Tiara Motorcoach Corp.

Trademark Trial and Appeal Board

Nov 29, 1999

No. 75181451 (T.T.A.B. Nov. 29, 1999)

Paper No. 13
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tiara Motorcoach Corporation
________
Serial No. 75/181,451
_______
Bobby B. Gillenwater and Melissa A. Vallone
of Barnes & Thornburg for Tiara Motorcoach Corporation.
Cindy B. Greenbaum, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Hanak, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Tiara Motorcoach Corporation has filed an application
to register the mark TIARA INTERNATIONAL MOTORCOACH
CORPORATION and design, as shown below, for “vehicles,
namely, conversion vans, minivans, pick-up trucks [and]
sport utility vehicles.”1

1 Serial No. 75/181,451, filed October 15, 1996, claiming first
use dates of May 28, 1996.
Ser No. 75/181,451
2
Disclaimers have been made of the words INTERNATIONAL
MOTORCOACH CORPORATION and the visual representation of the
globe at the request of the Examining Attorney and of the
word TIARA at the applicant’s initiative.
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the registered marks TIARA in the following
stylized format
for automobiles2 and TIARA for vans and trucks and
structural parts therefor and van conversions.3 Although
the first registration was originally issued to a different
entity, the Office records show both registrations being
presently owned by Ford Motor Company.
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.

2 Reg. No. 1,085,976, issued February 21, 1978. Section 8
affidavit accepted, first renewal.
Ser No. 75/181,451
3
Applicant represents that it is a licensee of Ford
Motor Company (Ford) under the second cited registration
for TIARA and thus is entitled to use the mark TIARA
pursuant to this licensee. Applicant, however, has never
made any licensing agreement of record. Furthermore,
applicant acknowledges that this use inures to the benefit
of Ford and that its license to use is not the equivalent
of Ford’s consent for applicant to register the mark.
Nonetheless, applicant insists that it should be allowed to
register its “own distinctive design mark” which
incorporates the TIARA mark of its licensor Ford.
Applicant argues that its voluntary disclaimer of the word
TIARA indicates its disclaimer to any right to exclusive
use of Ford’s mark per se.
The Examining Attorney correctly points out that even
though applicant may have voluntarily disclaimed any rights
in the word TIARA, applicant’s mark must still be
considered in its entirety, including all disclaimed
matter, in determining the likelihood of confusion under
Section 2(d). See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re MCI Communications
Corp., 21 USPQ2d 1534 (Comm’r Pat. 1991). Applicant’s
voluntary disclaimer of the word TIARA does not remove the

3 Reg. No. 2,000,159, issued September 10, 1996.
Ser No. 75/181,451
4
word from our analysis of the similarity of applicant’s
mark to the marks of the cited registrations.
As such, the word TIARA is clearly the dominant
portion of applicant’s mark. Although the descriptive
terms INTERNATIONAL and MOTORCOACH CORPORATION cannot be
ignored, the fact remains that purchasers are more likely
to rely upon the non-descriptive portion as the indication
of source. This is particularly true when the descriptive
portion has been graphically relegated to a subordinate
status, as is the case here. See Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993). Although applicant places great emphasis on the
design features of its mark, pointing to the globe and
wreath designs, the type styles and sizes of the wording,
and the overall impact of the shape of the design, these
features would certainly not be the portion of the mark
which would be more likely to be remembered and relied upon
by purchasers of applicant’s vehicles. It is the word
portion by which the vehicles would be identified and thus
it is the word portion which must be accorded more weight.
See Ceccato v. Manifattura Lane Gaetano Marzotto & Figli
S.p.A., 32 USPQ2d 1192 (TTAB 1994); In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Furthermore,
the most outstanding design feature is the global
Ser No. 75/181,451
5
representation, which serves more to emphasize the
“international” description of applicant’s company rather
than create a separate impression as an indication of
source. Cf. Ceccato v. Manifattura Lane Gaetano Marzotto &
Figli S.p.A., supra [coat of arms reinforces meaning of
word mark].
Accordingly, we find applicant’s composite mark to be
highly similar to the cited TIARA marks, the overall
commercial impression for all focusing on the word TIARA.
Insofar as the goods are concerned, applicant’s
conversion vans, minivans and pick-up trucks are fully
encompassed by and thus identical with the “vans and
trucks” of the cited registration for TIARA (typed).
Applicant’s sport utility vehicles and the “automobiles” of
the registration for TIARA in a stylized form are at the
very least closely related, the two types of vehicles often
being purchased interchangeably. Although applicant
attempts to liken the situation here to that in Westward
Coach Manufacturing Co., Inc. v. Ford Motor Co., 388 F.2d
627, 156 USPQ 437 (7th Cir. 1968), a similar distinction in
the two types of vehicles involved cannot be made. In that
case the mark MUSTANG was being used on sports cars and
trailers and campers, respectively. The court found these
types of vehicles not to be “similar goods similarly
Ser No. 75/181,451
6
marketed.” The same is clearly not true here; it is common
knowledge that many manufacturers of standard automobiles
also produced sports utility models.
Thus, we are convinced that use by applicant of its
composite mark featuring the word TIARA for its particular
vehicles, in the face of the registered TIARA marks for
automobiles, vans and trucks would be likely to lead to
confusion. Inasmuch as applicant has failed to establish
that registrant Ford Motor Company has consented to the
registration of applicant’s particular design mark which
fully incorporates registrant’s TIARA mark, applicant has
no contractual basis for appropriating registrant’s mark.
While registrant may presently control the quality of the
vehicles being marketed by applicant under its TIARA design
mark, there is no assurance that this will be the case in
the future. Instead, if applicant is permitted to register
its TIARA design mark, the situation may well arise in
which potential purchasers will be faced with vehicles
emanating from two entirely separate sources bearing the
highly similar TIARA marks.
Ser No. 75/181,451
7
Decision: The refusal to register under Section 2(d)
is affirmed and registration is refused to applicant.
E. W. Hanak
H. R. Wendel
G. F. Rogers
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Ser No. 75/181,451
8