Kent G. Anderson

Trademark Trial and Appeal Board

Feb 17, 2012

No. 76514799 (T.T.A.B. Feb. 17, 2012)

Mailed:
February 17, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kent G. Anderson
________

Serial No. 76511652
Serial No. 76514799
_______

Dwayne L Bentley of DL Bentley ALW Group PLLC for Kent G.
Anderson.1

Howard Smiga, Trademark Examining Attorney on Serial No.
76511652; Kelly F. Boulton, Trademark Examining Attorney on
Serial No. 76514799, both of Law Office 102 (Karen M. Strzyz,
Managing Attorney).
_______

Before Seeherman, Ritchie and Lykos, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Kent G. Anderson (“applicant”) filed an application to
register the mark FUTURE, as shown below, for hundreds of goods
and services in International Classes 3, 12, and 352:

1 Mr. Anderson represents himself pro se on brief in application Serial
No. 76511652. However, he submitted as an exhibit with that brief,
the brief submitted by his attorney, Mr. Bentley, from his companion
application Serial No. 76514799. He also noted in his brief that he
“Used attorney’s previous work for format and not limited to reference
of evidence.” (appl’s brief on 76511652 at 3).
2 Serial No. 76511652, filed May 5, 2003, pursuant to Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b), in all classes, alleging a
bona fide intent to use the mark in commerce.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 76511652
Serial No. 76514799

2

The trademark examining attorney refused registration of
the mark for all of the goods identified in International Class
12, and some of the services identified in International Class
35, under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §
1052(d), on the ground of likelihood of confusion, citing
registrations owned by the same entity for the mark FUTURA, in
typed drawing format, for “tires,”3 and for “automotive
accessories, namely, vehicle wheel caps and hub caps.”4 The
goods and services for which the mark is refused are as follows:
International Class 125: Vehicles, namely cars; apparatus for
locomotion by land, air, water, space, namely automobiles,
trucks, vans, sport utility vehicles, aircrafts, water crafts,
space craft and their structural parts thereof; motorcycles,
scooters, mini bikes, go-cars, locomotive, garbage hauling
trucks, semi tractor trailers, and their structural parts and
engines; buses, recreational vehicles, all terrain vehicles and
ambulances; vehicles operate by gas, electric, fuel or other
source of power, namely, snowmobiles, tractors, and trolleys;
accessories for trucks, namely truck liners, tow bars,
transmissions, travel trailers, turn signals, universal joints,
van conversions, dipstick, mirrors, velocity joint, suspension
struts, ball joint, idle arms, sun visors, windshield visors,

3 Registration No. 1582462, issued February 13, 1990, in International
Class 12. Sections 8 and 15 affidavits accepted and acknowledged.
Renewed twice.
4 Registration No. 2454578, issued May 29, 2001, in International Class
12. Sections 8 and 15 affidavits accepted and acknowledged. Renewed.
The registration contains a translation statement: “The English
translation of the word ‘FUTURA’ in the mark is ‘future.’”
5 This identification is noted exactly as it appears on the Office
database.
Serial No. 76511652
Serial No. 76514799

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rearview mirror, shock absorbers, steering wheel, windshield
wipers, windshield wiper blades, vehicle propellers, vehicle
roll bars, seat covers, sport toy sports vehicles, tires and
spare tires, tire rims, stirring boosters, wheel locks,
suspension systems, vehicle theft alarms, thrusters for
vehicles, wheel bearings, tire inflators, tire pumps, torque
converters, plastic parts for vehicles, namely automobile and
vehicle exterior and interior trim, plastic extruded decorative
of protective trim, racket for vehicles, recreational vehicle
awnings, truck campers, rail vehicle for passenger carriage,
railway cars, saddles for bicycles and motorcycles, seat belts
used in vehicles, side shields, motors, mud flaps, brackets for
structural parts of vehicle, brake cables, clutch cables, fork
bearings; for motorcycles, handle bars, handlebar control
dampers, handle bar clips brick calibers, brick pedals, brake
rooters, front spacers, front dash, panels, shift lever, and
headlight mounds, pickup truck cabs, wheels, windshields,
differentials, drive shaft, drive belts, drive gears, fenders,
mud guards, running boards, land vehicles suspension parts,
coral springs, leaf spring, land vehicle transmission, axles,
license plates frames, lug nut, luggage carriers, mirrors, gas
caps, horns, hood shield, hubcap covers, internal combustion
engines for land vehicles, children care vehicles, directional
signals, disk pads, dollies, door panels, drive shafts, engine
camshafts, fitted covers for vehicles, truck lift, calibers,
drums, boosters, pad shoes; bicycle parts, namely, frames,
bells, gears, handle bars, changers, speed gears, drive chains,
disk wheels, spokes for tires, handle brakes, racing number
plates, pedals, saddles; axle bearing for land vehicles, vehicle
seats, vehicle windows, automobile bodies, chassis, bumpers and
replace parts thereof; aircraft structural parts thereof, namely
propeller blades, fuselages, landing gears, aircraft bodies,
engines, seats, amphibious airplanes, gliders, kit planes,
prefabricated planes and their structural parts thereof; rocket
ships, lunar rover, and shuttles and parts and structural parts
thereof; jet boats, houseboats, pontoon boats, sailboats, sail
planes, yachts, hydroplanes, water scooter, ferry boats, boats,
ships, hover craft and structural parts thereof; and

International Class 35: distributorships featuring . . .
automobiles, trucks, aircraft; retail automobile and vehicle
parts stores; online ordering in the field of . . . automotive
and vehicle parts; dealerships in the field of automobiles and
water-crafts, namely, boats and motorcycles; independent sales
representatives in the field of automobiles, aircraft, . . . ;
promoting and conducting trade shows in the field of automobile
parts.
Serial No. 76511652
Serial No. 76514799

4

Applicant also filed an application to register the mark
FUTURE MOTORS, as shown below, for hundreds of goods and
services in International Classes 3, 9, 12, 28, 35, 40, 43 and
44:6

The trademark examining attorney handling that application
refused registration of the mark for certain of the goods
identified in International Class 12, and certain of the
services identified in International Classes 35 and 40, under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d),
on the ground of likelihood of confusion, citing the same
registrations for FUTURA (Registration Nos. 1582462 and 2454578)
cited against applicant’s FUTURE application. The goods and
services for which the mark is refused are as follows:

International Class 12: motor vehicles, namely, automobiles,
trucks, vans, cars, sport utility vehicles, vehicles, namely,
experimental cars, concept cars, electric cars, gas cars; family
cars; racing cars; sports cars; recreational vehicles, namely,
campers and motor homes; buses; motorized scooters; all terrain
vehicles; motorcycles; bicycles; engines and motors for land
vehicles;

6 Serial No. 76514799, filed May 16, 2003, pursuant to Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b), in all classes, alleging a
bona fide intent to use the mark in commerce, and disclaiming the
exclusive right to use the term “MOTORS” apart from the mark as shown.
Serial No. 76511652
Serial No. 76514799

5
International Class 35: retail store services featuring . . .
tires; providing information about automobiles for sale by means
of the Internet; operation of businesses for others, namely,
retail automobile parts and accessories stores, vehicle
dealerships, motorcycle dealerships, arranging and conducting
trade shows in the field of automobiles; logistics management in
the field of vehicles; catalog ordering services featuring
vehicles; mail order services featuring vehicles, . . . parts
and accessories for vehicles; retail store services featuring .
. . automobiles; wholesale store featuring . . . automobiles;
wholesale stores featuring auto parts, . . . and automobiles;
independent sales representative in the field of vehicles,
trucks, ATV, automobiles, electric vehicles; retail store
services featuring automobile parts and accessories; retail gas
station services featuring gasoline pumps; retail gift stores
featuring vehicles; retail consignment stores featuring . . .
automobiles; retail services by direct solicitation by sales
agents in the field of automobiles; shop at home parties
featuring vehicles, . . . parts and accessories for vehicles;
dealerships featuring automobiles, . . . motorcycles, on-line
trade show in the field of vehicles, . . . land craft and new
inventions related to vehicles; customer services in the field
of vehicles; preparing audio-visual displays in the field of
vehicles; providing door-to-door shopping services in the field
of vehicles providing home shopping services in the field of
vehicles, . . . land craft, and parts and accessories for
vehicles by means of television; and

International Class 40: manufacturing services for others in the
field of vehicles, automobiles.

For each application, the examining attorney also asserted
that collateral estoppel bars registration of the mark for the
refused goods and services. The assertion of collateral
estoppel is based on a prior consolidated proceeding in which
the Board sustained oppositions to several of applicant’s
applications.
Upon final refusal of registration of the mark in each of
the applications, applicant filed a timely appeal. Applicant
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6
and the examining attorneys filed briefs in the respective
cases. Since both applications deal with common questions of
law and fact, we are consolidating the appeals and issuing one
decision. TBMP § 1214 (3rd ed. 2011). Where appropriate, we
have taken into account relevant factual differences in the
cases.
For the reasons discussed herein, the Board finds the
examining attorneys’ arguments persuasive regarding the
preclusive effect of the prior oppositions on application Serial
Number 76511652 (FUTURE) but not 76514799 (FUTURE MOTORS). The
Board further affirms the Section 2(d) refusals to register for
both applications.
Applicant’s Identification of Goods and Services
As a preliminary matter, we find it necessary to comment on
the sheer volume and array of goods and services in applicant’s
identifications of goods and services, both within and between
classes. In both applications, in International Class 12 alone,
applicant claims to have a bona fide intent to use the mark on
goods as diverse as “motorcycles,” “ferry boats,” and “lunar
rovers,” while in International Class 35, applicant claims to
have a bona fide intent to use the mark in connection with
“literary agencies,” “business management services” and
“wholesale stores featuring [among other things] toys.”
Although not an issue in this ex parte proceeding, it should be
Serial No. 76511652
Serial No. 76514799

7
noted that by identifying such a large number and diverse range
of goods and services, the involved application may be subject
to challenge in inter partes proceedings, not only to a wider
array of likelihood of confusion claims under Section 2(d) but
also to potential claims of fraud or lack of a bona fide intent
to use the marks in commerce.7
Collateral Estoppel
We consider first the assertion by the examining attorneys
in both applications that the issues presented herein are
identical to those presented in a prior litigated inter partes
proceeding, namely, consolidated Opposition Nos. 91157538,
91157768, 91158277, 91158509, 91158520, 91158786, 91164461,
91164602 and 91165913, all of which were decided by the Board on
August 6, 2008. In that consolidated proceeding, applicant
herein sought to register the marks FUTURE and FUTURE/TOMORROW
and design for some of the same goods and services as in the
current applications. An opposition was brought by the owner of
the two FUTURA registrations which have been cited herein.
After completing its likelihood of confusion analysis based on
the du Pont factors, the Board sustained the oppositions as to
applicant’s FUTURE mark for the goods in International Classes

7 In noting this, we are not suggesting that the examining attorney
should have issued refusals on the grounds of fraud or lack of bona
fide intent to use the mark in commerce. See TMEP (8th ed. 2011)
Serial No. 76511652
Serial No. 76514799

8
12, 35 and 40, and as to applicant’s FUTURE/TOMORROW and design
mark in International Class 12. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
The doctrine of collateral estoppel, or “issue preclusion,”
applies when “a matter has been litigated and decided.” Migra
v. Warren City Sch. Dist. Bd. Of Educ., 465 U.S. 75, 77, n.1
(1984). It is one of the preclusion doctrines encompassed by
res judicata. Id.; see also Sharp Kabushiki Kaisha v.
ThinkSharp Inc., 448 F.3d 1368; 79 USPQ2d 1376, 1378 (Fed. Cir.
2006). The requirements for application of collateral estoppel
are (i) the issue is identical to one in a prior proceeding;
(ii) the identical issue was actually litigated; (iii)
determination of the issue was necessary to the judgement in the
prior proceeding; and (iv) the party defending against
preclusion had a full and fair opportunity to litigate the issue
in the prior proceeding. Mayer/Berkshire Corp. v. Berkshire
Fashions, Inc., 424 F.3d 1229, 1232, 76 USPQ2d 1310, 1313 (Fed.
Cir. 2005) (citing Montana v. U.S., 440 U.S. 147, 153-155
(1979)).
Historically, the general rule was that collateral estoppel
was only binding against parties to the prior action. See
Wright & Miller 18A Federal Practice & Proc. § 4449 (2d ed.

Section 720 (Fraud Upon the USPTO); 1101 (Bona Fide Intention to Use
the Mark in Commerce).
Serial No. 76511652
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9
2011) (“[a]t the same time, the judgment carries the ordinary
precedential weight of stare decisis”). However, the Supreme
Court has determined that collateral estoppel could, in some
situations, be asserted by a non-party to the prior action. See
Blonder-Tongue Laboratories, Inc. v. University of Illinois
Foundation, 402 U.S. 313, 329 (1971) (allowing use of defensive
collateral estoppel by a litigant who was not a party to a prior
patent invalidity verdict against an asserting plaintiff who was
party to the prior action); see also Parklane Hosiery Co., Inc.
v. Shore, 439 U.S. 322, 331 (“[w]e have concluded that the
preferable approach for dealing with these problems in the
federal courts is not to preclude the use of offensive
collateral estoppel, but to grant trial courts broad discretion
to determine when it should be applied.”).
The Board has applied the doctrine of collateral estoppel
in an inter partes proceeding following a prior ex parte
proceeding in which a refusal of the applicant’s prior
application for the same mark and goods or services had been
affirmed. Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1301
(TTAB 1986) (Board applied collateral estoppel where applicant
had been denied same mark and judgment had been affirmed on
appeal to district court), aff’d mem., 831 F.2d 306 (Fed. Cir.
1987); compare Flowers Industries Inc. v. Interstate Brands
Corp, 5 USPQ2d 1580 (TTAB 1987) (Board declined to apply
Serial No. 76511652
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10
collateral estoppel although applicant had been denied mark in
prior ex parte proceeding, but sustained opposition on merits);
see also Nextel Communications, Inc. v. Motorola, Inc., 91
USPQ2d 1393, 1399 (TTAB 2009) (Board found, in second action
between the parties, the requirements of collateral estoppel
were met with regard to certain but not all of the goods, and
opposer was entitled to judgment on those goods).
We have also, in an ex parte proceeding, applied claim
preclusion (res judicata) where an applicant had already been
refused registration for the same mark and goods in a prior ex
parte proceeding, and applicant did not demonstrate a change of
circumstances such as to justify not applying preclusion based
on the prior judgment. In re Bose, 476 F.3d 1331, 81 USPQ2d
1748, 1752 (Fed. Cir. 2007) (cautioning that Board must be
judicious in applying res judicata, but noting, “[in] this case,
however, there is no dispute that the same applicant, Bose, is
involved in the prior and present proceedings and that there was
a prior final judgment on the merits, i.e., the functionality of
the identical design. Thus, the general prerequisites of res
judicata have been satisfied.”); compare In re Honeywell Inc., 8
USPQ2d 1600, 1601-02 (TTAB 1988) (“In general, there is nothing
to preclude an applicant from attempting a second time in an ex
parte proceeding to register a particular mark if conditions and
circumstances have changed since the rendering of the adverse
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11
final decision in the first application. The question generally
in the second proceeding is whether changes in facts and
circumstances do exist and, if so, whether they can support the
registration sought.”)
Here the examining attorneys seek to invoke the doctrine of
collateral estoppel in ex parte proceedings based on a final
judgment entered in a prior inter partes case. The Court of
Appeals for the Federal Circuit, which we have often referred to
as our primary reviewing court, has advised that “[c]aution is
warranted in the application of preclusion by the PTO.”
Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., supra, 76
USPQ2d at 1314. However, at the same time, we take heed that it
is firmly within our discretion to apply collateral estoppel
where it is warranted.8 See Parklane Hosiery, supra, 439 U.S. at

8 In so stating, we take note that some of our precedents have referred
to the doctrine of stare decisis when applying preclusion in ex parte
appeals. See In re Hotels.com, 87 USPQ2d 1100, n.6 (TTAB 2008) (“in
the context of this ex parte proceeding, we consider a res judicata
argument to be equivalent to a stare decisis argument”), aff’d 573
F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009); In re Johanna Farms Inc.,
8 USPQ2d 1408, 1411 (TTAB 1988) (Board reversed examining attorney’s
stare decisis finding due to sufficient presentation by applicant of
new Section 2(f) evidence); In re Alfred Dunhill Ltd., 224 USPQ 501,
n.7 (TTAB 1984) (finding res judicata in ex parte proceedings to be
stare decisis). While stare decisis remains a valid doctrine, which
can, inter alia, be applicable in a subsequent ex parte proceeding
when the applicant contested the issue in a prior ex parte proceeding,
the better practice is for an examining attorney to invoke collateral
estoppel where it is applicable, as discussed herein. In that regard,
it is also advisable for an examining attorney to make a refusal on
the merits (as was done in the present cases) for completeness and
taking into account the possibility that a finding of collateral
Serial No. 76511652
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12
331. We must consider that “[c]ollateral estoppel, like the
related doctrine of res judicata, has the dual purpose of
protecting litigants from the burden of relitigating an
identical issue with the same party or his privy and of
promoting judicial economy by preventing needless litigation.”
Id. at 326. The Federal Circuit, in considering a similar
situation before the Board of Patent Appeals and Interferences,
held that it was appropriate for that Board to find collateral
estoppel applicable in an ex parte reexamination proceeding with
regard to the claim construction undertaken by a federal
district court (in an inter partes proceeding) that had taken
place while the Board proceedings were stayed. In re Freeman,
30 F.3d 1459, 31 USPQ2d 1444, 1467 (Fed. Cir. 1994) (“The
doctrine of issue preclusion is premised on principles of
fairness. Thus, a court is not without some discretion to
decide whether a particular case is appropriate for application
of the doctrine. [citations omitted].”). Accordingly, we look
to the applicable factors.
We turn first to application Serial No. 76511652 (FUTURE).
The first question is whether there was an identical issue
raised in a prior proceeding. Mayer/Berkshire Corp. v.
Berkshire Fashions, Inc., supra, 76 USPQ2d at 1313. We find

estoppel may be reversed on appeal. See TMEP (8th ed. 2011) Section
1217.
Serial No. 76511652
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13
that there was. The mark in the present case, FUTURE, is
identical to the mark litigated in the prior inter partes
action, as are various of the goods and services in Classes 12
and 35, the classes involved in the refusal here.
We turn then to the second question. Was the identical
issue actually litigated in the prior proceeding? We find that
it was. The issue raised in the prior opposition proceedings
was the Section 2(d) claim of likelihood of confusion with
opposer’s marks, the same marks cited in the current proceeding.
This ground was raised and litigated by the parties.
We next consider the third question. Was the determination
of the issue necessary to the judgement in the prior proceeding?
We find that it was. Likelihood of confusion was the basis on
which the opposer brought the prior oppositions. The
determination of this issue was therefore essential to the
resolution of the proceeding.
We then consider the fourth factor necessary to find
preclusive effect of collateral estoppel. Did the party
defending against preclusion have a full and fair opportunity to
litigate the issue in the prior proceeding? We find that he
did. There have been no allegations, nor any evidence, that
there is any reason not to apply the typical effects of
preclusionary judgment to this proceeding. For these reasons,
we find the doctrine of collateral estoppel to be applicable and
Serial No. 76511652
Serial No. 76514799

14
to preclude applicant’s registration of FUTURE for the refused
goods and services in application Serial No. 76511652.
We next consider the applicability of the factors to
application Serial No. 76514799 (FUTURE MOTORS). The first
question is whether there was an identical issue raised in a
prior proceeding. We find that there was not. The marks at
issue in the prior oppositions were FUTURE and FUTURE/TOMORROW
and design. We do not find either of these marks to be
substantially identical to the mark FUTURE MOTORS such as to
have a preclusive effect in the present action. Compare Lukens
Inc. v. Vesper Corp., 1 USPQ2d 1299, 1301 (TTAB 1986) (identical
mark sought to be registered), aff’d mem., 831 F.2d 306 (Fed.
Cir. 1987); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d
1393, 1398 (prior judgment was based on “nearly the same
proposed mark (same cadence, but with a tone at 911 Hz))”)
Accordingly, there is no need to consider the other three
elements. We find that the prior oppositions do not have
preclusive effect on applicant’s attempt to register Serial No.
76514799 (FUTURE MOTORS). Accordingly, we turn to the merits of
the Section 2(d) refusal in that application.
Likelihood of Confusion,
Application No. 76514799 (FUTURE MOTORS)
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
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Serial No. 76514799

15
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
supra, 177 USPQ at 567 (CCPA 1973); see also In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and
the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d)
goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”). We
discuss each of the du Pont factors as to which applicant or the
examining attorney submitted argument or evidence.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The
question is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in their entireties that
confusion as to the source of the goods or services offered
under the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. In
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16
re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The mark in the cited registrations consists solely of the
word FUTURA. There is a translation statement for the mark
“FUTURA” as “future.” We find this term to be arbitrary for the
goods in the cited registrations (“tires” and “automotive
accessories, namely, vehicle wheel caps and hub caps.”)
Applicant’s mark in application Serial No. 76514799 is
FUTURE MOTORS. The first term is FUTURE, which differs from the
mark in the cited registration by just one vowel. We find the
appearance and sound of “FUTURE” to be quite similar to that of
“FUTURA.” Furthermore, since the translation of “FUTURA” is
“future,” we find the terms to be legal equivalents. See In re
Spirits Int’l N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1491 (Fed.
Cir. 2009); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). Even those consumers unfamiliar with the foreign
language are likely to recognize the similarity in sight and
sound of “futura” to “future” and ascribe to the registrant’s
mark the meaning “future.” We note of course that applicant’s
FUTURE MOTORS mark includes the term “MOTORS.” However, since
that term is descriptive of the goods and services at issue in
the refusal, and is disclaimed, we find “FUTURE” to be the
dominant term in that mark. See In re National Data Corp., 753
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17
F.2d 1056, 224 USPQ 749, 750 (Fed. Cir. 1985) (descriptive or
disclaimed matter is generally considered a less dominant
portion of a mark).
The commercial impression of the mark in the cited
registrations is of the “future.” Similarly, the commercial
impression of applicant’s FUTURE MOTORS mark is of the “future,”
that these motor-related goods are forward looking. Therefore,
while considering the marks in their entireties, we find that
the similarities significantly outweigh the differences of the
marks and that the marks are similar as to their sight, sound,
connotation, and commercial impression.
This du Pont factor weighs in favor of finding a likelihood
of consumer confusion.9
The Goods and Services and Channels of Trade
Next we consider the similarities or dissimilarities of the
goods and services. In doing so, we keep in mind that the test
is not whether consumers would be likely to confuse the goods
and services but rather whether they would be likely to be
confused as to their source. San Fernando Electric Mfg. Co. v.

9 Although we have already found, based on the doctrine of collateral
estoppel, that there is a likelihood of confusion between applicant’s
FUTURE mark and the mark in the cited registrations, for the sake of
completeness, we note that because the commercial impression of the
term “future” is the same as that of “futura,” and the sight and sound
are highly similar, with the difference of just one ending vowel, this
du Pont analysis focusing on the similarity of FUTURA and FUTURE
MOTORS would apply as readily in application Serial No. 76511652
(FUTURE).
Serial No. 76511652
Serial No. 76514799

18
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d
1735, 1741 (TTAB 1991), aff'd mem., 972 F.2d 1353 (Fed. Cir.
1992).
The refusal in application Serial No. 76514799 is limited
to certain goods and services in Classes 12, 35 and 40.10
Specifically, the examining attorney limited the Section 2(d)
refusal to the following goods in International Class 12: motor
vehicles, namely, automobiles, trucks, vans, cars, sport utility
vehicles, vehicles, namely, experimental cars, concept cars,
electric cars, gas cars; family cars; racing cars; sports cars;
recreational vehicles, namely, campers and motor homes; buses;
motorized scooters; all terrain vehicles; motorcycles; bicycles;
engines and motors for land vehicles; to the following services
in International Class 35: retail store services featuring . . .
tires; providing information about automobiles for sale by means
of the Internet; operation of businesses for others, namely,
retail automobile parts and accessories stores, vehicle
dealerships, motorcycle dealerships, arranging and conducting
trade shows in the field of automobiles; logistics management in
the field of vehicles; catalog ordering services featuring
vehicles; mail order services featuring vehicles, . . . parts

10 Similar goods and services in Classes 12 and 35 were refused by the
examining attorney in application Serial No. 76511652 (FUTURE).
Serial No. 76511652
Serial No. 76514799

19
and accessories for vehicles; retail store services featuring .
. . automobiles; wholesale store featuring . . . automobiles;
wholesale stores featuring auto parts, . . . and automobiles;
independent sales representative in the field of vehicles,
trucks, ATV, automobiles, electric vehicles; retail store
services featuring automobile parts and accessories; retail gas
station services featuring gasoline pumps; retail gift stores
featuring vehicles; retail consignment stores featuring . . .
automobiles; retail services by direct solicitation by sales
agents in the field of automobiles; shop at home parties
featuring vehicles, . . . parts and accessories for vehicles;
dealerships featuring automobiles, . . . motorcycles, on-line
trade show in the field of vehicles, . . . land craft and new
inventions related to vehicles; customer services in the field
of vehicles; preparing audio-visual displays in the field of
vehicles; providing door-to-door shopping services in the field
of vehicles; providing home shopping services in the field of
vehicles, . . . land craft, and parts and accessories for
vehicles by means of television; and to the following services
in International Class 40: manufacturing services for others in
the field of vehicles, automobiles.
The examining attorney submitted into the record copies of
numerous use-based, third-party registrations identifying both
“tires,” or “hub caps” as identified in the cited registrations,
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on the one hand, and various of the goods and services refused
in the application on the other. Copies of use-based, third-
party registrations may serve to suggest that the goods are of a
type which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
For example, the examining attorney submitted evidence to
show third-party registrations that include both “tires” or “hub
caps” as identified in the cited registrations as well as
automobiles (Registration Nos. 3605271, 2949427; 3030001;
3741177; 3248336; 3147817; 3339745); trucks (Registration Nos.
2949427; 3030001; 3166894; 3741177), and motorcycles
(Registration Nos. 3319487; 3605271; 3166894; 3147817; 3339745)
with respect to the refusal in International Class 12; and
services involving wholesale or retail store and online store
services, dealership and distributorship services in the field
of motor vehicles and automotive parts (Registration Nos.
3514704; 3191617; 3634163; 3005777; 3396344; 3411758) with
respect to the refusal in International Class 35.11

11 Although the examining attorney’s evidence of relatedness of the
goods and services concentrates on some of the goods and services in
each class, that evidence is sufficient for us to find that the
examining attorney has met the burden of showing that there is a
likelihood of confusion with respect to all of the refused goods and
services in each class. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with
respect to any item that comes within the identification of goods in
the application).

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The examining attorney also submitted Internet evidence
showing several third-party car dealerships offering “tires” for
sale on their websites. See wardsdealer.com;
jimellischevrolet.com; and carriagechevrolet.com. This is
evidence that consumers expect to find both “tires,” as
identified in the cited registration, and “automobiles,” and
“cars” (in International Class 12) as well as “retail stores
services featuring . . . tires” (in International Class 35) as
identified in the application, emanating from a common source.
Web site excerpts include:
Do We Sell Tires? Please Hold: Our competitors have
responded to new-car dealerships getting into this business
and they are not taking it lightly. They are head and
shoulders above auto dealerships when it comes to
presenting tire information over the phone and adding value
to the transaction. www.wardsdealer.com

Welcome to Jim Ellis Chevrolet Atlanta: For maintenance and
repair as well as parts, accessories and tires for your
Chevrolet – as well as any other General Motors brand
(Cadillac, GMC, Buick, Pontiac, Hummer, Saturn) – our
Service and Parts departments are staffed with experienced
professionals who get the job done right the first time.
www.jimellischevrolet.com.

Carriage Chevrolet: Shop for tires at your Huntsville
Chevrolet Dealership. www.carriagechevrolet.com.

Regarding the refused services in International Class 40,
we find an inherent relationship between the “tires” and the
“vehicle wheel cap and hub caps” in the cited registrations on
the one hand and the “custom manufacture of automobile services”
in the application on the other hand, since tires and either hub
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22
caps or wheel caps may be an essential element in the
manufacture of many automobiles.
In the absence of specific limitations in the
registrations, we must presume that registrant’s goods will
travel in all normal and usual channels of trade and methods of
distribution. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983); see also In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations
as to channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
services in the registration and the application move in all
channels of trade normal for those services, and that the
services are available to all classes of purchasers for the
listed services). Since there are no limitations on the
channels of trade in applicant’s identification of goods and
services, we must make the same presumption with regard to
applicant’s goods and services.
In other words, there is nothing that prevents applicant
from offering for sale his automobiles, or services related
thereto (once the goods and services are in use) through the
same channels of trade and to the same consumers who purchase
registrant’s tires, wheel caps and/or hub caps, and vice-versa.
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Accordingly, we find that these du Pont factors also weigh in
favor of finding a likelihood of consumer confusion.12
Conclusion
We conclude that collateral estoppel is an appropriate
doctrine to apply to application Serial No. 76511652 (FUTURE),
which is for an identical mark and has been refused for some of
the identical goods and services as those at issue in the prior
oppositions. Accordingly, we find, based on the doctrine of
collateral estoppel (issue preclusion), likelihood of confusion
between applicant’s FUTURE mark and the FUTURA mark in the cited
registrations. For purposes of completeness we also find, for
that application, likelihood of confusion based on the du Pont
factors of the similarity of the marks and the similarity of the
refused goods and services to those in the cited registrations,
as well as the channels of trade. We do not consider the other
du Pont factors, for which there was no evidence or argument.
For application Serial No. 76514799 (FUTURE MOTORS), we
find the doctrine of collateral estoppel to be inapplicable.
That notwithstanding, we also find that applicant’s FUTURE
MOTORS mark, for the refused goods and services in International
Classes 12, 35, and 40, is likely to cause confusion with the
FUTURA mark in the cited registrations based on the similarity

12 For the same reasons discussed herein, we find that the second and
third du Pont factors also favor finding a likelihood of confusion for
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of the marks, the similarity of the goods to those in the cited
registrations, and the channels of trade. We do not consider
the other du Pont factors, for which there was no evidence or
argument.

Decision for application Serial No. 76511652 (FUTURE):
The refusal to register is affirmed as to International
Class 12 in its entirety.
The refusal to register is affirmed as to the following
services in International Class 35:

distributorships featuring . . . automobiles, trucks,
aircraft; retail automobile and vehicle parts stores; online
ordering in the field of . . . automotive and vehicle parts;
dealerships in the field of automobiles and water-crafts,
namely, boats and motorcycles; independent sales representatives
in the field of automobiles, aircraft, . . . ; promoting and
conducting trade shows in the field of automobile parts.

After the period for appeal expires, the application will
be forwarded for publication for all the goods in Classes 3, and
the following services in Classes 35:
Class 35: Advertising services, namely the dissemination of
advertising materials via the internet and brochures; providing
television and radio advertising for others; production of
television commercials; product endorsements, namely providing
consumer product information via the internet; auctioneering
services; wholesale and retail store services, featuring, food
beverages, toys, appliances, furniture, toys and games, plants,
sporting goods, eye wear, kitchen ware, cards and gifts,

application Serial No. 76511652 (FUTURE).
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25
novelties, crafts office and home supplies, clothing apparel,
movies, music; business management services; distributorships
featuring games, toys, computers, cell phones, toys, games,
food, beverages, water, pop, fruit juices, non alcoholic
beverages, general merchandise, clothing, tools, hardware,
health and beauty products, luggage hand bags, eye wear,
pharmaceuticals, movies, film, art, music, furniture, books,
appliances, house wares; franchising, namely, offering technical
assistance in the establishment and for operation of
restaurants, hotels, amusement parks, airlines, computers, shoe
stores, clothing stores, technology stores, toy stores, health
stores, food and beverage store; business management and
business administration for others; retail drug stores; retail
department stores; retail convenience stores; retail toy stores;
retail book stores; retail appliance stores; retail sporting
goods stores; retail hardware stores; retail women's, men's and
children's clothing stores; retail jewelry stores; retail
cosmetics stores; retail gift stores; retail novelty stores;
retail hobby stores; retail furniture stores; retail music
stores; retail video stores; retail pharmacy stores; retail pet
stores; retail electronics stores; promoting the goods and
services of others through the distribution of printed
advertisements and promotional contests; market research; on-
line ordering in the field of toys, books, appliances, clothing,
cosmetics, novelty gifts, hobby kits, furniture, music, videos,
pharmaceutical products, pet products, electronics; public
relations; business marketing consulting; accounting services;
independent sales representatives in the field of food,
beverages, clothing; operation of telephone switchboard for
others; operation of telephone communication centers for others;
opinion polling for business or advertising purposes; organizing
and conducting job fairs; packaging articles to order and
specification of others; payroll preparation; personal
management services for musical performers; personal management
services for entertainers; personal management consultation;
personnel relocation; photocopying; physician referrals;
preparing and placing outdoor advertisements for others;
preparing business reports; preparing computer slide
transparencies for use by businesses; preparing mailing lists;
processing manufacturers rebates; processing manufacturers
coupons; product demonstrations; literary agencies; mail order
book clubs; mail order catalog services featuring clothing,
shoes, magazines, and jewelry; mail sorting; maintaining
registry of breeds in the field of dogs and horses; managed-care
services, namely, utilization review and pre-certification
services; medical cost management; medical referrals; medical
transcription services; product merchandising; modeling
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agencies; multilevel marketing business services; talent
agencies; tax assessment; tax consultation; tax preparation;
telemarketing; telephone auctions; telephone answering services;
telephone directory information; theatrical agencies; tracking
and monitoring insurance compliance; tracking, locating and
monitoring of vehicles, maritime vessels and aircraft services
for commercial purposes; copyright management consultation; cost
accounting; data processing services; demographic consultation;
employment agencies; employment out placing services; energy
price comparison services; estimating contracting work;
evaluation of stand timber; exchange services, namely, bartering
of goods for others; production and distribution of radio and
television commercials'; promoting sports competitions and
concerts of others

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Decision for application Serial No. 76514799 (FUTURE
MOTORS):

The refusal to register is affirmed as to the following
goods in International Class 12:
motor vehicles, namely, automobiles, trucks, vans, cars,
sport utility vehicles, vehicles, namely, experimental cars,
concept cars, electric cars, gas cars; family cars; racing cars;
sports cars; recreational vehicles, namely, campers and motor
homes; buses; motorized scooters; all terrain vehicles;
motorcycles; bicycles; engines and motors for land vehicles;

The refusal to register is affirmed as to the following
services in International Class 35:
retail store services featuring . . . tires; providing
information about automobiles for sale by means of the Internet;
operation of businesses for others, namely, retail automobile
parts and accessories stores, vehicle dealerships, motorcycle
dealerships, arranging and conducting trade shows in the field
of automobiles; logistics management in the field of vehicles;
catalog ordering services featuring vehicles; mail order
services featuring vehicles, . . . parts and accessories for
vehicles; retail store services featuring . . . automobiles;
wholesale store featuring . . . automobiles; wholesale stores
featuring auto parts, . . . and automobiles; independent sales
representative in the field of vehicles, trucks, ATV,
automobiles, electric vehicles; retail store services featuring
automobile parts and accessories; retail gas station services
featuring gasoline pumps; retail gift stores featuring vehicles;
retail consignment stores featuring . . . automobiles; retail
services by direct solicitation by sales agents in the field of
automobiles; shop at home parties featuring vehicles, . . .
parts and accessories for vehicles; dealerships featuring
automobiles, . . . motorcycles, on-line trade show in the field
of vehicles, . . . land craft and new inventions related to
vehicles; customer services in the field of vehicles; preparing
audio-visual displays in the field of vehicles; providing door-
to-door shopping services in the field of vehicles providing
home shopping services in the field of vehicles, . . . land
craft, and parts and accessories for vehicles by means of
television;

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The refusal to register is affirmed as to the following
services in International Class 40:
manufacturing services for others in the field of vehicles,
automobiles.

After the period for appeal expires, the application will
be forwarded for publication for all the goods in Classes 3, 9,
28, 43 and 44, and the following goods and services in Classes
12, 35, and 40:
Class 12: air craft; personal water craft, namely, boats;
airplanes; seaplanes; gyro copters, namely, a rotary aircraft
that uses a propeller to fly; helicopters; amphibious airplanes;
military aircraft; experimental air craft; gliders, hydroplanes,
recreational water craft, namely, boats; ships; cruise ships;
spacecraft, namely, lunar rovers; speed boats; locomotives;
yachts; sail boats; hovercraft; marine vehicles, namely, ferry
boats; space shuttles; space craft, namely, rockets; and
structural parts for the foregoing

Class 35: Marketing and advertising for others; on line
trading services in which seller posts products to be auctioned
and bidding is done via the Internet; retail store services
featuring clothing, cameras, fur, furniture, groceries, jewelry,
garden and nursery supplies, music and records, televisions;
retail store services featuring general consumer merchandise;
exchange services, namely, bartering of goods for others;
promoting the goods and services of others through infomercials
played on customer point of purchase television monitors in
retail stores; promoting the goods and services of others by
means of operating an on line shopping mall with links to the
retail web sites of others; providing consumer product
information via the Internet; providing information about the
goods and services of others via the global computer net work;
operation of business for others, namely, air craft dealerships,
water craft dealerships, assisted living facilities, property
leasing agencies; opinion polling for business or advertising
purposes, order fulfillment services; organizing and conducting
job fairs; arranging and conducting trade shows in the field of
arts, and crafts; arranging and conducting of fairs and
exhibitions for business and advertising purposes in the field
of commercial land development and real estate; personal
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management services for entertainers; placing advertising for
others; advertising services, namely, creating corporate and
brand identity for others; business consulting services;
procurement, namely, purchasing weapons and office furniture for
others; new product demonstration; literary agencies; logistics
management in the field of homes, aircraft, water craft,
clothing, toys, and cosmetics; mail order book clubs; catalog
ordering services featuring air craft, water craft, shoes,
cosmetics, clothing general merchandise; mail order services
featuring air craft, water craft, shoes, clothing, cosmetics;
managed care, namely, electronic processing of health care
information; business management services; market analysis;
market research; development of marketing strategies and
concepts; inventorying merchandise; modeling agencies; multi-
level marketing business services; online ordering services
featuring general consumer merchandise; talent agencies;
television advertising agencies; retail store services featuring
aircraft, boats; video stores; wholesale store featuring
aircraft, boats; wholesale stores featuring clothing, toys,
jewelry; distributorships featuring general consumer
merchandise; wholesale store featuring general consumer
merchandise; publicity agents; clearing houses for radio and
television programs; independent sales representative in the
field of boats, ships, sport boats, yachts, air craft,
airplanes, jets; franchise services, namely, offering technical
and business management assistance in the establishment and
operation of specialty stores; retail grocery stores;
supermarkets; retail pharmacy services; retail stores featuring
health food; retail gift stores featuring air craft, water
craft; retail consignment stores featuring home furnishings,
clothing, toys, electronics; discount stores in the field of
women's clothing sporting goods, and cameras; shop at home
parties featuring air craft, water craft; foreign trade
information and consultation; industrial management assistance;
accounting services; advertising agencies, namely, promoting
goods and services of others; advertising services, namely,
creating corporate logo identity for others; agencies for
advertising time and space; conducting business conferences; art
galleries; dealerships featuring boats, and aircraft; business
appraisals; business evaluation of business matters;
intellectual property business management planning; business
management supervision; business marketing and direct mail
consulting services; business merchandising display services;
business networking; business organizational consultation;
business planning; business relocation; business research;
providing facilities for business meetings; business succession
planning; business supervision; buying clubs; commercial and
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industrial management assistance, commercial information
agencies; computerized on line ordering featuring general
merchandise and general consumer goods; concession stands
featuring toys, food, and souvenirs; on-line trade show in the
field of aircraft, land craft; employee relations information
services; consumer research; customer services in the field of
air craft, water craft; direct marketing advertising for others;
developing promotional campaigns for business; dissemination of
advertising for others on the Internet; dissemination of
advertising material; electronic billboard advertising;
promoting the economic development in USA, UK and Saudi Arabia
by preparing and placing advertisements in an electronic
magazine; promoting the goods and services of others through
infomercial played on customer point of purchase television
monitors in retail stores; incentive award programs to promote
the sale of products and services of others; administrative
processing of purchase orders within the framework of services
provided by mail-order companies; arranging of contractual trade
services with third parties; toys, electronics, and cosmetics;
providing home shopping services in the field of air craft, by
means of television; retail services by direct solicitation by
sales agents in the field of air craft and water craft

Class 40: Manufacturing services for others in the field of
aircraft, and boats.