AutoZone Parts, Inc.v.MS Motorsports, LLC (dba Motozone)

Trademark Trial and Appeal Board

Dec 11, 2012

No. 91198031 (T.T.A.B. Dec. 11, 2012)

Mailed: December 11, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board _____ AutoZone Parts, Inc. v. MS Motorsports, LLC (dba Motozone) _____ Opposition No. 91198031 to Application No. 85007591 Filed April 6, 2010 Opposition No. 91198032 to Application No. 85007520 Filed April 6, 2010 _____ Nadya Munasifi (Suzanne Werner on the brief), for opposer. Michael Goodwin, Scott Hughes, for applicant pro se. _____ Before Bucher, Mermelstein, and Shaw, Administrative Trademark Judg- es. Opinion by Mermelstein, Administrative Trademark Judge: MS Motorsports, LLC (dba Motozone), filed two applications for registration of MOTOZONE, stylized as follows, on the Principal Register for This Opinion is not a Precedent of the TTAB Opposition No. 91198031 Opposition No. 91198032 2 Retail store and on-line retail store services featuring motorcycle parts, accessories and related equipment, tools and apparel, in International Class 35,1 and Repair and maintenance services for motorcycles and ATVs (all terrain vehicles), in International Class 37.2 Opposer AutoZone Parts, Inc., filed oppositions to both applications (now consol- idated), alleging that applicant’s mark raises a likelihood of confusion in view of op- poser’s previously-used and registered marks.3 By its answer, applicant denied the salient allegations of the notices of opposition, raising seven “affirmative defenses.”4 We sustain the opposition. I. Description of the Record The record comprises the pleadings and the files of the opposed applications. Trademark Rule 2.122(b). The parties filed a stipulation of facts, and each party submitted a notice of reliance. In addition, the parties filed a stipulation, agreeing 1 App. No. 85007591, based on use in commerce and claiming first use and use in commerce as of January 2010. 2 App. No. 85007520, based on use in commerce and claiming first use and use in commerce as of January 2010. 3 Opposer also alleged that applicant’s mark falsely suggests a connection with opposer, Trademark Act § 2(a); 15 U.S.C. § 1052(a), and that applicant’s mark is likely to dilute op- poser’s mark, Trademark Act § 43(c); 15 U.S.C. § 1125(c). Opposer did not argue these grounds in its brief, and we accordingly consider them waived. 4 Applicant did not submit any evidence or argument in support of most of its defenses, and we consider them waived. Although applicant did argue that confusion is not likely (Fifth and Seventh defenses), these are not affirmative defenses at all, but simply denials of op- poser’s claims. Applicant did raise two (perhaps three) additional “defenses” in its brief (that the notice of opposition was untimely, fair use, and “opposer’s attempt at monopo- liz[ation]”), which we address infra. Opposit Opposit to the s from the A. O 1 Oppo records Reg. No. 2721079 3278988 3724931 2397635 3123505 3281590 5 This lis trations subsistin CareZon (1700101 3120352 these reg ion No. 91 ion No. 91 ubmission rules whi pposer’s . Oppose ser filed c of the USP Ma AUTO AUTO AUTO t is taken were plead g. ¶¶ 14- e) was plea and 2225 for TRUC istrations i 198031 198032 of testimo ch usually Notice of r’s Regist opies of ei TO: rk ZONE ZONE ZONE from oppose ed, submitt 18, 20; Ex ded and li 191 both KZONE) w s necessary ny by dec govern tri Reliance rations ghteen of Goods/Service • Automotiv installation • Automotiv steering flu • Windshield engine deg • All purpose • Floor mats • Retail store Class 35. • Retail auto to commer advice rega customers; describing retail store Class 35 • Retail auto • Retail auto • Automotiv steering flu • Windshield engine deg • All purpose • Floor mats r’s Notice ed, and lis h. A. One sted in the for AUTOZ ere pleaded to our opin 3 laration or al procedu its pleade s e repair services of automotive e fluids, namely id, antifreeze, a washing fluid, reaser. Class 3. silicone spray- for vehicles. Cla services featur motive parts an cial customers; rding automoti providing a sea and pricing of a services featur mobile parts an motive parts an e fluids, namely id, antifreeze, a washing fluid, reaser. Class 3. silicone spray- for vehicles. Cla of Reliance ted in the p additional stipulation ONE and but neith ion. affidavit, re. d registrat , namely, testin parts and acces , gas treatment, nd brake fluid. brake cleaner, c lubricant and m ss 27. ing automobile d accessories st providing comm ve parts and acc rchable online d utomotive parts ing automotive d accessories st d accessories st , gas treatment, nd brake fluid. brake cleaner, c lubricant and m ss 27. . Opp. NOR arties’ stip registratio , but not s design, 33 er stipulat and to oth ions5 from g, repair, diagn sories. Class 37. oil treatment, p Class 1. arburetor clean otor oil. Class 4. parts and acces ore services ren ercial informat essories to com atabase in the and accessorie parts and acces ore services. Cla ore services. Cla oil treatment, p Class 1. arburetor clean otor oil. Class 4. § I. All of ulation as n (305034 ubmitted, 42387 for ed nor sub er depart the electr Reg. D osis and June 3 ower er, and sories. Aug. 1 dered ion and mercial field of s; online sories. Dec. 1 ss 35. Oct. 24 ss 35. Aug. 1 ower er, and Aug. 2 the listed r being valid 90 for Pro and four ot OILZONE, mitted. Non ures onic ate , 2003 4, 2007 5, 2009 , 2000 , 2006 1, 2007 egis- and Car- hers and e of Opposit Opposit Reg. No. 3281636 3724930 2449353 2855757 2855756 2527429 3370256 2525758 2855758 2015967 1501718 1550569 Each necessa 2 Oppo and Sco 3 Oppo tion of t ion No. 91 ion No. 91 Ma AUTOZO BATTER CHECKO GET IN TH GO Z ZO PARTS QUIET AUTO proffered ry post-reg . Discove ser submi tt Hughes, . Interne ser proffe he word “a 198031 198032 rk NE.COM YZONE UTZONE E ZONE ONE NE ZONE ZONE ZONE registrati istration f ry Mater tted excer and appli t Materia red three utomotive Goods/Service • Retail auto • Automotiv steering flu • Windshield engine deg • All purpose • Floor mats • Retail auto to commer advice rega customers; describing retail store Class 35. • On-line ele the field of formation global com • Retail auto • Retail auto • Retail auto • Automatic • Retail auto • Retail auto • Soundproo • Retail auto • Retail auto on is owne ilings havi ials pts from t cant’s resp ls pages from .” 4 s motive parts an e fluids, namely id, antifreeze, a washing fluid, reaser. Class 3. silicone spray- for vehicles. Cla motive parts an cial customers; rding automoti providing a sea and pricing of a services featur ctronic services automotive pa regarding autom puter network. parts store serv parts store serv parts store serv rear view mirro motive store se parts store serv fing materials fo parts store serv parts store serv d by oppo ng been tim he discove onse to an applican d accessories st , gas treatment, nd brake fluid. brake cleaner, c lubricant and m ss 27. d accessories st providing comm ve parts and acc rchable online d utomotive parts ing automotive , namely, on-lin rts and accessor otive repair an Class 42. ices. Class 35. ices. Class 35. ices. Class 35. r for vehicles. C rvices. Class 35. ices. Class 35. r automotive v ices. Class 35. ices. Class 35. ser and is ely made ry deposit interrogat t’s website ore services. Cla oil treatment, p Class 1. arburetor clean otor oil. Class 4. ore services ren ercial informat essories to com atabase in the and accessorie parts and acces e ordering servi ies, and providi d maintenance lass 12. ehicles. Class 17 valid and and accep ions of Mi ory. and a dic Reg. D ss 35. ower er, and Aug 21 dered ion and mercial field of s; online sories. Dec. 1 ces in ng in- via a May 8, June 2 June 2 Jan. 8, Jan. 15 Jan. 1, June 2 . Nov. 1 Aug. 2 Aug. 1 subsisting ted. chael Good tionary de ate , 2007 5, 2009 2001 2, 2004 2, 2004 2002 , 2008 2002 2, 2004 2, 1996 3, 1988 , 1989 , all win fini- Opposition No. 91198031 Opposition No. 91198032 5 4. Declaration of Brett Shanaman Pursuant to the parties’ stipulation, opposer submitted the declaration of Brett Shanaman, opposer’s Vice-President of Marketing. Mr. Shanaman’s declaration co- vers various facts about opposer and the use of opposer’s marks, and authenticates various business records and printed publications attached to it. B. Applicant’s Notice of Reliance 1. Official Records and Internet Evidence Applicant submitted printouts of records from the USPTO website, pages from Wikipedia, a directory listing, and pages from applicant’s website, as well as a page depicting a video posted to youtube.com. Opposer objects to applicant’s Wikipedia materials, arguing that they are inad- missible. Reply Br. at 3-4. We disagree. Although we recognize that Wikipedia is (in their own words) an “encyclopedia that anyone can edit,” id. (citing http:// en. wikipedia. org / wiki/Main_Page), the Board has chosen not to categorically exclude this material. Instead, we have considered Wikipedia evidence so long as the oppos- ing party has a fair opportunity to respond to the accuracy of the submission and to submit evidence and argument of its own to contradict or rebut the Wikipedia arti- cle. See In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032-33 (TTAB 2007). The accuracy of the Wikipedia submission can then be assessed in light of any con- trary evidence and the nature of the source can be taken into account in determin- ing what weight (if any) the evidence is due. We therefore decline to strike this evi- dence merely because it comes from a source which can be freely edited by users. Opposition No. 91198031 Opposition No. 91198032 6 That said, some of applicant’s Wikipedia evidence bears mention: Applicant’s Exhibit 4 (billed in applicant’s notice of reliance as “reflect[ing] the definition of Mo- to”), Exhibit 6 (“reflect[ing] the definition of Auto”), and Exhibit 8 (“reflect[ing] the definition of Automobile Industry”) are not quite as applicant describes them. As noted on their face, Exhibits 4 and 6 are categorized by Wikipedia as “disambigua- tion pages.” “Disambiguation in Wikipedia is the process of resolving the conflicts that arise when a single term is ambiguous - when it refers to more than one topic covered by Wikipedia articles.” http://en. wikipedia . org/ wiki / Wikipedia: Disambiguation.6 Similarly, Exhibit 8 is a “redirect page,” “which has no content it- self, but sends the reader to another article, section of an article, or page, usually from an alternative title.” http://en. wikipedia. org/ wiki/ Wikipedia:Redirect. It is ap- parent that none of these submissions was intended by the editors of Wikipedia as a definition of the relevant term. Rather, they are methods Wikipedia uses to direct its users to information which may be responsive to the user’s query. Exhibits 4, 6, and 8 are thus nothing more than navigation guides to Wikipedia itself and we do not consider them to constitute substantive evidence. 2. Other Materials Applicant also submitted a (blank and unexecuted) form application to become a dealer for Parts Unlimited which applicant describes as its “primary supplier of 6 We consider and take judicial notice of Wikipedia’s description of its own use of disambig- uation and redirect pages just as we would consult the pronunciation or usage guide in a traditional dictionary if necessary to an understanding of an entry from that source. Opposition No. 91198031 Opposition No. 91198032 7 parts, ... [and] for which the applicant is an authorized dealer.” App. Not. of Reli- ance § II. And finally, applicant submitted the results of a search of the Board’s TTABVue database, showing a number of Board proceedings in which opposer ap- peared as a party. C. Stipulation of Facts The parties submitted a list of stipulated facts, among them the following: • “AutoZone has continuously used the trade name and mark AUTOZONE in interstate commerce in connection with the advertising, marketing and sale of retail automotive parts store services and automotive parts and accessories since 1987.” Stip. ¶ 10. • Opposer owns the listed registrations, which are valid and subsisting, and opposer has used the registered marks in commerce on or in connection with the identified goods and services, and has done so since the listed dates of first use. Stip. ¶¶ 14-18, 20; Exh. A. • “AutoZone owns a family of ZONE marks.” Stip. ¶ 19. • “The AUTOZONE service mark acquired fame prior to MotoZone’s first use of the MOTOZONE Marks.” Stip. ¶ 35. • For FY 2009-2011, opposer had net sales of $ 6.817, 7.363, and 8.073 billion, respectively. Stip. ¶¶ 6-8. • “AutoZone owns and operates more than 4,500 retail stores in in the United States and Puerto Rico.” Stip. ¶ 5. • “AutoZone engages in extensive national advertising.” Stip. ¶ 11. • “The term “Auto” in the AUTOZONE mark means “automotive.” Stip. ¶ 26. • “MotoZone services and repairs motorcycles, ATVs, and UTV’s.” Stip. ¶ 30. • “The dominant element of the MOTOZONE (Stylized) mark is the term ‘Mo- to.’” Stip. ¶ 47. • “MotoZone operates a service center and sells non-MotoZone branded retail items at its business location in Las Vegas, Nevada through which it pro- motes motorcycle, ATV, and UTV service, parts and accessories.” Stip. ¶ 31. Opposition No. 91198031 Opposition No. 91198032 8 • “MotoZone potentially intends to franchise its business.” Stip. ¶ 37. II. Timeliness of the Opposition Before turning to the substantive issues, we consider an issue raised by appli- cant for the first time in its brief.7 Applicant argues that the opposition must be dismissed because opposer’s first request for extension of time to oppose was un- timely: Applicant entered into Gazette publication Application Serial No. 85-007,520 and Application Serial No. 85-007,591. These applications were printed on page 807 and 865 of the Gazette on August 31, 2010. 37 C.F.R. § 2.101(c) clearly states “The opposition must be filed within thirty days after publication ... of the application being opposed or within an extension of time ... for filing an opposition.” Opposer filed an extension of time on September 30, 2010 and extension of time for opposition was accepted for filing on October 2, 2010, which is clearly 31 days after the allotted time thereby making their opposition null and invalid and grounds for dismissal. App. Br. at 1-2. As applicant correctly notes, an opposition or extension of time to file an opposi- tion must be filed “within thirty days after ... publication.” Trademark Act § 13; see Trademark Rules 2.101(c), 2.102(c). The subject applications were published on Au- gust 31, 2010, and as applicant admits, “opposer filed ... extension[s] of time [to op- pose] on September 30, 2010....” Those requests were granted by the Board on Octo- 7 An issue such as this one clearly should have been raised earlier in the proceeding, pref- erably by way of a motion to dismiss for lack of subject-matter jurisdiction in response to the notices of opposition. See Fed. R. Civ. P. 12(b)(1). If applicant is correct that these oppo- sitions must be dismissed because they were untimely filed, the failure to raise this issue earlier has caused the parties - and the Board - to waste time and resources on two years of pointless litigation. Nonetheless, we must consider applicant’s dilatory argument, be- cause the Board has no authority to entertain an untimely opposition. Opposition No. 91198031 Opposition No. 91198032 9 ber 2, 2010. Applicant mischaracterizes the Board’s October 2 grant of opposer’s first exten- sion requests as our “accept[ance] for filing” of those requests. In fact, there is no such thing as “accept[ance] for filing” in the Board’s rules or practice. Opposer’s ex- tension requests were filed upon receipt of them in the USPTO. Trademark Rule 2.195(a)(2) (“Trademark-related correspondence transmitted electronically will be given a filing date as of the date on which the Office receives the transmission.”). There was no requirement that the Board “accept[]” them before they could be con- sidered “filed” pursuant to our rules. Opposer’s first extensions of time to oppose each of the subject applications indicate on their face that they were received by the USPTO on September 30, 2010, and are thus considered filed for all purposes on that date. Although the Board did not grant opposer’s extension requests until Oc- tober 2, 2010, i.e., outside the initial opposition period, that is of no consequence; Trademark Rule 2.102 requires only that the extension request be filed within the applicable period. The extension request need not also be granted prior to the expi- ration of the opposition period, and in fact it is not always possible to do so.8 8 To the extent applicant’s argument is that there were actually thirty-one days during which opposer could have filed its extension request - August 31 (the day of publication) plus September 1 through and including September 30 - applicant is again not entitled to relief. A request to extend time to file an opposition must be filed “within thirty days after ... publication.” Trademark Act § 13 (emphasis added); Trademark Rule 2.102(c) (“before thirty days have expired from the date of publication” (emphasis added)). Because the thir- ty-day period is counted “after” or “from” the day of publication, it does not include the date of publication, even though an opposition or extension request filed on the day of publica- tion would be considered timely. Cf. Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309 (TTAB 1990) (Under Trademark Act § 14, a petition for cancellation filed on the fifth anniversary Opposition No. 91198031 Opposition No. 91198032 10 We conclude that opposer’s extension requests, as well as its notice of opposition, were timely filed. III. Standing and Priority To establish its standing, opposer must prove that it has a real interest in the outcome of this proceeding and a reasonable basis for its belief that it would be damaged by issuance of a registration of the mark to applicant. See Ritchie v. Simp- son, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). In light of its claim that confusion is likely, opposer’s submission of its trademark registrations, as well as applicant’s stipula- tion to their validity and to opposer’s use of its various ZONE-formative marks ade- quately establishes opposer’s interest in this proceeding and a reasonable basis for its belief that damage would result from registration. Because opposer has established its ownership of a number of valid and subsist- ing trademark registrations, priority is not an issue with respect to the marks in those registrations and the goods respectively identified in them. King Candy Co. v. of registration is considered to be filed “within five years from the date of the registration”; similar language in Trademark Act §§ 8 & 9 is construed consistently.). This construction of the statute and rules is consistent with the general rules for compu- ting time set out in Fed. R. Civ. P. 6(a), which is applicable to Board proceedings pursuant to Trademark Rule 2.116(a). Rule 6(a) instructs that when counting a period of days, one is to “exclude the day of the event that triggers the period.” Fed. R. Civ. P. 6(a)(1)(A). In this case, the opposition period was triggered by publication of the subject applications on Au- gust 31, so that day is not counted in determining the timeliness of opposer’s extension re- quest. Beginning with and counting the next day (September 1), the time to oppose or file an extension of time to oppose continued for thirty days, through and including September 30. Opposition No. 91198031 Opposition No. 91198032 11 Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Fur- ther, opposer’s evidence and the parties’ stipulations of fact establish opposer’s use of its registered marks for the identified goods as early as the filing dates set out in the respective registrations.9 Stip. ¶¶ 9-10, 15. Applicant “started its business in 2010,” Stip. ¶ 32, and filed the subject applications on April 6, 2010. Opposer’s stip- ulated dates of first use for its marks on the goods and services in each of opposer’s registrations are prior to any date of use which applicant could prove. To the extent opposer relies on use (as opposed to registration) of its marks, we find that each of opposer’s marks was “previously used and not abandoned,” Trademark Act § 2(d), and we conclude that opposer has priority with respect to such marks and goods or services. IV. Likelihood of Confusion A. Applicable Law Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Ma- jestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re 9 By rule, the dates of use in an application or registration are not evidence of such use; ra- ther, dates of use must be proven by “competent evidence.” Trademark Rule 2.122(b)(2). Nonetheless, we consider those dates in this case, not because they are recited in opposer’s registrations, but because the parties have stipulated to opposer’s use as of those dates. Opposition No. 91198031 Opposition No. 91198032 12 Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental in- quiry 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 In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). B. The Fame of the Prior Mark We begin by considering the du Pont factor concerning the fame or renown of the prior mark. Fame is entitled to great weight in a likelihood of confusion analysis. See Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Fame of an opposer’s mark or marks, if it exists, plays a “dominant role in the process of balancing the DuPont factors,” Recot, 214 F.3d at 1327, 54 USPQ2d at 1456, and “[f]amous marks thus enjoy a wide lati- tude of legal protection.” Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, “[a] strong mark … casts a long shadow which competitors must avoid.” Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one “with extensive public recogni- tion and renown.” Id. Bose Corp., 63 USPQ2d at 1305. We need not deliberate long on opposer’s fame; at least with respect to opposer’s AUTOZONE service marks, applicant has stipulated to it. Stip. ¶ 35 (“The AUTO- Opposition No. 91198031 Opposition No. 91198032 13 ZONE service mark acquired fame prior to MotoZone’s first use of the MOTOZONE Marks.”); ¶ 13 (“AutoZone is one of the most well-known automotive parts and ac- cessories businesses in the United States.”); ¶¶ 6-8 (stipulating to opposer’s net sales under the mark of $ 22.253 billion for FY 2009-2011). In addition to applicant’s stipulation, Mr. Shanaman’s unrebutted declaration attests to opposer’s use of its marks since 1987, Shanaman Dec. at ¶¶ 10, 38, oppos- er’s operation of more than 4,500 stores in the United States and Puerto Rico, id. at ¶ 2, net sales in excess of $ 75 billion for FY 1987-2011, id. at ¶ 10, substantial ad- vertising on major networks and sports networks with heavy penetration, id. at ¶¶ 21, 27, advertisement through digital media, id. at ¶¶ 31-33, as well as in other advertising channels. All told, opposer has made advertising expenditures in excess of $ 800 million under the mark since 1987 - $ 71 million in FY 2011 alone. Id. at ¶¶ 38-39. Applicant does not take exception to any of these statements, nor is there any contrary evidence or argument in this record. There is no doubt that these fig- ures are significant, and that opposer’s AUTOZONE marks10 are well-known and have garnered a high degree of renown. Based on this record, we conclude that opposer’s AUTOZONE marks are famous, a factor which weighs heavily in opposer’s favor. 10 The record is less than clear on whether (or to what degree) Mr. Shanaman’s statements apply to the marks in opposer’s other registrations, including BATTERYZONE, CHECK- OUTZONE, and ZONE. Opposit Opposit C. T A In a dissimil Bay, 73 when su ficiently to the s H.D. Le 1 In ad tions co Whil ZONE, f standar resembl sent ma 11 We bri ion No. 91 ion No. 91 he Simila ppearanc likelihood arities in a USPQ2d a bjected to similar in ource of t e Co. v. Ma . Oppose dition to mprising t e these m or purpose d-characte ance to th ny of those efly conside 198031 198032 rity or D e, Sound of confusi ppearance t 1692. “[T a side-by- terms of t he goods o idenform r’s AUTO other ZON he term AU AUTOZONE AUTOZONE.COM arks are ob s of this d r AUTOZO e applied-f in oppose r opposer’s issimilari , Connota on analysi , sound, c ]he test is side compa heir overa ffered und Inc., 87 US ZONE Ma E-formativ TOZONE Stand Stand Four Two r viously si ecision we NE regist or mark, w r’s various family of Z 14 ty of the M tion and s, we comp onnotation not wheth rison, but ll commerc er the res PQ2d 171 rks e marks, : ard character m ard character m registrations; sli egistrations; on milar in th will conce rations, as hile the a registrati ONE mark arks in Commerc are the m and comm er the ma rather wh ial impres pective m 5, 1727 (T opposer su ark; four regist ark; one registr ght variations e color, one bla at they co ntrate prim that mar ssociated g ons. s below. their Ent ial Impre arks for s ercial im rks can be ether the sion so th arks is lik TAB 2008) bmitted e rations ation ck & white mprise th arily11 on k appears oods and ireties as ssion imilarities pression. P distingui marks are at confusio ely to res . leven regi e term AU opposer’s to be close services re to and alm shed suf- n as ult.” stra- TO- four st in pre- Opposit Opposit The In ap ing pun “zone.” acter) m standar typeface Citigrou 1258-59 AUTOZ bold bla ginning marks w follow i ZONE:1 12 This h poses on opposer’s same typ 1258-59 ion No. 91 ion No. 91 mark in bo pearance, ctuated by Opposer h arks. Whi d-characte , or case p Inc. v. C (Fed. Cir. ONE in th ck letterin the word here the t, opposer 2 ypothetical ly and ther standard- eface and (marks regi 198031 198032 th of the s applicant’ a large, r as establis le applican r marks co ) includin apital Ci 2011). In e same w g punctua “zone.” F upper case ’s registra display of e is no evid character m colors as a stered in st ubject app s stylized agged, brig hed its ow t’s mark uld be dis g stylizat ty Bank G other word ay MOTO ted by a la or instanc “Z” is lar tion woul opposer’s s ence that arks would re used in andard-cha 15 lications is MOTOZON ht-red “Z” nership of is visually played in ion identi roup Inc., s, four of ZONE is rge, ragge e, consist ger than l d cover th tandard-ch opposer use in fact cov applicant’s racter form MOTOZO E mark f in the mi four AUT distinctiv any styliza cal to tha 637 F.3d opposer’s r depicted i d, bright-r ent with i ower case e followin aracter ma s its mark er display o mark. See at may be u NE (styliz eatures bo ddle, begin OZONE ( e, we note tion (i.e., t in app 1344, 98 U egistratio n applican ed “Z” in t ts existin letters tha g stylizat rks is for i in this for f AUTOZO Citigroup, sed in any ed): ld black le ning the w standard c that oppo any size, c licant’s m SPQ2d 1 ns cover u t’s mark he middle g special t precede ion of AU llustration m. Nonethe NE in the 98 USPQ2 stylization tter- ord har- ser’s olor, ark. 253, se of - in , be- form and TO- pur- less, exact d at ). Opposition No. 91198031 Opposition No. 91198032 16 The marks could thus appear identical but for the first two letters (“Mo-” in appli- cant’s case and “Au-” in opposer’s), making them substantially similar in appear- ance. The marks also sound similar. Both of them end with the same six letters, and the final two syllables would be pronounced the same way: -tō-zōn. While we do not discount the fact that the first two letters of each mark are different, producing a different initial sound and first word, we do not think this difference overwhelms the similarities in the sound of the marks. As for the meaning of the marks, we note the parties’ stipulation that “[t]he term ‘Auto’ in opposer’s AUTOZONE mark means ‘automotive.’ ”13 Stip. ¶ 26. There is no stipulation as to the meaning of “moto-,” but applicant asserts that “ ‘moto’ [is] short for motocross, [which] is a form of motorcycle racing held on enclosed off road circuits.” App. Br. at 2 (referring to App. Not. of Reliance Exh. 4). As stated previ- ously, we do not view applicant’s Wikipedia submission on this point to be probative 13 Applicant disputes this fact in its brief, App. Br. at 2, and submits Wikipedia evidence from which it argues that “auto-” in opposer’s mark means “automobile,” rather than “au- tomotive,” and that “[t]he term automotive industry usually does not include industries dedicated to automobiles after delivery to the customer, such as repair shops and motor fuel filling stations.” App. Br. at 2. Because applicant has stipulated that “auto-” means “au- tomotive” in opposer’s marks, we have not considered applicant’s argument to the contrary in its brief. Further, as noted above, we are not convinced that applicant’s Wikipedia evi- dence casts light on the meaning of “auto” as it is used in opposer’s mark or that the term “automotive” necessarily excludes after-market goods or services (opposer’s goods and ser- vices are identified using both “automotive” and “automobile”). Opposition No. 91198031 Opposition No. 91198032 17 of the definition of “moto-” as used in applicant’s mark. Nonetheless, we take judi- cial notice of the following dictionary definitions:14 mo·to noun, plural mo·tos. one of the heats in a motocross. RANDOM HOUSE DICTIONARY (2012), http://dictionary.reference.com/browse/moto (visited Dec. 6, 2012). mo·to·cross noun a timed motorcycle race over a closed course consisting of a winding dirt trail with hills, jumps, sharp turns, and often muddy terrain. RANDOM HOUSE DICTIONARY (2012), http://dictionary. reference. com/ browse/ moto- cross (visited Dec. 6, 2012). In addition, opposer submitted the following definition: au·to·mo·tive adj. Definition of AUTOMOTIVE 1: of, relating to, or concerned with self-propelled vehicles or machines 2: self-propelled ... Examples of AUTOMOTIVE The store stocks automotive parts. MERRIAM-WEBSTER DICTIONARY, http://www.merriam-webster. com/ dictionary/ auto motive (visited August 24, 2012), Opp. Not. of Reliance, Exh. 25. While these definitions provide some support for applicant’s assertion that “mo- to” as used in MOTOZONE would be perceived as referring to “motocross,” the defi- 14 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Opposition No. 91198031 Opposition No. 91198032 18 nition actually refers to “moto” as a heat, not the sport of motocross racing itself.15 But even assuming that applicant is correct that its customers would perceive “mo- to” as referring to motocross, MOTOZONE and AUTOZONE are similar in mean- ing. Both marks bear the connotation of a “zone,” i.e., a place, in which one might obtain goods or services. In applicant’s case, those goods and services are related to motocross motorcycles (or possibly motorcycles in general) and in opposer’s case, the goods and services are “automotive” in nature. But because the word “automotive” in its broadest sense refers to any self-propelled vehicle, it applies by definition to motorcycles used in motocross racing (or motorcycles in general) and ATVs, as well as automobiles, trucks, and the like. The marks are thus similar in connotation or meaning in that they both refer to a “zone,” and in particular, a zone in which one might encounter goods and services related to self-propelled vehicles. We conclude that the MOTOZONE and AUTOZONE marks are similar in ap- pearance, sound, meaning, and overall commercial impression. 2. Opposer’s Family of ZONE Marks In light of our findings regarding opposer’s AUTOZONE mark, an extensive dis- cussion of opposer’s family of ZONE marks is unnecessary. However, for the sake of completeness, we will briefly consider the issue. The parties stipulated that “AutoZone owns a family of ZONE marks.” Stip. 15 Given the context - applicant’s use of its mark in connection with motorcycle parts and repair services (not limited to those relating to motocross racing) - we think it at least as plausible that customers would perceive “moto” in applicant’s mark to refer to motorcycle, as motocross. Opposition No. 91198031 Opposition No. 91198032 19 ¶ 19. “A family of marks is a group of marks having a recognizable common charac- teristic, wherein the marks are composed and used in such a way that the public as- sociates not only the individual marks, but the common characteristic of the family, with the trademark owner.” J&J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). Here, opposer has established its pri- or use and registration of a number of ZONE-formative marks for various automo- tive-related goods and services. Applicant’s stipulation to opposer’s ownership of a family of ZONE marks is in effect, recognition of opposer’s rights in the term ZONE - the common characteristic of the family - apart from opposer’s use and registration of ZONE as an element of its various marks.16 In comparing opposer’s ZONE family mark to applicant’s MOTOZONE mark, it is clear that ZONE has been entirely incorporated into applicant’s mark, and to that extent, the marks are identical in appearance, sound, and meaning. While appli- cant’s MOTOZONE mark differs from opposer’s ZONE family mark in that it in- cludes the initial term MOTO (which the parties stipulated is the dominant portion of applicant’s mark,17 Stip. ¶ 47), that alone does not mean that the marks are so 16 Opposer does not specify exactly when it acquired its family of ZONE marks, i.e., when the relevant public came to recognize ZONE (as opposed to opposer’s individual ZONE- formative trademarks) as indicating opposer as the source of the relevant goods and ser- vices. See Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1655 (TTAB 2010). Nonetheless, given opposer’s prior use and registration of its ZONE-formative marks and applicant’s admission to opposer’s ownership of a ZONE family of marks, the evidence clearly implies that opposer has priority with respect to its ZONE family of marks. 17 We have therefore ignored opposer’s argument in its brief that “the dominant element of the MOTOZONE Mark is the word ‘MotoZone.’ ” Opp. Br. at 12. Opposition No. 91198031 Opposition No. 91198032 20 dissimilar as to preclude confusion, particularly when considered along with the fifth and second du Pont factors. In sum, we find that MOTOZONE is substantially similar in appearance, sound and meaning to opposer’s pleaded AUTOZONE marks and opposer’s ZONE family mark. This factor supports a finding in opposer’s favor. D. The Similarity or Dissimilarity and Nature of the Goods or Services as Described in an Application or Registration or in Connection With Which a Prior Mark is in Use. In assessing this du Pont factor, we must compare the goods or services in the application at issue with the goods in the registrations asserted by opposer, or the goods on which opposer has previously used its mark. It is a general rule that goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Ra- ther, it is enough that goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circum- stances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an as- sociation between the producers of each parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). For ease of reference, we set out applicant’s services and the goods and services in opposer’s AUTOZONE registrations in tabular form: Class Applicant Opposer 1 None • Automotive fluids, namely, gas treatment, oil treatment, power steering fluid, antifreeze, and brake fluid. 3 None • Windshield washing fluid, brake cleaner, carburetor cleaner, and engine degreaser. 4 None • All purpose silicone spray-lubricant and motor oil. 27 None • Floor mats for vehicles. 35 • Retail store and on-line retail store services featuring motorcycle parts, accessories and related equipment, • Retail auto parts store services. Opposition No. 91198031 Opposition No. 91198032 21 Class Applicant Opposer tools and apparel. • Retail store services featuring automobile parts and ac- cessories. • Retail automotive parts and accessories store services rendered to commercial customers; providing commercial information and advice regarding automotive parts and accessories to commercial customers; providing a search- able online database in the field of describing and pricing of automotive parts and accessories • Online retail store services featuring automotive parts and accessories. 37 • Repair and maintenance services for motorcycles and ATVs (all terrain vehicles). • Automotive repair services, namely, testing, repair, diag- nosis and installation of automotive parts and accesso- ries. As can be readily seen, applicant’s International Class 35 and 37 services (retail services and repair and maintenance services) are identical or highly similar to op- poser’s services in the same classes, the only significant difference being that appli- cant’s retail services relate to motorcycle parts and accessories, and applicant’s re- pair and maintenance services are for motorcycles and ATVs, while opposer’s retail services relate to automotive or automobile parts and accessories,18 and opposer spe- cifically provides automotive repair services. Opposer’s goods in classes 1, 3, and 4 comprise supplies for motor vehicles such as one might find in establishments such as those operated by the parties. Some of opposer’s goods are designated as automo- tive, while others are listed without qualification. Although applicant emphasizes the differences in the identifications of goods and services, we think they are of little 18 Opposer’s Class 35 services include “retail auto parts store services” and “retail store ser- vices featuring automobile parts and accessories.” While “automobile” and “auto” are more restrictive than “automotive,” opposer’s Class 35 services also include “online retail store services featuring automotive parts and accessories,” which is identical in part to appli- cant’s Class 35 “on-line retail store services featuring motorcycle parts, accessories and re- lated equipment, tools....” Opposition No. 91198031 Opposition No. 91198032 22 practical consequence. As discussed previously, “automotive” is a broad term refer- ring to any self-propelled vehicle. As such, to the extent opposer refers in its regis- trations to “automotive” parts, supplies, or services, those references include by def- inition such parts, supplies, or services related to motorcycles and ATVs. Opposer’s identified services are thus partly identical to, and otherwise closely related to, applicant’s “retail store and on-line retail store services featuring motor- cycle parts, accessories and related equipment, tools and apparel.” Because “auto- motive parts and accessories” (emphasis added) includes by definition “motorcycle parts[ and] accessories,” the parties’ identified retail services cover the same goods, at least in part. And in addition to the goods set out in its registrations, opposer’s evidence establishes that it in fact sells a number of parts and accessories suitable for use on or with motorcycles under its AUTOZONE brand. Shanaman Dep. ¶ 3-9 (and associated exhibits). Applicant also seeks registration of its mark for use in connection with “repair and maintenance services for motorcycles and ATVs (all terrain vehicles).” In this regard, the record establishes opposer’s registration and use of its AUTOZONE mark in connection with “automotive repair services, namely, testing, repair, diag- nosis and installation of automotive parts and accessories” (emphasis added). Be- cause “automotive repair services” includes such services rendered with respect to all self-propelled vehicles, opposer’s services include such services rendered with re- spect to motorcycles and ATVs. Again, we find opposer’s International Class 37 re- pair services to be in part identical to applicant’s Class 37 services, and otherwise Opposition No. 91198031 Opposition No. 91198032 23 closely related. Finally, opposer’s AUTOZONE registrations identify various automotive sup- plies in International Classes 3 and 4, as well as floor mats for vehicles in Interna- tional Class 27. All of these goods are included within, or closely related to items provided under applicant’s “retail store ... services featuring motorcycle parts...,” and “repair and maintenance services for motorcycles and ATVs....” We find applicant’s services to be partially identical, and otherwise closely relat- ed, to the goods and services set out in opposer’s AUTOZONE registrations. This factor favors a finding of likelihood of confusion. E. The Conditions Under Which And Buyers To Whom Sales Are Made Opposer argues that the customers for goods or services of the type involved in this proceeding “are ordinary consumers who are not necessarily sophisticated,” and that both parties sell a number of goods which are “inexpensive.” Opp. Br. at 24, cit- ing Shanaman Dec., Exh. C; Opp. Not. of Reliance, Exh. 19-20. When customers are not sophisticated, or when the goods or services involved are relatively inexpensive, purchasers may be less likely to exercise care in purchasing decisions, thus height- ening the possibility of confusion.19 While not all automotive goods and services are 19 Note that merely because goods are expensive or purchased after careful deliberation does not mean that the purchasers are sophisticated, or that confusion would therefore be avoided. Even consumers who exercise a high degree of care are not necessarily knowledge- able regarding the trademarks at issue, and therefore immune from source confusion. In re Wilson, 57 USPQ2d 1863, 1865-66 (TTAB 2001) (where marks are very similar and goods related, confusion may be likely even among sophisticated purchasers); In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988) (“Being knowledgeable and/or sophisticated in a particular field does not necessarily endow one with knowledge and sophistication in con- Opposition No. 91198031 Opposition No. 91198032 24 inexpensive, applicant does not deny that at least some are, and that these goods and services are sold to the general public, at least some of whom are relatively un- sophisticated. Further, our finding above that applicant’s and opposer’s services are identical (at least in part), compels a presumption that such identical services are rendered to identical customers in the same channels of trade. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); 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 In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence re- garding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). We accordingly find that opposer’s and applicant’s services are (at least in part) rendered to the same customers in the same channels of trade. Moreover, we do not find that customers for the parties’ goods and services are likely to take such a de- gree of care in selecting them as would dispel any likelihood of confusion. Rather, nection with the use of trademarks.”). Opposition No. 91198031 Opposition No. 91198032 25 the goods and services appear to include moderately-priced items sold to ordinary customers who would exercise no more than an ordinary degree of care. This du Pont factor favors a finding of likelihood of confusion. F. Fair Use Applicant raises a defense of fair use, citing KP Permanent Make-Up Inc. v. Last- ing Impression I Inc., 543 U.S. 111, 72 USPQ2d 1833 (2004), and Trademark Act § 33(b)(4), 15 U.S.C. § 1115(b)(4). App. Br. at 4. Applicant failed to plead this de- fense, but in any event, it is inapplicable. The fair use defense set out in the cited statutory provision and discussed in KP Permanent Make-Up provides a defense to a charge of infringement for a party whose [1] use of the name, term, or device charged to be an infringement [2] is a use, otherwise than as a mark, ... [3] of a term or device which is de- scriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.... Trademark Act § 33(b)(4) (numbering and emphasis added). As is clear from the quoted statutory language, the fair use defense does not ap- ply in this - or any other - Board proceeding. First, this statutory provision is a defense to a claim of infringement, where the issue is the defendant’s right to use a “name, term, or device charged to be an infringement.” Trademark Act § 33(b)(4)[1]. But the question in this, and any other Board proceeding, is not whether applicant has a right to use a disputed term, but whether applicant has a right to register it. While it is sometimes said that the right to register follows the right to use, such Opposition No. 91198031 Opposition No. 91198032 26 statements are generalizations at best; in fact, there are many cases in which one may have a right to use matter which is nonetheless unregistrable. In re du Pont, 177 USPQ at 569 (CCPA 1973). Thus, while the statute provides a limited defense to a charge of infringement (even at the risk of some confusion), KP Permanent Make-Up, 72 USPQ2d at 1838, the statute provides no “fair use” right to register a mark which is likely to confuse. The inapplicability of the statutory fair use defense is even clearer when the next clause is considered: The use to which the defense applies is only “a use, oth- erwise than as a mark.” Trademark Act § 33(b)(4)[2] (emphasis added). Of course no applicant for registration (or registrant) could satisfy this requirement because the very basis of registration is the claim that the applied-for word or device is (or is in- tended to be) used as a mark. And finally, the fair use defense applies only when the term or device used by the defendant “is descriptive of and used ... only to describe the [defendant’s] goods and services.” Trademark Act § 33(b)(4)[3]. But applicant here does not allege that MOTOZONE is descriptive, and doing so would not likely have helped applicant’s argument for registrability, as descriptive terms are gener- ally unregistrable pursuant to Trademark Act § 2(e)(1). V. Other Issues Finally, applicant argues that “Opposer is attempting to monopolize the use of the word ‘zone,’ ” and raises what applicant calls a “rule of reason defense.” App. Br. at 4-5. As to the first point, applicant states that opposer has been a plaintiff in a num- Opposition No. 91198031 Opposition No. 91198032 27 ber of Board proceedings, asserting its marks against “any company attempting to use the word ‘zone.’ ” Applicant argues that “attempting to monopolize any part of trade or commerce is a felony.” Id. at 4 (citing 15 U.S.C. § 2); App. Not. of Reliance Exh. 14 (TTABVue listing of proceedings involving opposer). We cannot consider applicant’s argument; the jurisdiction of the Trademark Tri- al and Appeal Board does not extend to antitrust claims or to any criminal matter. Nobelle.com LLC v. Qwest Comm’ns Int’l Inc., 66 USPQ2d 1300, 1305 (TTAB 2003) (Board has no jurisdiction over antitrust or unfair competition claims); McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) (“[T]he Board's jurisdiction is limited to determining whether trademark reg- istrations should issue or whether registrations should be maintained; it does not have authority to determine whether a party has engaged in criminal or civil wrongdoings.”), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. July 11, 2007). The sole question before us is the registrability of applicant’s marks, and suffice it to say that as far as trademark law is concerned, this record does not demonstrate that opposer has done anything improper in this or any other proceeding. Applicant’s “rule of reason defense”20 appears also to be borrowed from antitrust law, where the “rule of reason” is a standard applied to determine whether certain 20 It is not clear that the rule of reason is a “defense” even in an antitrust case, but to the extent it is, it was not pleaded by applicant. Opposition No. 91198031 Opposition No. 91198032 28 restraints of trade violate the law.21 Again, we have no authority to determine ques- tions of unfair competition or antitrust law; our determination of registrability must be made pursuant to the relevant provisions of the Trademark Act and the cases in- terpreting it. But to the extent applicant complains that opposer “has not demon- strated any anticompetitive effects, or actual harm to competition,” App. Br. at 4, applicant appears to apply the wrong standard. To prevail on a claim under Trade- mark Act § 2(d), an opposer need not show that confusion or other harm has actual- ly resulted, or that it definitely will. A mark is unregistrable if it is “likely, when used on or in connection with the [services] of the applicant, to cause confusion, or to cause mistake, or to deceive.” Trademark Act § 2(d) (emphasis added). While evi- dence of actual confusion is highly relevant to this inquiry, its absence very rarely is. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). We conclude that opposer’s failure to introduce evidence of competitive harm resulting from applicant’s use or registration is not relevant in this case. VI. Conclusion We have carefully considered all of the evidence and argument submitted by the parties, including that which we have not specifically mentioned. We have found 21 Stated briefly, in antitrust law, some restraints of trade have historically been treated as per se illegal, while others are subject to the so-called “rule of reason.” Under the latter standard, all of the circumstances are considered to determine “whether the restraint im- posed is such as merely regulates and perhaps thereby promotes competition or whether it is such as may suppress or even destroy competition.” Bd. of Trade of Chicago v. United States, 246 U.S. 231, 238 (1918) (quoted in Am. Needle, Inc. v. Nat’l Football League, 130 S. Ct. 2201, 2217 (2010)). Opposition No. 91198031 Opposition No. 91198032 29 that opposer’s AUTOZONE and ZONE marks are similar to applicant’s MOTO- ZONE mark, that the parties’ goods and services are partly identical and otherwise related, and that the parties’ customers and channels of trade, are likewise identical at least in part. Moreover, all of these findings must be considered in light of the fame of opposer’s AUTOZONE mark, a factor which strongly influences our deci- sion. In conclusion, we find that applicant’s use of its stylized MOTOZONE mark in connection with the services recited in each of the subject applications raises a like- lihood of confusion with opposer’s AUTOZONE and ZONE trademarks. Accordingly, registration to applicant is refused as to both Application No. 85007591 and Appli- cation No. 85007520. Decision: The oppositions to registration are SUSTAINED and registration to ap- plicant is refused.