Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE GENERAL MOTORS CORPORATION
Serial No. 73/798,607
January 15, 1992
Lawrence E. Abelman of Abelman, Frayne, Rezac & Schwab for applicant.
Ellen A. Rubel
Trademark Examining Attorney
Law Office 13
(Craig Morris, Managing Attorney)
Before Sams, Cissel and Hohein
Opinion by Hohein
An application has been filed by General Motors Corporation to register the mark "GRAND PRIX" for "automobiles." [FN1]
Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the mark "GRAND PRIX," when applied to applicant's goods, so resembles the following marks, owned by the same registrant (TBC Corporation) for various automotive products, as to be likely to cause confusion, mistake or deception: (i) "GRAND PRIX" and design, as shown below, for "automobile tires"; [FN2]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
(ii) "GRAND PRIX" for "motor vehicle parts--namely, wheels"; [FN3] (iii) the identical mark for "motor oil" and "filters and oil filters for land vehicles and shock absorbers"; [FN4] (iv) "GRAND PRIX RADIAL G/T" and design, as illustrated below, for "automotive vehicle tires"; [FN5]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
(v) "GRAND PRIX" and design, as reproduced below, for "mufflers and brake parts for automotive vehicle[s]"; [FN6]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
and (vi) the same mark for "automobile parts, namely, drive shafts, boots and velocity joints". [FN7]
In attempting to overcome the refusal to register, applicant has submitted a definition from Webster's Third New International Dictionary (1976) which defines "grand prix" at 988 as "an international long-distance auto race over a tortuous course"; portions of articles from the October 1989 edition of Road & Track magazine concerning the Canadian Grand Prix and the French Grand Prix; excerpts from Mead Data Central's NEXIS(R) data base relating to several magazine and newspaper stories about Grand Prix racing; a list of various third-party registrations which consist of or include the term "GRAND PRIX"; [FN8] and a list of other registrations by different parties for the same or appreciably similar marks for automobiles and automotive products. [FN9] Applicant has also furnished, inter alia, pages from T. Bonsall, PONTIAC: The Complete History 1926-1986 (1985); [FN10] pages from J. Gunnall, 75 Years Of Pontiac-Oakland (1982); [FN11] a pamphlet entitled "Highlights of Grand Prix History," which describes each year's model(s) from 1962 to 1988 and includes yearly production figures through 1987; articles from NEXIS(R) featuring magazine and newspaper stories which mention or discuss applicant's "GRAND PRIX" automobiles; a 1990 Pontiac catalog advertising such cars; an advertisement from the December 1989 edition of Road & Track magazine for applicant's "Turbo Grand Prix" automobiles; pages from the January 1990 edition of Car and Driver magazine referring to two versions of such cars; a reprint of a 1964 advertisement for applicant's "GRAND PRIX" automobiles; affidavits from both a trademark attorney on applicant's legal staff and the director of public relations for its Pontiac Division attesting to the absence of any incidents of actual confusion; and pages from the March 1990 edition of Automotive News listing applicant's "GRAND PRIX" sales figures for the years 1988 and 1989. [FN12]
*2 Applicant contends that in light of the above evidence, this case should not be approached simplistically as a matter of identical marks being used in connection with closely related goods. Rather, when certain facts and circumstances are considered, applicant maintains that there is no likelihood of confusion. Specifically, applicant asserts that the coexistence in the marketplace of its mark and registrant's mark for nearly thirty years without any instances of actual confusion, the fame of its mark and the mark's longstanding association with applicant, the highly suggestive nature of the "GRAND PRIX" mark, the registrations of the same marks for automobiles and automotive products, and the marketing realities of the automobile and the replacement parts industries all support a finding that confusion is not likely in this case.
The Examining Attorney, however, contends that there is a likelihood of confusion since the respective marks are either identical or highly similar, the respective goods are closely related and the same commercial impression is created when the marks are applied to the goods. According to the Examining Attorney, the Board has consistently found a likelihood of confusion to exist where, as here, there is contemporaneous use of the same or similar marks for vehicles, on the one hand, and their parts or tires, on the other. See, e.g., In re Jeep Corp., 222 USPQ 333 (TTAB 1984) ["LAREDO" for land vehicles and structural parts therefor vs. "LAREDO" for pneumatic tires]; In re General Motors Corp., 196 USPQ 574 (TTAB 1977) ["STARFIRE" for motor vehicles-- namely, automobiles vs. "STARFIRE" for automotive shock absorbers]; In re Sien Equipment Co., 190 USPQ 84 (TTAB 1976) ["BRUTE" for custom fabrication services for mine vehicles vs. "BRUTE" for material handling equipment--namely, lumber grapples, cranes, hoists, etc.]; and Jetzon Tire & Rubber Corp. v. General Motors Corp., 177 USPQ 476 (TTAB 1973) ["GEMINI" and "GMINI" for automobiles v. "GEMINI" for vehicle tires].
Applicant, in reply, complains that of the checklist of factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), for determining whether a likelihood of confusion exists, the Examining Attorney has considered pertinent only the similarities of the marks and the goods and has ignored such other significant factors as "[t]he conditions under which and buyers to whom sales are made, i.e., 'impulse' vs. careful, sophisticated purchasing," "[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion" and "[a]ny other established fact probative of the effect of use," including the high degree of suggestiveness of the "GRAND PRIX" mark as applied to automobiles and their replacement parts. As correctly pointed out by applicant, the court in du Pont indicated that no one factor is necessarily to be accorded greater evidentiary weight; rather, each case must be decided on its own facts and circumstances:
*3 We find no warrant, in the statute or elsewhere, for discarding any evidence bearing on the question of likelihood of confusion. Reasonable men may differ as to the weight to give specific evidentiary elements in a particular case. In one case it will indicate that confusion is unlikely; in the next it will not. .... In every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely. ....
In re E.I. du Pont de Nemours & Co., supra at 567-68.
First of all, however, we agree with the Examining Attorney that the respective goods must be considered to be closely related. Although applicant acknowledges that the Patent and Trademark Office has, in the past, held automobiles and automotive replacement parts to be commercially related products, applicant asserts that "one of the more interesting paradoxes of the automotive industry" is that major manufacturers of automobiles do not generally market the replacement parts they manufacture under the same trademarks which are used to identify and distinguish the cars and trucks they produce. The reason for such practice, according to applicant, is that replacement parts are frequently manufactured to be used in a variety of vehicles and, thus, a company would not want purchasers to assume that they may only buy the same brand of replacement parts for a particular make or model of vehicle. Applicant insists that purchasers of automobiles, being technically sophisticated and discriminating, are aware of this industry-wide practice.
Applicant's attempt to deprecate the relationship between automobiles and their replacement parts is not supported by the record. Moreover, the Examining Attorney notes that as stated by the Board in In re Sien Equipment Co., supra at 85:
Applicant's argument ... overlooks the well-established fact that manufacturers of vehicles also produce accessories and attachments for these goods and market them under the same mark. This has been recognized by the fact that it has consistently been held over the years that there is such a definite relationship between a vehicle and the various accessories, parts, and attachments therefor in the mind of the average person that the marketing thereof by different parties under the same or similar marks is likely to cause confusion as to source. [Citations omitted.]
While we agree with applicant that, in view of the substantial cost of a new automobile, the consumer typically makes a purchasing decision based on style, performance and price rather than on impulse or whim, it is not necessarily the case that the same degree of sophistication and discrimination is applied to the selection of replacement parts, particularly in light of the disparity in cost when compared to the purchase price of the vehicle itself. As the Board observed in In re General Motors Corp., supra at 575-76:
*4 While it may be true that no prospective purchaser would assume that applicant's "STARFIRE" vehicles are manufactured or sold by the owner of the cited registration, which identifies its automotive shock absorbers by the mark "STARFIRE", nevertheless, the converse is not true. Prospective purchasers who see applicant's "STARFIRE" mark on automobiles or in advertising may assume that a replacement part such as an automotive shock absorber sold under the identical mark "STARFIRE" was manufactured or approved by applicant, or even that it was particularly made by applicant especially for its "STARFIRE" vehicle, and that the responsibility for the quality of the replacement part resides with applicant rather than with the true owner of the registered "STARFIRE" mark. This type of confusion or mistake falls within the prohibition of Section 2(d) of the Trademark Act.
Applicant's reliance on "numerous identical or virtually identical trademarks," which are owned by different parties for both motor vehicles and various replacement parts therefor, as establishing that the Patent and Trademark Office "has consistently registered identical and virtually identical trademarks for both automobiles and related automotive type products because the likelihood of purchasers being confused in these circumstances is de minimis" is not well founded. On the one hand, the authority cited immediately above, as well as the cases of In re Jeep Corp., supra, and Jetzon Tire & Rubber Corp. v. General Motors Corp., supra, plainly contradict applicant's position. On the other hand, it is well settled that third-party registrations are not evidence that the registered marks are in use. [FN13] Furthermore, and in any event, it is noted that many of the third-party marks contain elements which serve to distinguish them from their otherwise similar counterparts.
We also concur with the Examining Attorney that, as applied to applicant's and registrant's goods, the marks involved in this appeal create the same commercial impression. Nevertheless, unlike the situations in Jeep, General Motors and Jetzon, which involved arbitrary marks, the present case relates to a highly suggestive mark. As emphasized by applicant, the term "GRAND PRIX" "connotes an image of speed, high performance, and excellence--the qualities necessary to win a 'Grand Prix' race," when used in connection with automobiles and their replacement parts. Given this suggestiveness, we believe that as applied to such goods, the mark "GRAND PRIX" should be accorded a more narrow scope of protection than arbitrary or fanciful terms like "LAREDO," "STARFIRE" and "GEMINI". [FN14] See, e.g., Plus Products v. Redken Laboratories, Inc., 199 USPQ 111, 116-17 (TTAB 1978) and cases cited therein at 117. Because of the inherent weakness in a laudatory, highly suggestive mark such as "GRAND PRIX," [FN15] we think that when this factor is considered in conjunction with the relative fame of applicant's mark and the coexistence thereof with registrant's mark for nearly thirty years without applicant's becoming aware of a single instance of actual confusion, the conclusion is compelling that confusion is not likely to occur.
*5 Applicant has submitted evidence sufficient to demonstrate that for automobiles, its "GRAND PRIX" mark has achieved a degree of renown. Besides sample advertisements and representative stories which mention or discuss applicant's "GRAND PRIX" automobiles, the record reveals that during a 28-year period, 2,695,434 of such cars were produced by applicant. Beginning with 30,195 automobiles in the 1962 model year, production has ranged from a low of 16,542 vehicles in 1987 to a high of 288,430 vehicles in 1977, with sales of 107,500 automobiles in 1989. In this nearly 30-year era, production of between 50,000 and 100,000 "GRAND PRIX" cars was accomplished 12 times; production of between of 100,000 and 200,000 was reached six times; and production in excess of 200,000 vehicles was achieved four times. Only on six occasions has production been fewer than 50,000 cars annually, including the all-time low set in 1987. [FN16] The total production figures are significant since they reflect the long-term availability of "GRAND PRIX" automobiles in the marketplace and resulting familiarity of the purchasing public with them. Sales and advertising thereof, it additionally appears, have been continuous and national in scope. Given such prominence, and the consequential renown achieved by applicant's "GRAND PRIX" automobiles over a period of approximately 30 years, it seems highly probable that at least one instance of confusion with registrant's "GRAND PRIX" replacement automotive parts would have occurred. Yet, according to the affidavits submitted by applicant, not one incident of actual confusion has been reported.
We note in this regard that in her affidavit, Judith A. Zakens states that she is an attorney employed by applicant's legal staff in the trademark area of practice; that she has been affiliated with applicant for 19 years; that as part of her duties, she has handled complaints of trademark infringement against applicant, with documents relating thereto being maintained under her control; and that based upon the records available to her, "in the more than 27 years that TBC Corporation's GRAND PRIX for various automotive parts and Pontiac Motor Division's GRAND PRIX for motor vehicles have coexisted in the marketplace, TBC [Corporation] has not complained to General Motors Corporation about any customer confusion". Similarly, Edward S. Lechtzin avers in his affidavit that he is the director of public of relations of applicant's Pontiac Division; that he has been affiliated with applicant for 12 years and with the Pontiac Division for one year; and that, to the best of his knowledge and belief: (i) "in the 27 years that PONTIAC GRAND PRIX vehicles have been sold in the marketplace, no consumer has contacted Pontiac Division, General Motors Corporation, requesting information about TBC Corporation's GRAND PRIX products"; (ii) "in over 27 years, no one at Pontiac Division, General Motors Corporation, has been asked whether a buyer should use these TBC GRAND PRIX products with their [sic] GRAND PRIX automobile"; and (iii) "Pontiac Division, General Motors Corporation, has received no inquiry in those years concerning TBC Corporation's GRAND PRIX products".
*6 We recognize, of course, that the above is one-sided inasmuch it provides only applicant's experience in the marketplace and not that of registrant. Normally, in the absence of a detailed consent agreement, the registrant has no opportunity to be heard in an ex parte proceeding of this type and the Board, therefore, is not in a position to meaningfully assess whether the claimed period of contemporaneous use has provided ample opportunity for confusion to have arisen. See, e.g., In re Jeep Corp., supra at 337. The asserted absence of actual confusion, especially over a relatively short period of years, has thus often been asserted to be of "limited influence" or of "dubious probative value". See, e.g., In re Barbizon International, Inc., 217 USPQ 735, 737 (TTAB 1983) and In re Whittaker Corp., 200 USPQ 54, 56 (TTAB 1978), respectively.
In the present case, however, we have a confluence of facts which persuasively point to confusion as being unlikely. Specifically, during a nearly thirty-year interval of sustained success in the marketing of what, for the average consumer, is typically a major and expensive purchase, applicant has experienced no reported instances of actual confusion between its use of "GRAND PRIX" in connection with almost 2.7 million automobiles and registrant's use of its "GRAND PRIX" marks for related automotive replacement parts. The absence of any known incident of actual confusion in an extensive period of contemporaneous use of the marks is strong evidence that confusion is not likely to occur in the future. See In re American Management Associations, 218 USPQ 477, 478 (TTAB 1983). Moreover, the lack of any reported instance of actual confusion is particularly significant given registrant's expansion under its "GRAND PRIX" marks from automobile tires to such replacement parts as motor vehicle wheels, motor oil and oil filters, other filters and shock absorbers for land vehicles, mufflers and brake parts for automotive vehicles, and automobile drive shafts, boots and velocity joints. The opportunities for confusion to occur consequently have been steadily increasing over the years but, according to the affidavits from individuals seemingly in the best position to learn of the occurrence of actual confusion, applicant has not experienced such confusion. [FN17] In view thereof, and in light of the notoriety of its mark and the highly suggestive nature of the term "GRAND PRIX" as applied to the respective goods, we are constrained to agree with applicant that, on this record, contemporaneous use of the mark "GRAND PRIX" for applicant's automobiles and of various "GRAND PRIX" marks for registrant's automotive replacement parts is not likely to cause confusion as to origin or affiliation.
Decision: The refusal to register is reversed.
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 73/798,607, filed on May 8, 1989, which alleges dates of first use of December 31, 1962.
FN2. Reg. No. 690,249, issued on December 22, 1959, which sets forth a date of first use anywhere of February 13, 1959 and a date of first use in commerce of March 17, 1959; renewed.
FN3. Reg. No. 1,075,901, issued on October 25, 1977, which sets forth dates of first use of November 6, 1975; affidavit § 8 accepted.
FN5. Reg. No. 1,164,594, issued on August 11, 1981, which sets forth dates of first use of March 3, 1980; combined affidavit §§ 8 and 15 accepted. The terms "RADIAL G/T" are disclaimed.
FN6. Reg. No. 1,224,147, issued on January 18, 1983, which sets forth dates of first use of November 5, 1981; combined affidavit §§ 8 and 15 accepted.
FN7. Reg. No. 1,461,819, issued on October 20, 1987, which sets forth dates of first use of November 4, 1986.
FN8. While most of the registrations are for automobile races held in different locales, one of the registrations is for both "automotive gasoline" and "gasoline service station services" while another is for "bicycles".
FN9. Of particular interest is that applicant is shown to have a registration for the mark "RIVIERA" for "motor vehicles: namely, automobiles, engines therefor, and structural parts thereof" while another party has a registration for the identical mark for "motor vehicle tires" and a third party has a registration for the same mark for "bicycles".
FN10. Among other things, it is indicated therein that, for 1962, "[t]he biggest news by far with the standard Pontiacs was the introduction of the first Grand Prix" by applicant's "Pontiac Motor Division". Id. at 110.
FN11. It appears from another source of record that the title "refers to ... not only Pontiacs, but its sister car, the discontinued Oakland, both of which can trace their bloodlines to the 1890s and the Pontiac Buggy Co. of Pontiac, Mich. Later known as the Oakland Motor Car Co., by 1909 it had become part of General Motors. In 1926 the Pontiac re-emerged as a separate car with such success that its Oakland parent was dropped from the GM line six years later". L.A. Times, May 17, 1990, § J (Ventura County Life), at 18, col. 1.
FN12. While sales are not the same as production figures, the number of cars sold nevertheless reflects that at least that many automobiles were produced.
FN13. As stated in AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973), "little weight is to be given such registrations in evaluating whether there is likelihood of confusion. The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive."
FN14. As explained in Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958):
It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case.
FN15. We note in this regard that as applied to automobile tires, the mark "GRAND PRIX" has been held to be a weak mark. Tire & Battery Corp. v. Guldalian, 206 USPQ 320, 322-23 (C.D.Calif.1980). Tire & Battery Corp., we further note, is a former name for registrant, TBC Corporation, according to the information contained in some of the cited registrations.
FN16. Sales rebounded to 113,216 cars in 1988.
FN17. If, however, registrant's experience regarding reported instances of actual confusion has been different, or if it otherwise believes that it will be damaged by registration of applicant's mark, registrant may, of course, file an opposition pursuant to Section 13(a) of the Trademark Act, 15 U.S.C. § 1063(a).