The Yokohama Rubber Co., Ltd.

Trademark Trial and Appeal Board

May 16, 2001

No. 75516756 (T.T.A.B. May. 16, 2001)

5/16/01 Paper No. 12
BAC
UNITED STA
Tradem
In re T
Curtis B. Hamre of M
Rubber Co., Ltd.
David H. Stine, Trad
114 (Margaret Le, Ma
Before Seeherman, Ha
Trademark Judges.
Opinion by Chapman,
On July 10, 199
an application to re
for “tires for all v
applicant’s assertio
mark in commerce.
Registration ha
2(d) of the TrademarTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTABTES PATENT AND TRADEMARK OFFICE
________
ark Trial and Appeal Board
________
he Yokohama Rubber Co., Ltd.
________
Serial No. 75/516,756
_______
erchant & Gould P.C. for The Yokohama
emark Examining Attorney, Law Office
naging Attorney).
_______
irston and Chapman, Administrative
Administrative Trademark Judge:
8, The Yokohama Rubber Co., Ltd. filed
gister the mark shown below
ehicles.” The application is based on
n of a bona fide intention to use the
s been finally refused under Section
k Act, 15 U.S.C. §1052(d), on the
Ser. No. 75/516756
2
ground that applicant’s mark, when applied to its
identified goods, would so resemble the registered mark
IT510 for “tires”1 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested. We reverse the refusal to register.
The parties’ respective identified goods are
identical, both being tires. Also, identical goods would
certainly travel through all the same channels of trade to
all the usual purchasers. See In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994).
However, applicant contends that the purchasers are
sophisticated, that tires are relatively expensive, and
that buying tires is not an impulse purchase, with
purchasers investigating what tires to buy in advance
(e.g., manufacturers, composition) or taking into
consideration the recommendation of professionals in the
industry. Therefore, it is applicant’s position that the
differences in the marks will be noted, and that these
differences are sufficient to distinguish the marks.
1 Registration No. 2,003,648, issued September 24, 1996 to The
Goodyear Tire & Rubber Company. The claimed dates of first use
and first use in commerce are February 8, 1995.
Ser. No. 75/516756
3
The Examining Attorney argues that applicant’s
assertions regarding the conditions of purchase and
consumer sophistication are unpersuasive because “tires are
a relatively basic and routine purchase item,” (brief, p.
4) commonly purchased by the general public, who will be
more concerned with price and convenience.
While tires are purchased by the general public,
nonetheless, tires are not inexpensive, and they are not
generally purchased on “impulse,” nor are they frequently
replaced goods. Tires must be matched with the particular
vehicle, and thus, some degree of knowledge or care must be
exercised, i.e., the individual consumer must have this
knowledge or the consumer must seek the advice of a
professional for assistance. Therefore, although the fact
that the goods are identical is a factor which favors a
finding of likelihood of confusion, in this case, the
conditions under which the purchases are made is a factor
favoring a finding of no likelihood of confusion.
Turning to a consideration of the involved marks,
applicant contends that the marks have “totally dissimilar
overall visual impact” (brief, p. 2), with registrant’s
mark consisting of a combination of letters and numbers
while applicant’s mark is a stylized mark consisting of the
letter “i” with a star design, a slash, and the letter “T”;
Ser. No. 75/516756
4
and that the Examining Attorney dissected the marks,
instead of considering the marks as a whole.2
The Examining Attorney contends that the dominant,
literal portion of both marks is “IT”; that the common
feature of both marks is the arbitrary letter combination
“IT”; and that both marks create the same overall
commercial impression, especially when considered in the
context of the general rather than specific impression in
consumers’ memories.
Because applicant’s mark is essentially a stylized
letter mark, the degree of stylization affects the overall
visual impact of the involved marks. The Court of Appeals
for the Federal Circuit addressed this type of situation in
In re Electrolyte Laboratories Inc., 913 F.2d 930, 16
USPQ2d 1239, 1240 (Fed. Cir. 1990) as follows:
There is no general rule as to whether
letters or design will dominate in
2 Applicant also argues in its brief that the letters “IT” are
commonly used in the tire industry, such that the “IT” in
registrant’s mark must be considered a weak element. Applicant
attached photocopies of five third-party registrations to its
brief. Although the copies were untimely filed by applicant, the
Examining Attorney did not object thereto, and treated the
registrations as being of record. Thus, we consider the
Examining Attorney to have stipulated the third-party
registrations into the record. However, these third-party
registrations do not establish that “IT” is a weak element of
registrant’s mark because none of these marks contain the element
“IT” per se. Rather, the marks are INDEPENDENT TIRE DEALER
BUYING GROUP ITD OUR VOLUME SAVES YOU MONEY! and design for
retail tire store services, ITL, RIMFIRE XT, and VERSA TRAC LT,
all for tires, and TIRE-TELE and design for electronic tire
condition sensors.
Ser. No. 75/516756
5
composite marks; nor is the dominance
of letters or design dispositive of the
issue. No element of a mark is ignored
simply because it is less dominant, or
would not have trademark significance
if used alone. ...
...[T]he spoken or vocalizable element
of a design mark, taken without the
design, need not of itself serve to
distinguish the goods. The nature of
stylized letter marks is that they
partake of both visual and oral
indicia, and both must be weighed in
the context in which they occur.
...[E]ven if the letter portion of a
design mark could be vocalized, that
was not dispositive of whether there
would be likelihood of confusion. A
design is viewed, not spoken, and a
stylized letter design can not be
treated simply as a word mark.
In this case we agree with applicant that these
marks, when considered in their entireties, are different
in appearance and create different commercial impressions.
Registrant’s mark is a typed combination of two letters and
three numbers, shown as a typed drawing, whereas
applicant’s mark is a composite mark consisting of three
distinct characters, with a star design and overall
stylized lettering. Applicant’s mark is so highly stylized
it is questionable how the purchasing public would perceive
the mark. Although the “IT” in applicant’s mark can be
pronounced (if it is perceived by the purchasing public as
Ser. No. 75/516756
6
“IT”), the numbers and designs in the respective marks are
substantially different therefrom.
Based on the dissimilarity of the appearance and the
commercial impressions of these marks, as well as the
conditions of sale and sophistication of purchasers, we
cannot find on this record that likelihood of confusion has
been shown. See In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). However, we point out
that we have reached this decision based on the ex parte
record herein. We express no view on what the Board might
find in the context of an inter partes proceeding.
Decision: The refusal to register under Section 2(d)
is reversed.