The Pep Boys Manny, Moe & Jack of Californiav.Kent G. Anderson

Trademark Trial and Appeal BoardJun 19, 2014

No. 91190423 (T.T.A.B. Jun. 19, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: June 19, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ The Pep Boys Manny, Moe & Jack of California v. Kent G. Anderson _____ Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 _____ Marsha G. Gentner of Dykema Gossett PLLC, for The Pep Boys Manny, Moe & Jack of California. Daniel S. Kirshner of Daniel S. Kirshner Atty at Law LLC, for Kent G. Anderson. _____ Before Quinn, Mermelstein, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: The Pep Boys Manny, Moe & Jack of California opposes Kent G. Anderson’s applications to register the marks FUTURE – both stylized and in standard characters – and FUTURISTIC in standard characters (collectively, “Applicant’s FUTURE marks”) for a variety of goods and services. Opposer claims confusion is Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 2 - likely with its marks FUTURA and CORNELL FUTURA for tires and related automotive accessories. These five consolidated oppositions are the latest in a series of proceedings and appeals to the Board concerning numerous of Applicant’s applications and registrations for the mark FUTURE for a broad array of goods and services. E.g., Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271 (TTAB 2014); Future Ads LLC v. Anderson, Opposition No. 91203191 (TTAB April 10, 2014). Indeed, this is the fifth time we have decided proceedings between Applicant and Opposer alone.1 We sustain the oppositions in part and dismiss in part. I. Opposer’s Claims Opposer pleads the following three registered marks in each of the five proceedings: 1. FUTURA for “automotive accessories, namely, vehicle wheel caps and hub caps” in International Class 12;2 2. FUTURA for “tires” in International Class 12;3 and 3. CORNELL FUTURA for “pneumatic tires for automotive vehicles” in International Class 12.4 1 Prior TTAB opposition proceedings are Nos. 91204213 (June 18, 2014); 91196980 (April 23, 2014); 91173923 (June 18, 2009); and 91157538, 91157768, 91158277, 91158509, 91158520, 91158786, 91159159, 91164461, 91164602, 91165913, 91170501, and 91173632 (Aug. 6, 2008) (consolidated). 2 Registration No. 2454578, issued May 29, 2001; Section 8 and 15 affidavits accepted and acknowledged. The English translation of the word FUTURA in the mark is “future.” 3 Registration No. 1582462, issued February 13, 1990; Section 8 and 15 affidavits accepted and acknowledged; renewed. 4 Registration No. 0778767, issued October 10, 1964; Section 8 and 15 affidavits accepted and acknowledged; renewed. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 3 - Each of the five opposed applications was filed on an intent-to-use basis pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). All identify numerous goods and services, which we do not reproduce here because not all goods and services are opposed. The opposed goods and services identified in the Notices of Opposition are: 1. Opposition No. 91184524 to application Serial No. 76634950, filed April 4, 2005 for the mark FUTURE in standard characters: All services in International Class 35. 2. Opposition No. 91185285 to application Serial No. 76537316, filed August 14, 2003 for the typed mark : All services in International Class 42. 3. Opposition No. 91190423 to application Serial No. 76545706, filed September 22, 2003 for the mark FUTURISTIC in standard characters: International Class 3: “automobile interior and exterior polishes and cleaners,” “automobile polish, automobile wax,” “heavy duty degreasing preparation for use on car garage floors,” and “automotive cleaners” International Class 5: “car deodorizer” International Class 6: “frames and parts for vehicles, namely, door frames of metal, metal door trim, and metal nameplates” International Class 7: “machines and machine tools, namely . . . distributors for vehicles; . . . parts standards for vehicles, namely, spark plug wires and alternators for land vehicles; . . . mechanical engine parts for land vehicles; mufflers for automobiles; vehicle parts for operation, namely, carburetors; replacement parts for vehicles, namely, automobile engine and transmission seals; internal combustion engine parts, namely, heads, pistons, metal seal rings for use with turbo-machinery and centrifuges, connecting rods and coils; connecting rods for machines, motors and engines; distributor caps; spark plugs; ignition wires; engine bearings; . . . air Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 4 - filters for vehicle motors and engines; oil pumps for internal combustion engines; valves for pumps; . . . gaskets for internal combustion engines; fuel injector pumps for land vehicles; fuel filters; oil filters; electric generators; . . . electronic converter, namely, emission reduction units for motors and engines, namely, catalytic converters; ignition parts for internal combustion engines, namely, points; engine components, namely, electronic fuel injection modules; electric generators; crank shafts for internal combustion engines; rods for engines and motor crank shafts; automobile engine blocks, exhaust pipes for land vehicles; automotive intake manifold; . . . cam shaft; variable speed drive train for electric motors; carburetors; air intake and filter for starter alternators; piston blocks; centrifugal head pumps; electric motor water pump generator; engine cylinders for vehicles; . . . structural parts and components for engines, namely, anti-pollution devices” International Class 9: “car stereos; . . . satellite systems, namely, a global positioning system; . . . tire balancing machines for land vehicles; tire pressure gauges; laser object detectors for use on vehicles; odometers; speedometers for vehicles, batteries; vehicle locking system, namely, programmable locking systems consisting of electronic cylindrical lock sets and keypads; radios for vehicles; cruise control for motor vehicles and other electronic products and technology which make up vehicles and aircraft, namely, electronic tire pressure monitors, electronic deer alerts and aircraft airspeed sensors . . . ; satellites [sic] navigation systems, namely, global positioning systems; global positioning system consisting of computers and computer software, transmitters, receivers and network inter face devices; . . . radios for vehicles; . . . electric cigarette lighters for land vehicles” International Class 11: “tail light accessories for vehicles, namely, vehicle headlights, reflectors, turn signal lights and headlights” and “climate control system for vehicles consisting of air conditioner and exhaust fan” International Class 12: All goods. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 5 - International Class 35: “dealerships in the field of automobiles, cars, trucks, RV, SUV, motor cycles, aircrafts, space craft, trains, buses, spacecraft, watercraft and recreational vehicles; . . . retail gasoline supply services; . . . retail store services featuring a wide variety of consumer goods of others; . . . independent sales representatives in the field of motorcycles, cars, trucks, SUV, RV, water craft, land craft and aircraft; wholesale ordering services in the field of motorcycles, cars, trucks, SUV, RV, water craft, land craft and aircraft . . . ; wholesale distributorships in the field of automobiles, water craft, land craft, space craft, aircraft and recreational vehicles; wholesale distributorships in the field of . . . automotive parts, all-terrain vehicles . . . ; discount stores in the field of . . . automotive parts . . . ; retail stores featuring automobile parts and automobile accessory; . . . retail stores featuring a wide variety of goods and services; online retail services featuring a wide variety of goods and services; . . . organizing exhibitions for commercial and advertising purposes for the promotional [sic] of . . . automotive parts . . . ; preparing audio and visual displays in the field of consumer . . . automobiles . . . ; manufacturers’ representatives in the field of . . . vehicles . . . automotive parts . . . ; on-line ordering services featuring . . . automotive parts . . . ; wholesale ordering services in the field of . . . automotive parts . . . ; wholesale stores featuring . . . automotive parts, vehicles . . . ; retail outlets featuring . . . automotive parts . . . ; retail store services featuring convenience store items and fuel; . . . independent sales representatives in the field of . . . land vehicles . . . automotive parts . . . ; inventory management in the field of automobile production and retail sale matters; . . . advertising agencies promoting the services of the automotive, aircraft, aerospace, watercraft [sic] and distribution of printed and promotional materials; . . . arranging and conducting trade show exhibitions in the field of . . . automotive parts, aircraft, watercraft, aerospace technology; arranging and conducting trade shows in the field of new product introductions featuring automotive parts, aircrafts, watercraft, and aerospace technology . . . ; commercial information in the field of automotive, aircraft and watercraft industries; . . . computerized on line Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 6 - ordering services in the field of . . . automotive parts, land vehicles . . . ; conducting an on-line trade show exhibition in the field of automotive parts . . . ; conducting business and market research survey [sic] in the field of automotive . . . industries; . . . conducting trade shows in the field of new product introductions featuring automotive parts, aircraft, water craft and aerospace technology; . . . cost containment in the field of automotive, aircraft, water craft and aerospace industries; . . . dealerships in the field of automotive parts; . . . dealerships in the field of consumers [sic] electronic products, industrial and home robots for personal use, prefabricated buildings, automobiles, automotive parts . . . ; . . . discount stores in the field of . . . automobiles . . . ; electronic catalog services featuring . . . automotive parts . . . ; . . . promoting the goods and services of others by arranging for sponsors to affiliate their goods and services associated with track and field, baseball, football, ice hockey, field hockey competitions, automotive and water craft racing . . . ; . . . promoting the goods and services of others by providing a website at which users can link to information concerning . . . automobiles, automotive parts and accessories . . . ; providing an on-line computer database featuring trade information in the field of automotive, aircraft, water craft and aerospace industries; . . . providing door to door shopping services in the field of . . . automobiles, automotive parts . . . ; providing home shopping services in the field of . . . automobiles, automotive parts . . .” International Class 37: “automobile service station services; automotive body repair services; car washing” International Class 40: “custom manufacturing of automotive parts and aerospace equipment” International Class 45: “licensing of . . . automotive parts” 4. Opposition No. 91194327 to application Serial No. 76259991, filed October 20, 2000 for the typed mark : International Class 37: All services. International Class 40: All services. International Class 42: All services. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 7 - Opposer also opposed services previously identified in this application in International Class 35. However, the application was abandoned as to that class after the Board sustained Opposition No. 91192939, filed by a third party, as to the opposed Class 35. See Lincoln Nat’l Corp., 110 USPQ2d at 1286. 5. Opposition No. 91195766 to application Serial No. 76585316, filed April 6, 2004 for the mark FUTURISTIC: International Class 9: “car stereos” and “fire extinguishing apparatus for automobiles” International Class 12: All goods. International Class 35: All services. International Class 42: “consumer product safety testing consulting in the field of automotive design and engineering” II. Record Applicant submitted no evidence. Instead, Applicant submitted his brief during his trial period.5 The Board then reset the trial schedule to close the rebuttal period as unnecessary.6 Opposer submitted with its Notices of Opposition current printouts from the electronic database records of the USPTO showing the status and title of its three pleaded registrations, thereby making them of record pursuant to Trademark Rule § 2.122(d)(1), 15 U.S.C. § 2.122(d)(1). 5 71 TTABVUE. 6 See Board Order of December 19, 2013, 72 TTABVUE. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 8 - Opposer made the following of record by Notice of Reliance: • The Pep Boys Manny, Moe & Jack of California v. Anderson, Opposition No. 91157538 et al. (TTAB Aug. 6, 2008) (nonprecedential) (“Pep Boys I”);7 • In re Anderson, 101 USPQ2d 1912 (TTAB 2012), in which we affirmed refusals to register Applicant’s typed marks 8 and 9 for certain goods and services due to a likelihood of confusion with Opposer’s registered FUTURA marks;10 • Certain of Applicant’s admissions to Opposer’s Requests for Admission, responses to Opposer’s Interrogatories, and responses to Document Requests stating that no responsive documents exist;11 and • Internet printouts and screenshots from Opposer’s website PepBoys.com12 and third-party websites AdvanceAutoParts.com13 and AutoZone.com.14 7 Exhibit 1, 68 TTABVUE at 4-31. 8 Application Serial No. 76511652. 9 Application Serial No. 76514799. 10 Exhibit 2, 68 TTABVUE at 32-62. Opposer did not submit the published opinion, but neither the opinion nor a notice of reliance on it were necessary. Precedential opinions of the Board are published in the United States Patent Quarterly and citations should be to that source. Citation of non-precedential opinions should be to the Board’s TTABVUE database (parallel citation to Westlaw or a similar source is permitted). If an opinion appears in neither the USPQ nor TTABVUE, a copy of it should be attached to the paper in which it is cited (and parallel citation to any other source is permitted). The Board discourages the citation of non-precedential opinions unless necessary to assert claim preclusion or issue preclusion (or a similar matter). 11 Exhibits 3-11, 69 TTABVUE. 12 Exhibit 12, 70 TTABVUE at 4-18. 13 Exhibit 13, 70 TTABVUE at 19-30. 14 Exhibit 14, 70 TTABVUE at 31-49. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 9 - III. Analysis A. Opposer’s Standing and Priority Applicant Kent G. Anderson, an individual from Bismarck, North Dakota, has not sold any of the goods or services identified in his applications.15 Applicant does not dispute Opposer’s standing or priority.16 In any event, Opposer’s standing to oppose registration of Applicant’s FUTURE marks is established by its pleaded registrations, which the record shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999). In addition, because Opposer’s pleaded registrations are of record, priority is not an issue with respect to the goods covered by Opposer’s pleaded registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). B. Claim Preclusion Opposer contends in its trial brief that claim preclusion bars relitigation of its opposition to many of Applicant’s goods and services, based on the Board’s 2008 decision in Pep Boys I, Opposer’s consolidated opposition to twelve of Applicant’s other applications (Exhibit 1). 15 See, e.g., Exhibit 4, Applicant’s Answers to First Set of Interrogatories Nos. 4 and 6, 69 TTABVUE at 36. 16 See Applicant’s Brief at 5, 71 TTABVUE at 6. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 10 - At the outset, we note that Opposer pleaded neither issue nor claim preclusion in its Notice of Opposition. Nonetheless, we find that the issue of preclusion was tried by implied consent. First, we find that Applicant was fairly apprised that Opposer was asserting these claims by Opposer’s Notice of Reliance. As noted supra, Opposer’s first two exhibits were TTAB opinions in Pep Boys I, the parties’ prior opposition decided in 2008, and In re Anderson, a 2012 ex parte affirmance of a refusal to register two of Applicant’s other applications, citing Opposer’s FUTURA marks. Opposer’s Notice of Reliance stated that these exhibits “are relevant to the issues of claim and issue preclusion.”17 Second, Applicant raised no objection to these two exhibits or to Opposer’s assertion of claim preclusion. Therefore, we deem the pleadings to be amended under FED. R. CIV. P. 15(b)(2) to include assertion of claim preclusion by Opposer. See, e.g., Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1924-25 (TTAB 2011). As explained by our primary reviewing court, the doctrines of claim preclusion and issue preclusion “preclude certain attempts at second litigation chances, but only in defined circumstances, reflecting the need to avoid depriving litigants of their first chances.” Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1171 (Fed. Cir. 2013). Claim preclusion, previously known as res judicata,18 prevents litigants from pressing claims in a second suit 17 68 TTABVUE at 2. 18 Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 110 USPQ2d 1261, 1263 (Fed. Cir. 2014). Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 11 - that were previously litigated or that they could and should have raised in earlier litigation, even if they did not. Id. For that bar to apply, there must be: (1) identity of parties (or their privies); (2) an earlier final judgment on the merits of a claim; and (3) a second claim based on the same set of transactional facts as the first. Id. The Court of Appeals for the Federal Circuit has stated that it is guided by the analysis set forth in the RESTATEMENT (SECOND) OF JUDGMENTS § 24 (1982) in determining whether a plaintiff’s claim in a particular case is barred by the doctrine of claim preclusion. See Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000); Chromalloy American Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694, 222 USPQ 187, 189-90 (Fed. Cir. 1984). Section 24 of the Restatement describes the concept as follows: (1) When a valid and final judgment rendered in an action extinguishes the plaintiff's claim pursuant to the rules of merger or bar . . . the claim extinguished includes all rights of the plaintiff to remedies against the defendant with respect to all or any part of the transaction, or series of connected transactions, out of which the action arose. (2) What factual grouping constitutes a “transaction”, and what grouping constitutes a “series”, are to be determined pragmatically, giving weight to such considerations as whether the facts are related in time, space, origin or motivation, whether they form a convenient trial unit, and whether their treatment as a unit conforms to the parties’ expectations or business understanding or usage. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 12 - As explained in Polaroid Corp. v. C & E Vision Servs. Inc., 52 USPQ2d 1954, 1957 (TTAB 1999), the Board has applied the Restatement’s analysis by looking to whether the mark involved in the second proceeding is the same mark, in terms of commercial impression, as the mark involved in the first proceeding. On the facts before us, we do not apply claim preclusion in the applications to register FUTURISTIC (Serial Nos. 76545706 and 76585316). Although the commercial impressions are similar, FUTURISTIC is not the same as the FUTURE mark that we have previously considered. We do, however, find that claim preclusion applies with respect to the applications to register the mark FUTURE, in plain and stylized form (Serial Nos. 76634950, 76537316, and 76259991). The parties here are identical to those in Pep Boys I, satisfying the first requirement, and the final judgment on the merits of the claim in Pep Boys I satisfies the second. We also find that Applicant’s applications for the FUTURE mark constitute a “series of transactions” incorporating identical marks and goods and services that are identical in part. Miller Brewing Co. v. Coy Int’l Corp., 230 USPQ 675, 678 (TTAB 1986). Moreover, there is no argument or evidence that there has been any change in circumstances between Pep Boys I and this case. See Litton Indus., Inc. v. Litronix, Inc., 577 F.2d 709, 198 USPQ 280, 282 (CCPA 1978). It has long been established that where there is a likelihood of confusion as to any of the goods or services listed in an application, it is unnecessary to rule on other opposed goods or services listed in the same class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 13 - Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1397 (TTAB 2007); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 n.9 (TTAB 2004) (stating that “if priority and likelihood of confusion are established as to any of the goods or services identified in an opposed class of goods or services, the opposition to registration of the mark as to all of the goods or services identified in that class will be sustained”); Steiger Tractor Inc. v. Steiner Corp., 3 USPQ2d 1708, 1709 (TTAB 1984): It is also established that if one category of goods or services listed in an application for registration presents a likelihood of confusion when judged in relation to the goods covered by an opposing mark, even though other non-related or more remotely related goods are also incorporated in the application, the prohibitions of Section 2(d) of the Trademark Act apply and will bar registration without the need to rule on the other listed goods. See also Lincoln Nat’l Corp., 110 USPQ2d at 1283 n.17 (“Under the second du Pont factor, opposer need not prove and we need not find similarity as to each and/or all of the different Class 36 services identified in the application in order to sustain the opposition as to all of the identified Class 36 services.”).19 For that reason, we do not address piecemeal all of Applicant’s many goods or services opposed in each class. Rather, we apply claim preclusion to the opposed goods or services in each class comprising identified goods or services substantially 19 We do not find the circumstances to be present here that gave rise to the Board’s decision not to apply judgment on the basis of issue preclusion as to the entire class of goods in Nextel Commc’ns Inc. v. Motorola Inc., 91 USPQ2d 1393, 1399 (TTAB 2009). Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 14 - identical to those the Board found in Pep Boys I likely to cause conclusion with Opposer’s FUTURA Marks, as follows: 1. Opposition No. 91184524 to application Serial No. 76634950 for the mark FUTURE: International Class 35 – The Class 35 services in the application at issue in Pep Boys I are partly identical to the goods at issue in the opposed application, namely, “automobile dealerships.” Because only Class 35 is opposed, Opposition No. 91184524 is sustained as to all services identified in Class 35. 2. Opposition No. 91194327 to application Serial No. 76259991 for the typed mark – The opposition is sustained as to Classes 37 and 40, which include the following services subject to the Board’s decision in Pep Boys I: International Class 37: “maintenance and repair of automobiles, trucks” and “mechanic services” International Class 40: “manufacture of cars, vehicles, . . . land craft . . .” Opposition No. 91194327 is sustained with respect to all services in Classes 37 and 40. C. Goods and Services Remaining for Decision Having applied claim preclusion, the opposed goods and services remaining before us for decision are: • Opposition No. 91190423 to application Serial No. 76545706 (FUTURISTIC): all goods and services identified by Opposer in the Notices of Opposition, listed supra; • Opposition No. 91185285 to application Serial No. 76537316 ( ) and Opposition No. 91194327 to application Serial No. 76259991 ( ): all services in Class 42; and • Opposition No. 91195766 to application Serial No. 76585316 (FUTURISTIC): all goods and services in Classes 9 and 42 identified by Opposer in the Notices of Opposition, listed supra, and all goods and services identified in Classes 12 and 35. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 15 - D. Likelihood of Confusion Our determination under Trademark Act Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). 1. Similarity of the Marks Opposer’s pleaded registrations are for the marks FUTURA and CORNELL FUTURA. Applicant seeks to register the marks FUTURE, in plain and typed form, and FUTURISTIC. Because opposer’s two FUTURA marks are closer to applicant’s FUTURE marks than CORNELL FUTURA, we will focus our discussion on opposer’s two FUTURA marks. Consistent with Pep Boys I and In re Anderson, we find Applicant’s FUTURE mark to be highly similar to Opposer’s FUTURA mark. The marks look and sound alike. Furthermore, because the English translation of “futura” is “future,”20 the 20 See translation statement, Registration No. 2454578; Exhibit 6, Opposer’s First Set of Requests for Admission to Applicant, Admission Nos. 129-33, 69 TTABVUE at 64, 69-70. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 16 - terms are legal equivalents. In re Anderson, 101 USPQ2d at 1918. Because there is no evidence that either FUTURE or FUTURA have any specific meaning in connection with the goods and services of the parties, and because the marks are similar in appearance, sound, and meaning, FUTURE and FUTURA engender similar commercial impressions. Nor are Applicant’s typed marks sufficiently stylized to distinguish them from Opposer’s marks. In view of the foregoing, applicant’s FUTURE marks are highly similar to opposer’s FUTURA marks. We also find Applicant’s mark FUTURISTIC to make an overall commercial impression similar to Opposer’s FUTURA marks.21 Although the ending “–istic” renders FUTURISTIC one syllable longer than FUTURA and somewhat distinguishes the marks aurally and visually, the initial root FUTUR- is the same for both words. Moreover, the meanings are linked; the definition of “futuristic” is “of, relating to, or characteristic of the future, futurism, or futurology; also : very modern.”22 Applicant admits that the term “futuristic” is perceived by the consuming public as the adjectival form of the word “future.”23 21 In The Pep Boys Manny, Moe & Jack of California v. Anderson, Opposition No. 91173923 (TTAB June 18, 2009) (“Pep Boys II”), Opposer unsuccessfully opposed Application Serial No. 76594751 for the mark TOMORROW/FUTURISTIC for numerous goods and services in Classes 12 and 35. Our finding here is distinguishable because Applicant’s mark FUTURISTIC is more similar to Opposer’s FUTURA marks than was TOMORROW/ FUTURISTIC. 22 From merriam-webster.com/dictionary/futuristic, accessed May 24, 2014. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). Accordingly, we have taken judicial notice of this definition of “futuristic.” See also Exhibit Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 17 - For these reasons, the first du Pont factor weighs in favor of a likelihood of confusion with respect to each opposed application. 2. Similarity of the Goods and Services In determining whether the goods and services of the parties are related, we are mindful that there is no per se rule that products and services sold in the same field or industry are similar or related for purposes of likelihood of confusion. Cooper Indus., Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983) (stating that “the mere fact that the products involved in this case (or any products with significant differences in character) are sold in the same industry does not of itself provide an adequate basis to find the required ‘relatedness’”). However, likelihood of confusion may be found if the respective products and services are related in some manner, or if the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under conditions that could give rise to the mistaken belief that they emanate from the same source. In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984). Focusing our analysis once again on Opposer’s FUTURA registrations, Opposer’s goods are “tires” and “automotive accessories, namely, vehicle wheel caps and hub 6, Opposer’s First Set of Requests for Admission to Applicant, Admission No. 135 (“The term ‘futuristic’ is defined as ‘of or relating to the future’.”), 69 TTABVUE at 64, 70. 23 Exhibit 6, Opposer’s First Set of Requests for Admission to Applicant, Admission Nos. 134 and 136-37, 69 TTABVUE at 64, 70. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 18 - caps.” The most relevant of Applicant’s goods and services remaining for decision are summarized in the following chart: Mark Serial No. Selected Goods/Services FUTURISTIC 76545706 Automobile interior and exterior polishes and cleaners; automobile wax; and automotive cleaners, in Class 3 Car deodorizer, in Class 5 Frames and parts for vehicles, namely, door frames of metal, metal door trim, and metal nameplates, in Class 6 Mufflers for automobiles; fuel filters; oil filters, in Class 7 FUTURISTIC 76585316 Car stereos, in Class 9 FUTURISTIC 76545706 Tail light accessories for vehicles, namely, vehicle headlights, reflectors, turn signal lights and headlights, in Class 11 Tires and spare tires; tire rims, in Class 12 FUTURISTIC 76585316 Automobiles; . . . motors and engines for land vehicles, and structural parts for all of the above, in Class 12 FUTURISTIC 76545706 Discount stores in the field of . . . automotive parts . . . ; retail stores featuring automobile parts and automobile accessory; . . . on-line ordering services featuring . . . automotive parts . . . ; retail outlets featuring . . . automotive parts . . . , in Class 35 FUTURISTIC 76585316 Retail automobile and vehicle parts stores; . . . on-line ordering services in the field of . . . automotive and vehicle parts, in Class 35 FUTURISTIC 76545706 Automobile service station services; automotive body repair services, in Class 37 Custom manufacturing of automotive parts, in Class 40 Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 19 - Mark Serial No. Selected Goods/Services 76537316 76259991 Research and design of automobiles, in Class 42 FUTURISTIC 76585316 Consumer product safety testing consulting in the field of automotive design and engineering, in Class 42 FUTURISTIC 76545706 Licensing of automotive parts, in Class 45 We recognize that Applicant makes the following statement in his brief: “Admittedly, the goods/services offered are somewhat related.” We do not, however, find this admission sufficient to establish prima facie that the relationship of the parties’ goods and services is sufficient to support a conclusion that confusion is likely, rather than merely possible.24 Nor do we find it to be “conclusively established” that Applicant’s goods and services are identical, similar, or related to Opposer’s goods and services based on Applicant’s admissions, as Opposer contends.25 Applicant’s admissions relate to “Applicant’s Goods” and “Applicant’s Services,” which apparently are terms defined by Opposer in portions of its interrogatories not made of record. The scope of Applicant’s admissions is unclear. Therefore, we consider Applicant’s goods and services in turn. a. Applicant’s Goods Opposer made of record evidence demonstrating that it and other automotive parts retailers offer both “tires” or “automotive accessories, namely, vehicle wheel 24 We reached the same conclusion in Pep Boys II, supra n.21, slip op. at 7. 25 Opposer’s Brief at 16. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 20 - caps and hub caps” (or similar or related goods) on the one hand and many of Applicant’s opposed goods on the other. Specifically, the Internet printouts submitted by Opposer demonstrate on their face that AutoZone offers aftermarket car parts and accessories in the categories of “tire and wheel”26 and “wheel-tire repair.”27 The same pages from AutoZone.com show that AutoZone offers “Headlight Replacement” accessories, which are similar or related to Applicant’s “vehicle headlights” in Class 11.28 Similarly, printouts from Opposer’s website PepBoys.com show on their face that Opposer offers “Tire & Wheel Related Parts,”29 as well as “Wash & Wax” products similar or related to Applicant’s “automobile wax” in Class 3;30 “Air Fresheners” similar or related to Applicant’s “car deodorizer” in Class 5;31 “Filters”32 and “Oil Change Tools & Accessories”33 similar or related to Applicant’s “fuel filters; oil filters” in Class 7; “Car Audio” similar or related to Applicant’s “car stereos” in Class 9;34 and “Engines & Components”35 identical, similar, or related to Applicant’s “engines for land vehicles” in Class 12. This evidence demonstrates that 26 Including “Custom Wheel Locks, Lug Nut Installation Tool, Tire Carrier and more . . . .” Exhibit 14, 70 TTABVUE at 37. 27 Id., 70 TTABVUE at 41. 28 Id., 70 TTABVUE at 40. 29 Exhibit 12, 70 TTABVUE at 7. 30 Id., 70 TTABVUE at 8. 31 Id., 70 TTABVUE at 10. 32 Id., 70 TTABVUE at 12. 33 Id., 70 TTABVUE at 14. 34 Id., 70 TTABVUE at 16. 35 Id., 70 TTABVUE at 12. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 21 - consumers have been exposed to the offer of automotive components and accessories of the kinds identified in the opposed applications together with the goods in Opposer’s pleaded FUTURA registrations and that such goods travel through the same channels of trade. We also note that Application Serial No. 76545706 includes in Class 12 tires and spare tires, which are identical to Opposer’s pleaded goods. In our likelihood of confusion analysis, these findings under the second and third du Pont factors weigh in favor of finding that confusion is likely for Applicant’s identified opposed goods in Classes 3, 5, 7, 9, 11, and 12. We find no record evidence establishing that the opposed goods identified in Class 6 in Application Serial No. 76545706 – that is, “frames and parts for vehicles, namely, door frames of metal, metal door trim, and metal nameplates” – are similar or related to Opposer’s goods.36 b. Applicant’s Services Turning next to Applicant’s services, we find that Opposer’s tires, wheel caps, and hub caps are the types of products that consumers would expect to be sold in “retail automobile and vehicle parts stores” and “retail stores featuring automobile parts,” as well as through “on-line ordering services in the field of . . . automotive and vehicle parts,” for example, through Opposer’s website.37 Therefore, we find 36 Opposer did not explain how its evidence was relevant to Applicant’s specific goods and services. We note that Exhibit 13, screenshots from the Advance Auto Parts website, includes “Door Parts,” 70 TTABVUE at 23, but not the goods in Opposer’s pleaded registrations, i.e., tires, wheel caps, or hub caps. 37 See Exhibit 12, 70 TTABVUE at 4-18. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 22 - that Applicant’s services recited in Class 35 in application Serial Nos. 76545706 and 76585316 are related to Opposer’s products. In Class 37, we find that Opposer’s tires, wheel caps, and hub caps are the types of products that may be used in “automobile service station services” and “automotive body repair services.” Accordingly, we find that the Class 37 services in application Serial No. 76545706 are related to Opposer’s pleaded goods. Opposer’s tires, wheel caps, and hub caps are automotive parts. On that basis, we find that both “custom manufacturing of automotive parts” and “licensing of automotive parts,” the services identified in Classes 40 and 45, respectively, in Application Serial No. 76545706, are related to Opposer’s pleaded goods. The second du Pont factor thus weighs in favor of finding that confusion is likely for Applicant’s identified services in Classes 35, 37, 40, and 45. Turning to the final remaining class of opposed services, there is no evidence that Applicant’s Class 42 services are similar or related to Opposer’s goods. Opposer asks that we apply claim preclusion for these services based on the holding in Pep Boys I. There, we found that “custom manufacturing of general product lines in the field of automobiles, and vehicle parts for others” in Class 40 was related to Opposer’s products, reasoning that “the custom manufacture of vehicle parts could include wheel caps and hub caps.”38 We find that preclusion is inappropriate because the Class 40 services at issue in Pep Boys I are different from the Class 42 38 Pep Boys I, slip op. at 15. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 23 - services identified in Applications Serial Nos. 76537316 (“consultation services in the field of automotive design and engineering for others; . . . research and design of automobiles . . .”), 76259991 (“engineering consulting, namely, rendering of designs schematics, ideas, drawings, structure of future . . . vehicles . . . for others; . . . research, design and development of . . . automobiles for others; . . . research and design of automobiles . . .”), and 76585316 (“consumer product safety testing consulting in the field of automotive design and engineering”). These services pertain to automobiles as a whole rather than auto parts, and thus they are different from Opposer’s tires, wheel caps, and hub caps. Due to the dissimilarity of the parties’ goods and services, the second du Pont factor weighs against a finding that confusion is likely with respect to Applicant’s identified services in Class 42. IV. Conclusion Because we have made our findings with respect to opposer’s two FUTURA registrations (Registration Nos. 1582462 and 2454578), we need not decide the issue of likelihood of confusion with respect to Opposer’s registration for the mark CORNELL FUTURA (Registration No. 0778767) because, to the extent that we have determined that there is no confusion, the addition of the term CORNELL would further distinguish the marks. On the other hand, if we have determined that there is confusion, there is no reason to determine whether there is confusion with another, less similar mark. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 24 - 1. Opposition No. 91184524 Applying claim preclusion, we find that application Serial No. 76634950 for the mark FUTURE for automobile dealerships and other services is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. 2. Opposition No. 91185285 Because the goods and services are distinctly different, application Serial No. 76537316 for the mark for “consultation services in the field of automotive design and engineering for others; . . . research and design of automobiles . . .” and other services identified in Class 42 is not likely to cause confusion with Opposer’s FUTURA mark. 3. Opposition No. 91190423 a. Because the marks are similar and the goods are related, application Serial No. 76545706 for the mark FUTURISTIC for “automobile wax” and the other opposed goods in Class 3 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. b. Because the marks are similar and the goods are related, application Serial No. 76545706 for the mark FUTURISTIC for “car deodorizer” in Class 5 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 25 - c. Because the goods are distinctly different, application Serial No. 76545706 for the mark FUTURISTIC for “frames and parts for vehicles, namely, door frames of metal, metal door trim, and metal nameplates” in Class 6 is not likely to cause confusion with Opposer’s FUTURA mark. d. Because the marks are similar and the goods are related, application Serial No. 76545706 for the mark FUTURISTIC for “fuel filters; oil filters” and the other opposed goods in Class 7 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. e. Because the marks are similar and the goods are related, application Serial No. 76545706 for the mark FUTURISTIC for “car stereos” and the other opposed goods in Class 9 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. f. Because the marks are similar and the goods are related, application Serial No. 76545706 for the mark FUTURISTIC for “tail light accessories for vehicles, namely, vehicle headlights, reflectors, turn signal lights and headlights” and the other opposed goods in Class 11 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 26 - g. Because the marks are similar and the goods are related, application Serial No. 76545706 for the mark FUTURISTIC for automobiles, structural parts for buses and motorcycles, and other goods in Class 12 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. h. Because the marks are similar and the goods and services are related, application Serial No. 76545706 for the mark FUTURISTIC for “retail stores featuring automobile parts and automobile accessory [sic]” and the other opposed services in Class 35 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. i. Because the marks are similar and the goods and services are related, application Serial No. 76545706 for the mark FUTURISTIC for “automobile service station services; automotive body repair services” and the other opposed services in Class 37 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. j. Because the marks are similar and the goods and services are related, application Serial No. 76545706 for the mark FUTURISTIC for “custom manufacturing of automotive parts . . . ” and the other opposed services in Class 40 is likely to cause confusion with Opposer’s Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 27 - FUTURA mark registered for tires and vehicle wheel caps and hub caps. k. Because the marks are similar and the goods and services are related, application Serial No. 76545706 for the mark FUTURISTIC for “licensing of . . . automotive parts” in Class 45 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. 4. Opposition No. 91194327 a. The opposition to application Serial No. 76259991 is dismissed as moot as to the services in Class 35 because that class has been abandoned. b. Applying claim preclusion, we find that application Serial No. 76259991 for the mark for “maintenance and repair of automobiles, trucks” and “mechanic services” in Class 37 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. c. Applying claim preclusion, we find that application Serial No. 76259991 for the mark for the manufacture of cars, vehicles, and land craft in Class 40 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. d. Because the goods and services are distinctly different, application Serial No. 76259991 for “engineering consulting, namely, rendering of Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 28 - designs schematics, ideas, drawings, structure of future . . . vehicles . . . for others; . . . research, design and development of . . . automobiles for others; . . . research and design of automobiles . . .” and other services identified in Class 42 is not likely to cause confusion with Opposer’s FUTURA mark. 5. Opposition No. 91195766 a. Because the marks are similar and the goods are related, application Serial No. 76585316 for the mark FUTURISTIC for “car stereos” and the other opposed goods in Class 9 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. b. Because the marks are similar and the goods are related, application Serial No. 76585316 for the mark FUTURISTIC for automobiles, structural parts for land vehicles, and other goods in Class 12 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. c. Because the marks are similar and the goods and services are related, application Serial No. 76585316 for the mark FUTURISTIC for “retail automobile and vehicle parts stores” and “on-line ordering services in the field of . . . automotive and vehicle parts” and other services in Class 35 is likely to cause confusion with Opposer’s FUTURA mark registered for tires and vehicle wheel caps and hub caps. Opposition Nos. 91184524, 91185285, 91190423, 91194327 and 91195766 - 29 - d. Because the goods and services are distinctly different, application Serial No. 76585316 for the mark FUTURE for “consumer product safety testing consulting in the field of automotive design and engineering” in Class 42 is not likely to cause confusion with Opposer’s FUTURA mark. Decision: 1. Opposition No. 91184524 to application Serial No. 76634950 is sustained as to Class 35 and registration to Applicant is refused as to the services in that class. 2. Opposition No. 91185285 to application Serial No. 76537316 is dismissed. 3. Opposition No. 91190423 to application Serial No. 76545706 is sustained as to the opposed goods and services as listed supra in Classes 3, 5, 7, 9, 11, 12, 35, 37, 40, and 45 and dismissed as to Class 6. 4. Opposition No. 91194327 to application Serial No. 76259991 is dismissed as moot as to Class 35, sustained as to Classes 37 and 40, and dismissed as to Class 42. 5. Opposition No. 91195766 to application Serial No. 76585316 is sustained as to the opposed goods and services as listed supra in Classes 9, 12, and 35 and dismissed as to Class 42. The opposed applications will proceed to registration as to all unopposed goods and services and those that were opposed but dismissed.