Andrei Karapetian

This Opinion is not a
Precedent of the TTAB

Mailed: March 14, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Karapetian
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Serial No. 87034208

_____

Allan Howard Grant of Grant’s Law Firm,
for Andrei Karapetian.

Angela Duong, Trademark Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.

_____

Before Mermelstein, Ritchie, and Lynch,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Andrei Karapetian (“Applicant”) seeks registration on the Principal Register of

the mark ASM ALL STAR MOTORSPORTS and design, as shown below, for services

ultimately identified as

Catalog ordering service featuring automobile parts
namely Wheels, Rims, Tires, and Wheel, Rim and Tire
Packages excluding auto lights, high performance and
racing parts; Electronic catalog services featuring
automobile parts namely Wheels, Rims, Tires, and Wheel,
Rim and Tire Packages excluding auto lights, high
Serial No. 87034208

performance and racing parts; Retail store services
featuring automobile parts namely Wheels, Rims, Tires,
and Wheel, Rim and Tire Packages excluding auto lights,
high performance and racing parts; Computerized on-line
retail store services in the field of automobile parts namely
Wheels, Rims, Tires, and Wheel, Rim and Tire Packages
excluding auto lights, high performance and racing parts;
Conducting virtual trade show exhibitions online in the
field of automobile parts namely Wheels, Rims, Tires, and
Wheel, Rim and Tire Packages excluding auto lights, high
performance and racing parts,

in International Class 351:

The application disclaims the exclusive right to use the term “MOTORSPORTS”

apart from the mark as shown. The application contains the following description:

The mark consists of a triangle with a star in the center and the following letters

ASM positioned below the triangle and words ALL STAR MOTORSPORTS are

positioned below both the triangle and letters ASM.

The Examining Attorney refused registration of Applicant’s mark under

Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as likely to cause confusion,

1Serial No. 87034208, filed on May 12, 2016, pursuant to Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a) alleging dates of use and of first use on April 1, 2015.

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Serial No. 87034208

mistake, or to deceive, based on the two registrations below, which are owned by

different registrants:

1. The mark ALL STAR AUTO LIGHTS and design, as shown below, for

“Wholesale and retail store services featuring automotive headlights,” in

International Class 35 (the “’156 registration”)2:

The registration disclaims the exclusive right to use the term “AUTO LIGHTS” apart

from the mark as shown. The ‘156 registration contains the following description of

the mark: The mark consists of a contemporary outline of an automobile, with “All

Star” under it, and “Auto Lights” under the words “All Star.”

2. The mark ALLSTAR PERFORMANCE and design, as shown below, for

“Wholesale distributorship in the field of high performance and racing automotive

parts and accessories,” in International Class 42 (the “’628 registration”)3:

2Registration No. 3993156 issued July 12, 2011. Sections 8 and 15 affidavits accepted and
acknowledged.
3Registration No. 2118628 issued December 9, 1987. Sections 8 and 15 affidavits accepted
and acknowledged. Renewed.

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Serial No. 87034208

The registration disclaims the exclusive right to use the term “PERFORMANCE”

apart from the mark as shown.

After the Examining Attorney made the refusal final, Applicant filed a request for

reconsideration. When the request for reconsideration was denied, Applicant filed

this appeal, which is fully briefed. For the reasons discussed herein, we affirm the

refusal as to both the ‘156 registration and the ‘628 registration.

I. Likelihood of Confusion

Our determination of the issue of likelihood of confusion is based on an analysis

of all the probative facts in evidence that are relevant to the factors set forth in In re

E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also

In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any

likelihood of confusion analysis, two key considerations are the similarities between

the marks and the similarities between the services. See Federated Foods, Inc. v. Fort

Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie

Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont

factors for which arguments or evidence were presented. The other factors, we

consider to be neutral. We conduct our analysis as to each of the cited registrations,

as discussed below.

A. The Marks

We consider and compare the appearance, sound, connotation and commercial

impression of the marks in their entireties. Palm Bay Imps. Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.

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Serial No. 87034208

2005). We first consider the mark in the ‘156 registration, ,

which contains the literal element “ALL STAR AUTO LIGHTS” with a design

resembling the outline of an automobile. Applicant’s mark, , contains

the literal element “ASM ALL STAR MOTORSPORTS,” with a design of a star in a

triangle. Both marks contain the literal element “All Star,” either as a two-word term

or as a compound word. In both marks, “All Star” is followed by a term that is

descriptive of or generic for automotive goods, and that has been accordingly

disclaimed. It is well-settled that disclaimed, generic or descriptive matter may have

less significance in likelihood of confusion determinations. See Cunningham v. Laser

Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding

descriptive terms, this court has noted that the ‘descriptive component of a mark may

be given little weight in reaching a conclusion on the likelihood of confusion.’”)

(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));

In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60

USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in

creating the mark’s commercial impression”).

Applicant’s mark contains the additional literal element, “ASM” which, as

presented in Applicant’s mark, appears to simply be an initialism for “All Star

Motorsports,” and thus reinforces that wording in the mark. This is reflected in

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Serial No. 87034208

Applicant’s display of the term “ALL STAR MOTORSPORTS” with only the first

letter of each word highlighted:4

Furthermore, while we recognize that both marks have design elements, it is the

wording by which consumers will call for or refer to the respective services. See In re

Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (quoting CBS

Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)). This is further

evidenced by the designs of the respective marks, both of which emphasize the

wording therein. Applicant’s star design emphasizes the “All Star” aspect of its mark,

4 As shown in Applicant’s specimen, submitted with the May 12, 2016 application.

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Serial No. 87034208

a term shared with the registrant of the ‘156 registration. The mark in the ‘156

registration, meanwhile, contains a design that evokes the automotive nature of the

goods identified by both Applicant and the registrant of the ‘156 registration.

Applicant referred in its brief to third-party registrations containing the term “All

Star.”5 The Examining Attorney objected to this reference, however, since copies of

the registrations were not made of record. In order to make a third-party registration

of record, a copy of the registration, either of the paper USPTO record, or taken from

the electronic records of the Office, should be submitted. In re Volvo Cars of N. Am.

Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998); and In re Promo Ink, 78 USPQ2d 1301,

1304 (TTAB 2006) (citing In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)).

Merely listing such registrations, or referring to them in a brief, is insufficient to

make them of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB 1998);

see also Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1208.02

(2018). Furthermore, as the Examining Attorney points out, the record should be

complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 C.F.R. §

2.142(d). Accordingly, we sustain the objection.

Nevertheless, we take judicial notice of the relevant dictionary definition of “all

star” as “composed wholly or chiefly of stars or of outstanding performers or

participants.”6 In this regard, we find the shared term “All Star” (or “Allstar”) to be

5 10 TTABVUE 6.
6 Merriam-Webster.com. See, e.g., In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23
(TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed
format or have regular fixed editions).

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Serial No. 87034208

somewhat suggestive of automotive services that are promoted as being best in class.

Nevertheless, there is no evidence that the term is otherwise weak and entitled to a

more narrow scope of protection. The disclaimed wording in each mark – “Auto

Lights” and “Motorsports” respectively – contributes to a similar automotive

impression. We find that, considering each mark in its entirety, the connotation and

commercial impression of Applicant’s mark and the mark in the ‘156 registration are

similar.

We therefore find that in comparing the marks as a whole, while the Applicant’s

mark and the mark in the ‘156 registration have some dissimilarities in sight and

sound, they have many similarities, which are further enhanced by the similarities

in both connotation and commercial impression. The first du Pont factor favors

finding a likelihood of confusion as to the ‘156 registration.

As for the mark in the ‘628 registration, , the mark contains the

literal element “Allstar Performance” with a design of a star. As noted above,

Applicant’s mark, , contains the literal element “ASM ALL STAR

MOTORSPORTS,” with a design of a star in a triangle. Both marks contain the literal

element “All Star,” either as a two-word term or as a compound word. Both marks

also contain a term that is descriptive of automotive goods, and that has been

accordingly disclaimed. As discussed above, it is well-settled that disclaimed,

descriptive matter may have less significance in likelihood of confusion

determinations. With regard to the designs, as also discussed above, while we

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Serial No. 87034208

consider the marks as a whole, it is typically the wording by which consumers will

call for or refer to the respective services. See Viterra, 101 USPQ2d at 1911. For the

reasons discussed above, we do not find the term “ASM” in Applicant’s mark, which

is likely to be perceived as an acronym, to significantly distinguish the marks.

We note that both Applicant’s mark and the mark in the ‘628 registration contain

a design of a star, which emphasizes the “All Star” term shared by both marks. While

the star designs are slightly different, there is no evidence that star designs are weak

with regard to automotive services, such that the mark in the ‘628 registration is

entitled to a more narrow scope of protection. The shared wording and similar designs

contribute to a similar connotation and commercial impression.

We therefore find that in comparing the marks as a whole, despite some

dissimilarities in sight and sound, Applicant’s mark and the mark in the ‘628

registration overall appear and sound fairly similar, and the similarities in both

connotation and commercial impression contribute to the overall similarity of the

marks. Therefore, the first du Pont factor favors finding a likelihood of confusion as

to the ‘628 registration as well.

B. Services, Trade Channels and Purchasers

When considering the similarity or dissimilarity of the services, we note that

services need not be identical or even competitive in order to support a finding of

likelihood of confusion. Rather, it is enough that the services are related in some

manner or that some circumstances surrounding their marketing are such that they

would be likely to be seen by the same persons under circumstances which could give

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Serial No. 87034208

rise, because of the marks used or intended to be used therewith, to a mistaken belief

that they originate from or are in some way associated with the same source or that

there is an association between the providers of the parties’ services. In re Melville

Corp., 18 USPQ2d 1386 (TTAB 1991). We consider this factor as to each of the cited

registrations.

The ‘156 registration identifies “[w]holesale and retail store services featuring

automotive headlights.” The ‘628 registration identifies “[w]holesale distributorship

in the field of high performance and racing automotive parts and accessories.” In an

apparent attempt to limit its application to avoid the inclusion of these specific goods,

Applicant’s identification, as ultimately amended, identifies

Catalog ordering service featuring automobile parts
namely Wheels, Rims, Tires, and Wheel, Rim and Tire
Packages excluding auto lights, high performance and
racing parts; Electronic catalog services featuring
automobile parts namely Wheels, Rims, Tires, and Wheel,
Rim and Tire Packages excluding auto lights, high
performance and racing parts; Retail store services
featuring automobile parts namely Wheels, Rims, Tires,
and Wheel, Rim and Tire Packages excluding auto lights,
high performance and racing parts; Computerized on-line
retail store services in the field of automobile parts namely
Wheels, Rims, Tires, and Wheel, Rim and Tire Packages
excluding auto lights, high performance and racing parts;
Conducting virtual trade show exhibitions online in the
field of automobile parts namely Wheels, Rims, Tires, and
Wheel, Rim and Tire Packages excluding auto lights, high
performance and racing parts.

To show that these services are nevertheless related, the Examining Attorney

submitted web evidence of retailers that offer both wheels or tires and automotive

headlights, showing the services identified by Applicant in the ‘156 registration

offered under the same mark. These include Auto Anything; Jegs; Pep Boys; Summit

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Serial No. 87034208

Racing Equipment; Enjukuracing; and Lightning Force Performance. The Examining

Attorney also submitted third-party websites that advertise the sale of wheels or

tires, as identified by Applicant and of high-performance automotive parts and

accessories as identified in the ‘628 registration. These include the following: JC

Whitney; CarID; Pep Boys; Summit Racing Equipment; S&W Performance Group;

Enjukuracing; Bryant Racing Equipment, Inc.; Smith Family tire & automotive; and

Lightning Force Performance.7

The Examining Attorney further supported the relatedness of the services by

submitting copies of third-party registrations that identify both “retail” and “whole

sale” services in connection with various “automotive vehicle parts and accessories”

(Registration No. 2937233) or “retail” and “wholesale” services in connection with

“vehicles” and vehicle-related services. (Registration No. 5200648).8 Copies of use-

based, third-party registrations may help establish that the goods are of a type which

may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d

1783, 1785 (TTAB 1993).

In addition to demonstrating the similarity of the services, these registrations

show the similarity of the channels of trade for the application and for both

registrations, including via retail and wholesale means of selling automobile parts

and accessories. As to the channels of trade, web evidence in the record further shows

7Attached to April 4, 2017 Office Action, at 16, 23; November 8, 2017 Final Office Action, at
7, 12, 16-20, 24-26; June 4, 2018 Denial of Request for Reconsideration at 48, 65-72, 77-78,
80, 84-85.
8 Attached to June 4, 2018 Denial of Request for Reconsideration, at 3, 24.

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Serial No. 87034208

that consumers may expect both retail (or more specifically online retail) and

wholesale services of selling automobile parts offered together from a single source.

The web page for Enjuku Racing states “We also wholesale the following

manufacturers for dealers that are interested,” going on to list, among others, Volk

Racing wheels, which are also listed as available for online retail purchase.9 The

Examining Attorney also included the following excerpt of a news article from

Investor’s Business Daily, which notes that retail chains have increasingly been

serving as wholesale distributorships for automobile parts and accessories:

In days of old, auto parts companies mainly lured the DIY – do-it-
yourself tinkerer. Professional mechanics and repair shops ordered their
parts through dealership parts desks. But the retail chains have been
gradually gaining more of the commercial or wholesale market, what the
retailers now label the DIFM (do-it-for-me) market.10

We thus find that the services in the application and those of both cited

registrations are related and are likely to travel through similar and even

overlapping channels of trade to some of the same classes of consumers, including

members of the public as well as to specialists. The second and third du Pont factors

favor finding a likelihood of confusion.

C. Conditions of Sale

Applicant urges us to consider the sophistication and degree of purchaser care

likely to be exercised by purchasers of the automobile parts at issue in this

proceeding, arguing that the relevant consumers “are careful, sophisticated

9 Attached to June 4, 2018 Denial of Request for Reconsideration at 65-72.
10 Attached to June 4, 2018 Denial of Request for Reconsideration at 88-90.

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Serial No. 87034208

purchasers that are unlikely to buy these items on impulse.”11 The Court of Appeals

for the Federal Circuit has noted, with regard to retail and wholesale services for

automobiles and parts, that an analysis of sophistication must be considered “with

respect to users as well as actual purchasers.” In re Shell Oil Co., 992 F.2d 1204, 26

USPQ2d 1687, 1690 (Fed. Cir. 1993) (finding a likelihood of confusion and quoting

Octocom Sys. Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,

1787 (Fed. Cir. 1990)).

Even if we were to assume that some of the relevant consumers may exercise a

certain degree of care in selecting automobile parts, especially wholesale purchasers

who might be expected to exercise some heightened care in their purchasing

decisions, it is nevertheless well-established that even sophisticated consumers are

not immune from source confusion where both the goods (or, as here, services) and

the marks are similar. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55

USPQ2d 1842, 1846 (Fed. Cir. 2000); Top Tobacco LP v. N. Atl. Operating Co., 101

USPQ2d 1163, 1170 (TTAB 2011) (finding that although “it stands to reason

wholesale buyers should be accorded a higher degree of purchaser sophistication over

the general public in terms of determining susceptibility to confusion,” nevertheless,

such consumers “are not immune from source confusion.” (cites omitted)).

Overall, we find this factor to be neutral or to weigh slightly against finding a

likelihood of confusion. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly

11 10 TTABVUE 19.

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Serial No. 87034208

considered all potential purchasers for recited services, including both sophisticated

and unsophisticated investors, since precedent requires consumer care for likelihood-

of-confusion decision be based “on the least sophisticated potential purchasers”).

D. Conclusion

After considering all of the arguments and evidence of record as they pertain to

the relevant du Pont factors, we find as to both cited registrations that the marks are

similar in sight, sound, connotation, and commercial impression, and that the

services are related and travel through similar and at times overlapping channels of

trade to both general consumers and to specialists. Even if we find that the universe

of overlapping consumers may exercise a certain degree of care in their purchasing

decisions, this is outweighed by the similarity of the marks, of the services, and of the

channels of trade.

Overall, we find that there is a likelihood of confusion between Applicant’s

applied-for mark and the marks in both of the cited registrations.

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

both Registration No. 3993156 and Registration No. 2118628.

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