Standard Motor Products, Inc.

Trademark Trial and Appeal Board

Oct 5, 1999

No. 74566982 (T.T.A.B. Oct. 5, 1999)

Paper No. 16
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 5, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Standard Motor Products, Inc.
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Serial No. 74/566,932
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Paul M. Denk of for Standard Motor Products, Inc.
Michael C. Mason, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Cissel, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Standard Motor Products, Inc., a New York corporation, has
filed an application for registration of the mark shown below:
At the time of this appeal, there were eighteen separate
classes of goods in the application, as follows:
“Rosin core soldering chemicals and deicing
preparations for automobile locks” in
International Class 1;
“Pumice hand soap” in International Class 3;
Ser. No. 74/566,932
2
“Graphite lubricant, automobile lithium grease,
automobile lubricants in stick form, small
container oiler, propane torch including propane
vessel and torch tip, and propane fuel sold in
cylinders” in International Class 4;
“Air freshener, first aid kit for domestic or
other non-professional use” in International
Class 5;
“Metal hardware, namely, booster springs, clips,
cotter pins, couplers, coupling disc, grease
fittings, grommet, screws, hooks, peg hooks,
rivets, locks, padlocks, drain cock, vacuum
connector, tees and fastener; metal taps and
dies; baskets of common metals, metal gas cans
sold empty, metal containers for beverages,
draincock” in International Class 6;
“Throttle return springs, automotive plugs, power
operated barrel pumps, power operated brake pump,
machine parts, namely, bushings, air guns for
discharging air under pressure, carburetor parts,
namely, valves and fasteners, power operated
grinding wheels, water valves for machines,
throttle return springs, automotive spark plugs,
vehicle engine drain plugs, components of a power
operated weed trimmer, namely, weed cutter lines,
machine parts, namely, cut-off wheels, land motor
vehicle exhaust system components, namely,
exhaust pipe extensions, mufflers, scavenger
exhaust pipes, chrome air cleaner for automobile
engines, automobile cable, land motor vehicle
engine parts, namely, carburetor hoses, metal
gasket nuts, automobile hand choke kits
consisting primarily of cable and mounting
fasteners for manually operating chokes” in
International Class 7;
“Manually operated automotive servicing tools,
namely, bottle jack, chain saw file, cobalt
drills, cylinder head rethreader kit consisting
primarily of a tap and fitting for rethreading of
bolt holes in cylinder head, drills, gear
pullers, grease guns, hacksaws, hammer handle,
hand scrapers, ignition files, riveters, brake
bleeders, tire buffers, triangular file, utility
Ser. No. 74/566,932
3
knives, wrenches, hand held propane cutting torch
kit consisting primarily of a canister of propane
and a cutting torch tip, metal bench vises, hand
tools, namely, choke repair kits consisting
primarily of butterfly valve and mounting
fasteners, clutch pivot tools, namely, scrapers
and scrapers with a snow brush” in International
Class 8;
“Air line pressure gauges, ammeter gauges,
antennas, antifreeze testers comprising a tube
with float for testing specific gravity of
antifreeze, automotive gas gauges, battery
tester, CB antennas, electric cigarette lighters
for land vehicles, compasses, electrical four-
pole connectors, digital v/o meters, electric
soldering irons, feeler gauges, fire
extinguishers, safety goggles, hard hats,
electrical plugs with threaded sockets for
emergency lighting, measuring tape, tester for
testing electrical circuits, pressure regulators,
signal bells, speaker kit consisting primarily of
speaker and mounting hardware, speedometer,
tachometers, timing light, tire gauges, light
signal for indicating vehicle problems, universal
speedometer electrical cable” in International
Class 9;
“Safety flares, automobile headlights, automotive
tail lamp, electric drop light, vehicle defroster
fans, two-speed electric fan, vehicle headlights,
vehicle fog lights, electric light bulbs, water
coolers” in International Class 11;
“Automotive body clip, automotive spindle nut,
automotive trim fasteners, battery brackets,
automobile door lock knob, radiator hose clamps,
and radiator hose couplers; automobile parts,
namely, leaf booster spring, locking lug nut, lug
nuts, nipples, nuts and bolts, O-rings, peg
hooks, rivets, snap caps, snap rings, shock
absorber bottle, leaf springs, strut nut, strut
nut/washer, U-bolt, door handle, axle shift
motors for land motor vehicles, automobile brake
pedal pads, automobile clutch pedal pads, land
motor vehicle drive belts, vehicle hitch ball,
master cylinder cap gasket, land motor vehicle
Ser. No. 74/566,932
4
engine parts, namely, spark plug non-foulers,
automobile horns, automobile top post battery
protector, automobile battery brackets, land
motor vehicle parts, namely, automotive body trim
pieces, automotive drum brake bar, automotive
steel trap kit consisting primarily of spool of
steel tape with apertures, brake line tube
unions, adapters, brake lines, fitted car covers,
wheeled carts, namely, creepers, C-V quick boot,
dust caps for mounting over tire bolts, hand
trucks, horn plate buttons, license plate
buttons, license plate protective shield, push-
pull brake cable, rear view mirrors, seat belt,
seat cushions, shift knobs, splash guards, spring
stabilizers, throttle cables, tire boots, vehicle
tire pumps, tire repair kits consisting primarily
of plug means and plug cord with adhesive for
repairing punctured tire, tire valves,
transmission coolers, turn signal cams, wheels,
wheel grips, wheel weights, window vents, vehicle
coolant kit consisting primarily of overflow
tanks, license plate holders, vehicle window
crank, vehicle fuel line hoses, vehicle radiator
bug screen, vehicle rear view mirror, vehicle
side mirror, vehicle vanity mirror, vehicle
defroster hoses, heater hoses, metal license
plate frames, land vehicle parts, namely,
hydraulic automotive lift support for hatchback
doors” in International Class 12;
“Paint brushes” in International Class 16;
“Air duct hoses, air line hoses, asbestos-free
gasket material in sheets for use in forming
automotive gaskets, rubber patches hose menders,
pickup truck cap tape, red lens repair tape,
automotive reflector tape, vehicle defroster
system hoses, electrical friction tapes, gasket
cork material in sheets for use in forming
gaskets, non-metal gaskets for application to
vehicle, plastic adhesive tape” in International
Class 17;
“Radiator bug screen” in International Class 19;
“Cabinets, clothes hanger bar including bar and
end fasteners for mounting interiorly of the
Ser. No. 74/566,932
5
vehicle, display racks, non-metal license plate
frames” in International Class 20;
“Battery terminal brushes, brooms, buckets,
vehicle cleaning cloths, vehicle cleaning
brushes, funnels, non-metal gas cans sold empty,
plastic nozzles for metal gas cans, mops, plastic
pitchers for beverages, polishing bonnets for
fitting on polishers, polishing mitts, sponges
for household purposes, squeegee sponge with
scrubber, steel wool for cleaning, wiping and
polishing cloths and discs, pistol grip plastic
spray nozzle” in International Class 21;
“Non-metal strapping or tie downs, rope, cotton
tarpaulins for use as drop cloth” in
International Class 22;
“Gloves” in International Class 25; and
“Vehicle floor mats, truck floor mats, and van
floor mats” in International Class 27.1
The Trademark Examining Attorney issued a final refusal to
register based upon Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant's mark, when used on the
automotive parts, accessories and equipment listed above, so
resembles the registered mark, “CHAMP,” as applied to “oil
filter cartridges,”2 and as applied to “air, oil, and fuel
filters and components,”3 as to be likely to cause confusion, or

1 Serial No. 74/566,982, filed August 29, 1994, alleging use in
commerce in connection with all the goods recited above since February
1990.
2 Registration No. 808,484, issued on May 17, 1966. The
registration sets forth dates of first use of 1948; renewed.
3 Registration No. 963,571, issued on July 10, 1973. The
registration sets forth dates of first use of 1948; renewed.
Ser. No. 74/566,932
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to cause mistake, or to deceive. Both of the cited
registrations are owned by Champion Laboratories, Inc.
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an oral
hearing.
Applicant contends that the marks are significantly
different; that applicant does not sell air, oil, and fuel
filters, so there is no overlap in the goods; that the trademark
register demonstrates that the mark “CHAMP” is “popular” because
it has been registered by third parties for many different goods
and services, including goods in the automotive field; that
applicant markets its goods primarily through wholesale
channels; that in fifty years of contemporaneous use by
applicant4 and registrant, there have been no cases of actual
confusion; that purchasers of applicant’s goods, namely
automotive parts retailers, are sophisticated; that registrant
has a narrow “product mark” while, for applicant, the mark is a
“house mark”; and that applicant has accumulated a substantial
amount of goodwill during the past sixty years of using this

4 Applicant has changed its mark a number of times during this
period, but the mark has always had as a primary component the word
“CHAMP.” This particular, stylized variation on the mark was
introduced in 1990.
Ser. No. 74/566,932
7
mark in the field of automotive parts, accessories and
equipment.5
By contrast, the Trademark Examining Attorney takes that
position that the marks are identical, the goods are closely
related, the channels of trade are the same, the claims of an
absence of actual confusion are unsupported and are largely
irrelevant, and that the goods are impulse items bought without
a great deal of care by ordinary purchasers.
In the course of rendering this decision, we have followed
the guidance of In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973). This case sets
forth all the factors that should be considered, if relevant, in
determining likelihood of confusion.
Turning to the marks, we agree with the Trademark Examining
Attorney that these marks are substantially, if not virtually,
identical as to sound, appearance, and overall commercial
impression. While applicant argues that the stylization of the
letter “C” and the slight incline in all the letters is
“significant,” thereby making the marks “reasonably distinct,”
we find the de minimis stylization involved in applicant’s mark
to be legally insignificant when comparing these two marks.
Since the cited registrations show the mark in typed form, this

5 Ibid.
Ser. No. 74/566,932
8
means that registrant’s mark is not limited to any particular
format, and could be used in a similar stylization.
Applicant argues that the cited mark is weak because of a
variety of third-party registrations for “CHAMP” and “CHAMPION”
covering many different classes of goods and services, and that
therefore the cited registrations should be accorded a narrow
scope of protection. Applicant bases this argument on a 1997
listing from the Trademark Register and soft copies of the
third-party registrations that are attached to applicant’s
appeal brief. Given this timing, applicant failed to comply
with the established rule that the evidentiary record in an
application must be complete prior to the filing of the notice
of appeal.6 Accordingly, we have not considered the
registrations set forth in this attachment.7

6 See, 37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994).
7 In order to make third-party registrations properly of record,
soft copies of the registrations or photocopies of the appropriate
U.S. Patent and Trademark Office electronic printouts must be
submitted (and according to 37 CFR 2.142(d), this must be done prior
to the time of the appeal). See Weyerhaeuser Co. v. Katz, 24 USPQ2d
1230 (TTAB 1992).
Even if we were to consider the third-party registrations tardily
proffered by applicant, it would not alter our decision herein.
Certainly, many of the third-party marks pointed to by applicant are
for goods in totally unrelated fields and hence are irrelevant to
applicant’s contention that the word “CHAMP” is weak in the field of
automotive parts, accessories and equipment. Third party
registrations are least troublesome when the other marks cover
unrelated products.
Furthermore, even properly adduced evidence of subsisting
registrations covering related goods is entitled to little weight,
because this is not evidence of what happens in the market place.
Ser. No. 74/566,932
9
We also concur with the Trademark Examining Attorney’s
conclusions that neither the application nor the registrations
are in any way restricted as to channels of trade or classes of
purchasers for the respective goods. It is therefore presumed
that the goods identified in the application and cited
registrations encompass all goods of the type described, that
the goods move in all normal channels of trade, and that the
goods are available to all potential customers of such products.
In re Elbaum, 211 USPQ 639 (TTAB 1981). We have no proof that
buying such goods involves a deliberative process or that a
great deal of care and discrimination would usually be exercised
by purchasers in making the decision to buy these parts and
accessories. The primary purchasers of applicant's and
registrant's automotive parts must be deemed to be members of
the general public, who are simply looking for the right
automotive part. Thus, the Trademark Examining Attorney
contends that purchasers of the array of automotive parts and
accessories set forth in the application also would encounter

These registrations do not prove that the marks are actually used by
third parties, that they are well promoted, or that they are
recognized by consumers exposed to them. See Fort Howard Paper Co. v.
Kimberly-Clark Corp., 221 USPQ 732 (TTAB 1984) and In re Hub
Distributing Inc., 218 USPQ 284 (TTAB 1983).
These registrations would demonstrate, at best, the fact that
other manufacturers and merchants have also selected the words “CHAMP”
or “CHAMPION” for marks because these terms are arguably suggestive in
some way of goods and/or services as being competitive or superior.
Ser. No. 74/566,932
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oil filters, air filters and fuel filters in the same retail
locations.
Applicant argues the significance of the absence of any
actual confusion in spite of both parties having used some form
of “CHAMP” in trademarks since at least 1948. However,
applicant has submitted no evidence that the marks have ever
been used contemporaneously on automotive parts in the same
geographical area or evidence of the extent of actual market
overlap of the respective products. In other words, there is no
evidence of record with respect to the opportunity for confusion
to have arisen. Furthermore, during most of this period,
applicant’s earlier variations of the “CHAMP” mark included a
variety of additional words and design features.
The Trademark Examining Attorney argues that the
contemporaneous use of the same word “CHAMP” in connection with
applicant's automotive parts and accessories and the
registrant's automotive filters would be likely to cause
confusion because the goods are highly related automotive items
that are used together. This relationship does not hinge upon
any per se rule that all automotive parts are related. Rather,
citing a variety of cases from this Board and our principal
reviewing Court, the Trademark Examining Attorney contends that
likelihood of confusion exists when different parties use the
same marks on different types of automotive parts and
Ser. No. 74/566,932
11
accessories. The fact that the goods of the parties may involve
different types of automotive items is not controlling in
determining likelihood of confusion. The issue is not
likelihood of confusion between particular goods, but likelihood
of confusion as to the source of those goods. See In re Rexel
Inc., 223 USPQ 830, 831 (TTAB 1984), and cases cited therein.
The logic for concluding that these goods are related is
based upon the fact that the goods in question are all
automotive parts, automotive accessories, or automotive
equipment that could be purchased through the same channels of
trade, including dealers, service stations, automotive accessory
and supply stores, or the automotive departments of general
merchandisers, by the same classes of purchasers, such as
mechanics, dealers, and motorists. In re Jeep Corp., 222 USPQ
333, 334 (TTAB 1984).
Accordingly, based upon the entire record herein, we
conclude that this important du Pont factor also favors the
position of the Trademark Examining Attorney, but only as to
those classes of goods within this application which, like
registrant’s goods, relate to automotive parts, automotive
accessories or automotive equipment. Accordingly, we find that
a likelihood of confusion exists as to the goods listed in
International Classes 1, 4, 6, 7, 8, 9, 11, 12, 17, 19, 20, 21,
and 27 of the application. We find that a likelihood of
Ser. No. 74/566,932
12
confusion does not exist as to the goods in International
Classes 3,8 5,9 16,10 2211 and 2512 of the application.
Decision: We affirm the refusal to register in part, and
reverse in part. Accordingly, applicant’s mark will be
published for opposition only as to the goods listed in
International Classes 3, 5, 16, 22 and 25 of the application.
R. F. Cissel
G. D. Hohein
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board

8 “Pumice hand soap” in International Class 3.
9 “Air freshener, first aid kit for domestic or other non-
professional use” in International Class 5.
10 “Paint brushes” in International Class 16.
11 “Non-metal strapping or tie downs, rope, cotton tarpaulins for
use as drop cloth” in International Class 22.
12 “Gloves” in International Class 25.