Autobytel Inc.v.Auto By Rent, Inc.

Trademark Trial and Appeal Board

Jul 28, 2011

No. 91180067 (T.T.A.B. Jul. 28, 2011)

Mailed: July 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Autobytel Inc.
v.
Auto By Rent, Inc.
_______

Opposition No. 91180067
to Application No. 78936614
_______

Steven J. Nataupsky, Michael K. Friedland, Tirzah Abe Lowe
and Lauren Keller Katzenellenbogen of Knobbe, Martens, Olson
& Bear, LLP for Autobytel Inc.

Joseph L. Johnson and James H. Jeffries of Lathrop & Gage,
for Auto by Rent, Inc.
_______

Before Bucher, Ritchie, and Lykos, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Autobytel Inc. (“opposer”) filed an opposition to the
application of Auto by Rent, Inc. (“applicant”) to register
the mark AUTO BY RENT, as shown below, for “automobile
dealerships,” in International Class 35:1

1 Application Serial No. 78936614, filed July 25, 2006, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging dates of first
use and first use in commerce on July 1, 2004, and disclaiming the
exclusive right to use the term “AUTO” apart form the mark as shown.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91180067
2

As grounds for opposition, opposer asserts that applicant’s
mark, when applied to applicant’s services, so resembles
opposer’s previously used and registered mark

as to be likely to cause confusion, under Section 2(d) of
the Trademark Act. The mark is registered for “electronic
billboard advertising in the field of automobile and truck
sales and leasing; computerized data base management in the
field of automobile and truck sales and leasing; independent
sales representative services in the field of automobiles
and truck sales and leasing; shopper's guide information in
the field of automobile and truck sales and leasing; and
referrals in the field of automobile and truck sales and
leasing” in International Class 35; “delivery of messages by
electronic transmission in the field of automobile and truck
sales and leasing; and electronic transmission of data and
documents via computer terminals in the field of automobile
and truck sales and leasing,” in International Class 38; and
“computerized on-line ordering of automobiles and trucks via
Opposition No. 91180067
3
telephone,” in International Class 42.2 Opposer also
pleaded likelihood of confusion with other previously
registered marks, including AUTOBYTEL, AUTOBYTEL.COM and
design, AUTOBYTEL NETWORK, and AUTOBYTEL CONNECT.3 (Notice
at Para. 1). Opposer further pleaded dilution of “the
distinctive quality of Opposer’s famous marks.” (Id. at
Para. 25).
Applicant, in his answer, denied the salient
allegations of the claims.
The Record
The record consists of the pleadings; the file of the
involved application; and the following:
1. Opposer’s notice of reliance, making of record,
among other things:

2 Registration No. 2028377. Sections 8 and 15 affidavits accepted and
acknowledged. Renewed.
3 In its trial brief, opposer contends that it offers its vehicle sale
services in connection with its “family” of marks. As admonished in the
Board’s February 18, 2010 order denying opposer’s motion for summary
judgment, however, opposer did not specifically plead ownership of a
“family” of marks in its notice of opposition, nor did opposer plead a
particular characteristic common to each of its pleaded marks. We have
therefore not considered this argument. We would further note that
besides not properly pleading ownership of a family of marks, opposer
has certainly not proven the common characteristics of a family of
marks. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991). Nevertheless, we also note that
applicant, in its trial brief, proceeded with its defense based on an
analysis of each of the pleaded marks individually. We likewise proceed
with this decision on the basis of the individually pleaded marks. To
the extent that applicant may have objected to opposer’s not having
proceeded on such basis in opposer’s brief, applicant’s objection is
waived. Meanwhile, we further note that we do not accept as amended
pleadings (nor were we asked to) the additional, unpleaded marks added
by opposer in its Notice of Reliance and mentioned in opposer’s (but not
applicant’s) brief. We proceed only on the individual marks pleaded in
the original notice of opposition, which continues to be the operative
notice in this proceeding.
Opposition No. 91180067
4
a. Status and title copies of opposer’s
Registrations Nos. 2028377, 2247035, 2407767,
2759537, 2861329, 2954836, 3024275 and 3330365.4
b. Certain of applicant’s responses to opposer’s
first set of requests for admissions and
opposer’s first set of interrogatories.
2. Opposer’s testimony depositions of:
a. Mr. Mark Garms, Opposer’s Executive Vice-
President and Chief Operating Officer, dated
April 9, 2010;
b. Garms deposition dated April 23, 2010; and
c. Garms deposition dated October 27, 2010.5
3. Applicant’s notice of reliance, making of
record, among other things:
a. A printout of third-party Registration No.
78403814, for Auto-By-Owner.
b. Printed publications; specifically Internet
printouts showing a website controlled by
opposer.

4 As stated above, opposer did not plead all of these registrations. We
consider in our analysis, as did applicant in its trial brief, only
those registrations which opposer pleaded in its notice of opposition.
5 At the onset of the October 27 Garms deposition, applicant entered a
standing objection to the entire deposition as improper rebuttal
testimony, given that applicant had submitted no “evidence concerning
Autobytel’s mark or business.” (Oct. 27 Garms depo. at 198). This
objection might have been sustained and the October 27 Garms deposition
stricken from the record had applicant properly preserved the objection
in its trial brief. However, applicant instead stipulated the October
27 Garms deposition into the record along with the prior two depositions
as “evidence of record” which “applicant relies upon.” (App’s brief at
6). Accordingly, we deem the objection to be waived.
Opposition No. 91180067
5
c. Excerpts from applicant’s answers to opposer’s
first set of interrogatories, for purposes of
completing the record in accordance with
Trademark Rule 2.120(j)(5).
Standing and Priority
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made of record its pleaded
registrations for AUTO-BY-TEL, AUTOBYTEL, and others. This
establishes opposer’s standing. 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). In view of
opposer’s ownership of these valid and subsisting
registrations, there is no issue regarding opposer’s
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) must be based on
an analysis of all of the probative facts in evidence that
are relevant to the factors bearing on a likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
Opposition No. 91180067
6
396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Opposer
must establish that there is a likelihood of confusion by a
preponderance of the evidence.
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 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). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein. The relevant
du Pont factors in the proceeding now before us are
discussed below.
For our analysis of likelihood of confusion, we have
focused solely on Registration No. 2028377 pleaded by
opposer, since it covers the most relevant mark and the most
relevant services. If we find a likelihood of confusion
with applicant’s services vis-à-vis this mark, then the
analysis will be moot as to opposer’s other pleaded marks.
Likewise, if we do not, then we would not find it for the
others.
Opposition No. 91180067
7
Fame
Opposer claims that its marks, including
AUTO-BY-TEL, “have won substantial fame and recognition.”
(oppr’s brief at 11). Famous marks are accorded more
protection precisely because they are more likely to be
remembered and associated in the public mind than a weaker
mark. Kenner Parker Toys Inc. v. Rose Arts Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). A
famous mark is one “with extensive public recognition and
renown.” Id. See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005).
In determining whether a mark is famous, we may
consider relevant factors such as sales and revenue. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002); Blue Man Productions Inc. v.
Tarmann, 75 USPQ2s 1811, 1817 (TTAB 2005). Opposer’s
witness, Mr. Garms, in his April 9, 2010 deposition,
submitted evidence of opposer’s Form 10K to the Securities
and Exchange Commission, for the fiscal year ended December
31, 2003 (Exhibit 5), as well as for the Fiscal year ended
December 31, 2009 (Exhibit 38). The evidence shows revenues
down from about $90 million in 2003 to about $52 million in
2009, with marketing expenses also down from about $50
million in 2003 to about $10 million in 2009. (Garms April
Opposition No. 91180067
8
9 depo., Ex. 5 and 38). Opposer’s “overview” statement in
the 2009 10K described the flat sales and revenue as being
due to “the recession” and the “bankruptcy reorganizations”
being experienced by major car manufacturers Chrysler and
General Motors, impacting automobile dealerships, and, in
turn, referral services such as that run by opposer. Id.
Opposer’s evidence also shows advertisements in
magazines as diverse as Time magazine, Parents magazine, and
Working Women, in the 1999 time frame, as well as an
advertisement in Automotive News in 1999 “announcing that
Autobytel had won the award for providing the best service –
best online buying service according to J.D. Power.” (Garms
April 9 depo. at 92, and Ex. 9). The evidence further shows
articles in the Wall Street Journal, the Economist, USA
Today, Better Homes & Gardens, and other media, from the
1997-2000 timeframe. Id., Ex. 12-15. Opposer advertised
its “autobytel.com” website via commercials during the
Superbowl in 1997 and 1998. Id. at 72 and 73.
Opposer offered evidence that it was ranked “#2” of
“Top-Ranked Online Vehicle-Buying Services “in Consumers
Digest in 2000. Id. at 438. Opposer also offered evidence
that Forbes stated in a 2000 article, “Autobytel now
accounts for nearly 50% of online car sales.” Id. at 440.
Similarly, Ward’s Dealer Business: Online Exclusive in 2001
stated “Autobytel.com generates more vehicle sales online
Opposition No. 91180067
9
than any other web site according to J.D. Power and
Associates’ 2001 New Autoshop.com Study.”
There are two problems with the various evidence of
fame offered by opposer.6 First, much of the “fame” is
based on sales and revenue from its website, or websites.
It is unclear how much fame would be attributed to any
particular mark. Second, and more importantly, the vast
bulk of evidence of fame is over a decade old, relating back
to when the concept of an online car dealership referral
service was new and newsworthy. One might draw the
inference from the evidence offered by opposer that since
the late-1990s, the media has not been covering opposer’s
business and services in the news nearly to the extent of
the early heyday. With this record, and given the heavy
burden of proving fame, we cannot find that opposer has
satisfied that burden. Rather, we see what appear to be
flat sales and decreasing market exposure over the past
decade with the result of, what appears to be, if anything,
declining renown. Indeed, opposer’s own witness, Mr. Garms,
described the results of a 2010 consumer results survey (on
the confidential record) in less-than-positive terms, and
certainly less than 2003 levels. (Garms April 23 depo. at

6 Applicant made a “hearsay” objection to some of the evidence, such as
the Forbes article. The objection is overruled inasmuch as we do not
consider the evidence for the truth of the matter but rather for the
effect on the consuming public.
Opposition No. 91180067
10
177). Accordingly, we find this du Pont factor to be
neutral.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are
mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Opposer’s mark, although not registered as a standard
character mark, contains very little in the way of
Opposition No. 91180067
11
stylization. It is effectively comprised of the words
“AUTO-BY-TEL.”

Applicant’s mark is written in a different, more stylized
font, but also consists basically of just words, “Auto by
Rent.”

Accordingly, both marks have the same first two words,
“AUTO__BY__,” with only the third word differing. They both
give the same commercial impression of a method of obtaining
an automobile. Since they both consist of the same number
of words and syllables, they have the same flow, and –
despite their differing last words – they do not sound
significantly different.
Consumers may easily believe that applicant’s mark is
simply another in a series offered by applicant,
“AUTO__BY__,” with applicant now offering in addition to
“AUTO-BY-TEL,” also “Auto by Rent.”7 This is particularly
true where, as here, applicant has only been able to point
to one third-party registration sharing the common term,

7 In this regard, we note that despite repeated mention by the dissent of
the single state of Missouri, applicant seeks a nationwide registration.
Opposition No. 91180067
12
“AUTO__BY__.”8 As our precedent dictates, duplicating the
first part of a registered trademark may be found to result
in a likelihood of consumer confusion. See Cola-Cola
Bottling Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d
556 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER);
Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN);
Accordingly, we find the dissimilarities of the marks
to be outweighed by their similarities. This du Pont factor
weighs in favor of finding a likelihood of consumer
confusion.
The Services and Channels of Trade
It is well established that the goods and/or services
of the parties need not be similar or competitive, or even
offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that
the respective goods and/or services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson

8 Registration No. 3143022 for “Auto-By-Owner,” for “advertising and
marketing services, namely automotive marketing programs,” in
International Class 35.

Opposition No. 91180067
13
Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The issue, of course, is not whether purchasers would
confuse the goods and/or services, but rather whether there
is a likelihood of confusion as to the source of the goods
and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB
1984). The question of likelihood of confusion must be
determined based on an analysis of the goods and/or services
recited in applicant’s application vis-à-vis the goods
and/or services identified in opposer’s pleaded
registration(s). Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
Applicant seeks its registration for “automobile
dealerships.” Opposer’s registration for AUTO-BY-TEL
includes, among other things, Class 35 services for
“electronic billboard advertising in the field of automobile
and truck sales and leasing; computerized data base
management in the field of automobile and truck sales and
leasing; independent sales representative services in the
field of automobiles and truck sales and leasing; shopper's
guide information in the field of automobile and truck sales
and leasing; and referrals in the field of automobile and
truck sales and leasing.”
Opposition No. 91180067
14
It is axiomatic that we are bound by the stated
recitation of services. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“[t]he authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.” [citations
omitted]).9
It is apparent that at least some of the services
identified by opposer are complementary to the “automobile
dealerships” identified in the application. For example,
“referrals in the field of automobile and truck sales and
leasing” clearly indicates opposer’s business of making
referrals to those who sell and lease automobiles, i.e.,
automobile dealerships. This relationship is also supported
by testimony and exhibits in the record. “Field salespeople

9 Despite the discussion by the dissent, we understand the term
“automobile dealerships” to broadly encompass both new and used cars.
That applicant may currently have a particular business model, such as
offering rent-to-own vehicles rather than only new or only used
vehicles, is not, and cannot be, part of our analysis. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 16 USPQ2d, supra, at
1787; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002) (directing the Board to “compare the
services described in [applicant’s] application with the goods and
services described in [opposer’s] registrations”); In re Iolo
Technologies, LLC, 95 USPQ2d 1498 (TTAB 2010 (finding likelihood of
confusion based on the identifications).
Opposition No. 91180067
15
are individuals that are located throughout the country in
major market areas that are selling and managing dealer
relationships.” (Garms April 9 depo. at 10). “The largest
amount of revenue that we have currently comes from our new
car – what we call our new car retail leads. And retail
means we’re selling it directly to the dealer and we have a
direct relationship with the dealer.” Id. at 17. “We
connect consumers to dealerships” Id. at 9; See also Id.
Ex. 9, 12, 14, 15, 17. We have no question but that the
services identified by applicant are complementary and
related to those identified by the pleaded registration for
AUTO-BY-TEL. 10
In this regard, neither parties’ recitation of services
is limited in its channels of trade.11 Accordingly, basing
our analysis solely on the recitations, as we must, there is
nothing to stop opposer from offering “referrals” to
applicant’s “automobile dealerships” as well as others. We
must therefore presume that the services of applicant and
opposer may be sold in the same channels of trade to the

10 The dissent seems to indicate that the term “automobile dealerships”
may mean the franchising or selling of automobile dealerships, rather
than the selling and leasing of vehicles. That is not our
understanding of applicant’s recitation, nor does applicant argue it.
See appl’s brief at 13 (“Applicant’s services are ‘automobile
dealership,’ [sic] a specific type of retail establishment selling
directly to consumers.“)
11 We discuss here the relevant services as discussed above, focusing, for
example, on “referrals in the field of automobile and truck sales and
leasing.” We need not discuss every service in every class in the
pleaded registration (or registrations), since it is only necessary that
one identified service be related in order for us to find a likelihood
Opposition No. 91180067
16
same classes of purchasers. Therefore, these du Pont
factors also weigh in opposer’s favor.
Consumer Sophistication
Opposer urges us to consider consumer sophistication.
In this regard, as with the other du Pont factors, we are
bound by the parties’ respective identifications of goods or
services. Octocom Systems, Inc. v. Houston Computers
Services Inc., 16 USPQ2d at 1787. We have no doubt that
opposer’s various services, including its “referrals in the
field of automobile and truck sales and leasing,” could be
sold to unsophisticated consumers, trolling the Internet.
It is not clear to what extent the conditions of sale or
purchasers of applicant’s services may or may not be more
sophisticated. Nevertheless, applicant concedes this
factor, concluding in this section of its trial brief that
“the conditions under which potential auto purchasers
interact with opposer and applicant reduce the likelihood of
confusion as to the source of the parties’ services.”
(appl’s brief at 22). We find this du Pont factor to be
neutral.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that

of confusion with the application. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).

Opposition No. 91180067
17
the marks are similar and the services are complementary and
related, and are likely to be marketed through the same
channels of trade to all manner of consumers. Accordingly,
we find a likelihood of confusion between opposer’s mark

for the services as pleaded, including “referrals in the
field of automobile and truck sales and leasing,” and
applicant’s mark

for “automobile dealerships.”12
Dilution by Blurring

Opposer contends that applicants’ mark will dilute its
famous AUTOBYTEL and other pleaded marks under Trademark Act
§ 43(c), 15 U.S.C. § 1125(c), by blurring their
distinctiveness. Dilution by blurring is an “association
arising from the similarity between a mark or trade name and
a famous mark that impairs the distinctiveness of the famous
mark,” 15 U.S.C. §1125(c)(2)(B), and may be found
“regardless of the presence or absence of actual or likely
confusion, of competition, or of actual economic injury,”
15 U.S.C. §1125(c)(1).
Opposition No. 91180067
18
“When an application to register a mark is challenged
on grounds of dilution, we look to three elements: (1)
whether the opposer’s mark is famous; (2) whether the
opposer’s mark became famous prior to the date of the
application to register the applicant’s mark; and (3)
whether the applicant’s mark is likely to blur the
distinctiveness of the opposer’s famous mark.” National
Pork v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479,
1494-5 (TTAB 2010).
Fame of Opposer’s AUTOBYTEL Mark

We first turn to the factor of fame. A mark is defined
under §1125(c)(2)(A) as “famous” for dilution purposes -
… if it is widely recognized by the general
consuming public of the United States as a
designation of source of the goods or services of
the mark’s owner. In determining whether a mark
possesses the requisite degree of recognition, the
court may consider all relevant factors, including
the following:

(i) The duration, extent, and geographic
reach of advertising and publicity of
the mark, whether advertised or
publicized by the owner or third
parties.

(ii) The amount, volume, and geographic
extent of sales of goods or services
offered under the mark.

(iii)The extent of actual recognition of
the mark.

(iv) Whether the mark was registered
under the Act of March 3, 1881, or the

12 As discussed above, since we find a likelihood of confusion as to this
mark, we need not consider the likelihood of confusion claim as to
opposer’s other pleaded marks.
Opposition No. 91180067
19
Act of February 20, 1905, or on the
principal register.

We discussed above in the “Likelihood of Confusion”
section opposer’s evidence of fame. As we noted therein,
any renown that opposer may have experienced at one time has
appeared to have significantly diminished since the late
1990s. Furthermore, it is unclear from opposer’s evidence
what “fame” may be attributed to any particular mark or to
opposer’s business in general. Overall, we simply cannot
find sufficient evidence of fame, and certainly not enough
to satisfy the high level needed for a plaintiff to prove
dilution. Accordingly, we find in favor of applicant on
opposer’s claim of dilution by blurring.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.
- o O o -
Bucher, Administrative Trademark Judge, concurring in
part and dissenting in part:
I concur with the majority that we must dismiss the
opposition based upon opposer’s claim of dilution by
blurring. However, I would also dismiss the opposition
based upon opposer’s failure to demonstrate a likelihood of
confusion.
Opposition No. 91180067
20
In denying opposer’s motion for summary judgment
earlier in this proceeding, we pointed out genuine
disputes of material fact as to, inter alia, the
similarity of the marks, the relatedness of the services
and the respective channels of trade, as well as the
degree of fame, if any, of opposer’s mark.
The majority has correctly found that this record
fails to show that opposer’s AUTO-BY-TEL mark is well-
known for purposes of likelihood of confusion.
Similarly, as did the earlier panel, the majority above
points out the fallacies of opposer’s persistent use of
the “family of marks” argument during this litigation.
Hence, I agree with the black-letter law cited by
the majority, supra, that the likelihood of confusion
case herein basically turns on the cumulative effects of
the similarities/dissimilarities in the marks and the
relationship of the services. However, I respectfully
disagree with the manner in which the majority treated
the evidence of record bearing on these two critical
du Pont factors.
Relationship of the services

Applicant applied for services simply recited as
“automobile dealerships.”13 The application file shows that

13 As correctly noted by opposer, applicant’s online appeal is
heavily targeted to other used car dealerships across the country,
Opposition No. 91180067
21
applicant operates four lots of used cars in southwestern
Missouri. By definition, used car dealers do not sell new
cars. Opposer acknowledges that applicant serves the rent-
to-own market of persons having bad credit and no money for
a down-payment. Under applicant’s business model, for at
least two years after driving the car off the lot, the
renter will make weekly payment, in person, to applicant.
Presumably, consumers consigned to the rent-to-own car
market in this small region of the country represent the
total population of folks targeted by applicant, and this
relevant market succinctly defines the trade channel of
applicant’s services.
By contrast, opposer is a nationwide automotive
marketing services company that helps franchised dealerships
to sell new automobiles. In fact, opposer’s evidence, as
quoted by the majority, supra, shows that the majority of
opposer’s revenue comes from its new car retail leads.
Furthermore, on several occasions, the majority discusses
opposer’s recited service of “referrals in the field of
automobile and truck sales and leasing.” The service of
referring prospective buyers of new automobiles to
automobile dealerships in a particular region is a service

urging them to purchase “Auto-by-Rent” franchises from applicant.
If, perchance, this is what applicant means by “automobile
dealerships,” the services and trade channels would be quite
different from that presumed by all members of this Board panel,
namely, that rent-to-buy car consumers are indeed the primary
target of applicant’s services.
Opposition No. 91180067
22
for the benefit of the dealers. In fact, consistent with
this focus on serving the interest of the new automobile
dealerships with whom opposer has contracted, opposer’s
www.autobytel.com website does not provide potential
consumers with much in the way of narrative descriptors, in-
depth information, critical reviews by experts or even
consumers’ opinions about various models of new cars –
features that have made other third-party websites such as
www.edmunds.com and www.cars.com14 popular and useful.
Hence, the record shows that opposer is directing its
marketing services primarily to new car dealerships
nationwide, with some collateral benefits for prospective
buyers of new automobiles. By contrast, applicant is
directing its rent-to-own used cars to marginal customers in
rural Missouri – with clear designs on adding franchisees
from the ranks of independent, used car dealers around the
county. Closely related services? I think not -- even if
applicant is presumed to be operating nationwide.
Similarity of the Marks

To me, opposer’s AUTO-BY-TEL mark has a different
appearance from applicant’s mark. “-Tel
does not look at all like “Rent.” Applicant’s hand-drawn

14 Not to be confused with opposer’s own www.car.com website,
which seems designed, like applicant’s www.autobyrent.com website,
to reach prospective purchasers with bad, or no, credit.

Opposition No. 91180067
23
designation having prominent “stylized streaks” is more
reminiscent of the fins on a 1959 Cadillac Eldorado than
something suggesting the creative efforts of a web-savvy
merchant. The two marks, endings in “-Tel” and “Rent,” are
jarringly different aurally. Both the suffix “-Tel” and the
final word, “Rent,” provide a window into the respective
services, and hence, they impart very different
connotations. Consistent with opposer’s fifteen-plus years
of history, the “-TEL” suffix has over the years variously
suggested television, telephone or telecom. By contrast,
applicant’s mark ends with the word “RENT” – a quite logical
choice for its “rent-to-own” car services. Accordingly,
even if the respective services were found to be more
closely related than I have contended is true in the actual
marketplace (when discussing the second du Pont factor
above), given the different commercial impressions created
by the respective marks, I would be comfortable finding that
in this case, this single du Pont factor - the dissimilarity
of the marks – should be dispositive of the likelihood of
confusion issue. See Kellogg Co. v. Pack'em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
I agree with applicant that “Auto-by” is suggestive for
both of these respective services. Furthermore, comparing
the marks in their entireties as to appearance, sound,
connotation and commercial impression, I would argue that in
Opposition No. 91180067
24
the actual marketplace (as reflected in this record), a
buyer of a new car getting one-time, online leads from an
“automobile-by-telecom” website expects something quite
different than does a struggling Missourian who hopes to
snag a deal on a used “automobile by renting to own” that
comes packaged with two-years worth of weekly, face-to-face
contacts with a used car dealer.
In conclusion, while the majority correctly denies
opposer a family of marks in AUTO-BY-TEL under the ninth
du Pont factor, their analysis of the similarity of the
marks under the first du Pont factor seems to reward opposer
with a much larger family, namely “AUTO-BY.” On this
record, I would argue that such a result grants opposer a
much greater scope of protection than that to which it is
entitled.