Texaco Inc.v.Texlon Corp.

Trademark Trial and Appeal Board

Jul 30, 1999

No. 91092897 (T.T.A.B. Jul. 30, 1999)

Paper No. 31
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 30, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Texaco Inc.
v.
Texlon Corporation
_____
Opposition No. 92,897
to application Serial No. 74/262,159
filed on April 3, 1992
_____
William G. Pecau of Pennie & Edmonds for Texaco Inc.
Texlon, Inc., pro se.
______
Before Seeherman, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Texaco Inc. has opposed the application of Texlon,
Inc.1 to register TEXLON as a trademark for "oil based motor

1 In its "informal" answer and its formal answer applicant
referred to itself as both Texlon, Inc. and Texlon Corporation.
Noting this discrepancy, the Board contacted by telephone A. C.
Galvin, the officer of applicant who signed the original paper,
who stated that the correct name of applicant is Texlon
Corporation. The Board thereupon allowed applicant 20 days in
which to submit a written request to correct the mistake in its
Opposition No. 92,897
2
oil additive for improving the performance of motor vehicles
for retail sale to the general public."2 As grounds for
opposition opposer has alleged that it and its predecessor
have been engaged in all phases of the oil and gas industry;
that since prior to applicant’s claimed date of first use in
November 1991, opposer and its predecessor have conducted
business under the trade name TEXACO; that its company name,
TEXACO, is famous; that since 1903 opposer has used the mark
TEXACO for various petroleum products, including automotive
oils and greases; that since prior to November 1991 opposer
has used various marks beginning with the prefix TEX,
including TEXLUBE, TEXLITE, TEXGOLD and TEXLIN, for
petroleum based products, and that the public regards these
marks as being part of a family of marks belonging to
opposer; that opposer owns registrations for TEXACO and its
other TEX-prefix marks; and that applicant’s mark so
resembles opposer’s marks TEXACO and its TEX-prefix family
of marks that, when it is applied to applicant’s identified
goods, it is likely to cause confusion or mistake or to
deceive.

corporate name. No such request was ever filed; accordingly,
Office records continue to reflect applicant’s name as Texlon,
Inc.
2 Application Serial No. 74/262,159, filed April 3, 1992 and
asserting first use and first use in commerce in November 1991.
Opposition No. 92,897
3
In its answer applicant admitted "that Texaco is a
major energy corporation" and essentially denied the
remaining allegations in the notice of opposition.
The record includes the pleadings; the file of the
opposed application; and the testimony, with exhibits, of
opposer’s four witnesses. Opposer has also submitted, under
a notice of reliance, applicant’s responses to certain of
opposer’s interrogatories and requests for admission, and
certified status and title copies of its registrations for
the following marks and goods and/or services:3
TEXACO
Petroleum products,
comprising fuel-oils, gas-
oils, illuminating-oils,
lubricating-oils, and
asphalt-oils4 and for gas
station services5

3 Applicant also made of record Registration No. 1,651,153 for
TEXLIN, but Office records show that this registration was
cancelled in 1998 for failure to file a Section 8 affidavit.
Similarly, Office records show that Registration No. 1,015,093
for TEXANDO has expired. Another registration made of record by
opposer, No. 124,602 for TEXACO with a star design for oils and
greases, was due for renewal on February 25, 1999. At this point
Office records do not reflect that a renewal application has been
filed, but neither do they indicate that the registration has
expired. The existence of this registration would not make a
difference in our decision herein; therefore, in order to avoid
any question about our decision should it transpire that a
timely, acceptable application for renewal was not filed, we have
chosen not to discuss this registration, and do not base our
decision on it.
4 Registration No. 57,902, issued December 4, 1906; Section 8
affidavit accepted; Section 15 affidavit received; renewed four
times.
5 Registration No. 704,947, issued August 24, 1965; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Opposition No. 92,897
4
TEXLUBE Petroleum products--viz.,
lubricating-oils6
TEXLITE Kerosene-oil7
TEXGOLD Soluble oil8
TEXAMATIC
Lubricating and hydraulic
oils intended for use in
hydraulic transmissions of
automotive vehicles9
TEXCHEK
Testing of lubricant samples
for preventive maintenance of
engines10
TEXCHEK PLUS Testing of lubricant samples
for preventive maintenance of
engines11
TEXNAP Processing oils12

6 Registration No. 128,185, issued December 23, 1919; renewed
three times.
7 Registration No. 129,404, issued February 17, 1920; renewed
three times.
8 Registration No. 933,473, issued May 9, 1972; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
9 Registration No. 483,623, issued May 4, 1948; Section 8
affidavit accepted; Section 15 affidavit received; renewed twice.
10 Registration No. 927,947, issued January 25, 1972; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
11 Registration No. 1,322,745, issued February 26, 1985; Section
8 affidavit accepted; Section 15 affidavit received.
12 Registration No. 926,388, issued January 4, 1972; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Opposition No. 92,897
5
TEXOL Petroleum products--viz.,
lubricating-oils13
TEXCLAD Lubricants, particularly for
use with earth moving
machinery14
(with the representation of
the star disclaimed)
Lubricating oils15
Petroleum, asphalt oils,
cutting oils, cylinder oils,
gas oils, gasoline,
lubricating greases,
kerosene, naphtha,
illuminating oils,
lubricating oils, road oils,
and paraffin16
Gas station services17

13 Registration No. 128,186, issued December 23, 1919; Section 8
affidavit accepted; Section 15 affidavit received; renewed three
times.
14 Registration No. 792,826, issued July 20, 1965; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
15 Registration No. 76,131, issued December 14, 1909; renewed
four times.
16 Registration No. 150,620, issued January 3, 1922; Section 8
affidavit accepted; Section 15 affidavit received; renewed three
times.
17 Registration No. 794,948, issued August 24, 1965; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Opposition No. 92,897
6
Gasoline18 and gas station
services19
Gasoline20 and gas station
services21
Applicant did not make any evidence of record.
Opposer and applicant filed briefs on the case; an oral
hearing was not requested.
Priority is not in issue in view of opposer’s
registrations, which are of record. See King Candy Company
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Moreover, the evidence shows that opposer has
used such marks as TEXACO, the TEXACO and star logo,
TEXAMATIC, TEXCHEK, TEXGOLD, TEXPAR, TEXNAP since long prior
to applicant’s use of TEXLON in 1991.

18 Registration No. 1,222,305, issued January 4, 1983; Section 8
affidavit accepted; Section 15 affidavit received.
19 Registration No. 1,315,019, issued January 15, 1985; Section 8
affidavit accepted, Section 15 affidavit received.
20 Registration No. 1,222,306, issued January 4, 1983; Section 8
affidavit accepted; Section 15 affidavit received.
21 Registration No. 1,315,020, issued January 15, 1985; Section 8
affidavit accepted; Section 15 affidavit received.
Opposition No. 92,897
7
Turning to the issue of likelihood of confusion, we
first note that, although opposer has asserted in its
pleading and argued in its brief that it has a family of
TEX-prefix marks, the evidence of record does not support
this conclusion. Although opposer does have registrations
for and uses various marks beginning with the letters TEX,
it is well settled that the mere ownership of a number of
marks showing a common feature is insufficient to establish
a claim of ownership of a family of marks characterized by
the feature in the absence of evidence that the various
marks said to constitute the family were used and promoted
together in such a manner as to create among purchasers an
association of common ownership based upon the family
characteristic. See Hester Industries Inc. v. Tyson Foods
Inc., 2 USPQ2d 1646 (TTAB 1987). The promotional materials
submitted by opposer are insufficient to demonstrate that
the general public would regard the TEX-prefix as the
surname of a family of marks owned by opposer. Compare, J&J
Snack Foods, Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889 (Fed. Cir. 1991).
Secondly, we note that although throughout its brief
opposer has referred to its motor oil as TEXACO HAVOLINE, in
fact the trademark TEXACO does not appear on the labels for
this motor oil, and apparently has not since at least 1987.

Opposition No. 92,897
8
In determining the issue of likelihood of confusion we
have considered all the duPont factors for which there is
evidence in the record. With respect to the goods,
applicant’s goods are identified as "oil based motor oil
additive for improving the performance of motor vehicles for
retail sale to the general public." Opposer has registered
and used marks consisting of or containing the term TEXACO
for a variety of petroleum products and related services,
including TEXACO for gas-oils, lubricating oils and gas
station services; TEXACO logos, consisting of the word
TEXACO with a T-with-Star design, for gasoline and
lubricating oils and gas station services; TEXLUBE and TEXOL
for lubricating oils; and TEXCHECK and TEXCHEK PLUS for
testing of lubricant samples for preventive maintenance of
engines. The lubricating oils identified in opposer’s
various registrations would encompass motor oils, and by
their very nature are closely related to oil-based motor oil
additives such as that identified in applicant’s
application. Further, there is a close relationship between
the various petroleum products opposer sells, such as
gasoline and anti-freeze, and a motor oil additive. All of
these products are petroleum based, and all are used in
motor vehicles to improve or aid the performance of the
vehicle engine. Similarly, gas station services are related
to motor oil additives, in that gas stations provide various
Opposition No. 92,897
9
petroleum-based products for use in motor vehicles,
including motor oil additives. Applicant’s motor oil
additive could not only be sold to the same customers who
purchase opposer’s various petroleum products or who use
opposer’s gasoline station services but, because many of the
gasoline stations selling opposer’s TEXACO gasoline are
independently owned, applicant’s motor additives could even
be sold at TEXACO service stations.22
We also note that for many years opposer has produced a
motor oil. Although this product currently bears the
product mark HAVOLINE, it also features opposer’s logo of a
T-within-a-star. Opposer has produced a market research
survey showing that in an "unaided awareness study", i.e.,
showing the logo without any information about the company,
92% of the people interviewed associated this logo with
opposer. In addition, opposer frequently promotes its
HAVOLINE motor oil in conjunction with references to its
TEXACO trademark or trade name. This study, combined with
opposer’s long use of the trademark HAVOLINE, and
significant sales and promotion of this motor oil, indicate
a public awareness that motor oil emanates from opposer, and
is further evidence of the related nature of motor oil
additives with gasoline and gasoline station services.

22 Although normally the Board will not find likelihood of
confusion if the opposer were creating the situation which would
Opposition No. 92,897
10
With respect to the marks, applicant’s mark TEXLON and
opposer’s marks TEXACO, TEXLUBE and TEXOL are similar, in
that all begin with the letters TEX. Moreover, the second
syllables in opposer’s TEXLUBE and TEXOL marks are
suggestive of the goods for which they are used--LUBE for
lubricating oils, and OL for oil, while the second syllable
of applicant’s mark, LON, is suggestive of a major
ingredient of applicant’s motor oil additive, which is
commonly sold under the trademark TEFLON. Because opposer’s
marks and applicant’s mark have a common formulation, and
thus create similar commercial impressions, consumers are
likely to believe that lubricating/motor oils sold under the
marks TEXLUBE and TEXOR, and oil-based motor oil additives
sold under the mark TEXLON, emanate from the same source.
As for opposer’s mark TEXACO, as well as its various
TEXACO logos, an additional factor favoring opposer is the
fame of these marks. Opposer has presented evidence of use
and advertising of its TEXACO marks for almost 50 years.
There are over 14,000 TEXACO service stations located
throughout the United States, and sales of TEXACO brand
gasolines average $5 billion per year. Other TEXACO branded
products sold at retail, in the ten-year period between 1985
and 1995, were in excess of $6 billion. Opposer advertises
its products and services in a wide variety of media,

lead to confusion, in this case opposer’s TEXACO gasoline is
Opposition No. 92,897
11
including television, radio, magazines, billboards, and
through point of sale displays in service stations. It also
sponsors various events, including 50 years of sponsoring
weekly radio broadcasts of Metropolitan Opera performances;
a NASCAR race car which bears the TEXACO mark; and NCAA
football. Since 1987 opposer has spent over $75 million a
year advertising its products and services, and in the ten
years between 1985 and 1994 advertising expenditures were
over $700 million. Eighty percent of opposer’s advertising
expenditures are for television advertising, and ninety
percent of those commercials feature TEXACO gasoline and
service stations.
It is well-established that when a mark is famous, this
factor plays a dominant role in determining likelihood of
confusion. Kenner Parker Toys Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). That
is certainly the case here. The long-standing and
widespread use of the TEXACO marks, significant sales, and
major promotion of the TEXACO marks, leave us in no doubt
that TEXACO is a famous mark, and would be recognized by
virtually every motorist in the United States. Those same
motorists, of course, would be the customers for applicant’s
motor-oil additive. Because of the fame of TEXACO, we find
that such consumers, seeing TEXLON for a motor-oil additive,

sold, for the most part, through independent service stations.
Opposition No. 92,897
12
are likely to believe that this product emanates from
opposer.
We note applicant’s argument that many businesses use
TEXAS or TEX as part of their names. Applicant has not only
submitted no evidence to support this argument,23 but
opposer’s evidence specifically contradicts applicant’s
position. Specifically, opposer’s witnesses, each of whom
has many years of experience with the marketing and selling
of gasoline and lubricants and other petroleum-based
products, have all testified that they are unaware of any
companies using a TEX-prefix as part of their trademarks for
lubricant or gasoline products or services related thereto.
In any event, in view of the fame achieved by opposer’s mark
TEXACO due to the length of use, sales and advertising, this
mark has certainly become a strong mark.
Additional factors favoring opposer are that motor-oil
additives are inexpensive items which are purchased by the
public at large, and therefore will not be chosen with a
great deal of care in terms of analyzing the trademark. For
the reasons indicated above, such consumers are likely, upon
seeing TEXLON on an oil-based motor oil additive, to quickly
draw the conclusion that this is a TEXACO product. Thus, we
are not persuaded by applicant’s argument that consumers
will read the product label, will find no reference to
Opposition No. 92,897
13
opposer, and will recognize that applicant’s address is
different from opposer’s.
With respect to applicant’s label, we note that it
prominently features a five-pointed star. A five-pointed
star is also one of opposer’s major trademarks and, as noted
above, has a very strong consumer recognition as indicating
opposer. Although applicant is not seeking to register the
star design, and our decision herein would be the same even
if such a design did not appear on the labels, the usage of
a star design reinforces the likelihood that consumers will
assume a connection between applicant’s product and opposer.
Finally, applicant points out that opposer has failed
to produce evidence of any episodes of actual confusion.
However, as applicant itself has indicated in its brief, and
as the record reflects, applicant did not begin to use the
mark TEXLON for any products until December 1991, and ceased
promoting these products in August 1992, and ceased all
sales in September 1992. Its sales during that period were
under $1300, and none of them were made in retail stores.
In view of this extremely limited use, we conclude that
there has not been sufficient opportunity for confusion to
occur, such that the lack of evidence of actual confusion
does not weigh against opposer.

23 The attachment to applicant’s answer, consisting of directory
listings, was never properly made of record.
Opposition No. 92,897
14
Accordingly, we find that applicant’s use of the mark
TEXLON for its identified goods is likely to cause confusion
with opposer’s registered marks TEXACO, its various logos
featuring the term TEXACO, TEXLUBE and TEXOL.
Decision: The opposition is sustained.
E. J. Seeherman
C. E. Walters
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board