Tire Service Equipment Mfg. Co., Inc.

Trademark Trial and Appeal Board

Sep 21, 2018

No. 87423225 (T.T.A.B. Sep. 21, 2018)

Mailed: September 21, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Tire Service Equipment Mfg. Co., Inc.
_____

Serial No. 87423225
_____
Bradley P. Hartman of Hartman Titus PLC
for Tire Service Equipment Mfg. Co., Inc.

Shaila E. Lewis, Trademark Examining Attorney, Law Office 114,
Laurie R. Kaufman, Managing Attorney.
_____
Before Cataldo, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Tire Service Equipment Mfg. Co., Inc. seeks registration of VIPER, in
standard characters, for “tire bead seating tools, tire mounting tools; pneumatically
operated tire bead seating and inflating machines” in International Class 7.1 The
Examining Attorney refused registration under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles an identical
mark (VIPER in standard characters), registered for “tires for automobiles,”2 as to be
likely to cause confusion. After the refusal became final, Applicant appealed and
Applicant and the Examining Attorney filed briefs.

1 Application Serial No. 87423225, filed April 24, 2017 under Section 1(a) of the Trademark
Act, based on an allegation of first use in commerce in March 2017.
2 Registration No. 2153975, issued April 28, 1998; renewed.
This Opinion is Not a
Precedent of the TTAB
Serial No. 87423225
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I. Applicant’s Identification of Goods/Goods On Appeal
Applicant’s original identification of goods was “tire bead breaking tools, tire bead
seating tools, tire mounting and dismounting tools; pneumatically operated tire bead
seating and inflating tools.” In its November 6, 2017 Office Action response, Applicant
proposed amending this identification by deleting “tire bead breaking tools” and “tire
dismounting tools,” and the Examining Attorney accepted this amendment, as
reflected in her December 1, 2017 Final Office Action. Applicant filed its notice of
appeal on December 6, 2017, indicating that from this amended identification of
goods, the only “appealed goods and services” are “pneumatically operated tire bead
seating and inflating machines.”
Several hours later, on the same day as Applicant filed its Notice of Appeal, the
Examining Attorney issued a “subsequent Final Office Action,” which was
“supplemental to and supersedes” the December 1, 2017 Final Office Action.
According to the Examining Attorney, she issued the December 6, 2017 subsequent
Final Office Action “consistent with applicant’s request … to provide a more clear
explanation regarding the relatedness of the goods,” i.e. “tire bead seating tools, tire
mounting tools; pneumatically operated tire bead seating and inflating machines.”
In its Appeal Brief filed several months later, Applicant took no issue with this
identification of goods. Indeed, the first sentence of Applicant’s Appeal Brief recites
this amended identification of goods verbatim, and Applicant’s Appeal Brief later
discusses “the specific focus of Applicant’s mark on tire installation equipment,
namely, tire bead seating tools, tire mounting tools, and pneumatically operated tire
bead seating and inflating machines.” 6 TTABVUE 4-5.
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However, in its Reply Brief, Applicant cites its Notice of Appeal for the proposition
that it “did not appeal ‘Tire bead seating tools, tire mounting tools.’” 9 TTABVUE 2
(“The goods on appeal are only ‘Pneumatically operated tire bead seating and
inflating machines.”). Effectively, then, Applicant has accepted the refusal to register
its mark in connection with “tire bead seating tools, tire mounting tools,” by not
timely (or ever) appealing the refusal of registration with respect to those goods. And,
according to its Reply Brief, Applicant no longer wishes to challenge the refusal to
register Applicant’s mark for these goods, as it specifically states that Applicant
“abandoned certain goods not on appeal.” 9 TTABVUE 3.
In fact, Applicant never amended its application to delete “tire bead seating tools,
tire mounting tools” therefrom. Cf. Trademark Rules 2.74(a) (“Amendments should
be set forth clearly and completely”) and 2.74(b) (“A request for amendment of an
application must be signed by the applicant, someone with authority to bind the
applicant (e.g. a corporate officer or general partner of a partnership), or a
practitioner qualified to practice under § 11.14 of this chapter ….”). Nevertheless,
because Applicant has not been consistent, or clear about its intentions, and its
Appeal Brief addresses all of the goods in the application (as amended in Applicant’s
November 6, 2017 Office Action response), we address all of the goods in the
application. Cf. Trademark Rule 2.68 (“Written document required. An applicant
may expressly abandon an application by filing a written request for abandonment
or withdrawal of the application, signed by the applicant, someone with legal
authority to bind the applicant (e.g. a corporate officer or general partner of a
Serial No. 87423225
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partnership), or a practitioner qualified to practice under § 11.14 of this chapter ….”).
The result of this appeal is not dependent on whether we consider the putatively
abandoned goods, however. Rather, we affirm the refusal to register as to all of the
goods, including “pneumatically operated tire bead seating and inflating machines.”
II. Applicant’s Evidentiary Objection
Applicant objects to the evidence attached to the December 6, 2017 supplemental
Final Office Action as untimely. Indeed, “[t]he record in the application should be
complete prior to the filing of an appeal.” Trademark Rule 2.142(d).
However, if the nonoffering party does not object to the new evidence and
discusses it or treats it as being of record, it may be considered. TBMP § 1207.03
(2018). Here, although the Examining Attorney introduced the supplemental
evidence in question on the same day Applicant filed its notice of appeal, and more
than four months prior to Applicant filing its Appeal Brief, Applicant did not object
to the evidence in its Appeal Brief. Had it done so, the Examining Attorney would
have had the opportunity to respond to the objection, and explain the circumstances
surrounding the supplemental Final Office Action and accompanying evidence.
Because Applicant did not object to the supplemental evidence until filing its Appeal
Reply Brief, however, the Examining Attorney had no opportunity to respond to the
objection. Furthermore, had Applicant desired to respond to the evidence, it could
have simply filed a request for reconsideration of the supplemental Final Office
Action and done so. Trademark Rule 2.63(b)(3); TBMP § 1204. By the same token, if
the Examining Attorney desired to introduce evidence after Applicant filed its appeal,
she could have requested a remand for that purpose.
Serial No. 87423225
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In any event, because Trademark Rule 2.142(d) is clear and the exception set forth
in TBMP § 1207.03 does not apply because Applicant has not treated the
supplemental evidence as being of record, Applicant’s objection is sustained and we
have not considered the supplemental evidence.
III. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 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. 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.”).
A. Similarity of the Marks
The marks are identical in appearance and sound. There is no evidence of record
regarding the meaning of VIPER in relation to Applicant’s or Registrant’s goods, nor
is there any evidence that the term would have a different meaning when used for
Applicant’s tire-related goods than when used for Registrant’s automobile tires. The
marks therefore also convey the same meaning. As a result, the marks are identical
and create identical overall commercial impressions, and this factor not only weighs
heavily in favor of finding a likelihood of confusion, but also reduces the degree of
Serial No. 87423225
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similarity between the goods required to support a finding of likelihood of confusion.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time
Warner Ent. Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
B. The Goods, Channels of Trade, Classes of Consumers and
Purchasing Conditions
Applicant itself provides evidence which establishes a relationship between
Registrant’s “tires for automobiles” and Applicant’s “pneumatically operated tire
bead seating and inflating machines” (as well as “tire bead seating tools” and “tire
mounting tools”). According to Applicant, “[a]utomobile tires are sold through tire
service centers at retailers like Sears, Costco, Pep Boys and Goodyear … The sale
of automobile tires always includes tire installation by the reseller.” 6 TTABVUE
3 (Applicant’s Appeal Brief at 2) (emphasis added). This tells us two things. First,
buyers of automobile tires include “resellers” thereof, such as “Sears, Costco, Pep Boys
and Goodyear,” which buy and then resell automobile tires to end consumers. Second,
consumers of automobile tire installation equipment include these same tire
resellers, such as “Sears, Costco, Pep Boys and Goodyear,” which “always” provide
tire installation services. In other words, tire “resellers” purchase automobile tires,
such as identified in the cited registration (and resell them to end consumers), and
also purchase automobile tire installation equipment of the type Applicant offers,
including “pneumatically operated tire bead seating and inflating machines” (as well
as “tire bead seating tools” and “tire mounting tools”). Resellers, perhaps including
Sears, Costco, Pep Boys or Goodyear, who may be exposed to Registrant’s VIPER
Serial No. 87423225
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automobile tires, may also encounter Applicant’s “pneumatically operated tire bead
seating and inflating machines” or other tire installation equipment sold under an
identical mark. They could very well believe there to be an affiliation between the
sources of the products, which are used together and sold under identical marks.
In fact, by Applicant’s own admission, its “pneumatically operated tire bead
seating and inflating machines” and other tire installation products sold under the
VIPER mark are used with “tires for automobiles,” specifically to install them. Id. at
3-5 (Applicant’s Appeal Brief at 2-4). The goods are therefore complementary, which
establishes that they are related. See In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); General Mills, Inc. v. Fage Dairy
Processing Industry SA, 100 USPQ2d 1584, 1597-98 (TTAB 2011), judgment set aside
on other grounds, 110 USPQ2d 1679 (TTAB 2014); In re Toshiba Medical Systems
Corp., 91 USPQ2d 1266, 1272 (TTAB 2009).
As for the channels of trade and classes of consumers, Applicant’s focus on profes-
sional tire installers is misplaced. Its goods, as identified in the involved application,
are not limited to particular channels of trade or particular classes of consumers. As
identified, Applicant’s goods include “pneumatically operated tire bead seating and
inflating machines” (as well as tire bead seating and tire mounting tools), without
any limitations. That is, Applicant’s identification of goods does not limit their sale
to professional tire installers. Rather, the goods as identified could also be sold to
ordinary end consumers, including do-it-yourselfers. There is no evidence to support
the contention that Applicant’s goods are only sold to professional tire installers, and
Serial No. 87423225
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in any event that is beside the point, because Applicant’s identification of goods is not
so limited. See e.g., In re Detroit Athletic Co., ___ F.3d ___, 2018 WL 4288981 *7 (Fed.
Cir. Sept. 10, 2018) (“The third DuPont factor – like the second factor – must be eval-
uated with an eye toward the channels specified in the application and registration,
not those as they exist in the real world.”); In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (“It is well established that the Board may
not read limitations into an unrestricted registration or application.”). In fact, we
must focus on Applicant’s identification of services
regardless of what the record may reveal as to the particu-
lar nature of an applicant’s goods, the particular channels
of trade or the class of purchasers to which sales of the [ser-
vices] are directed. Even assuming there is no overlap be-
tween [Applicant’s] and [Registrant’s] current customers,
the Board correctly declined to look beyond the application
and registered marks at issue. An application with ‘no re-
striction on trade channels’ cannot be ‘narrowed by testi-
mony that the applicant’s use is, in fact, restricted to a par-
ticular class of purchasers.

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014). The evidence therefore establishes that automobile tires,
tire installation tools and other automobile tire-related products are offered in the
same channels of trade. See also Office Action of December 1, 2017 (printouts from
“tirerack.com” and “pepboys.com” showing automobile tires and tire installation
equipment being sold on the same retail websites).
As for the classes of consumers, Applicant’s Appeal Brief indicates that tire
resellers/installers such as Sears, Costco, Pep Boys and Goodyear not only “resell”
automobile tires such as Registrant offers, but also install the tires, using tire
Serial No. 87423225
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installation equipment such as Applicant offers. 6 TTABVUE 3-5 (Applicant’s Appeal
Brief at 2-4). In other words, the consumers for Applicant’s goods overlap with the
consumers for Registrant’s goods. Moreover, there is no evidence that tire
resellers/installers have different purchasing agents for tire installation equipment
than for tires. Therefore, Applicant’s argument that the purchasing conditions are
different for its goods than for Registrant’s goods is not well taken.
Our findings on these points should not be surprising, as we have previously, on
numerous occasions, found tires related to other vehicle-related products less similar
to tires than Applicant’s tire installation equipment, albeit on different records. See
e.g., In re Mitsubishi Jidosha Kogyo Kabushiki Kaisha, 19 USPQ2d 1633, 1635 (TTAB
1991) (“ordinary consumers would ascribe tires and automobiles which are sold under
essentially the same mark to the same source”); In re Engine Supply, Inc., 225 USPQ
216, 218 (TTAB 1985) (“we are guided here by a line of cases which have held
automotive parts and accessories to be goods of a type which are frequently purchased
through common trade channels, including dealers, service stations, automotive
accessory and supply stores, and automotive departments of general merchandisers
… [T]ires and engines and transmissions for motor vehicles are likely to travel in at
least some of the same trade channels”) (citing cases); U.S. Cycle Corp. v. The Tire &
Battery Corp., 219 USPQ 1021, 1023 (TTAB 1983) (“use of the mark ‘ESPRIT’ by
respondent on its automobile tires is inimical to petitioner’s superior right to use the
mark ‘ESPRIT’ on batteries, and motorcycle parts and accessories”). See also, In re
Delbar Products, Inc., 217 USPQ 859, 861 (TTAB 1981) (“While it is clear that
Serial No. 87423225
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applicant’s vehicle mirrors and registrant’s automobile parts are specifically different
products, nevertheless they both comprise automotive parts and accessories which
could be purchased through the same channels of trade including dealers, service
stations, automotive accessory and supply stores and outlets by the same classes of
purchasers such as mechanics, dealers and even some motorists … Since these
products are sold under virtually the same mark, it is likely that they would
mistakenly be attributed to the same source.”) and In re Magic Muffler Service, Inc.,
184 USPQ 125, 126 (TTAB 1974) (“Mufflers and automotive motors, although
different, nevertheless comprise automotive parts and accessories which, as argued
by the examiner, could be purchased through the same trade channels ….”). In short,
here,
[n]otwithstanding applicant’s efforts to distinguish
between the goods here involved and there are differences
between them, they all nevertheless comprise automotive
parts, equipment, and accessories which are made
available in automotive departments of general
merchandisers or in specialty automotive retail outlets for
sale to the same class of general purchasers, namely,
vehicle owners and vehicle repair personnel. Under
these circumstances, it is not unreasonable to assume that,
if these purchasers or prospective purchasers were to
encounter these products under the same [VIPER] mark,
they would mistakenly believe that the goods originate
with or are, in some way, associated with the same
producer.

In re Uniroyal, Inc., 177 USPQ 29, 30-31 (TTAB 1973) (emphasis added).
C. Strength of the Cited Mark
Applicant’s argument that the cited mark is weak is unavailing. While Applicant
introduced with its November 6, 2017 Office Action response a list of registrations for
Serial No. 87423225
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marks which include the word VIPER, mere lists are not probative of commercial or
conceptual weakness. In re Jump Designs, LLC, 80 USPQ2d 1370, 1372 (TTAB
2006).3 In any event, even if Applicant had properly introduced the registrations, the
question is whether VIPER is commonly used for the goods in the cited registration,
or related goods. See In re i.am.symbolic, 123 USPQ2d at 1751-52 (“Symbolic has not
pointed to any record evidence to support a finding that multiple third parties use
the mark I AM for the listed goods in its class 3 and 9 applications.”); In re Inn at St.
Johns, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018); Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“The rel-
evant du Pont inquiry is ‘[t]he number and nature of similar marks in use on similar
goods’ … It is less relevant that ‘Century is used on unrelated goods or services such
as ‘Century Dental Centers’ or ‘Century Seafoods.’”) (quoting Weiss Assocs. v. HRL
Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)). There is no evidence
or even argument that VIPER is commonly used for tire-related goods or services.
IV. Conclusion
The marks are identical in appearance, sound, meaning and overall commercial
impression. The record and Applicant’s concessions establish that the goods are
related, and that their channels of trade and classes of consumers overlap. We
therefore find a likelihood of confusion between Applicant’s mark VIPER for
“pneumatically operated tire bead seating and inflating machines” (and “tire bead

3 Applicant’s introduction of the actual registrations for the first time with its Appeal Brief
was too late. Trademark Rule 2.142(d). These registrations have not been considered.
Serial No. 87423225
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seating tools” and “tire mounting tools”) and Registrant’s identical mark for
automobile tires.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.