Kumho Tire Co., Inc.

Trademark Trial and Appeal Board

Nov 12, 2010

No. 77377089 (T.T.A.B. Nov. 12, 2010)

Mailed: November 12, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kumho Tire Co., Inc.
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Serial No. 77377089
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Laurel V. Dineff and R. Peter Spies of Dineff Trademark Law
Limited for Kumho Tire Co., Inc.

Paul E. Fahrenkopf, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
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Before Walters, Mermelstein and Ritchie, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Kumho Tire Co., Inc. has filed an application to
register the standard character mark ECSTA LX PLATINUM on
the Principal Register for “tires; inner tubes for vehicle
tires; mud flaps for vehicles; inner tubes,” in
International Class 12.1 Applicant voluntarily entered a
disclaimer of PLATINUM apart from the mark as a whole.

1 Serial No. 77377089, filed January 1, 2008, based on an allegation of
a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77377089
2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark PLATINUM previously registered for “tires,”2 that,
if used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to
deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We reverse the
refusal to register.
Introduction
Applicant contends that the registered mark, PLATINUM,
is a weak mark because the term is laudatory and, thus, it
is entitled to only a limited scope of protection; that
ECSTA, applicant’s alleged house mark, is the dominant
portion of its mark because ECSTA is arbitrary and it is
the first word in its mark; and that the ECSTA LX portion
of its mark is sufficient to distinguish the marks. In
support of its statement that ECSTA is its house mark,
applicant notes its ownership of the following active
registrations:
• No. 1936287 – ECSTA for “automobile tires
and inner tubes”;

2 Registration No. 3507520 issued September 30, 2008. The owner is PT.
Multistrada Arah Sarana.
Serial No. 77377089
3

• No. 2739837 - ECSTA STX for “brake pads for
land vehicles, brake linings for land
vehicles, windshield wipers, automobile
tires, and parts for automobile tires,
namely – tubes for reserve air and flaps to
combine the tubes to the tires”; and

• No. 2782283 - ECSTA SUPRA for “tires.”

In support of its position that PLATINUM is a weak,
laudatory term, applicant submitted excerpts from Internet
websites, as follows:
• Pokemon Platinum Version - pokemonplatinum.com
• Wells Fargo Platinum Card – wellsfargo.com
• VMware Platinum Support & Subscription Service –
vmware.com
• MasterCard Platinum Credit Cards – mastercard.com
• AAdvantage Platinum – aa.com
• Citi Platinum Select MasterCard – citicard.com
• Shell Platinum MasterCard – shell.us
• Priscilla of Boston – platinum bridal gown collection
– priscillaofboston.com
• Platinum Card from American Express –
americanexpress.com

Applicant submitted the following excerpts from Internet
websites3 pertaining to the auto accessory industry:
• Tires-easy.com; bizrate.com – American Radials -
Platinum tires
• Best-price.com – Enkei performance LSF Platinum;
Metallic Wheels; Westin Platinum Wheel To Wheel Nerf
Bars Ford F-450…

3 References at Ultrawheel.com and wheelsnext.com to “Platinum wheels,”
and references at Thewheelsconnection.com and hubcap-tire-wheel.com
to “Platinum Wheels and Platinum Rims,” could refer to registrant’s
goods. Thus, we do not consider these excerpts to be of probative
value.

Serial No. 77377089
4
• Local.yahoo.com – Platinum Tire Center – Allen Park,
MI
• Ebay.com – Letro Legend Platinum Tires Wheel White.
• Keystone-auto.com – Platinum Plus label meets our own
rigorous standard for quality. Platinum Plus program
– replacement parts aimed at collision centers.

Applicant submitted copies of the following third-
party registrations in support of its position that
applicant is but one among a crowded field of registrations
with marks containing the weak, laudatory term PLATINUM in
International Class 12:
• PLATIN, US Reg. No. 3352617 for “land vehicles and
parts and fittings therefor, namely, tires, wheels,
wheel rims; aircraft, airplanes and parts and fittings
therefor, namely, tires, wheels, wheel rims” in Class
12. The word PLATIN is the German word for PLATINUM.

• LIQUIDPLATINUM, US Reg. No. 3378589, for “truck parts
and accessories, namely, fenders and fender attachment
brackets” in Class 12.

• PLATINUM, US Reg. No. 3241812, for “bicycles; bicycle
parts, namely, front forks, bicycle cranks, bicycle
rims, seatposts, handlebars, bottom brackets,
chainrings, headset bearings, bicycle hubs, bicycle
spokes, bicycle brakes, bicycle chains, handlebar
stems, and bicycle gears” in Class 12.

• PLATINUM PLUS, US Reg. No. 3156184, for “land vehicle
parts, namely, automobile structural parts, namely,
body panels, bumpers and bumper covers; turn signals
for vehicles” in Class 12.

• PLATINUM, US Reg. No. 2992266, for “flatbed utility
trailers” in Class 12.

• PLATINUM SERIES, US Reg. No. 2994844, for “helm
chairs” in Class 12.

Serial No. 77377089
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• PLATINUM, US Reg. No. 2927989, for “seat belts for use
in vehicles” in Class 12.

• PLATINUM, US Reg. No. 2973717, for “tie down straps,
tarp straps for use on moving vehicles” in Class 12

• F-150 PLATINUM, US Reg. No. 3722751, for “land motor
vehicles, namely, automobiles; exterior insignia
badges for vehicles” in Class 12.

• PLATINUM, US Reg. No. 2638435, for “recreational
vehicles, namely, motor homes” in Class 12.

• PLATINUM, US Reg. No. 2067466, for “high performance
motorcycle parts, namely, motorcycle, exhaust systems
comprised of mufflers and exhaust pipes” in Class 12.

Applicant also submitted evidence with its brief
purporting to show registrant’s actual use of its
registered mark. The examining attorney properly objected
to this untimely submission of evidence and we have given
it no consideration.
The examining attorney states that both
identifications of goods include “tires,” and, thus, the
goods are identical in part and applicant’s “inner tubes
for vehicle tires,” are closely related to “tires” because
they are an integral part of some tires. He also
acknowledges that the registered mark, PLATINUM, is a weak
mark because the term is laudatory; and that PLATINUM is
not the dominant portion of applicant’s mark. He contends
that, even though the registered mark may be weak, it is
Serial No. 77377089
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entitled to protection, particularly herein where the
goods, tires, are identical.
The examining attorney contends that applicant has
merely added its house mark to registrant’s mark, which
increases, rather than decreases, the likelihood of
confusion, alleging that “LX” is a commonly used letter
combination and, thus, does nothing to distinguish the
marks.
The examining attorney challenged the relevance of
applicant’s evidence, asserting that only uses or third-
party registrations pertaining to the identical goods,
tires, are probative given the highly suggestive nature of
the registered mark. He added that the one coexisting
third-party registration for PLATIN for, in part, tires, is
not probative because consumers are unlikely to translate
the German term into its English equivalent, i.e.,
PLATINUM.
Likelihood of Confusion
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. See In re E. I. du Pont de Nemours and
Co., 476 f.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin maison
Serial No. 77377089
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Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
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); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999) and the cases cited therein.
The Goods, Channels of Trade and Consumers
The question of likelihood of confusion must be
determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods recited in the
registration, rather than what the evidence shows the goods
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
While applicant’s identification of goods includes
several items, one of these items is “tires,” which is
identical to the “tires” identified in the cited
registration. Moreover, we agree that, at least,
Serial No. 77377089
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applicant’s “inner tubes for vehicle tires” are closely
related to registrant’s “tires.” To find that the goods
are the same for the likelihood of confusion analysis, it
is only necessary that one of the items within applicant’s
identification of goods be the same as or related to
registrant’s goods.
Moreover, because at least two of applicant’s
identified goods are identical or closely related to
registrant’s goods, we must presume that they travel in the
same channels of trade and are sold to the same classes of
consumers. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
These du Pont factors weigh against registration.
Serial No. 77377089
9
The Marks
We now consider whether applicant’s mark and the
registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression. In analyzing the similarity or
dissimilarity of the marks, we are mindful that where, as
here, the goods at issue are identical, the degree of
similarity between the marks need not be as great as where
there is recognizable disparity between goods. In re
Tender Tootsies Limited, 185 USPQ 627, 628-629 (TTAB 1975).
The test 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 terms of
their overall commercial impressions that confusion as to
the source of the goods or services offered under the
respective marks is likely to result. H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Serial No. 77377089
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Both applicant’s and registrant’s standard character
marks contain the word PLATINUM. In fact, PLATINUM is
registrant’s mark in its entirety. Applicant’s mark
consists of the word PLATINUM preceded by the wording ECSTA
LX.
We do not agree with the examining attorney’s analysis
of applicant’s evidence. We find that this evidence,
particularly the evidence of use of the term PLATINUM, is
relevant for determining the strength or weakness of the
registered mark.
We note that there is no evidence in the record as to
a specific meaning of PLATINUM. However, the extensive
evidence of third-party use and registration submitted by
applicant suggests that the term may be perceived as
indicating quality; and the number of third-party uses and
registrations indicates that PLATINUM may be a weak mark in
connection with tires, automotive goods and a wide range of
products. Nonetheless, even weak marks are entitled to
protection and applicant has not challenged the
registrability of the cited mark, which it can do only in
the context of a cancellation proceeding.
There is nothing in the record to indicate that ECSTA
is other than an arbitrary term in connection with the
identified goods. There is also no evidence as to the
Serial No. 77377089
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significance of LX in connection with these goods, thus, we
cannot conclude that it is merely descriptive and of no
significance. As such, the similarity of the marks turns
on whether the addition of ECSTA LX is sufficient to
distinguish the marks for these identical goods.
We find that it is. With the suggestive term
“PLATINUM” as the sole shared term between the mark in the
application and that in the cited registration, we find the
marks to be more dissimilar than they are similar in sight,
sound, and commercial impression.
This is analogous to the case of Knight Textile Corp.
v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (NORTON
MCNAUGHTON ESSENTIALS allowed to register despite
opposition from owner of ESSENTIALS). There, in a
situation similar to this one, the parties had in-part-
identical goods and the applied-for-mark incorporated in
full the registered mark. The Board found, however, that
the registered mark (i.e., the shared term) was “highly
suggestive as applied to the parties’” goods. Id. at 1315.
Furthermore, the Board found that the addition of
applicant’s house mark to what the evidence had shown to be
a “highly suggestive” shared term resulted in a showing of
no likelihood of confusion. Presented with similar
circumstances here we reach the same result.
Serial No. 77377089
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In sum, we find that, viewed in their entireties, the
dissimilarities of the marks outweigh their similarities.4
We further find that consumers would be likely to
distinguish the marks based on those differences.
Accordingly, we find that this du Pont factor weighs in
favor of registration.
Conclusion
Despite the identity of the goods, we find the factor
of the distinctions in the marks sufficient to avoid a
likelihood of confusion.
Decision: The refusal under Section 2(d) of the Act
is reversed.

4 This result is without prejudice to an opposition, which might include
different evidence and produce a different result.