TTAB Test: Are "TOKYO MOTORS" And "TOKYO RODS" Confusable For Retail Auto Parts Services?
David Becklean applied to register the mark TOKYO MOTORS for "business services, namely, retail store services featuring automobile parts, accessories, and aftermarket parts" [MOTORS disclaimed], but the USPTO refused registration, finding the mark likely to cause confusion with the registered mark TOKYO RODS for "online retail and wholesale store services featuring Japanese automobile parts and accessories; advertising of Japanese automobiles and parts for Japanese automobiles for others via the Internet; providing Japanese automotive information via a global computer network relating to vehicles for sale and vehicle parts and accessories" [RODS disclaimed]. How would you rule? In re Becklean, Serial No. 85748394 (November 13, 2014) [not precedential].
The Board agreed with Examining Attorney Charles L. Jenkins, Jr., that TOKYO is the dominant part of each mark, and that consumers will focus on that word as the first part of each mark. The Board did not buy applicant's arguments that the two marks create very different commercial impressions: "while 'rods' may conjure the term hotrod' or a vehicle modified for speed, the mark TOKYO RODS remains suggestive of a retail automotive parts and accessories source, albeit one with an emphasis on Japanese cars and performance. Likewise, Applicant’s TOKYO MOTORS will be understood by consumers as indicating a retail source for Japanese automobile parts and accessories."
And so the Board found the marks to be very similar in sound, appearance, and meaning.
Applicant "curiously" argued that "the relevant field is crowded with registered marks utilizing the term 'MOTORS' for retail services related to sales of automobiles and automobile parts and accessories." That argument actually supported the refusal, but the Board already decided that TOKYO is the dominant part of each mark.
Applicant's services are broad enough to encompass those of the cited registration. Moreover, third-party use-based registrations showed that both "retail" and "online retail" store services featuring automotive parts and accessories may be offered under the same mark.
The Board therefore affirmed the refusal.
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Text Copyright John L. Welch 2014.