Trico Products Corp.v.Wexco Industries

Trademark Trial and Appeal Board

Jan 9, 2007

No. 91156682 (T.T.A.B. Jan. 9, 2007)

Mailed:
January 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Trico Products Corporation
v.
Wexco Industries
_____

Opposition No. 91156682
to application Serial No. 78155840
filed on August 20, 2002
_____

Jonathan Hudis of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C. for Trico Products Corporation.

Laura E. Goldbard of Stroock & Stroock & Lavan, L.P. for
Wexco Industries.
______

Before Hohein, Walters, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Wexco Industries has applied to register the mark EZ-
FIT WIPER BLADES and Design shown below on the Principal
Register for “windshield wipers and structural parts
therefor.”1

1 Application Serial No. 78155840, filed August 20, 2002.
Applicant claims first use of its mark as of February, 2002, and
first use in commerce as of June, 2002. Applicant disclaims the
exclusive right to use “wiper blades” and describes its mark as
follows: “The mark consists of a windshield wiper in place of a
hyphen, separating the words ‘EZ’ and ‘Fit’, and a water drop, in
place of the dot above the ‘i’ in ‘Fit’.”
THIS OPINION IS NOT
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91156682
2

Trico Products Company has opposed the application on
the ground of priority of use and likelihood of confusion.
Opposer alleges that applicant’s mark EZ-FIT WIPER BLADES
and Design so closely resembles opposer’s previously used
and registered mark EXACT FIT for “automotive windshield
wiper blades” as to be likely to cause confusion.2 Opposer
has also asserted that applicant’s mark is merely
descriptive.3
Applicant has denied opposer’s allegations of
likelihood of confusion and descriptiveness.4

2 Registration No. 2575252 for the mark EXACT FIT for “automotive
windshield wiper blades” issued on the Principal Register under
Section 2(f) on June 2, 2002, and Registration No. 2157832 for
the mark EXACT FIT for “automotive windshield wiper blades”
issued on the Supplemental Register on May 12, 1998. Opposer
claims dates of first use as of May 3, 1995.

3 In its amended Notice of Opposition, Opposer also alleged two
bases of fraud: (i) the application was electronically filed
with the signature of Stephen J. Schwartz, applicant’s CEO, but
the application was, in fact, signed by his son, Seth Schwartz;
and, (ii) although the description of goods is for “windshield
wipers and structural parts therefore”, applicant has not used
the mark on “structural parts” for windshield wipers. In an
Order dated February 23, 2005, the Board granted partial summary
judgment in favor of applicant on opposer’s claim of fraud.

4 In its affirmative defense, applicant alleged that opposer
failed to state a claim upon which relief can be granted.
Because the affirmative defense was not argued in applicant’s
brief, it is considered waived and no further consideration will
be given to it.
Opposition No. 91156682
3
Both parties have fully briefed the issues before us,
but no oral argument was requested.
For the reasons set forth below, the opposition is
sustained on the ground that applicant’s mark is merely
descriptive and the opposition is dismissed on the ground of
priority of use and likelihood of confusion.

A. The Record
1. Opposer’s Evidence
a. Certified copy of U.S. Trademark Registration
No. 2,157,832 for the mark EXACT FIT for
“automotive windshield wiper blades”
(Supplemental Register) owned by opposer.
The registration is subsisting;
b. Certified copy of U.S. Trademark Registration
No. 2,575,252 for the mark EXACT FIT for
“automotive windshield wiper blades”
(Principal Register–2(f)) owned by opposer.
The registration is subsisting;
c. Applicant’s answers to Opposer’s first set of
interrogatories, Nos. 2, 3, 5, and 8-12;
d. Applicant’s answers to Opposer’s second set
of interrogatories, Nos. 1 and 2;
Opposition No. 91156682
4
e. Excerpts from opposer’s discovery deposition
of Stephen Schwartz, applicant’s CEO,
including Exhibits 1 and 2;
f. Definitions of the words “Easy”, “Exact”, and
“Fit” from Random House Webster’s College
Dictionary (2000);
g. Definitions of “EZ” and “Easy” from the
Abbreviations Dictionary (8th ed. 1992) and
the Acronyms, Initialisms & Abbreviations
Dictionary (25th ed. 1999);
h. Sales invoices for applicant’s EZ-FIT WIPER
BLADES;5
i. Deposition transcript of James R. Croston,
opposer’s Director of Marketing, including
opposer’s Exhibit Nos. 1-44;
j. Deposition transcript of Robert Korapaty,
opposer’s Market Controller, including
opposer’s Exhibit Nos. 45 and 46;
k. Deposition transcript of Paul F. Wozniak,
opposer’s Product Engineering Manager,
including opposer’s Exhibit Nos. 47-50;

5 The parties stipulated that the documents produced by applicant
during discovery are admissible in evidence by either party by
way of notice of reliance without the need for any foundation
testimony.
Opposition No. 91156682
5
l. Deposition transcript of Andrew Weinstein,
legal assistant at the law firm representing
opposer, including opposer’s Exhibit Nos. 57-
58 (“Weinstein Dep. 1”);
m. Deposition transcript of Charles E. Walker,
Vice President of Sales and Marketing for
Gates Corporation, a sister corporation to
opposer, including opposer’s Exhibit Nos. 59-
62;
n. Deposition transcript of David Napierala, an
account supervisor for Gelia, Wells & Mohr, a
marketing communications company that works
for opposer, including opposer’s Exhibit Nos.
51-56; and,
o. Stipulation that Opposer’s EXACT FIT
windshield wiper blades are available for
sale in “Advance Auto Parts” and “The Pep
Boys” stores.
2. Applicant’s Evidence
a. Certified copies of the following trademark
registrations:
1. Registration No. 2,759,541 for the mark
FIRST TIME FIT for inter alia “vehicle
parts accessories, namely, wiper arms
and wiper blades”;
Opposition No. 91156682
6
2. Registration No. 2,627,296 for the mark
SEAFIT for inter alia “windshield wiper
blades and accessories”; and,
3. Registration No. 2,243,566 for the mark
PERFECT FIT for “windshield wiper
blades”;
b. Definitions of “Easy”, “Exact”, and “Fit”
from The Merriam-Webster Dictionary (2004);
c. Excerpts from the discovery deposition of
Stephen J. Schwartz, applicant’s CEO; and,
d. Deposition transcript of Angela Fisher, legal
assistant supervisor for the law firm
representing applicant, including applicant’s
Exhibit Nos. 1-6.
3. Opposer’s Rebuttal Evidence
Andrew Weinstein deposition transcript, including
opposer’s Exhibit Nos. 63-67 (“Weinstein Dep. II”).6

6 At the deposition, applicant lodged an objection to the
Weinstein deposition as being improper rebuttal. The Weinstein
rebuttal deposition properly forms part of opposer’s case-in-
chief rather than rebuttal. However, because applicant has not
reasserted its objection in its brief, we have considered the
evidence as if it had been introduced during opposer’s initial
testimony period. TBMP §707.04 (“by failing to preserve the
objection in its brief on the case, a party may waive an
objection that was seasonably raised at trial.”).
Opposition No. 91156682
7
B. Evidentiary issues
1. Opposer’s objections to the Angela Fisher
deposition.

Angela Fisher testified regarding her efforts to
purchase FIRST TIME FIT, SEAFIT, and PERFECT FIT windshield
wiper blades. Her testimony included printouts she made
from websites advertising the windshield wiper blades. Ms.
Fisher’s testimony, supported by the websites, is evidence
that FIRST TIME FIT and SEAFIT windshield wiper blades are
offered for sale through the websites. Ms. Fisher did not
complete the online purchase for the windshield wiper
blades, but testified that she could have purchased the
products. With respect to the PERFECT FIT product, because
it was not offered for sale through the website, Ms. Fisher
went to Strauss Auto and purchased a PERFECT FIT windshield
wiper blade.
a. Hearsay
Opposer objects to the website printouts on the ground
that they constitute inadmissible hearsay (i.e., because Ms.
Fisher did not testify that she had personal knowledge that
the wiper blades could be purchased, the exhibits constitute
inadmissible hearsay). Opposer’s objection is overruled.
Applicant is attempting to introduce the websites, not to
prove the truth of the matter set forth in the websites, but
rather for what the websites show on their face (i.e., that
the wiper blades are being advertised and offered for sale).
Opposition No. 91156682
8
Accordingly, these documents are not deemed inadmissible
hearsay. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370
(TTAB 1998).
b. Lack of personal knowledge.
Opposer objects to Ms. Fisher’s entire testimony
regarding her efforts to purchase the FIRST TIME FIT,
SEAFIT, and PERFECT FIT wiper blades because she had no
personal knowledge why she was asked to purchase those
products or where the names of those products came from.
Ms. Fisher testified that she conducted a TrademarkScan
search for the word “fit” in connection with wiper blades
and turned the results over to applicant’s counsel. Ms.
Fisher did not review the results of the search. Applicant
did not proffer the TrademarkScan search results into
evidence. Opposer argued that the non-production of the
search results and lack of knowledge on the part of Ms.
Fisher renders the testimony regarding the third-party marks
untrustworthy. Opposer’s objection is overruled. The
source of applicant’s knowledge regarding the third-party
marks is irrelevant. Ms. Fisher authenticated the documents
in her testimony and the documents themselves are relevant.
Accordingly, the testimony and exhibits regarding third-
party use are not untrustworthy.
Opposition No. 91156682
9
c. Relevance
Opposer objects to the Fisher testimony and exhibits as
irrelevant on the ground that applicant “never lodged a
formal attack on opposer’s EXACT FIT mark or the
registrations therefor.” Opposer argued that the testimony
and exhibits regarding third-party use is an improper
attempt to narrow the scope of opposer’s mark. Opposer’s
objection is overruled. Third-party use is one of the
likelihood of confusion factors enumerated in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“The number and nature of similar marks in use
on similar goods”). Applicant is entitled to proffer
evidence of third-party use to show that opposer’s mark is
entitled to a narrow scope of protection or exclusivity of
use. Accordingly, the Fisher testimony and exhibits are not
irrelevant.
Opposer also objects as to the lack of relevancy of the
testimony and exhibits regarding the SEAFIT trademark
because the SEAFIT wiper blades are intended for use in
connection with marine vessels. Opposer’s objection to the
SEAFIT testimony and exhibits is overruled. Such testimony
and exhibits are relevant. Opposer’s better argument would
have been that the SEAFIT trademark is entitled to little
probative value. Accordingly, the Fisher testimony and
exhibits regarding the SEAFIT trademark are not irrelevant.
Opposition No. 91156682
10
d. Lack of foundation

Opposer objects to Ms. Fisher’s testimony that she
could have purchased the FIRST TIME FIT and SEAFIT wiper
blades on the ground that she did not have personal
knowledge whether or not she could have made the purchases.
Opposer’s objection is sustained. Ms. Fisher did not
purchase the FIRST TIME FIT and SEAFIT wiper blades and
there is no testimony regarding her knowledge of the retail
availability of those wiper blades. Accordingly, we will
not consider Ms. Fisher’s testimony that she could have
purchased the FIRST TIME FIT and SEAFIT wiper blades.
2. Opposer’s objections to applicant’s submission of
U.S. Trademark Registration No. 2,627,296 for the
mark SEAFIT.

Opposer objects to the introduction into evidence of
U.S. Trademark Registration No. 2,627,296 for the mark
SEAFIT for “windshield wiper blades and accessories” on the
ground that it is irrelevant because the wiper blades are
for marine use. The registration at issue lists a wide
variety of marine products in multiple classes. Opposer’s
objection is overruled. In our opinion, the registration is
relevant for demonstrating the meaning of “fit” in
connection with wiper blades. Accordingly, the SEAFIT
trademark registration is not irrelevant and it is
admissible into evidence.

Opposition No. 91156682
11
C. Section 2(e)(1) - Descriptiveness
Opposer has alleged that applicant’s mark EZ-FIT WIPER
BLADES and Design is merely descriptive and has not acquired
distinctiveness and that opposer is engaged in the
manufacture and sale of wiper blades. (Opposer’s Amended
Notice of Opposition, ¶14). Applicant, on the other hand,
has argued that the registration of its mark will not
prevent opposer and others from using the terms “EZ” or
“Fit” or “Wiper” or “Blade” in a descriptive, non-trademark
sense and, therefore, opposer will not be damaged by the
registration of applicant’s mark.
1. Opposer has standing to prosecute the opposition.
In order to establish its standing to object to the
registration of applicant’s mark on the ground that it is
merely descriptive, opposer need only plead and prove that
it is engaged in the manufacture of windshield wipers or
related products. Binney & Smith Inc. v. Magic Marker
Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984); No
Nonsense Fashions, Inc. v. Consolidated Foods Corporation,
226 USPQ 502, 504 (TTAB 1985).
Opposer has been manufacturing and selling EXACT FIT
wiper blades since 1995. (Croston Dep. pp. 11-12; Wozniak
Dep. p. 9; Korapaty Dep., p. 8; Walker Dep., p. 80;
Napierala Dep., p. 14). Inasmuch as opposer manufactures
and markets wiper blades and is a competitor of applicant
Opposition No. 91156682
12
with respect to wiper blades, there can be no question as to
opposer’s standing to maintain this opposition.
2. Applicant’s mark is merely descriptive.
Opposer argued that applicant’s mark is merely
descriptive because the components of the mark are
descriptive and nondistinctive: EZ-FIT immediately conveys
a desired feature of applicant’s product (i.e., it easily
fits on the wiper arm), WIPER BLADES is the generic term for
the product, and the design element comprises a wiper blade
which is the pictorial equivalent of the term “wiper blade.”
Applicant argued that its composite mark does not directly
describe the nature of its products and that competitors do
not need to use applicant’s exact mark to describe their
products.
“EZ” is an abbreviation for the word “Easy.”
Abbreviations Dictionary, p. 318 (8th ed. 1992); Acronyms,
Initialisms & Abbreviations Dictionary, p. 1092 (25th ed.
1999).
The word “Easy” means “requiring no great labor or
effort; not hard or difficult.” Random House Webster’s
College Dictionary, p. 415 (2000); The Merriam Webster
Dictionary, p. 227 (2004)(“not causing distress or
difficulty”).
Opposition No. 91156682
13
The word “Exact” means “strictly accurate or correct
. . . precise.” Random House Webster’s College Dictionary,
p. 458 (2000); The Merriam Webster Dictionary, p. 248
(2004).
The word “Fit” has numerous meanings including “to be
of the right size or shape for . . . the manner in which a
thing fits.” Random House Webster’s College Dictionary, p.
496 (2000); The Merriam Webster Dictionary, p. 273 (2004)
(“to be suitable for or to; to be correctly adjusted to or
shaped for; to insert or adjust until correctly in place”).
“Easy Fit” is used to describe a characteristic of
windshield wiper blades. (Weinstein Dep. II, Exhibits 64 –
67)(emphasis added):
ACDelco wiper blades have “Easy-fit
assembly for quick installation”;7

TE-135 Easy-to—Fit Wiper Blade with
Stable Performance.8

The Mighty Wiper is “Ultra compact size
and shape for easy fit.”9

“EZ FIT” is commonly used to describe a multitude of
products. (Weinstein Dep. I, Exhibits 57 and 58).
Representative examples of “EZ FIT” include the following
uses (emphasis added):

7 Weinstein Dep. II, Exhibit 65.

8 Weinstein Dep. II, Exhibit 66.

9 Weinstein Dep. II, Exhibit 66.

Opposition No. 91156682
14
a. E-Z FIT Magnetic Shoulder Pad;

b. ONGUARD Hazmax® EZ-Fit Boots;

c. E-Z-FIT Safety Latch Gate. . . EASY
TO FIT!. . . Installed in minutes;

d. Men’s Tuxedo Shirt. . . Available
in Standard or “EZ fit” for
comfort/sizing;

e. EZ Fit Mesh Visor Cap;

f. Design FIREFLEX-FRP flex connector
with EZ-FIT couplings and enjoy an
easy to install and maintain piping
system to handle every installation
requirement; and,

g. EZ-Fit Belt Clip.

Prior to the filing date of applicant’s application
(August 20, 2002) or applicant’s date of first use
(February, 2002),10 opposer promoted its EXACT FIT wiper as
easy to install. Opposer introduced the EXACT FIT wiper
blades in 1996 with a “click on easy” advertising tagline
that is still used today. (Napierala Dep., pp. 24-25;
Croston Dep., Exhibit Nos. 3, 24, 28, 29, 30, 34, 36, 37,
40, 41, and 43). The EXACT FIT packaging touts the easy
installation with the following statement:
Fully Assembled
One Step
Easy Installation

(Croston Dep., Exhibit 8). Easy installation is a theme
that appears in virtually all of opposer’s advertising.

10 Schwartz Dep., p. 27.
Opposition No. 91156682
15
(Croston Dep., Exhibit Nos. 6, 11, 12, 13, 16, 17, 18, 19,
20, 21, 26, 27, 35, 36, and 43).11
It is well settled that a mark is
considered to be merely descriptive of
goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if
it immediately describes an ingredient,
quality, characteristic or feature
thereof or if it directly conveys
information regarding the nature,
function, purpose or use of the goods or
services. [Internal citation omitted].
It is not necessary that a mark describe
all of the properties or functions of
the goods or services in order for it to
be considered to be merely descriptive
thereof; rather, it is sufficient if the
mark describes a significant attribute
or aspect about them. Moreover, whether
a mark is merely descriptive is
determined not in the abstract but in
relation to the goods or services for
which registration is sought, the
context in which it is being used on or
in connection with those goods or
services, and the possible significance
that the mark would have to the average
purchaser of the goods or services
because of the manner of its use.
[Internal citation omitted].

Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633,
1640 (TTAB 1999). See also, In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Whether a term is unique or whether a competitor has
need to use the identical mark to describe its goods is not

11 In its application guides, Opposer touts the easy installation
of its wiper blades by stating that “the secret behind TRICO II’s
[later changed to Exact Fit’s] fast, easy installation is our
Exact Fit program.” (Croston Dep. Exhibit Nos. 11 - 13, and 16 –
21).
Opposition No. 91156682
16
the test of descriptiveness. The issue is whether the mark
projects a readily understood meaning to the average
purchaser. In re MBAssociates, 180 USPQ 338, 339 (TTAB
1973).
On the record before us, we conclude that the mark EZ-
FIT WIPER BLADES and Design as a whole is merely
descriptive. EZ-FIT WIPER BLADES directly conveys an
important characteristic or feature of applicant’s products:
that is, applicant’s wiper blades can be installed without
difficulty.12 The wiper blade design, as shown in
conjunction with the words in the mark, is an accurate
depiction of applicant’s product and is merely
descriptive.13 No multistage reasoning or utilization of
imagination, thought, or perception is necessary to
determine the attributes of applicant’s wiper blades.
The issue, therefore, comes down to whether applicant’s
composite mark, comprised of descriptive matter, is
presented in such a distinctive manner as to render the mark
as a whole registrable. In our opinion, the layout or
display of applicant’s mark is not so striking as to make a

12 A slight misspelling of a word will not turn a descriptive word
or designation into a nondescriptive mark. In re Quik Print Copy
Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA
1980)(“There is no legal difference here between ‘quik’ and
‘quick’.”). Therefore, “EZ” is the legal equivalent to “Easy.”

13 A picture or design and the word that describes the design are
legal equivalents that must be treated as such in an opposition.
Thistle Class Association v. Douglass & McLeod, Inc., 198 USPQ
504, 511 (TTAB 1978).
Opposition No. 91156682
17
commercial impression that is separate and apart from the
word portion of the mark. Applicant’s mark as a whole is,
therefore, merely descriptive.

D. Section 2(d) – Likelihood of Confusion
1. Priority is not in issue.
Opposer is the owner of U.S. Trademark Registration
Nos. 2575252 and 2157832 for the mark EXACT FIT for
“automotive windshield wiper blades.” In light of opposer’s
ownership of subsisting registrations, the issue of priority
does not arise in this opposition. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
2. Likelihood of confusion factors.
We analyze the issue of likelihood of confusion based
on all the 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); In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
a. The goods of the parties and the channels of
trade are identical.

In an opposition, the issue of likelihood of confusion
must be determined in light of the goods as identified in
the involved application and pleaded registrations and, in
the absence of any specific limitations therein, on the
Opposition No. 91156682
18
presumption that all normal and usual channels of trade and
methods of distribution are or may utilized for such goods.
Octocom Systems, Inc. v. Houston Computer Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 490, 1 USPQ2d 1813, 185 (Fed. Cir. 1987); CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983).
The goods as identified in opposer’s U.S. Trademark
Registration Nos. 2,575,252 and 2,157,832 for the mark EXACT
FIT are “automotive windshield wiper blades.” The goods in
the application are set forth as “windshield wipers and
structural parts therefor.” The term “windshield wipers”
means the complete wiper, including the wiper blade and the
structural parts that hold the wiper blade. (Schwartz Dep.,
pp. 21, 33). In fact, the products of opposer and applicant
are identical, but for their connector systems. (Schwartz
Dep., pp. 90-93). Moreover, there is nothing in the
description of goods of the cited registration or of the
application that would limit channels of trade or classes of
consumers for windshield wipers. In view thereof, the goods
of the parties and, thus, the channels of trade are the
same. These factors favor opposer.

Opposition No. 91156682
19

b. While wiper blades may be “impulse”
purchases, the degree of consumer care is not
a significant likelihood of confusion factor.

Windshield wiper blades are sold to purchasers in the
automotive trade (e.g., warehouse distributors, jobbers,
retailers, and installers) and to the ultimate consumer
(i.e., a car owner). (Korapaty Dep., pp. 10-11; Napierala
Dep., p.11; Walker Dep., pp. 9-10; Croston Dep., pp. 70-71).
Opposer’s wiper blades have an average wholesale price of $9
per blade and an average retail price of $12 per blade.
(Walker Dep., p. 13). The evidence shows that car owners
purchase windshield wiper blades as “impulse” purchases.
(Croston Dep., pp. 28-29; Walker Dep., pp. 10-13).
Opposer argues that because wiper blades are
inexpensive, impulse purchases, there is a greater
likelihood of confusion. We agree that as a general rule,
the lower of the degree of consumer care, the greater the
likelihood of confusion, and vice versa. However, that does
not mean that the lower degree of consumer care ipso facto
means that there is a greater likelihood of confusion. The
issue of consumer care entails the degree to which consumers
consider the marks in their purchasing decision. In this
regard, we are not persuaded that the trademarks have a
significant role, if any, in the car owner’s decision to
purchase a particular windshield wiper blade. The testimony
Opposition No. 91156682
20
indicates that consumers select wiper blades without
reference to the trademark.
Generally, they have not done the
research or had the number of options
made available to them until they walk
into the store to buy the product at
that point. They look at several
different products and are easily
confused.

* * * *

Main reason is that they do not think of
wipers as a rule unless it is raining.
At that point, they immediately go into
a location that sells wipers to have the
blades replaced for need purposes. It
becomes an impulse buy rather than a
buying decision.

(Walker, Dep. pp. 12 and 13).14
Because wiper blades are an impulse purchase, the
degree of consumer care is a likelihood of confusion factor
that favors opposer to the extent that prospective
purchasers who are not paying much attention to windshield
wiper brands are more likely to be easily confused by any
similarities in the marks. However, based on this record,
the degree of consumer care is not a significant factor in
our analysis.

14 The reference to confusion could be confusion as to which
quality or type of wiper blade to buy rather than confusion as to
source.

Opposition No. 91156682
21
c. The absence of any reported instances of
confusion is not a significant likelihood of
confusion factor.

Notwithstanding the facts that applicant made a total
of thirty-one sales to eight customers in five states and
does not advertise its EZ-FIT WIPER BLADES,15 applicant
argues that because the products of the parties move in the
same channels of trade to the same types of customers, the
absence of any reported instances of confusion is probative
that there is no likelihood of confusion. Suffice it to say
that the issue before us is likelihood of confusion, not
actual confusion. Charette Corp. v. Bowater Communication
Papers, Inc., 13 USPQ2d 2040, 2042-2043 (TTAB 1989);
Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ
738, 742 (TTAB 1978). Moreover, the absence of any reported
instances of confusion is meaningful only if the record
evidences appreciable and continuous use by applicant of its
mark for a significant period of time in the same markets as
those served by opposer under its mark. In other words,
there has to have been an opportunity for confusion to
occur. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1991); Red Carpet Corp. v. Johnstown American
Enterprises Inc., 7 USPQ2d 1404, 1406-1407 (TTAB

15 Schwartz Dep., p. 50; Applicant’s Response to Opposer’s
Interrogatory No. 2. In fact, Mr. Schwartz testified that
applicant has not “really begun selling” the EZ-FIT WIPER BLADES.
(Schwartz Dep., p. 50).
Opposition No. 91156682
22
1988). In light of applicant’s meager sales and non-
advertising, the lack of any reported instances of actual
confusion has no probative value and, therefore, has not
been given any weight in the likelihood of confusion
analysis.
d. The third-party “Fit” trademarks are not a
significant likelihood of confusion factor.

Angela Fisher testified on behalf of applicant
regarding the availability of FIRST TIME FIT, SEAFIT, and
PERFECT FIT wiper blades. Applicant argues that this
evidence demonstrates that the use of the term “Fit” is so
common in the automotive field that no one entity may claim
rights in the term “Fit” and that the addition of other
matter to the word “Fit” is sufficient to distinguish the
marks of the parties. We are not persuaded by applicant’s
evidence comprising only three “Fit” trademarks that the
word “Fit” is in such common use for wiper blades that
consumers have learned to distinguish “Fit”-suffix marks by
other portions thereof and, therefore, would not be likely
to be confused by the common suffix.
Since we are not persuaded that the third-party uses
have any impact on consumer perceptions, applicant’s
evidence of third-party use is of limited probative value
because opposer is not claiming the exclusive right to use
the word “Fit” in the automotive field. Opposer’s argument
is essentially that EZ-FIT for windshield wiper blades so
Opposition No. 91156682
23
closely resembles EXACT FIT for windshield wiper blades as
to be likely to cause confusion.
Accordingly, the third-party use of “Fit” marks is not
a likelihood of confusion factor that we considered
significant in this case.
e. EZ-FIT is not similar to EXACT FIT.
We now turn to a determination of what we find to be
the key likelihood of confusion factor in this case, which
is whether applicant’s mark and opposer’s mark, when
considered in their entireties in terms of appearance,
sound, connotation, and commercial impression are similar or
dissimilar.
When we compare the marks in terms of appearance, we
find that they are significantly different. We recognize
that the marks both have a “Fit” suffix word. However, the
first words in each mark, “EZ” and “Exact”, are common words
which would be readily recognized as such and which are
readily distinguishable from each other. Thus, when the
mark EZ-FIT WIPER BLADES and Design and EXACT FIT are
considered in their entireties, we find that they are more
dissimilar than similar in appearance.
Considering the sound of the marks, we find that the
difference in the pronunciations of the words “EZ-FIT WIPER
BLADES” (or “Easy”) and “Exact Fit” render the marks
different in terms of sound.
Opposition No. 91156682
24
Finally, when we compare the marks in terms of their
respective meanings or connotations, we find that they are
very different. Applicant’s mark EZ-FIT WIPER BLADES means
that applicant’s wiper blades will fit on the purchaser’s
vehicle without difficulty. Opposer’s mark EXACT FIT means
that opposer’s wiper blades will fit on the purchaser’s
vehicle with precision. The marks both convey desirable,
but different, characteristics of the wiper blades.
In making our analysis of the similarities and
dissimilarities of the marks, we note the inherent weakness
of the marks and find that the differences in the marks
outweigh the similarities. King Candy Co. v. Eunice King’s
Kitchen, Inc., supra 182 USPQ 110 (confusion unlikely when
marks are of such non-arbitrary nature that the public
easily distinguishes slight differences in the marks under
consideration); Colgate Palmolive Co. v. Carter-Wallace,
Inc., 432 F.2d 1400, 167 USPQ 529, 530 (CCPA 1970) (because
the common element in the marks is a common noun or
adjective of everyday use and has a laudatory or suggestive
indication, PEAK PERIOD for personal deodorants is not
confusingly similar to PEAK for dentifrice); Sure-Fit
Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ
295 (CCPA 1958) (where a party has a weak mark, competitors
may come closer to the mark than would be the case with a
strong mark without violating the party’s rights; SURE-FIT
Opposition No. 91156682
25
and RITE-FIT both for slip covers, held not confusingly
similar).
In reaching our decision that the marks are not
confusingly similar, we wish to make it clear that in so
doing, we have considered the “market” strength of opposer’s
mark as evidenced by its annual sales in the multiple
millions of units and tens of millions of dollars, its
advertising, and unsolicited media attention. (Korapaty
Dep., pp. 8-16, Exhibit 46; Croston Dep., pp. 18-33, 39-103,
113-124, 128-130, Exhibits 3-7, 10-39, 41-44; Napierala
Dep., pp. 15-24, 34-39, Exhibit 53). While the sales and
advertising have been extensive, we are not persuaded that
EXACT FIT is entitled to a broad scope of protection, given
the difference in appearance, sound, and connotation of
opposer’s mark from applicant’s mark.
Viewing all of the evidence of record as it pertains to
the du Pont factors, we conclude that there is no likelihood
of confusion between opposer’s mark EXACT FIT and
applicant’s mark EZ-FIT WIPER BLADES and Design, even though
those marks are used on identical products. Simply put, the
dissimilarity between the marks is dispositive in this case.
Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991). Therefore, we dismiss
the opposition as to the likelihood of confusion claim.
Opposition No. 91156682
26
Decision: The opposition is dismissed on the ground of
likelihood of confusion under Section 2(d) of the Lanham
Act, 15 U.S.C. §1052(d).
The opposition is sustained on the ground that
applicant’s mark is merely descriptive under Section 2(e)(1)
of the Lanham Act, 15 U.S.C. §1052(e)(1), and registration
to applicant is refused.