Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MITSUBISHI JIDOSHA KOGYO KABUSHIKI KAISHA
Serial No. 73/672,777
May 2, 1991
Lawrence E. Abelman of Abelman, Frayne, Rezac & Schwab for applicant
Trademark Senior Attorney
Law Office 9
(Sidney Moskowitz, Managing Attorney)
Before Rooney, Simms and Seeherman
Opinion by Seeherman
Mitsubishi Jidosha Kogyo Kabushiki Kaisha has appealed the Examining Attorney's refusal to register SIGMA for automobiles and their structural parts. [FN1] Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground that applicant's mark for its goods so resembles the mark SIGMA with Sigma design, depicted below and registered for tires, [FN2] as to be likely to cause confusion or mistake or to deceive.
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We affirm the refusal.
There is no issue that the marks are substantially the same and convey the same commercial impression. Indeed, applicant has conceded that the marks are identical.
Applicant does argue, however, that SIGMA is a weak mark which is entitled to a narrow ambit of protection because it is the full spelling of a letter of the Greek alphabet and Greek letter marks are in common usage. We are not persuaded by this argument. Applicant has failed to submit any evidence in support of the proposition that SIGMA is in common use, such that consumers would assume that virtually identical SIGMA marks represented different sources if they were used on related goods. We note that applicant has made of record certain third-party registrations for marks comprising or containing the word SIGMA, but such registrations do not prove the marks are in use and that consumers are familiar with them. Moreover, these registrations differ from the cited mark in terms of the marks and/or goods, and SIGMA appears to be an arbitrary mark for automobiles and consumer-purchased automobile parts.
Turning to the goods, it is well established that goods need not be similar or competitive, or even move through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1986).
Applicant has conceded that tires and automobiles are complementary goods, a relationship which is obvious in that tires are an integral part of an automobile. Nor does applicant contest that they travel in the same channels of trade, and are sold to the same purchasers. Applicant argues, however, that tires and automobiles are historically and commercially unrelated as to source, and that these goods coexist under the same marks in the marketplace, and that as a result purchaser confusion is unlikely.
*2 Applicant has submitted articles taken from the NEXIS data base which indicate that in 1900 Harvey Firestone started Firestone Tire & Rubber to produce rubber tires, and in 1906 Firestone marketed 2,000 sets of his newly developed pneumatic tires to the fledgling Ford Motor Co. Applicant has also submitted excerpts, including advertisements and portions of articles from periodicals such as "Car and Driver" (October 1989), "Automobile Magazine" (October 1989), "Tire Review" (November 1985), "Road & Track" (October 1989) and "Consumer Guide", Auto Series (undated). It appears from a review of all of these excerpts, some of which refer to automobiles and automobile brands, and some of which refer to tires and tire brands, that the same or similar marks are listed for both products. Finally, applicant has made of record copies of third-party registrations indicating several instances where different entities own a particular mark, one entity having registered it for automobiles and another for tires.
This Board held in In re Jeep Corp., 222 USPQ 333 (TTAB 1984) that there was such a close relationship between "land vehicles and structural parts therefor" and "pneumatic tires" that the use by different parties of the same mark for these goods is likely to cause confusion or mistake or to deceive. In that decision the Board cited various other cases in which likelihood of confusion has been found in the use by different parties of the same or similar marks for automotive parts, accessories and equipment, including tires, as well as other cases in which likelihood of confusion was found in such use on vehicles, on the one hand, and for various vehicle parts or accessories, including tires, on the other. In In re Honda Giken Kogyo Kabushiki Kaisha, (S.N. 542,191 (TTAB May 12, 1988), [FN3] we had occasion to revisit the Jeep decision, and we reiterated our conviction that our decision in In re Jeep Corp. was correct.
The present case presents us with yet another opportunity to examine the relationship between tires and automobiles, and again we follow the precedent of In re Jeep Corp., and find that applicant's automobiles and their structural parts are sufficiently related to registrant's tires that the use of the mark SIGMA on both parties' goods is likely to cause confusion.
We stated in In re Honda Giken Kogyo Kabushiki Kaisha that
purchasers of automobiles and of tires in the United States today run the gamut from the car aficionado to the person who regards a car as an essential for transportation, but has no knowledge whatsoever as to its mechanical workings. The latter person, who falls into the category of the ordinary consumer, is often content to take his or her car to one dealer or service station for all necessary servicing. . . .Nor, in our view, is this ordinary consumer likely to know of the separation between vehicles and tires in the picture of the marketplace depicted by applicant. Instead, such a consumer, when offered, for example, an "ELDORADO" tire for his or her "ELDORADO" automobile, is likely to assume that the tires and vehicle emanate from or are associated with the same source, which is the relevant test under Section 2(d).
*3 We would add that neither the expense of an automobile, nor the need for safety in both an automobile and tires, would avoid the likelihood of confusion. While the purchasing process, and the time such a purchase requires, might lead the consumer to note the trademark, and therefore to distinguish it from other similar trademarks, in the present case we are dealing with virtually identical marks. Even careful examination is not likely to indicate to purchasers that SIGMA and SIGMA and Sigma design are marks of different entities. Further, because the ordinary consumer would assume that automobiles and tires bearing the same mark came from the same source, there would be no reason for them to make the inquiries about manufacturers that applicant suggests. See Tiffany & Co. v. Classic Motor Carriages, Inc., 10 USPQ2d 1835 (TTAB 1989).
The evidence submitted in the present case by applicant does not alter our opinion that ordinary consumers would ascribe tires and automobiles which are sold under essentially the same mark to the same source.
With respect to applicant's argument that automobiles and tires are historically unrelated, we are not persuaded by the limited evidence taken from the NEXIS data base that originally all automobile tires and automobiles came from separate sources. However, even if the few articles regarding Henry Ford's and Harvey Firestone's endeavors were sufficient to convince us on this point, they are not sufficient to demonstrate that the consuming public would be aware of this historical development.
As for applicant's argument that at the present time the goods are commercially unrelated, again we are not persuaded of this by the evidence of record. While the advertisements and excerpts from the various periodicals list the same or similar trademarks for automobiles and tires, we have no way of knowing what licenses or other agreements may exist between the respective users of the marks, or under what circumstances the marks are used, or what effect such use may have had on the purchasing public. See In re Jeep Corp., supra at 337. In connection with the last point, we note that the excerpts are all taken from specialized periodicals such as "Car and Driver" and "Tire Review." While automobile enthusiasts and others to whom these publications are directed may know that tires and automobiles come from different sources, there is no evidence that the "ordinary consumer," as discussed in In re Honda Giken Kogyo Kabushiki Kaisha, would have such knowledge.
As for the third-party registrations' showing ownership by different entities of essentially the same marks for tires and automobiles, we cannot regard these registrations as reflecting a Patent and Trademark Office recognition that there is no likelihood of confusion if the same mark is used on automobiles and tires. We have no way of knowing what the circumstances were under which the later-filed applications were accepted; for example, the prior registrants may have consented to the registrations. Apart therefrom, it is noted that the Board is not bound by the findings of the Examining Attorneys. More to the point are the many cases (discussed in In re Jeep Corp.) in which automobiles and automobile parts, including tires, have been found to be related; cases which belie applicant's assertion regarding Patent and Trademark Office practice.
*4 Finally, applicant argues that because it owns a registration for GALANT with the letter Sigma design, shown below, [FN4]
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purchasers familiar with applicant's automobiles sold under this mark would assume that its applied-for SIGMA for automobiles and their structural parts indicated the same source. Applicant has provided no evidence in support of this contention and, in our view, the marks GALANT with Sigma design and SIGMA do not convey the same commercial impression.
Decision: The refusal to register is affirmed.
R. L. Simms
L. E. Rooney
E. J. Seeherman
FN1. Application Serial No. 73/672,777, filed July 17, 1987, pursuant to Sections 44(d) and 44(e) of the Trademark Act.
FN2. Registration No. 998,427, issued November 19, 1974; Section 8 affidavit accepted; Section 15 affidavit received.
FN3. The Examining Attorney provided a copy of this unpublished decision to applicant during the course of examining the application, and both applicant and the Examining Attorney have referred to the decision in their briefs. Accordingly, we have considered this opinion in our discussion of the present case.
FN4. Registration No. 1,484,191, issued April 12, 1988.