Globe Amerada Glass Co.

Trademark Trial and Appeal Board

Mar 9, 1999

No. 75067615 (T.T.A.B. Mar. 9, 1999)

Paper No. 17
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Globe Amerada Glass Company
________
Serial No. 75/067,615
_______
Edward D. Gilhooly, Ltd. for applicant.
Matthew C. Kline, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Globe Amerada Glass
Company to register the mark AUTO GLASS OF AMERICA for
“installation of automobile and truck glass.”1

1 Application Serial No. 75/067,615, filed March 5, 1996,
alleging a bona fide intention to use the mark in commerce. The
recitation of services was amended to read as set forth above in
a response filed on March 3, 1997. Applicant refers, in its
brief, to the recitation of services as “replacement of
automobile and truck glass.” This reference is in error, and we
have considered the merits of the appeal based on the recitation
of services set forth above.
Ser No. 75/067,615
2
The Trademark Attorney has refused registration on two
separate grounds. First, registration has been refused
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, if used in connection with applicant’s
services, would be likely to cause confusion with the
following previously registered marks, both owned by the
same entity: U.S. AUTO GLASS for “auto glass repair and
replacement and commercial glazing services2;” and
for “glass replacement and repair services.”3 Second,
registration has been refused under Section 2(e)(2) of the
Act on the ground that the mark, if used in connection with
applicant’s services, would be primarily geographically
descriptive of them.
When the refusals were made final, applicant appealed.4

2 Registration No. 1,948,197, issued January 16, 1996, pursuant
to the provisions of Section 2(f) of the Act.
3 Registration No. 1,906,776, issued July 18, 1995. The word
“Glass” and the representation of the map of the United States
are disclaimed apart from the mark.
4 The Examining Attorney further refused registration under
Section 2(d) based on Registration No. 1,040,791, issued June 1,
1976, also owned by the same registrant. The registration was
not renewed, and the Office held it expired on March 10, 1997.
Ser No. 75/067,615
3

Thus, the Board need not consider the refusal based on the now-
expired registration.
Ser No. 75/067,615
4
Applicant and the Examining Attorney filed briefs.5
Before we turn to the merits of the appeal, we direct
our attention to a procedural matter. With respect to the
Section 2(e)(2) refusal, applicant states as follows
(brief, p. 3):
Applicant is willing to convert its
application to one on the Supplemental
Register, but has not submitted
evidence of use in light of the adverse
holding of the Trademark Attorney as to
the refusal to register on Section
2(d). If this Board determines that
the refusal to register under Section
2(d) is erroneous, then Applicant will
submit evidence of use and convert the
application to the Supplemental
Register.

5 Applicant’s brief is accompanied by exhibits A and B which are
printouts from a computerized trademark search report
(specifically, according to applicant, from Thompson and
Thompson’s Trademarkscan database). The Examining Attorney, in
his appeal brief, objected to this evidence as untimely filed.
Applicant then filed a remand request to allow the Examining
Attorney to consider the search report. The Board, on April 8,
1998, denied the request. The Board reiterates that exhibits A
and B attached to the brief do not form part of the record here,
and this evidence has not been considered in reaching our
determination. Trademark Rule 2.142(d) and TBMP § 1207.02. See
also: In re Classic Beverage Inc., 6 USPQ2d 1383 (TTAB
1988)[private trademark search report insufficient to make third-
party registrations of record; copies of the registrations
themselves are required for that purpose]. We hasten to add,
however, that even if considered, the evidence is not persuasive
of a different result in this case. See: Smith Bros. Mfg. Co.
v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973).
In its brief, applicant also specifically refers to two third-
party registrations. However, as pointed out by the Examining
Attorney, these registrations likewise were never properly made
of record. See: In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Accordingly, they have not been considered.
Ser No. 75/067,615
5
Applicant concludes its brief by requesting “that the
refusal of the Examiner be reversed on the issue of the
refusal on Section 2(d) and the application be remanded to
the Examining Attorney to allow Applicant an opportunity to
convert the application to one on the Supplemental Register
in a manner provided by the rules.”
The procedure suggested by applicant cannot be
entertained. A review of the prosecution history of this
case shows that applicant responded, albeit in a cursory
fashion, to the merits of the geographical descriptiveness
refusal, contending that the matter sought to be registered
is fanciful and did not “suggest a particular geographical
significance other than as being an expression.” At no
time, however, did applicant file or even suggest, either
directly or in the alternative, an amendment to the
Supplemental Register. In this regard, we do not
understand applicant’s decision to not previously submit
evidence of use in the form of an amendment to allege use,
the filing of which would have permitted an amendment to
the Supplemental Register. Applicant appears to base its
decision on the pendency of the Section 2(d) refusal. We
fail to see the connection between the two.
The proper procedure would have been for applicant to
file, prior to final decision, evidence of use, together
Ser No. 75/067,615
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with an amendment to the Supplemental Register, either
directly or alternatively. TMEP § 1115. See also: TMEP §
1212.02(c). This avenue was not taken earlier, and there
is no option at this manifestly late juncture to consider
such an amendment. Moreover, inasmuch as we have decided
the Section 2(e)(2) issue on the merits, infra, the
prosecution of the application cannot be reopened to
consider an amendment to the Supplemental Register.
Trademark Rule 2.142(g); TMEP § 1115.05 and TBMP § 1218 and
cases cited therein.
Section 2(d)
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services.
With respect to the services in the present case, “it
is conceded by applicant that the services and trade
channels involve installation of glass, which are somewhat
related to the services described in the cited
registrations, and further discussion of [this factor] is
Ser No. 75/067,615
7
not believed necessary.” (brief, p. 4) Applicant would
appear to fall short in coming to grips with the fact that
the involved services are more than “somewhat related.” In
comparing the services, we must look to the services as
identified in the involved registrations and application.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In doing so,
we find that that the services are, for purposes of the
likelihood of confusion determination here, legally
identical. As identified, the services are assumed to
travel in the same trade channels to the same classes of
purchasers.
We now turn to focus our attention, as applicant and
the Examining Attorney have done, on the similarity between
the marks. When marks are used in connection with
identical services, “the degree of similarity [between the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Although there are differences between
the marks, we find that applicant’s mark, AUTO GLASS OF
AMERICA, and registrant’s U.S. AUTO GLASS marks, when
viewed in their entireties as applied to identical
services, engender similar overall commercial impressions.
Ser No. 75/067,615
8
Applicant is correct in pointing out that there are
differences between the marks in terms of appearance and
sound. We find, however, that these differences are
outweighed by the virtually identical connotations of the
marks. The terms “U.S.” and “America” have the same
meaning.6 The marks in their entireties, when applied to
identical services, essentially convey the same meaning,
namely, auto glass installation services emanating from the
United States of America. The design feature in one of
registrant’s marks does not detract from this similarity.
Moreover, that the marks are constructed differently does
not alter the similar overall commercial impression of the
marks. See, e.g.: In re Wine Society of America Inc., 12
USPQ2d 1139 (TTAB 1989); and Bank of America National Trust
and Savings Association v. The American National Bank of
St. Joseph, 201 USPQ 842 (TTAB 1978) and cases cited
therein. In finding that the marks are similar, we have

6We take judicial notice of the dictionary evidence submitted by
the Examining Attorney showing that the term “America” is
defined, in relevant part, as “often, specifically, the United
States of America.” Merriam Webster’s Geographical Dictionary
We also take judicial notice of the dictionary listings supplied
by applicant which show that the term also refers to North
America, South America, and North America, South America and
Central America considered together. We finally take judicial
notice of the listing for "America" in Webster's Third New
International Dictionary (1976). The word is defined, in
relevant part, as “of or from the U.S.”
Ser No. 75/067,615
9
kept in mind the normal fallibility of human memory over
time (especially here when the purchase of auto glass is
relatively infrequent) and the fact that average consumers
retain a general rather than a specific impression of
trademarks encountered in the marketplace.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); and In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
We conclude that consumers familiar with registrant’s
installation and replacement of automobile glass services
rendered under its U.S. AUTO GLASS marks would be likely to
believe, if they were to encounter applicant’s mark AUTO
GLASS OF AMERICA for the same services, that the services
originated with or are somehow associated with or sponsored
by the same entity.
Section 2(e)(2)
In order for registration to be properly refused under
Section 2(e)(2), it is necessary to show that (i) the mark
sought to be registered is the name of a place known
generally to the public, and that (ii) the public would
Ser No. 75/067,615
10
make a goods(services)/place association, that is, believe
that the goods/services for which the mark is sought to be
registered originate in that place. In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988), citing In re
Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1987). Where there is no
genuine issue that the geographical significance of a term
is its primary significance and where the geographical
place is neither obscure nor remote, a public association
of the goods or services with the place may ordinarily be
presumed from the fact that the applicant’s own goods or
services come from the geographical place named in the
mark. In re Handler Fenton Westerns, Inc., 214 USPQ 848
(TTAB 1982).
It hardly needs to be said that "America" is
universally known as a geographic name for the United
States of America.7 We find, therefore, that the geographic
significance of “America” is its primary significance and
that America is neither obscure or remote.
Having found that the term “America” is a primarily
geographic term, the question becomes whether the composite

7 See n. 6, supra.
Ser No. 75/067,615
11
mark AUTO GLASS OF AMERICA is primarily geographically
descriptive as contemplated by the statute.
The mere addition of the generic designation AUTO
GLASS OF to AMERICA does not change the primary geographic
significance of AMERICA. That is to say, such addition of
generic matter does not detract from the primary geographic
significance of AUTO GLASS OF AMERICA when the mark is
considered as a whole. In re Chalk’s International
Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB 1991) [PARADISE
ISLAND AIRLINES for air transportation services is
primarily geographically descriptive]. Moreover, as the
Board has stated in the past, the determination of
registrability under Section 2(e)(2) should not depend on
whether the mark is unitary or composite. In re Cambridge
Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986) [the
addition of the descriptive word DIGITAL does not detract
from the primary geographic significance of CAMBRIDGE
DIGITAL].
We now turn to the second part of the test as set
forth above, namely, whether the public would make a
services/place association. In the present case, applicant
is located in the United States (specifically, in the state
of Illinois). Having found that the geographic
significance of AUTO GLASS OF AMERICA is its primary
Ser No. 75/067,615
12
significance and that America is neither obscure or remote,
we presume, from the fact that applicant’s own services
originate from that place, a public association of the
services with the place named in the mark. See: In re
BankAmerica Corporation, 231 USPQ 873, 875 (TTAB 1986) and
cases cited thereat [BANK OF AMERICA primarily signifies an
American bank and, with respect to computerized financial
data processing services which emanate from this country, a
public association of those services with the place named
in the mark (i.e., America) may be presumed]. See also,
e.g.: In re U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998);
and In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989).
We conclude that consumers are likely to believe that
AUTO GLASS OF AMERICA is primarily geographically
descriptive of automobile glass installation services that
emanate from America.
Ser No. 75/067,615
13
Decision: The refusals to register under Sections
2(d) and 2(e)(2) are affirmed.
R. L. Simms
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
E. W. Hanak, Administrative Trademark Judge, concurring in
part and dissenting in part:
I concur with the Section 2(e)(2) affirmance and
dissent with regard to the Section 2(d) affirmance.
E. W. Hanak
Administrative Trademark
Judge, Trademark Trial
and Appeal Board
Ser No. 75/067,615
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