Time Warner Entertainment Company, L.P.v.Fleet Wholesale Supply Co., Inc.

Trademark Trial and Appeal Board

Jul 10, 2008

No. 91155422 (T.T.A.B. Jul. 10, 2008)

Hearing: Mailed: July 10, 2008
April 2, 2008 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Time Warner Entertainment Company, L.P.
v.
Fleet Wholesale Supply Co., Inc.
_____

Opposition No. 91155422
_____

Michael A. Grow of Arent Fox LLC for Time Warner
Entertainment Company, L.P.

Ariana G. Voight of Michael Best & Friedrich LLP for Fleet
Wholesale Supply Co., Inc.
_____

Before Hairston, Holtzman and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Fleet Wholesale Supply Co., Inc. (applicant) has filed
an application to register the mark ROAD RUNNER (in standard
character form) for “batteries” in International Class 9.1
Registration has been opposed by Time Warner
Entertainment Company, L.P. (opposer). In the notice of
opposition, opposer alleges that it “is the owner of all

1 Serial No. 76383804, filed on March 18, 2002, based upon an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91155422
2
rights, title and interest in and to a family of names and
marks containing the term ROAD RUNNER, and a distinctive
ROAD RUNNER cartoon character design, for a wide variety of
goods and services including battery powered toys and games;
a series of motion pictures; video and television films,
audio/visual tapes, cassettes and/or compact discs, computer
game programs, cartridges and cassettes for use in battery
powered devices; telecommunications services, including the
providing of Internet access, email, chat and online forum
services, personal homepage hosting, providing multiple user
access to a computer data base featuring news, weather,
sports, educational and financial information, and
entertainment services; and many other goods and services
including clothing, sporting goods, books and printed
materials;” that the ROAD RUNNER names and marks have been
widely used and advertised for a period of many years; that
as a result, the names and marks have become well known and
famous; that “the Board recognized that [o]pposer’s mark is
well known and held it to be famous in a recent decision;”
that opposer’s ROAD RUNNER names and marks became well known
and famous before applicant made any use of ROAD RUNNER;
that applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s ROAD RUNNER names and marks for
opposer’s goods and services, as to be likely to cause
confusion; that applicant’s mark so closely resembles
Opposition No. 91155422
3
opposer’s ROAD RUNNER names and marks that it is likely to
cause deception and falsely suggest a connection with
opposer in violation of Section 2(a) of the Trademark Act;
and that applicant’s mark will likely dilute the distinctive
quality of opposer’s ROAD RUNNER names and marks. In
addition, opposer pleaded ownership of the following
registrations for its ROAD RUNNER mark: Nos. 1288072;
1946471, 2135226; 2246924; 1915162; 2318165; and 2246925.2
Applicant, in its answer, has denied the salient
allegations of the notice of opposition. As affirmative
defenses, applicant asserted that “[o]pposer’s claims are
barred by laches, acquiescence, estoppel, and waiver”
because applicant owns an incontestable registration for the

2 These were the only registrations identified by number in the
notice of opposition. At trial, opposer submitted by notice of
reliance status and title copies of each of the pleaded
registrations with the exception of Registration No. 2246925. In
view thereof, we have given no consideration to this
registration. In addition, at trial, opposer submitted by notice
of reliance status and title copies of five unpleaded
registrations. As discussed infra, applicant has objected to the
unpleaded registrations. Also, we note that although opposer
pleaded ownership of a family of names and marks containing the
term ROAD RUNNER and the ROAD RUNNNER cartoon character, it did
not argue this family of marks claim in its brief. In view
thereof, we have given no consideration to this claim.
Opposition No. 91155422
4
same mark it seeks to register for related goods and opposer
has failed to challenge such registration.3
Evidentiary Issues
Before turning to the merits of this case, there are
several evidentiary issues we must discuss. We turn first
to opposer’s objections to portions of applicant’s evidence.
Opposer has objected to the testimony (and Exhibits 2
and 3) of applicant’s witness Thomas Wagner regarding
alleged third-party use of “Roadrunner.” Mr. Wagner, a

3 Applicant did not present any argument in its brief
specifically directed to the affirmative defenses of laches,
acquiescence, estoppel, and waiver. Indeed, applicant states
that “the Board cannot consider a claim of laches as an
affirmative defense in an opposition proceeding.” (Brief at 45).
Under the circumstances, we consider applicant to have waived
these affirmative defenses.
We note that at trial applicant introduced a copy of its
Registration No. 843203 for the mark ROAD RUNNER for “automotive
tires.” To the extent that applicant was attempting to assert a
Morehouse defense, such defense is not well taken. The Morehouse
defense, an equitable affirmative defense, is available in
situations where the applicant already owns a registration for
the same mark for substantially identical goods or services. See
Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160
USPQ 715 (CCPA 1969). The Morehouse defense requires the goods
to be “identical, substantially the same, or so related so as to
represent in law a distinction without a difference.” Aquion
Partners Limited Partnership v. Envirogard Products Limited, 43
USPQ2d 1371, 1373 (TTAB 1997). Plainly, “batteries” are not
substantially the same as “automotive tires.”
Applicant also asserts as affirmative defenses that (1) it
uses a stylized design in connection with its mark which further
distinguishes said mark from opposer’s mark, and (2) numerous
third parties own and use ROAD RUNNER marks for a wide variety of
goods and services and, therefore, opposer cannot claim that its
mark is famous or well known for a broad range of goods and
services. These, however, are not true affirmative defenses, but
rather are assertions that relate to applicant’s position that
there is no likelihood of confusion and no likely dilution.
Opposition No. 91155422
5
private investigator, was hired by applicant’s attorney to
conduct an investigation into third-party use of
“Roadrunner.” Mr. Wagner testified that he telephoned the
companies listed in a search report to determine if they
were currently using “Roadrunner.” During his testimony, he
recounted the statements of the persons with whom he spoke.
In addition, Exhibits 2 and 3, which consist of summaries of
the statements by the persons with whom Mr. Wagner spoke,
were introduced. Opposer has objected to this testimony and
exhibits on the grounds that it (1) constitutes hearsay and
(2) is irrelevant because it pertains to alleged third-party
uses of “Roadrunner” in connection with goods which are
different from those involved herein.
We sustain opposer’s objection to this testimony and
supporting exhibits because they are hearsay. Applicant is
offering the testimony and exhibits to show that third
parties are using “Roadrunner” in their businesses and the
extent of that use. However, statements made by others to
Mr. Wagner are not admissible to prove the truth of such
matters. In view thereof, this testimony and the exhibits
have not been considered.
Further, opposer has objected to the testimony (and
Exhibits 4 and 5) of Mr. Wagner regarding Internet searches
he conducted for entities allegedly using “Roadrunner.”
Exhibits 4 and 5 are printouts of the Internet search
Opposition No. 91155422
6
results. Opposer has objected to this testimony and
exhibits on the ground that it constitutes hearsay. We
overrule opposer’s objection to this testimony and evidence
on the ground of hearsay because Mr. Wagner conducted the
searches and, thus, the search results are properly
authenticated. The printouts, however, are admissible only
for what they show on their face and not for the truth of
the matters therein.
Opposer has objected to Exhibit 3 of applicant’s notice
of reliance which consists of dictionary definitions and
articles from printed publications concerning the road
runner bird. Opposer argues that such evidence is
irrelevant. Trademark Rule 2.122(d)(e) specifically
provides that printed publications, such as books and
periodicals, available to the general public, may be
introduced by notice of reliance. Opposer’s objection to
this evidence on the ground of relevance goes to the weight
of the evidence rather than its admissibility, and we will
therefore consider the evidence for whatever probative value
it may have.
Finally, opposer has objected to Exhibit 4 of
applicant’s notice of reliance which consists of printouts
of third-party registrations for marks which include the
word “Roadrunner/Road runner” from the USPTO’s TESS
database. Applicant proffered the third-party registrations
Opposition No. 91155422
7
“to show that the terms ‘roadrunner’ and ‘road runner’ are
suggestive of goods and services related to speed, the road
or running.” (Applicant’s notice of reliance) Opposer
objects to the third-party registrations on the ground that
there is no evidence that the marks shown therein are in
use. Opposer’s objection is overruled. While third-party
registrations are not evidence that the marks are in use or
that the public is familiar with them, such registrations
may be used in the same manner as dictionary definitions to
show that a term has significance for goods in a particular
field. See Mead Johnson & Company v. Peter Eckes, 195 USPQ
187 (TTAB 1977). We will therefore consider the third-party
registrations for whatever probative value they may have.
We turn next to applicant’s objections to portions of
opposer’s evidence.
Applicant has objected to the rebuttal testimony (with
exhibits) of opposer’s witness Jack Hitt as untimely.
Opposer’s rebuttal testimony period closed on October 4,
2006, and the Hitt testimony was taken on October 11, 2006.
Although opposer requested an extension of its rebuttal
testimony period, the Board, in an order issued November 15,
2006, denied such request. The Hitt testimony is clearly
untimely, and we have given it no consideration.
Applicant has objected to the portions of the testimony
(and Exhibits 1-5) of opposer’s witness, David Hedrick which
Opposition No. 91155422
8
pertains to a survey titled “The Appeal of Looney Tunes
Characters.” Applicant objects to this testimony and
evidence on the ground that opposer has offered no evidence
regarding the methodology used for the survey. Applicant’s
objection to the survey, essentially on the ground of lack
of foundation, is overruled as it goes to the weight of the
evidence rather than its admissibility, and we will
therefore consider the survey for whatever probative value
it may have.
Applicant also has objected to portions of the
testimony (and Exhibits 6-18) of Mr. Hedrick which pertains
to marketing studies regarding the recognition of the ROAD
RUNNER mark for opposer’s affiliate’s Internet broadband
service. Applicant objects to this testimony and evidence
on the ground that it is irrelevant. Applicant’s objection
is overruled as it goes to the weight of the evidence rather
than its admissibility, and we will therefore consider the
marketing studies for whatever probative value they may
have.
Applicant has objected to Exhibits 20-21 and 86 to the
testimony of Mr. Hedrick on relevancy grounds. It is
essentially applicant’s position that these exhibits, which
consist of licenses and promotional materials relating to
all of opposer’s Looney Tunes characters, are not relevant
to the licensing and promotion of opposer’s ROAD RUNNER mark
Opposition No. 91155422
9
and character, in particular. Again, we will consider this
evidence for whatever probative value it may have.
As previously noted, applicant has objected to
opposer’s reliance on five unpleaded registrations, namely,
Registration Nos. 2000037; 2847268; 2966847; 2157957; and
2923084. Because opposer did not plead ownership of these
registrations in the notice of opposition, we find
applicant’s objection to such registrations to be well
taken. We have not considered these registrations in
reaching our decision herein.
Applicant has objected to the testimony of Mr. Hedrick
concerning the licensed use of the ROAD RUNNER mark on
automobiles, automotive accessories, watches, radios,
flashlights, battery-operated toothbrushes and calculators
on the ground that opposer did not plead use of the ROAD
RUNNER mark on such goods. Similarly, applicant has
objected to the exhibits attached to the declaration of
opposer’s witness Jodi Arlen which consist of printouts
showing automotive equipment and accessories licensed by
opposer using the Looney Tunes characters and marks on the
ground that opposer did not plead use of the ROAD RUNNER
mark on automotive equipment and accessories. Applicant’s
objection is overruled inasmuch as opposer alleged in the
notice of opposition that it uses the ROAD RUNNER mark on
“many [] goods and services… .”
Opposition No. 91155422
10
Finally, applicant has objected to several statements
in opposer’s main brief. Such statements concern
information at applicant’s website, opposer’s advertising
and promotion figures, and royalties earned by opposer.
Statements in a party’s brief can be given no consideration
unless they are supported by evidence properly introduced at
trial. See TBMP §704.06(b)(2d ed. rev. 2004). Suffice it
to say that to the extent that any statements in opposer’s
brief are not supported by evidence properly introduced at
trial, we have given them no consideration.
The Record
The record, therefore, includes the pleadings and the
file of the involved application. Additionally, opposer
submitted during its testimony-in-chief the deposition (with
exhibits) of Dave Hedrick, senior vice-president for Warner
Bros. Consumer Products, the licensing agent for opposer;
and the declaration (with exhibits) of Jodi Arlen, a senior
legal assistant with opposer’s counsel (submitted pursuant
to the parties’ stipulation). Opposer submitted a notice of
reliance on (a) applicant’s interrogatory responses; (b)
excerpts from the discovery deposition (with exhibits) of
Stewart C. Mills, applicant’s co-president; (c) copies of
the final decisions/dispositions in eleven Board opposition
proceedings where opposer or a predecessor in interest was
Opposition No. 91155422
11
the plaintiff; and (d) status and title copies of the
following pleaded registrations:
(1) Registration No. 2135226 issued February 10, 1998
(Section 8 & 15) for the mark ROAD RUNNER and WILE E. COYOTE
for “video game cartridges; video and computer game
programs, cartridges, and cassettes;”
(2) Registration No. 2246924 issued May 25, 1999 (Section 8
& 15) for the mark ROADRUNNER for “providing multiple-user
access to a global computer information network for transfer
and dissemination of a wide range of information;”
(3) Registration No. 2318165 issued February 15, 2000
(Section 8 & 15) for the mark shown below,

for “toys and sporting goods, games and playthings, namely,
action figures and accessories therefor; plush toys;
balloons; bathtub toys; ride-on toys; equipment sold as a
unit for playing a board game and card game; a manipulative
puzzle type game, a parlour game, a hand held unit for
playing a parlour type video game; and action type target
Opposition No. 91155422
12
game; stand alone video output game machines; jigsaw and
manipulative puzzles; paper face masks; doll costumes;
costume masks; skateboards; ice skates; water squirting
toys; balls, namely, playground balls, soccer balls,
sportsballs, baseballs, basketballs; baseball gloves;
swimming arm floats for recreational use; swim fins;
Christmas tree ornaments;”

(4) Registration No. 1288072 issued July 31, 1984 (renewed)
for the mark shown below,

for “candy;”
(5) Registration No. 1915162 issued August 29, 1995
(renewed) for the mark ROAD RUNNER for “toys; namely, plush
dolls, and Halloween costumes and masks;” and
(6) Registration No. 1946472 issued January 9, 1996
(renewed) for the mark THE ROAD RUNNER & WILE E. COYOTE for
a “series of motion picture, video and television films,
Opposition No. 91155422
13
series of pre-recorded audio-video tapes cassettes and/or
discs featuring animation and/or music.”
Applicant submitted the testimony depositions (with
exhibits) of Stewart C. Mills, its co-president; and Thomas
Wagner, a private investigator. Additionally, applicant
submitted a notice of reliance on (a) status and title
copies of its Registration Nos. 843203 issued January 30,
1968 (renewed) for the mark ROAD RUNNER for “automotive
tires”; and 2805515 issued January 13, 2004 for a mark
consisting of a stylized bird design for “automotive tires,”
(b) dictionary definitions; (c) excerpts from printed
publications; (d) the file of applicant’s application Serial
No. 74557378 for the mark THE ROAD RUNNER & WILE E COYOTE
for “a series of motion pictures, video and television
films; series of pre-recorded audio-video tapes, cassettes
and/or discs featuring animation and/or music;” and (e)
third-party registrations for marks consisting of
“Roadrunner/Road runner” for various goods and services.
Opposer and applicant filed main briefs on the case;
opposer filed a reply brief. We note that in an order
issued September 28, 2007, the Board granted applicant’s
motion to strike opposer’s reply brief as untimely. In view
thereof, we have given no consideration to opposer’s reply
brief.
Opposition No. 91155422
14
Both parties were represented by counsel at an oral
hearing held by the Board.
Standing and Priority
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, priority is not an issue in
this case as to the marks and goods covered by said
registrations. See King Candy Co. v. King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E.I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The relevant
du Pont factors in this proceeding are discussed below.
The Fame of Opposer’s Mark
This du Pont factor requires us to consider the fame of
opposer’s mark. Fame, if it exists, plays a “dominant role
Opposition No. 91155422
15
in the process of balancing the DuPont factors.” 4 Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000).
Opposer’s Road Runner cartoon character was created by
the noted animator Chuck Jones, an employee of opposer’s
predecessor-in-interest, Warner Bros. (Hedrick dep. at 57)
The ROAD RUNNER mark was first used in 1949 in connection
with the first of a series of animated cartoon shorts
entitled “Fast and Furry-ous.” (Hedrick dep. at 58;
Opposer’s Exhibit No. 29) The mark has been used
continuously since then as part of the Looney Tunes family
of cartoon characters, which include Wile E. Coyote, Bugs
Bunny, Daffy Duck, Porky Pig, Tweety, and Sylvester.
(Opposer’s Exhibit No. 29)
The first Road Runner cartoons were mainly shown as
previews before a film shown in theaters. (Hedrick dep. at
60) In the 1960’s the cartoons began airing as a television
series under the name “The Road Runner Show.” (Hedrick dep.
at 60, Opposer’s Exhibit No. 32) In the 1990’s the cartoons
were re-released as a series of videos and DVDs. (Hedrick
dep. at 68, Exhibit Nos. 40-41)

4 We note the parties’ dispute regarding whether opposer may rely
on the Board’s finding in Time Warner Entertainment Co. v. Jones,
65 USPQ2d 1650 (TTAB 2002) that opposer’s ROAD RUNNER mark is
famous. Because the fame of a mark must be determined on the
record in each case, the Board is not precluded from reaching a
different finding on this issue if presented with a different
record herein.
Opposition No. 91155422
16
The Road Runner character had its own comic book series
beginning in the 1950’s, parts of which were reprinted in
the 1970’s. (Hedrick dep. at 61-61. Opposer’s Exhibit Nos.
34-37)
Due to the popularity of the Road Runner cartoon
character, there has been great demand for Road Runner
merchandise. In 2005 opposer’s Brand Assurance Group
reviewed approximately 20,000 licensing submissions in
connection with the Looney Tunes characters. (Hedrick dep.
at 16-18) Opposer and its predecessors have licensed the
Road Runner character for use on a wide variety of products,
including apparel, accessories, automotive products, toys
and games, die cast cars, postage stamps, toothbrushes,
calculators, and novelty items. (Opposer’s Exhibit No. 42)
Approximately $500 million worth of Looney Tunes licensed
merchandise is sold at retail every year. (Hedrick dep. at
47)
Among the ROAD RUNNER licensed products are telephones,
computers and electronic products, greeting cards, candy,
watches, medicines, radios, sewing kits, cocoa mixes,
pudding, beverages, decorations, string lights, stationery
items, apparel, pet products, labels, automotive products,
collectibles, sporting goods, and toys and games.
(Opposer’s Exhibit No. 86) The record contains substantial

Opposition No. 91155422
17
evidence of ROAD RUNNER character merchandise being
advertised on eBay. (Arlen declaration, Exhibits 1-106)
Specific examples of companies which have made nationwide
use of ROAD RUNNER include Subway fast food restaurants
which featured the Road Runner cartoon character as part of
in-store promotion and giveaways for its kid’s meal program.
(Opposer’s Exhibit No. 78) The U.S. Postal Service has made
licensed use of the ROAD RUNNER character and word mark in
connection with commemorative stamps, mailing labels, note
cards, temporary tattoos, and other printed matter.
(Opposer’s Exhibit No. 52) Six Flags theme parks have made
licensed use of the ROAD RUNNER character and marks in
connection with various rides. (Hedrick dep. at 73,
Opposer’s Exhibit No. 48) In the 1960’s the ROAD RUNNER
marks were licensed for use on a Plymouth vehicle. (Hedrick
dep. at 91-92) The ROAD RUNNER marks and character were
used in connection with a nationally released motion picture
entitled “Space Jam,” starring basketball star Michael
Jordan. (Hedrick dep. at 120) General Motors used the ROAD
RUNNER marks in a series of commercials for the Pontiac
Grand Prix car. (Hedrick dep. at 91) Time Warner Cable, an
affiliated company of opposer’s, uses the ROAD RUNNER name
and character in connection with the provision of a
broadband Internet service.
Opposition No. 91155422
18
Opposer did not provide specific evidence of the dollar
amounts expended on advertising its licensed ROAD RUNNER
products. It appears that opposer’s licensees conduct and
pay for the advertising of licensed products, although
opposer controls, owns, directs and approves all advertising
done in connection with the Looney Tunes characters,
including Road Runner. The record does reveal, however,
that opposer’s affiliate, Time Warner Cable, has expended
significant sums advertising and promoting the ROAD RUNNER
broadband Internet service.5
The evidence of record convinces us that opposer’s ROAD
RUNNER word and character marks have acquired significant
fame for opposer’s goods and services. In particular, the
length of time in which the ROAD RUNNER mark has been in
use, the large number of licensed products and services, the
nationwide advertising exposure of the mark, along with the
advertising expenditures of opposer’s affiliate’s broadband
Internet service persuades us that the mark is famous under
the fifth du Pont factor.6 See Bose Corp. v. QSC Audio

5 The information relating to these advertising expenditures has
been designated confidential.
6 In reaching our finding that opposer’s mark is famous under the
fifth du Pont factor, we have accorded little probative weight to
Exhibit Nos. 1-18 to the Hedrick deposition. Exhibit Nos. 1-5
consist of several documents entitled “The Appeal Of Looney Tunes
Characters.” Mr. Hedrick testified that opposer uses these
documents to demonstrate the popularity of the Looney Tunes
characters, including the Road Runner, to potential licensees.
These documents, however, are of little probative value with
respect to the strength of opposer’s ROAD RUNNER mark because
Opposition No. 91155422
19
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002). Our primary reviewing court and its predecessor have
held that “there is no excuse for even approaching the well-
known trademark of a competitor and that all doubt as to
whether confusion, mistake, or deception is likely is to be
resolved against the newcomer, especially where the
established mark is one which is famous.” Nina Ricci
S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting Planter’s Nut
and Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916, 134
USPQ 504, 511 (CCPA 1962)(internal quotations omitted).
This factor, therefore, weighs heavily in opposer’s favor.
The Similarity or Dissimilarity of the Marks
This du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entirety in terms of appearance, sound, connotation,

opposer offered insufficient information concerning the
methodology used in these studies.
Insofar as Exhibit Nos. 6-18 are concerned, they consist of
several studies entitled “Road Runner Enviromental Tracking
Study.” Mr. Hedrick testified that opposer commissioned these
studies to measure, inter alia, public awareness of its
affiliate’s ROAD RUNNER broadband Internet service. The most
recent studies indicate a fairly high degree of aided and unaided
awareness of ROAD RUNNER broadband Internet service in the
geographic markets where the service is offered. We note,
however, that in each market where the study was conducted,
approximately 40% of the interviews were conducted with persons
who were currently Road Runner subscribers and approximately 60%
were conducted with persons who were randomly selected. With the
studies weighted in this manner, it is hardly surprising that
awareness of the ROAD RUNNER broadband Internet service was
fairly high.

Opposition No. 91155422
20
and overall commercial impression. The test is not whether
the marks can be distinguished when subjected to a side-by-
Opposition No. 91155422
21
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to source of the goods and/or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In our opinion, the most pertinent of opposer’s marks
is its ROAD RUNNER and design mark for, in particular,
“action figures and accessories therefor” and “a hand held
unit for playing a parlour type video game” in Registration
No. 2318165, shown below. Therefore in the remainder of our
analysis, we will focus our discussion on this mark and
goods.

We find that applicant’s ROAD RUNNER mark is highly
similar to opposer’s ROAD RUNNER and design mark. These
marks include the identical term, ROAD RUNNER, and the
Opposition No. 91155422
22
design element of opposer’s mark is but a fanciful
representation of a road runner, which is identical in
concept to applicant’s ROAD RUNNER mark. Viewing these
marks as whole, we find that they are substantially similar
in terms of appearance.
In terms of sound, the marks are identical, and in
terms of connotation, we find that they connote the same
thing, i.e., a road runner bird.
In terms of overall commercial impression, we find that
each of the marks brings to mind a road runner bird. The
appearance of the road runner design element in opposer’s
mark ROAD RUNNER and design mark merely reinforces the
similarity between that mark and applicant’s mark.
Applicant maintains that it uses its ROAD RUNNER mark
in connection with a distinctive bird design that does not
resemble opposer’s ROAD RUNNER character. However, this is
immaterial here because applicant seeks to register the mark
ROAD RUNNER alone. See, e.g. Sealy, Inc. v. Simmons Co.,
265 F.2d 934, 121 USPQ 456, 459 (CCPA 1959); Hat Corp. of
America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200,
203 (CCPA 1955); and ITT Canteen Corp. v. Haven Homes Inc.,
174 USPQ 539, 540 (1972). In other words, this cannot be
considered in our likelihood of confusion analysis.
Opposition No. 91155422
23
In sum, we find that the applicant’s ROAD RUNNER mark
is substantially similar to opposer’s ROAD RUNNER and design
mark, and that this du Pont factor heavily favors opposer.
The Number and Nature of Similar Marks in Use on Similar
Goods
With its notice of reliance, applicant introduced
evidence of thirty third-party registrations for marks that
consist of or include the word “Roadrunner/Road runner;” and
a dictionary entry from Webster’s New Collegiate Dictionary
(1979) which defines “road runner” as “a largely terrestrial
bird [] of the cuckoo family that is a speedy runner … .”
Applicant has also introduced with the Wagner testimony,
reprints of numerous web pages that feature various marks
which consist of or include the term “Roadrunner/Road
runner.”
Evidence of widespread third-party use can diminish the
strength of a mark and thus the scope of protection to which
a mark is entitled. However, as previously noted, third-
party registrations are not evidence of use. The existence
of these marks on the register is not evidence of what
happens in the marketplace or that customers are familiar
with them. AMF Incorporated v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA) [“little
weight is to be given such registrations in evaluating
whether there is a likelihood of confusion.”] Similarly,
Opposition No. 91155422
24
the Internet web sites are of limited probative value. Cf.
AMF Inc., 177 USPQ at 270 [“We think the listing of
trademarks … in various trade magazines should be treated in
a similar manner as are third-party registrations. They
give no indication as to actual sales, when the mark was
adopted, customer familiarity with the marks, etc.”] citing
Gravel Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d
1397, 176 USPQ 123 (CCPA 1972).
Although third-party registrations may be used in the
same manner as dictionary definitions, to show that a term
has significance for goods or services in a particular
field, where, as here, such registrations are for non-
related goods and services, they do not establish by
themselves that opposer’s ROAD RUNNER and design mark is
weak for the goods and services in opposer’s pleaded
registrations. See Sheller-Globe Corporation v. Scott Paper
Company, 204 USPQ 329 (TTAB 1979). Moreover, this is not a
situation where the parties’ marks have a portion in common
which is suggestive and the remaining portions of the marks
are enough to distinguish them as a whole from one another.
In this case, the design element in opposer’s ROAD RUNNER
and design mark is the legal equivalent of the term ROAD
RUNNER and, therefore, is insufficient to distinguish the
parties’ marks.
Opposition No. 91155422
25
In short, applicant’s evidence of third-party
registrations and Internet web sites does not diminish the
fame of opposer’s ROAD RUNNER and design mark. This du Pont
factor is neutral.
The Similarity or Dissimilarity of the Goods
We next consider the du Pont factor regarding the
similarity or dissimilarity of the goods. As indicated, it
is our opinion that the most pertinent of opposer’s goods
are “action figures and accessories therefor” and “hand held
unit for playing a parlour type video game” in Registration
No. 2318165.
It is readily apparent that opposer’s goods are
different in nature from applicant’s goods, namely,
batteries. However, it is a general rule that goods need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used thereon, to the mistaken belief that the goods
originate from a common source. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984). Further, it is well settled that likelihood of
confusion is determined on the basis of the goods as they
Opposition No. 91155422
26
are identified in the application and in the pleaded
registration. Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Opposer’s goods are identified in its Registration No.
2318165 as “action figures and accessories therefor” and
“hand held unit for playing a parlour type video game.”
Applicant’s goods are identified in its involved application
as “batteries.” Inasmuch as opposer’s identification of
goods is not limited or restricted, it is presumed that the
registration encompasses action figures, accessories
therefor, and hand held video games of all types, including
those which are battery operated. Similarly, because
applicant’s identification of goods is not limited or
restricted, it is presumed that the application encompasses
batteries of all types, including those for use in battery
operated action figures, accessories therefor, and hand held
video games. We believe that battery operated action
figures, accessories therefor, and hand held video games, on
the one hand, and batteries for use therein, on the other
hand, are sufficiently related that, given the fame of
opposer’s mark and the substantial similarity in the marks,
purchaser confusion is likely. It is undisputed that
batteries are integral to the operation of battery operated
action figures, accessories therefor and hand held video
Opposition No. 91155422
27
games. Thus, these items of opposer and applicant are
considered to be complementary goods.
For these reasons, we find that applicant’s batteries
are sufficiently related to opposer’s action figures,
accessories therefor, and hand held video games, under the
second du Pont factor, that confusion is likely to result
from the use of the parties’ substantially similar marks
thereupon. This is especially so in view of the fame of
opposer’s mark. This du Pont factor favors a finding of
likelihood of confusion.
Trade Channels and Purchasers
Inasmuch as there are no limitations in the
identifications of goods in the application and opposer’s
registration, we presume an overlap in trade channels, and
that opposer’s action figures, accessories therefor, and
hand held video games and applicant’s batteries would be
offered to all normal and usual classes of purchasers for
such goods. See Hewlett-Packard Co. v. Packard Press Inc.,
supra; and Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
Applicant’s argument as to the actual channels of trade of
its goods, i.e., that its batteries will be sold only in its
retail stores, cannot limit the broad identification of its
goods in the application. In view of the foregoing, the du
Pont factors of the relatedness of the channels of trade and
Opposition No. 91155422
28
classes of purchasers weigh in favor of a finding of
likelihood of confusion.
Conditions of Purchase
With respect to the du Pont factor of the conditions of
purchase, there is no question but that the involved goods
are general consumer items which are purchased without a
great degree of care or sophisticated thought. This du Pont
factor therefore weighs in opposer’s favor in this case.
The Variety of Goods and Services on which Opposer’s Mark is
Used
The record shows that opposer has licensed its ROAD
RUNNER marks for use on a wide variety of products, and
opposer’s affiliate uses the ROAD RUNNER marks in connection
with a broadband Internet service. The fact that opposer’s
ROAD RUNNER marks are used on diverse goods makes it more
likely that purchasers, when seeing a similar mark used in
connection with batteries, will believe that these products
are also being sponsored or licensed by opposer. Thus, this
du Pont factor favors opposer.
Lack of Evidence of Actual Confusion
Applicant maintains that it has used the ROAD RUNNER
mark on tires for approximately 40 years without any
instances of actual confusion, and this suggests that
confusion is not likely with respect to the ROAD RUNNER mark
on batteries. However, the lack of evidence of actual
Opposition No. 91155422
29
confusion in this respect is not probative of no likely
confusion with respect to use of the ROAD RUNNER mark on
batteries, particularly batteries of the type used in
battery operated action figures, accessories therefor, and
hand held video games.7
Under the circumstances, this du Pont factor is not
relevant in this case.
Conclusion
We conclude that applicant’s ROAD RUNNER mark for
batteries is likely to cause confusion in view of opposer’s
ROAD RUNNER and design mark for action figures and
accessories therefor, and hand held unit for playing a
parlour type video game.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant of
its mark is refused.
In view of our decision on the issue of likelihood of
confusion, we need not reach opposer’s claims of dilution,
deception and false suggestion of a connection.

7 As previously discussed, there is a legal presumption that
applicant’s goods include this type of batteries.