Service Station Products Co.v.C. A. McCourt and Associates

Trademark Trial and Appeal Board

Oct 28, 1999

No. 91108979 (T.T.A.B. Oct. 28, 1999)

Paper No. 15
cmb
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Service Station Products Company
v.
C.A. McCourt and Associates
_____
Opposition No. 108,979
to application Serial No. 75/232,479
filed on January 28, 1997
_____
Edward D. Lanquist, Jr. of Waddey & Patterson for Service
Station Products Company.
Mark A. Watkins of Oldham & Oldham Co., L.P.A. for C.A.
McCourt and Associates
______
Before Cissel, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed an intent-to-use application
seeking registration of the mark WHEEL GUARD for goods
identified as “tire changing machines.”1 Opposer has
opposed registration, alleging in its notice of opposition

1 Serial No. 75/232,479, filed January 28, 1997. Applicant has
disclaimed the exclusive right to use WHEEL apart from the mark
as shown.
Opposition No. 108,979
2
that applicant’s mark, as applied to applicant’s goods, so
resembles opposer’s previously-used and registered mark
ALLOY WHEEL GUARDIAN for “balance weights for vehicle
wheels”2 as to be likely to cause confusion, to cause
mistake, or to deceive. Applicant has filed an answer by
which it denies the allegations of the notice of opposition
which are essential to opposer’s claim.
Opposer and applicant have filed briefs on the case,
and opposer has filed a reply brief. No oral hearing was
requested.
The record in this case includes certain documents
submitted by opposer under notice of reliance, and the
parties’ stipulation of facts. The relevant documents and
stipulated facts shall be discussed below.
Opposer’s priority is not in dispute. The parties have
stipulated that opposer is the owner of its pleaded
Registration No. 1,845,548, that opposer has used its mark
in connection with wheel weights since July 19, 1994, and
that applicant has used its mark in connection with tire
changing machines since February 18, 1997. (Stipulation,
Paragraphs 3-5.) Accordingly, we turn to the question of
likelihood of confusion.

2 Registration No. 1,845,548, issued July 19, 1994. April 19,
1993 is alleged in the registration as the date of first use of
the mark anywhere and first use of the mark in commerce. ALLOY
WHEEL has been disclaimed apart from the mark as shown.
Opposition No. 108,979
3
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). In any likelihood
of confusion 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, 29 (CCPA
1976).
With respect to the marks, we find that applicant’s
mark WHEEL GUARD and opposer’s mark ALLOY WHEEL GUARDIAN are
very similar in terms of appearance, sound, connotation and
overall commercial impression. Applicant’s mark differs
from opposer’s mark only in that applicant uses the word
GUARD rather than GUARDIAN and has omitted the descriptive
term ALLOY. The words GUARD and GUARDIAN, as used in the
respective marks and as applied to the respective goods, are
essentially identical in terms of connotation. Applicant’s
arguments to the contrary are not persuasive. GUARD and
GUARDIAN might be viewed as being somewhat suggestive as
applied to the goods involved in this case, but they suggest
essentially the same thing. Moreover, there is no evidence

Opposition No. 108,979
4
that GUARD and GUARDIAN are used by any third party in
connection with these types of products.
Nor are we persuaded by applicant’s argument that the
marks are distinguishable because opposer’s mark connotes
that opposer’s product is to be used only in connection with
alloy wheels, while applicant’s mark connotes no such
limitation as to the type of wheels with which applicant’s
product might be used. On the contrary, “alloy wheel” is a
species of, and encompassed within, the word “wheel,” and
the connotation of ALLOY WHEEL in applicant’s mark is
likewise encompassed within the connotation of WHEEL in
opposer’s mark. In any event, this inconsequential
difference in the disclaimed descriptive portions of the
respective marks does not suffice to distinguish the marks
in terms of their overall commercial impressions.
In short, each of the marks consists of a disclaimed
descriptive term, i.e., WHEEL or ALLOY WHEEL, and the word
GUARD or its variant, GUARDIAN. Viewed in their entireties,
the marks are very similar.
We also find that the parties’ respective goods are
sufficiently related that the parties’ use of their
respective marks thereon is likely to result in confusion.
It is well settled that goods need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods are
Opposition No. 108,979
5
related in some manner or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producers or that there is an
association between the producers of the goods or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Wheel weights and tire changing machines, while not
identical or even competitive products, nonetheless are
closely related products which are used together, by the
same purchasers, in the process of installing and balancing
tires on vehicles. The parties have stipulated that their
respective products are sold in the same trade channels and
to the same purchasers, i.e., service stations and tire
centers. (Stipulation, Paragraphs 1 and 2.) Furthermore,
purchasers are likely to assume that wheel weights and tire
changing machines might originate from a single
manufacturer. Indeed, opposer itself manufactures and sells
both types of products. (Exhibit 3 to Opposer’s notice of
reliance (brochure 000025-32); Stipulation, Paragraph 10.)
In short, the parties’ respective goods are sold in the
same trade channels to the same purchasers, who use them as
Opposition No. 108,979
6
complementary products and who are likely to be aware that
both types of products can originate from a single
manufacturer. In view thereof, we find that the parties’
goods are sufficiently closely related in the marketplace
that confusion is likely to result from the use thereon of
similar marks such as those involved in this case.
Applicant also argues that the service stations and
tire centers which purchase applicant’s and opposer’s goods
are careful and sophisticated purchasers, especially with
respect to applicant’s tire changing machines, which cost in
excess of $2500.00. However, we are not persuaded on this
record that these purchasers necessarily would be immune to
source confusion when faced with the contemporaneous use, on
these closely related goods, of the confusingly similar
marks involved in this case. See Refreshment Machinery
Incorporated v. Reed Industries, Inc., 196 USPQ 840, 843
(TTAB 1977). This is especially so in view of the fact
that, as discussed above, these purchasers are likely to be
aware that both of these types of products may originate
from a single manufacturer.
Finally, applicant argues that neither opposer nor
applicant is aware of any instances of actual confusion
having occurred during the two years in which the parties
have used their marks contemporaneously. Applicant suggests
that this absence of actual confusion is entitled to
Opposition No. 108,979
7
significant weight in this case, in view of the fact that
opposer, by its own account, is the largest full-line wheel-
service equipment manufacturer in North America. We are not
persuaded. Applicant’s application is based on intent-to-
use. The parties have stipulated that applicant has been
using its mark on its goods since February 18, 1997, but the
record is silent as to the extent of such use. Because we
have no evidence as to the extent of applicant’s sales and
advertising, we cannot conclude that any meaningful
opportunity for actual confusion has existed, nor do we
accord any significant weight to the absence of evidence of
actual confusion in such circumstances. See Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Having carefully considered all of the evidence of
record pertaining to the relevant du Pont evidentiary
factors, we conclude that a likelihood of confusion exists.
In view thereof, and because priority rests with opposer, we
find that registration of applicant’s mark is barred by
Trademark Act Section 2(d).
Decision: The opposition is sustained, and
registration to applicant is refused.
R. F. Cissel
D. E. Bucher
Opposition No. 108,979
8
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board