Road Ranger, L.L.C.

Trademark Trial and Appeal Board

Jul 2, 2013

No. 77672184 (T.T.A.B. Jul. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Road Ranger, L.L.C.
_____

Serial No. 77672184
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Daniel E. Kattman of Reinhart Boerner Van Deuren P.C.,
for Road Ranger, L.L.C.

Andrea P. Butler, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Bucher, Grendel and Ritchie,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Road Ranger, L.L.C. (“applicant”) seeks registration on the Principal Register of the
mark HORSEPOWER (in standard character format) for “gasoline” in Int. Class 4.1
The examining attorney has refused registration of applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that registration
would lead to a likelihood of confusion in view of the goods recited in Reg. No. 3509200

1 Application Serial No. 77672184 was filed on February 17, 2009, under Section 1(b) of the
Trademark Act based upon applicant’s allegation of a bona fide intention to use the mark in
commerce.
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for the mark Q HORSEPOWER (also in standard character format) for “motor oil,
engine oils, fuel oil” in International Class 4.2
Applicant requested reconsideration of the final action, which request the
examining attorney denied. Applicant then appealed and simultaneously filed a second
request for reconsideration. After the examining attorney denied the second request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Preliminary Matters
With its appeal brief, applicant submitted for the first time printouts from an
online retail website belonging to Walmart as well as a photograph of the applicant’s
gas station and gas pumps (Exhibits A and C attached to applicant’s brief). In its
brief, applicant referred to these exhibits in support of the conclusion that gasoline
is not found on a retail store shelf in small containers next to containers of motor oil or
engine oils.
However, the record in an application should be complete prior to the filing of an
appeal. 37 C.F.R. § 2.142(d); TBMP §§ 1203.02(e), 1207.01. Because applicant’s new
evidence was untimely submitted, the examining attorney has requested that we
disregard this evidence. See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB
2011); In re Giovanni Food Co., 97 USPQ2d 1990, 1990-91 (TTAB 2011); and In re
Van Valkenburgh, 97 USPQ2d 1757, 1768 n.32, 1769 (TTAB 2011).
Accordingly, we have not considered these exhibits or any of applicant’s arguments
based thereon.

2 Registration No. 3509200 issued on September 30, 2008.
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Applicable Law on Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based upon an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest. Enters., Inc.,
50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
Applicant has applied to register the mark HORSEPOWER. The registered mark
is Q HORSEPOWER. In comparing the marks, we must consider the marks in their
entireties as to appearance, sound, connotation and commercial impression, to
determine the similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692.
The test, under the first du Pont factor, is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as to
the source of the goods offered under the respective marks is likely to result. The focus
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is on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant argues that the common element shared in its mark and the cited
registration, the word “Horsepower,” is a weak and descriptive term when used in
connection with the identified goods, and that the examining attorney has incorrectly
relied upon “a quantitative count of letters” when comparing the respective marks.
Applicant takes the position that the examining attorney has failed to consider the
dominance of the letter “Q” given that it is Quaker State’s famous house mark.
Applicant has introduced into the record copies of documents from the proceeding in
which registrant was successful in obtaining the cited
Q HORSEPOWER registration. At right is a reproduction of
registrant’s involved specimen of record. Furthermore, when
registrant was prosecuting the cited registration, in order to
overcome a refusal based upon an earlier registered mark,
LIQUID HORSEPOWER, Quaker State argued on July 23, 2007, as follows:
… Applicant’s mark contains the fanciful letter Q, a
distinctive, arbitrary element of the famous QUAKER
STATE family of marks, which have been in use in
association with lubricating oils and greases, fuel … oils …
and straight refined gasoline …” since May 12th, 1933 and
registered since June 30th, 1936 …
According to applicant, consumers should be able easily to distinguish
registrant’s mark from other composites containing the word “Horsepower” given
the dominance of its leading, famous letter “Q.” Moreover, by including copies of the
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following properties in the record, applicant emphasizes the importance of the “Q” logo
as a house mark for the Pennzoil-Quaker State Company in connection with motor oils:
Q3
4 5 6

By contrast, the examining attorney contends that the connotations and
commercial impressions of the respective marks are highly similar and that applicant’s
deletion of registrant’s house mark does not sufficiently distinguish the marks. As to
applicant’s arguments that the cited mark is weak, the examining attorney counters
that applicant’s mark and registrant’s mark are the only marks having the word
“Horsepower” registered in connection with gasoline and motor oil or engine oils; that
the marks are nearly identical; that applicant’s mark does not contain any additional
indicia that would distinguish it from the registrant’s mark; and that even an arguably
weak mark is entitled to protection against the registration by a subsequent user of a
similar mark for closely-related goods.
It is true that the only difference between the marks is the letter “Q” in the cited
registration. And while applicant claims the word “Horsepower” (consisting of the

3 Registration No. 0627236 issued on May 26, 1956; third renewal.
4 Registration No. 3240337 issued on May 8, 2007.
5 Registration No. 3510151 issued on September 30, 2008.
6 Registration No. 4149631 issued on May 29, 2012.
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entirety of applicant’s mark) is “weak” for engine fuels and oils, as the examining
attorney points out, the federal trademark register does not support this conclusion.
Applicant and the examining attorney seem to be in agreement on one point –
specifically, the significance of this particular du Pont factor in determining the
outcome herein. Where they disagree is which section of TMEP § 1207.01(b)(iii) should
be applied to the case at bar, namely, whether likelihood of confusion is or is not
avoided between otherwise confusingly similar marks by applicant’s deleting what
applicant characterizes as registrant’s distinctive house mark.
As to appearance, sound, meaning and overall commercial impression, we begin
with the fact that the cited registration, Q HORSEPOWER, is registered in standard
characters. Hence, the similarities are significant. As noted above, there is no evidence
from third party registration or usage that the term “horsepower” is weak in the field of
petroleum products in International Class 4. While registrant has indeed taken the
position in its earlier application that the letter “Q” is famous and hence a dominant
portion of this composite, we are presented factually in the case at bar with a cited
registration apparently having a single letter of the alphabet followed by a ten-letter
word that must also be considered to be inherently distinctive for motor and engine oils.
In other words, this appears to be a case where the absence of the letter “Q” in
applicant’s otherwise confusingly similar mark is not sufficient to avoid a likelihood of
confusion. See In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding CAREER
IMAGE for clothing and retail women’s clothing store services, and for
uniforms, likely to cause confusion inasmuch as that applicant’s mark, CAREER IMAGE,
might well be perceived by consumers as a shortened form of the cited composite mark.
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Hence, we agree with the examining attorney that this critical du Pont factor favors
a finding of likelihood of confusion.
B. Relationship of the Goods
We next turn our attention to a comparison of the relationship of the goods as
identified in the registration and application. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002).
It is settled that it is not necessary that the respective goods be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to the source of the goods.
See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be sufficiently
related that consumers would be likely to assume, upon encountering the goods under
similar marks, that the goods originate from, are sponsored or authorized by, or are
otherwise connected to the same source. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991).
The goods identified in applicant’s HORSEPOWER application are simply
“gasoline.” Registrant’s goods are “motor oil, engine oils, fuel oil.”
Applicant argues that gasoline is encountered, used and purchased under
different circumstances than are motor oil, engine oils, and fuel oil; that consumers at
applicant’s filling stations would not encounter registrant’s enumerated goods when
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purchasing applicant’s gasoline;7 that while gasoline is dispensed from gas station
pumps directly into an automobile’s gas tank, engine oils of the types marketed by
registrant are sold in automotive sections of retail stores in plastic or metal containers.
By contrast, the examining attorney contends that both applicant’s type of goods
and registrant’s types of goods are petroleum products and that these goods commonly
emanate from the same source, as shown in the web pages reproduced below:
8

7 We note that applicant’s Exhibit C (e.g., a photo from one of applicant’s gas stations, showing
use of the HORSEPOWER mark on a gas pump), submitted for the first time as an attachment
to applicant’s brief, was untimely submitted and has not been considered in reaching our
decision herein. See discussion at 2, supra.
8 http://www.bp.com/ as accessed by the examining attorney on November 22, 2011.
BP Gasoline
BP motor oil
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9
10

9 http://www.mobil.us/USA-English-LCW/fuels.aspx and http://www.mobil.us/USA-English-
LCW/carengineoils.aspx as attached to Office Action of November 22, 2011, at 29-32.
10 http://www.conocophillips.com/EN/ as attached to Office Action of November 22, 2011, at 37-
38.
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Additionally the examining attorney provided for the record copies of the following
registrations:

for, inter alia, “circulating oil; engine oil; gasoline;
greases; lubricating oil; machinery oil; metal
processing oil; motor oil; …” in International Class
4;12

11 http://www.shell.us/products-services/on-the-road/fuels.html and
http://www.shell.us/products-services/on-the-road/oils-lubricants.html as attached to Office
Action of November 22, 2011, at 39-44.
12 Registration No. 1015027 issued on July 8, 1975; second renewal; Section 15 affidavit
acknowledged.
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for, inter alia, “refined petroleum products, namely,
gasoline, fuel oil, mineral spirits and kerosene” in
International Class 4;13

for, inter alia, “fuel, industrial and motor oils and
greases; kerosene; gasoline and diesel starting
fluid for internal combustion engines,
transmission fluid” in International Class 4;14
GASETERIA for, inter alia, “motor fuels, namely, gasoline and diesel fuel; and lubricants, namely, motor oil” in
International Class 4;15

for, inter alia, “fuel for motor vehicles, namely
gasoline, diesel fuel and kerosene; and motor oil”
in International Class 4;16

for, inter alia, “ … fuel oil; and gasoline” in
International Class 4;17

for, inter alia, “fuels, oils and greases, namely,
gasoline, …; fuel for internal combustion engines,
namely, gasoline and diesel; … fuel oil; … motor
oil, …” in International Class 4;18

for “gasoline and motor oil” in International Class
4;19

13 Registration No. 1391309 issued on April 29, 1986; renewed and Section 15 affidavit
acknowledged.
14 Registration No. 1955557 issued on February 13, 1996; renewed.
15 Registration No. 2035356 issued on February 4, 1997; renewed.
16 Registration No. 2908069 issued on December 7, 2004; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged.
17 Registration No. 3001365 issued on September 27, 2005; Section 8 (six-year) affidavit
accepted and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use
the word “Series” apart from the mark as shown.
18 Registration No. 3021640 issued on November 29, 2005; Section 8 (six-year) affidavit
accepted and Section 15 affidavit acknowledged.
19 Registration No. 3234784 issued on April 24, 2007.
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for, inter alia, “gasoline, motor oil and automobile
and industrial greases and lubricating oils” in
International Class 4;20
TruSouth for, inter alia, petroleum derivatives, namely, gasoline, all purpose lubricants, motor oil, …” in
International Class 4;21

for, inter alia, “petroleum products, namely, gasoline,
fuel, fuel oil, motor oil, jet fuel and kerosene, heating
natural gas …” in International Class 4;22

for, inter alia, “ … engine oils; … fuel oil; …
gasoline; … motor oils; …” in International Class
4;23
ADVANCING THE
SCIENCE OF MOTOR
SPORTS
for “fuels for motor vehicles, namely,
nitromethane, methanol, and gasoline; and motor
oil” in International Class 4.24
WORLD LEADER IN
RACING FUELS
for, inter alia, “fuels for motor vehicles, namely
nitromethane, methanol, and gasoline; motor oil;
non-chemical additives for fuel treatment, namely
octane booster non-chemical additives; non-
chemical motor oil; and non-chemical motor oil
additives” in International Class 4;25

20 Registration No. 3248289 issued on May 29, 2007.
21 Registration No. 3346338 issued on November 27, 2007; Sections 8 and 15 affidavits received
by the United States Patent and Trademark Office.
22 Registration No. 3394038 issued on March 11, 2008.
23 Registration No. 3471499 issued on July 22, 2008.
24 Registration No. 3500335 issued on September 9, 2008.
25 Registration No. 3518513 issued on October 14, 2008.
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for, inter alia, “all grades of diesel fuel and
gasoline; fuel from crude oil; diesel fuel for
residential heating; fuels used for heating oil;
kerosene; fossil fuel substitutes, namely, bio-fuels;
renewable fuels; and ethanol fuels; motor oil;
lubricating oil; fuel oil; and non-chemical additives
for oils and fuels” in International Class 4;26

for, inter alia, “fuel for motor vehicles, namely,
gasoline and diesel fuel; fuel oil” in International
Class 4;27 and

for, inter alia, “ … engine oils; … fuel oil; …
gasoline; … motor oil; motor oils; … ” in
International Class 4.28

Copies of use-based, third-party registrations may serve to suggest that the goods
are of a type which may emanate from a single source. In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Accordingly, based on these third-party registrations and the actual uses in the
marketplace as shown from Internet websites, we find that the goods are closely
related, and furthermore, that they move in the same channels of trade to the same
classes of ordinary consumers. Hence, these several du Pont factors weigh in favor of a
finding of likelihood of confusion.

26 Registration No. 3680290 issued on September 8, 2009.
27 Registration No. 3701549 issued on October 27, 2009. No claim is made to the exclusive right
to use the words “Southside Oil” apart from the mark as shown.
28 Registration No. 3846373 issued on September 7, 2010.
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C. Strength of the Mark of the Cited Registration
While dictionary definitions would suggest that the word “horsepower” may be
suggestive in the context of applicant’s and registrant’s respective goods, the absence of
third-party registrations including this word within composite marks registered in
connection with related goods certainly seems to demonstrate that competitors have not
felt the need to incorporate it into composite marks registered with the United States
Patent and Trademark Office. Accordingly, we accord the cited registration the scope of
protection to which it is entitled under Section 7 of the Trademark Act. In short, we
conclude that this du Pont factor is neutral in the case at bar.
D. Balancing the factors
In view of the facts that the respective marks are considered to be confusingly
similar and the goods of applicant and registrant are closely related, and given that
there is no indication that the term “Horsepower” is weak or diluted in the field of
petroleum products in International Class 4, we find that on balance, there would be a
likelihood of confusion should applicant use its proposed mark in connection with the
sale of gasoline.
Decision: The refusal to register applicant’s HORSEPOWER mark is hereby
affirmed under Section 2(d) of the Lanham Act.