehicle wheel caps and hub caps.
2. Opposition No. 91185285
Because the goods and services are distinctly different, application Serial
No. 76537316 for the mark for “consultation services in the field
of automotive design and engineering for others; . . . research and design
of automobiles . . .” and other services identified in Class 42 is not likely to
cause confusion with Opposer’s FUTURA mark.
3. Opposition No. 91190423
a. Because the marks are similar and the goods are related, application
Serial No. 76545706 for the mark FUTURISTIC for “automobile wax”
and the other opposed goods in Class 3 is likely to cause confusion with
Opposer’s FUTURA mark registered for tires and vehicle wheel caps
and hub caps.
b. Because the marks are similar and the goods are related, application
Serial No. 76545706 for the mark FUTURISTIC for “car deodorizer” in
Class 5 is likely to cause confusion with Opposer’s FUTURA mark
registered for tires and vehicle wheel caps and hub caps.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 25 -

c. Because the goods are distinctly different, application Serial
No. 76545706 for the mark FUTURISTIC for “frames and parts for
vehicles, namely, door frames of metal, metal door trim, and metal
nameplates” in Class 6 is not likely to cause confusion with Opposer’s
FUTURA mark.
d. Because the marks are similar and the goods are related, application
Serial No. 76545706 for the mark FUTURISTIC for “fuel filters; oil
filters” and the other opposed goods in Class 7 is likely to cause
confusion with Opposer’s FUTURA mark registered for tires and
vehicle wheel caps and hub caps.
e. Because the marks are similar and the goods are related, application
Serial No. 76545706 for the mark FUTURISTIC for “car stereos” and
the other opposed goods in Class 9 is likely to cause confusion with
Opposer’s FUTURA mark registered for tires and vehicle wheel caps
and hub caps.
f. Because the marks are similar and the goods are related, application
Serial No. 76545706 for the mark FUTURISTIC for “tail light
accessories for vehicles, namely, vehicle headlights, reflectors, turn
signal lights and headlights” and the other opposed goods in Class 11
is likely to cause confusion with Opposer’s FUTURA mark registered
for tires and vehicle wheel caps and hub caps.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 26 -

g. Because the marks are similar and the goods are related, application
Serial No. 76545706 for the mark FUTURISTIC for automobiles,
structural parts for buses and motorcycles, and other goods in Class 12
is likely to cause confusion with Opposer’s FUTURA mark registered
for tires and vehicle wheel caps and hub caps.
h. Because the marks are similar and the goods and services are related,
application Serial No. 76545706 for the mark FUTURISTIC for “retail
stores featuring automobile parts and automobile accessory [sic]” and
the other opposed services in Class 35 is likely to cause confusion with
Opposer’s FUTURA mark registered for tires and vehicle wheel caps
and hub caps.
i. Because the marks are similar and the goods and services are related,
application Serial No. 76545706 for the mark FUTURISTIC for
“automobile service station services; automotive body repair services”
and the other opposed services in Class 37 is likely to cause confusion
with Opposer’s FUTURA mark registered for tires and vehicle wheel
caps and hub caps.
j. Because the marks are similar and the goods and services are related,
application Serial No. 76545706 for the mark FUTURISTIC for
“custom manufacturing of automotive parts . . . ” and the other opposed
services in Class 40 is likely to cause confusion with Opposer’s
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 27 -

FUTURA mark registered for tires and vehicle wheel caps and hub
caps.
k. Because the marks are similar and the goods and services are related,
application Serial No. 76545706 for the mark FUTURISTIC for
“licensing of . . . automotive parts” in Class 45 is likely to cause
confusion with Opposer’s FUTURA mark registered for tires and
vehicle wheel caps and hub caps.
4. Opposition No. 91194327
a. The opposition to application Serial No. 76259991 is dismissed as moot
as to the services in Class 35 because that class has been abandoned.
b. Applying claim preclusion, we find that application Serial
No. 76259991 for the mark for “maintenance and repair of
automobiles, trucks” and “mechanic services” in Class 37 is likely to
cause confusion with Opposer’s FUTURA mark registered for tires and
vehicle wheel caps and hub caps.
c. Applying claim preclusion, we find that application Serial
No. 76259991 for the mark for the manufacture of cars,
vehicles, and land craft in Class 40 is likely to cause confusion with
Opposer’s FUTURA mark registered for tires and vehicle wheel caps
and hub caps.
d. Because the goods and services are distinctly different, application
Serial No. 76259991 for “engineering consulting, namely, rendering of
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 28 -

designs schematics, ideas, drawings, structure of future . . . vehicles
. . . for others; . . . research, design and development of . . . automobiles
for others; . . . research and design of automobiles . . .” and other
services identified in Class 42 is not likely to cause confusion with
Opposer’s FUTURA mark.
5. Opposition No. 91195766
a. Because the marks are similar and the goods are related, application
Serial No. 76585316 for the mark FUTURISTIC for “car stereos” and
the other opposed goods in Class 9 is likely to cause confusion with
Opposer’s FUTURA mark registered for tires and vehicle wheel caps
and hub caps.
b. Because the marks are similar and the goods are related, application
Serial No. 76585316 for the mark FUTURISTIC for automobiles,
structural parts for land vehicles, and other goods in Class 12 is likely
to cause confusion with Opposer’s FUTURA mark registered for tires
and vehicle wheel caps and hub caps.
c. Because the marks are similar and the goods and services are related,
application Serial No. 76585316 for the mark FUTURISTIC for “retail
automobile and vehicle parts stores” and “on-line ordering services in
the field of . . . automotive and vehicle parts” and other services in
Class 35 is likely to cause confusion with Opposer’s FUTURA mark
registered for tires and vehicle wheel caps and hub caps.
Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766
- 29 -

d. Because the goods and services are distinctly different, application
Serial No. 76585316 for the mark FUTURE for “consumer product
safety testing consulting in the field of automotive design and
engineering” in Class 42 is not likely to cause confusion with Opposer’s
FUTURA mark.
Decision:
1. Opposition No. 91184524 to application Serial No. 76634950 is sustained
as to Class 35 and registration to Applicant is refused as to the services in
that class.
2. Opposition No. 91185285 to application Serial No. 76537316 is dismissed.
3. Opposition No. 91190423 to application Serial No. 76545706 is sustained
as to the opposed goods and services as listed supra in Classes 3, 5, 7, 9,
11, 12, 35, 37, 40, and 45 and dismissed as to Class 6.
4. Opposition No. 91194327 to application Serial No. 76259991 is dismissed
as moot as to Class 35, sustained as to Classes 37 and 40, and dismissed
as to Class 42.
5. Opposition No. 91195766 to application Serial No. 76585316 is sustained
as to the opposed goods and services as listed supra in Classes 9, 12, and
35 and dismissed as to Class 42.
The opposed applications will proceed to registration as to all unopposed goods and
services and those that were opposed but dismissed.