Volkswagen AGv.Mentken

Trademark Trial and Appeal Board

Apr 9, 2007

No. 91165323 (T.T.A.B. Apr. 9, 2007)

Decision mailed:
April 9, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Volkswagen AG
v.
Mentken
_____

Opposition No. 91165323 to application Serial No. 78423442
filed on May 22, 2004
_____

Stewart L. Gitler of Hoffman, Wasson & Gitler, P.C. for
Volkswagen AG.

Jon A. Schiffrin of Jon A. Schiffrin, P.C. for Robert Mentken.
______

Before Hohein, Bucher and Drost, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

Robert Mentken has filed an application to register the
mark "Volks-bagen" in standard character form on the Principal
Register for "backpacks, totebags, [and] luggage" in
International Class 18.1
Volkswagen AG has opposed registration, alleging in its
notice of opposition that, among other things, opposer "is and
has at all relevant times been actively engaged in the design,

1 Ser. No. 78423442, filed on May 22, 2004, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS DISPOSITION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91165323
2
manufacture, development, marketing and sale of a wide range of
products and services, including ... automobiles, ... leather
goods, luggage, carry-on luggage and totebags"; that, in
connection therewith, opposer is using and has used the mark
"VOLKSWAGEN" since at least as early as 1950 in commerce in the
United States and long prior to the filing date of applicant's
application; that opposer is the owner of five "valid,
subsisting, unrevoked, and uncancelled" registrations for its
mark, including registrations for the mark "VOLKSWAGEN" in
standard character form on the Principal Register for, inter
alia, "vehicles--namely, automobiles and trucks, ... and
accessories for automobiles--namely, ... baggage racks" in
International Class 122 and for "leather and imitation leather
articles, namely, wallets, key cases, credit card holders,
business card holders, luggage, suitcases, duffle bags, carry-on
luggage and tote bags, and garment bags for travel" in
International Class 18;3 that "[a]s a result of the extensive use
and advertising by Opposer, the trademark, VOLKSWAGEN, has become
world famous"; that the "VOLKSWAGEN mark is closely and uniquely
associated with Opposer and the products and related services it
offers and has become a 'famous mark' as defined in 15 U.S.C.

2 Reg. No. 617,131, issued on December 6, 1955, which alleges a date of
first use anywhere and in commerce of July 1, 1950; third renewal.

3 Reg. No. 1,378,042, issued on January 14, 1986, which includes goods
in several other classes but, as to the goods in International Class
18, alleges a date of first use anywhere of October 14, 1984 and a
date of first use in commerce of January 17, 1985; cancelled §8 as to
the goods in International Class 18. The registration contains a
statement that: "The word 'VOLKSWAGEN' translates from the German as
'people's car'."

Opposition No. 91165323
3
§1125(c)"; that the goods listed in applicant's application "are
confusingly similar or identical to" the goods and services
provided by opposer under its "VOLKSWAGEN" mark; and that
applicant's mark, "Volks-bagen, so resembles Opposer's previously
used and registered mark, VOLKSWAGEN, as to be likely to cause
confusion, mistake, or deception as to the source of the goods."4
Applicant, in his answer, has denied the essential
allegations of the notice of opposition.
The record consists of the pleadings; the file of
applicant's involved application; two notices of reliance, filed
by opposer as its case-in-chief, on (respectively) applicant's
answer to an interrogatory served by opposer5 and a certified
copy of each of its five pleaded registrations;6 and a notice of
reliance, filed by applicant as its case-in-chief, on certain
third-party registrations of marks which consist of the term

4 Although opposer has also raised an allegation of dilution by
pleading that "[a]pplicant's proposed use of the mark Volks-bagen will
be likely to cause dilution of Opposer's famous and distinctive mark,
VOLKSWAGEN," no evidence with respect thereto was offered at trial.
Such allegation, therefore, will not be given any further
consideration.

5 Specifically, applicant answered opposer's Interrogatory No. 6, which
requests information on applicant's monthly sales, by stating that
"[t]here have been no sales of products under [the mark] VOLKS-BAGEN
as yet."

6 In particular, opposer pleaded in the notice of opposition that it
"is the owner of U.S. Trademark Registration Nos. 617,131; 790,621;
808,381; 819,297; [and] 1,378,042." The certified copies of such
registrations show that opposer is the owner thereof and, with the
exception of International Classes 18 and 21 of Reg. No. 1,378,042,
which have been cancelled, the registrations are in full force and
effect. However, as discussed later in this opinion, opposer has also
filed a certified copy of and has relied upon a sixth registration for
the mark "VOLKSWAGEN," namely, Reg. No. 2,835,662, which includes
goods in International Class 18 but was not pleaded in the notice of
opposition.

Opposition No. 91165323
4
"VOLK" or include the element "VOLKS-,"7 an expired registration
issued to opposer,8 and copies of pages from Cassell's German-
English English-German Dictionary (1978).9 Both parties have
filed main briefs and opposer has submitted a reply brief. In
addition, opposer has sought by its notice of reliance on its
five pleaded registrations to rely upon a certified copy of a
sixth but unpleaded registration for the mark "VOLKSWAGEN" in
standard character form on the Principal Register for, inter
alia, "automobiles" ... [and] luggage carriers for vehicles" in
International Class 12 and "goods made from leather and
imitations of leather, namely, valises, wallets, suitcases,
executive cases, bags, namely, all purpose athletic bags, all
purpose sports bags, ... beach bags, book bags, carry-on bags,
cricket bags; luggage; luggage trunks; ... [and] key cases," in
International Class 18.10 Inasmuch as applicant has treated such
registration as being of record,11 the registration is considered

7 While applicant has also relied upon information pertaining to
several third-party applications, such information evidences only that
the applications were filed and has no other evidentiary value.

8 Specifically, applicant states that he relies upon "[a] copy of
Opposer's expired registration for VOLKS and Design, Registration No.
945,614, showing non-use [sic] of this prefix term."

9 Applicant indicates that he relies upon "[c]opies of the German to
English translation of 'volks' as [']people['] and 'wagen' as 'car,'
including excerpts ... showing no German word 'bagen'."

10 Reg. No. 2,835,662, issued on April 27, 2004, which is based on
German Federal Republic Reg. No. 39800185, dated July 1, 1998. It is
noted that opposer filed its notice of opposition, thereby commencing
this proceeding, more than a year later on May 17, 2005.

11 Although applicant, in his brief, has raised certain evidentiary
objections (which will be addressed later in this opinion), he has not
objected to consideration of any of the registrations offered into
evidence by opposer, including Reg. No. 2,835,662, and specifically
Opposition No. 91165323
5
to form part of the record herein by stipulation of the parties
pursuant to Trademark Rule 2.123(b) and the pleadings are
accordingly deemed to be amended to include reference thereto
pursuant to Fed. R. Civ. P. 15(b).
Priority of use is not in issue in this proceeding with
respect to the various goods and services which are the subjects
of opposer's six registrations for its "VOLKSWAGEN" mark since,
as shown by the certified copies thereof, such registrations--
except to the extent previously indicated12 with respect to
International Classes 18 and 21 of Reg. No. 1,378,042--are
subsisting and owned by opposer. See King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974). Opposer's ownership thereof, moreover, serves to
establish its standing to bring this proceeding. Id. Thus, and
because International Class 18 of opposer's Reg. No. 2,835,662
includes goods which, on their face, are identical in part and
otherwise are the most closely related to applicant's goods, the
focus of our determination is on the issue of whether applicant's
"Volks-bagen" mark, when used in connection with the "backpacks,
totebags, [and] luggage" items set forth in his application, so
resembles opposer's "VOLKSWAGEN" mark for, inter alia, "goods
made from leather and imitations of leather, namely, valises,
wallets, suitcases, executive cases, bags, namely, all purpose
athletic bags, all purpose sports bags, ... beach bags, book

states that opposer's "record of evidence only references its own
registrations."

12 See footnote 6.

Opposition No. 91165323
6
bags, carry-on bags, cricket bags; luggage; luggage trunks; ...
[and] key cases," as listed in International Class 18 of its Reg.
No. 2,835,662, as to be likely to cause confusion, mistake or
deception as to source or sponsorship.
Determination of the issue of likelihood of confusion
is based upon consideration of all of the pertinent factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), for which there is evidence in the
record. 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). However,
as indicated in Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.13 Such
considerations, in this proceeding, are the only du Pont factors
for which there is any evidence with respect thereto in the
record.
Turning first to consideration of the du Pont factor
which pertains to the similarity or dissimilarity of the goods at
issue, opposer argues in its main brief that the goods listed in
its Reg. No. 2,835,662 "include all purpose athletic bags and all

13 The court, in particular, pointed out that: "The fundamental
inquiry mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the
marks." 192 USPQ at 29.

Opposition No. 91165323
7
purpose sports bags in International Class 18" (underlining in
original). Because applicant's mark "is sought to be registered
for backpacks, tote bags and luggage in International Class 18,"
opposer contends that "[t]he goods in the opposed application and
Opposer's registration are identical and issuance of a
registration will cause a likelihood of confusion with respect to
the source of these goods." Although applicant, in his brief,
asserts that opposer "is engaging in speculation by stating that
its products ... are similar" to applicant's goods and maintains
that, while opposer "can only rely on the identification of goods
to make this assumption, ... it has not provided any evidence to
support its claim that the products under the marks will be the
same price and will be marketed to the same consumers."
It is well settled, however, that the registrability of
an applicant's involved mark must be evaluated on the basis of
the identification of the goods as set forth in the subject
application and the identification(s) of the goods as recited in
the registration(s) made of record by the opposer for its mark,
regardless of what the record may (or may not) reveal as to the
particular nature of the respective goods, their actual channels
of trade, or the classes of purchasers to which they are in fact
directed and sold. See, e.g., Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); and Canadian Imperial Bank of Commerce, N.A. v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir.
1987). It is also well established that, absent any specific
limitations or restrictions in the identification(s) of goods as
Opposition No. 91165323
8
listed in an applicant's subject application and in the
identification(s) of goods as set forth in the opposer's
registration(s), the issue of likelihood of confusion must be
determined in light of a consideration of all normal and usual
channels of trade and methods of distribution for the respective
goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne Products Co.
v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973).
Here, as broadly identified in the subject application
and the most pertinent of opposer's registrations, it is obvious
that, on their face, the goods identified as "luggage" in
applicant's application are legally identical to or encompass in
all respects the goods identified as "suitcases," "luggage" and
"luggage trunks" in opposer's registration and that, at a
minimum, the goods listed as "backpacks" and "totebags" in such
application are closely related in their nature and use to the
goods set forth as "beach bags, book bags, [and] carry-on bags"
in opposer's registration. Furthermore, as identified, neither
parties' goods contain any express limitation or restriction as
to types of purchasers or channels of distribution. Thus,
insofar as the respective goods of the parties are identical or
otherwise closely related, such goods would be sold to the same
classes of purchasers, including ordinary consumers, through
identical channels of trade, including department stores and mass
merchandisers. Clearly, if such goods were sold under the same
Opposition No. 91165323
9
or similar marks, confusion as to the source or sponsorship
thereof would be likely to occur. The du Pont factor pertaining
to the similarity or dissimilarity of the goods at issue
therefore favors opposer.14
As to the du Pont factor which pertains to the
similarity or dissimilarity of the respective marks in their
entireties as to appearance, sound, connotation and commercial
impression, opposer insists in its main brief that "[t]he only
difference between the marks is the substitution of the soft 'W'
in Opposer's mark for the soft 'B' in Applicant's mark." In view
thereof, and since, as "evidenced by [the pages from] Cassell's
German dictionary submitted by Applicant ..., there is no German
Word 'Bagen,'" opposer urges that its mark and applicant's mark,
"in their entirety, are similar as to appearance, sound and
commercial impression" and that "confusion between the two is
inevitable."15 Applicant, on the other hand, maintains in his
brief that inasmuch as "the issue of this opposition sits
squarely on the common and suggestive nature of the words 'volks'
and 'wagen,' and the differences in the sound, appearance and

14 Plainly, given the absence of any limitations or restrictions in the
identifications of the respective goods, the related du Pont factors
of the similarity or dissimilarity of established, likely to continue
trade channels and the conditions under which and buyers to whom sales
are made likewise necessarily favor opposer and a finding of a
likelihood of confusion.

15 While opposer, as to the du Pont factor concerning any other
established fact probative of the effect of use, asserts in its main
brief that, "[c]learly, the adoption of the mark VOLKS-BAGEN by
Applicant was solely to have a mark similar to Opposer's mark and
trade off the good name and world famous notoriety of Opposer's mark,"
the record contains no evidence which suffices to demonstrate that
applicant's adoption of and intent to use his mark were due to an
attempt to trade upon opposer's mark and hence were in bad faith.

Opposition No. 91165323
10
commercial impression of the words 'volkswagen' and 'volks-
bagen,' ... the dissimilarity of the marks is a key factor in
determining that there is no likelihood of confusion."
Specifically, as to opposer's assertion that "the only
difference in the marks is the substitution of the soft 'W' in
Volkswagen's mark for the soft 'B' in Mentken's mark," applicant
argues that, in light of the evidence of record (emphasis in
original):
Volkswagen can only establish similarity
between VOLKSWAGEN and VOLKS-BAGEN based on
the shared use of the prefix component
"volks." The marks clearly differ in their
suffix words, "wagen" and "bagen," and in
overall sound, appearance and meaning. In
fact, "wagen" is a German word meaning "car,"
which suggests the automobiles provided by
Volkswagen under its registrations, while
"bagen" is a coined term which, by its sound
and appearance, clearly refers to bags. ....

The only shared component of VOLKSWAGEN
and VOLKS-BAGEN is the prefix word "volks,"
which is a German word for "people."
VOLKSWAGEN is a suggestive word defined in
English as "people's car", while VOLKS-BAGEN
has no specific meaning, but can be construed
to refer to people's bags. .... For
Volkswagen to say that the marks are
confusingly similar based on the shared
prefix "volks," a suggestive word translated
as "people" in English, means that it alleges
to hold dominion over all "volks" marks with
all types of suffixes for all products. That
generalization cannot stand when the overall
sound, appearance and connotation of the
marks differ, as they do with VOLKSWAGEN and
VOLKS-BAGEN.

Mentken believes the differences in the
marks are sufficient to create dissimilar
commercial impressions, especially since
"volks" is a suggestive word referring to
"people," and "wagen" suggests "car."

Opposition No. 91165323
11
....

.... The mere fact that Mentken and
Volkswagen's marks both include "volks" is
not enough for a finding for a finding of
likelihood of confusion, given the weakness
and descriptiveness of "volks" and the
specific differences in sound, appearance and
meaning of "wagen" and "bagen." Volkswagen
states that the marks differ by a soft "W"
and a soft "B." Mentken respectfully
disagrees by stating that the "B" is a hard
consonant which changes the sound of "bagen"
and "wagen," and the hyphen between "volks"
and "bagen" further differentiates VOLKSWAGEN
from VOLKS-BAGEN in appearance. .... In
this case, the underlying marks are clearly
dissimilar in sound, appearance and
connotation, when considered in their
entireties, thus conveying separate overall
commercial impressions.

Applicant also points out that the record contains
evidence of third-party "registrations using 'volks' or 'volk' in
connection with various products and services." Such
registrations include the following: the mark "VOLKSCROWN" for
"pharmaceutical and sanitary preparations for dental use in
supporting dental teeth restorations"; the mark "VOLKSCOPE" for
"consulting services in the field of electrical system analysis
and testing for others"; the mark "VOLKSWINE" for "wine"; the
mark "VOLKS-GURKEN" and design for "German style fresh dill
pickles"; the mark "VOLK" for "ophthalmoscopy lenses"; the mark
"VOLKSKAFFEE COFFEE ON THE MOVE" for "coffee and espresso"; the
mark "VOLKSGARDEN" for, inter alia, "hydroponic planting mediums;
fertilizers and growth enhancers for plants"; and the mark
"VOLKSBETT" for "bed frames [and] beds." Applicant contends, in
view thereof, that (citations omitted):
[C]onsumers are familiar with the use of
"volks" and, therefore, this portion of the
Opposition No. 91165323
12
underlying marks ought to be given a narrow
scope of protection. .... Further, these
third-party registrations are relevant to
show that "volks" expresses a connotation and
translation relating to ... products for
everyone (or people) and is so commonly used
that the public will look to other elements
to distinguish the source of the goods,
including, but not limited to, the other
different letters that compose VOLKSWAGEN and
VOLKS-BADEN. ....

Accordingly, as the facts indicate
[that] "volks" is a diluted and weak prefix,
and that the marks differ in sound,
appearance and commercial impression based on
the differences in "-BAGEN" and "WAGEN," this
factor strongly favors Robert Mentken.

We disagree. Instead, we concur with opposer that,
when considered in their entireties, the marks at issue are
confusingly similar. In this regard, it must be kept in mind
that, as indicated in Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1994), "[w]hen marks would
appear on virtually identical goods ..., the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines." Here, as noted previously, applicant's
goods are identical in part and otherwise closely related to
certain of opposer's goods in International Class 18. Thus,
while there are minor differences between applicant's mark
"Volks-baden" and opposer's mark "VOLKSWAGEN" which are apparent
upon a side-by-side comparison,16 the respective marks overall are

16 Such a comparison, however, is not the proper test to be used in
determining the issue of likelihood of confusion since it is not the
ordinary way that consumers will be exposed to the marks. Rather, it
is the similarity of the general overall commercial impression
engendered by the marks which must determine, due to the fallibility
of memory and the consequent lack of perfect recall, whether confusion
Opposition No. 91165323
13
substantially similar in sound and appearance, given that
applicant's mark differs from opposer's mark only by the presence
of the letter "B" instead of the letter "W" and a hyphen
connecting the terms which comprise his mark. The marks at
issue, furthermore, are substantially similar in connotation and
commercial impression.
Specifically, as to similarity or dissimilarity in
sound, it is well settled that there is no correct pronunciation
of a mark. See, e.g., Gio. Budon & C. S.p.A. v. Buitoni Foods
Corp., 205 USPQ 477, 482 (TTAB 1979); Yamaha International Corp.
v. Stevenson, 196 USPQ 701, 703 (TTAB 1977); and Sterling Drug
Inc. v. Sankyo Co., Ltd., 139 USPQ 395, 396 (TTAB 1963).
Consequently, the letter "B" in applicant's mark is considered
susceptible to pronunciation as a "soft 'B' just as the letter
"W" in opposer's mark may be pronounced as a "soft 'W'". The
term "bagen," moreover, rhymes with the term "wagen." Both marks
also have the same number of syllables and each begins with the
identical term "volks." The respective marks, therefore, not
only sound substantially the same but, as to similarity or
dissimilarity in appearance, also look substantially the same.
Such similarities, moreover, are not affected by the presence or

as to source or sponsorship is likely. The proper emphasis is thus on
the recollection of the average purchaser, who normally retains a
general rather that a specific impression of trademarks or service
marks. See, e.g., Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller,
477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973); In re United Service
Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986); In re Solar Energy
Corp., 217 USPQ 743, 745 (TTAB 1983); Envirotech Corp. v. Solaron
Corp., 211 USPQ 724, 733 (TTAB 1981); and Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).

Opposition No. 91165323
14
absence of a hyphen. In addition, because opposer's mark is not
registered in any special form, the depiction thereof is not
limited to a particular manner of display. See, e.g., Phillips
Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971). Such registration consequently covers the use of
the "VOLKSWAGEN" mark by opposer in any reasonable style of
lettering, including "Volkswagen," which obviously is identical
to the upper and lower case format of applicant's standard
character form "Volks-bagen" mark.
As to the similarity of the respective marks in
connotation, applicant is essentially arguing a variation of the
doctrine of foreign equivalents in contending that his mark
differs in meaning from opposer's mark. However, as set forth by
our principal reviewing court in Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1696 (Fed. Cir. 2005), the doctrine of foreign
equivalents is not an absolute rule and should be applied only
when the "ordinary American purchaser would 'stop and translate
[the word] into its English equivalent.'"17 Here, there is no

17 Strictly speaking, the court noted that:

Under the doctrine of foreign equivalents, foreign
words from common languages are translated into English to
determine genericness, descriptiveness, as well as
similarity of connotation in order to ascertain confusing
similarity with English word marks. See In re Sarkli, Ltd.,
721 F.2d 353 [220 USPQ 111] (Fed. Cir. 1983); In re Am.
Safety Razor Co., 2 U.S.P.Q.2d 1459, 1460 (T.T.A.B. 1987)
(finding BUENOS DIAS for soap confusingly similar to GOOD
MORNING for shaving cream). When it is unlikely that an
American buyer will translate the foreign mark and will take
it as it is, then the doctrine of foreign equivalents will
not be applied. In re Tia Maria, Inc., 188 U.S.P.Q. 524
(T.T.A.B. 1975) (no likelihood of confusion between TIA
Opposition No. 91165323
15
evidence that the ordinary consumer of goods such as opposer's
suitcases, luggage, luggage trunks, beach bags, book bags and
carry-on bags and applicant's luggage, backpacks and totebags
would translate the German terms "volks" and "wagen" into their
literal English counterparts of, respectively, "people" and "car"
for the purpose of distinguishing between opposer's "VOLKSWAGEN"
mark and applicant's "Volks-bagen" mark.18 Neither term is a
cognate and there is nothing to indicate that those terms are so
commonly encountered in the marketplace that the average
purchaser of the respective goods, even if also possessed of a
basic familiarity with or casual understanding of German, would
stop and translate those terms so as to regard opposer's mark as

MARIA for a Mexican restaurant and AUNT MARY's for canned
vegetables).

....

Although words from modern languages are generally
translated into English, the doctrine of foreign equivalents
is not an absolute rule and should be viewed merely as a
guideline. In re N. Paper Mills, 64 F.2d 998, 999 (C.C.P.A.
1933); McCarthy on Trademarks, at §11:34. The doctrine
should be applied only when it is likely that the ordinary
American purchaser would "stop and translate [the word] into
its English equivalent." In re Pan Tex Hotel Corp., 190
U.S.P.Q. 109, 110 (T.T.A.B. 1976). ....

Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, supra at 73 USPQ2d 1696. Consequently, as to the marks "VEUVE
ROYALE" for sparkling wine and "THE WIDOW" for champaign, the court
stated that it "agrees with the T.T.A.B. that it is improbable that
the average American purchaser would stop and translate [the French
term] 'VEUVE' into [the English word] 'widow'" and thus found no
likelihood of confusion. Id.

18 Specifically, the pages from Cassell's German-English English-German
Dictionary (1978) show that "Volk" (or its plural "volk(e)s") means
"people, nation, tribe, race; soldiery, troops, men, crew; herd (of
beasts), flock (of birds), covey (of partridges etc.), swarm (of
bees); the common people, the lower classes; the populace or crowd,
the common herd, rabble," while "Wagen" means "van, truck, car, lorry;
wagon, cart, carriage (also of typewriters), coach, chariot."

Opposition No. 91165323
16
if it were "People's Car" and view applicant's mark as if it were
either "People's Bagen" or, because the term "bagen" has no
meaning in German, "People's Bag."
Instead, on this limited record, the average American
purchaser is most likely to regard the marks at issue as two
foreign terms which appear to be quite similar in meaning, given
that they differ only by a single letter. That is, to the extent
that an American consumer would ascribe any meaning to the
respective marks, such a purchaser or prospective customer would
probably treat the term "volks" as a cognate sounding like the
word "folks" (rather than "people" as applicant has asserted) and
would similarly regard the term "wagen" as a cognate signifying
the word "wagon" (instead of "car" as applicant has contended),
while the term "bagen" would be regarded as sounding like "bag"
(as applicant has admitted). Inasmuch as a wagon and a bag
plainly are both items used by persons or folks for carrying or
toting items, the marks "VOLKSWAGEN" and "Volks-bagen" could
reasonably be surmised as being substantially similar in
connotation.
Moreover, as to applicant's argument, based on various
third-party registrations for marks which are prefaced by the
term "VOLKS," that such registrations, like dictionary
definitions, demonstrate that opposer's mark is weak in the sense
that it is highly suggestive of its goods, see, e.g., Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95
(CCPA 1976), suffice it to say that applicant has failed to

Opposition No. 91165323
17
establish what it is that is highly suggestive about opposer's
mark, particularly when used for goods in International Class 18.
As noted by opposer in its reply brief, "the goods at issue are
not cars but [luggage items and] bags so that, even given
Applicant's flawed analysis, the mark VOLKSWAGEN is not
suggestive of [luggage items and] bags." While applicant
contends (as mentioned previously) that "these third-party
registrations are relevant to show that "volks" expresses a
connotation and translation relating to ... products for everyone
(or people)," the significance thereof in relation to the goods
at issue herein is simply not apparent. Nonetheless, even if
opposer' and applicant's marks were to be regarded as weak in the
sense of being highly suggestive of their respective goods, such
would not mean that opposer's mark is entitled to protection only
against the same or a virtually identical mark. Instead, it is
well established that even a weak mark is entitled to protection
against the registration of the same or a substantially similar
mark for identical and/or closely related goods, which is the
case with respect to applicant's "Volks-bagen" mark for
backpacks, totebags and luggage. See, e.g., In re Farah
Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278 (CCPA
1971) [even weak marks are entitled to protection where confusion
is likely]; and Plus Products v. Physicians Formula Cosmetics,
Inc., 198 USPQ 111, 114 (TTAB 1978). Here, both opposer's
"VOLKSWAGEN" mark and applicant's "Volks-bagen" mark are
substantially similar in their connotations, such that confusion
Opposition No. 91165323
18
would be likely even if the marks were considered to be highly
suggestive.
Lastly, because of their substantial similarities in
sound, appearance and connotation, as discussed above, opposer's
mark and applicant's mark would also engender a substantially
similar overall commercial impression, particularly when used in
connection with the same or closely related goods. The du Pont
factor of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial
impression accordingly favors opposer.
Turning next to applicant's argument, which is also
premised on the third-party registrations which he made of
record, that opposer's "VOLKSWAGEN" mark is a weak mark that is
entitled to a narrow scope of protection which does not encompass
applicant's "Volks-baden" mark, it is pointed out that such
argument, which essentially concerns the du Pont factor of the
number and nature of similar marks in use on similar goods, is
misplaced. Not only are none of the third-party registrations
for marks which cover luggage items or bags, but more
fundamentally, it is well settled that third-party registrations
are not evidence of what happens in the marketplace or that the
purchasing public is familiar with the use of the marks which are
the subjects thereof and has therefore learned to distinguish
those marks by the differences therein. See, e.g., National
Aeronautics & Space Administration v. Record Chemical Co., 185
USPQ 563, 567 (TTAB 1975). Such registrations therefore do not
show that the subject marks are actually being used, much less
Opposition No. 91165323
19
that the extent of their use is so great that customers have
indeed become accustomed to encountering the marks in the
marketplace and will differentiate "VOLKS-" prefixed marks by the
differences in their suffixes. See, e.g., Smith Brothers
Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973); and AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973), in
which the court indicated that:
[L]ittle weight is to be given such
registrations in evaluating whether there is
likelihood of confusion. The existence of
these registrations is not evidence of what
happens in the market place or that customers
are familiar with them nor should the
existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake or
to deceive.

See also Olde Tyme Foods, Inc. v. Roundy's Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) [third-party registrations
"may not be given any weight" (emphasis in original) as to the
strength of a mark]; and In re Hub Distributing, Inc., 218 USPQ
284, 285-86 (TTAB 1983). Accordingly, because there is no
evidence of any actual third-party use of "VOLKS-" formative
marks in the record to support applicant's position, the du Pont
factor which concerns the number and nature of similar marks in
use on similar goods is considered to be neutral rather than in
favor of applicant.
With respect to the du Pont factor of the fame of the
prior mark (including sales, advertising and length of use),
opposer in its main brief asserts that:
Opposition No. 91165323
20
Courts and Arbitration panels have
repeatedly recognized the mark "VOLKSWAGEN"
as being famous. Two such cases are Virtual
Works, Inc. v. Volkswagen of America, Inc.,
238 F.3d 264, 266 (4th Cir. 2001) and
Volkswagen of American, Inc. v.
Compugraphics; FA 0012000096265 (Nat. Arb.
Forum January 16, 2001). Copies of these
cases are attached as Exhibit C. Opposer has
registered the mark "VOLKSWAGEN" in the
United States as early as May 4, 1954 and has
continuously used and advertised the mark in
all fifty states. Opposer's mark enjoys a
high degree of recognition among the general
public and is now the subject of multiple
federal registrations. .... As evidenced by
Opposer's registrations, the "VOLKSWAGEN"
mark is applied to a wide range of products,
raising the awareness of the mark among
consumers.

Opposer, in view thereof, refers in its reply brief to its "world
famous mark" and "world famous brand."
Applicant, in his brief, raises the following
evidentiary objections to opposer's assertions:
Mentken objects to any claims made by
Volkswagen concerning the fame of its mark.
Volkswagen did not submit any evidence
regarding fame during the testimony period,
and the case law it references in its Exhibit
C only pertains to the fame of [the mark]
"VW". Furthermore, the case law in Exhibit C
pertains to an entirely different set of
facts [than] as [to] those presented in this
opposition--there is no discussion of the
fame of VOLKSWAGEN, a suggestive word in
connection with regard to automobiles ....
Furthermore, the mark at issue is VOLKS-
BAGEN, and there is no indication that any
alleged fame for VOLKSWAGEN carries over to
all "volks" prefix marks. Essentially,
Volkswagen is using case law for different
marks under different legal standards
(cybersquatting cases do not have the same
issues as oppositions), and is attempting to
shoehorn these cases into the fact pattern of
the instant application. Further, as
Volkswagen did not present any evidence [of
fame] during testimony, it should be
precluded from doing so in its opening brief.
Opposition No. 91165323
21
TBMP Section 705.02. Angelica Corp. v.
Collins & Aikman Corp., 192 USPQ 387 (TTAB
1976) ... (Evidence submitted for the first
time with a brief will not be considered);
Blue Man Productions Inc. v. Tarmann, 75
USPQ2d 1811 (TTAB 2005) (It is the duty of a
party asserting its mark is famous to clearly
prove it).

Moreover, applicant contends that because "no evidence has been
submitted by Volkswagen proving that the VOLKSWAGEN mark is
famous in connection with luggage and tote bags," it accordingly
is the case that "this factor must favor Mentken."
As noted by our principal reviewing court in Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506 U.S. 862,
113 S.Ct. 181 (1992), "the fifth duPont factor, fame of the prior
mark, plays a dominant role in cases featuring a famous or strong
mark. Famous or strong marks enjoy a wide latitude of legal
protection." The Federal Circuit reiterated these principles in
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000), stating that "the fifth DuPont factor, fame of
the prior mark, when present, plays a 'dominant' role in the
process of balancing the DuPont factors," citing, inter alia,
Kenner Parker Toys, 22 USPQ2d at 1456, and reaffirmed that
"[f]amous marks thus enjoy a wide latitude of legal protection."
Recognizing, however, that "[d]irect evidence of fame, for
example from widespread consumer polls, rarely appears in
contests over likelihood of confusion," the Federal Circuit has
also stated that "the fame of a mark may be measured indirectly,
among other things, by the volume of sales and advertising
expenditures of the goods traveling under the mark, and by the
Opposition No. 91165323
22
length of time those indicia of commercial awareness have been
evident." Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
However, in this proceeding, applicant is correct that
the record contains absolutely no evidence as to the asserted
fame of opposer's "VOLKSWAGEN" mark. As provided in TBMP §539
(2d ed. Rev. 2004):
Evidentiary material attached to a brief
on the case can be given no consideration
unless it was properly made of record during
the testimony period of the offering party.
If evidentiary material not of record is
attached to a brief on the case, an adverse
party may object thereto by motion to strike
or otherwise.

Copies of the two cases referred to by opposer in its main brief
and attached thereto as Exhibit C were not made of record during
trial. Moreover, not only are the findings of fact in such cases
not evidentiary matters for the purpose of establishing the
alleged fame of opposer's mark in this proceeding, but even if
they were, such findings pertain to determinations made over five
years prior to, instead of on or about, the March 11, 2006
closing date of opposer's initial testimony period and,19 as
accurately pointed out by applicant, concern cybersquatting
decisions relating to the mark "VW" rather than likelihood of
confusion actions involving opposer's "VOLKSWAGEN" mark. Mere

19 While whether, at a time previous to this proceeding, opposer's
"VOLKSWAGEN" mark was famous is indeed a fact which would be relevant
to the issue of likelihood of confusion, opposer must nonetheless
demonstrate with respect to the asserted fame of its mark that the
mark is or continues to be famous as of the closing of the trial phase
of this proceeding. Opposer has not introduced any evidence which
would suffice to constitute such a showing.

Opposition No. 91165323
23
ownership of several subsisting registrations, moreover, is not
evidence of the claimed fame of the mark which is the subject
thereof.
Applicant's evidentiary objections, in light of the
above, are thus well taken. As set forth in TBMP §704.06(b) (2d
ed. rev. 2004):
Factual statements made in a party's
brief on the case can be given no
consideration unless they are supported by
evidence properly introduced at trial.
Statements in a brief have no evidentiary
value, except to the extent that they may
serve as admissions against interest.

Accordingly, in view of opposer's failure to present any evidence
to support a claim of fame, such du Pont factor is considered to
be neutral in that not only does it not favor opposer but,
contrary to applicant's contention, it does not favor applicant
either. There is, instead, simply no proof of fame.
Finally, applicant argues as to the du Pont factors
pertaining to the nature and extent of any actual confusion and
the length of time during and conditions under which there has
been contemporaneous use of the respective marks without evidence
of actual confusion that "there is no evidence submitted by
either party that there has been any actual confusion."
Applicant insists, in view thereof, that "these factors favor
Mentken." While opposer has not addressed applicant's arguments
in either of its briefs, it is clear from the record herein that,
as stated by applicant in his answer to opposer's Interrogatory
No. 6, "[t]here have been no sales of products under [the mark]
VOLKS-BAGEN as yet." It is clear, therefore, that inasmuch as
Opposition No. 91165323
24
applicant has not sold any goods under his mark, there has been
no opportunity for any actual confusion to have occurred from the
contemporaneous use by applicant of his mark for backpacks,
totebags and luggage and the use by opposer of its "VOLKSWAGEN"
mark in connection with the same or closely related products.
Consequently, while the absence of any instances of
actual confusion over a significant period of time is indeed
indicative of no likelihood of confusion, it is meaningful only
where the record demonstrates appreciable and continuous use by
the defendant of its mark in the same market(s) as those served
by the plaintiff under its mark. See, e.g., Gillette Canada Inc.
v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992); and Chemetron
Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 541 (TTAB
1979). Specifically, there must be evidence showing that there
has been an opportunity for incidents of actual confusion to
occur. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Here, the sole evidence
pertaining to use establishes that, to the contrary, there has
been no chance for actual confusion to have occurred. There are
therefore no mitigating factors which favor applicant.20

20 Although applicant also contends that, because there is no evidence
of record which pertains thereto, all remaining du Pont factors (e.g.,
variety of goods on which a mark is or is not used (such as a house
mark, "family" mark or product mark), market interface between the
parties (such as a consent agreement), the extent to which applicant
has the right to exclude others from use of his mark on his goods, the
extent of any potential confusion, and any other established fact
probative of the effect of use) "strongly favor Robert Mentken,"
suffice it to say that absence of evidence is not evidence of absence
with respect thereto and, thus, such factors are neutral.

Opposition No. 91165323
25
Accordingly, because all of the pertinent du Pont
factors either favor opposer or are neutral, and none of such
factors favors applicant, we conclude that contemporaneous use by
applicant of the mark "Volks-bagen" in connection with backpacks,
totebags and luggage would be likely to cause confusion with use
by opposer of the mark "VOLKSWAGEN" in connection with its
identical in part and otherwise closely related suitcases, beach
bags, book bags, carry-on bags, luggage and luggage trunks.
Decision: The opposition is sustained and registration
to applicant is refused.