BFS Brands, LLCv.Hercules Tire & Rubber Co.

Trademark Trial and Appeal Board

Jul 30, 2002

No. 91118201 (T.T.A.B. Jul. 30, 2002)

7/30/02

Paper No. 14
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

BFS Brands, LLC1
v.
Hercules Tire & Rubber Company
_____

Opposition No. 118,201
to application Serial No. 75/618,610
filed on January 11, 1999
_____

Peter G. Mack of Foley & Lardner for BFS Brands, LLC.

Donald R. Fraser of MacMillan, Sobanski & Todd LLC for
Hercules Tire & Rubber Company.
______

Before Hohein, Bucher and Bottorff, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant Hercules Tire & Rubber Company
(“applicant”) seeks registration on the Principal
Register of the mark SIGNET WINTER TRAX (in typed form;
WINTER disclaimed) for “vehicular tires.”2

1 By change of name from Bridgestone/Firestone Research, Inc.,
recorded in the Assignment Branch at Reel 2401, Frame 0692.

2 Serial No. 75/618,610, filed January 11, 1999. The
application was filed as an intent-to-use application; an
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 118,201
2
Registration has been opposed by BFS Brands, LLC
(“opposer”), on the ground that applicant’s mark, as
applied to applicant’s goods, so resembles opposer’s mark
WINTERTRAX, previously used by opposer on vehicle tires
and not abandoned, as to be likely to cause confusion, to
cause mistake, or to deceive, and that registration of
applicant’s mark accordingly is barred under Trademark
Act Section 2(d), 15 U.S.C. §1052(d).3 Applicant filed an
answer by which it denied the allegations of the notice
of opposition which are essential to opposer’s claim.
The evidence of record consists of the pleadings
herein, the file of the opposed application, the
testimony deposition of opposer’s witness Philip J. Pasci
(and exhibits thereto), the stipulated testimony of
opposer’s witness Michael Mileski (and exhibit attached
thereto), and opposer’s notice of reliance on certain of
applicant’s responses to opposer’s interrogatories.
Applicant submitted no evidence.

Amendment to Allege Use was filed on July 26, 1999, alleging
April 1, 1999 as the date of first use anywhere and the date of
first use in commerce.
3 Opposer’s notice of opposition also alleges, as a separate
ground of opposition, that applicant has not used the unitary
mark depicted on the drawing page of the application. Opposer
has not presented any evidence, nor any argument in its brief,
in support of this allegation. Accordingly, we deem opposer to
have waived this pleaded ground of opposition, and we give it no
further consideration.

Opposition No. 118,201
3
Opposer filed a brief on the case, but applicant
filed no brief. No oral hearing was requested. We
sustain the opposition.
The undisputed evidence of record establishes that
opposer has continuously used the mark WINTERTRAX on
vehicle tires since August 1997, a date prior to the
earliest date upon which applicant can rely, i.e., the
January 11, 1999 application filing date. In view
thereof, we find that opposer has established its
standing to bring this opposition proceeding, as well as
its Section 2(d) priority.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I.
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect
of differences in the essential characteristics of the
goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
Opposition No. 118,201
4
Based on the testimony of opposer’s witnesses and
the exhibits attached thereto, and on the identification
of goods in applicant’s application, we find that the
parties’ goods are identical, i.e., passenger vehicle
tires. In view of the identity of goods, and in view of
the absence of any restrictions in applicant’s
identification of goods as to trade channels or classes
of purchasers, we further find that the parties’
respective goods move in the same trade channels, and are
marketed to the same classes of purchasers. These facts
weigh in favor of a finding of likelihood of confusion.
We also find that applicant’s mark SIGNET WINTER
TRAX and opposer’s mark WINTERTRAX are confusingly
similar in their overall commercial impressions, when the
marks are compared in their entireties in terms of
appearance, sound and connotation. 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 that confusion as to the source of
the goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather an a
specific impression of trademarks. See Sealed Air Corp.
Opposition No. 118,201
5
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Where, as
in the present case, the marks would appear on virtually
identical goods, the degree of similarity between the
marks which is necessary to support a finding of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ 1698 (Fed.
Cir. 1992).
Applying these principles to the present case, we
find that opposer’s mark WINTERTRAX and the WINTER TRAX
portion of applicant’s mark are identical in terms of
sound and connotation, and essentially identical in terms
of appearance; the presence of a space between WINTER and
TRAX in applicant’s mark, and the absence of such space
in opposer’s mark, are inconsequential for purposes of
our comparison of the two marks. The similarity in
appearance is further enhanced by the fact that both
marks use the same misspelling of the word TRACKS, i.e.
TRAX.
Likewise, the presence of the apparent house mark
SIGNET in applicant’s mark does not suffice to eliminate
the confusing similarity between the parties’ marks.
WINTERTRAX, or its equivalent WINTER TRAX, is
sufficiently distinctive that applicant’s addition of a
house mark will not avoid a likelihood of confusion.
Opposition No. 118,201
6
See, e.g., In re Christian Dior, S.A., 225 USPQ 533 (TTAB
1985), and cases cited therein. Purchasers familiar with
applicant’s SIGNET WINTER TRAX mark for tires, upon
encountering opposer’s WINTERTRAX tires, will be likely
to assume that there is a source or sponsorship
connection between the two.
Thus, given the identical nature of the goods, trade
channels and classes of customers, and the similarity of
the marks in terms of their overall commercial
impressions, we find that a likelihood of confusion
exists in this case, and that registration of applicant’s
mark is barred under
Opposition No. 118,201
7
Trademark Act Section 2(d).

Decision: The opposition is sustained, and
registration to applicant is refused.