Standard Motor Products, Inc.

Trademark Trial and Appeal Board

Jul 28, 1999

No. 75049284 (T.T.A.B. Jul. 28, 1999)

Paper No. 17
HANAK/md
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JULY 28,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Standard Motor Products, Inc.
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Serial No. 75/049,284
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I. Walton Bader for Standard Motor Products, Inc.
Janice L. McMorrow, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney)
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Before Cissel, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Standard Motor Products, Inc. seeks to register EIS
XTENDER and design in the form shown below for “repair
parts for automobile and truck brakes, namely semi-metallic
brake pads.” The octagon surrounding the letters EIS is
lined for the color red, and the word XTENDER is lined for
the color gold. The application was filed on January 26,
1996 with a claimed first use date of 1984.
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The Examining Attorney refused registration pursuant
to Section 2(d) of the Lanham Trademark Act on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark THE EXTENDER,
previously registered in the form shown below for “oil
filters for land vehicle engines.” Registration No.
1,610,512.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
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Attorney filed briefs. Applicant requested and then waived
an oral hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of the differences in the
essential characteristics of the goods and differences in
the marks.”).
Considering first the goods, both applicant’s brake
pads and registrant’s oil filters are installed on land
vehicles such as automobiles and trucks and, as applicant
concedes, travel in the same channels of trade in that
there are “stores selling both oil filters and brake
parts.” (Applicant’s reply brief page 5). Applicant
argues, without evidentiary support, that “oil filters and
brake parts are, in many cases, sold in different types of
stores. Thus, for example, oil filters are sold in
discount stores and department stores that do not sell
brake parts.” (Applicant’s reply brief pages 4-5). Even
accepting applicant’s argument that there may be some
stores which carry oil filters but not brake pads, the fact
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remains there are a substantial number of stores which
carry both oil filters and brake pads.
Moreover, the Examining Attorney has made of record a
significant amount of evidence showing that both oil
filters and brake pads are sold by numerous different
companies under the identical trademarks. Thus, a consumer
would not in any way be surprised to find the identical
trademark on a brake pad (or its packaging) and on an oil
filter (or its packaging).
Finally, we note that applicant, again without any
evidentiary support whatsoever, argues that brake pads are
“normally purchased by skilled automotive mechanics.”
(Applicant’s brief page 8). Even assuming the correctness
of this assertion, the fact remains that applicant is
implicitly conceding that brake pads are also purchased by
ordinary individuals who repair their own cars or trucks.
Moreover, there is nothing in the record to demonstrate
that skilled automotive mechanics would believe that brake
pads and oil filters bearing very similar marks would come
from different companies. Indeed, given the Examining
Attorney’s extensive evidence demonstrating that the same
companies market both brake pads and oil filters under the
identical trademarks, it is much more likely that even
skilled automotive mechanics would believe that brake pads
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and oil filters bearing very similar marks would come from
the same source.
In short, we find that brake pads and oil filters for
automobiles and trucks are fairly closely related goods
which travel, at least in part, in the same trade channels
and which are purchased, at least in part, by ordinary
individuals who do their own work on their automobiles and
trucks. Moreover, we find that it is not at all uncommon
for manufacturers to produce both brake pads and oil
filters and to affix the identical trademarks to them.
Turning to a consideration of the marks, it need
hardly be said that the two marks must be compared in their
entireties. However, in making this comparison, it is not
inappropriate to give more weight to particular elements of
each of the marks if those elements are more prominent. In
considering registrant’s mark THE EXTENDER, it is readily
apparent that the word EXTENDER appears in lettering which
is much larger than the lettering used for the word THE.
Moreover, the word “the” is a very weak source identifier.
In an effort to distinguish its mark from the
registered mark, applicant makes much of the fact that the
mark it seeks to register includes its house mark EIS.
(Applicant’s brief page 4). What applicant fails to
recognize is that as a general rule, an applicant cannot
Ser No. 75/049,284
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justify the “use of another’s mark simply by tacking its
own house mark or trade name” on to the other mark. See 3
J. McCarthy, McCarthy on Trademarks and Unfair Competition
Section 23:43 at page 23-94 (4th ed. 1999) and cases cited
therein. This is particularly true when the house mark
appears in a very subordinate fashion, as do the letters
EIS in applicant’s mark. Obviously, as noted, the letters
in the word XTENDER in applicant’s mark are far larger than
are the letters in the EIS portion.
In short, while we are comparing applicant’s mark and
registrant’s mark in their entireties, we find that by far
the most prominent portion of applicant’s mark is the word
XTENDER and that by far the most prominent portion of the
registered mark is the virtually identical word EXTENDER.
Obviously, these two words are phonetically identical. A
potential purchaser calling an auto supply store and
requesting EXTENDER or XTENDER oil filters or brake pads
would pronounce both words in the identical manner, and the
receiver of the call would have no way of distinguishing
these two words when they are spoken.
Moreover, in terms of connotation both words are
identical in that, they suggest that the products (brake
pads and oil filters) extend the useful life of the
automobile or truck.
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We note that applicant has made of record six third-
party registrations wherein the word EXTEND appears. There
are two problems with these third-party registrations.
First, none of the registrations cover automotive or truck
parts, or any goods related thereto. Century 21 Real
Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992). Second, with one exception, the third-
party registrations do not include variations of the word
EXTENDER. Rather, the marks involved are as follows:
EXTENDED LIFE; EXTEND-A-PHONE; EXTEND-A-CELL; EXTEND-A-LINE
and EXTEND. The sixth mark, EXTENDOR, is registered for
disposable pipette tip extenders.
Thus, applicant has totally failed to prove that in
the automotive and truck parts field, the mark THE EXTENDER
is in any way a weak mark entitled to a lesser scope of
protection.
Given the fact that applicant’s mark and registrant’s
mark are essentially identical in terms of pronunciation
and connotation and that they are at least somewhat similar
in terms of visual appearance, we find that their use on
fairly closely related goods (i.e. automobile and truck
replacement parts) is likely to result in confusion. In
stating that these two marks are virtually identical in
terms of their pronunciation, we believe that consumers
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would hardly even notice the letters EIS in applicant’s
mark given their extremely small size and given the
additional fact that these letters are within in a hexagon.
Moreover, to the extent that consumers would notice these
extremely small letters EIS, we believe that many consumers
would nevertheless pronounce applicant’s mark as simply
XTENDER.
As for the fact that two marks are at least somewhat
similar in visual appearance, we note that at pages 4 and 6
of its brief and at page 3 of its reply brief, applicant
points out that its mark is lined for the colors red and
gold or red and yellow. Applicant then points out that
registrant’s mark is not lined for color. However, what
applicant fails to note is that this simply means that
registrant’s mark is not limited to any particular colors.
See In re Data Packaging Corp., 453 F.2d 1300, 172 USPQ 396
(CCPA 1972). In Data Packaging, the Court held that both
registered word marks not depicted in special form as well
as those registered in a particular design format are “not
limited to a particular color, unless lined for color.”
Data Packaging, 172 USPQ at 397. While we would not base
our likelihood of confusion analysis upon the assumption
that registrant does or could depict its mark such that the
word THE appears in the identical shade of red as does the
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hexagon in applicant’s mark and that the word EXTENDER
appears in the identical shade of gold or yellow as does
the word XTENDER in applicant’s mark, by the same token, by
its registration, registrant has gained the rights to
depict its mark in all colors including yellow or gold.
Thus, we find that in terms of visual appearance, the two
marks are at least somewhat similar.
Decision: The refusal to register is affirmed.
R. F. Cissel
E. W. Hanak
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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