Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1125923
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`Filing date:
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`04/09/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91264021
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`Party
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`Correspondence
`Address
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`Plaintiff
`Volkswagen Aktiengesellschaft
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`BARTH XAVIER DEROSA
`BELZER PC
`2905 BULL STREET
`SAVANNAH, GA 31405
`UNITED STATES
`Primary Email: bderosa@belzerlaw.com
`Secondary Email(s): rwomack@belzerlaw.com, paralegal@belzerlaw.com
`202-408-5955
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Opposition/Response to Motion
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`Barth Xavier deRosa
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`bderosa@belzerlaw.com, rwomack@belzerlaw.com, paralegal@belzerlaw.com
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`/barth xavier derosa/
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`04/09/2021
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`919 547 OPPOSERS REDACTED MEMORANDUM IN OPPOSITION TO MO-
`TION FOR SUMM ARY JUDGMENT.pdf(352126 bytes )
`919-547 EXHIBIT A.pdf(1166483 bytes )
`919-547 EXHIBIT B.pdf(2431174 bytes )
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`

`

`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`___________________________________
`VOLKSWAGEN AKTIENGESELLSCHAFT
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`Opposer,
`
`
`Opposition No. 91264021
` Application Ser. No. 88/780,498
`v.
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`DMA HOLDINGS INC.
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`Applicant.
`_________________________________________
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`
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`OPPOSER’S MEMORANDUM IN OPPOSITION TO MOTION FOR
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`SUMMARY JUDGMENT
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`[REDACTED VERSION]
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` BELZER PC
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`
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`By:
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`
` /Barth X. deRosa/
`Barth X. deRosa
`2905 Bull Street
`Savannah, Georgia 31405
`(912) 236-3001 phone
`(202) 408-5955 direct
`(912) 236-3003 fax
`bderosa@belzerlaw.com
`Attorney for Opposer
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`

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`PREAMBLE
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`Opposer, Volkswagen Aktiengesellschaft (VWAG), respectfully submits this Memorandum in
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`Opposition to Applicant, DMA-Holdings Inc’s, Motion for Summary Judgment. That Motion for Summary
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`Judgment was erroneously captioned, perhaps in haste, as “Opposer’s Motion for Summary Judgment.”1
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`Applicant’s Motion for Summary Judgment was filed with the Board on February 12, 2021 in what Opposer
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`believes was a thinly veiled attempt to delay if not outright thwart Applicant’s need and inherent obligation
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`to respond to Opposer’s First Requests for Admission No(s) 1-50, Opposer’s First Set of Interrogatories No
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`(s) 1-20, and Opposer’s First Request for the Production of Documents No(s) 1-24. Applicant’s Responses
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`to Opposer’s Requests for Admission and Interrogatories were due on February 21, 2021 and the Responses
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`to its Requests for Production of Documents were due on February 26, 2021.
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`Rather than respond to Opposer’s discovery requests, Applicant provided its “Preliminary
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`Objections” based on 37 C.F.R. Section 2.127(d) and the present practice that this rule immediately tolls
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`the need to respond to outstanding discovery instantly upon filing, without need for a subsequent and
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`independent suspension order by the Board. While Opposer respects the Board’s Order of Suspension dated
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`March 1, 2021 [10 TTABVUE] and appreciates its practice since Super Bakery Inc. v. Benedict, 96 USPQ
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`2d 1134, 1135 (TTAB 2010) as clarified, 665 F.3d 1263, 101 USPQ2d 1089, 1092 (Fed. Cir. 2011) to apply
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`retroactively the actual suspension order to the date of filing, Opposer respectfully argues in good faith and
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`invites the Board to perhaps revisit its interpretation of 37 C.F.R. Section 2.127(d) and the interpretation
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`by the Federal Circuit. A fair reading of the rule strongly suggests that a separate order of suspension is
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`first and specifically mandated by the rule, as initially interpreted and applied by the Board, before any
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`tolling can take legal effect. A careful reading of the Federal Circuit’s “clarification,” suggests that the
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`court’s “clarification” was in reality limited to situations involving “sanctions,” since the Federal Circuit
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`explicitly noted that the “[the]… ambiguity [in the rule] does [did] not support the extreme sanction of
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`
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`1 It appears that its service was “Certified,” not by email, but by First Class mail, in violation of
`the email service requirements mandated in 37 C.F.R. Section 2. 119(b), though Opposer did receive the
`Motion by email.
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`
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`1
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`default judgment.” Id at 665 F.3d 1267, Here, we are not talking about a “sanction;” only that a hastily filed
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`Motion for Summary Judgment should not be permitted to thwart or delay responses to discovery that is
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`properly served well before the filing of the motion for summary judgment. Nor that such a motion
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`should serve as a substitute for proper, not preliminary, legal objections, particularly in lieu of a party’s
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`responsibility to admit or deny requests for admission. For the purposes of this Memorandum in Opposition,
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`Opposer, with all due respect, will rely upon Applicant’s failure to either admit or deny Opposer’s Requests
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`for Admission in part and where applicable as evidentiary support. Opposer’s relevant Requests for
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`Admission are attached as Opp. Ex. A, and Applicant’s preliminary objections as Opp. Ex. B.
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`As a final note, in view of the Board’s recent February 5, 2021 decision in The United States
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`Olympic Committee v. Tempting Brands Netherlands B.V., __ USPQ2d ___ (TTAB 2021) [Opposition No.
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`91233138], Opposer respectfully withdraws its claim for a false suggestion of connection relative to Section
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`2(a) of the Trademark Act as specified in paragraphs 28-33 of its Notice of Opposition. [1 TTABVUE].
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`INTRODUCTION
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`Opposer, reported to be one of the largest automobile manufacturers in the world in terms of unit
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`volume, commenced use of the ATLAS mark for its mid-line class of sport utility vehicles (SUVs) in May
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`2017 for the 2018 model year. [Opp. Ex. C ¶ 6]. In preparation for this vehicle launch, Opposer, in
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`accordance with Section 66(a) of the Madrid Protocol, secured its International Registration No. 1308524
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`on April 28, 2016, based on a corresponding application in Germany with a convention priority date of
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`October 28, 2015. Based on its Extension of Protection to the United States, Opposer secured U.S.
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`Trademark Registration No. 5,202,310 for the mark ATLAS that matured to registration on May 16, 2017.
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`This registration, as corrected on October 24, 2017, registered specifically for “automobiles; automobile
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`engines in class 12;” “scale model automobiles in class 28;” and in abbreviated terms “repair and
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`maintenance” services in class 37.
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` Since then, Opposer through its wholly owned U.S. subsidiary, Volkswagen Group of
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`America, Inc. (VWGoA), has expanded the ATLAS program to include the ATLAS CROSS SPORT that
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`was introduced in January 23, 2020 and is considering the future introduction of the ATLAS ALL SPORT.
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`
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`2
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`

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`[Opp. Ex. C ¶¶ 14-15]. Opposer’s Registration No. 6,069,893 covering ATLAS CROSS SPORT enjoys a
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`constructive use date of November 15, 2017 and a first use date of October 1, 2018. Its application to
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`register its ATLAS ALL SPORT, Serial No. 88/686,388, was filed on November 15, 2017 under Section
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`1(b) of the Trademark Act and is still pending.
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`By the end of 2020, Opposer’s ATLAS line of SUVs now accounts for 27% of all Opposer’s vehicle
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`sales in the United States and has generated, based on extrapolation, approximately $ 2.7 billion in gross
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`revenues for VWGoA and its dealership network. [Opp. Ex. C ¶¶ 16 and 17]. Simply put, Opposer’s launch
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`of the ATLAS program has proven to be one of Opposer’s more successful vehicle programs in recent
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`years, and has garnered very positive reviews and publicity by both the trade and public at large. [Opp. Ex.
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`C ¶ 16 and Ex. F ¶ ¶10-12; 14].
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`Inherent in Opposer’s vehicle program, as with most, if not all vehicle manufacturers, is, as asserted
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`in ¶ 5 of the Notice of Opposition, a vehicle manufacturer’s natural zone of expansion for a vehicle line to
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`include not only variations of the vehicle, such as the ATLAS CROSS SPORT and ATLAS ALL SPORT
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`together with various trim levels, but also vehicle accessories and, most important, replacement parts. As a
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`general matter, sale of accessories alone for Opposer’s ATLAS vehicle has accounted for 87 % of
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`VWGoA’s revenue from the sale of all accessories for the calendar year ending in 2020. [Opp. Ex. D ¶ 7].
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`In contrast, Applicant filed its application to register the mark ATLAS LIFT on January 31, 2020
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`-- well after Opposer’s convention priority date of October 28, 2015 and with constructive notice of
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`Opposer’s prior registration, if not actual knowledge of Opposer’s use.2 Applicant claims a subsequent first
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`use date of October 1, 2018. Applicant’s mark is limited to “vehicle parts, namely lift supports.”
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`Due to its generic nature, Applicant properly entered a disclaimer of the term “lift” apart
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`from its mark as shown. Applicant in its Motion at 9 TTABVUE 3 arguably attempts to “deflect”
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`2 As an after-market supplier of automotive replacement parts, it is fair to surmise that Applicant is
`well aware of new vehicle lines entering the market, and their respective specifications in order to produce
`replacement parts. Thus, there is every reason to believe that Applicant had actual knowledge of Opposer’s
`prior use before it commenced use of the ATLAS LIFT mark, and before it filed its application.
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`3
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`

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`from the true nature of its products by comparing them to simple “wind shield wipers” when in
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`reality, Applicant’s products, as asserted by its CEO Treece, are more structural in purpose and are used to
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`“support or hold the weight of the hood or hatch door” and are “replacement parts” for vehicles. [Compare
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`9 TTABVUE 25 ¶ 4 with 9 TTABVUE 3]. Applicant admits that it promotes its replacement parts to be
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`compatible with “certain of Opposer’s models.” [9 TTABVUE 26 ¶ 6]. In reality, Applicant manufactures
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`such replacement parts for most if not ALL of Opposer’s present and past models, with the present known
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`exception of Opposer’s ATLAS and Opposer’s more recently introduced vehicles such as its ID and TAOS
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`line of vehicles. [Opp. Ex. A, Request for Admission No. 25 and Opp. F ¶ 6].
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`On August 3, 2020, Opposer timely filed its notice of opposition alleging a likelihood of confusion,
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`a false suggestion of connection, and a likelihood of dilution. [1 TTABVUE]. After its answer was filed
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`and served, and shortly after the parties held their mandated Discovery Conference on October 14, 2020,
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`Applicant discharged its initial attorney who promptly withdrew as Applicant’s attorney of record. [5
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`TTABVUE]. This resulted in an intermediate suspension of the proceeding pending appointment of new
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`counsel. [6 TTABVUE]. Applicant’s present counsel entered her appearance on November 7, 2020. [7
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`TTABVUE]
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` Following Opposer’s discovery requests as outlined in the Preamble, Applicant filed its Motion
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`for Summary Judgment on February 12, 2021, alleging as a matter of law, that there is no genuine issue of
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`material dispute. [9 TTABVUE]. Applicant alleges there is no likelihood of confusion due to the differences
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`between the marks, the differences in the corresponding goods and channels of trade, and further due to the
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`sophistication and/or absence of such sophistication of the party’s relevant class of purchaser. Applicant
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`also alleges that the ATLAS mark is “weak” by virtue of 26 third-party registrations for the term ATLAS,
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`and that Opposer is effectively estopped from alleging confusion by reason of Opposer’s “admission” that
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`the ATLAS marks “exist within a crowded field” as made during prosecution of its application. In other
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`words, Applicant improperly alleges “file wrapper estoppel” – a doctrine not otherwise recognized in the
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`law of trademarks, unlike patent law. See Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza
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`4
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`Holding Co., 95 USPQ2d 1271 (TTAB 2009). Opposer enters its objection to these assertions.
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`[See Opp. Ex. G-Appendix/Statement of Objection No(s) 1 and 2].
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`Moreover, despite the association and direct linking of the ATLAS brand with the iconic
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`and famous VOLKSWAGEN and VW brands – a well-established and historical industry practice [Opp.
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`Ex. E ¶ 17 ] - Applicant alleges as a matter of law that there is “no way” that Opposer’s ATLAS mark
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`could have achieved in such a short time period the level of fame necessary for a likelihood of confusion
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`under Section 2(d) or the level of fame necessary for a likelihood of dilution under Section 43(c).3 Though
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`perhaps a question of first impression, nowhere does Applicant account for the “accelerated effect” a
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`product mark might experience with respect to reaching a level of “fame” when immediately coupled with
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`one’s famous house mark or emblem. While present law apparently requires the “fame” of a product mark
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`to essentially stand on its own, its road to “accelerated” fame by use in tandem with a very famous “house
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`mark” cannot factually be discounted and arguably invites a good faith modification or reconsideration in
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`view of the technological advancements society has made since the Federal Circuit’s opinion in Bose
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`Corporation v. QSC Audio Products, Inc., 293 F.3d 1367 (Fed. Cir. 2002) and its progeny.
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`In all, Opposer respectfully submits that Applicant’s arguments are flawed and provides its legal
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`objections where applicable to Applicant’s purported evidence. [See Opp. Ex. G- Appendix/Statement of
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`Objections]. As explained more fully below, Opposer submits that the Board should deny Applicant’s
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`Motion for Summary Judgment. Quite simply, there are numerous genuine and material issues that are in
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`dispute. Further, the Board should grant, on a sua sponte basis, Opposer’s Cross-Motion for Summary
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`Judgment on the issue of priority for the ATLAS mark based on Registration No.5,202,310 alleged inter
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`alia and in accordance with the Board’s decision in Compagnie Gervais Danone v. Precision Formulations,
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`LLC, 89 USPQ2d 1251 (TTAB 2009). In addition, the Board is invited to rule in Opposer’s favor also on
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`the issues regarding the similarity of the marks and the closely related nature of the goods and services.
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`3 See generally, Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC., 857 F.3d 1323, 122
`USPQ2d 1773 (Fed. Cir. 2017) for the various levels of “fame” for likelihood of confusion and likelihood
`of dilution.
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`5
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`There is no dispute regarding these factual matters, and they can be ruled upon as a matter of law based on
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`the evidence submitted by Opposer.
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`ARGUMENT
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`The Standards for Summary Judgment Favor Opposer
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`When a party moves for summary judgment, it must demonstrate that there is no genuine dispute
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`as to any material fact, and that it is entitled to judgment as a matter of law. See Copelands’ Enterprises
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`Inc. v. CNV Inc., 945 F.2d 4563, 20 USPQ2d 1047 (Fed. Cir. 1991). The moving party’s burden of proof
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`on these issues is greater than the evidentiary burden at trial. See Gasser Chair Co. Inc. v. Infanti Chair
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`Manufacturing Corp., 60 F.3rd 770, 34 USPQ2d 1477 (TTAB 1998).
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`By contrast, the non-moving party only has the burden of proving that a genuine and material
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`factual dispute exists for trial. See Matsuhita Elec.Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87
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`(1986); Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560 (Fed. Cir. 1987). A factual dispute is
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`genuine and material if there is enough evidence in the record such that a reasonable fact finder could
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`resolve the matter in favor of the non-moving party. Lloyd’s Food Products, Inc., v. El’s Inc., 987 F.2d 766
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`(Fed. Cir.1983). In other words, Applicant’s Motion for Summary Judgment should only be granted if the
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`evidence is so one-sided that there can be no doubt about how the question of likelihood of confusion should
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`be answered.
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`As the non-moving party, the Opposer must be given the benefit of all reasonable doubt as to
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`whether genuine disputes of material fact exist. The evidence submitted by the non-movant, in opposition
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`to a motion for summary judgment, "is to be believed, and all justifiable inferences are to be drawn in [its]
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`favor." Opryland USA Inc. v. The Great American Music Show, Inc., 970 F.2d 847, 850, 23 USPQ2d 1471
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`(Fed. Cir. 1992) (citation omitted). Moreover, as the prior user and registrant, the Opposer must be given
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`the benefit of any doubt as to whether there is a likelihood of confusion. See In Re United States Shoe Corp.,
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`229 USPQ 707 (TTAB 1985). On occasion, the Board may act on its own initiative and grant summary
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`judgment to the non-moving party where the non-movant is entitled to summary judgment where the
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`6
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`

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`question is one of law, as is, by way of example, the legal question of Opposer’s constructive use priority
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`in this instance [TMBP Section 528.08].
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`In the present case, a genuine and material factual dispute exists at a minimum with regard to, inter
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`alia, the strength – inherent, conceptual, and commercial strength – of the ATLAS mark for automobiles
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`and their replacement parts, the relatedness of the goods and services, whether “lifts” are within Opposer’s
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`zone of natural expansion,4 the similarity of the channels of trade, and the sophistication of the purchasers,
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`such that confusion between Applicant’s mark and Opposer’s mark is likely. There is also a material dispute
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`about whether Applicant’s 26 third-party registrations properly evidence the inference that the ATLAS
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`mark exists within a “crowded field,” particularly considering the disparate nature of the respective
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`products and services of the 26 third-party registrations evidenced by Applicant [9 TTABVUE 15-16; 27-
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`74].
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`As to the claims for likelihood of dilution, there are certainly issues of material dispute regarding
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`the level of “fame” for Opposer’s mark and whether it achieved such “fame” prior to Applicant’s
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`commencement of use. This is particularly the case considering the industry practice of linking the model
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`with the automobile manufacturer’s typically famous name – in this case, the ATLAS brand with Opposer’s
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`iconic and famous VOLKSWAGEN and VW house marks promoted by its network of 638 dealerships
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`throughout the United States. In other words, Opposer asserts that the inherent linking of one’s famous
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`house mark or name – a well-established industry and historical practice within the automotive field
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`[Opp. Ex. E ¶ 17] - can quickly accelerate, if not instantaneously manifest, the level of fame necessary for
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`purposes of likelihood of confusion, and also for a likelihood of dilution. Based on the standards discussed
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`above, it is clear that Applicant’s Motion for Summary Judgment must be denied in its entirety.
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`GENUINE ISSUES OF MATERIAL DISPUTE REGARDING OPPOSER’S CLAIMS
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`A. LIKELIHOOD OF CONFUSION
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` When evaluating the issue of likelihood of confusion under Section 2(d), the Board must
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`4 That question is factually resolved since Opposer has already, since May 2017, expanded use of
`the ATLAS mark for replacement parts, including “lifts.” [Opp. Ex. D ¶ 6].
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`
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`7
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`

`

`
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`consider the factors identified in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) that
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`are supported by the evidence of record. See Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir.
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`2000); Olde Tyme Foods, Inc. v. Roundy’s Inc., 961 F.2d 200 (Fed. Cir. 1992) (factors must be
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`considered “when relevant evidence is of record”). In this case, the relevant factors favor Opposer.
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`1. Applicant’s ATLAS LIFT Mark is “Confusingly Similar” to Opposer’s ATLAS Mark
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`One of the principal factors the Board must consider in a likelihood of confusion analysis is the
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`similarity or dissimilarity of the marks in their entireties as to appearance, sound, meaning and commercial
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`impression. While marks must be considered within their respective entireties, it is not necessary for the
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`marks, as insinuated in Applicant’s Motion at 9 TTABVUE 8, to be completely identical in order for the
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`junior user to create a likelihood of confusion. And contrary to Applicant’s assertion at page 9 TTABVUE
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`8-10, the unauthorized appropriation and inclusion of another’s mark, typically does, in fact, lead to a
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`likelihood of confusion. See Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 161 (9th
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`Cir. 1963) citing Sazlehner v. Eisner & Mendelson Co., 179 U.S. 19 (1900). When one feature of a mark is
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`more significant than other features, it is proper to give greater force and effect to the dominant feature.5
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`In the present case, Applicant’s ATLAS LIFT mark is legally similar to Opposer’s ATLAS mark
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`in terms of sight, sound, meaning and commercial impression. Each mark shares the dominant term
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`ATLAS. While perhaps not necessarily original since the ATLAS term finds its origins dating to antiquity,
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`the term invariably conveys a connotation of “strength” and/or “endurance.”6 This is the exact image used
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` 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 23:15[3] (June
`1995) (“It is appropriate in determining the question of likelihood of confusion to give greater weight to
`the ‘dominant’ parts of a composite mark, for it is that which may make the greatest impression on the
`ordinary buyer”).
`6 Judicial notice should be accorded the term’s meaning and origin in Greek mythology. ATLAS
`was a Titan condemned to hold up the celestial heavens or sky for eternity after the Titanomachy.
`The word comes
`from
`the name of one of
`the ancient Greek gods known as
`the
`Titans. https://www.macmillandictionaryblog.com › atlas. ATLAS was the Titan god who bore the sky
`aloft. He personified the quality of endurance (atlaô). Atlas was a leader of the Titanes (Titans) in their war
`against Zeus and after their defeat he was condemned to carry the heavens upon his shoulders.
`https://www.theoi.com. [See Opp. Ex. F ¶¶ 3-4; See also Opp. Ex. A Requests for Admission No(s) 30 and
`31 and Opp. Ex. B with Applicant’s “Preliminary Objections.”].
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`8
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`

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`by Applicant in connection with the logo version of its ATLAS LIFT mark [See e.g., 9 TTABVUE 94],
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`and a fitting connotation that many are likely to publicly attribute to Opposer’s line of SUVs.
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`The only literal difference between the marks is the addition of the generic word LIFT as the second
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`word of Applicant’s composite mark. Contrary to Applicant’s arguments at 9 TTABVUE 8-10, the addition
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`of the generic term LIFT does not serve to distinguish Applicant’s mark from Opposer’s ATLAS marks –
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`in fact, it is likely to exacerbate the likelihood of confusion. Indeed, Opposer is already experiencing
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`unauthorized usages by other third parties incorporating the ATLAS or VW mark with the term “LIFTS.”
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`[See Opp. Ex. F ¶ 5 constituting pages from < www.vwliftkits.com> – the matter is presently under
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`advisement.].
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`While marks must be considered within their entireties, consumers would simply regard the word
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`LIFT in the mark ATLAS LIFT as indicating the “lift” products that are sold as an authorized replacement
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`part for Opposer’s ATLAS vehicles. The likely consumer will view the ATLAS portion of the mark as the
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`source-identifying element. Thus, they will view the mark ATLAS LIFT as merely a variation of Opposer’s
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`ATLAS marks, especially considering Opposer’s natural expansion of the ATLAS brand to its 8 trim levels,
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`to the ATLAS CROSS SPORT variation, and its expansion to accessories, consumer goods, and
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`replacement parts. [Opp. Ex. C ¶¶ 12-15; Opp. Ex. D ¶¶5-8]. See In re Charam International Inc., 380 F.3d
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`1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988);
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`In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); Weiss Associates, Inc. v. HRL Associates, 902
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`F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
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` Accordingly, when the marks are compared in their entireties, they are legally similar in
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`appearance, pronunciation, connotation and commercial impression. This du Pont factor favors a finding
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`of likelihood of confusion in favor of Opposer on a sua sponte basis. Applicant has not produced any
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`evidence that would support an assertion that the ATLAS LIFT mark, is not, in fact, confusingly similar in
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`9
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`terms of sight, sound, meaning and commercial impression. Additionally, the relatively insignificant
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`differences between the marks are far outweighed in importance by the “strength” if not “fame” of the
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`ATLAS mark, and the closely related nature of the respective goods and services of the parties. [See
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`generally, Bose Corp., supra.].
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`2. Opposer’s ATLAS Mark is “Commercially Strong” if not “Famous” for Likelihood of Confusion
`Purposes
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`Famous or strong marks enjoy a wide latitude of legal protection. Kenner Parker Toys, Inc. v. Rose
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`
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`Art. Industries, Inc., 963 F.2d 350, 352 (Fed. Cir. 1992). In fact, the “fame” factor for likelihood of
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`confusion purposes, “when present, plays a ‘dominant’ role in the process of balancing the Du Pont factors.”
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`Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000); see also Century 21 Real Estate Corp. v.
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`Century Life of America, 970 F. 2d 874, 877 (Fed. Cir. 1992) (“[T]he Lanham Act’s tolerance for similarity
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`between competing marks varies inversely with the ‘fame of the prior mark.’ Thus, the fame of CENTURY
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`21 increases the likelihood of confusion with applicant’s mark”) (quoting Kenner Parker Toys, Inc., 963
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`F.2d supra. at 352 (Fed. Cir. 1992)). Strong and famous marks are accorded more protection because they
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`are more likely to be remembered and associated in the public mind than a weaker mark. Recot, Inc., 214
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`F.3d at 1327.
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`The “fame” or “commercial strength” of a mark for likelihood of confusion purposes “may be
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`measured by volume of sales and advertising expenditures of the goods, the length of time the mark has
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`been in use, widespread critical assessments and notice by independent sources of the goods identified by
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`the mark as well as the general reputation of the goods.” Bose Corp., 293 F.3d at 1371. “A mark ‘with
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`extensive public recognition and renown’ deserves and receives more legal protection than an obscure or
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`weak mark.” Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1689
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`(Fed. Cir. 2018) (citation omitted). “. . . likelihood of confusion fame ‘varies along a spectrum from very
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`strong to very weak.’” Joseph Phelps Vineyards, LLC, 122 USPQ2d at 1734 (citation omitted). The
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`“applicable viewpoint is that of the relevant market,” not necessarily that of the general public. Id. (“Fame
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`for confusion purposes arises as long as a significant portion of the relevant consuming public . . . recognizes
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`the mark as a source indicator,” and “a mark’s renown within a specific product market is the proper
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`standard.”).
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`In considering the strength of a mark, the Board considers both the mark’s inherent strength, based
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`on the nature of the mark itself, and, “if there is evidence in the record of market place recognition of the
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`mark, its commercial strength.” New Era Cap Co., Inc. v. Pro Era, LLC, 2020 TTAB Lexis 199 *29 (citation
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`omitted). As noted by J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.
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`2007) at Section 11.83:
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`. . . the true relative strength of the mark can only fully be determined by weighing two aspects of
`strength:1) conceptual strength: the placement of the mark in the spectrum of marks; and 2)
`commercial strength: the market place recognition value of the mark.
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`a. ATLAS is Inherently and Conceptually Strong within the Automotive Field
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`The “first” inquiry focuses on the inherent potential of the term to distinguish source and whether
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`the term is considered arbitrary, suggestive, merely descriptive or generic. The inherent strength of
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`Opposer’s ATLAS mark is not at issue. The ATLAS mark is inherently distinctive as evidenced by its
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`registration on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the
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`Trademark Act. Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1889 (TTAB 2006).
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`Though the word ATLAS may not be necessarily unique or original considering its historical
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`significance in Greek mythology, it is still an arbitrary use in connection with automobiles and replacement
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`parts and therefore enjoys inherent strength. At no point does the term merely describe any characteristic
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`of Opposer’s SUVs or any replacement parts related thereto. Nor does the term merely describe Applicant’s
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`lifts or Opposer’s automobiles. At the very least, the term is suggestive of “strength” and “endurance” –
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`imagery and connotation attributed to each party’s adoption and use of the marks in connection with their
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`respective products and services.
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`
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`Applicant at 9 TTABVUE 14-17, intertwines this du Pont factor with du Pont factor 6 regarding
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`the existence of third-party registrations, and makes much to do, understandably, with the statement by
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`Opposer during prosecution of its application that there exists “666” registrations with the term ATLAS
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`and that the ATLAS term exists within a “crowded field.” In other words, that the mark ATLAS does not
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`enjoy “conceptual” strength. [9 TTABVUE 11-12]. A close review of Opposer’s arguments made during
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`prosecution, indicates that the assertion was completely unnecessary and constitutes effectively dictum.
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`Admittedly an ill-advised assertion by Opposer during prosecution of its application for ATLAS, it
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`constitutes dictum because at no point were these “666” registrations properly made of record, nor was the
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`assertion even necessary in the argument for traversing the cited refusals. Further, such unsupported
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`statements add “little in terms of the ‘shade and tone’ in the total picture” to the extent the argument did
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`not appear material to the Examining Attorney’s decision to withdraw the initial citations under Section
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`2(d) of the Trademark Act. Nor is Opposer legally estopped, contrary to Applicant’s numerous assertions
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`[see 9 TTABVUE 9-12; 15], from taking a contrary position in litigation or an opposition, by what it might
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`have argued during prosecution of its application.
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` It is well established that unlike patent law, “file wrapper estoppel” does not exist in trademark
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`law and Opposer enters its objections to such assertions by Applicant. [See Opp. Ex. G-Appendix/
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`Objections No(s) 1 and 2]. “[t]he doctrine of ‘file wrapper estoppel’ does not apply in trademark cases.”
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`Anthony’s Pizza and Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., supra at 1281. It does not exist because
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`it is well recognized that trademarks are “dynamic” and are likely to change over time, even within a
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`relatively short time, unlike patents.
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`By the same token, Applicant does make of record 26 active registrations [9 TTABVUE 27-74]
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`without the benefit of any use evidence. These registrations depict in whole or in part the term ATLAS and
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`which, whether relevant or not, include the word “vehicle” within the description of goods and/or services.
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`“The Federal Circuit has held that evidence of the extensive registration and use of a term by others can be
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`powerful evidence of the term’s weakness.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co v.
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`Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). “Use evidence may
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`reflect commercial weakness, while third party registration evidence that does not equate to proof of third-
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`party use may bear on conceptual weakness if a term is commonly registered for similar goods or
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`services.” Id. The “controlling inquiry is the extent of third-party marks in use on ‘similar’ goods or
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`services.” Omaha Steaks, 128 USPQ 2d at 1694 (citing Century 21 Real Estate Corp. v. Century Life of
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`Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). This is where Applicant’s entire argument
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`and evidentiary support fails.
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`(1) 21 of the 26 Third-Party Registrations Submitted by Applicant are for Unrelated Goods
`and Services
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`In its apparent haste to thwart Opposer’s discovery requests, Applicant gave its list of third-party
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`registrations at 9 TTABVUE 27-74 very scant considerati