Keith Huber, Inc.

Trademark Trial and Appeal Board

Jan 29, 1999

No. 74674575 (T.T.A.B. Jan. 29, 1999)

Oral Hearing: Paper No. 18
April 16, 1998 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Keith Huber, Inc.
________
Serial No. 74/674,575
_______
Charles S. Cotropia and John A. Harre of Sidley & Austin for
Keith Huber, Inc.
Albert J. Zervas, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Cissel, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Keith Huber, Inc. has filed an application to register
the mark "DOMINATOR" for "industrial trucks equipped for
transporting and handling of liquid, solid and semi-solid
materials".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles each of

1 Ser. No. 74/674,575, filed on May 16, 1995, which alleges dates of
first use of February 9, 1983.
Ser. No. 74/674,575
2
the following marks, which are owned by the same registrant, as
to be likely to cause confusion, mistake or deception:2
(i) "PRO DOMINATOR," which is registered
for "intake manifolds for internal combustion
engines for land vehicles";3 and
(ii) "STREET DOMINATOR," which is
registered for "intake manifolds for internal
combustion engines for land vehicles".4
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We reverse the refusal to register in
each instance.
Turning first to consideration of the respective goods,
the Examining Attorney notes, as a general proposition, that the
Board "has consistently held over the years that there is such a
definitive relationship between a vehicle and the various
accessories, parts and attachments therefor in the mind of the
average person that the marketing thereof by different parties

2 Although registration was also finally refused in light of the same
registrant’s ownership of each of the following marks, such marks
will not be given further consideration inasmuch as the registrations
therefor subsequently were not renewed and hence have expired:
(i) "DOMINATOR" for "carburetors and parts therefor
and intake manifold[s] for use in connection with internal
combustion engines for land vehicles," which was the
subject of Reg. No. 1,050,018, issued on October 12, 1976
and which set forth dates of first use of February 20,
1970; combined affidavit §§8 and 15; and
(ii) "STRIP DOMINATOR" for "intake manifolds for
internal combustion engines for land vehicles," which was
the subject of Reg. No. 1,050,017, issued on October 12,
1976 and which set forth dates of first use of January 6,
1976; combined affidavit §§8 and 15.
3 Reg. No. 1,553,662, issued on August 29, 1989, which sets forth
dates of first use of December 31, 1979; combined affidavit §§8 and
15.
4 Reg. No. 1,066,680, issued on May 31, 1977, which sets forth dates
of first use of January 22, 1976; renewed.
Ser. No. 74/674,575
3
under the same or similar marks is likely to cause confusion as
to source."5 In particular, the Examining Attorney maintains
that (footnote omitted; italics in original):
[M]embers of the consuming public have
come to expect that the source of trucks and
engine parts is the same when they see the
same [or a similar] mark on such goods. This
expectation is apparent from the Hot Rod
magazine advertisement and cover page and the
[three use-based third-party] trademark
registrations enclosed with the ... final
action. The Hot Rod advertisement and cover
page depict a CHEVROLET truck and engine and
a CHEVROLET engine, respectively.
Apparently, trucks and engine parts are both
promoted in the same advertising medium to
the same group of consumers. Moreover, the
goods are both promoted in the same
advertisements. Also, the trademark
registrations--which each includes trucks and
truck parts--show that the goods are of a
type that emanate from a single source.
Consumers hence would expect that trucks and
engine parts having the same [or a similar]
mark would come from the same source.
Thus, for at least the above reasons,
the applicant’s and registrant’s goods travel
in the same trade channels. The marketing of
applicant’s goods therefore is likely to
cause confusion as to source with
registrant’s goods.
We agree with applicant, however, that confusion is not
likely in the circumstances of this case. Specifically, while

5 The Examining Attorney, in support thereof, cites In re Jeep Corp.,
222 USPQ 333 (TTAB 1984) ["LAREDO" mark for land vehicles and
structural parts therefor versus "LAREDO" mark for pneumatic tires];
Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335
(TTAB 1980) ["W" design mark for automobile and truck tires versus
"W" design mark for various recreational vehicles]; In re General
Motors Corp., 196 USPQ 574 (TTAB 1977) [mark "STARFIRE" for
automobiles versus mark "STARFIRE" for automotive shock absorbers];
and International Harvester Co. v. Hull Mfg. Co., 157 USPQ 203 (TTAB
1968) [mark "SCOUT" for motor trucks versus mark "SCOUT" for
compasses to be affixed to trucks].
Ser. No. 74/674,575
4
the Examining Attorney has also correctly observed that the issue
of likelihood of confusion must be determined both in light of
the identifications of goods as set forth in the application and
cited registration and, absent any limitations therein, on the
basis of all normal and usual channels of trade and methods of
distribution for such goods,6 we agree with applicant that
nothing in the record indicates that the customary channels of
trade for registrant’s intake manifolds for internal combustion
engines for land vehicles include those in which applicant’s
industrial trucks for transporting and handling of liquid, solid
and semi-solid materials are usually marketed. Instead, as is
implicit in the identification of its goods as being limited to
the specific purpose of transporting and handling liquid, solid
and semi-solid materials, applicant persuasively points out that
(footnotes omitted; italics and bold in original):
[T]he trade channels used by Applicant
and Registrant to distribute their respective
goods are very dissimilar. The goods sold by
Applicant are very expensive ..., highly
specialized industrial trucks equipped solely
for transporting and handling liquid, solid,
and semi-solid materials, i.e., wastes.
These goods, in accordance with their highly
specialized use, are marketed almost
exclusively through specialized trade shows
... and trade magazines directed at the
industrial and municipal watser [sic]
markets. In other words, Applicant’s goods
move through their normal channels of trade
to a very narrow field of customers
interested in such industrial trucks.
Applicant has no distribution network, [and]
all sales are direct from Applicant. Even

6 See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Ser. No. 74/674,575
5
assuming, arguendo, that Applicant’s goods
were not sold only by Applicant, but instead,
were sold through distributors of
specialized, heavy industrial trucks, i.e.,
the other channels of trade that would be
normal for such goods, Applicant’s goods can
still not be considered as moving in the same
channels of trade as do Registrant’s goods.
Registrant’s goods (unlike Applicant’s)
are [typically] sold through automotive
supply houses and parts stores and are
routinely purchased by retail consumers and
mechanics. In addition, Registrant’s goods
are also advertised and sold through
specialty magazines targeted [as the record
shows] at automotive enthusiasts and racers.
....
The trade channels in the instant action
are [thus] markedly different than those in
cases involving ordinary vehicles and
ordinary parts. Ordinary vehicles are sold
through large nationwide dealer networks and
are heavily advertised both on television and
radio and in a variety of magazines and
newspapers targeting a broad base of
customers. Such broad trade channels
increase the probability of overlap with
trade channels for ordinary replacement parts
sold and advertised in the same manner.
Furthermore, auto dealers also typically
offer ordinary replacement parts for use in
the vehicles they sell in their parts and
services departments. None of these channels
of trade or advertising are typically used to
sell or promote the sale of industrial trucks
such as those sold by Applicant. In this
case, the narrow channels of trade through
which Applicant’s goods are (or would be)
distributed eliminates any possibility of
overlap with the channels of trade for
Registrant’s goods. Thus, the channels of
trade for Applicant’s and Registrant’s goods
are dissimilar and warrant against a finding
of likelihood (as opposed to a mere
possibility) of confusion as to the source of
the goods.
In addition, we concur with applicant that, by their
very nature, the respective goods are not the kinds which would
Ser. No. 74/674,575
6
be subject to impulse purchases. Instead, given the expense and
deliberation involved, the decisions to purchase applicant’s
industrial trucks for transporting and handling of liquid, solid
and semi-solid materials and registrant’s intake manifolds for
internal combustion engines for land vehicles would generally be
made not only by different individuals (e.g., purchasing agents
in the case of the former and mechanics with respect to the
latter), but such separate purchasers in any event would also be
knowledgeable and discriminating buyers who would exercise a
great deal of care in selecting, respectively, a truck which
meets governmental, corporate or private waste hauling
requirements or a replacement intake manifold for a truck engine.
The degree of sophistication of such purchasers, who not only
would know their particular needs, but would not expect (at least
as shown by the absence thereof on this record) a manufacturer or
supplier of specially equipped trucks for transporting and
handling liquid, solid and semi-solid materials to furnish intake
manifolds or other truck engine replacement parts,7 makes the
extent of any potential confusion, based solely upon an general
relationship between a motor vehicle and its manufacturer’s
replacement engine parts, de minimis.
As noted by our principal reviewing court in Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d

7 Here, unlike registrant’s "PRO DOMINATOR" and "STREET DOMINATOR"
marks, which identify a specific product, namely, intake manifolds,
applicant’s "DOMINATOR" mark "identifies a particular type of truck
and its maker in terms of the specific intended use for which it has
been adapted by applicant," namely, the transporting and handling of
liquid, solid and semi-solid materials, a function which can be
accomplished by essentially any brand of heavy-duty commercial truck.
Ser. No. 74/674,575
7
713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (italics in original):
[L]ikelihood of confusion must be shown to
exist not in a purchasing institution, but in
"a customer or purchaser." .... As one of
our predecessor courts, the Court of Customs
and Patent Appeals, stated in Witco Chem. Co.
v. Whitfield Chem. Co., 418 F.2d 1403, 1405,
164 USPQ 43, 44-45 (CCPA 1969), aff’g, 153
USPQ 412 (TTAB 1967):
We are not concerned with mere
theoretical possibilities of
confusion, deception, or mistake or
with de minimis situations but with
the practicalities of the
commercial world, with which the
trademark laws deal.
Here, as indicated previously, not only is there lacking, for the
most part, a commonality of purchasers, but as applicant cogently
argues (footnote omitted):
The only potential consumers that will have
an opportunity to be confused are those that
encounter both Applicant’s and Registrant’s
goods. Applicant’s goods are marketed to
such a narrow, specialized group of consumers
that the great majority of individuals
encountering them will be well aware of their
source. Likewise, the sophisticated and
knowledgeable potential consumers of
Registrant’s ... automobile parts are not
likely to mistakenly consider Registrant as
the source of a large industrial waste
disposal truck, the appearance and function
of which is the very antithesis of a ...
[general purpose] vehicle. .... Thus, the
number of overlapping potential customers and
the likelihood of confusion is so low that
the extent of any confusion that may ensue,
however unlikely, is minimal.
Finally, even if we were to consider industrial trucks
equipped for transporting and handling liquid, solid and semi-
solid materials to be so closely related to intake manifolds for
internal combustion engines for land vehicles that their sale
under the same or substantially similar marks would be likely to
Ser. No. 74/674,575
8
cause confusion, we agree with applicant that its "DOMINATOR"
mark is readily distinguishable from registrant’s "PRO DOMINATOR"
and "STREET DOMINATOR" marks.8 The Examining Attorney, in this
regard, concedes in his final refusal that the term "DOMINATOR"
"is suggestive of strength and quality and leadership in the
relevant industry," while the words "PRO" and "STREET" similarly
are "weak suggestive terms ... which are common automotive
terms."9 Consequently, we do not share the Examining Attorney’s
contention that marks consisting of or containing the term
"DOMINATOR," as applied to industrial trucks and automotive

8 Although applicant also asserts that its mark and registrant’s mark
"have been used concurrently for over thirteen years" and that
applicant "is unaware of any actual confusion arising as to source"
(emphasis in original) during such period, there is nothing in the
record, such as an affidavit or declaration from an officer of
applicant having personal knowledge thereof, to support applicant’s
contention. Accordingly, such assertion has no probative value in
this case and will not be further considered. In addition, it should
be noted in any event that, as stated in In re General Motors Corp.,
23 USPQ2d 1465, 1470 (TTAB 1992):
We recognize, of course, that the above [evidence of
an absence of actual confusion] is one-sided inasmuch it
provides only applicant’s experience in the marketplace
and not that of registrant. Normally, in the absence of a
detailed consent agreement, the registrant has no
opportunity to be heard in an ex parte proceeding of this
type and the Board, therefore, is not in a position to
meaningfully assess whether the claimed period of
contemporaneous use has provided ample opportunity for
confusion to have arisen. See, e.g., In re Jeep Corp.,
supra at 337. The asserted absence of actual confusion,
especially over a relatively short period of years, has
thus often been asserted to be of "limited influence" or
of "dubious probative value". See, e.g., In re Barbizon
International, Inc., 217 USPQ 735, 737 (TTAB 1983) and In
re Whittaker Corp., 200 USPQ 54, 56 (TTAB 1978),
respectively.
9 Likewise, in his appeal brief, the Examining Attorney states that
registrant’s marks "all share the term DOMINATOR preceded by a weak
suggestive term: i.e. ..., PRO (for professional) and STREET, which
are well-used terms in the automotive arena."
Ser. No. 74/674,575
9
engine intake manifolds, "are highly similar and their commercial
impression is the same."
Instead, not only does applicant’s "DOMINATOR" mark
differ in sight and sound from each of registrant’s "PRO
DOMINATOR" and "STREET DOMINATOR" marks, but their differences in
connotation, with applicant’s mark suggesting a truck which is
the best equipped of its kind for hauling waste materials while
registrant’s marks conjure up images of high performance racing
equipment, result in marks which, when considered in their
entireties, are significantly distinct in overall commercial
impression. As applicant convincing states:
The definition of "DOMINATOR" is "a
dominating person or power". WEBSTER’S THIRD
NEW INTERNATIONAL DICTIONARY OF THE ENGLISH
LANGUAGE UNABRIDEGED 672 (G. & C. Merriam Co.
1966). "Dominate", as the root of the word
"DOMINATOR," means "to hold supremacy or
mastery over by reason of superior power,
strength, authority or prowess". Id. at 671.
In light of the dictionary definition of the
word, and the Examining Attorney’s [conceded]
interpretation of its meaning, the mark
"DOMINATOR" should be considered laudatory
and highly suggestive and thus is entitled to
a more narrow scope of protection than an
arbitrary or fanciful mark. See In re Dayco
Products-Eaglemotive, Inc., 9 USPQ2d 1910,
1911-12 (TTAB 1988); In re General Motors
Corp., 23 USPQ2d 1465, 1469 (TTAB 1992).
"[U]nlike in the case of an arbitrary or
unique designation, the addition of other
matter to a highly suggestive or laudatory
term, whether such matter be equally
suggestive ..., may be sufficient to
distinguish between them and to avoid
confusion in trade." Plus Products v. Redken
Laboratories, Inc., 199 USPQ 111, 116-17
(TTAB 1978) (citations omitted). The
Examining Attorney also considered "PRO," ...
and "STREET" to be suggestive terms that have
a nexus to motor vehicles and their use.
.... These terms, however, clearly suggest
racing use (e.g., ... "PRO" for Pro Stock and
Ser. No. 74/674,575
10
Pro Modified drag racing, and "STREET" for
Super Street drag racing) and are [in] no way
suggestive of use on an industrial truck used
for gathering and transporting various types
of waste. Under the reasoning expressed in
Plus Products v. Redken Laboratories, Inc.,
the addition of the suggestive terms[,]
"PRO," [and] "STREET," ... to the term
"DOMINATOR" is sufficient to distinguish
Registrant’s marks from Applicant’s mark and
avoid any likelihood of confusion.
Decision: The refusal under Section 2(d) is reversed.
R. F. Cissel
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board