Boss Industries, Inc.

Trademark Trial and Appeal Board

Sep 27, 2007

No. 78643019 (T.T.A.B. Sep. 27, 2007)

Mailed: September 27, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Boss Industries, Inc.
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Serial No. 78643019

Garron M. Hobson of Thorpe North & Western L.L.P. for Boss
Industries, Inc.

William Breckenfeld, Trademark Examining Attorney, Law
Office 116 (Michael Baird, Managing Attorney).
_______

Before Hairston, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Boss Industries, Inc. has filed an application to
register on the Principal Register the mark BOSS NOSS (in
standard character form) for goods ultimately identified as
“kits for injecting nitrous oxide into internal combustion
engines for use with snowmobiles” in International Class 7.1
Registration has been finally refused under Section

1 Serial No. 78643019, filed on June 3, 2005, which alleges dates
of first use of June 1, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78643019
2
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the previously registered
marks NOS2 (in standard character form) and the mark shown
below,3

both for “fuel injector kits for injecting nitrous oxide
and a fuel mixture into an internal combustion engine and
nozzles for fuel injection,” as to be likely to cause
confusion. The cited registrations are owned by the same
entity.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201

2 Registration No. 1738011, issued on December 8, 1992; renewed.
3 Registration No. 1725069, issued on October 20, 1992; renewed.
Ser No. 78643019
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(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Considering first the similarity of the goods, we note
that applicant does not argue that its goods are dissimilar
to those of registrant. In fact, we note that applicant’s
kits for injecting nitrous oxide into internal combustion
engines for use with snowmobiles are within the scope of
registrant’s fuel injector kits for injecting nitrous oxide
and a fuel mixture into an internal combustion engine.
Thus, these goods are legally identical. Also, applicant’s
goods are closely related to registrant’s nozzles for fuel
injection. Further, because applicant’s and registrant’s
goods are legally identical and otherwise closely related,
the channels of trade and purchasers are legally identical.
We turn, therefore, to a consideration of the marks,
keeping in mind the well-established principle that when
marks would appear on virtually identical goods, the degree
of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Ser No. 78643019
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Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
With respect to the marks, we must determine whether
applicant’s mark and registrant’s marks, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, 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 than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
The examining attorney contends that the marks are
similar in sound, appearance, connotation and commercial
Ser No. 78643019
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impression. Specifically, the examining attorney argues
that the dominant feature of applicant’s mark is the term
NOSS; that the term BOSS merely modifies NOSS; that the
only other difference is the additional letter “S” in the
term NOSS; that there is no correct pronunciation of a
trademark, although NOSS and NOS could be pronounced the
same; and that due to the shared term NOS/NOSS, the marks
create similar commercial impressions.
Applicant, on the other hand, argues that the term
BOSS is the dominant portion of its mark because it has
been using the mark BOSS in connection with its
snowmobiling products since 1996; that purchasers, upon
seeing applicant’s mark BOSS NOSS will immediately
associate the mark with applicant’s products; that the
addition of the term BOSS to NOSS and the extra letter “S”
therein are sufficient to distinguish applicant’s mark from
the registrant’s marks; that the term NOS is an acronym for
the generic/descriptive term “nitrous oxide system;” and
that, therefore, registrant’s marks are weak and entitled
to a limited scope of protection. Applicant has submitted
a “Wikipedia” printout for the entry “nitrous oxide” and
four other Internet printouts which contain references to
the term NOS.
Ser No. 78643019
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Applicant’s argument that the BOSS portion of its mark
is well known in connection with applicant’s snowmobiling
products is not supported by any evidence. That is, the
record is silent as to the extent of sales under the BOSS
mark or as to applicant’s expenditures in placing the mark
before the purchasing public. Suffice it to say that we
are unable to conclude that the BOSS portion of applicant’s
mark is dominant for the reason urged by applicant.
Rather, we agree with the examining attorney that NOSS is
the dominant portion of such mark with BOSS simply
modifying NOSS.
Further, applicant’s argument that the term NOS is
generic/descriptive in relation to applicant’s goods is not
persuasive4 and it is an impermissible collateral attack on
the cited registration. Such an attack will not be
entertained in an ex parte appeal. See e.g., In re Peebles
Inc., 23 USPQ2d 1795 (TTAB 1992); and In re C. F. Hathaway
Co., 190 USPQ 343 (TTAB 1976).
In this case, there are specific differences in
applicant’s mark BOSS NOSS and the cited mark NOS (in
standard character form): the term BOSS in applicant’s
mark; and the extra letter “S” in NOSS. Consumers are not,

4 For example, it is not clear that the term NOS is used in the
Internet printouts in a generic/descriptive manner.
Ser No. 78643019
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however, likely to note the extra “S” in NOSS. Further,
the word BOSS in applicant’s mark does not serve to
distinguish applicant’s mark; rather consumers will regard
BOSS NOSS and NOS as variant marks identifying origin in a
single source. Consumers are likely to view BOSS NOSS as
identifying fuel injection kits which provide the ultimate
in performance originating from registrant.5
Further, because there is no correct pronunciation of
a trademark, someone who has heard (rather than seen) the
mark NOS for fuel injector kits and nozzles and sees BOSS
NOSS for fuel injector kits may well pronounce NOSS the
same as the term NOS and, again, believe that the marks are
variants of each other. Thus, when considered in their
entireties, we find that the respective marks BOSS NOSS and
NOS are sufficiently similar in sound, appearance,
connotation and commercial impression that, when used on
the identical and otherwise closely related goods involved
herein, confusion as to source is likely.
For the foregoing reasons, we also find that
applicant’s BOSS NOSS mark and registrant’s NOS and design

5 In this regard, we judicially notice that the word “boss” is
defined, inter alia, as “Slang. First-rate; topnotch.” The
American Heritage Dictionary of the English Language (4th ed.
2006).
Ser No. 78643019
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mark are similar in sound, appearance, connotation and
commercial impression. Registrant’s NOS and design mark is
depicted in an extra bold font with an arrow emanating from
the letter “N.” By comparison, applicant depicts its BOSS
NOSS mark in standard character form. Accordingly, in
deciding the issue of likelihood of confusion, we must
consider all reasonable manners in which applicant’s mark
could be displayed. See Jockey International Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992), and
cases cited therein. One reasonable depiction of
applicant’s mark would include BOSS NOSS in the same extra
bold font as used by registrant in its NOS and design mark.
Perhaps use of an arrow, similar to that shown in the cited
registration, would not constitute a reasonable depiction,
but where as here, the goods are identical and otherwise
closely related, this design feature in registrant’s mark
would not be sufficient to distinguish the marks.
Consequently, when considered in their entireties,
applicant’s BOSS NOSS mark and the cited registrant’s NOS
and design mark project similar commercial impressions.
We recognize that purchasers of fuel injector kits of
the type involved herein may be discriminating in the
selection of products for their use. However, they are
still likely to be confused as to the source of legally
Ser No. 78643019
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identical and otherwise closely related goods when such
goods are identified by similar marks. That is, even
careful purchasers are not immune from confusion. See
Wincharger Corporation v. Rinco, Inc., 132 USPQ 289 (CCPA
1962).
Lastly, to the extent that any of the points argued by
applicant raise doubt on our conclusion on the issue of
likelihood of confusion, we resolve that doubt, as we must,
in favor of the prior registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988);
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984).
We conclude that purchasers and prospective customers,
who are familiar with either of registrant’s marks NOS
(standard character form) or NOS and design for fuel
injector kits for injecting nitrous oxide and a fuel
mixture into an internal combustion engine and nozzles for
fuel injection, would be likely to believe, upon
encountering applicant’s BOSS NOSS mark for its kits for
injecting nitrous oxide into internal combustion engines
for use with snowmobiles, that such goods emanate from, or
are sponsored by or associated with, the same source.
Decision: The refusal to register applicant’s mark on
the ground that it is likely to cause confusion with
Ser No. 78643019
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Registration Nos. 1738011 and 1725069 under Section 2(d) of
the Trademark Act is affirmed.