RaceTrac Petroleum, Inc.v.ETW Corp.

Trademark Trial and Appeal Board

May 11, 2004

No. 91117623 (T.T.A.B. May. 11, 2004)

Mailed: May 11, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
RaceTrac Petroleum, Inc.
v.
ETW Corp.
_____
Opposition No. 91117623 to application Serial No. 75321745
filed on July 9, 1997
_____
Joan L. Dillon of Joan Dillon Law, LLC for RaceTrac Petroleum,
Inc.
Barbara A. Murphy of Adduci, Mastriani & Schaumber, LLP for ETW
Corp.
______
Before Quinn, Hohein and Bottorff , Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
ETW Corp. has filed an application to register the mark
"RACE WAY" and design, as reproduced below
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91117623
2
for the following goods:1
"air powered tools, namely, paint guns,
pop riveters, drills, impact wrenches,
ratchet wrenches, grinders, sanders and cut-
off tools; replacement parts for the above-
specified air tools; [and] hydraulic pop
riviters" in International Class 7;
"hand-tools, namely, bolt cutters;
hammer and dolly sets comprised of hammers of
varying sizes and dollies; hammers sold in
sets of varying sizes; punches and chisels
sold in sets of varying sizes; pry bars sold
in sets of varying sizes; wrenches sold in
sets of varying sizes; sockets sold in sets
of varying sizes; pliers sold in sets of
varying sizes; screwdrivers sold in sets of
varying sizes; files sold in sets of varying
sizes; specialty hand-tools, namely, chisels,
taps and dies, hammers[,] punches, scrapers,
screwdrivers, socket sets sold in sets of
varying sizes, and wrenches for use in body,
engine[,] brake and undercar repair" in
International Class 8;
"hand-held diagnostic equipment for
motor vehicles, namely, multi-meters, timing
lights, battery testers, and compression
testers" in International Class 9;
"mobile tool carts and mobile stands for
dispensing masking paper and tape" in
International Class 12;
"air hoses for pneumatic tools" in
International Class 17; and
"tool chests and tool roll cabinets" in
International Class 20.
Registration has been opposed by RaceTrac Petroleum,
Inc. on the ground that it is the owner of the following: (i)
1 Ser. No. 75321745, filed on July 9, 1997, which with respect to the
goods in each class is based on an allegation of a date of first use
anywhere of February 1995 and a date of first use in commerce of March
1995. The mark is described as consisting of "the word 'RACEWAY'
within a circle against a checkered flag on a flagpole."
Opposition No. 91117623
3
registrations for the mark "RACEWAY" for (a) "automobile filling
station services;"2 (b) "convenience store services";3 and (c)
"motor oil";4 and (ii) an application for registration of the
mark "RACEWAY" and design, as illustrated below,
for "retail convenience store services" and "automobile filling
station services";5 that it "has used RACEWAY as a service mark
for automobile filling station services, convenience store
services and motor oil since a date long prior to [applicant's]
claimed date of first use] of March 1995"; that it "operates more
than 110 automobile filling station services, many of which have
convenience store services offered as an adjunct, throughout a
large portion of the United States"; that "the use of the mark
RACEWAY ... in association therewith has caused the mark RACEWAY
to become well-known, well-reputed and famous"; and that, on
information and belief, "Applicant's Goods" (i.e., the various
2 Reg. No. 1,784,457, issued on July 27, 1993, which sets forth a date
of first use anywhere and in commerce of November 21, 1968; renewed.
3 Reg. No. 2,288,357, issued on October 26, 1999, which sets forth a
date of first use anywhere and in commerce of November 21, 1968.
4 Reg. No. 1,136,548, issued on June 3, 1980, which sets forth a date
of first use anywhere and in commerce of November 24, 1976; renewed.
5 Ser. No. 75747773, filed on July 12, 1999, which the record shows
matured into Reg. No. 2,350,123, issued on May 16, 2000, which for
each of the above services sets forth a date of first use anywhere and
in commerce of April 1999.
Opposition No. 91117623
4
goods for which registration is sought) "are automotive car[e]
and repair products and are of a nature substantially similar to
and related to the goods and services sold at Opposer's locations
under its mark RACEWAY, are sold to the same class of purchasers
through the same or similar channels of trade, are used at
automobile filling station service facilities, and are provided
for, and are especially made for, the maintenance of automotive
vehicles."
In view thereof, opposer further alleges that its "mark
RACEWAY is famous throughout a great portion of the United
States"; that, on information and belief, "Applicant's Goods are
likely to be sold to and/or used by automotive filling station
service providers, and, because of the repute of Opposer's mark
RACEWAY, the purchasing public is likely to mistakenly believe
Applicant's Goods are associated with, sponsored by or emanate
from Opposer"; and that, "[i]n view of the aforesaid
circumstances, purchasers are likely to encounter Opposer's mark
RACEWAY and Applicant's mark RACE WAY under conditions that are
likely to, because of the similarities between the marks and the
strong public association of Opposer with automotive services,
cause confusion or mistake as to their respective sources and
lead those purchasing Applicant's Goods to mistakenly assume that
they are sponsored by or emanate from Opposer."6
6 Although opposer also alleges that "the use by Applicant of the mark
[RACE WAY and design] in association with Applicant's Goods will
dilute the distinctive quality of Opposer's mark RACEWAY to its
detriment," no evidence with respect to a claim of dilution was
presented by opposer at trial and it offered no argument with respect
to such a claim in its brief. In view thereof, and since it is clear
Opposition No. 91117623
5
Applicant, in its answer, has admitted that "some of
the goods sold under its mark may be used for automotive car[e]
and repair," but has otherwise denied the salient allegations of
the opposition. Only opposer has filed a brief7 and neither
party has requested an oral hearing.
The record includes the pleadings; the file of the
opposed application; and, as opposer's case-in-chief, the
testimony, with exhibits, of Jeffrey T. Hassman, opposer's
executive director of marketing, and a notice of reliance on
certified copies of four registrations for its pleaded "RACEWAY"
marks. Applicant, however, did not take testimony or present any
other evidence in its behalf, although its counsel did attend Mr.
Hassman's deposition and cross-examined such witness.
Priority of use is not in issue in this proceeding with
respect to the goods and services which are the subjects of
opposer's registrations for its pleaded "RACEWAY" marks since, as
shown by the certified copies thereof, such registrations are
subsisting and owned by opposer. See King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974). Accordingly, the focus of our determination is on the
issue of whether applicant's "RACE WAY" and design mark, when
used in connection with the goods set forth in its application,
so resembles opposer's "RACEWAY" marks for any or all of its
from opposer's brief that it regards the claim of priority of use and
likelihood of confusion as its sole ground for opposition, the claim
of dilution is deemed to be waived and will not be further considered.
7 Opposer's uncontested request for correction of an error on the
fourth page of its brief is granted.
Opposition No. 91117623
6
various goods and services as to be likely to cause confusion,
mistake or deception as to source or sponsorship.
The record reveals that opposer, which has been in
business since the 1930s, developed the concept of "high volume
gasoline at a low price, easy in and easy out," for its "RACEWAY"
automobile filling station services in 1967 and has continuously
used such mark in connection therewith since 1968. (Hassman dep.
at 5.) While its "RACEWAY" automobile filling stations also
include convenience store services which are rendered under its
"RACEWAY" mark, such stations principally sell gasoline. As
testified to by Mr. Hassman, a stylized version of such mark,
i.e., the "RACEWAY" and design mark reproduced earlier, has been
"used as part of a reimaging of our stores" since 1999. (Id. at
10.) So far, opposer has spent "in excess of $1.5 million" on
the "reimaging" of its automobile filling stations and
convenience stores and "plan[s] to reimage the majority" of such
stores "over time." (Id. at 11.) In addition, as opposer
"build[s] new Raceway stores, they have all the same image that's
represented in that logo mark." (Id.) However, "[a]t one point"
opposer also used, like applicant's "RACE WAY" and design mark, a
checked flag design in association with its "RACEWAY" mark and,
according to Mr. Hassman, there is "a high probability that there
is a Raceway out there with a checked flag" in use. (Id. at 15.)
The reason therefor is that opposer is "just starting to reimage"
and thus "the majority of ... stores are still in existing
tradedress [sic] of when they were built" and "the checked flag
was part of that tradedress [sic]." (Id. at 15-16.)
Opposition No. 91117623
7
Testifying that "at one point there used to be separate
convenience stores from gas stations, and that over time we've
seen those two retail entities merge," Mr. Hassman indicated that
opposer operates its "RACEWAY" automobile filling stations and
convenience stores as merged entities. (Id.) He also testified
with respect to the product mix available as follows:
Q. What kinds of products are
typically found in your convenience stores?
A. Cigarettes, beer where it's
allowed, groceries, snacks and then
convenience items and stuff that's associated
with a filling station. So [there's] oil,
automotive repair stuff, tools, that kind of
stuff that's related to convenience, related
to cars.
Q. By automotive repair stuff, what do
you mean?
Like, for instance, stores may have ...
oil filters. Stores may have anything that
would be applied to an owner's maintenance of
cars. Windshield wipers, for example, those
kinds of owner stuff, as well as oil,
petroleum products, antifreeze, ... things
that people would expect to buy in a place
where they can get gasoline.
Q. Are any tools sold in these
convenience stores?
A. Yes, yes. .... Some stores will
only sell maybe wrenches, screwdrivers,
things like that. Other convenience stores
will dedicate more space and have more
elaborate and more advanced toolsets.
Q. And, to your knowledge, how long
have these kinds of products been sold in the
Raceway convenience stores?
A. Certainly within recent history. I
would say that in all probability when the
stores were first opened because the concept
from the [late] 1960s was more centered
around the automobile and less centered
Opposition No. 91117623
8
around the other convenience items. So it
would be a greater probability that that kind
of stuff would be in there.
(Id. at 12-13.)
Moreover, while noting that in terms of customer
expectations, some gasoline stations typically offer a diverse
mix of services which include car washes and auto repair services
in addition to convenience store services, Mr. Hassman testified
as follows with respect to the services which opposer offers:
Q. Would you expect people to come
into a Raceway station and ask for, say,
minor auto repairs?
A. They may come in and ask. We do
not have mechanics there to do the kind of
services that other gas stations have, but
certainly, as with any gas station, people
come in to perform, especially if they are on
long road trips, ... user maintenance,
whether that's to check their oil, replace
lights, replace windshield wipers and that
kind of thing.
Q. And you've already said ... that
the Raceway stores sell those kinds of
products?
A. Yes.
(Id. at 17-18.) Although opposer does not have any records as to
the number of customers who annually patronize its "RACEWAY"
gasoline and convenience stores since it does not have the
ability to track such, it does keep track of its "consistently
growing" gasoline sales. (Id. at 18.) In 2001, for example, it
"did just over $240 million in sales in gasoline across 140 or so
stores ... with the Raceway name, and that was up about $35
million from the year before." (Id.) As to its sales of
Opposition No. 91117623
9
convenience store items, however, opposer "do[es] not track the
sales inside the stores." (Id.)
Opposer's customers are primarily "individual
consumers." (Id. at 24.) However, its customer base also
includes truckers, bus drivers and commercial carriers. Opposer
operates its "RACEWAY" gasoline and convenience stores "primarily
in the southeast, sort of from Texas, Kentucky over to the
eastern seaboard and down through Florida," an area covering
"about 12 or 13" states including "Mississippi, Louisiana, ...
Carolinas, Virginia, [and] Tennessee." (Id. at 19.) As of the
deposition of its witness on March 27, 2002, opposer has "about
140" such stores, with plans for expanding that number by not
only "taking RaceTrac stores and reimaging them into the Raceway
stores" but also, as indicated previously, "build[ing] Raceway
stores on the location properties" which it owns.8 (Id. at 19-
20.) In the latter case, opposer expects to build from "five to
ten or more a year." (Id. at 20.)
However, as to the extent that opposer has advertised
and promoted its "RACEWAY" goods and services, there is little
information of record with respect thereto other than the
testimony that opposer (i) "do[es] not support the Raceway brand
with an extended amount of advertising" and (ii) does not sponsor
8 Opposer's "RaceTrac stores" and its "Raceway stores" both sell
gasoline, although the latter "typically are smaller with fewer
pumps." (Hassman dep. at 26.) Their primary difference, however, is
that the former "are larger convenience stores" which offer "a greater
selection of inside sales." (Id.) Thus, while both sell snack foods
and "things associated with car and car care like ... oil and ...
tools and ..., depending on the local laws, beer and cigarettes," the
"RaceTracs will have a much larger selection of grocery items." (Id.
at 27.)
Opposition No. 91117623
10
any events as part of its current marketing strategy. (Id. at
31-32.) The reason for the former, according to Mr. Hassman, is
that "the brand is really established with the appearance and
dress of the store as people are driving by, and people use
that." (Id. at 32.) As to the latter, he explained that "in
gasoline marketing and in convenience store retailing,
advertising promotions are primarily used to drive traffic and
not necessarily to build a brand." (Id. at 16.)
On cross-examination, Mr. Hassman conceded that opposer
does not sell any goods bearing the "RACEWAY" mark other than
motor oil. He noted, instead, that in particular:
Raceway stores are primarily gasoline
marketers. A huge percentage of their sales
are gasoline. They have smaller convenience
stores in the inside. The expectation from a
consumer's perspective is that you wouldn't
be able to get a lot of grocery items in
there.
(Id. at 26.) Furthermore, he admitted that such stores do not
sell any air-powered tools and testified, with respect to the
other kinds of goods for which applicant seeks to register its
"RACE WAY" and design mark, as follows:
Q. Do the Raceway stores sell any
hand-held diagnostic equipment for motor
vehicles?
A. That I don't know.
Q. Do the Raceway stores sell any
toolsets?
A. Yes.
Q Could you specify what toolsets
they sell?
Opposition No. 91117623
11
A. Well, it's going to vary ... store
by store, but typically stores will carry
wrenches, screwdrivers, things that people
would expect to do minor repairs in their
cars while they are on the road.
....
Q. Do the Raceway stores sell air
hoses for pneumatic tools?
A. I don't know.
Q, Do the Raceway stores sell tool
chests or tool roll cabinets?
A. I don't know.
Q. Do the Raceway stores sell mobile
tool carts?
A. I don't know.
(Id. at 27-28.) Nonetheless, although contradicting himself in
part, on redirect examination he further testified as follows:
Q. Are you familiar with a tire
pressure gauge?
A. Yes.
Q. Do you know if those are likely to
be found in convenience stores?
A. Very, very likely to be found in
convenience stores.
Q. Would you also call that a hand-
held diagnostic equipment?
A. Yes, I would. Yes, I would.
(Id. at 34-35.)
With respect to opposer's plans for possible private
branding under its "RACEWAY" mark in the convenience store area,
Mr. Hassman testified that opposer has "not looked actively at
automobile products" and thus has "no hard plans" to private
Opposition No. 91117623
12
label any tools or automotive repair items. (Id. at 29.)
Opposer believes, instead that "the first thing" that it "should
do is in the grocery items." (Id.) Nonetheless, opposer claims
to have some long-range plans for private branding of tools and
automotive repair items since, according to Mr. Hassman, "that is
an area that in the long-term we have to get into, and when I
talk about long-term, I talk about in the next five years because
that's a natural extension ...[and] an opportunity that the
company has missed in the past." (Id.) He added, however, that:
But we haven't contacted any vendors.
We haven't costed out any things. We haven't
had any specific plans to do that yet because
we've started with the grocery plans.
(Id.)
There is essentially no information of record about
applicant, or the use of its "RACE WAY" and design mark in
connection with the goods for which registration thereof is
sought, other than the following. Mr. Hassman, while looking at
the list of goods set forth in applicant's application, offered
the observation on direct examination that such listing "looks
like a lot of automobile repair kinds of tools," including
"standard kinds of tools and then some more specialty tools, air-
powered tools, paint guns, pop riviters; then diagnostic
equipment and auto repair equipment." (Id. at 21.) He conceded
on cross-examination, however, that he knew nothing about
applicant, testifying as follows:
Q. Are you familiar at all with ETW
Corporation?
A. No.
Opposition No. 91117623
13
Q. Apart from this opposition
proceeding, do you have any knowledge of the
ETW trademark for Raceway [sic] and Design
that was shown to you in ... [an exhibit]?
A. No.
(Id. at 30.) He also conceded that the particular products which
are carried in each of opposer's convenience stores is a decision
made by the "contract operator" of the store rather than opposer,
although his knowledge of what is sold therein comes from his
having "been in Raceway stores." (Id. at 28.) Finally, Mr.
Hassman admitted that he was not aware of any incidents of actual
confusion between applicant and opposer or between their
respective marks.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, we find that opposer has not met its burden of
demonstrating that confusion as to source or sponsorship is
likely to occur. Here, the sole du Pont factor in its favor is
the similarities in the marks at issue. Specifically, we agree
with opposer that, as argued in its brief, "[t]he word portion of
Opposer's and Applicant's marks are identical in pronunciation,
meaning and appearance." Inasmuch as it is the word portion
which would be used by customers when asking for or otherwise
inquiring about the respective goods and services, see, e.g.,
Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32
USPQ2d 1192, 1197 (TTAB 1994) and In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987), and because the words
Opposition No. 91117623
14
"RACE WAY" are virtually identical to the term "RACEWAY" and form
the dominant portion of applicant's mark, the presence of a
checked flag design in applicant's "RACE WAY" and design mark
does nothing to distinguish such mark from opposer's "RACEWAY"
mark. Such marks, therefore, are essentially the same in overall
commercial impression and would be virtually indistinguishable
when opposer's "RACEWAY" mark is used in connection with a
checked flag design, which would be the case at its automobile
filling stations and convenience stores which have not yet been
"reimaged" through the use of opposer's "RACEWAY" and design
mark. Similarly, despite differences in the design features, it
is the word portions of applicant's "RACE WAY" and design mark
and opposer's "RACEWAY" and design mark which constitute the
dominant elements thereof. Coupled with the fact that the letter
"W" in opposer's "RACEWAY" and design mark is displayed in the
same larger size as the letter "R" in such mark, so as to create
in effect the two words "RACE WAY", the respective marks in their
entireties project substantially the same commercial impression.
Clearly, if applicant's "RACE WAY" and design mark and opposer's
"RACEWAY" marks were to be used in connection with the same or
related goods and/or services, confusion as to the source or
sponsorship thereof would be likely to occur.
Nevertheless, before turning to consideration of the
goods and services at issue herein, it should be pointed out that
the record does not contain evidence sufficient to establish, as
alleged in the opposition, that opposer's "mark RACEWAY is famous
throughout a great portion of the United States" with respect to
Opposition No. 91117623
15
its automobile filling station services and the convenience store
services which are often available as an adjunct thereto. As
noted by our principal reviewing court in Kenner Parker Toys Inc.
v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992), cert. denied, 506 U.S. 862, 113 S.Ct. 181
(1992), "the fifth duPont factor, fame of the prior mark, plays a
dominant role in cases featuring a famous or strong mark. Famous
or strong marks enjoy a wide latitude of legal protection." The
Federal Circuit reiterated these principles in Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000),
stating that "the fifth DuPont factor, fame of the prior mark,
when present, plays a 'dominant' role in the process of balancing
the DuPont factors," citing, inter alia, Kenner Parker Toys, 22
USPQ2d at 1456, and reaffirmed that "[f]amous marks thus enjoy a
wide latitude of legal protection."
In this case, however, while the record reveals that
opposer has used its "RACEWAY" mark continuously since 1968 and
has used its "RACEWAY" and design mark since it began the
"reimaging" of such outlets in 1999, the only sales figures
testified to were gasoline sales under its "RACEWAY" marks of
just over $240 million in 2001, representing an increase from the
previous year of about $35 million. Moreover, although the
record shows that opposer's sales have been made through about
140 stores located solely in a 12 to 13 state area consisting
principally of the southeastern United States, such facts do not
suffice to show even regional or niche fame, much less that the
"RACEWAY" marks are famous nationwide or substantially so as
Opposition No. 91117623
16
alleged by opposer. Furthermore, while the record indicates that
opposer has spent in excess of $1.5 million on the "reimaging" of
its gasoline and convenience stores to display its "RACEWAY" and
design mark, there is no indication that it has otherwise
promoted the "RACEWAY" brand. In fact, the record reveals that
opposer does not actively support such brand with an extended
amount of advertising and does not sponsor any events as part of
its current marketing strategy. Collectively, therefore, the
evidence simply does not establish that, through widespread and
substantial use and sustained advertising and promotional
efforts, opposer's "RACEWAY" marks have become famous and
synonymous with opposer's goods and services and, thus, would be
entitled to "a wide latitude of legal protection." See, e.g.,
Kenner Parker Toys Inc. v. Rose Art Industries Inc., supra at 22
USPQ2d 1456.
Considering next whether any of applicant's various
tools and other equipment are so related in a commercial sense to
opposer's motor oil and/or its automobile filling station
services and convenience store services as to be likely to cause
confusion, opposer maintains in its brief that "the parties goods
and services are highly related and will be thought to emanate
from or be sponsored by the same source." Opposer emphasizes
that applicant "seeks to register its mark to cover a number of
goods, all of which might best be described as automotive repair
tools, and which would be expected to be found at a gasoline
filling station by the general public, and by such commercial or
industrial users as truck drivers, bus drivers and commercial
Opposition No. 91117623
17
carriers." Noting, in addition, that "[c]ertain of the products
described within the Applicant's specification of goods are
identical to and fall directly within those categories of
products sold through Opposer's Raceway stations" and asserting
that "all of the goods are related to automotive care," opposer
contends that "there is sufficient overlap in the respective
goods and services as to find that this factor weighs in favor of
a finding of a likelihood of confusion." Opposer also insists
that even if such "were not so, Opposer is entitled to protection
against use of its mark on any product that would reasonably be
thought by the buying public to come from the same source, or be
thought to be affiliated with, connected with, or sponsored by
Opposer."
We observe, however, that on their face, applicant's
goods are distinctively different from opposer's goods and
services. This is the case even though certain of applicant's
goods are identified, for example, as "specialty hand-tools ...
for use in body, engine[,] brake and undercar repair," such as
"screwdrivers" and "wrenches," and "hand-held diagnostic
equipment for motor vehicles, namely, multi-meters, timing
lights, battery testers, and compression testers." In a sense,
those goods, like opposer's "motor oil," "automobile filling
station services" and such items as the screwdrivers, wrenches
and tire gauges which are available through its "convenience
store services," are at least arguably "related to automotive
care" inasmuch as such are obviously used in the maintenance of
automotive vehicles. It is well settled, however, that the mere
Opposition No. 91117623
18
fact that terminology may be found which encompasses the parties'
goods and services does not mean that customers therefor will
view the goods and services as related in the sense that they
will assume that they emanate from or are associated with or
sponsored by a common source. See, e.g., General Electric Co. v.
Graham Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977); and Harvey
Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB
1975). Simply put, the fact that in tandem opposer's "RACEWAY"
gasoline filling stations and convenience stores may on occasion
sell a screwdriver, wrench or tire gauge to motorists in addition
to their principal products of gasoline, motor oil and certain
basic grocery items like beer and snacks does not mean that
customers would regard those services and goods as being related,
in terms of sharing a common source, to applicant's "RACE WAY"
and design brand of tools and equipment or vice versa. The goods
bearing applicant's "RACE WAY" and design mark, moreover, appear
on their face to be intended for sale to and use in industrial
plants, such as factories, and commercial repair shops, including
service stations and other automotive repair facilities, and
would not even be encountered by customers for the goods and
services sold by opposer under its "RACEWAY" marks, particularly
since its automobile filling station services, as the record
reveals, are primarily "gas and go" operations which feature only
the most basic of convenience store services.
In addition, there is no showing that goods of the
kinds offered by applicant are a natural area of expansion for
opposer's goods and services or vice versa. The record, instead,
Opposition No. 91117623
19
indicates that while opposer has plans for possible private
branding under its "RACEWAY" mark of grocery items for sale in
the convenience store area, it has not actively looked at
expanding into what Mr. Hassman referred to as "automobile
products" and, consequently, has "no hard plans" to private label
any tools or automotive repair items. (Id. at 29.) Opposer's
vague claims to have some long-range plans for private branding
of tools and automotive repair items, based on Mr. Hassman's
testimony that such "is an area that in the long-term we have to
get into," is simply too speculative to demonstrate that an
expansion into those areas would be likely or that consumers
would view the respective goods and services as being related in
a commercial sense.
We find, therefore, that just because applicant's goods
and opposer's goods and services arguably may be subsumed under
the broad rubric of involving matters pertaining to "automotive
care" does not mean that such diverse products and services would
be likely to be regarded by consumers as related, in the sense of
coming from or being sponsored by or affiliated with the same
source, when marketed respectively under the substantially
identical marks at issue herein. As our principal reviewing
court has repeatedly cautioned:
We are not concerned with mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations but
with the practicalities of the commercial
world, with which the trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from
Opposition No. 91117623
20
Witco Chemical Co., Inc. v. Whitfield Chemical Co., Inc., 418
F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969). In view thereof, and
in the absence of a showing of fame for opposer's "RACEWAY"
marks, we conclude that opposer has failed to satisfy its burden
of demonstrating that confusion as to source or sponsorship is
likely to occur with respect to the contemporaneous use by
applicant of the mark "RACE WAY" and design for its various tools
and associated equipment and the use by opposer of the
substantially identical marks "RACEWAY" for "motor oil,"
"automobile filling station services" and "convenience store
services" and "RACEWAY" and design for "automobile filling
station services" and "retail convenience store services."
Decision: The opposition is dismissed.