This Opinion is Not a
Precedent of the TTAB

Mailed: August 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Volkswagen Aktiengesellschaft

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Serial No. 79182000

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Stewart L. Gitler of Welsh Flaxman & Gitler LLC
for Volkswagen Aktiengesellschaft.

Andrea Koyner Nadelman, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.

_____

Before Cataldo, Ritchie and Shaw,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Volkswagen Aktiengesellschaft, seeks registration on the Principal

Register of the mark COAST, in standard characters, identifying, as amended,

“automobiles and structural parts therefor” in International Class 12.1

1 Application Serial No. 79182000 was filed December 9, 2015, seeking an extension of
protection under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f), of International
Registration No. 1200316, issued on December 10, 2013.
Serial No. 79182000

The Trademark Examining Attorney has finally refused registration under

Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of

confusion with the following registered mark issued on the Principal Register:

COAST, in standard characters, identifying “arranging of loans; financing loans for

automobiles” in International Class 36.2

After the final Office Action, Applicant appealed. Applicant and the Examining

Attorney filed briefs on appeal.3 We affirm the refusal to register for the reasons set

out below.

I. Evidentiary Objection

In its brief on appeal, Applicant appended copies of third-party registrations for

marks assertedly similar to the mark in the cited registration, as well as two pairs of

registrations owned by different entities for marks similar to each other but unrelated

to the marks at issue, and identifying the goods and services under consideration

herein.4 During prosecution, Applicant submitted into the record copies of eight third-

party registrations with its August 23, 2017 response to the Examining Attorney’s

first Office Action.5 Applicant otherwise did not introduce into the record during

prosecution copies of any of the additional third-party registrations attached to its

brief. In her brief, the Examining Attorney objects to these additional materials as

2 Registration No. 5215975 issued June 6, 2017.
3 Applicant did not file a reply brief.
4 4 TTABVUE 11-60.
5 At .pdf 8-15.

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Serial No. 79182000

constituting “new evidence” on the basis that none of them were properly introduced

into the application record.6

It is well-settled that the evidentiary record in an application should be complete

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

Trademark Board Manual of Procedure (TBMP) §§ 1203.02(e), 1207.01 (June 20177);

Trademark Manual of Examining Procedure (TMEP) § 710.01(c) (Oct. 2017). The

proper procedure for an applicant or examining attorney to introduce evidence after

an appeal has been filed is to submit a written request with the Board to suspend the

appeal and remand the application for further examination. See Trademark Rule

2.142(d), 37 C.F.R. § 2.142(d). See also TBMP § 1207.02 and authorities cited therein.

We see no reason why Applicant could not have availed itself of the well-established

procedure for introducing evidence after commencement of its appeal. As a result, the

Examining Attorney’s evidentiary objection is sustained, and the third-party

registrations Applicant submitted for the first time with its appeal brief are untimely

and will not be considered. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); TBMP

§ 1203.02(e) and § 1207.01 and authorities cited therein.8

6 6 TTABVUE 5.
7The June 2018 edition of the TBMP issued after this case was submitted to the Board for
decision.
8We further note that the Board does not take judicial notice of applications or registrations;
they must be proved by competent evidence. See, e.g., In re Jonathan Drew Inc., 97 USPQ2d
1640, 1644 n.11 (TTAB 2011) (stating that “the Board’s well-established practice is not to
take judicial notice of registrations that reside in the USPTO”); Beech Aircraft Corp. v.
Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986) (“[W]e do not take judicial notice
of application and registration files that reside in the Patent and Trademark Office on the
basis of their mere identification in briefs, pleadings and evidentiary submissions.”).

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Serial No. 79182000

We turn now to the merits of this appeal.

II. Likelihood of Confusion

The determination under Section 2(d) involves an analysis of all of the probative

evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours

& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be

considered, hereinafter referred to as “du Pont factors”); see also In re Majestic

Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any

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

the marks and the relatedness of the goods or services. See In re Chatam Int’l Inc.,

380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort

Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental

inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential

characteristics of the goods [and services] and differences in the marks.”). We have

considered each relevant du Pont factor for which there is evidence or argument, and

have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns,

Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.

GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered

each factor for which we have evidence, we focus our analysis on those factors we find

to be relevant.”). Varying weights may be assigned to each du Pont factor depending

on the evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d

1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26

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Serial No. 79182000

USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play more or less weighty roles in

any particular determination”).

A. Strength of the Cited Mark

We begin by evaluating the strength of the cited mark and the scope of protection

to which it is entitled. The fifth du Pont factor is the “fame” or strength of the prior

mark, and the sixth factor is the number and nature of similar marks in use for

similar goods or services. du Pont, 177 USPQ at 567. In determining strength of a

mark, we consider both inherent strength, based on the nature of the mark itself, and

commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96

USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its

conceptual strength (distinctiveness) and its marketplace strength (secondary

meaning).”).

In its brief, Applicant refers to asserted definitions of COAST from merriam-

webster.com, without submitting an actual definition.9 We hereby take judicial notice

of the following definitions of COAST from merriam-webster.com: the land near a

shore; a slide down a slope (as on a sled); often capitalized the Pacific coast of the

U.S.; the immediate area of view – used in the phrase the coast is clear; to slide, run

or glide downhill by the force of gravity; to move along without or as if without the

further application of propulsive power.”10 There is no additional evidence in the

9 4 TTABVUE 3.
10 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014);

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Serial No. 79182000

record regarding the possible significance of the term COAST in relation to the

services identified in the cited registration. Applicant argues that consumers viewing

the registered mark are likely to view COAST as relating “to the Registrant’s

geographical location on the Pacific Coast of the U.S. in view of the geographical

location of Registrant being Newport Beach, CA.”11 However, Applicant offers no

evidence to support its speculative assertion that consumers will associate the

registered mark with the Pacific Coast of the United States as opposed to the more

general meaning of land near a shore or to move along without propulsion. Thus,

concerning conceptual strength, we find on this record that COAST appears to be

arbitrary as used in connection with “arranging of loans; financing loans for

automobiles.”

As for marketplace strength, there is no evidence regarding the mark’s

commercial strength, as is typical with ex parte appeals in which the owner of the

cited registration is not a party.

In support of its position that the cited mark is weak and entitled only to a limited

scope of protection, Applicant introduced into the record copies of eight third-party

registrations for the following marks and goods or services (all marks issued on the

Principal Register in standard characters unless otherwise noted; only relevant goods

or services reproduced below):12

Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re
Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
11 Id. at 4.
12Applicant’s August 23, 2017 response to the Examining Attorney’s first Office Action at
.pdf 8-15.

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Serial No. 79182000

Reg. No. 1603635 for the mark PACIFIC COAST identifying
“motorcycles and structural parts therefor;”

Reg. No. 2175005 for the mark SOUTH COAST INSURANCE
(INSURANCE disclaimed) identifying “automobile insurance
brokerage;”

Reg. No. 2588205 for the mark SC SEACOAST INSURANCE (stylized
form; INSURANCE disclaimed) identifying “insurance agency services
in the field of automobiles;”

Reg. No. 2813620 for the mark NEWCOAST FINANCIAL SERVICES
(FINANCIAL SERVICES disclaimed) identifying “financial and
insurance services for vehicles;”

Reg. No. 3809074 for the mark WESTCOAST WHEEL ACCESSORIES
and design (Section 2(f) as to “WEST COAST WHEEL ACCESSORIES;”
WHEEL ACCESSORIES disclaimed) identifying “automobiles and
structural parts therefor;”

Reg. No. 3497200 for the mark COAST COMMERCIAL CREDIT
(COMMERCIAL CREDIT disclaimed) identifying “business finance and
lending services;”

Reg. No. 4938759 for the mark EAST COAST HOT RODS
(Supplemental Register, HOT RODS disclaimed) identifying “motor
vehicles;” and

Reg. No. 4992195 for the mark WEST COAST PERFORMANCE and
design (WEST COAST PERFORMANCE disclaimed) identifying
“automobile bodies.”

Of these third-party registrations, only one (Reg. No. 2813620) identifies financial

services for vehicles that are similar in nature to the services identified in the cited

registration. The mark, however, NEWCOAST FINANCIAL SERVICES, differs

significantly in sight, sound, and commercial impression, from the cited mark.

Indeed, none of the third-party registrations consists of the single term COAST as

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Serial No. 79182000

does both Applicant’s mark and the cited mark, and none of the other registrations

identify loans or financing for vehicles.

Considering the record as a whole, we find that the registered mark is arbitrary

and there is no evidence of third-party use and scant evidence of third-party

registration of confusingly similar marks for similar or related goods. Cf. Juice

Generation, Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed.

Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New

Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir.

2015). We therefore find that the registered mark is not weak and entitled only to a

narrow scope of protection, but rather we accord the COAST mark the broad scope of

protection to which arbitrary marks are entitled. See Joseph Phelps Vineyards, LLC

v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017)

(stating that likelihood of confusion fame varies along a spectrum from very strong to

very weak).

B. Similarity of the Marks

We next address the du Pont likelihood of confusion factor focusing on “the

similarity or dissimilarity of the marks in their entireties as to appearance, sound,

connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.

2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side

comparison of the marks, but instead whether the marks are sufficiently similar in

terms of their commercial impression such that persons who encounter the marks

would be likely to assume a connection between the parties.” Coach Servs. Inc. v.

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Serial No. 79182000

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)

(quotation omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d

1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB

2016).

Applicant “does not question that the marks are similar in appearance and sound,

but as far as meaning the term ‘coast’ has many definitions.”13 Far from being only

“similar in appearance and sound,” the cited COAST mark in standard characters is

identical in all respects to the COAST mark in standard characters in the involved

application. As discussed above, Applicant cites to no evidence in support of its

conjecture that the registered mark connotes the Pacific Coast of the United States

while its own mark is likely to be perceived as connoting moving along without

propulsive power. Simply put, while Applicant argues that the marks will engender

different meanings, it points to no basis for this belief other than relying upon the

respective identifications of goods and services in the involved application and cited

registration. Contrary to Applicant’s assertions, the record does not support a finding

that the identical marks will engender different meanings in connection with

Applicant’s goods and the services in the cited registration. The COAST marks at

issue are identical in every respect in appearance, sound, connotation and overall

commercial impression.

We find that the du Pont factor of the identity of the marks weighs heavily in favor

of likelihood of confusion.

13 Id. at 3.

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Serial No. 79182000

C. Relatedness of the Goods and Services, Channels of Trade and Classes of
Consumers

With regard to the goods and services, channels of trade and classes of consumers,

we must make our determinations based on the goods and services as they are

identified in the application and cited registration. See In re Dixie Rests. Inc., 105

F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital

Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.

2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,

1004-05 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d

937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). A proper comparison of the goods and

services considers whether “the consuming public may perceive [the respective goods

or services of the parties] as related enough to cause confusion about the source or

origin of the goods and services.” Hewlett Packard, 62 USPQ2d at 1004. Therefore, to

support a finding of likelihood of confusion, it is not necessary that the goods and

services be identical or even competitive. It is sufficient that the goods and services

are related in some manner, or that the circumstances surrounding their marketing

are such that they would be encountered by the same persons in situations that would

give rise, because of the marks, to a mistaken belief that they originate from the same

source or that there is an association or connection between the sources of the goods

and services. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).

Again, Applicant’s goods are “automobiles and structural parts therefor” and the

services in the cited registration are “arranging of loans; financing loans for

automobiles.”

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Serial No. 79182000

In support of the refusal of registration, the Examining Attorney introduced with

her July 21, 2017 Non-Final Office Action14 and September 11, 2017 Final Office

Action15 printouts from the following third-party internet websites of automobile

dealerships and manufacturers, including Applicant, offering under the same mark

goods identified in the subject application and services identified in the cited

registration.

WES GREENWAY’S WALDORF VW offers new and used vehicles and
financing therefor (waldorfvw.com);

TED BRITT FORD offers new and pre-owned vehicles and financing
therefor (tbford.com);

SAFFORD HYUNDAI offers new and pre-owned vehicles and “financing
options” therefor (saffordhyundai.com);

KOONS TOYOTA offers new and pre-owned vehicles and financing
therefor (koonstoyotaannapolis.com);

POHANKA HONDA offers new and used vehicles and financing therefor
(pohankahonda.com);

VOLKSAWAGON is a vehicle manufacturer that also provides financing
services for automobiles (vw.com);

HONDA is a vehicle manufacturer that also provides financing services
for automobiles (hondafinancialservices.com);

MERCEDES-BENZ is a vehicle manufacturer that also provides
financing services (mbfs.com);

TOYOTA is a vehicle manufacturer that also provides financing services
(toyotafinancial.com);

FORD is a vehicle manufacturer that also provides finance credit
services (ford.com);

14 At .pdf 8-26.
15 At .pdf 6-21.

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Serial No. 79182000

CHRYSLER is a vehicle manufacturer that also provides financing
services (chryslercapital.com); and

BMW is a vehicle manufacturer that also provides financing services
(bmwusa.com).

This evidence demonstrates that at least twelve third party auto dealers and

manufacturers, including Applicant, offer both Applicant’s goods and the services in

the cited registration under the same mark.

The Examining Attorney also introduced into the record with her July 21, 2017

Non-Final Office Action16 copies of nine use-based, third-party registrations for

marks identifying, inter alia, goods of a type identified in the involved application

and services identified in the cited registration. The following examples are

illustrative:

Registration No. 3132912 for G (stylized) for goods and services
including “automobiles” and “financing relating to automobiles;”

Registration No. 3398330 for CERTIFIED PRE-OWNED BY BMW and
design for goods and services including “automobiles, sports utility
vehicles and light trucks” and “financing relating to motor vehicles;”

Registration No. 2359497 for LUJACK’S for goods and services
including “new and used automobiles” and “automobile insurance and
financing services.”

Use-based, third-party registrations may serve to suggest that the goods and services

are of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60

USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d

1783, 1785-86 (TTAB 1993); Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6

16 At .pdf 27-44.

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Serial No. 79182000

(TTAB 1988). In this case, the totality of the website and third-party registration

evidence demonstrates that consumers would readily expect that these goods and

services could emanate from the same sources. It further is settled that where the

marks in the involved application and cited registration are identical, the relatedness

between the goods and services needed to support a finding of likelihood of confusion

declines. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re

Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866

F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).

Applicant argues:

Appellant is seeking protection for the name of a particular automobile
under the name COAST. Automobile manufacturers have many names
for their automobiles, but they do not offer or provide financing services
under the same name as their automobiles. In the real world, Appellant
is unaware of any situation where automobile names, such as the
proposed automobile name that is the subject of the Appeal, COAST, are
also the actual name of the financing company that provides an
automobile loan for a purchaser.17

In this case, however, the evidence of record clearly demonstrates that automobile

manufacturers and dealerships offer both new and used automobiles as well as

financing of automobiles and loan services under the same names. Thus, consumers

may encounter automobiles and the services of providing loans and financing therefor

under the same marks, notwithstanding that those marks may not necessarily

include the model names of cars.

With regard to channels of trade, Applicant argues:

17 4 TTABVUE 4-5.

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Serial No. 79182000

It is also evident that there is a difference in channels of trade between
the goods of Appellant and the services in the cited Registration. In the
usual course of business purchasers of Appellant’s goods receive the
assistance of a financing expert, trained to assist them in loan selection
and they rarely have the automobile sales person perform the same
function. This further distinguishes or separates what the name of a
vehicle would be and what entity would provide or service a loan for a
purchaser.18

Evidence of record discussed above demonstrates that both Applicant’s goods and

Registrant’s services may be encountered in at least two common trade channels, i.e.,

the websites of automobile manufacturers and dealerships and the dealerships

themselves that offer both automobiles and loan financing therefor under the same

marks, to the same classes of consumers. Applicant’s argument, unsupported by

evidence that an auto salesperson at a dealership may not also arrange the financing

therefor does not create a separate trade channel for Applicant’s goods and the

services in the cited registration. Both are provided in the same locations to the same

consumers, and may, on this record, even be offered to the consumer by the same

personnel.

In addition, the identification of services in the cited registration and the goods in

the involved application do not recite any limitations as to the channels of trade in

which the goods or services are or will be offered. In the absence of trade channel

limitations on the goods and services under the registered and applied-for marks, we

must presume that these goods and services are offered in all customary trade

channels. See Citigroup Inc. v. Capital City Bank Grp. Inc., 98 USPQ2d at 1261; In

18 Id. at 7.

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Serial No. 79182000

re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ

639, 640 (TTAB 1981).

Nor may an applicant restrict the scope of the goods covered in a cited registration

by argument or extrinsic evidence. In re Midwest Gaming & Entm’t LLC, 106

USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647

(TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).

Further, as noted above, the Examining Attorney has introduced evidence that both

Applicant’s goods and Registrant’s services are offered on the same webpages and at

car dealerships. This evidence supports a finding that these goods and services are

offered in the same channels of trade to the same consumers.

We find that the du Pont factors of the relatedness of the goods and services,

channels of trade and consumers weigh in favor of likelihood of confusion.

III. Conclusion

We have carefully considered all of the evidence of record, including any evidence

not specifically discussed herein. The marks are identical. Evidence of record

establishes that the goods and services are related, and may be marketed and sold by

third parties under the same marks in common channels of trade. Applicant’s

arguments regarding the asserted weakness of the mark in the cited registration and

distinctions between the goods and services and their trade channels that are not

reflected in the respective identifications are insufficient to overcome these

similarities.

Decision: The refusal to register Applicant’s mark is affirmed.

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