ExxonMobil Oil Corporation and Exxon Mobil Corporationv.Bartels Mangold Electronic GmbH

Trademark Trial and Appeal Board

Aug 2, 2007

No. 91152334 (T.T.A.B. Aug. 2, 2007)

Mailed:
August 2, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

ExxonMobil Oil Corporation and Exxon Mobil Corporation

v.

Bartels Mangold Electronic GmbH
_____

Opposition No. 91152334 to application Serial
No. 75434996 filed on February 17, 1998
_____

Paul F. Kilmer, Anthony R. Masiello and Stephen J. Jeffries
of Holland & Knight LLP for ExxonMobil Oil Corporation and
Exxon Mobil Corporation.

P. Jay Hines and Rebecca L. Roby of Baker & Hostetler LLP
for Bartels Mangold Electronic GmbH.
______

Before Bucher, Holtzman and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On February 17, 1998, applicant, Bartels Mangold
Electronic GmbH, filed an application for registration of
the mark IQMOBIL (in standard character form) on the
Principal Register for the following goods and services, as
amended:
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91152334
2
vehicle and aircraft on-board electronic
instruments for measuring and controlling air
pressure in tires, namely, an electronic data
processing system comprised of air pressure
sensors located within the tires of a vehicle or
aircraft, transmitters and control units; vehicle
and aircraft on-board electronic instruments for
measuring the components of exhaust gases and then
making corrections, if necessary, to the mixture
of fuel, comprised of exhaust sensors, actuators,
transmitters and control units; electronic diesel
engine exhaust particles filters; vehicle and
aircraft on-board electronic instruments, namely,
sensors to detect micromechanical pressure, rain,
engine revolutions per minute, engine and cockpit
temperature, rack travel, acceleration and
vibration, sensors for differential monitoring,
ignition triggering, compression chamber knock,
and oxygen concentration in fuel; electronic data
processing devices, namely, CPUs, personal
computers, laptops, palmtops, modems, printers,
displays, disks and tapes; fax machines, fax
machines combined with digital cameras, scanners
and digital cameras” in International Class 9;

telecommunication services, namely, providing
multiple-user access to a global computer
information network; telecommunication services,
namely, providing telecommunications connections
to a global computer network” in International
Class 38; and

Scientific research, research and development of
new products for others; technical consultation
and research in the field of customized programs
for measuring and control system operations in
vehicles and aircraft, CAD-CAM programs, and
picture processing programs” in International
Class 42.

Applicant has asserted a bona fide intent to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b), and has claimed priority under Section 44(d) of
the Trademark Act, 15 U.S.C. §1126(d), based on its
ownership of a German application, filed on August 25, 1997.
Opposition No. 91152334
3
Opposers, ExxonMobil Oil Corporation and Exxon Mobil
Corporation, have filed a timely notice of opposition to
registration of applicant's mark. In the notice of
opposition, opposers pleaded ownership of “a host of U.S.
trademark and service mark registrations for … MOBIL … for a
wide variety of goods and services” without identifying the
“host” of registrations; and that long prior to the filing
date of applicant's application, opposers and their
predecessors in interest have continuously used in commerce
the MOBIL names and marks; that the MOBIL names and marks
have become famous prior to the filing date of applicant's
application; and that consumers are likely to believe,
falsely, that the goods and services of applicant originate
with, are sponsored by, are endorsed by, or are otherwise
affiliated with opposers in violation of Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). Further, opposers
alleged that the registration of applicant's mark will
dilute the distinctive quality of opposers’ MOBIL names and
marks in violation of Section 43(c) of the Trademark Act, 15
U.S.C. §1125(c).
Applicant has denied the salient allegations of the
notice of opposition. The parties have fully briefed this
case.
Opposition No. 91152334
4
The Record
Of course, the record includes the file of application
Serial No. 75434996 and the pleadings. It does not,
however, include the exhibits to the pleadings because
exhibits attached to pleadings are not evidence on behalf of
the party to whose pleading they are attached unless
identified and introduced in evidence as an exhibit during
the period for the taking of testimony, and opposers did not
do so in this case. Trademark Rule 2.122(c); TBMP § 317 (2d
ed. rev. 2004). Additionally, the record includes the
following submitted by opposers’ notices of reliance; (i)
various status and tile copies of opposers’ U.S.
registrations comprising or containing the term MOBIL;
(ii) various web pages; (iii) opposers’ requests for
admissions and exhibits thereto, and opposers’ attorney's
statement that applicant did not respond to opposers’
requests for admission; (iv) two “Mobile Travel Guide[s]”;
(v) a decision involving the MOBIL mark from a foreign
tribunal; and (v) various newspaper and magazine articles.
The record also includes various web pages from opposers’
website of record submitted by applicant's notice of
reliance.
Preliminary Matters
The parties have raised several evidentiary objections
which we discuss below.
Opposition No. 91152334
5
Requests for Admissions
Applicant has objected to opposers’ reliance on
opposers’ requests for admissions which stand admitted
pursuant to Fed. R. Civ. P. 36(a) due to applicant's failure
to respond, and Exhibits A – F to the requests for
admission. According to applicant, the information admitted
is not consistent and contains inherent contradictions.
Because Trademark Rule 2.120(j)(3)(i) allows for the
introduction of requests for admissions into evidence under
the notice of reliance procedure, the unanswered requests
are properly in evidence. Applicant's objection is hence
overruled. The Board, however, has considered any
inconsistencies in the admissions and has given them the
weight that they are due.
Decision of European
Office for Harmonization
in the Internal Market (“OHIM”)

Applicant has objected to opposers’ reliance on OHIM’s
decision sustaining opposers’ objection to applicant's
Community trademark application for IQMOBIL. According to
applicant, the Board has stated that “decisions of foreign
courts in lawsuits involving a different evidentiary record
and based upon different laws are irrelevant to the issue
before us,” citing Miles Labs, Inc. v. Int’l Diagnostic
Tech., Inc. 220 USPQ 438 (TTAB 1983); and Puma-
Sportschuhfabriken Rudolf Dassler, K.G. v. Superga S.p.A.,
Opposition No. 91152334
6
204 USPQ 688 (TTAB 1979) (decisions of German courts are
“irrelevant” and “are of no probative value” and not
considered in the evaluation of the marks in controversy).
Opposers respond that the OHIM decision is “relevant
evidence regarding the disinterested perceptions of
specialized and knowledgeable judges as to the factual issue
of the similarity of the marks.” Reply at p. 6.
Trademark Rule 2.122(e), 37 C.F.R. §2.122(e), provides
that “… official records, if … competent evidence and
relevant to an issue, may be introduced in evidence by
filing a notice of reliance on the material being offered.”
Because the decisions of foreign courts are “irrelevant” or
“of no probative value,” the OHIM decision is not relevant
to any issue before the Board, including the issue of the
similarity of the marks. Thus, we sustain applicant's
objection and do not further consider the OHIM decision.
Applicant's German
National Applications for IQMOBIL

Opposers have objected to applicant's request that we
take judicial notice of two of its German applications,
submitted with applicant's main brief. Because the Board
does not take judicial notice of applications, applicant's
objection is sustained and we do not further consider the
two German applications.
Opposition No. 91152334
7
Wire Service Articles
Opposers have relied on articles taken from wire
services, such as Financial Wire, PR Newswire, Newswire and
Business Wire. Wire service articles generally have limited
evidentiary value because we cannot determine whether or to
what extent they have been broadcast or otherwise
distributed so as to reach appreciable members of the
relevant public. In re Squaw Valley Development Co., 80
USPQ2d 1264 (TTAB 2006). Accordingly, we have given the
wire service articles introduced into the record by opposers
limited weight in arriving at our decision.
Priority
Opposers have made status and title copies of the
following registrations of record, showing that they are in
full force and effect and are owned by opposer ExxonMobil
Oil Corporation:1
1. Registration No. 1046513, registered August
17, 1976 and renewed, for the mark MOBIL (in typed
form) for “automotive service station services” in
International Class 37;

1 Two registrations for which opposers filed status and title
copies have been cancelled under Section 9 of the Trademark Act.
Specifically, the Office cancelled Registration No. 1364058 on
July 22, 2006 and cancelled Registration No. 1930758 on August 5,
2006. We therefore do not further consider these registrations.

Opposition No. 91152334
8

2. Registration No. 1049824, registered October
5, 1976 and renewed, for the mark

(lined for the colors red and blue) for
“automotive service station services including car
wash services and emergency road services” in
International Class 37;

3. Registration No. 2133386, registered
January 27, 1998, for the mark

for “high performance oil filters for motors and
engines” in International Class 7, Section 8
accepted and Section 15 acknowledged;

4. Registration No. 2538994, registered February
19, 2002, for the mark MOBIL MONITOR (in typed
form, and with MONITOR disclaimed) for “computer
software used in connection with industrial
lubricant analysis and testing” in International
Class 9, and “testing, analysis, evaluation, and
reporting services in connection with industrial
lubricants” in International Class 42; and

5. Registration No. 2557896, registered April 9,
2002, for the mark MOBIL 1 E-STORE (in typed form
and with E-STORE disclaimed) for “electronic
retailing services via computer featuring motor
and motorcycle oil, grease, gear lubricants, spray
lubricants, oil filters and automatic transmission
fluid; promoting the sale of goods and services of
others through the distribution of printed
material and promotional contests via the global
computer network; products merchandising via the
global computer network; dissemination of
advertising for others via an on-line electronic
Opposition No. 91152334
9
communications network” in International Class
35.2

Collectively, we refer to the marks of the above-identified
registrations as “Opposers’ Marks.” Because opposers have
made the registrations summarized above properly of record,
opposers have established their standing to oppose
registration of applicant's mark and their priority is not
in issue. See King Candy Co., Inc. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We
add too, that applicant has not contested opposers’ standing
or priority.3
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). 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

2 We treat these registrations not specifically mentioned in the
notice of opposition as having been tried by the implied consent
of the parties and we deem opposers’ pleading amended to assert
the registrations. Fed. R. Civ. P. 15(b).

3 Opposers’ evidence of common law use is dated after the filing
date of applicant's application and does not assist opposers in
establishing priority.
Opposition No. 91152334
10
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).
The Marks
In considering the similarity between Opposers’ Marks
and applicant's mark, we determine whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
The evidence shows that IQ has a particular meaning and
would be recognized as a term separate from MOBIL.
Specifically, applicant has admitted that “IQ is an acronym
that stands for the expression ‘intelligence quotient’ and
that it is commonly recognized as such by persons in the
United States marketplace.” Request for admission no. 12.
Further, IQ would be pronounced by articulating the “I” and
the “Q” separately from MOBIL. See definition of “IQ”
submitted by opposers with their main brief from Webster’s
Ninth New Collegiate Dictionary (1986), showing the
pronunciation of “IQ” as “ī-‘kyü.”4 Thus, the MOBIL portion

4 Because opposers did not submit the definition during their
testimony period, we take judicial notice of the definition of
“IQ.” See University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
Opposition No. 91152334
11
of applicant's mark would be articulated in the same manner
as in Opposer’s Marks, and, as in opposers’ multi-term
marks, remains as a distinct term. Consequently, when we
consider the marks as a whole, we find that the marks are
highly similar when spoken, with no apparent meaning in the
context of the goods and/or services.
Applicant’s mark may be depicted in a manner so that it
is highly similar in appearance to opposers’ marks. Because
applicant’s mark is in typed form, applicant may use any
reasonable stylization of lettering, including the
stylization used by opposers. See, e.g., Phillips Petroleum
Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35 (CCPA
1971) (a mark registered in typed format is not limited to
the depiction thereof in any special form); INB National
Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992)
(“[a]s the Phillips Petroleum case makes clear, when [an]
applicant seeks a typed or block letter registration of its
word mark, then the Board must consider all reasonable
manners in which … [the word mark] could be depicted”).
Applicant's mark may be depicted in a manner that highlights
the MOBIL portion of the mark or that minimizes the
impression created by the IQ portion of the mark. By
emphasizing MOBIL, and/or by depicting MOBIL in the same

1372, 217 USPQ 505 (Fed. Cir. 1983) (the Board may take judicial
notice of dictionary definitions).
Opposition No. 91152334
12
manner as opposers, applicant heightens the visual
similarity between Opposers’ Marks and applicant's mark.
We find that the commercial impressions of the marks
are also similar. IQ, which is an initialism having a well-
understood meaning, would be pronounced separately and would
create a separate impression from MOBIL, which is not an
English language term. As such, it stands apart from MOBIL.
Hence, we find that the distinctive term, MOBIL, plays a
significant role in forming the commercial impression of
applicant’s mark. Also, in Opposers’ Marks, because MOBIL
forms the entirety of some of opposer's marks, or because it
is the dominant term in those of opposers’ marks with
additional terms (see discussion below), the commercial
impression of both applicant's mark and Opposers’ Marks is
similar.
The differences noted by applicant in the cadence and
length of the marks, and the visual impression created by
the IQ at the beginning of applicant's mark including in the
manner depicted in applicant's web page (made of record in
connection with opposers’ requests for admissions), are
outweighed by the similarities noted above. Also, there is
no evidentiary support for applicant's contention that “when
the public sees the term MOBIL, they may have reason to see
this as slang for autoMOBILe,” brief at p. 9, and it appears
unlikely to us that this would be the case.
Opposition No. 91152334
13
Several of opposers’ marks contain terms in addition to
MOBIL such as MONITOR, 1 or 1 E-STORE. The addition of
these terms does not yield a different conclusion;
applicant's mark is also similar in sound, appearance,
meaning and commercial impression to such marks. MOBIL is
the term which dominates in these marks largely because of
its positioning as the top, first or only word in each of
these marks, and because the terms MONITOR and E-STORE are
descriptive of a feature of the underlying goods or services
and have been disclaimed. (“e-” is defined as “computer or
computer network” in The American Heritage Dictionary of the
English Language (4th ed. 2006); E-STORE thus refers to an
on-line vendor; and MONITOR describes a feature of opposers’
research and development services.) “[T]he ‘descriptive
component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000), quoting, In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985). See also M2
Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78
USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When comparing the
similarity of marks, a disclaimed term, here
‘COMMUNICATIONS,’ may be given little weight, but it may not
be ignored”). Thus, even when considering each of these
marks as a whole, MOBIL forms the dominant part of each
Opposition No. 91152334
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mark. See In re Chatam Intern. Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004) (it is proper to give each term
in the conflicting marks “more or less weight depending on
its effect on the overall commercial impression.”).
In view of the foregoing, and because opposers’ and
applicant's marks are highly similar in appearance, sound,
and commercial impression, we conclude that applicant's mark
is highly similar to Opposers’ Marks when considered in
their entireties. The du Pont factor regarding the
similarity of the marks is therefore resolved in opposers’
favor.
The Goods, Services and Trade Channels
We now consider the similarity of the goods, services
and established, likely-to-continue trade channels,
beginning with applicant's International Class 9 goods.
Opposers focus on the following goods in the application in
arguing that a relationship exists between applicant's goods
and opposers’ goods and services:
sensors for monitoring the level of oxygen in the
fuel, the triggering of the ignition, and
“compression chamber knock”;

exhaust filters for diesel engines;

electronic instruments for measuring and
controlling tire pressure, and exhaust; and

electronic processing devices, namely, CPUs.

As indicated by specific limitations in applicant's
identification of goods, and as reinforced by the
Opposition No. 91152334
15
information on applicant's web site made of record in
connection with opposers’ requests for admissions, the
sensors and the electronic instruments mentioned above are
intended for use in connection with vehicles. Applicant's
“exhaust filters for diesel engines,” which contain no use
restrictions, would also be used in vehicles, albeit only
those with diesel engines. Because vehicles require
lubricants, we find that applicant's above-listed goods are
related to the goods of opposers’ registrations in that both
parties’ goods may be used in the same vehicles. Further,
applicant's vehicle parts are related to opposers’ service
station services in that repairs to applicant's goods, or
the installation of applicant's goods as replacements, may
be made in opposers' service stations.5 Also, the
“electronic data processing devices” are related to
opposers’ goods and services; applicant’s web page indicates
that they are intended to provide a “display on the
dashboard” for applicant's devices for monitoring tire
pressure. See Exhibit B to opposers’ requests for
admissions stating that “RDKS® prototype systems come with a

5 Opposers have submitted a dictionary definition of “service
station” with their reply brief. The definition, taken from
Webster’s New World Dictionary (1982), of which we take judicial
notice, states in relevant part that a service station is “a
place providing maintenance service, parts, supplies, etc. for
mechanical or electrical equipment[;] 2. a place providing such
service, and selling gasoline and oil, for motor vehicles; gas
station.” Thus, we find that opposers’ service station services
include vehicle repair services.

Opposition No. 91152334
16
CAN bus LCD display unit and provide options for passing
RDKS® readouts to a PC or Laptop thorough a CAN and/or V24
interface ….”
The Board has found in the past that vehicle parts are
related to lubricants and service station services. See
International Harvester Co. v. BP Corp., 181 USPQ 595, 597
(TTAB 1974) (gasoline, diesel fuel and automotive service
stations are closely related to construction vehicles,
trucks and parts therefor, stating “there is some
relationship between the goods and services of the parties
in that purchasers and/or operators of construction
equipment and trucks bearing one or more of opposer's marks
may well encounter or use one of applicant's ‘PAY-LO’
service stations selling diesel fuel”); Permatex Co., Inc.
v. California Tube Products, Inc., 175 USPQ 764, 765 (TTAB
1972) (“engine exhaust system components, namely, headers,
header extensions, header flanges, header collectors,
mufflers, tail pipes, scavengers and brackets, blocking
plates, and header bolts for assembly of such components”
are closely related to lubricants – “while the goods of the
parties are different in physical characteristics and
function, they nevertheless comprise automotive parts,
supplies, and accessories that would generally move through
the same channels of trade for use by mechanics and others
in the automotive after-market field. Under these
Opposition No. 91152334
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circumstances, these products would be encountered by the
same individuals under conditions and circumstances that
could give rise to confusion as to source if the marks in
question are confusingly similar”).
In addition, a relationship between the goods may be
shown by demonstrating that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could because of the similarity of the
marks used therewith, give rise to the mistaken belief that
they originate from or are in some way associated with the
same producer. In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978). Because there are no
specific limitations in the identifications of goods in the
application or the identifications of goods and services in
the registrations, the issue of likelihood of confusion must
be determined by looking at all the usual channels of trade
and methods of distribution for the respective goods and
services. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198 (Fed. Cir. 1983). Each party’s goods therefore must be
presumed to be available to vehicle manufacturers, third
party retailers of vehicle after-market parts and retailers
who offer vehicle maintenance and repair services, such as
Opposition No. 91152334
18
opposers.6 This presumption is reasonable, in view of the
fact that applicant has admitted that its goods and
opposers’ goods and services “travel in some of the same
channels of trade” and “are sold to some of the same classes
of consumers.” Requests for Admissions Nos. 30 and 31.
Therefore, and in view of the similarity of the marks, we
find that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could because of the similarity of the marks used therewith,
give rise to the mistaken belief that they originate from or
are in some way associated with the same producer; and that
a relationship exists between applicant's International
Class 9 goods and opposers’ goods and services.
Applicant's International Class 38 services are
“telecommunication services, namely, providing multiple-user
access to a global computer information network;
telecommunication services, namely, providing
telecommunications connections to a global computer
network.” Exhibit F to opposers’ requests for admissions
describes vehicle systems that provide data to an automobile

6 Opposers maintain that their lubricants are sold to retail
consumers through automotive service stations and automotive
parts and accessory stores, and they “are also offered and sold
to automotive service stations, automotive repair, installation
and maintenance shops and to businesses which own or operate
commercial vehicle fleets.” Brief at pp. 31 – 32.

Opposition No. 91152334
19
manufacturer for coordinating the necessary maintenance
work, and a “drive-and-fly function” in which an airline
ticket is read and the airline is informed when the
passenger is due to reach the airport. The system guides
the passenger’s car to the departure terminal and a reserved
parking space. Additionally, Exhibit F provides that the
on-board computer will search for a restaurant, reserve a
table or ticket and guide the vehicle to the nearest parking
space. From these descriptions, it is apparent that
applicant envisions its services as including Internet
connections from vehicles. The question thus presented is
whether there is a relationship between the goods and
services identified in opposers’ registrations and such
telecommunications services to the extent that they relate
to vehicles.
In arguing that the services are similar, opposers
contend that “[c]ustomers would readily assume a connection
between Opposer and any kind of automotive product or
service, regardless of sophistication or nature, if it
includes the famous MOBIL designation as part of its name or
mark.” We disagree. Opposers have not established on the
record in this case that MOBIL is a famous mark. See
discussion of fame, infra. Also, opposers have not
introduced any credible evidence showing any similarity
Opposition No. 91152334
20
between the goods and services of opposers’ registrations
and applicant's International Class 38 services.
We next consider applicant’s International Class 42
services, namely, “scientific research, research and
development of new products for others; technical
consultation and research in the field of customized
programs for measuring and control system operations in
vehicles and aircraft, CAD-CAM programs, and picture
processing programs.” Because applicant's “scientific
research, research and development” services are not limited
to any particular field, they may concern lubricants and may
include the testing, analysis and evaluation of lubricants.
Thus, we find that opposers’ testing, analysis, evaluation
and reporting services involving lubricants - and hence the
trade channels too - overlap with applicant's International
Class 42 services. Further, to the extent that applicant's
“technical consultation and research services in the field
of customized programs for measuring and control systems
operations” concern lubricants, such services are related to
opposers’ lubricants and “computer software used in
connection with industrial lubricant analysis and testing.”
Thus, we find that there is a relationship between
applicant's International Class 42 services and the services
of opposers’ registrations.
Opposition No. 91152334
21
Fame
While opposers maintain that Opposers’ Marks are
famous, they have not introduced evidence directed to any of
the usual indicia of fame, such as advertising figures,
sales figures, revenues, critical acclaim of any of
opposers’ products or services, or even survey evidence.
See Kenner Parker Toys, Inc. v. Rose Art Industries Inc.,
963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992); Bose Corp. v.
QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.
Cir. 2002). Rather, opposers rely on articles containing
references to the renown or fame of opposers’ MOBIL mark.
The statements regarding fame in such articles are hearsay
and hence of limited probative value.
Opposers rely on Fossil Inc. v. Fossil Group, 49 USPQ2d
1451 (TTAB 1998) in arguing that their evidence of fame is
sufficient. Opposers states that Fossil “indicates that the
‘better practice’ is to submit ‘newspaper and magazine
articles discussing Opposer’s … products.’ … This is
exactly what Opposer has done in this case.” Reply at pp.
11 – 12. Opposers misquote Fossil, a case in which the
plaintiff offered sales and advertising figures without
offering evidence that placed such figures in perspective by
comparing them to sales and advertising figures for similar
goods. The case actually states, “Of course, the better
practice is not to rely merely upon sales and advertising
Opposition No. 91152334
22
figures, but also to submit, for example, consumer and trade
testimony as well as newspaper and magazine articles
discussing opposer's FOSSIL products.” Fossil, 49 USPQ2d at
1457. (Emphasis added.) Fossil does not state that
“consumer and trade testimony” alone is sufficient to
establish fame.
Because opposers have not established the fame of any
of their marks, the du Pont factor concerning fame is
neutral.
Conditions of Sale
As noted above, applicant has admitted that opposers’
and applicant’s goods and services “are sold to some of the
same classes of consumers.” Request for Admissions No. 31.
Applicant argues that its goods and services are expensive,
and that its customers are discriminating purchasers such as
automobile manufacturers that can be expected to exercise
“greater care” in purchasing applicant's goods and services.
Brief at p. 10. Opposers do not contest applicant's
contention regarding its purchasers, but counter with “there
is no reason to presume that Applicant's goods and
Applicant's Mark would be invisible to consumers. Ordinary
consumers use sophisticated goods … [and] [o]ne of the main
functions of Opposer’s service stations is to assist
consumers in maintaining and repairing such sophisticated
goods.” Further, opposers argue that “even if Applicant's
Opposition No. 91152334
23
goods and customers are sophisticated, there is no reason to
believe that sophisticated customers would never have heard
of Opposer’s MOBIL trademark.” Reply at pp. 8 – 9.
Opposers’ arguments miss the mark. First, even if
ordinary consumers use sophisticated goods, there is no
evidence that ordinary consumers are involved in purchasing
decisions regarding such goods. Second, the question before
us is not whether sophisticated consumers such as those
identified by applicant ever have heard of opposers’ marks –
which we cannot presume because opposers have not proven
fame of their marks – but rather whether purchasers of
applicant's goods will likely confuse the source of
applicant's goods, believing them to be those of opposers.
Because opposers do not contest applicant's contention
regarding its purchasers, and due to the electronic nature
of applicant’s International Class 9 goods and the technical
nature of its International Class 42 services, we presume
that purchasers of those of applicant's goods and services
which have a connection to vehicles would not include the
general public but rather would comprise vehicle
manufacturers, mechanics and vehicle repair facilities, and
that such purchasers take care and have some level of
sophistication in their purchasing decisions. However, even
those purchasers who are sophisticated or knowledgeable in a
particular field and deliberate in their purchasing
Opposition No. 91152334
24
decisions are not immune from source confusion. See
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Total Quality Group Inc., 51
USPQ2d 1474 (TTAB 1999); In re Decombe, 9 USPQ2d 1812 (TTAB
1988). In view of the shared term MOBIL in both parties’
marks, we find that the sophistication of purchasers would
not diminish the likelihood of confusion with respect to
applicant's International Class 9 and 42 goods and services.
Turning to applicant's International Class 38 services,
such services of course could be purchased by the general
public. Accordingly, we do not presume any sophistication
in those who purchase such services. This du Pont factor
with respect to such International Class 38 services favors
opposers.
Variety of Goods and
Services on Which the Mark is Used

Opposers argue that they have used their marks on a
wide variety of goods and services and that “it is probable
that consumers will attribute the source of other varied
products to Opposer.” Brief at p. 34. In support of their
argument, opposers rely on several of opposers’ web pages
and registrations, as well as two “Mobil Travel Guides”
dated 2000 and 2003.7 Opposers’ evidence – to the extent

7 We do not accept opposers’ contention that they have used their
marks on other goods and services described in the Nexis articles
of record. Opposers have only relied on hearsay statements
Opposition No. 91152334
25
that it is probative – does not reflect use of opposers’
marks on a wide variety of goods and services; such evidence
reflects that opposers’ uses have largely been in the
automotive field and in related fields. Consequently, this
du Pont factor only weighs slightly in opposers’ favor.
Absence of Confusion
Opposers have pointed out that applicant has admitted
that it is aware of “instances of actual confusion among
members of the relevant purchasing public between
Applicant's Mark and Opposer’s Mark.” Request for
Admissions No. 29. In its brief, applicant has pointed out
that its application is an intent-to-use application and
that it has not yet used its mark in commerce. Because
there is no evidence of actual use in the United States of
applicant's mark, we find that applicant's admission is of
limited probative value. This du Pont factor hence is
neutral in the likelihood of confusion analysis.
Conclusion
After weighing each of the relevant du Pont factors,
and considering the marks in their entireties, we find that
there is a likelihood of confusion as to applicant's
International Class 9 and 42 goods and services. Opposers
have established that the marks are sufficiently similar,

contained within such Nexis articles in support of their
contention and no other evidence.

Opposition No. 91152334
26
that there is a sufficient relationship between the goods,
services and trade channels so that confusion as to source
is likely to occur. With respect to the International Class
38 services, we find that opposers have not established a
likelihood of confusion, largely because the record does not
support a finding that the services are similar to those
goods and services of opposers’ registrations or that there
is a relationship between the trade channels of applicant's
services and opposers’ goods and services.
Dilution
In order to make out a claim of dilution, a plaintiff
must establish that its mark is famous. Section 43(c)(1) of
the Lanham Act, 15 U.S.C. §1125(c)(1), provides, so far as
pertinent, that “The owner of a famous mark shall be
entitled … to an injunction against another person's
commercial use in commerce of a mark or trade name, if such
use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark.” In fact,
fame for likelihood of confusion purposes and for dilution
is not the same, and fame for dilution purposes requires a
more stringent showing. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005); Toro Co. v. ToroHead Inc., 61
USPQ2d 1164 (TTAB 2001). In this case, as discussed above,
opposers have not established that their marks are famous
Opposition No. 91152334
27
even for purposes of likelihood of confusion. Opposers’
dilution claim is therefore dismissed.
DECISION: With respect to the International Class 9
and 42 goods and services, the opposition is sustained and
registration to applicant is refused. With respect to the
International Class 38 services, the opposition is dismissed
and the application will move forward to registration for
the identified services in International Class 38.
Opposers’ dilution claim is dismissed.