Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA671309
`ESTTA Tracking number:
`05/08/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216514
`Defendant
`Ziff Davis, Inc.
`LAURA W SMALLEY
`HARRIS BEACH PLLC
`99 GARNSEY RD, STE 1
`PITTSFORD, NY 14534-4596
`UNITED STATES
`lsmalley@harrisbeach.com, harrisbeachip@harrisbeach.com, cpet-
`rella@harrisbeach.com, ippracticegroup@harrisbeach.com
`Other Motions/Papers
`Laura W. Smalley
`lsmalley@harrisbeach.com, cpetrella@harrisbeach.com, hmc-
`curty@harrisbeach.com, harrisbeachip@harrisbeach.com
`/Laura W. Smalley/
`05/08/2015
`Non Confidential Cross Motion and MOL.pdf(63252 bytes )
`Non Confidential Smalley Declaration.pdf(24809 bytes )
`EXHIBIT A of LWS Declaration.pdf(223539 bytes )
`EXHIBIT B of LWS Declaration.pdf(6929 bytes )
`EXHIBIT C of LWS Declaration.pdf(797086 bytes )
`EXHIBIT D of LWS Declaration.pdf(5620467 bytes )
`EXHIBIT E of LWS Declaration.pdf(5194552 bytes )
`EXHIBIT F of LWS Declaration.pdf(371597 bytes )
`EXHIBIT G - REDACTED slip sheet.pdf(5352 bytes )
`EXHIBIT H - REDACTED slip sheet.pdf(5351 bytes )
`EXHIBIT I of LWS Declaration.pdf(119728 bytes )
`EXHIBIT J of LWS Declaration.pdf(886637 bytes )
`EXHIBIT K of LWS Declaration.pdf(994234 bytes )
`EXHIBIT L of LWS Declaration.pdf(136005 bytes )
`EXHIBIT M of LWS Declaration.pdf(134497 bytes )
`EXHIBIT N of LWS Declaration.pdf(130851 bytes )
`EXHIBIT O of LWS Declaration.pdf(228971 bytes )
`EXHIBIT P of LWS Declaration.pdf(1336599 bytes )
`EXHIBIT Q of LWS Declaration.pdf(769790 bytes )
`EXHIBIT R of LWS Declaration.pdf(1925091 bytes )
`EXHIBIT S of LWS Declaration.pdf(431687 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Serial No.:
`Mark:
`International Class:
`Filed:
`Published:
`
`86/095,750
`NEXTCAR
`041
`October 18, 2013
`April 22, 2014
`
`ALL CAR LEASING, INC.
`
`Opposition No. 91216514
`
`Opposer,
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`NON-CONFIDENTIAL – REDACTED
`
`v.
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`ZIFF DAVIS, INC.
`
`Applicant.
`
`APPLICANT’S CROSS-MOTION FOR SUMMARY JUDGMENT AND
`MEMORANDUM OF LAW IN SUPPORT OF APPLICANT’S CROSS-MOTION FOR
`SUMMARY JUDGMENT AND IN OPPOSITION TO OPPOSER’S MOTION
`FOR SUMMARY JUDGMENT
`
`PLEASE TAKE NOTICE that, upon the accompanying Memorandum of Law in Support
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`of Applicant Ziff Davis, Inc.’s (“Applicant”) Cross-Motion for Summary Judgment pursuant to
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`Federal Rule of Civil Procedure 56, Trademark Rule 2.116, and Trademark Trial and Appeal
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`Board Manual of Procedure § 528, and the accompanying Declaration of Laura W. Smalley, Esq.
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`and the exhibits annexed thereto, Applicant moves for summary judgment on Count I of Opposer
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`All Car Leasing, Inc.’s (“Opposer”) Notice of Opposition, which is based on alleged likelihood
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`of confusion between Applicant’s proposed mark and Opposer’s current registrations. Applicant
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`also requests that Opposer’s Notice of Opposition be denied, and that Applicant’s mark
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`NEXTCAR as contained in application Serial No. 86/095,750 be allowed.
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`PLEASE TAKE FURTHER NOTICE that Applicant intends to file and serve reply
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`papers in further support of this Cross-Motion.
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`

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`PRELIMINARY STATEMENT
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`Applicant Ziff Davis, Inc. (“Applicant”) submits this memorandum of law in opposition
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`to the motion for summary judgment filed by All Car Leasing, Inc. (“Opposer”) on March 25,
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`2015, on Count I of its Notice of Opposition claiming likelihood of confusion, and in support of
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`Applicant’s cross-motion for summary judgment dismissing that Count. For the reasons stated
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`below, Applicant seeks summary judgment because no genuine issues of fact material to any of
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`the factors relevant
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`in the likelihood of confusion analysis exist. Applicant
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`is entitled to
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`judgment as a matter of law that no confusion exists because its proposed mark and Opposer’s
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`marks are in different classes, and cover different goods and services. Likewise, the application
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`Serial No. 86/095,750 (hereinafter “the ‘750 application”) should be allowed for the same
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`reasons. Applicant also submits that Opposer’s motion for summary judgment should be denied
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`because it cannot be concluded, as a matter of law, that Applicant’s use of its proposed mark
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`creates a likelihood of confusion with Opposer’s use of its marks.
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`STATEMENT OF UNDISPUTED FACTS
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`On October 18, 2013, Applicant filed the ‘750 application under Section 1(a) of the
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`Lanham Act, seeking registration of the mark NEXTCAR as applied to providing a website
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`featuring blogs and non-downloadable publications in the nature of articles in the field of
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`automobile technology and articles featuring reviews in the field of automobile technology;
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`providing editorial content to consumers in the field of automobile technology, namely, online
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`publications in the nature of articles in the field of automobile technology and articles featuring
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`reviews containing editorial reporting on automobile technology, in International Class 041.
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`Applicant’s date of first use and first use in commerce of the mark is October 9, 2013.
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`Applicant’s NEXTCAR mark consists of standard characters, without claim to any
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`particular font, style, size, or color. The Trademark Examining Attorney searched the U.S.
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`2
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`Patent and Trademark Office (“USPTO”) database of registered and pending marks and found no
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`conflicting marks that would bar registration under Trademark Act Section 2(d). A copy of the
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`Examiner’s Amendment and a copy of the searches completed by the Examining Attorney are
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`attached to the May 8, 2015 Declaration of Laura Smalley, Esq. in Support of Applicant’s Cross-
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`Motion for Summary Judgment and in Opposition to Opposer’s Motion for Summary Judgment
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`(“Smalley Decl.”), as Exhibits A and B, respectively.
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`After the USPTO published Applicant’s NEXTCAR mark for opposition on April 22,
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`2014, Opposer filed its Notice of Opposition on May 22, 2014. See Smalley Decl., ¶ 4. Opposer
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`moved for summary judgment, and Applicant now opposes the motion and cross-moves for
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`summary judgment for relief allowing registration.
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`Applicant’s NEXTCAR mark is used on http://www.pcmag.com/nextcar, which is a page
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`of its http://www.pcmag.com/ website (“Website”). See Smalley Decl., ¶ 6, Exhibit C, pp. 8-9.
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`The Website is available online to users of the Internet and targets those interested in car
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`technology. See id., p. 6.
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`PCMag.com promotes Applicant’s NEXTCAR mark on its home page and social media
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`feeds (Twitter #nextcar and Facebook). See Smalley Decl., ¶ 7, Exhibits D and E; see Smalley
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`Decl., Exhibit C, p. 8. Applicant is a media sponsor of C3 Connected Car Conference, which
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`deals with “game-changing technologies.” See Smalley Decl., ¶ 8, Exhibit F.
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`The Website is
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`Exhibits G and H. The Website
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`See Smalley Decl., ¶ 9,
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`3
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`

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`See Smalley Decl., ¶ 10, Exhibits
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`G and H.
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`For purposes of its opposition and for its motion for summary judgment, Applicant does
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`not contest the following allegations made by the Opposer. Opposer alleges that it is in the
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`business of automobile rentals, sales and leases, with rentals, sales and leases promoted to
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`consumers in the general public under the mark NEXTCAR.
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`See Opposer’s Notice of
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`Opposition, ¶ 1.
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`Opposer owns three marks in International Class 39. Opposer is the owner of U.S.
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`Trademark Registration No. 3,009,108 (hereinafter “the ‘108 registration”) for the mark
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`NEXTCAR as applied to vehicle rental services, in International Class 039. Opposer’s Notice of
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`Opposition, ¶ 4. Opposer is also the owner of U.S. Trademark Registration No. 3,413,816
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`(hereinafter “the ‘816 registration”) for the mark NEXTCAR ALL VEHICLE RENTALS and
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`Design as applied to vehicle rental services, in International Class 039. See Opposer’s Notice of
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`Opposition, ¶ 5. Opposer is the owner of U.S. Trademark Registration No. 4,298,747
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`(hereinafter “the ‘747 registration”) for the mark NEXTCAR LEASING as applied to leasing of
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`automobiles, in International Class 039. See Opposer’s Notice of Opposition, ¶ 6.
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`Opposer owns three marks in International Class 35. Opposer is the owner of U.S.
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`Trademark Registration No. 4,298,748 (hereinafter “the ‘748 registration”) for the mark
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`NEXTCAR SALES as applied to leasing of dealerships in the field of automobiles,
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`in
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`International Class 035. See Opposer’s Notice of Opposition, ¶ 7. Opposer is also the owner of
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`U.S. Trademark Registration No. 4,298,749 (hereinafter “the ‘749 registration”) for the mark
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`NEXTCAR USED CAR SALES as applied to automobile dealerships, in International Class
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`035. See Opposer’s Notice of Opposition, ¶ 8. Opposer is the owner of U.S. Trademark
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`4
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`

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`Registration No. 3,257,392 (hereinafter “the ‘392 registration”) for the mark NEXTCAR as
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`applied to retail store services and online retail store services featuring new and used
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`automobiles and auto parts, in International Class 035. See Opposer’s Notice of Opposition, ¶ 9.
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`Applicant does not dispute that Opposer’s registrations are based on underlying
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`trademark applications each filed in the USPTO before the October 18, 2013 filing date and the
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`October 9, 2013 dates of first use and first use in commerce on Applicant’s ‘750 application.
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`STATEMENT OF FACTS
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`Opposer has offices and locations from which it operates or has operated its business in
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`Maryland and Virginia. See Smalley Decl., Exhibit I, pp. 11-12. Opposer’s website allows
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`persons throughout the United States living in, working in, and/or traveling into the Maryland,
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`D.C. metropolitan, and Northern Virginia areas to rent, lease and purchase Opposer’s goods and
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`services. Id., pp. 12-13.
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`Opposer employed signage, and marketed and advertised its goods and services over the
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`Internet. See id., pp. 25-26.
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`Its target markets include renters, lessees, and purchasers of
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`vehicles, including public consumers, travelers such as personal and business travelers, and
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`corporate clients. See id., p. 26.
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`Opposer’s alleged competitors include other businesses and websites directing their goods
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`and services, either directly or indirectly by for example, advertising on the websites, to the renting,
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`leasing, and sales of vehicles, especially automobiles, trucks, vans, and SUVs. See id., p. 27.
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`The specimen for the ‘108 registration, an advertisement in the Verizon phone book,
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`states “All Vehicle Rentals” serving Maryland, DC and Virginia, and includes the specific make
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`and models of available car rentals. Another specimen for the ‘108 registration states “[y]ou can
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`count on your NEXTCAR. We Have the Most Diverse fleet in the Region.” Likewise, the
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`5
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`specimen consisting of a reservation page as of April 28, 2011 clearly states “Rental Leasing
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`Sales.” See Smalley Decl., ¶ 12, Exhibit J.
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`One of the specimens for the ‘816 registration discusses the rental services and corporate
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`club member benefits. See Smalley Decl., ¶ 13, Exhibit K. A rental agreement was also used as
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`a specimen for Opposer’s ‘816 registration. Id. The leasing portion of the nextcarrental.com
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`website as of January 2, 2013 relating to leasing of vehicles was used as the specimen for the
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`‘747 registration. See Smalley Decl., ¶ 14, Exhibit L. The specimen for the ‘748 registration was
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`the sales portion of the nextcarrental.com website as of January 2, 2013 which included gently
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`used cars and cars that had previously been part of Opposer’s rental fleet. See Smalley Decl., ¶
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`15, Exhibit M. The specimen for the ‘749 registration was the used car sales portion of
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`nextcarrental.com website as of January 2, 2013. See Smalley Decl., ¶ 16, Exhibit N. The
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`specimen for the ‘392 registration, which again appears to be a portion of the Opposer’s website,
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`states NEXTCAR Rental Leasing Sales. See Smalley Decl., ¶ 17, Exhibit O.
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`Furthermore, the Facebook pages for NextCar Rental and NextCar Rental Leasing Sales,
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`and the Twitter feed for NextCar Rentals, reflect car rental, leasing and sales. See Smalley Decl.,
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`¶ 18, Exhibits P and Q.
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`Opposer’s website, in versions produced by Opposer as of December 12, 2014 and as of
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`March 6, 2015, includes categories of rental vehicles and Opposer’s locations, and details about
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`available SUVs and corporate accounts. See Smalley Decl., ¶ 19, Exhibit R; see also Steinbarth
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`Decl., ¶ 14, Exhibit 2.
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`A.
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`STANDARD FOR SUMMARY JUDGMENT
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`ARGUMENT
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`Opposer moved for summary judgment pursuant to Fed. R. Civ. P. 56, Trademark Rule
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`2.116, and TBMP § 528 with respect to Count I of its Notice of Opposition for likelihood of
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`6
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`

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`confusion. Applicant now cross-moves for summary judgment because there is no likelihood of
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`confusion. The party moving for summary judgment bears the initial burden of demonstrating
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`the absence of any genuine dispute of material fact and that it is entitled to judgment as a matter
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`of law. Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 2001 WL
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`1512024, at *2 (TTAB 2001); Fed. R. Civ. P. 56(a). If the moving party meets this burden, then
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`the opposing party must present sufficient evidence to show an evidentiary conflict as to one or
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`more material facts in issue. Hornblower & Weeks, Inc., 2001 WL 1512024, at *2. The
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`evidence must be viewed in a light most favorable to the non-movant and all justifiable
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`inferences are to be drawn in the non-movant’s favor. See id.; see also Opryland USA Inc. v.
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`Great Am. Music Show Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992). “In
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`considering whether to grant or deny a motion for summary judgment, the Board may not resolve
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`issues of material fact, but can only ascertain whether genuine disputes exist regarding such
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`issues.” Hornblower & Weeks, Inc., 2001 WL 1512024, at *2.
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`To prevail on a motion for summary judgment, either party must demonstrate that there is
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`no genuine dispute with respect to whether the contemporaneous use of the parties’ respective
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`marks on their respective services would be likely to cause confusion, mistake or to deceive
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`consumers regarding the source of the goods and services. Id. at *3. Consideration of this issue
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`in the context of summary judgment motions involves an analysis of all of the probative facts in
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`evidence that are relevant to the thirteen factors set forth in In re E.I. du Pont DeNemours & Co.,
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`476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
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`For the reasons stated below, there is no genuine dispute that the contemporaneous use of
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`the marks by the parties for their respective services are not likely to cause confusion.
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`7
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`B.
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`STANDING, PRIORITY AND TIMELINESS
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`Opposer does not dispute that Opposer has standing and its marks have priority of use.
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`The parties exchanged their expert disclosures on September 29, 2014. See Smalley Decl., ¶ 5.
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`Pursuant to the Board’s Order of January 22, 2015, the 30-day trial period ends on July 26, 2015.
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`Applicant’s Cross-Motion is thus timely under 37 C.F.R. § 2.127(e)(1) and TBMP § 528.02. No
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`genuine dispute of material fact exists regarding these issues.
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`POINT I
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`APPLICANT’S NEXTCAR MARK IS NOT LIKELY TO
`CAUSE CONFUSION WITH OPPOSER’S MARKS
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`In this matter, the Examining Attorney did not find that a Section 2(d) of the Trademark
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`Act, 15 U.S.C. § 1052(d) statutory basis existed for a refusal to register due to likelihood of
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`confusion with another mark. See 15 U.S.C. § 1052(d); see also Smalley Decl., ¶ 3, Exhibit A.
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`The examining attorney must conduct a search of USPTO records to determine whether the
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`applicant’s mark so resembles any registered mark(s) as to be likely to cause confusion or
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`mistake, when used on or in connection with the goods or services identified in the application.
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`The examining attorney also searches pending applications for conflicting marks with earlier
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`effective filing dates. Trademark Manual of Examining Procedure (“TMEP”) § 1207.01. Here,
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`the Examining Attorney placed a copy of the USPTO search strategy in the record. See Smalley
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`Decl., ¶ 3, Exhibit B. That search strategy demonstrates that the Examining Attorney would
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`have considered the Opposer’s marks.
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`While both parties’ marks use variations of the term “NextCar,” the issue is not whether
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`the respective marks themselves, or the goods or services offered under the marks, are likely to
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`be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship
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`of the goods or services because of the marks used thereon. See, e.g., Paula Payne Prods. Co. v.
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`8
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`Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (CCPA 1973) (“the question is not
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`whether people will confuse the marks, but rather whether the marks will confuse people into
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`believing that the goods they identify emanate from the same source”); In re Majestic Distilling
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`Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“the mistaken belief that [a
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`good] is manufactured or sponsored by the same entity [as another good] . . . is precisely the
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`mistake that § 2(d) of the Lanham Act seeks to prevent”); In re Shell Oil Co., 992 F.2d 1204,
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`1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“The degree of ‘relatedness’ must be viewed in
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`the context of all the factors, in determining whether the services are sufficiently related that a
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`reasonable consumer would be confused as to source or sponsorship.”); UMG Recordings, Inc. v.
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`Mattel, Inc., 100 USPQ 1868, 2011 WL 5014005, at *20 (TTAB 2011); TMEP § 1207.01.
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`In In re E. I. du Pont de Nemours & Co., the U.S. Court of Customs and Patent Appeals
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`discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177
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`USPQ 563 (CCPA 1973).
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`In setting forth the factors, the court cautioned that, with respect to
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`determining likelihood of confusion, “[t]here is no litmus rule which can provide a ready guide
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`to all cases.” Id. at 1361, 177 USPQ at 567 (stating that “each case must be decided on its own
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`facts”). Not all of the factors are relevant and only those relevant factors for which there is
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`evidence in the record must be considered. Id. at 1361-62, 177 USPQ at 567-68; see also In re
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`Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the
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`DuPont factors are relevant to every case, and only factors of significance to the particular mark
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`need be considered.”); In re Majestic Distilling Co., 315 F.3d at 1315, 65 USPQ2d at 1204
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`(citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir.
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`1997)); TMEP § 1207.01.
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`“Different elements may play the dominant role in different cases.” Nina Ricci, S.A.R.L.
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`v. E.T.F. Enters., Inc., 889 F.2d 1070, 1073, 12 USPQ2d 1901 (Fed. Cir. 1989); see also Shen
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`9
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`Mfg. Co., Inc. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350 (Fed. Cir. 2004)
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`(“Neither we nor the board . . . need consider every DuPont factor).
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`A.
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`THE SIMILARITY OR DISSIMILARITY OF THE MARKS IN THEIR
`ENTIRETIES AS TO APPEARANCE, SOUND, CONNOTATION AND
`COMMERCIAL IMPRESSION
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`Although the weight given to the relevant du Pont factors may vary, two factors are key
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`considerations in any likelihood of confusion determination. TMEP § 1207.01. The first factor is
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`the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation
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`and commercial impression. du Pont, 476 F.2d at 1361. Applicant does not dispute that the
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`NEXTCAR mark that is the subject of the ‘750 application is identical in appearance and sound to
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`Opposer’s NEXTCAR mark in the ‘108 registration and to certain components of the other marks
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`owned by Opposer. However, “[t]he proper test is not a side-by-side comparison of the marks, but
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`instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such
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`that persons who encounter the marks would be likely to assume a connection between the
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`parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713
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`(Fed. Cir. 2012). This is a fact-specific inquiry. In assessing commercial impression, the Board is
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`compelled to consider the nature of the respective goods and services. Id.
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`For example, the applicant in Coach sought to register the COACH mark in various
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`formats for computer software for use in child and adult education (Class 9), and for printed
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`materials in the field of child and adult education (Class 16). The opposer was the owner of the
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`COACH mark for handbags, apparel, and other related products. While it was undisputed that
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`the word marks were identical in sound and appearance, both the Board and the Federal Circuit
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`found that the two COACH marks had different meanings and created distinct commercial
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`impressions. Id. at 1369.
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`10
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`

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`Similarly,
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`the Applicant’s mark creates a distinct commercial
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`impression from the
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`Opposer’s marks. The NEXTCAR mark, when applied to its use on the Website, brings to mind
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`a blog regarding automobile technology. Applicant’s services create the commercial impression
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`of a magazine and/or news source: Its Website is
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`See Smalley Decl., ¶ 9, Exhibits G and H.
`
`It
`
`See Smalley
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`Decl., ¶ 10, Exhibits G and H.
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`Opposer’s NEXTCAR mark is used in connection with vehicle rentals, leases or sales and
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`sale of automobile parts, and brings to mind a rental, leasing and used car sales company. These
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`distinct commercial impressions outweigh the similarities in sound and appearance, especially
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`since the parties’ services are unrelated. When viewed in their commercial contexts and in
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`connection with their respective goods and services, they convey entirely different commercial
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`impressions. Thus, this du Pont factor favors Applicant.
`
`B.
`
`THE RELATEDNESS OF THE GOODS OR SERVICES AS DESCRIBED IN THE
`APPLICATION AND REGISTRATION(S)
`
`The similarity or dissimilarity and nature of the goods or services as described in an
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`application or registration or in connection with which a prior mark is in use is the second key
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`consideration. TMEP § 1207.01; see also du Pont, 476 F.2d at 1361.
`
`Importantly, the
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`relatedness of the goods or services factor requires a comparison between Applicant’s goods or
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`services described in the application and Opposer’s goods or services as set forth in its
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`registrations. See Coach Servs., Inc., 668 F.3d at 1369; UMG Recordings, Inc., 2011 WL
`
`5014005, at *18 (“The question of likelihood of confusion must be determined based on an
`
`11
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`

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`analysis of the goods and/or services recited in applicant’s application vis-a-vis the goods and/or
`
`services identified in opposer’s pleaded registration(s).”).
`
`1.
`
`The Goods/Services Described in Opposer’s Registrations and Applicant’s
`Application Are Not Related
`
`It is undisputed that Opposer’s marks and the Applicant’s mark are in different classes.
`
`Attempting to create overlap where none exists, Opposer identified in its interrogatory responses
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`its channels of trade for its goods and services as consumer and commercial renting, leasing,
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`purchasing, and research of vehicles, especially automobiles, trucks, vans, and SUVs, especially
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`but not limited to via the Internet. See Smalley Decl., ¶ 11, Exhibit I, pp. 22-23 (emphasis
`
`added). Notably, however, its registrations do not describe the goods or services as including
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`research. In its interrogatory responses, Opposer describes, for the very first time, the use of its
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`mark as relating to “services in connection with providing customers with information in the
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`field of automobile technology, such as specifications, descriptions and opinions regarding
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`vehicles (especially automobiles, trucks, vans, and SUVs) and vehicle classes.” See id., pp. 10,
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`13, 19, 27-28. Again, its registrations do not describe its goods or services as relating to
`
`providing information to customers in the field of automobile technology.
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`Further, despite Opposer’s claims to the contrary, Applicant’s mark does not pertain to
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`“automobile related services” and its proposed registration does not relate to the sale or leasing
`
`of automobiles or to the sale of automobile parts. It relates to a blog featuring automotive
`
`technology, containing
`
`and focusing
`
`Exhibits G and H. Applicant does not sell, rent or lease vehicles. The ‘750 application and
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`See Smalley Decl., ¶¶ 9-10,
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`12
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`

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`Opposer’s registrations are, on their face,
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`for different goods and services in different
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`international classes.
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`Where the goods or services in question are not related in such a way that they would be
`
`encountered by the same persons in situations that would create the incorrect assumption that
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`they originate from the same source, then, even if the marks are identical, confusion is not likely.
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`See TMEP § 1207.01(a)(i); see also Coach Servs., Inc., 668 F.3d at 1371 (affirming the Board’s
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`dismissal of opposer’s likelihood of confusion claim, stating that “there is nothing in the record
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`to suggest that a purchaser of test preparation materials who also purchases a luxury handbag
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`would consider the goods to emanate from the same source” though both were offered under the
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`COACH mark); Shen Mfg. Co., 393 F.3d at 1244-45, 73 USPQ2d at 1356 (reversing the Board’s
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`holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for
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`kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and
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`services was not supported by substantial evidence); Local Trademarks, Inc. v. Handy Boys Inc.,
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`16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in
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`the plumbing field to be such different goods and services that confusion as to their source is
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`unlikely even if they are offered under the same marks). The record shows that Opposer markets
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`its business of automobile rentals, sales, and leases through its websites and social media.
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`Applicant markets the Website on PCMag.com and through sponsorships. Thus, the parties’
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`marketing of their respective goods and services would not cause confusion as to the source.
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`2.
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`Opposer Has Not Demonstrated That it Uses the Marks in Channels of Trade
`Outside of its Registration or That Any Confusion Is Likely to Result from Such
`Use
`
`Opposer incorrectly attempts to claim potential overlap and confusion exist based on
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`extrinsic description of its goods and services its discovery responses and motion for summary
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`judgment. The only relevant comparison, however, is between the class and descriptions of
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`goods or services associated with the Applicant’s mark and those associated with Opposer’s
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`marks.
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`As noted above, Opposer identified its channels of trade for its goods and services as
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`consumer and commercial
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`renting,
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`leasing, purchasing, and research of vehicles in its
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`interrogatory responses. See Smalley Decl., Exhibit I, pp. 22-23 (emphasis added). Opposer also
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`describes the use of its mark relating to “services in connection with providing customers with
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`information in the field of automobile technology, such as specifications, descriptions and
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`opinions regarding vehicles (especially automobiles,
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`trucks, vans, and SUVs) and vehicle
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`classes.” See id., pp. 10, 13, 19, 27-28. Opposer also alleges that, since at least as early as
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`October 2003, Opposer has operated and used, and continues to operate and use, the websites at
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`<nextcarrental.com> and <nextcar.com>, to allow consumers to view and rent automobiles, view
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`and rent moving trucks, view automobiles available for purchase and/or lease, and obtain and
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`review information about automobiles and automobile options.
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`See Opposer’s Notice of
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`Opposition, ¶ 2 (emphasis added).
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`This attempt to expand its channels of trade fails. The only proof of claim that its
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`websites allow consumers to “obtain and review information about automobiles and automobile
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`options” is a webpage submitted showing 5-passenger and 7-passenger crossover SUVs,
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`allegedly including technological features of different SUV models. See Steinbarth Decl., ¶ 14,
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`Exhibit 2. These alleged reviews simply identify the features of the SUVs Opposer has available
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`for rental and do not contain reviews of any sort of car technology, however. The Opposer’s
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`websites simply advertise features of the goods it sells or services it provides, rather than provide
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`information for consumers in the field of automotive technology. See Smalley Decl., Exhibit R;
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`see also Steinbarth Decl., Exhibit 2. Thus, Opposer has failed to demonstrate that any use of its
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`marks are likely to cause confusion with Applicant’s services.
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`Even if, which Applicant does not concede, certain material on Opposer’s website
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`provide information in the field of automotive technology, the only question in dispute is
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`whether or not an automobile technology blog on PCMag.com, the Website, and Opposer’s
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`regional rental, leasing and car sales services, under the mark “NEXTCAR” is likely to cause
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`confusion in trade as to their source.
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`It does not follow that the consuming public would
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`understand these services to have originated from the same source. Based on the foregoing, this
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`factor weighs in Applicant’s favor.
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`3.
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`Opposer’s Reliance on the Expansion of Trade Doctrine Is Erroneous
`
`Opposer erroneously relies on the expansion of trade doctrine to allege that others in the
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`field of automobile sales, rental and leasing have blogs directed to the technological features of
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`automobiles and therefore consumers are likely to reasonably expect that Opposer may likewise
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`have a blog. See Opposer’s Brief, at p. 14. Opposer attached as exhibits to its motion for
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`summary judgment blogs by other companies,
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`including Hertz, Enterprise, DARCARS
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`Automotive Group, Pohanka Automotive Group, Brown Motors Petoskey Blog, Sunrise
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`Chevrolet, and Fields Motorcars Orlando regarding used cars and rentals. See Berenato Decl.,
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`Exhibits 1-6. The primary purpose of these blogs is clearly to advertise these companies’ own
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`used car sales and/or rentals, rather than to provide editorial content and reviews to consumers.
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`At best, Opposer’s evidence demonstrates that car rental and sales companies may create blogs
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`to advertise their own products.
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`It is not evidence that car rental and sales companies would
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`tread into providing magazine and editorial content to readers.
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`An expansion of market is not natural if, at the time when the junior user began use,
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`purchasers would not have been likely to have been confused as to source or as to sponsorship,
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`affiliation or connection.
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`See J. Thomas McCarthy, McCarthy on Trademarks and Unfair
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`

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`Competition, § 24:20 (4th ed. 2015). Customer perception defines what is or is not natural
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`expansion. Id.
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`The doctrine is typically applied in inter partes proceedings where an opposer claims that
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`its priority of use of a mark with respect to its goods and services should be extended to include
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`applicant’s goods and services because they are in the natural scope of expansion of opposer’s
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`goods and services. See In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1584, 2007 WL
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`2315610, at *2; TMEP § 1207.01(a)(v).
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`Opposer’s alleged potential future goods and services differ from Applicant’s stated
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`goods and services offered under the mark according to the ‘750 application. There is no
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`indication that Opposer has ever used the mark in an online blog regarding automobile
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`technology or that it has any intention do so in the future. A blog similar to the Website is not
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`within normal field of expansion and it therefore is unlikely that Opposer will expand its
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`business consisting of automobile rentals, sales and leases to include an online blog regarding
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`automobile technology. Again, Opposer’s and Applicant’s respective goods and services do not
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`relate to the same subject matter.
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`C.
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`THE SIMILARITY OR DISSIMILARITY OF ESTABLISHED LIKELY-TO-
`CONTINUE TRADE CHANNELS
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`When the description of goods is not limited describing a particular channel of trade or
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`class of customer, the goods are presumed to travel in all normal channels of trade and to all
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`prospective purchasers for the relevant goods. See Coach Servs., Inc., 668 F.3d at 1370.
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`Here, the ‘750 application does not restrict the channels of trade, except to specify use of
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`a website. Opposer sets forth that its trade channels include the Internet, and it also utilizes
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`various office locations in Maryland and Virginia. The likely to continue channels of trade are
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`dissimilar because, while both companies use the Internet, Applicant uses its website to provide
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`consumers with information on automotive technology, and Opposer uses its website to advertise
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`its car leasing services and used cars for sale.
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`D.
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`THE CONDITIONS UNDER WHICH AND BUYERS TO WHOM SALES ARE
`MADE, i.e. “IMPULSE” VS. CAREFUL, SOPHISTICATED PURCHASING
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`Different classes of consumers are the likely users of the parties’