Versus Trading Company, Inc.

Trademark Trial and Appeal Board

Aug 14, 2007

No. 78262569 (T.T.A.B. Aug. 14, 2007)

Mailed:
14 August 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Versus Trading Company, Inc.
________

Serial No. 78262569
_______

Charles R. Sutton of the Sievers Law Firm for Versus
Trading Company, Inc.

Tracy Cross, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Drost, Kuhlke, and Wellington, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 15, 2003, applicant Versus Trading Company,
Inc. applied to register the mark VERSUS MOTORSPORT (in
typed or standard character form) on the Principal Register
for services identified as “distributorship and retail
store services in the field of vehicle parts and
accessories” in Class 35. The application (Serial No.
78262569) was based on applicant’s allegation of a date of
first use anywhere of December 1, 1993 and in commerce of
July 1, 1994. Applicant has disclaimed the term
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser No. 78262569
2
“Motorsport.” On February 7, 2005, the Office received
applicant’s response to an Office action that proposed to
amend the application to seek registration on the
Supplemental Register and to change the dates of first use
anywhere and in commerce to February 1, 1993.1
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a registration for the
mark VERSUS,2 in typed or standard character form, for
“wheels for land vehicles” in Class 12.3
When the refusal was made final, applicant filed this
appeal.
In cases involving a likelihood of confusion refusal
(15 U.S.C. § 1052(d)), we consider the facts as they relate
to the relevant factors set out in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA

1 In her brief (unnumbered pp. 13-14), the examining attorney
explained that “the amendment to the Supplemental Register is
unacceptable because the proposed mark is clearly capable of
registration” on the Principal Register, and “the term VERSUS is
not descriptive of the goods/services.”

2 Registration No. 2265157, issued July 27, 1999. Affidavits
under Sections 8 and 15 accepted and acknowledged.

3 The examining attorney also cited a second registration (No.
2363870) for the mark VERSUS CONSPIRED BY RAYS and design for
“wheels for land vehicles” in Class 12. This registration was
cancelled on April 7, 2007, and therefore, it no longer serves as
a bar to registration of applicant’s mark.
Ser No. 78262569
3
1973). See also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc.
v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin by looking at the first du Pont factor. This
“factor requires examination of ‘the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)). In this
case, applicant’s mark is VERSUS MOTORSPORT and
registrant’s mark is VERSUS. Both marks are in typed or
standard character form so that there are no differences
between the stylization of the marks. Therefore, the marks
are similar to the extent that they are for the same word
VERSUS, which is the only word in registrant’s mark. They
Ser No. 78262569
4
are different because applicant adds the word MOTORSPORT to
its mark. We find that that the term “Versus” is the
dominant feature in applicant’s mark and it is defined as:
“against (used esp. to indicate an action brought by one
party against another in a court of law, or to denote
competing teams of players in a sports contest).” The
Random House Dictionary of the English Language
(unabridged) (2d ed. 1987).4 While the term may have some
suggestive connotations when applied to services associated
with motor sports competitions, it does not appear to be
merely descriptive of applicant’s services and an amendment
to the Supplemental Register would not have been
appropriate. 15 U.S.C. § 1091(a) (“All marks capable of
distinguishing applicant’s goods or services and not
registrable on the principal register herein …, which are
in lawful use in commerce by the owner thereof, on or in
connection with any goods or services may be registered on
the supplemental register”) (emphasis added).
Applicant argues (Brief at 8) that:
While Appellant’s mark implies racing and excitement
in connection with [its] services, the cited
registrations used in connection with wheels more
likely imply something akin to the Latin root of the

4 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 78262569
5
word “VERSUS” the past participle of vertere (to
turn). These marks imply “toward” or “turned toward.”

We certainly are skeptical that this Latin meaning would be
the understanding of a significant number of potential
purchasers. Applicant has presented no evidence on this
point, and we instead hold that the word “Versus” in both
marks, at least for most purchasers, would have the same
meaning.
Regarding the term “Motorsport” in applicant’s mark,
we cannot find that it would significantly change the
meaning of the term “Versus.” “Motor sports” are defined
as “competitions, esp. races, involving motor vehicles, as
automobiles, motorboats, and motorcycles.” The Random
House Dictionary of the English Language (unabridged) (2d
ed. 1987). The term “Motorsport” in applicant’s mark would
suggest that applicant’s services are rendered in the field
of motor sports. In addition, registrant’s identification
of “wheels for land vehicles” includes wheels used in motor
sports. Therefore, the commercial impressions of the marks
VERSUS for wheels for land vehicles and VERSUS MOTORSPORT
for services in the field of vehicle parts would be
similar. Furthermore, the marks would be similar in
appearance and sound to the extent that they are both
dominated by the same term “Versus.”
Ser No. 78262569
6
We add that we have considered the marks VERSUS
MOTORSPORT and VERSUS in their entireties. However, “there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). When we do consider the marks in their
entireties, we conclude that they are similar. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (Federal Circuit held that, despite the
addition of the words “The” and “Cafe” and a diamond-shaped
design to registrant’s DELTA mark, there still was a
likelihood of confusion) and Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design likely to be confused
with CONCEPT for hair care products).
Next, we look to see if applicant’s services and
registrant’s goods are related. “[G]oods that are neither
used together nor related to one another in kind may still
‘be related in the mind of the consuming public as to the
origin of the goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.’” Shen
Ser No. 78262569
7
Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350
(Fed. Cir. 2004) (citing Recot, 54 USPQ2d at 1898).
It “has often been said that goods or services need
not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in
some manner or that 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
a mistaken belief that they originate from or are in
some way associated with the same producer or that
there is an association between the producers of each
parties’ goods or services.”

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1661 (TTAB 2002).
To demonstrate a relationship between wheels and
retail stores services in the field of vehicle parts, the
examining attorney submitted copies of several internet
printouts. See www.upgrademotoring.com (Upgrade Motoring -
Suspension/Safety/Wheels/Performance/Race Car/
Aerodynamics/Accessories). See also www.enjoythedrive.com:
Keystone Automotive Operations Inc. – Warehouse
distributor stocking more than 600 product lines,
including high-performance, accessories, wheels,
automotive parts, truck accessories and import
performance

Pro-Am – Retail and mail-order sales of personalized
accessories, including Recaro seats, wheels, tires,
shocks, trim and Simpson race products.

Ser No. 78262569
8
In addition to the internet evidence, the examining
attorney also relied on registrations to suggest that the
goods and services are related. See, e.g., Registration
Nos. 2302608 (Mail order and retail store services
featuring automotive parts and land vehicle parts, namely
wheels); 2824520 (retail store services and online retail
store services in the field of vehicle parts and vehicle
parts and accessories, namely wheels); and 2420691
(motorcycle wheels and retail store services and mail order
services in the field of motorcycles and motorcycle parts).
Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
emanate from a single source.” In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
Applicant argues that the purchasers are “tuner car
enthusiasts” (Brief at 9) and that these enthusiasts “are
acutely aware of the difference between a set of wheels and
part distribution services” (Brief at 10). However, we
cannot limit our consideration to any specific type of
Ser No. 78262569
9
purchasers for either wheels or vehicle parts retail store
services. Absent restrictions in the identification, we
must assume that the goods and services travel in the
“normal and usual channels of trade and methods of
distribution.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983). See also Chesebrough-Pond's
Inc. v. Soulful Days, Inc., 228 USPQ 954, 956 (TTAB 1985).
While applicant attempts to differentiate the products
based on applicant's selling its products only through
mail orders while opposer's sales of its goods are
through ordinary retail channels of distribution, in
the absence of a restriction in applicant's
identification of goods and in the identification of
goods in opposer's registrations, the respective goods
must be presumed to travel in all channels of trade
suitable for goods of that type.

Neither the application nor the registration limits
the identification of goods or services to any type of
purchaser or any type of land vehicle wheel. “The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed.” Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Ser No. 78262569
10
Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods” or services).
In a case involving the relationship between goods and
services, the Federal Circuit affirmed the board’s
determination that there was a likelihood of confusion when
the goods and services involved the mark “bigg’s”
(stylized) for “retail grocery and general merchandise
store services” and BIGGS and design for furniture.
The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
principal use in connection with selling the goods and
(b) that the applicant's services are general
merchandising -- that is to say selling -- services,
we find this aspect of the case to be of little or no
legal significance.

In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988).
Inasmuch as vehicle wheels are sold in vehicle parts
stores, we hold that applicant’s vehicle parts retail store
services and registrant’s vehicle wheels are related.
In addition, we must conclude that the purchasers
include all types of purchasers for wheels including car
Ser No. 78262569
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enthusiasts and ordinary purchasers who are simply seeking
to upgrade or change their vehicles’ wheels.
Where the goods in the application at issue and/or in
the cited registration are broadly identified as to
their nature and type, such that there is an absence
of any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and
type described therein, but that the identified goods
are offered in all channels of trade which would be
normal therefor, and that they would be purchased by
all potential buyers thereof.

In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
See also In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Thus, purchasers would not be limited to sophisticated
purchasers. It is likely that the same purchasers would
encounter both registrant’s mark for wheels and applicant’s
vehicle parts retail services.
We note that applicant has argued that its “mark has
acquired distinctiveness from long and active use in the
industry” and that it is “entitled to registration on the
Supplemental Register.” As explained earlier, applicant’s
mark is more appropriately subject to registration on the
Principal Register. Nevertheless, we point out that the
refusal to register on the ground of likelihood of
confusion applies to marks for registration on the
Supplemental Register. Thus, the amendment would not
obviate the refusal. Indeed, marks “registered on the
Ser No. 78262569
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Supplemental Register can be used as a basis for refusing
registration to another mark under §2(d) of the Act.” In
re The Clorox Company, 578 F.2d 305, 198 USPQ 337, 340
(CCPA 1978). While applicant also points out that it “was
using its mark before those” of registrant (Brief at 11),
priority is not an issue in this ex parte proceeding. In
re Calgon Corp., 435 F.2d 596, 598, 168 USPQ 278, 280 (CCPA
1971).
When we consider the evidence of record, we conclude
that the marks VERSUS MOTORSPORT and VERSUS are similar and
that the goods and services are related. When prospective
purchasers familiar with registrant’s mark for wheels for
land vehicles encounter applicant’s VERSUS MOTORSPORT for
the identified services, they are likely to assume that
there is some association or relationship between the
sources of the goods and services. Therefore, confusion is
likely.
Decision: The examining attorney’s refusal to
register applicant’s mark VERSUS MOTORSPORT for the
identified services under Section 2(d) of the Trademark Act
because of a registration for the mark VERSUS for wheels
for land vehicles is affirmed.