Brisk America LLC

Trademark Trial and Appeal Board

Apr 7, 1999

No. 75141467 (T.T.A.B. Apr. 7, 1999)

Paper No. 7
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 7, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Brisk America LLC
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Serial No. 75/141,467
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Robert E. Malm for Brisk America LLC.
Cindy B. Greenbaum, Trademark Examining Attorney, Law
Office 104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Cissel, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, Brisk America LLC, a Nevada limited
liability company, has filed an application for
registration of the mark “TRI STAR” for “spark plugs.”1
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the

1 Serial No. 75/141,467, in International Class 7, filed July
29, 1996, based upon an allegation of a bona fide intention to
use the mark in commerce.
Ser No. 75/141,467
2
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's proposed mark, “TRI STAR” if used on spark
plugs, would so resemble the following four registered
marks, owned by Tri Star International, Inc., an Ohio
corporation, as to be likely to cause confusion, or to
cause mistake, or to deceive:
(1) “TRI STAR” as applied to "automatic transmissions
with torque converters for automobiles and
trucks, and parts therefor,”2;
(2) “TRI STAR and design” as shown below, as applied
to “land vehicle automatic transmissions with
torque converter and parts therefor,” 3;
(3) “TRI STAR and design” as shown below, as applied
to “balanced torque converters for land vehicle
transmissions,” 4;

2 Registration No. 1,315,666, issued on January 22, 1985.
The registration sets forth dates of first use of August 7, 1981;
§8 affidavit accepted and §15 affidavit filed.
3 Registration No. 1,587,687, issued on March 20, 1990. The
registration sets forth dates of first use of January 1984; §8
affidavit accepted and §15 affidavit filed.
4 Registration No. 1,587,688 issued on March 20, 1990. The
registration sets forth dates of first use of January 1985; §8
affidavit accepted and §15 affidavit filed.
Ser No. 75/141,467
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(4) “TRI STAR and design” as shown below, as applied
to “land vehicle transmission rebuild kits, sold
as a unit.” 5;
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont DeNemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
which case sets forth the factors that should be
considered, if relevant, in determining likelihood of
confusion.
The Marks
We must consider the marks in their entireties --
words and/or designs. Applicant and registrant use

5 Registration No. 1,589,876, issued on April 3, 1990. The
registration sets forth dates of first use of January 1985; §8
affidavit accepted and §15 affidavit filed.
Ser No. 75/141,467
4
identical word marks –- “TRI STAR.” Further, the dominant
feature of each of registrant’s design marks is also the
literal designation, “TRI STAR.” This “TRI STAR” theme is
reinforced visually, in that the design features in two of
the three registered marks depict “three stars” –- in the
framing area of a rounded, oblong carrier device, and again
atop three-dimensional-looking star trails. The final
registration has “TRI STAR” amidst the depiction of a globe
– this one without any separate, three-star visualizations.
We agree with the Trademark Examining Attorney that
the word portions of the marks are identical, have the same
connotation, and give the same commercial impression.
Nothing in the record suggests this matter is in any way
even suggestive (much less descriptive) of either
transmissions or spark plugs. Accordingly, this mark seems
to be arbitrary as applied to these goods. On its face, it
would appear to be a relatively strong trademark.
In this regard, the present case is much like the
situations in In re Jeep Corp., 222 USPQ 333 (TTAB 1984)
["LAREDO" for land vehicles and structural parts therefor
vs. "LAREDO" for pneumatic tires]; In re General Motors
Corp., 196 USPQ 574 (TTAB 1977) ["STARFIRE" for automobiles
vs. "STARFIRE" for automotive shock absorbers]; and Jetzon
Tire & Rubber Corp. v. General Motors Corp., 177 USPQ 476
Ser No. 75/141,467
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(TTAB 1973) ["GEMINI" and "GMINI" for automobiles vs.
"GEMINI" for vehicle tires], all of which involved
arbitrary marks.6
Under this first of the du Pont factors, the identity
of words, connotation, and commercial impression weighs
heavily against the applicant. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 1566, 223 USPQ 1289,
1290 (Fed. Cir. 1984).
The Goods
The Trademark Examining Attorney argues from case law,
third-party registrations, and advertisements from a
classified directory, that the “…contemporaneous use of the
identical words TRI STAR on the applicant's spark plugs and
the registrant's automotive transmissions and related
components would be likely to cause confusion because the
goods are highly related automotive items which are
intended to be used together…”
This relationship does not hinge upon any per se rule
that all auto parts are related. Rather, citing to a
variety of cases from this Board and our reviewing court,

6 Contra, In re Dayco Products-Eaglemotive Inc., 9 USPQ2d
1910 (TTAB 1988) ["IMPERIAL" used by others in the vehicular
field as a laudatory designation] and In re General Motors Corp.,
23 USPQ2d 1465 (TTAB 1992) [the term “GRAND PRIX" is highly
suggestive as applied to these goods].
Ser No. 75/141,467
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the Trademark Examining Attorney contends that “…likelihood
of confusion exists when different parties use the same or
similar marks on different types of automotive parts and
accessories…[cites omitted].” She goes on to argue:
The fact that the goods of the parties may
comprise different types of automotive items
is not controlling in determining likelihood
of confusion. The issue is not likelihood
of confusion between particular goods, but
likelihood of confusion as to the source of
those goods. See In re Rexel Inc., 223 USPQ
830, 831, (TTAB 1984), and cases cited
therein; TMEP section 1207.01.
The logic for concluding from the case law that these
goods are related, is quoted by the Trademark Examining
Attorney as follows:
[Various case holdings cited in Jeep] were
based upon the facts that the goods in
question all comprised automotive parts,
accessories, and equipment which could be
purchased through the same channels of
trade, including dealers, service stations,
automotive accessory and supply stores, or
the automotive departments of general
merchandisers, by the same classes of
purchasers, such as mechanics, dealers, and
motorists.
In re Jeep Corp., 222 USPQ at 334.
Accordingly, based upon the entire record herein, we
conclude that this second important du Pont factor also
favors the position of the Trademark Examining Attorney.
Ser No. 75/141,467
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Trade Channels
We also concur with the Trademark Examining Attorney’s
conclusions that
neither the applicant nor the registrant has
limited its channels of trade or its class
of purchasers. It is therefore presumed
that the application and registration
encompass all goods of the type described,
that the goods move in all normal channels
of trade, and that the goods are available
to all potential customers. In re Elbaum,
211 USPQ 639 (TTAB 1981). Thus, the
examining attorney submits that purchasers
of the applicant's spark plugs also
frequently would encounter the registrant's
vehicle transmissions and transmission parts
in the same location, such as, automotive
repair and service shops.
She has included within the record a sampling of
applications and registrations indicating that numerous
manufacturers of spark plugs also manufacture and market
automotive transmissions and transmission parts under the
same mark. We have held in the past that third-party
registrations have probative value on the issue of
likelihood of confusion to the extent that they serve to
suggest that the goods of the applicant and of the
registrant are of a type which emanate from a single
source. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 (TTAB 1988).
The Trademark Examining Attorney has submitted pages
of evidence from The One Book® -- Northern Virginia (1997),
Ser No. 75/141,467
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showing that many companies who replace and repair vehicle
transmissions also work on tuning, repairing and replacing
vehicle engines.
On the other hand, applicant argues that there is no
overlap of the trade channels for these goods. The
declaration of Daniel P. Vander Lay, solicited for this
case by applicant, serves as the basis for this conclusion.
What follows is a brief summary of his assertions:
1. Transmission repair and engine repair and
maintenance are performed by separate entities
inasmuch as transmission repairs are the
exclusive province of transmission specialists;
2. “Do-it-yourself-ers” who may indeed purchase and
change their own automobile spark plugs cannot
walk into an auto parts store to choose a new
or rebuilt transmission; and,
3. Sophisticated purchasers in the automotive
assembly plants would not be confused, and
would be located in totally separate
departments of a large manufacturing plant.
First, we cannot help but notice the temporizing
contained within the declaration (“…trade channels … are
almost completely isolated from one another…”; “General
repair shops do not, in general, repair transmissions…”;
“…the parts stores which sell spark plugs would not, in
general, be selling transmissions…”). However, the
evidence of record from a classified directory in Northern
Virginia seems to expose a much larger exception to these
Ser No. 75/141,467
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general rules (at least in the Washington D.C. greater
metropolitan area) than the declaration would suggest.
The majority of the potential consumers of applicant’s
spark plugs would be from the broad class of vehicle
owners. We are also satisfied from the evidence in the
file that the respective goods are related products having
potentially overlapping trade channels and classes of
purchasers.
Accordingly, we conclude that the du Pont factor
dealing with channels of trade again favors the position of
the Trademark Examining Attorney.
Conditions of sale
In reviewing applicant's arguments in this case, one
cannot help but notice its heavy reliance on the
combination of Electronic Design & Sales Inc. v. Electronic
Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) and
Astra Pharmaceutical Products, Inc. v. Beckman Instruments,
Inc., 718 F.2d 1201, 1206, 220 USPQ 786, 790 (1st Cir.
1983). We are asked to conclude from Electronic Design
that corporate purchasers of spark plugs and transmissions
are sophisticated. Then we are asked to conclude from
Astra Pharmaceutical that in a large organization like an
auto manufacturing plant, the buyer of spark plugs would be
a different individual than the one who procures
Ser No. 75/141,467
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transmissions. However, we find that this case does not
present us with a fact situation like Electronic Design or
Astra Pharmaceutical. We agree with the Trademark
Examining Attorney that the “goods at issue herein are
quite straight-forward. Spark plugs and transmissions are
widely available items with which all automobile owners are
familiar, and are not at all like the expensive, highly
technical and complicated goods and services involved in
Electronic Design…” Further, unlike the situation in Astra
Pharmaceutical, these goods are not purchased exclusively
by experienced corporate personnel cloistered within their
own specialized departments of large institutions.
Instead, in spite of nation-wide advertising campaigns by
the largest spark plug manufacturers aimed at building
strong brand identification among consumers for spark
plugs, the average motorist may well consider the brand of
new spark plugs installed into one’s car to be less
important than, for example, one’s own past experiences
with the auto mechanic installing the plugs. If true,
given the relatively low price of spark plugs, this
indicates that among vehicle owners, purchasing new spark
plugs is much closer to being an “impulse” purchase than to
being an informed and sophisticated decision-making process
based upon careful weighing, comparisons and evaluations.
Ser No. 75/141,467
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This cumulative evidence supports the Trademark
Examining Attorney’s position that ordinary purchasers are
accustomed to viewing the same or similar marks on the
goods of the type to be sold by applicant and those sold by
registrant. Again, this du Pont factor supports a refusal
to register under Section 2(d) of the Act.
Strength of Mark
The record fails to indicate that even one other party
besides the applicant and the registrant is making use of
the mark TRI STAR for any type of goods that may be
characterized as auto parts. Hence, it can hardly be
argued that this arbitrary matter is in any way
intrinsically weak as a source identifier for registrant.
Decision
Based on the substantially identical portions of the
marks, the fact that the goods are highly related
automotive components that will be used together on the
same vehicle, that these goods move in the same trade
channels, would be viewed by the same class of ordinary
consumers, and that the term, “TRI STAR,” is arbitrary in
the field of vehicle components, we conclude that
purchasers who encounter the marks of the applicant and the
registrant on their respective goods would mistakenly
Ser No. 75/141,467
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believe that the goods originate from or are in some way
associated with the same producer. See Hercules Inc. v.
National Starch and Chemical Corp., 223 USPQ 1244, 1247
(TTAB 1984). Hence, the refusal to register is hereby
affirmed.
R. F. Cissel
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board