Kuhlke*
Taylor
Pologeorgis
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Hearing: May 1, 2019 Mailed: September 27, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
William P. Thomas, III and Carolyn Thomas Walters
v.
Robert E. Auxier
_____
Opposition Nos. 91219618 and 91221893
_____
Jeffrey L. Van Hoosear of Knobbe, Martens, Olson & Bear, LLP
for William P. Thomas, III and Carolyn Thomas Walters.
Bradley P. Hartman and John D. Titus of Hartman Titus PLC
for Robert E. Auxier.
_____
Before Kuhlke, Taylor and Pologeorgis,
Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Robert E. Auxier, seeks registration of the marks shown below filed
under Section 1(b) of the Trademark Act, 15 U.S.C. §1051, based on allegations of an
intention to use the marks in commerce:
Opposition Nos. 91219618 and 91221893
Opposition 91219618 91221893
No.
Application 85831767 85887151
Serial No.
Filing Date January 24, 2013 March 26, 2013
Mark
Drawing
and
Description
The mark consists of a shield The mark consists of an
containing six 5-point unshaded irregularly shaped oval outline
stars at the top on a shaded enclosing the words Bill Thomas
background, with the shaded word Race Cars and 510 E. Julianna
CHEETAH below, with a Anaheim, Calif. and several
stylized drawing of a cheetah drawing instruments
below the word CHEETAH on a
background containing 6 shaded
vertical bars, with the unshaded
wording BTM below in all caps,
with the letter T larger than the
letters, B and M, on a shaded
background.
Goods Clothing, namely, jackets, hats, Clothing, namely, jackets, hats,
caps, sweatshirts and t-shirts caps, sweatshirts and t-shirts
(International Class 25) (International Class 25)
Providing information on racing,
racing results, racing facts, racing
films, and racing pictures;
provision of a web site featuring
information on racing, racing
results, racing facts, racing films,
and racing pictures; and provision
of a web site featuring information
on 1956 thru 1970 historical
racing films and pictures,
production history of replica Bill
Thomas Cheetah race cars, and
racing facts about the original Bill
Thomas Cheetah race cars
(International Class 41)
2
Opposition Nos. 91219618 and 91221893
Opposers, William P. Thomas, III and Carolyn Thomas Walters, have opposed
registration of Applicants marks in each of the consolidated proceedings on the
ground that, as used in connection with Applicants goods and services, the marks so
resemble Opposers previously used and registered marks discussed below for a
variety of goods and services, including clothing, race car parts, race car restoration
services and providing information on racing related to Bill Thomas, as to be likely
to cause confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).1
Proceedings were consolidated during the rebuttal testimony period, and may be
presented on the same record and briefs, while maintaining their separate character.
See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §
511 (2019).
In Opposition No. 91219618, Opposers pleaded the following mark:
Application Serial No. 85957268 filed on June 11, 2013, as
well as common law rights for the mark (CHEETAH
BTM and design) for clothing, namely tops, bottoms and
headwear, in International Class 25.
Applicant admits the allegations that:
pleaded Application Serial No. 85957268 was filed on June 11, 2013;
the letters BTM stand for Bill Thomas Motors;
Opposers father was named Bill Thomas.
1In addition, Opposers asserted a claim of fraud in each proceeding; however, that claim was
not addressed in the briefs and is therefore waived. Alcatraz Media, Inc. v. Chesapeake
Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), affd mem., 565 F. Appx 900 (Fed.
Cir. 2014).
3
Opposition Nos. 91219618 and 91221893
Answer ¶¶ 2, 3, 4, 10 TTABVUE 3.
Applicant denies the remaining salient allegations, and asserts as an affirmative
defense that any rights that Opposers may have had in the Cheetah BTM and Design
mark have been abandoned.2 Answer ¶ 3, 10 TTABVUE 6.
In Opposition No. 91221893, Opposers pleaded the following marks:
Registration No. 3169065 for the mark for
clothing, namely, t-shirts, sold on the Internet, at
automobile shows and at swap meets, in International
Class 25, issued on November 7, 2006, renewed;
Application Serial No. 85958204 for the mark
for Race cars, race car parts, and race
car restoration which relate to Bill Thomas Cheetah race
cars, International Class 12, Clothing, namely, tops,
bottoms, and headwear, in International Class 25, filed on
June 12, 2013;
Application Serial No. 86063410 for the mark BILL
THOMAS CHEETAH in standard characters for Race
cars, and parts for race cars, namely, structural parts,
trims, and badges, in International 12, Clothing, namely,
tops and bottoms, in International Class 25, and
Restoration of Bill Thomas Cheetah race cars for others,
in International Class 37, filed on September 12, 2013;3
2Applicants other affirmative defenses were not addressed in his brief and they are waived.
Alcatraz Media, 107 USPQ2d at 1753 n.6.
3This application issued into a registration on December 20, 2016. See United Global Media
Group, Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) (when an opposer pleads
ownership of an underlying application, opposer may make of record the subsequently issued
registration of that application without amending pleading).
4
Opposition Nos. 91219618 and 91221893
Application Serial No. 85957268 for the mark for
Clothing, namely, tops, bottoms, and headwear, in
International Class 25, filed on June 11, 2013; and
Common law proprietary rights in BILL THOMAS, BILL
THOMAS MOTORS, BILL THOMAS RACE CARS and
design, BILL THOMAS CHEETAH, CHEETAH BTM and
Design and CHEETAHS ALWAYS WIN and Design in
connection with clothing.
Applicant admits that:
Opposers father was named Bill Thomas and that the letters BTM stand
for Bill Thomas Motors;
the registration date of U.S. Registration 3169065 is November 7, 2006;
the filing date of Application Serial No. 85958204 is June 12, 2013;
the filing date of Application Serial No. 86063410 is September 12, 2013;
the filing date of Application Serial No. 85957268 is June 11, 2013.
Answer ¶¶ 2, 3, 4, 5, and 6, 6 TTABVUE 3-4.
Applicant denies the remaining salient allegations, and asserts as an affirmative
defense that any rights that Opposers may have had in the marks CHEETAHS
ALWAYS WIN and design, BILL THOMAS RACE CARS and design, BILL THOMAS
CHEETAH, CHEETAH BTM and design, BILL THOMAS, and BILL THOMAS
MOTORS have been abandoned and that Opposers are not successors-in-interest to
any rights in any of those marks.4
4As with the other opposition proceeding, Applicants other affirmative defenses were not
addressed in his brief and they are waived. Alcatraz Media, 107 USPQ2d at 1753 n.6.
5
Opposition Nos. 91219618 and 91221893
For reference, we refer to the word and design marks in the following manner:
CHEETAH BTM and design
BILL THOMAS RACE CARS and design
CHEETAHS ALWAYS WIN and design
I. RECORD
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the files of the applications subject to the notices
of opposition.
In Opposition No. 91219618, Opposers attached to their Notice of Opposition a
USPTO Trademark Status & Document Retrieval (TSDR) printout of their pleaded
Application (85957268). During their main trial period, Opposers submitted under
notices of reliance: USPTO Trademark Electronic Search System (TESS) and TSDR
printouts of their Registration Nos. 3169065 and 5105313 (from serial no. 86063410)
(both pleaded in Opposition No. 91221893); a court ruling and amended judgment
from the U.S. District Court, Central District of California, Southern Division; and
6
Opposition Nos. 91219618 and 91221893
printouts from Opposers Facebook page and website with corresponding URLs and
date stamps.5
In Opposition No. 91221893, Opposers attached to their Notice of Opposition
TSDR printouts of their pleaded Registration No. 3169065, and Application Serial
Nos. 85958204, 86063410 and 85957268. During their main trial period, Opposers
submitted under notices of reliance: USPTO TESS and TSDR printouts of pleaded
Registration Nos. 3169065 and 5105313 (from serial no. 86063410)6; a court ruling
and amended judgment from the U.S. District Court, Central District of California,
Southern Division; printouts from Opposers Facebook page and website with
corresponding URLs and date stamps; excerpts from printed publications (magazines
and newspapers) featuring articles on Bill Thomas, Bill Thomas Motors, Bill Thomas
Race Cars and the Cheetah car.
In both Oppositions, during the main trial period, Opposers submitted the
deposition testimony with accompanying exhibits of William P. Thomas, III (one of
the named Opposers).7
In both Oppositions, Applicant submitted under notice of reliance printouts of
articles from magazines featuring Applicant; a printout from Wikipedia for the
definition of Continuation Car; printouts from Applicants website; TSDR printouts
5 34 and 41 TTABVUE.
6 26 TTABVUE. UMG Recordings, Inc. v. Charles ORourke, 92 USPQ2d 1042, 1045 n.12
(TTAB 2009) (if a party pleads a pending application in the notice of opposition, it may make
the resulting registration of record at trial without having to amend its pleading to assert
reliance on the registration).
7 77 TTABVUE.
7
Opposition Nos. 91219618 and 91221893
of the file histories of Application Serial Nos. 76440275, 76440276, 76470097 and
assignment documents for Registration No. 3169065; the court amended judgment
from the U.S. District Court, Central District of California, Southern Division;
Stipulation of Undisputed Facts filed in the civil action in the U.S. District Court for
the Central District of California, Southern Division.8 Applicant also submitted the
testimony declaration of Robert E. Auxier, Jr. with accompanying exhibits.9
The Oppositions were consolidated by Board order on May 22, 2018, and Opposers
submitted during their consolidated rebuttal period the testimony declarations with
accompanying exhibits of Dean Klein, Frank Thomas, William P. Thomas, III,
William M. Scherer, Carolyn Thomas Walters, Ron Keck, and Fred Yeakel;10 and a
notice of reliance on excerpts from a catalog and a magazine article.11
Applicant objects to Opposers rebuttal testimony declarations on the ground that
they are improper rebuttal because they are offered to bolster their case-in-chief and
establish a new and earlier first use date. App. brief appx A, 79 TTABVUE 71.
Evidence which should constitute part of a plaintiffs case in chief, but which is made
of record during the rebuttal period, is not considered when a defendant objects.
United States Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537 (TTAB 2006). A
defendant is entitled to an opportunity to rebut, during its testimony period, any
8 51 TTABVUE. Exhibits 20-22 were stricken by Board order. 59 TTABVUE 10-12.
9 52 TTABVUE.
10 64-70 TTABVUE.
11 63 TTABVUE.
8
Opposition Nos. 91219618 and 91221893
testimony and evidence proffered in support of the allegations in the notice of
opposition. This opportunity is foreclosed if a plaintiff withholds the evidence until
its rebuttal testimony period, which is intended to be limited to denials, refutations
or explanations of defendants testimony and evidence. Id. (citing General Electric Co.
v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977)).
We find the rebuttal declarations to be proper rebuttal for the reasons set forth in
Opposers reply brief appendix. Opp. reply brief appx. A, 80 TTABVUE 23-30. For
example, the rebuttal testimony serves to rebut Applicants testimony regarding
Applicants assertion that use by the limited liability company BTM LLC inured to
his (or BTM LLCs) benefit. See, e.g., Keck Decl. ¶ 4, 69 TTABVUE 3 (I own the
company Cheetah Continuation Collectibles founded in June of 2005 Cheetah
Continuation Collectibles was the exclusive distributor of the Authorized Bill Thomas
Continuation Cheetah manufactured by BTM, LLC from around 2005 to 2008. BTM,
LLC was owned by Bill Thomas II and Robert Auxier. I would not have agreed to
sell, offer for sale, or distribute Cheetah racecars that were not authorized by Bill
Thomas II and the Thomas family.); Yeakel Decl. ¶ 2, 70 TTABVUE 2 (I maintain
and moderate the online blog Cheetah Cafe, which is a forum for Cheetah racecar
enthusiasts I have operated the Cheetah Cafe since 2007, and I use the Cheetah
trademarks on the website based on a license given by the Thomas family.); Klein
Decl. ¶ 3, 6, 64 TTABVUE 3, 4-5 (I contacted Bill Thomas II in June of 2001 to seek
permission and a license to use his name, his companys name, and his companys
logo for this die cast car project. Later in June of 2001, after some negotiating, I was
9
Opposition Nos. 91219618 and 91221893
granted permission to use the Bill Thomas name, the Bill Thomas Race Cars name
and the Bill Thomas Race Cars logo. In 2002, Chevrolet announced that they were
going to discontinue the Camaro model. I went to Bill Thomas II and This
conversation resulted in another relationship whereby I purchased a 2002 Camaro
and he advised, made recommendations and in some cases facilitated advancing this
project. The result was the completion of a 2002 Chevrolet Camaro, 35th Anniversary
Edition equipped with a Bill Thomas Race Cars 427 designed engine. Numerous
custom parts were created for this project including a custom Bill Thomas Race Cars
intake manifold, custom Bill Thomas Race Cars valve covers, Custom Bill Thomas
Equipped 427 Badging to name a few.). In addition, the rebuttal testimony serves to
rebut the veracity of certain testimony and exhibits from Mr. Auxier regarding his
purported rights. See e.g., Yeakel Decl. ¶¶ 9-11, 70 TTABVUE 5-6 (The second reason
that I revoked Mr. Auxiers access was because he was misleading other users of the
community by using the username MrCheetah and implying his information was
authorized by Bill Thomas or the Thomas Family. Mr. Auxier cited his OFFICIAL
BTM Survey and his Bill Thomas Race Cars Museum. I did not want Mr. Auxier
to continue to confuse well-intentioned consumers that might be reading my
discussion boards and think that Mr. Auxier is somehow authorized by Bill Thomas
or the Thomas family.); Scherer Decl. ¶¶ 3-8, 67 TTABVUE 3 (On January 31, 1998,
I signed a contract with Robert Auxier to build a replica Cheetah and have never
received the car I was promised. I attempted to contact Mr. Auxier many times and
spoke with him many times. The last time I spoke with Mr. Auxier on the phone,
10
Opposition Nos. 91219618 and 91221893
he told me that he would not be able to deliver my car Mr. Auxier uses the Bill
Thomas Race Cars logo and several Cheetah logos on his website, so I thought he was
authorized by the Thomas family to sell racecars using their logos.); Thomas III
Decl., ¶¶ 16-22, 66 TTABVUE 7-9. The rebuttal testimony also serves to rebut
Applicants testimony that Bill Thomas children never worked in Bill Thomas prior
business, see, e.g., Walters Decl. ¶ 3, 68 TTABVUE 3; Thomas III Decl., ¶ 2, 66
TTABVUE 2-3, and Applicants testimony regarding the chain of title of Bill Thomas
intellectual property, see, e.g., Frank Thomas Decl., 65 TTABVUE.
Opposers object to certain testimony of Mr. Auxier as lacking personal knowledge
and as inadmissible expert opinion. As to the objection based on inadmissible expert
opinion, Applicant did not submit Mr. Auxiers testimony as an expert but rather as
a fact witness based on his personal knowledge. In any event, the Board is
responsible for determining whether the marks are similar, and we will not substitute
the opinion of a witness, even an expert witness, for our evaluation of the facts.
Edwards Lifesciences Corp. v. Vigilanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010).
As to his personal knowledge, Mr. Auxier did have at least a business relationship
with Bill Thomas. We do not strike this testimony and give it appropriate probative
value taken with the record as a whole.
Opposers and Applicant lodged various other objections to various testimony and
evidence. Board proceedings are heard by Administrative Trademark Judges, not lay
jurors who might easily be misled, confused, or prejudiced by flawed evidence. Cf.
Harris v. Rivera, 454 U.S. 339, 346 (1981) (In bench trials, judges routinely hear
11
Opposition Nos. 91219618 and 91221893
inadmissible evidence that they are presumed to ignore when making decisions.).
We employ the standards the Board previously has applied, and accord the testimony
and evidence whatever probative value it deserves. Ultimately, the Board is capable
of weighing the relevance and strength or weakness of the objected-to testimony and
evidence in this case, including any inherent limitations, which precludes the need to
strike the challenged testimony and evidence if the objection is well-taken. Poly-Am.,
L.P. v. Ill. Tool Works, Inc., 124 USPQ2d 1508, 1510 (TTAB 2017). We have given the
testimony and accompanying evidence their due weight, keeping in mind any
objections. Luxco, Inc. v Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479
(TTAB 2017). As necessary and appropriate, we address any limitations to the
testimony and evidence material to our decision.12 Id.
II. STANDING AND PRIORITY
Opposers pleaded and proven registrations are summarized below:
Registration No. 3169065, for the mark shown below
12 We additionally note that both parties, by way of their respective notices of reliance,
submitted printouts from various websites downloaded from the Internet. Although
admissible for what they show on their face, see Trademark Rule 2.122(e)(2), 37 C.F.R. §
2.122(e)(2), this evidence also contains hearsay that may not be relied upon for the truth of
the matters asserted unless supported by testimony or other evidence. Fed. R. Evid. 801(c);
WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1038
(TTAB 2018); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1039-40 (TTAB 2010);
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §
704.08(b) (2019) (The probative value of Internet documents is limited. They can be used to
demonstrate what the documents show on their face. However, documents obtained through
the Internet may not be used to demonstrate the truth of what has been printed.).
12
Opposition Nos. 91219618 and 91221893
for Clothing, namely t-shirts, sold on the internet, at
automobile shows and at swap meets, in International
Class 25, issued on November 7, 2006, renewed; and
Registration No. 5105313 for the standard character mark
BILL THOMAS CHEETAH for Race cars, and parts for
race cars, namely, structural parts, trims, and badges, in
International Class 12, Clothing, namely, tops and
bottoms, International Class 25, Restoration of Bill
Thomas Cheetah race cars for others, in International
Class 37, issued on December 20, 2016.
Because Opposers have made their pleaded registrations properly of record in both
Oppositions, Opposers have established their standing to oppose registration of
Applicants marks and their priority is not in issue with respect to the marks and
goods in those registrations.13 See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
13 In an opposition, introduction of an opposers pleaded registration does not prove priority;
it eliminates the need to prove priority with respect to the mark and goods in the registration.
See King Candy, 182 USPQ at 110. Although Opposers did not plead these registrations in
Opposition No. 91219618 they were tried by implied consent and we consider the pleadings
amended to conform with the evidence. DC Comics v. Pan American Grain Manufacturing
Co., 77 USPQ2d 1220, 1223 (TTAB 2005) (opposer introduced into evidence two unpleaded
registrations and applicant did not object and treated them as of record, therefore, the Board
deemed the pleading amended pursuant to Fed. R. Civ. P. 15(b)); Time Warner Entertainment
Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (opposition deemed amended to include
opposers claim of ownership of previously unpleaded registrations where opposer filed notice
of reliance on those registrations at trial and applicant did not object thereto). Contrary to
Applicants statement in his brief that Opposers do not rely on these marks in Opposition No.
91219618, Applicant did not object to their submission and also put Registration No. 3169065
in the record himself under notice of reliance exhibits 17-18. 51 TTABVUE 245-401.
Moreover, as discussed below, we find Opposers have established common law rights in the
pleaded CHEETAH BTM and design mark.
13
Opposition Nos. 91219618 and 91221893
F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); and King Candy, 182 USPQ 108 (CCPA 1974).
While priority is not in issue as to the CHEETAHS ALWAYS WIN and design,
and the BILL THOMAS CHEETAH marks in connection with the identified goods
and services, we also make findings as to the common law rights for the CHEETAH
BTM and design, and the BILL THOMAS RACE CARS and design marks.
A. Use of the CHEETAH BTM and design and BILL THOMAS RACE CARS and
design marks
Opposers are the children of William Thomas II (Bill Thomas). See, e.g.,
Applicants Not. Rel. Exh. 23, 51 TTABVUE 460. The CHEETAH BTM and design,
BILL THOMAS RACE CARS and design, CHEETAHS ALWAYS WIN and design
and BILL THOMAS CHEETAH marks were first used in 1963 when Opposers father
Bill Thomas created the Cheetah race car to compete for Chevrolet through a
In addition, despite the fact that the filing date of the underlying application of Registration
No. 5105313 is later than the opposed applications it still has the force to remove priority as
an issue as to the mark, goods and services in the registration. King Candy Co., Inc. v. Eunice
Kings Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Finally, to the extent Applicant argues against the validity of these registrations, because
Applicant did not file counterclaims for cancellation of these registrations, we disregard such
argument. Trademark Rule 2.106(b)(2)(ii), 37 C.F.R. § 2.106(b)(2)(ii) (An attack on the
validity of a registration pleaded by an opposer will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such registration.); Massey Junior
College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, 274 n.5 (CCPA
1974). For example, Applicants argument regarding a purported transfer agreement
between him and Bill Thomas and the validity of the assignments recorded in the registration
file of Registration No. 3169065 cannot undermine the demonstrated status and title of this
registration absent a counterclaim.
14
Opposition Nos. 91219618 and 91221893
company he owned called Bill Thomas Motors. Thomas Depo. ¶ 10, 77 TTABVUE 15;
Auxier Decl. ¶¶ 3-4, 52 TTABVUE 3. The original Cheetah automobiles were adorned
with the CHEETAH BTM and design, BILL THOMAS RACE CARS and design and
CHEETAHS ALWAYS WIN and design marks. Auxier Decl. ¶ 6, 52 TTABVUE 4.
Production of the Cheetah car stopped in about 1966. Auxier Decl. ¶ 7, 52 TTABVUE
4. At most, 29 vehicles were built (perhaps only 17-18). Auxier Decl. ¶ 5, 52
TTABVUE 4. Opposers worked in the family business. Thomas Decl. ¶ 2, 66
TTABVUE 2-3; Walters ¶¶ 2-3, 68 TTABVUE 2-3. Bill Thomas licensed use of his
marks in connection with die cast cars in 2001 and 2002, Klein Decl. ¶¶ 2-9, 64
TTABVUE 2-6, and used them on clothing distributed to Cheetah racecar fans and
owners, Walters ¶ 7, 68 TTABVUE 4-5. Bill Thomas died in October of 2009 and his
entire estate passed to his wife. Thomas Depo., 77 TTABVUE 22-23; Opp. Second
Not. Rel. Exh. 1, 41 TTABVUE 15-16; Thomas Decl. ¶¶ 23-33, 66 TTABVUE 8-11;
Frank Thomas Decl. ¶¶ 4-9, 65 TTABVUE 3-4; Walters Decl. ¶¶ 10-15, 68 TTABVUE
6-7. As discussed below, based on the evidence of record, Bill Thomas did not assign
his trademark rights to anyone. Therefore, his entire estate would include these
trademarks and all use that inured to his benefit. Thereafter, his wife assigned the
trademark rights and registrations to her son William Thomas, III (Opposer) and he
in turn transferred those rights to himself and his sister, Carolyn Thomas Walters
(Opposer). Thomas Depo., 77 TTABVUE 22-23; Opp. Second Not. Rel. Exh. 1, 41
TTABVUE 15-16; Thomas Decl. ¶¶ 22-33, 66 TTABVUE 8-11; Frank Thomas Decl.
¶¶ 4-9, 65 TTABVUE 3-4; Walters Decl. ¶¶ 10-15, 68 TTABVUE 6-7. They continue
15
Opposition Nos. 91219618 and 91221893
to use the marks in connection with clothing, race car parts, race car restoration
services and providing information on racing related to Bill Thomas. See, e.g., Thomas
Depo., 77 TTABVUE 34 (selling t-shirts with logos in 2002); 38-39 (licensing marks
to slot car maker Carrera in 2011-2012); 33-32 (selling hats and t-shirts and providing
information about Bill Thomas race cars online since 2014); 149, 166 (selling car
parts); 150 (selling t-shirts at trade shows, car shows, racing events); 157, 162, 164
(sales of product, including hats and t-shirts at racing events between 2000-2016).
While the evidence of use of the marks prior to 2014 when Opposers began offering
clothing, race car parts, race car restoration services, and providing information on
racing related to Bill Thomas under these marks online is thin, there is sufficient use
to support continued use since Bill Thomas death in 2009. For example, Opposers
continued to sell t-shirts and hats and in 2011-2012 Opposers licensed Carrera to use
their marks in connection with die cast cars. Thomas Depo., 77 TTABUVE 38-39. The
license is within three years of Bill Thomas death and the expiration of the
authorization/license agreement with BTM LLC discussed below.
Applicant testifies that since 1994 he has been selling replica Cheetah cars,
clothing and decals with the marks in the subject applications. Auxier Decl. ¶¶ 22-
25, 28-38, 39-47, 52 TTABVUE 7-12, 50-54, 75-80, 89-94. The evidence of his use from
1994 through 2001 is sparse. Examples of use of the marks from 1994-1998 include
photographs of the replica vehicle, a booth at a car auction in 1994 and 1998, a t-
shirt, current business cards, and magazine articles. Auxier Decl. Exhs. 2, 3, 4, 6, 7,
16-25, 52 TTABVUE 48-57, 61-80, 165-202. He testifies that he began to sell
16
Opposition Nos. 91219618 and 91221893
automobiles, automobile parts, decals and clothing through eBay in 1998. Id. ¶¶ 28-
29, 52 TTABVUE 8-9. Opposers challenge the veracity of Applicants testimony
regarding the use of these marks from 1994-1998. Indeed, the record does not support
use of the marks in the sale of the applied-for goods or services in a manner to
establish proprietary trademark rights. Moreover, to the extent any inference of such
rights could be made, the 2001 agreement with Bill Thomas forecloses such
inferences.
In 2001 Bill Thomas, Applicant and Applicants son formed a limited liability
company called BTM LLC. The agreement entered into between Bill Thomas and
BTM LLC on December 28, 2001 includes a provision whereby Bill Thomas consents
to BTM LLCs use of these marks. The authorization agreement is excerpted below:
This Authorization Agreement as of Dec. 28, 2001 by and
between BTM-LLC Manufacturer and Bill Thomas, a
member of BTM LLC of Arizona
Thomas is willing to consent to such manufacture and
distribution and to provide the Authentication Letter for
up to one hundred (100) units Of the Continuation Product
under the terms and conditions set forth Below.
Also BTM has Exclusive rights to use the Original BTM
logo in all forms and designs.
6. Commercial symbols, decals, logos, T-shirts, hats, and
any form of apparel will be referred to as Memorabilia.
Thomas consents to the use of all memorabilia which was
used in the marketing and distribution of the original
Cheetah project to be used by the manufacturer and its
authorized distributor in marketing and distribution of the
new continuation Cheetah Automobile. Manufacturer
BTM LLC has exclusive rights to the marketing and
distribution of all memorabilia products with the right to
appoint a distributor from time to time to assist in the
marketing and distribution of memorabilia products. BTM
17
Opposition Nos. 91219618 and 91221893
LLC reserves the right to suspend, stop and or cancel the
distributors right to marketing and distribution of any and
all memorabilia products at any time. Thomas reserves the
right to produce all memorabilia products to be sold to BTM
LLC with exception of products Thomas is unable to
produce.
Auxier Decl. Exh. 27, 52 TTABVUE 206-7.
In addition, on July 13, 2002, Bill Thomas and BTM LLC signed an agreement
that Bill Thomas agreed to assign trademark rights to BTM LLC (not Applicant,
Robert Auxier) at such time as BTM requests. Pertinent excerpts are reproduced
below:
Whereas, [Bill] Thomas has joined with Charles Auxier
and Robert Auxier to form BTM to exploit the CHEETAH
automobile previously designed and produced by THOMAS
and the related logos and trademarks; and
Whereas, BTM intends to produce and market new and
improved BILL THOMAS CHEETAH automobiles and
wearing apparel utilizing logos and trademarks
incorporating Bill Thomas and BTM and Cheetah:
Now, Therefore, in consideration of the premises and of the
mutual promises hereinafter set forth, the parties agree as
follows:
1. Assignment of Logo/Trademark. Thomas agrees to
assign to BTM the logo and trademark consisting of the
word Cheetah and the initials BTM and the picture of a
cheetah all imposed on a representation of a stars-and-
stripes shield, as more particularly appears on Exhibit 1
hereto, together with the goodwill inhering therein, for
wearing apparel, at such time as BTM requests.
2. Application To Register Mark. Until such time as BTM
makes the request for the assignment referred to in ¶ 1,
Thomas shall remain, and he agrees to remain, the owner
of the mark and Thomas agrees promptly to file and
prosecute, at BTMs expense, an application to register
18
Opposition Nos. 91219618 and 91221893
that mark with the U.S. Patent & Trademark Office for
items of wearing apparel as agreed between the parties.
6. Term. The right of BTM to request the assignment under
¶1 shall continue until the later of Thomas ceasing to be a
member of BTM or BTM ceasing exploitation of the BILL
THOMAS CHEETAH automobile and related wearing
apparel.
Auxier Decl. Exh. 32, 52 TTABVUE 539.
This Agreement to Transfer only pertains to the CHEETAH BTM and design mark.
Applicant submitted a purported November 24, 2006 assignment agreement
between Bill Thomas and BTM LLC allegedly assigning all right, title and interest
in and to the mark [CHEETAH BTM and design] that is the subject of U.S.
Trademark Registration No. 3,114,572. Auxier Decl. Exh. 42, 52 TTABVUE 558.
There is no witness; it is not notarized. Applicant testifies that:
98. As Bill Thomas health declined and pursuant to the
Transfer Agreement, I asked Bill Thomas in November
2006 to sign documents assigning the CAW Logo and BTM
Crest to BTM AZ. The trademark registrations had
recently issued and my attorney had advised me to wait
until both the CAW Logo and the BTM Crest registrations
had issued before obtaining written assignments.
99. On November 24, 2006, Bill Thomas executed
Assignment of Trademarks Agreements transferring the
CAW Logo and BTM Crest Registration to BTM AZ,
including all right, title and interest in and to all of its
associated goodwill. I am unable to locate a copy of the
assignment agreement for the CAW Logo.
100. I personally witnessed Bill Thomas sign the
Assignment of Trademarks Agreement and avow that it is
his signature that appears on the document and that he
was of sound mind when he signed the document.
Auxier Decl. ¶¶ 98-100, 52 TTABVUE 25-26.
19
Opposition Nos. 91219618 and 91221893
By requiring his consent, the 2001 Authorization Agreement recognizes Bill
Thomass ownership of these marks, and contradicts Applicants assertions that his
use from 1994 until 2001 (the signing of the agreement) resulted in the acquisition of
proprietary trademark rights in these marks. This is further compounded by the
Agreement to Transfer those rights upon BTMs request as to the CHEETAH BTM
and design mark. These two documents evidence that the Authorization Agreement
serves as a licensing agreement for use of Bill Thomas marks (logos).
The possible assignment referred to in the Agreement to Transfer, never occurred.
The validity of the purported 2006 Assignment of the CHEETAH BTM and design
mark is questionable and we do not rely on it. There was no third-party witness to
the signature. The manner in which it purportedly occurred deviates from the pattern
of conduct surrounding the other agreements sent through the mail. And Bill Thomas
son, William Thomas, III (Opposer), testifies that his father did not have a major
health event that would affect his signature in 2006 and the signature does not look
like his fathers signature. Thomas Decl. ¶ 18, 66 TTABVUE 8. We observe that that
signature is the only one in the record where the T and H are not joined and the final
S is fully formed. For example:
Thomas Depo. Exh. 67, 77 TTABVUE Thomas Depo. Exh. 63, 77 TTABVUE
884 (November 24, 2006 Purported 878 (September 6, 2006 USPTO filing
Assignment) for substitute specimens)
20
Opposition Nos. 91219618 and 91221893
Opposers also point to a January 29, 2007 email from Applicants attorney
inquiring if Applicant ever got a signed assignment back from Bill Thomas indicating
once it was done it should be recorded with the USPTO. Id. at ¶ 19, Exh. 3, 66
TTABVUE 8, 95. If such an assignment had been signed on November 24, 2006, the
fact that Applicant had not forwarded it to his lawyer by January 2007 or ever
recorded it with the USPTO raises serious doubt. In addition, the email from the
lawyer includes a prior email sent on November 20, 2006 stating attached is the
Trademark Assignment for the Cheetah BTM Crest trademark. Based on
Applicants account he would have had to travel from Arizona within only four days
to be present at Bill Thomas house in Anaheim California to personally witness the
signature, and then not send it to his lawyer or file it with the USPTO. In addition,
Applicant attempted to obtain assignments from William Thomas, III (Opposer) in
2013. This action is contrary to Applicants assertion that such marks had already
been assigned. Thomas Depo., 77 TTABVUE 139.
Applicant points to a November 7, 2002 email purportedly from Bill Thomas
wherein is written I found the license agreement, get a copy from your attorney and
we will go over it over the phone. Theres one thing this license agreement must have
is a sentence stating that I never had any trademarks, copyrights or incorporations
pertaining to the Cheetah, sales or promotion materials or to BTM or that I ever
applied for them, and that you were well aware of that fact well before this latest
project was thought of, probally [sic] about 1995. Auxier Decl. Exh. 29, 52 TTABVUE
21
Opposition Nos. 91219618 and 91221893
212. This email, taken out of context, has little probative value, particularly in light
of the contemporaneously signed agreements acknowledging Bill Thomas ownership
of these marks and the absence of any assignment agreements, other than the
questionable 2006 agreement, or assignments filed with the USPTO registration files.
Whatever may have been in Bill Thomas mind at that moment never materialized
into any action.
In 2014, BTM LLC (the LLC of which Applicant, Applicants son and Bill Thomas
were members) brought an action against Bill Thomas heirs seeking enforcement of
the Authorization Agreement. Auxier Decl. ¶ 107, 52 TTABVUE 28. In its judgment
the court found the agreement to be a personal services agreement and therefore
expired upon Bill Thomas death. The court also explicitly stated that any licensing
by the current Opposers would not have been a breach of the contract because BTM
LLC and Applicant did not have any exclusive rights inasmuch as the contract had
expired. Pertinent excerpts from the Courts August 20, 2015 Ruling are set out
below:
[G]iven that the contract was a personal service contract,
the contract terminated as a matter of law upon his death.
All rights to manufacture a Continuation Cheetah
terminated. All rights to use the marks granted under the
agreement terminated. All rights to make memorabilia
terminated. For present purposes, I need not determine
how expansive the grant of marks was. Whatever that
grant was, it terminated upon the death of Bill Thomas, II,
on October 10, 2009.
Opp. Not. Rel. Exh. 3, 34 TTABVUE 42.
given that I have determined that the rights under the
Authorization Agreement expired, including the
intellectual property rights, there was no breach of contract
22
Opposition Nos. 91219618 and 91221893
in whatever third-party licensing the defendants engaged
in with respect to other manufacturers. Assuming the
letters were in fact sold to Ruth, that would not have been
a violation of the expired contract. Similarly, the slot car
sales the slot car licensing would not have been a
violation, nor would the licensing of the logo to Ruth have
been a violation. Given that the contract expired and that
there were no intellectual property rights under the
agreement remaining to BTM, the alleged breaches have
not been proven.
34 TTABVUE 44.
there is no right on the part of BTM [LLC formed by
Auxier and Thomas] to use any intellectual property rights
whatever their scope may be under the Authorization
Agreement.
34 TTABVUE 46.
I find that all rights to BTM under the Authorization
Agreement terminated with Bill Thomas, IIs, death,
including the right to have delivered signed certificates;
the right to use the original logos; and the right to make
memorabilia.
34 TTABVUE 47.
This Declaration relates solely to rights granted under the
Authorization Agreement and shall have no effect on any
separate claim to ownership of intellectual property rights,
including without limitation trademark and copyright
rights.
34 TTABVUE 53.
The September 4, 2015 amended judgment includes the following:
The Authorization Agreement is no longer in force, and
whatever intellectual property rights granted to Plaintiff
[Applicant] in the Authorization Agreement have lapsed,
and that there is no right on the part of BTM, LLC to use
any intellectual property rights, whatever their scope may
be under the Authorization Agreement.
23
Opposition Nos. 91219618 and 91221893
Opp. Not. Rel. Exh. 4, 34 TTABVUE 53.
While the court states its decision has no effect on any separate claim to
ownership of intellectual property rights, it effectively erases possible reliance on
use prior to the agreement and during the agreement as that use would inure to the
benefit of the trademark owner, the person giving consent to use, Bill Thomas, which
was handed down to his heirs. Since October 2009, the expiration of the contract,
there is evidence to support continued use of Bill Thomas trademarks by his heirs.
Thus, during this time period abandonment by the heirs has not been shown.
Applicants argument that these marks were abandoned prior to 1994 is directly
contradicted by the agreement BTM LLC entered into with Bill Thomas and, to the
extent the use that occurred under that agreement constitutes new, separate use of
the marks, it inured to the benefit of the owner of the marks, Bill Thomas and his
subsequent heirs, as reflected by the terms of the contract requiring his consent to
use. BTM LLC and Robert Auxier, as an individual, cannot rely on that use.
After Bill Thomas death in 2009, Applicant testifies that he continued selling
Cheetah clothing items and decals, and made efforts to manufacture and sell
Continuation Cheetahs. I received additional orders in 2012 and 2013. Auxier Decl.
¶¶ 29-31, 36-83, 105, 52 TTABVUE 9, 11, 27. Applicant has maintained a website
with information about his company and Cheetah vehicles displaying the CHEETAH
BTM and design and BILL THOMAS RACE CARS and design marks. Auxier Decl.
Exh. 8a, 52 TTABVUE 85. See also Exhs. 10, 12, 12a, 15, 52 TTABVUE 90-94, 121-
24
Opposition Nos. 91219618 and 91221893
151, 163.14 However, based on this record, the rights to the trademarks were never
assigned to BTM, LLC or to Robert Auxier as an individual and from the termination
of the Authorization Agreement because Opposers have not abandoned these marks
and object to Applicants use, Applicant may not rely on this use. It is noted that
Applicant is an individual, therefore, all arguments and evidence regarding prior
rights based on the purported assignments pertain to BTM LLC not Applicant.
In view of the foregoing, we find that Opposers have established prior trademark
rights in both marks for clothing, race car parts, race car restoration services and
providing information on racing related to Bill Thomas.
B. Applicants Affirmative Defense of Abandonment
Section 45 of the Trademark Act, 15 U.S.C. 1127, provides in relevant part that a
mark shall be deemed to be abandoned:
When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years shall
be prima facie evidence of abandonment. Use of a mark
means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in
a mark.
There are two elements to a nonuse abandonment claim: nonuse of the mark and
intent not to resume use. Noble House Home Furnishings, LLC v. Floorco Enters.,
LLC, 118 USPQ2d 1413, 1417 (TTAB 2016); see also Jack Wolfskin Ausrustung Fur
14Applicant testified that since 2007 he has been using the subject marks in connection with
providing information online about car racing and for the sale of clothing, automobile, parts
and decals. However, such use from 2007 until 2009 would have been under the auspices of
BTM LLC and would have inured to the benefit of Bill Thomas, the trademark owner during
that time period.
25
Opposition Nos. 91219618 and 91221893
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1131 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016). Introduction
of evidence of nonuse of a mark for three consecutive years constitutes a prima facie
showing of abandonment and triggers a rebuttable presumption that a mark was
abandoned without intent to resume use. Rivard v. Linville, 133 F.3d 1446, 45
USPQ2d 1374, 1376 (Fed. Cir. 1998). The presumption shifts the burden to the party
contesting the abandonment to produce evidence of either (1) use of the mark during
the statutory period, or (2) an intent to resume use. Id. The burden of persuasion,
however, always remains with the party asserting abandonment to prove it, by a
preponderance of evidence. See Cerveceria Centroamericana S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); see also West Florida
Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1666 (Fed. Cir. 1994)
(stating that a party asserting abandonment as a defense to a prior use assertion
bears at a minimum a burden of coming forth with some evidence of abandonment).
As explained above, the defense of abandonment is only relevant to the
CHEETAHS BTM and design and BILL THOMAS RACE CARS and design marks.
In view of our findings that Applicants evidence to show use of these marks in
connection with clothing and information services between 1994 and the 2001
Authorization Agreement did not confer proprietary trademark rights on Applicant,
the acknowledgement of Bill Thomas rights in the 2001 agreement, the 2002 intent
to transfer agreement, the questionable 2006 assignment, and the attempt by
Applicant to obtain an assignment from Bill Thomas heirs in 2013, the question of
26
Opposition Nos. 91219618 and 91221893
abandonment prior to 2001 is irrelevant, inasmuch as all use by BTM LLC beginning
in 2001, inured to the benefit of Bill Thomas and his heirs. Therefore, we only
determine whether abandonment occurred after the expiration of the Authorization
Agreement in 2009.
As described above, Opposers obtained those rights through inheritance and
continued use of these marks since 2009. Their use since that time occurred within
three years of the expiration of the authorization agreement, therefore the
presumption did not shift. However, even if the presumption based on three years of
nonuse shifted, their activities are more than sufficient to evidence an intent to
resume use. In view thereof, Applicant has not established by a preponderance of the
evidence that Opposers abandoned these marks.
III. LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours and 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). Two key considerations are the similarities between the marks and the
similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
27
Opposition Nos. 91219618 and 91221893
A. Opposers Common Law Marks
As discussed above, we have found that Opposers have established prior common
law rights to the marks and , both used in connection with
clothing, race car parts, race car restoration services and providing information on
racing related to Bill Thomas. Because the marks are identical to Applicants
respective marks and , Applicants clothing identified in both
applications is identical to Opposers clothing, and Applicants information services
in Application No. 85887151 are identical to Opposers information services and
related to Opposers restoration services, and the trade channels are identical or
closely related, confusion is likely as to those marks, goods and services. Applicant
concedes that the marks are similar. App. brief, 79 TTABVUE 49.
B. Opposers Registered Marks CHEETAHS ALWAYS WIN and design, BILL
THOMAS CHEETAH
1. Relatedness of the Goods and Services, Channels of Trade, Classes of
Purchasers
The goods and/or services do not have to be identical or even competitive in order
to find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498,
1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB
2009). We must consider not whether the actual goods and services are literally the
same, but rather whether the public will be confused as to their source. See Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); In re Shell
28
Opposition Nos. 91219618 and 91221893
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Safety-Kleen Corp. v.
Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975); In re Assn of
the U.S. Army, 85 USPQ2d 1264, 1270 (TTAB 2007). See also In re Martins Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding
MARTINS for wheat bran and honey bread, and MARTINS for cheese, likely to cause
confusion). The nature and scope of a partys goods or services must be determined
on the basis of the goods or services recited in the application or registration. See, e.g.,
In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018);
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 1370, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom
Sys., Inc. v. Hous. Comps. Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
In addition, it is well recognized that confusion may be likely to occur from the use
of the same or similar marks for goods, on the one hand, and for services involving
those goods, on the other. See, e.g., In re Detroit Athletic Co., 128 USPQ2d at 1052
(holding DETROIT ATHLETIC CO. for sports apparel retail services and DETROIT
ATHLETIC CLUB for clothing goods likely to cause confusion); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGGS (stylized)
for retail grocery and general merchandise store services and BIGGS and design for
furniture likely to cause confusion); In re Phillips-Van Heusen Corp., 228 USPQ 949
29
Opposition Nos. 91219618 and 91221893
(TTAB 1986) (holding 21 CLUB for various items of clothing and THE 21 CLUB
(stylized) for restaurant services likely to cause confusion); In re U.S. Shoe Corp., 229
USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail womens
clothing store services and CREST CAREER IMAGES (stylized) for uniforms likely
to cause confusion).
Applicants goods and services are Clothing, namely, jackets, hats, caps,
sweatshirts and t-shirts, in International Class 25 (Application Nos. 85831767,
85887151) and Providing information on racing, racing results, racing facts, racing
films, and racing pictures; provision of a web site featuring information on racing,
racing results, racing facts, racing films, and racing pictures; and provision of a web
site featuring information on 1956 thru 1970 historical racing films and pictures,
production history of replica Bill Thomas Cheetah race cars, and racing facts about
the original Bill Thomas Cheetah race cars, in International Class 41 (Application
No. 85887151). Opposers Clothing, namely t-shirts, sold on the internet, at
automobile shows and at swap meets in Reg. No. 3169065 is legally identical to
Applicants clothing goods in both of Applicants applications inasmuch as Applicants
broadly worded identification encompasses Opposers goods (t-shirts encompasses
t-shirts, sold on the internet, at automobile shows and at swap meets). Opposers
Clothing, namely, tops and bottoms in Reg. No. 5105313 are legally identical to
Applicants clothing goods in both of Applicants applications because Opposers
broadly worded identification encompasses Applicants goods (tops and bottoms
encompasses jackets, hats, caps, sweatshirts and t-shirts).
30
Opposition Nos. 91219618 and 91221893
Considering the channels of trade and classes of purchasers, because these goods
are legally identical and there are no limitations as to channels of trade or classes of
purchasers other than the encompassed channels of trade in one of Opposers
registrations, we must presume that Applicants and Opposers goods will be sold in
the same channels of trade and will be bought by the same classes of purchasers. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (TTAB 2012); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003).
Turning to Applicants services in Application No. 85887151, namely, Providing
information on racing, racing results, racing facts, racing films, and racing pictures;
provision of a web site featuring information on racing, racing results, racing facts,
racing films, and racing pictures; and provision of a web site featuring information
on 1956 thru 1970 historical racing films and pictures, production history of replica
Bill Thomas Cheetah race cars, and racing facts about the original Bill Thomas
Cheetah race cars, in International Class 41, we find them to be related to Opposers
clothing items in both registrations and to Opposers services in Registration No.
5105313, namely, Restoration of Bill Thomas Cheetah race cars for others, in
International Class 37. Specifically, the subject matter of Applicants services include
information on Bill Thomas Cheetah race cars which is the identical subject of
Opposers race car restoration services.15 In addition, as to the clothing items, such
While not all of Applicants information services are limited to Bill Thomas race cars, the
15
more broadly worded aspects of Applicants services encompass that subject matter.
31
Opposition Nos. 91219618 and 91221893
items are common collateral goods for various services and use of the identical word
(BILL THOMAS) or initials (BT) for the clothing items and the subject matter of the
services creates a relationship between the goods and services.
With regard to the channels of trade and classes of consumers, because there are
no limitations as to these factors in the identifications in the applications and
registrations (other than for the clothing goods in Registration No. 3169065) we must
presume that they move in all normal channels of trade, and that they are available
to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch
Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech,
Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (We have no authority to read any
restrictions or limitations into the registrants description of goods.) Thus, we must
presume that Opposers race car restoration services and Applicants information
services would be offered over the Internet, through automotive trade shows, and
other common channels of trade for automotive information and restoration services.
As to the parties clothing goods, they are also offered over the Internet, and it has
been established that their trade channels also include automotive trade shows,
racing events and swap meets.
Moreover, it is sufficient for a finding of likelihood of confusion if relatedness is established
for any item encompassed by the identification of goods or services within a particular class
in the application. Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014)
(citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986
(CCPA 1981)).
32
Opposition Nos. 91219618 and 91221893
In view of the above, the du Pont factors of the similarity of the goods and services,
the channels of trade and classes of purchasers favor a finding of likelihood of
confusion as between the marks in both applications and both registrations.
2. Purchasing Conditions
In considering this factor, we must look at the goods as identified and base our
determination on the least sophisticated consumer. Stone Lion Capital Partners, LP
v. Lion Capital LLP, 110 USPQ2d at 1163 cited in In re FCA US LLC, 126 USPQ2d
1214, 1222 (TTAB 2018) (Board precedent requires our decision to be based on the
least sophisticated potential purchasers.). Because Applicants and Opposers
identifications of goods and services are unrestricted other than to focus on
purchasers interested in race cars, we must assume that these goods and services are
sold to ordinary purchasers who exercise no more than ordinary care in their
purchasing decisions. See In re Fabfitfun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018)
(no restriction of price). There is no evidence that this segment of the general public
would necessarily exercise a higher degree of care when encountering the goods or
services and, in any event, the standard of care for purchasing goods and services is
that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1306 (TTAB 2004). We find this factor neutral.
3. Strength of the Marks
Before we compare the marks, we address the fifth and sixth du Pont factors to
determine the strength of the marks. In the likelihood of confusion context, fame
under the fifth du Pont factor varies along a spectrum from very strong to very
33
Opposition Nos. 91219618 and 91221893
weak. Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046,
103 USPQ2d 1435, 1440 (Fed. Cir. 2012) (quoting Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005)). A famous mark is one that has extensive public recognition and renown.
Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002). Fame, if it exists, plays a dominant role in the likelihood of confusion
analysis. Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). In view of the extreme deference that is accorded to a
famous mark in terms of the wide latitude of legal protection it receives, and the
dominant role fame plays in the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to prove it clearly. The commercial strength
of a mark may be measured indirectly, among other things, by the volume of sales
and advertising expenditures of the goods or services traveling under the mark, and
by the length of time those indicia of commercial awareness have been evident. Bose
Corp. v. QSC Audio Prods., Inc., 63 USPQ2d at 1305. Under the sixth du Pont factor,
a marks commercial strength may be curtailed by third-party use of similar marks
with similar goods or services. Jack Wolfskin, 116 USPQ2d at 1129; Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015).
Although the CHEETAHS ALWAYS WIN and design mark and the CHEETAH
portion of the BILL THOMAS CHEETAH are arbitrary, and therefore constitute
conceptually strong marks, see Palm Bay, 73 USPQ2d at 1692 (VEUVE is an
arbitrary term as applied to champagne and sparkling wine, and thus conceptually
34
Opposition Nos. 91219618 and 91221893
strong as a trademark), there is not definitive evidence to measure the commercial
strength of these marks. Conversely, there is no evidence of third-party use or
registration of the marks to diminish their strength. In view thereof, we accord the
marks the normal level of strength for arbitrary marks.
4. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicants and Opposers
marks compared in their entireties in terms of appearance, sound, connotation and
commercial impression. In re Detroit Athletic Co., 128 USPQ2d at 1048. 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. Triumph Learning LLC, 101 USPQ2d at 1721 (quotation
omitted). Similarity of the marks as to one factor alone (appearance, sound, meaning)
may be sufficient to support a holding that the marks are confusingly similar. See In
re Thor Tech, Inc., 90 USPQ2d at 1635; In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988). We keep in mind that when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). See also Bridgestone Americas Tire
Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1260 (Fed. Cir. 2011).
35
Opposition Nos. 91219618 and 91221893
We begin with the mark in Application Serial No. 85831767 (Opposition No.
91219618) and Opposers marks in Registration No. 3169065 and BILL
THOMAS CHEETAH in Registration No. 5105313. With regard to this application,
the marks are for legally identical goods.
Opposers design mark is similar in that it includes the word CHEETAHS. The
plural form does not provide a point of distinction. Trademarks and service marks
consisting of the singular and plural forms of the same term are essentially the same
mark. Weider Publns, LLC v. D&D Beauty Care Co., LLC, 109 USPQ2d 1347, 1356
(TTAB 2014) (SHAPES and SHAPE); In re Pix of Am., Inc., 225 USPQ 691 (TTAB
1985) (NEWPORTS and NEWPORT). Both design marks highlight the arbitrary
word CHEETAH by presenting it at the top of each mark. Both marks include the
depiction of a Cheetah. The depictions are different (one more cartoonish, facing
different directions), but both serve to underscore the meaning of the prominent
shared word CHEETAH. Both marks also include stars in their respective design
elements. The shield carrier design in Applicants mark does not present a significant
point of difference. If a mark comprises both wording and a design, greater weight is
often given to the wording, because it is the wording that purchasers would use to
refer to or request the goods or services. See, e.g., Viterra, 101 USPQ2d at 1911; In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010); In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); see also CBS Inc. v. Morrow, 708 F.2d
36
Opposition Nos. 91219618 and 91221893
1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (the word portion is the one most likely to
indicate the origin of the goods to which it is affixed.) While the wording in Opposers
mark presented in a circle can read as a phrase, it begins with the common term
CHEETAH. Similarly, the common term CHEETAH is above the initials BTM in
Applicants mark. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692 (presence of the strong distinctive term [VEUVE] as
the first word in both parties marks renders the marks similar). Overall, we find the
similarities in these marks, outweigh the dissimilarities when used with legally
identical goods and this du Pont factor weighs in favor of likelihood of confusion.
With regard to the BILL THOMAS CHEETAH mark, we arrive at the same
conclusion. Again, the marks share the prominent and arbitrary word CHEETAH.
The design element in Applicants mark simply underscores the meaning of the
shared word. The additional name BILL THOMAS in Opposers mark and the
additional abbreviation BTM in Applicants mark present both differences and
similarities in that the first two letters in Applicants mark could be perceived as the
initials for BILL THOMAS among race car enthusiast consumers. In re Mighty Leaf
Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming
TTABs finding that applicants mark, ML, is likely to be perceived as a shortened
version of registrant’s mark, ML MARK LEES (stylized), when used on the same or
closely related skin-care products). See also Answer ¶¶ 3-4, 10 TTABVUE 3
(Applicant admits that the letters BTM stand for Bill Thomas Motors.). Here, as
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Opposition Nos. 91219618 and 91221893
well, we find the similarities outweigh the dissimilarities when used in connection
with legally identical goods.
We now turn to Applicants mark in Application Serial
No. 85887151 (Opposition No. 91221893) and Opposers mark BILL THOMAS
CHEETAH in Registration No. 5105313.
The dominant element in Applicants mark is the name BILL THOMAS. The
remaining wording comprises an address and part of the subject matter of the
services presented in much smaller lettering. The design element is not sufficient to
overcome the identical name in both marks. In addition, the word CHEETAH in
Opposers mark does not sufficiently distinguish these marks, given the identity of
the name, and the legally identical goods and related services.
As to these marks, we also find the similarities outweigh the differences and the
overall commercial impressions are the same in relation to the relevant goods and
services.
Finally, there is no dispute that consumers in the vintage race car industry have
been exposed to all of these marks used together to identify a single source and an
association with the Bill Thomas Cheetah race car. See, e.g., Auxier Decl. ¶ 6, 52
TTABVUE 4 (The original Cheetah automobiles were adorned with the trademarks
and logos shown below [CHEETAH BTM and design, CHEETAHS ALWAYS WIN
38
Opposition Nos. 91219618 and 91221893
and design, BILL THOMAS RACE CARS and design]). Therefore, within this group
of consumers there can be no doubt that confusing similarity is likely.
5. Actual Confusion
Opposers argue that actual confusion has occurred. However, the evidence does
not support a finding of actual confusion. In his testimony deposition Mr. Thomas
testifies that he believes customers are likely to be confused by Applicants trademark
applications because Ive heard about it. Its a common discussion among people in
the specialty care business. Well, I mean, its the stuff that everybody is aware of
[Applicants] way of doing business; and its just, they are aware of the continuation
program that has now ended, and so yes. And so it causes confusion. Thomas Depo.,
77 TTABVUE 59-60. This vague testimony does not present instances of actual
confusion. The one example provided involved a customer of Applicant and the
customer was confused into thinking that [Opposer] was associated with [Applicant]
and his business. Thomas Decl. ¶ 32, 66 TTABVUE 11. That customer testifies by
declaration that during the time period between 1998 and 2002 he attempted to
purchase a replica Cheetah but Applicant did not finish it and the last check was
made out to BTM LLC in 2002. At some point, he contacted Opposer (Thomas)
believing Applicant was authorized by the Thomas family to sell racecars using their
logos. Scherer Decl. ¶¶ 3, 6, 7, 8, 67 TTABVUE 3. At that time, the father, Bill
Thomas, was associated with Applicant and had authorized Applicant to use the
logos.
39
Opposition Nos. 91219618 and 91221893
We note however that evidence of actual confusion is not necessary to establish a
likelihood of confusion. Herbko Intl, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002). We find this factor to be neutral.
6. Bad Faith
Opposers argue Applicant intends to cause confusion in bad faith by pointing to
Applicants website that includes the wording Official Website of Bill Thomas
Cheetah and an instance where Applicant failed to complete a sale of a replica
Cheetah.
Bad faith, or intent to confuse, falls under the thirteenth du Pont factor any other
established fact probative of the effect of use. L.C. Licensing Inc. v. Berman, 86
USPQ2d 1883, 1890 (TTAB 2008). [A] party which knowingly adopts a mark similar
to one used by another for related goods should not be surprised to find scrutiny of
the filers motive. LOreal S.A. and LOreal USA, Inc. v. Robert Victor Marcon, 102
USPQ2d 1434, 1442 (TTAB 2012). [W]hen there is evidence of an applicants intent
to adopt a mark that suggests to purchasers a successful mark already in use by
another, the Board may, and ought to, take into account that intent when resolving
the issue of likelihood of confusion when that issue is not free from doubt. First
International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1633 (TTAB 1988).
However, an inference of bad faith requires something more than mere knowledge
of a prior similar mark. Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d
1560, 1565, 4 USPQ2d 1793 (Fed. Cir. 1987). A finding of bad faith must be supported
by evidence of an intent to confuse, rather than mere knowledge of anothers mark or
40
Opposition Nos. 91219618 and 91221893
even an intent to copy. E.g., Starbucks Corp. v. Wolfes Borough Coffee, Inc., 588 F.3d
97, 92 USPQ2d 1769, 1782 (2d Cir. 2009) ([T]he only relevant intent is intent to
confuse. There is a considerable difference between an intent to copy and an intent to
deceive. (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:113 (4th ed. 2012))).
These examples may point to unauthorized use, but that is the center of the
priority dispute. This evidence goes to the issue of which party has established the
rights to the marks. Proving intent to confuse or deceive is subject to a high
evidentiary bar that has not been met here. See, e.g., LOreal S.A. and LOreal USA,
Inc. v. Robert Victor Marcon, 102 USPQ2d at 1442. We find this factor to be neutral.
7. Balancing of the Factors
We have considered all of the evidence pertaining to the relevant du Pont factors,
as well as the parties arguments with respect thereto. In balancing the relevant
factors, we conclude that because the goods and services are legally identical in part
or otherwise related, the trade channels and classes of customers overlap, and the
marks are similar, confusion is likely.
IV. Summary
In Opposition No. 91219618, we find that priority is not in issue as to the marks
and goods and services in Opposers Registration Nos. 3169065 and 5105313. We
further find that Applicants mark for Clothing, namely, jackets, hats, caps,
sweatshirts and t-shirts is likely to cause confusion with Opposers registered marks
41
Opposition Nos. 91219618 and 91221893
for clothing, namely, t-shirts, sold on the Internet, at automobile shows and
at swap meets and BILL THOMAS CHEETAH for Clothing, namely, tops and
bottoms.
We also find that Opposers have established priority as to the mark for
clothing and, therefore, Applicants identical mark for identical goods is likely to
cause confusion.
In Opposition No. 91221893, we find that priority is not in issue as to Opposers
marks, and goods and services in Registration Nos. 3169065 and 5105313. We further
find that Applicants mark for Clothing, namely, jackets, hats, caps,
sweatshirts and t-shirts and Providing information on racing, racing results, racing
facts, racing films, and racing pictures; provision of a web site featuring information
on racing, racing results, racing facts, racing films, and racing pictures; and provision
of a web site featuring information on 1956 thru 1970 historical racing films and
pictures, production history of replica Bill Thomas Cheetah race cars, and racing facts
about the original Bill Thomas Cheetah race cars is likely to cause confusion with
Opposers registered mark BILL THOMAS CHEETAH for Clothing, namely, tops
and bottoms and Restoration of Bill Thomas Cheetah race cars for others.
42
Opposition Nos. 91219618 and 91221893
Finally, we find that Opposers have established priority for the mark
for clothing, race car restoration services and providing information
on racing related to Bill Thomas and Applicants identical mark for identical goods,
and identical and related services is likely to cause confusion.
Decision: The oppositions are sustained.
43