Volvo Trademark Holding ABv.Hebei Aulion Heavy Industries Co., Ltd.

Trademark Trial and Appeal Board

Feb 7, 2013

No. 91178297 (T.T.A.B. Feb. 7, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Volvo Trademark Holding AB
v.
Hebei Aulion Heavy Industries Co., Ltd.
_____
Opposition No. 91178281
Opposition No. 91178290
Opposition No. 91178297
Opposition No. 91178410
_____

Leigh Ann Lindquist of Sughrue Mion PLLC for Volvo Trademark Holding AB.

Robert A. Becker of Fross Zelnick Lehrman and Zissu PC for Hebei Aulion Heavy
Industries Co., Ltd.
_____

Before Grendel, Adlin and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Hebei Aulion Heavy Industries Co., Ltd. (applicant) filed applications to
register the mark LOVOL (in standard character form) and the mark set forth
below:

Opposition Nos. 91178281; 91178290; 91178297; and 91178410

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for goods identified as follows:
agricultural machines, namely, harvesters; construction
machinery, namely, road rollers; earth moving machines,
namely, excavators and loaders; bulldozers; concrete
mixers; cranes, grain threshing machines; rice
transplanting machines, in International Class 7;1
and
automobiles; land vehicles for transport for agricultural
use; motorcycles; rail vehicles, namely, derrick cars; cycle
cars; bicycles; electric land vehicles; engines for land
vehicles; fork lift trucks; concrete mixing trucks; tractors,
in International Class 12;2
Volvo Trademark Holding AB (“opposer”) opposed registration of each mark
under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s marks, when applied to applicant’s goods, so resemble opposer’s
previously used and registered mark VOLVO as to be likely to cause confusion,
mistake or deception. Opposer also alleged that applicant’s marks so resemble
opposer’s mark as to dilute the distinctive quality of opposer’s mark. Opposer has
not pursued this dilution claim.3
Opposer alleged that it is the owner of 20 U.S. registrations of the mark
VOLVO in various forms (including those stylized forms set forth below), and of

1 Application Serial Nos. 78866045 and 78866068, filed on April 20, 2006 on the basis of
applicant’s bona fide intention to use the mark in commerce, under Trademark Act § 1(b),
15 U.S.C. § 1051(b).
2 Application Serial Nos. 78866057 and 78866077, filed on April 20, 2006 on the basis of
applicant’s bona fide intention to use the mark in commerce, under Trademark Act § 1(b),
15 U.S.C. § 1051(b).
3 In an order of May 20, 2009, the Board found that opposer’s dilution claim was
“insufficiently pleaded,” and required that “If opposer intends to pursue dilution claims in
these consolidated proceedings, it must seek leave of the Board to amend its notices of
opposition to add properly pleaded claims thereof.” Opposer did not do so.
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common law rights in the trademark and trade name VOLVO, as used in connection
with automobiles, other vehicles, and various machines.

Applicant denied the salient allegations of the notices of opposition. The
Board, acting sua sponte, consolidated these proceedings by order of August 9, 2007.
The case has been fully briefed.
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the application files for the opposed marks. The record
also includes the following testimony and evidence:
A. Opposer’s Evidence.
1. Testimony deposition upon written questions of Monica Dempe,
opposer’s managing director and trademark manager, with attached
exhibits (“Dempe deposition”).

2. Notices of reliance upon the following documents:

(a) Title and status copies of twenty-one U.S. registrations for marks that
consist of or include the designation VOLVO. 4

4 Opposer made of record title and status copies of 21 registrations, of which 20 had been
pleaded. Opposer’s notices of opposition did not plead ownership of Reg. No. 3070455;
accordingly, we have not considered it. In addition, the title evidence relating to Reg. No.
1182050 (which covers “printed matter – namely automobile owners’ manuals”) indicates
that the registration is owned not by opposer, but by Aktiebolaget Volvo; accordingly, we
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(b) Applicant’s responses to three of opposer’s interrogatories.

B. Applicant’s Evidence.
1. Testimony deposition upon written questions of Li Xiao Gao,
applicant’s deputy chief brand officer, with attached exhibits (“Li
deposition”).

2. Notices of reliance upon the following documents:

(a) Opposer’s responses to seven of applicant’s interrogatories and one
request for admission, and two agreements produced by opposer in
response to applicant’s requests for production of documents.5

(b) Excerpts of results of Google searches for the terms “lovol” and “volvo.”

(c) TARR web server data relating to five U.S. registrations and one
pending application owned by third parties.

Standing
Opposer has properly made of record numerous pleaded registrations of its
VOLVO marks and has demonstrated its use of the mark VOLVO. Opposer has
thus shown that it is not a mere intermeddler and has established its standing to
oppose registration of the involved marks of applicant. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). We note also that
applicant, in its brief, has conceded opposer’s standing.6

have not considered that registration. Had we considered these two registrations, it would
not have affected our decision in this matter.
5 By stipulation of October 12, 2010, the parties agreed that these documents may be made
of record in accordance with TBMP § 704.11(7).
6 Applicant’s Brief at 11, fn. 5.
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Priority
In view of opposer’s ownership of valid and subsisting registrations of its
VOLVO marks, priority is not in issue with respect to the goods and services
identified in those registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, applicant has conceded
opposer’s priority and its ownership of rights in the VOLVO mark.7
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative 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).
The Fame of Opposer’s Mark.
In this proceeding, opposer maintains that its mark is famous and, as such,
“deserves… more legal protection than an obscure or weak mark.”8 Fame, if it
exists, plays a dominant role in the likelihood of confusion analysis because famous
marks enjoy a broad scope of protection. A famous mark has extensive public
recognition and renown. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Because of
the extreme deference that we accord a famous mark in terms of the wide latitude

7 Id.
8 Opposer’s brief at 25.
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of legal protection it receives, and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of the party asserting that its mark is famous to
clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007). Applicant concedes in its brief that “the VOLVO mark is
inherently distinctive and that it may also be strong.” However, applicant does not
concede fame, stating, “But not every strong mark is a famous mark.”9
Opposer’s demonstration of fame rests primarily on evidence of strong sales
of its goods and extensive advertising and marketing expenditures, as to which its
managing director/trademark manager, Monica Dempe, testified. As to her
testimony on this point, we note that Applicant, in a footnote to its brief, raises the
suggestion of a hearsay objection: “The absence of documentary evidence in the
record to support Ms. Dempe’s cited testimony… raises a hearsay issue and a
concern about the accuracy and reliability of the stated figures.”10 In our view, this
vague suggestion does not adequately state an evidentiary objection. Hearsay is an
“oral assertion,” a “written assertion,” or “nonverbal conduct” of a person who has
not testified. Fed. R. Evid. 801(c). Applicant does not challenge any particular oral
assertion, other than those of the witness who testified. Neither does applicant
challenge the admission of any particular document. No cognizable hearsay
objection arises from applicant’s suggestion. To the extent that it was intended as
an evidentiary objection, it is not well taken and is denied.

9 Applicant’s brief at 12.
10 Applicant’s brief at 13, n. 6.
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In her testimony, Ms. Dempe stated in dollar figures the annual amount of
sales in the United States of products under the VOLVO mark, excluding cars, for
the period 1999 through June 2009. Annual sales for full years ranged between
$5.2 billion and $2.3 billion. For 1997-1998, the dollar figures given included the
sale of cars, as that was the form in which the information was available. With
respect to cars under the VOLVO mark, she stated the annual unit sales in the
United States between 1996 and June 2009. For full years, the unit totals ranged
between approximately 124,000 and 73,000. For construction equipment and
trucks, separately, she provided annual U.S. sales figures in dollars between 2005
and 2009. For construction equipment, full year figures ranged between $1.1 billion
and $865 million; for trucks, full year figures ranged between $2.4 billion and $1
billion.11
In testimony designated as confidential, Ms. Dempe stated the annual
advertising and marketing expenditures for VOLVO products, excluding cars, in the
United States between 2005 and June 2009. Because these figures were designated
as confidential, we refer to them only in general terms. Separately, she stated the
annual advertising and marketing expenditures for VOLVO cars from 2000 through
June 2009. She stated that U.S. car dealers handling VOLVO cars expended “as
much” as opposer on advertising in any given year. For VOLVO trucks, she stated
the annual U.S. expenditures for print advertising between 2005 and 2009. For
construction equipment, she stated annual U.S. advertising and marketing

11 Dempe deposition, pp. 31-33.
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expenditures between 2004 and 2009.12 Ms. Dempe’s testimony also described, in
general terms, the various media through which opposer’s goods are advertised,13
and the record contains samples of opposer’s advertising materials. Opposer’s sales
and advertising figures are, objectively, substantial.
Applicant criticizes opposer’s effort to demonstrate fame, noting that raw
statistics, without some meaningful commercial context, make for an inadequate
showing. Applicant notes that there is no evidence of actual consumer recognition
of opposer’s mark; no evidence of how opposer’s sales and marketing expenditures
compare to others in its industry; and no evidence of opposer’s market share.14
Opposer’s showing of its sales and advertising expenditures relating to goods
under the VOLVO mark over a substantial period of time is a valid way of indirectly
demonstrating the mark’s fame. Bose, 63 USPQ2d at 1305-1306 and 1309. It is not
ideal, because of the lack of additional context pointed out by applicant. However,
for purposes of an analysis of likelihood of confusion, we find opposer’s showing
sufficient to demonstrate that opposer’s mark VOLVO enjoys a very high degree of
renown in the fields of automobiles, trucks and construction equipment. We need
not determine whether opposer has successfully crossed the threshold of “fame,”
because “fame” is not a required element of opposer’s claim (as it would be for a
claim of dilution under 15 U.S.C. § 1125(c)). Rather, we find that the renown of

12 Dempe deposition at 34-37
13 Id. at 37-39.
14 Applicant’s brief at 13-14.
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opposer’s mark weighs in favor of a finding of likelihood of confusion and affects our
balancing of all of the other du Pont factors.
The Goods.
Applicant “concedes for purposes of this case that the parties’ goods are
similar….”15 Indeed, several of the goods in the applications are identical to goods
covered by opposer’s pleaded registrations. In the Class 12 applications, applicant’s
goods include automobiles, fork lift trucks, concrete mixing trucks and tractors.
These goods are legally identical to goods in opposer’s Reg. Nos. 1220779 (cars,
trucks, tractor units, agricultural tractors, dump trucks); 636128 and 636129
(automobiles, truck tractors); 1815680 (automobiles, over the highway trucks and
tractors); and 3207372 (cars, trucks, tractors, truck tractors). In the class 7
applications, applicant’s goods include agricultural harvesters, and earth moving
machines, namely, excavators and loaders. These goods are legally identical to
goods in opposer’s Reg. Nos. 3207372 (harvesters, excavators, loaders, dumper
bodies); and 2794513 (earth moving machines, namely, wheeled excavators,
compact wheel loaders, crawler excavators, compact excavators, wheel loaders).
When identical goods are at issue, we bear in mind, as urged by opposer, that the
degree of similarity of the marks that is necessary to find likelihood of confusion is
not as great as where the goods are disparate. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-

15 Applicant’s brief at 12.
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Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007). Accordingly this du Pont factor weighs in favor of a finding of likelihood of
confusion.
Channels of Trade; Customers.
Because the goods at issue are in part identical, we must presume that the
channels of trade and classes of purchasers are the same. See American Lebanese
Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d
1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must be presumed to travel in
the same channels of trade, and be sold to the same class of purchasers.”). See also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Clearly
the universe of customers for the parties’ goods is very broad and includes members
of the general public. There is no evidence to suggest any special degree of
sophistication among purchasers of the parties’ goods.
Degree of Consumer Care.
While the goods at issue are to a significant extent identical, applicant
contends that the nature of the goods is a factor that weighs against a finding of
likelihood of confusion. In particular, applicant contends that the goods of the
parties are costly and accordingly would be selected with care.16 The prices of
opposer’s automobiles range from the low to high five figures; the prices of its trucks
range from the high five figures to low six figures; the costs of its construction

16 Applicant’s brief at 24-25.
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machines range from low five figures to high six figures.17 The prices of applicant’s
goods are in a comparable range. We agree with applicant that such goods are
likely to be purchased with significant care by the vast majority of consumers.
In addition, the sales process as described by the parties evidences that
consumers may exercise a high degree of care. Opposer’s witness testified, “All
Volvo products are sold in the U.S. through dealers and distributors. This includes
car dealers and distributors, truck dealers and distributors, bus dealers and
distributors and dealers and distributors of construction equipment.”18 Applicant
argues, “To buy either party’s products, a consumer must go to a dealer or a
distributor, must interact with a member of a specialized sales force, and must sign
a contract. The consumer does not just go into a store aisle, pick up a product, and
bring it to the cash register. The general sales model requires assistance, and this
minimizes confusion.” Applicant further argues that “consumers understand that
car dealers and distributors often sell vehicles from many manufacturers. …
[C]onsumers who go to a dealer or car distributor and see numerous brands are not
going to believe, simply because all of the cars are sold by the same dealer, that they
come from the same source.”19 Opposer has acknowledged that its U.S. dealers and
distributors sell other brands beside the VOLVO brand.20

17 Opposer’s supplemental response to applicant’s interrogatory No. 1. The figures
discussed were designated as confidential.
18 Dempe deposition at 30.
19 Applicant’s brief at 27-28.
20 Dempe deposition at 30.
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To counter applicant’s argument, opposer points to internet advertising by
automotive dealers (Dempe deposition Exhibit 27), and argues that “Inventory
searches are available online, quotes may be received by email, and a car or truck
can be shipped directly to the purchasers.”21 Accordingly, “Purchasers of cars,
trucks and other vehicles never have to visit a dealer’s showroom.”22 A fair reading
of the content of Exhibit 27 does not indicate that internet sales of cars and heavy
equipment, unmediated by customer contact with sales personnel, constitute a
usual channel of trade for such goods; nor does it suggest that the high degree of
care that typically attends purchases of costly equipment would be absent from
sales transactions that involve the internet. We agree with applicant that the high
cost of the parties’ goods and the likelihood of customer interaction with sales
personnel in the expected trade channels for the goods weigh against a finding of
likelihood of confusion.
Other Marks in the Marketplace.
Applicant has adduced evidence intended to demonstrate that opposer has
tolerated the existence of other marks that include the formative VOL- as the initial
portion of the mark. This evidence is anecdotal at best, and does not provide a
meaningful view of the state of the marketplace and “the number and nature of
similar marks in use on similar goods.” Du Pont, 177 USPQ at 576. While we give
little weight to this evidence, it does weigh against a finding of likelihood of
confusion, if only weakly.

21 Opposer’s reply brief at 7.
22 Id.
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The Similarity or Dissimilarity of the Marks.
The remaining question is whether, in the circumstances indicated by the
factors discussed above, the marks at issue are sufficiently similar in terms of
appearance, sound, meaning, and overall commercial impression to result in
confusion, mistake or deception among likely customers.
As to appearance, the two marks resemble each other to the extent that each
is five letters long and is composed of a combination of the letters V, O, and L.
Moreover, the formative VOL appears in both marks, albeit positioned differently
within the respective marks. Visually, however, the marks also differ in a number
of ways. As applicant notes, its mark LOVOL is a palindrome: its letters read the
same from left to right as from right to left. This lends applicant’s mark a visual
symmetry that is absent from opposer’s mark VOLVO: the beginning and ending L’s
of applicant’s mark balance each other as do the symmetrically placed O’s.
Applicant also notes that the first letters of the marks differ, as do the last letters.
With respect to sound, we assume that each mark is susceptible to varying
pronunciations. For example, in each mark, the letter O in the syllable VOL- might
be pronounced long, as in “vole,” or short, to rhyme with “all.” In applicant’s mark,
the letter O in the initial syllable might be pronounced long, as in “stove,” or short,
as in the word “law”; it might also be pronounced to rhyme with “love.” Without
question, the fact that the two marks share the common letter string VOL creates
the possibility that the two marks will have some phonetic similarity. However,
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otherwise the marks are apparently phonetically different and there is no objective
evidence to indicate that their pronunciations would be similar.
With respect to meaning, we note that LOVOL, in itself, has no meaning.23
Although the mark was derived obliquely from certain Chinese characters, as
explained by applicant,24 there is nothing in the mark to apprise the public of that
derivation, so it will have no impact on the public’s perception of the meaning of the
mark. As for VOLVO, we note that some of opposer’s registrations indicate that
“the term ‘VOLVO’ means in Latin ‘I am rolling.’”25 As Latin is a not a living
language, it is questionable whether a substantial segment of relevant customers
would be aware of this meaning. To the extent that opposer’s mark is perceived as
having a meaning, that meaning would tend to distinguish it in the minds of the
public from applicant’s mark, which has no meaning. We also note that the
formative VOLV is suggestive of common English words such as “revolve,” and
“evolve,” and that this suggestiveness may distinguish opposer’s mark from
applicant’s mark, which lacks such a suggestiveness.
Overall, we find it unlikely that customers of normal perceptual abilities
would mistake one mark for the other, even if the marks are used in connection
with identical goods. We also see no reason why average customers would perceive
a relationship or other connection between the two marks, or between opposer and
applicant. We have considered whether opposer’s prominence in the relevant

23 Li deposition at 11.
24 Id. at 8-11.
25 E.g., Reg. Nos. 636128; 636129; 1159545; and 1220779.
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marketplace would increase the likelihood that customers would erroneously
assume an association or connection of any kind between opposer and the LOVOL
mark, but we find such an error unlikely. While it is possible that applicant’s mark
might call to mind the well-known VOLVO mark, nothing in this record indicates
that customers would be likely to experience confusion, mistake or deception within
in the meaning of Section 2(d) of the Trademark Act.
Decision: The consolidated oppositions are dismissed with prejudice.