Americar Rental System, Inc.v.David A. Vickman

Trademark Trial and Appeal Board

Dec 7, 1999

No. 91106979 (T.T.A.B. Dec. 7, 1999)

Paper No. 21
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 14, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Americar Rental System, Inc.
v.
David A. Vickman
_____
Opposition No. 106,979
to application Serial No. 75/152,708
filed on August 19, 1996
_____
Bruce A. Tassan of Tassan Law Firm for Americar Rental
Systems, Inc.
John H. Wiegenstein of Heller Wiegenstein P.L.L.C.
for David A. Vickman.
______
Before Cissel, Wendel, and McLeod, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
David A. Vickman filed an application to register the
mark AMERICAB for “taxi transport services; and
transportation of passengers and freight by automobile,
limousine, bus and truck.”1

1 Serial No. 75/152,708, filed August 19, 1996, based on an
allegation of a bona fide intention to use the mark in commerce.
Opposition No. 106,979
2
Americar Rental System, Inc. filed an opposition to
registration of the mark on the ground of likelihood of
confusion under Section 2(d) of the Trademark Act. Opposer
alleges use since 1963, either directly or through
predecessors-in-interest, of the mark AMERICAR for valet
airport parking services, automobile cleaning services,
automobile rental and leasing services, limousine services
and automobile dealership services; ownership of
Registration Nos. 800,009 and 1,959,537 for the mark; and
the likelihood of confusion if applicant were to use the
mark AMERICAB for the services identified in the
application.
Applicant in his answer denied the salient allegations
of the notice of opposition.
The record consists of the file of the involved
application; opposer’s trial testimony deposition of Patrick
M. Tucci, an officer of opposer; certified status and title
copies of three registrations owned by opposer made of
record by opposer’s notice of reliance;2 and opposer’s

2 Registration No. 800,009, issued December 7, 1965, for the mark
AMERICAR for leasing and renting of vehicles. Section 8 & 15
affidavits accepted and acknowledged, respectively; first renewal
December 7, 1985.
Registration No. 1,959,537, issued March 5, 1996, for the mark
AMERICAR for valet airport parking services and automobile
cleaning services in Class 37; for automobile rental and leasing
services and limousine services in Class 39; and for automobile
dealership services in Class 42.
Registration No. 2,017,332, issued November 19, 1996 for the
mark AMERICAR RENTAL SYSTEM and design for automobile cleaning
services in Class 37; automobile renting, leasing, limousine and
Opposition No. 106,979
3
responses to applicant’s interrogatories and production
requests made of record by applicant’s notice of reliance.3
Both parties have filed briefs, but an oral hearing was not
requested.
The Record
Opposer uses its mark AMERICAR in connection with car
rental and leasing services, airport valet parking,
limousine and bus charter and courier services, car care and
laundry services, and car sales. The services of opposer
which are most similar to taxi transport services are the
airport shuttling services provided as part of its valet
parking and the shuttling of its car rental customers to and
from hotels, homes, airports and the like. (Tucci
deposition (TD) 7:8-12). Opposer’s mark is used directly on
its vehicles, by decal identification on the vehicles, signs
on the rooftops, window signs, illuminated signs on the
dashboard and the like, in order to permit identification by
persons waiting for them. (TD 7:20-26–8:1-8). Opposer also

airport valet parking services in Class 39; and for automobile
dealership services in Class 42. A disclaimer has been made of
the phrase RENTAL SYSTEM.
We note that opposer only pleaded ownership of the first two
registrations in the notice of opposition. Since applicant has
raised no objection to opposer’s reliance upon the third, we have
taken all three under consideration in rendering our decision.
3 A notice of reliance is not the proper means for introducing
documents produced during discovery. See Trademark Rule
2.120(3)(ii). Since opposer has failed to object to applicant’s
introduction of the documents in this manner, however, we have
considered the same.
Opposition No. 106,979
4
leases vehicles to companies such as limousine companies,
taxicab companies or companies using 15-passenger vans, for
use by these companies in providing transportation to the
public. All of these vehicles are marked with the AMERICAR
mark. (TD 8:9-22). Opposer advertises through the global
distribution system operated by the airlines and by direct
advertising to travel agencies, travel agency organizations,
hotels, airlines, train operators, cruise ship lines, as
well as by ads in in-flight magazines, travel agent
publications and the USA Today newspaper. (TD 5:11-24). A
summary of advertising and promotional expenses for the year
1996 shows expenses in the range of $225,000. (Exhibit 1).
The Opposition
Priority is not an issue here, in view of the certified
status and title copies of its registrations which opposer
has made of record. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, we turn to the issue of likelihood of confusion
and to those of the du Pont factors which are relevant under
the present circumstances.4
Considering first the similarity or dissimilarity of
the marks AMERICAR and AMERICAB, we agree with applicant to
the extent that the endings –CAR and –CAB of the two marks
Opposition No. 106,979
5
are two distinct words with separate connotations. However,
although a side-by-side comparison of the marks would make
this difference apparent, this is not the proper test for
determining the likelihood of confusion.5 This is
particularly true in the present case, where consideration
must be given to the fact that applicant’s mark is intended
to be used, as opposer’s is being used, in connection with
transportation services being offered to travelers in
locations such as airports, hotels, or even busy city
streets. As pointed out by opposer, the letters “R” and “B”
could easily be mistaken for one another, particularly when
viewed on a vehicle at a distance or in the rush of traffic.
Opposer has established that its mark is used directly on
its vehicles, in the same manner as the normal taxi cab.
Thus, we find the high degree of similarity in appearance of
the marks to be a very significant element here and to weigh
in opposer’s favor. See In re Lamson Oil Co., 6 USPQ2d 1041
(TTAB 1987)[similarity in appearance of marks TURCOOL and
TRUCOOL sufficient in itself to indicate likelihood of
confusion]. Furthermore, even though the endings -CAR and

4 See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
5 See In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988)[test is not whether the marks are distinguishable upon
side-by-side comparison, but rather whether they so resemble one
another as to be likely to cause confusion].
Opposition No. 106,979
6
-CAB have separate dictionary meanings, there is obviously a
close relationship between a “car” and a “cab.” The
similarity in connotation, both being recognized terms for a
means of transportation, results in similar overall
commercial impressions for the marks, especially because it
is general, rather than specific, impressions of marks which
are retained by purchasers over a period of time. See In re
Mucky Duck Mustard Co., Inc., supra.
Furthermore, although applicant urges the Board to take
judicial notice of the frequent use of the words “America”
and “car” in the motor vehicle and transportation
industries, this is not the type of adjudicative fact which
falls within the scope of judicial notice. See FRE 201(b).
Applicant made no evidence of record to support any argument
that opposer’s mark is weak or only entitled to minimal
protection. Accordingly, opposer’s mark warrants the full
scope of protection afforded it under Section 2(d).
Turning to the services offered by the parties, opposer
argues that these services are closely related, if not
identical, and are rendered in the same channels of trade
and promoted to the same prospective customers. Applicant,
on the other hand, contends that there is no overlap of
services, in that opposer has admitted that it does not use
Opposition No. 106,979
7
its mark in connection with taxi services.6 Applicant
further contends that opposer primarily serves travelers
renting cars in connection with airport travel, not the
general public served by applicant.
In the first place, both opposer’s registrations and
applicant’s application cover limousine services. Although
applicant argues that there is nothing in the record to
support opposer’s actual provision of limousine services,
this is not the case. Mr. Tucci testified to the provision
of AMERICAR limousine services (TD 7:9), and opposer’s
response to applicant’s Interrogatory No. 3 (see footnote 5)
specifically refers to limousine services.7
Even more significantly, it is well settled that the
respective services need not be identical, or even
competitive, to support a finding of likelihood of
confusion; it is sufficient if the services are related in
some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under situations that would

6 In response to applicant’s interrogatory No. 3, asking whether
opposer had ever engaged in the business of providing taxi cab
services, opposer stated “No, only taxi cab like, airport valet
and limousine services.”
7 Applicant’s offer in its brief to delete such services from its
identification of services has been given no consideration. Only
if applicant had filed a motion to amend prior to the trial
period so as to give opposer fair notice of this proposed
amendment would the Board consider the amendment under the
provisions of Section 18 of the Trademark Act. See TBMP §
514.03. Even if properly before the Board, however, an amendment
of this nature would not change the outcome of the case.
Opposition No. 106,979
8
give rise, because of the marks used in connection
therewith, to the mistaken belief that they originate from
or are in some way associated with the same source. See In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Although applicant argues that opposer’s transportation
services are not taxi cab services, resolution of this issue
is clearly not dispositive of whether or not a relationship
exists between the services of the parties. Opposer’s valet
airport parking services include shuttle service to and from
the airport. Opposer’s car rental services include shuttle
service to the airport, hotel or the like. These services,
which have been described as “taxi-cab like,” would very
likely be encountered by the same persons who would at some
point avail themselves of applicant’s taxi cab services,
whether at an airport or elsewhere. Applicant’s attempt to
distinguish between opposer’s customers as being travelers
renting cars at airports and applicant’s being the general
public has no basis in reason. It would be difficult to
find a member of the general public who has not at some time
been a traveler using an airport, and if not using car
rental services, at least being familiar with these rental
services, as well as valet airport parking services.
Looking at the matter from the other viewpoint, there is no

Opposition No. 106,979
9
reason to believe that applicant’s taxi cab services would
not be encountered at airports by the same travelers
accustomed to using car rental services and valet parking
services. Thus, we find the services of the parties to be
closely related and to be offered to the same customers,
namely, the public in general.
In addition, we agree with opposer that these are
services which are often hurriedly procured by travelers
without close consideration to the marks under which they
are being offered. The costs are not so great as to result
in extended deliberation over engagement of a particular car
rental service, limousine service or taxi cab service. The
similarities of the services involved, the similarity of the
customers to which they are offered and the spontaneity with
which the services are engaged all weigh in opposer’s favor.
Accordingly, we find that there would be a likelihood
of confusion if the closely related transportation services
of the parties were offered to the public under the similar
marks AMERICAR and AMERICAB.
Decision: The opposition is sustained and registration
is refused to applicant.
R. F. Cissel
H. R. Wendel
Opposition No. 106,979
10
L. K. McLeod
Trademark Administrative Judges,
Trademark Trial and Appeal Board