Northside Imports, Inc.

Trademark Trial and Appeal Board

Jun 5, 2012

No. 77440023 (T.T.A.B. Jun. 5, 2012)

Mailed:
June 5, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Northside Imports, Inc.
________

Serial No. 77440023
_______

Patrick J. Arnold, Jr. and David Z. Petty of McAndrews,
Held & Malloy, Ltd. for Northside Imports, Inc.

Timothy J. Finnegan, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Grendel and Wolfson, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Northside Imports, Inc. has appealed from the final
refusal of the trademark examining attorney to register
what is currently identified as HH HUDSON PRODUCTS and
design, with PRODUCTS disclaimed, for goods ultimately
identified as:
Pulleys being parts of machines, namely tensioner
pulleys; water pumps for land vehicles; timing
belts for land vehicles; Internal combustion
engines land vehicle parts, namely, coils; fuel
pumps for land vehicles (Class 7)
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77440023
2
Electric or electronic sensors for measuring the
mass of the air flowing into the engine;
electrical switches for automotive windows (Class
9)
Automotive headlamps (Class 11)
Electric motors for motor cars, namely fan
motors; parts for steering and suspension systems
for vehicles, namely ball joints with control
arms; brake pads for land vehicles; brake rotors
for land vehicles (Class 12).1

Applicant’s mark is shown below:

In its initial application papers, applicant identified the
mark as HUDSON PRODUCTS, and provided, as the description

1 Application Serial No. 77440023, filed April 4, 2008, based on
Section 1(b) of the Trademark Act (intent-to-use). Applicant
identified its goods in its original application as “parts for
European motor vehicles.” In response to the examining
attorney’s requirement, in the first Office action, for a more
definite identification, applicant amended the identification to
“automotive parts for European motor vehicles, namely, head
lamps, fan motors, control arms, tensioner pulleys, water pumps,
timing belt kits, air mass sensors, tensioners, ignition coils,
chain tensioners, fuel pumps, window switches, brake pads, and
brake rotors.” The examining attorney accepted this
identification, but then five Office actions later, the examining
attorney stated, “in response to further review,” that the term
“automotive parts” in the previously accepted identification
could include goods in more than one international class, and
indicated an identification that applicant could adopt, if
accurate. Applicant did so, and amended the application to seek
registration in four classes for the identification of goods
recited above.

Ser No. 77440023
3
of the mark, “The mark consists of The words ‘Hudson
Products’ together with a fanciful design of a bridge.” On
April 15, 2010 (the fourth Office action), the examining
attorney issued an examiner’s amendment that, under the
heading “Drawing,” stated, “The literal portion of the mark
is HH HUDSON PRODUCTS.” We note that Office records were
not updated to reflect this amendment, but we must assume
that this was an amendment to the description of the mark
as we see no other reason for including the amendment.
Therefore, we have updated Office records to add this
statement to the description of the mark.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the marks in two cited
registrations owned by the same entity that, if used in
connection with applicant’s identified goods, it would be
likely to cause confusion or mistake or to deceive. The
cited registrations are for RL HUDSON in standard
characters2 and for RL HUDSON and design, as shown below,3

2 Registration No. 3629361, issued June 2, 2009.
3 Registration No. 3653076, issued July 14, 2009.
Ser No. 77440023
4
and are for goods in Classes 7, 12, 17 and 40. The goods
listed in Classes 7 and 12 are, according to the examining
attorney, the most pertinent in terms of the present
refusal, and we therefore list only those goods below:
Internal combustion engines for machine operation
and replacement parts therefor; internal
combustion engine parts, namely, piston rings;
automotive parts, namely, engine and transmission
seals; mechanical seals; machine parts, namely,
flexible shaft couplings; internal combustion
engine parts, namely, rocker arm assembly;
vehicle engine blocks; engine camshaft structural
parts, namely, camshaft bushings; vibration
dampers for power-operated tools; oil filter; fan
hubs for 2 and 4 cylinder combustible [sic]
engines; structural parts for engine cylinders in
vehicles, namely, cylinder liners; automotive oil
pans; fan pulleys being parts of machines; oil
pumps for use in motors and engines; water pumps
for use in motors and engines; valve tappets for
engines; belt tensioners for engines; intake and
exhaust valves for engines; heat exchangers being
parts of machines; fuel systems for land vehicles
comprised of fuel pumps, fuel injectors, fuel
distribution valves, fuel shutoff valves
(Class 7)

Axle bearings for land vehicles; parts of
motorcycles, namely, fork bearings and races;
wheel bearing kits for use with land vehicles;
wheel bearings for land vehicles; vibration
dampers for vehicles, namely, torsional vibration
dampers (Class 12).

Before considering the substantive issue on appeal,
there are some procedural points we must address. First,
we note that applicant, in its citation of cases in its
briefs, has cited only to the Federal Reporter or Federal
Supplement and not to The United States Patent Quarterly
Ser No. 77440023
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(USPQ). Case citations should include citation to the USPQ
if the case has appeared in that publication. TBMP §§
1203, 101.03; In re Carlson, 91 USPQ2d 1198, 1199 n.2 (TTAB
2009).
Second, the examining attorney has objected to
Exhibit D, which was attached to applicant’s brief,
consisting of registrant’s 12-page promotional publication,4
on the ground that it is not of record. Trademark Rule
2.142(d) provides that the record in the application should
be complete prior to the filing of the appeal, and that the
Board will ordinarily not consider additional evidence
filed with the Board after the appeal is filed. Applicant
argues that applicant “had repeatedly quoted language from
Registrant RL Hudson’s website—with citation to the
website, www.rlhudson.com.” Reply brief, p. 2. Applicant
states that in its brief it also quoted language from the
registrant’s website and had again cited the link for the
website, and “for the convenience of the Board, Applicant
also included as Exhibit D to its Appeal Brief a printout
from the website that included the quoted language.” Id.

4 In its brief applicant lists a URL for this exhibit, thereby
indicating that the exhibit consists of webpages from the
registrant’s website. However, the actual submission appears to
be a printed publication which is distributed by mail. It has a
statement on the last page about U.S. postage being paid, and the
pages show only the page numbers that would be on paper material,
with no indication of being downloaded from a website.
Ser No. 77440023
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Applicant contends that the enclosure of a printout from
the website to which applicant had cited in its responses
does not constitute submitting new evidence on appeal.
The mere listing of a link to a website does not make
the material that might be found on that website of record.
See In re Planalytics Inc., 70 USPQ2d 1453, 1457 (TTAB
2004). Information on websites may change at any time, and
therefore the webpages themselves must be submitted to be
considered of record. However, to the extent that
applicant quoted or paraphrased language from the
registrant’s website in its responses to Office actions,
that material will be considered. During examination the
examining attorney had an opportunity to review the website
and challenge statements applicant made in its responses,
or he could have advised applicant that it had to submit
the webpages to support its statements.
This brings us to the substantive issue on appeal:
the refusal based on likelihood of confusion. Our
determination of this issue is based on an analysis of all
of the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
Ser No. 77440023
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analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). We concentrate our analysis
on whether applicant’s mark is likely to cause confusion
with the word mark RL HUDSON in standard characters.
Because applicant’s mark is closer to the standard
character mark, if applicant’s mark is likely to cause
confusion with the word mark registration, the refusal must
be affirmed, and there is no need for us to consider
whether confusion is likely with respect to the
registration for the word and design mark. On the other
hand, if there is no likelihood of confusion with the word
mark, there would be no likelihood of confusion with the
word and design mark.
We first consider the factor of the similarity of
applicant’s mark with RL HUDSON. As noted previously, when
applicant filed its application it characterized its mark
as HUDSON PRODUCTS, and described it as consisting of the
words “Hudson Products” together with a fanciful design of
a bridge. Later, the examining attorney entered an
examiner’s amendment that “The literal portion of the mark
Ser No. 77440023
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is HH HUDSON PRODUCTS.” Applicant in its reply brief
states that “the Examining Attorney amended Applicant’s
mark to include the letters ‘HH’--which can be seen in the
bridge design--in the word portion of the mark.” p. 4,
emphasis in original. We point out that the examining
attorney’s action did not amend the mark. In fact, the
various characterizations of the mark stated by applicant
and the examining attorney do not control what the mark is,
they merely reflect the different perceptions of the mark.
The mark is

and it is up to us, as part of our determination of whether
or not the marks are similar, to decide the impression that
applicant’s mark will make on consumers. It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
Ser No. 77440023
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entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark clearly includes the words HUDSON
PRODUCTS, and because this part of the mark can be spoken,
it is this wording that consumers will use to refer to the
mark, and therefore it will likely be the portion
remembered by consumers. However, the design portion of
the mark, and particularly the letter “H,” also is
noteworthy. It is the largest and boldest part of the
part, and as such it stands out. However, it is not clear
to us that consumers will recognize that the “H” is part of
a bridge design, or that there is a second “H” in that
design. Rather, the bridge design appears more as
background, and we question whether consumers will note or
remember it or the second “H.” Thus, the commercial
impression conveyed by applicant’s mark is of the bold and
large letter “H” and the words HUDSON PRODUCTS.
Both applicant’s mark and the registrant’s mark
contain the name HUDSON, and to this extent the marks are
similar. HUDSON also appears, on this record, to be an
arbitrary term for the goods, unlike other situations, such
as the cases cited by applicant, in which marks that had a
shared element were found not to be confusingly similar.
There is no evidence of third-party registrations for or
Ser No. 77440023
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third-party use of HUDSON marks, and therefore the
registrant’s mark must be considered a strong mark.
Although the marks have the term HUDSON in common, there
are also certain differences between the marks, i.e., the
differences in the initials used--an H in applicant’s mark
and RL in the registrant’s mark, and the additional word
PRODUCTS and the bridge design in applicant’s mark.
However, we find that these differences are not sufficient
to distinguish the marks. The word PRODUCTS, which has
been disclaimed, is a general term for any items, and
consumers would not ascribe to this word any source-
identifying significance. Although it is possible to view
the letter “H” in applicant’s mark as an initial for a
first name, it is more likely that consumers will
understand it as a reference to or monogram initial for
HUDSON. Therefore, despite the specific differences in the
marks, consumers who are familiar with the registrant’s
mark, RL HUDSON, are likely to view applicant’s mark as a
variation of that mark in which the “H” in HUDSON has been
emphasized, rather than treating the marks as indicating
separate sources for the goods.
We now turn to a consideration of the second du Pont
factor, the similarity of the goods. Because the
application is for goods in four classes, it is the
Ser No. 77440023
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Office’s burden to prove likelihood of confusion with
respect to the goods in each class. However, if the
examining attorney is able to show likelihood of confusion
with respect to any of the goods in a single class, the
refusal must be affirmed as to the entire class of goods.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
In considering the similarity of the goods, we follow
the well-established principle that it is not necessary
that the goods or services be identical or even competitive
in nature in order to support a finding of likelihood of
confusion, it being sufficient that the goods or services
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer. In re Home Builders Assn. of Greenville, 18
USPQ2d 1313, 1317 (TTAB 1990).
We note at the outset that the evidence submitted by
the examining attorney to prove relatedness of the goods
has virtually no probative value. The examining attorney
has submitted pages from four websites. Three of the
Ser No. 77440023
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websites are from automobile manufacturers, or websites
related to them. The webpage from Ford Motor Company,
www.ford.com, lists, under “Owner Services,” the category
“Parts and Accessories,” but there is no listing of any
parts or accessories. There is a link to “Search Catalog,”
but no pages from the catalog were submitted. The
examining attorney states that “The Ford Motor Company
parts and accessories website provides customer access to
all of its parts and accessories,” and “There is no stated
limitation to kind or quantity of automotive parts.”
Brief, unnumbered p. 11. We assume from the examining
attorney’s statement that he has confused the concept of
the Section 7(b) presumptions accorded to a trademark
registration, in which the identification “automotive
parts” would encompass all automotive parts without any
limitation as to their kind. However, a statement on a
webpage that a company offers “automotive parts” does not
prove that it offers automotive parts of all kinds.
Because the material made of record by the examining
attorney does not show what the “parts and accessories”
are, we cannot assume that they would include the goods
listed in applicant’s application and the cited
registration.
Ser No. 77440023
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The webpage from the Chrysler Fleet Operations
website, www.fleet.chrysler.com, is headed “Service and
Parts,” and has a link to “Powertrain Warranty.”
Otherwise there is no listing for any specific parts. The
examining attorney says about this evidence that this
website “provides services and parts without limitation,”
brief, unnumbered p. 12, apparently again with the mistaken
idea that a reference in an advertisement is equivalent to
the presumptions to be accorded an identification in a
registration.
The website GMPartsDirect.com, www.gmpartsdirect.com,
states that it is “operated by Flow GM Auto Center”;
advertises “Over 404,000 original GM Parts available”;
provides links to its “GM Performance Parts crate engines,”
“Corvette Tire Section,” and “aftermarket section,
including Corsa Exhaust, K&M Filters, Be Cool Radiators,
Kooks, MBRP Exhaust, Coast to Coast”; and shows a “GM Full
Size truck and SUV transfer case selector switch.” The
examining attorney contends, based on the statement that
this company has access to 404,000 original GM parts, that
“certainly water pumps, timing belts, fuel pumps, headlamps
would be found with piston rings, vehicle engine blocks,
oil filters and fuel pumps.” However, the examining
attorney’s speculation that the 400,000 parts would include
Ser No. 77440023
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the applicant’s and registrant’s goods does not substitute
for proof that they do.
The final piece of evidence submitted by the examining
attorney is the entry for Delphi Corporation found in
Wikipedia, http://en.wikipedia.org. Although the rules
with respect to hearsay are more relaxed in an ex parte
context, see TBMP § 1208, we have serious concerns that an
article that states the number of a company’s employees,
wholly-owned manufacturing sites, joint ventures and sales
offices can be used to prove the truth of these statements.
Even if we were to accept these statements, the entry does
not show that Delphi sells the goods listed in each of the
classes in applicant’s application, and the goods listed in
the cited registration. The examining attorney only says
that “as the world’s largest and most diversified supplier
of automotive parts, it is likely that Delphi provides the
goods listed by the applicant and registrant.” Brief,
unnumbered pages 10-11, emphasis added. Again, the
examining attorney’s speculation cannot substitute for
proof.
We have a further problem with this evidence, pointed
out by applicant in its reply brief. Three of the
companies are automobile manufacturers, and it would be
expected that they would sell a wide variety of automotive
Ser No. 77440023
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parts as replacement parts for their vehicles. And Delphi,
as the examining attorney has stated, is the world’s
largest and most diversified supplier of automotive parts.
The practices of these companies, even if the examining
attorney had submitted evidence that they sold the parts
identified in applicant’s application and the cited
registration, would not show that consumers would expect
these same goods to emanate from “regular” automotive parts
manufacturers and suppliers and be sold under marks that
are not the brand of the automobile manufacturer or
automobile for which they are designed.
We therefore must consider whether, based on the
identifications alone, the goods are related. Applicant’s
identification of goods in Class 7 includes “fuel pumps for
land vehicles,” while the registrant’s identified goods
include “fuel systems for land vehicles comprised of fuel
pumps, fuel injectors, fuel distribution valves, fuel
shutoff valves.” On their face, these goods are closely
related because the registrant’s fuel systems contain fuel
pumps. Applicant’s “electric or electronic sensors for
measuring the mass of the air flowing into the engine” are
parts used for internal combustion engines, and most of the
Class 7 goods identified in the registration are also
internal combustion engine parts, with the “intake and
Ser No. 77440023
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exhaust valves for engines” being particularly related to
the applicant’s engine air flow sensors. That is, because
the goods are used in connection with each other, the
consumers for these goods are likely to assume they emanate
from the same source if sold under confusingly similar
marks. With respect to applicant’s Class 12 goods, its
identified “parts for steering and suspension systems for
vehicles, namely ball joints with control arms” and the
registrant’s axle bearings, wheel bearing kits and wheel
bearings are all part of a vehicle’s suspension system. As
a result, we find that some of applicant’s goods in
Classes 7, 9 and 12 are related to goods identified in the
cited registration.
We reach a different conclusion, though, when it comes
to the headlamps in Class 11. Although headlamps are an
automotive part, they are different in nature and purpose
from the automotive parts identified in the cited
registration. We cannot conclude, simply because the term
“automotive parts” can be used to broadly describe both
applicant’s headlamps and the registrant’s goods, that the
goods are related. See Harvey Hubbell Inc. v. Tokyo
Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975) (in
determining whether products are identical or similar, the
Ser No. 77440023
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inquiry is not whether a single word can be found to
describe them).
With respect to the du Pont factor of the channels of
trade, the examining attorney asserts that “the
identification set forth in the cited registration uses
broad wording to describe Registrant’s goods, namely,
automobile and engine parts, and does not contain any
limitations as to nature, type, channels of trade or
classes of purchasers.” Brief, unnumbered p. 12. This,
however, is not correct. The identification does not list
“automobile and engine parts,” as the examining attorney’s
statement suggests. Rather, the identification lists very
specific items, for example, “internal combustion engine
parts, namely, piston rings” and “automotive parts, namely,
engine and transmission seals.” There is no evidence that
the specific goods identified in either the application or
registration are sold through the same channels of trade;
as we previously stated, the examining attorney’s evidence
that particular websites sell “automotive parts” does not
show that applicant’s and the registrant’s identified
automotive parts are sold through the same website.
However, applicant has stated that its goods and those
of the registrant would be purchased by automotive repair
professionals. As a result, there is no dispute that the
Ser No. 77440023
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goods are purchased, at least in part, by the same class of
consumers. This du Pont factor favors a finding of
likelihood of confusion. As for these consumers, applicant
asserts that they are sophisticated purchasers who are
highly trained and that “everyone knows that automotive
parts--and especially Applicant’s and Registrant’s more
complicated automotive parts--are not cheap.” Brief,
p. 15. However, applicant has not submitted any evidence
on these points. We do agree that, because of the nature
of applicant’s and the registrant’s goods, they will be
bought and installed by consumers who are knowledgeable
about car repair, whether those consumers are the “highly
trained automotive professionals” described by applicant or
by experienced do-it-yourselfers. It does not follow,
however, that because these purchasers are sophisticated,
they will not be confused by applicant’s use of its
trademark for automotive parts that are nearly the same or
related to the registrant’s identified parts. As discussed
above, the marks are similar and convey similar commercial
impressions, and even if sophisticated and careful
purchasers were to note the differences between the marks
they are likely to believe, when these marks are used on
related automotive parts, that they identify products
emanating from the same source. Therefore, although the du
Ser No. 77440023
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Pont factor of the conditions of purchase favors applicant,
it does not outweigh the factor of the similarity of the
marks.
Neither applicant nor the examining attorney have
discussed any other du Pont factors, and to the extent that
any are relevant, we treat them as neutral.
In conclusion, because the Office has failed to prove
that applicant’s identified automotive headlamps are
related to the registrant’s identified goods, we find that
applicant’s use of its mark for headlamps is not likely to
cause confusion. However, because individual goods in
Classes 7, 9 and 12 of applicant’s application are related
to goods identified in the cited registration; and because
the marks are similar and are sold, at least in part, to
the same classes of consumers, we find that the Office has
proved likelihood of confusion with respect to these
classes.
Decision: The refusal of registration is affirmed
with respect to the application in Classes 7, 9 and 12; the
refusal is reversed with respect to Class 11. The
application will proceed to publication solely for the
goods in Class 11.