The USPTO refused registration of the mark ASM ALL STAR
MOTORSPORTS & Design (shown first below), for catalog
and online auto parts services, finding a likelihood of confusion
with the two registered word+design marks shown next below, the
first for "Wholesale and retail store services featuring
automotive headlights," and the second for "Wholesale
distributorship in the field of high performance and racing
automotive parts and accessories." [MOTORSPORTS, AUTO LIGHTS,
and PERFORMANCE disclaimed in the respective marks.] ALL STAR seems
like a weak formative, doesn't it? How do you think this came
out? In re Karapetian, Serial No. 87034208
(March 14, 2019) [not precedential] (Opinion by Judge Lorelei
Ritchie).
The Board observed that the term ASM in applicant's mark
"appears to simply be an initialism for 'All Star
Motorsports' and thus reinforces that wording in the
mark." On its website, applicant displays the phrase with the
first letters highlighted.
As to the first cited mark, the literal element is emphasized, as
it is in applicant's mark. The "star" design in
applicant's mark "emphasizes the 'All Star' aspect
of its mark." The Board took judicial notice that "All
Star" is somewhat suggestive of automotive services "that
are promoted as best in class." However, there was no
admissible evidence that the term is weak. The Board concluded that
the applied-for mark is confusingly similar to the first cited
mark.
The second cited mark is dominated by the term ALLSTAR, since
PERFORMANCE is disclaimed. The Board found that "the term
'ASM' in applicant's mark, which is likely to be
perceived as an acronym," does not distinguish these marks.
Both marks contain "star" designs, which emphasize the
term ALL STAR. There was no evidence that star designs are weak in
this field.
The Board again concluded that, despite some dissimilarities in
sight and sound, these two marks are confusingly similar.
The Services: Although applicant had tried to
swerve around the two cited registrations by excluding "auto
lights, high performance and racing parts," the Board still
found auto part retail and wholesale services to be related based
on Internet and third-party registration evidence. This same
evidence demonstrated the similarity of the channels of
trade.
Conditions of Sale: Even assuming that relevant
consumers may exercise some care in purchasing auto parts,
especially wholesale purchasers, the Board once again noted that
even sophisticated purchasers are not immune to source confusion
when the involved goods or services are similar. The Board found
that this factor weighed slightly in applicant's favor.
Conclusion: The Board found confusion likely and
it affirmed the refusal based on both cited registrations.
TTABlog comment: Applicant referred in its
brief to third-party registrations for marks containing the term
"ALL STAR," but failed to make of record copies. The
Board sustained Examining Attorney Angela Duong's objection to
consideration of that third-party evidence.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
