Cooper Tire & Rubber Co.

Trademark Trial and Appeal Board

Aug 4, 1999

No. 74671275 (T.T.A.B. Aug. 4, 1999)

Hearing: Paper No. 20
October 15, 1998 SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 4, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cooper Tire & Rubber Company
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Serial No. 74/671,275
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James E. Shlesinger of Shlesinger, Arkwright & Garvey, LLP
for Cooper Tire & Rubber Company.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney)
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Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Cooper Tire & Rubber Company (applicant) has appealed
from the final refusal of the Trademark Examining Attorney
to register the mark ENFORCER for automobile tires sold
through large retail chains.1 The Examining Attorney has
refused registration under Section 2(d) of the Act, 15 USC

1 Application Serial No. 74/671,275, filed May 8, 1995, based
upon applicant’s allegation of a bona fide intent to use the mark
in commerce.
Ser No. 74/671,275
2
§1052(d), on the basis of Registration No. 1,444,045, for
the mark shown below for mufflers, exhaust pipes, tail
pipes, shock absorbers and mounting hardware therefor, all
for land vehicles.2
We affirm.
The Examining Attorney argues that the marks are
substantially identical, the registered mark consisting of
stylization insignificant enough to distinguish the marks.
The Examining Attorney argues that where the respective
marks are substantially the same, the relationship between
the goods need not be as close to support a finding of
likelihood of confusion. With respect to the goods, the
Examining Attorney notes that applicant has conceded that
the goods (mufflers, exhaust pipes, shock absorbers,

2 Registration No. 1,444,045, issued June 23, 1987, Sections 8
and 15 affidavit filed. The Examining Attorney also cited
Registration No. 1,102,071, issued September 12, 1978, for the
mark ENFORCER for shock absorbers. This registration, held by
the same registrant, has since expired.
Ser No. 74/671,275
3
automobile tires) travel in the same channels of trade.3
Concerning the consumers, the Examining Attorney argues
that while the purchase of tires and replacement automotive
parts is not an impulse purchase, this does not mean that
the consumers are necessarily sophisticated purchasers.
The Examining Attorney contends that care and attention
will be paid to quality and price. The Examining Attorney
also argues that any doubt must be resolved in favor of the
registrant.
Applicant, on the other hand, argues that the
registered mark is “laudatorily suggestive” of something
which strengthens. With respect to the goods, applicant
argues that the connection between tires and structural
automobile parts is “too tenuous.” In this regard,
applicant states that its customers are automobile
manufacturers, independent tire dealers and wholesale
distributors, as well as large retail chains. Applicant
argues that there is no evidence that ordinary consumers
would buy shock absorbers, mufflers or other goods set

3 In this regard, see applicant’s brief, 3,7, and the Pecoraro
affidavit, 2.
With respect to these large retail chain
outlets, it is customary for these retail
outlets to sell mufflers, exhaust pipes,
tail pipes, shock absorbers and mounting
hardware therefore [sic], all for land
vehicles as one product line.
Ser No. 74/671,275
4
forth in the registration. According to applicant,
consumers would not be likely to believe that the
manufacturer of shock absorbers or mufflers also makes
tires because of the different manufacturing processes
involved. Even though these goods may travel in the same
channels of trade, applicant argues that that is an
insufficient basis for finding likelihood of confusion. In
addition, applicant has submitted the affidavit of its
manager of product marketing (Pecoraro) attesting to the
lack of instances of actual confusion since use commenced
in August 1995. Applicant has also made of record third-
party registrations covering essentially the same mark
(ENFORCER) owned by different entities covering such goods
as anti-theft alarms and radar detectors. In this
connection, applicant argues that the existence of these
and numerous other third-party registrations of various
marks for tires on the one hand and automobiles and/or
structural or replacement parts therefor on the other
issued to different entities suggests that consumers are
conditioned to distinguish the source of tires from the
source of structural or replacement parts made by others.
In response, the Examining Attorney argues that the
third-party registrations for the mark ENFORCER cover
specialized electronic accessories likely to be sold in
Ser No. 74/671,275
5
electronic stores rather than automotive stores. The
Examining Attorney also argues that the third-party
registrations issued to different entities are not evidence
of what happens in the marketplace or that the public is
familiar with those registered marks. Concerning the lack
of instances of actual confusion, the Examining Attorney
contends that applicant’s use for only about two years is
an insufficient basis on which to conclude that confusion
is unlikely.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely. The marks here are
substantially identical and, because these goods (tires and
mufflers, exhaust pipes, shock absorbers, etc.) concededly
travel in the same channels of trade, we believe that the
Examining Attorney has made out a prima facie case that
confusion is likely. We believe that consumers, aware of
registrant’s ENFORCER mufflers, shock absorbers, exhaust
pipes, etc. sold in the automotive departments of large
general retail merchandisers (such as Sears and Pep Boys)
who then encounter applicant’s ENFORCER automobile tires in
those same stores, are likely to believe that these goods
come from the same source or are sponsored or endorsed by
the same entity. See, for example, In re Jeep Corporation,
Ser No. 74/671,275
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222 USPQ 333 (TTAB 1984) and cases cited therein. See also
In re Uniroyal, 177 USPQ 29 (TTAB 1973) (KODIAK for tires
v. KODIAK for automobile heaters and KODIAK and design for
antifreeze) and In re Red Diamond Battery Co., 203 USPQ 472
(TTAB 1979) (RED DIAMOND for storage batteries v. DIAMOND
for tires). Compare In re Dayco Products–Eaglemotive Inc.,
9 USPQ2d 1910 (TTAB 1988) (involving the mark IMPERIAL).
Finally, the Examining Attorney is correct that any doubt
must be resolved in favor of the prior user and registrant.
Decision: The refusal of registration is affirmed.
R. L. Simms
R. F. Cissel
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board