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 In re Karapetian, Serial No. 87034208 (March 14, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).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 Marks: 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.

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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.

Text Copyright John L. Welch 2019.