Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1253538
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`Filing date:
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`12/12/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91269854
`
`Party
`
`Correspondence
`address
`
`Plaintiff
`Resource Intl., Inc.
`
`CAMILLE M. MILLER
`COZEN O'CONNOR
`1650 MARKET STREET, SUITE 2800
`COZEN O'CONNOR
`PHILADELPHIA, PA 19103
`UNITED STATES
`Primary email: cmiller@cozen.com
`Secondary email(s): phipdocketing@cozen.com, treginelli@cozen.com, hdia-
`mond@cozen.com, mboezi@cozen.com, mmiller@cozen.com,
`dgretkowski@cozen.com
`215-665-7273
`
`Submission
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`Motion for Summary Judgment
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`Filer's name
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`Filer's email
`
`Signature
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`Date
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`Attachments
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
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`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 12/15/2022
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`/Melanie A. Miller/
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`mmiller@cozen.com, cmiller@cozen.com, mmcnulty@cozen.com,
`mboezi@cozen.com
`
`/Melanie A. Miller/
`
`12/12/2022
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`Mishimoto Motion for Summary Judgment.pdf(728033 bytes )
`Declaration of Melanie A. Miller.pdf(193338 bytes )
`Exhibit A.pdf(163779 bytes )
`Exhibit B.pdf(3142930 bytes )
`Exhibit C.pdf(3057532 bytes )
`Exhibit D.pdf(2865393 bytes )
`Exhibit E.pdf(113386 bytes )
`Exhibit F.pdf(236340 bytes )
`EXHIBIT G - UNDER SEAL SLIP SHEET.pdf(82923 bytes )
`Exhibit H.pdf(351793 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`RESOURCE INTL, INC.,
`D/B/A MISHIMOTO
`
`Opposer,
`
`v.
`
`DYNOJET RESEARCH, INC.
`
`Applicant.
`
`
`
`
`Opposition No.: 91269854
`
`Serial No.: 88/488,449
`
`Mark: PUSH THE LIMIT
`
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`NOTICE OF MOTION
`FOR SUMMARY JUDGMENT
`
`Pursuant to Fed.R.Civ.P. 56(a) and Trademark Board Manual of Procedure (“TBMP”)
`
`§528.01, Opposer, Resource Intl, Inc. d/b/a Mishimoto (“Opposer” or "Mishimoto"), by its
`
`attorneys, makes a motion for summary judgment, respectfully requesting that this Board enter
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`judgment in Mishimoto’s favor, declaring that Applicant Dynojet Research Inc.’s PUSH THE
`
`LIMIT Designation is likely to cause confusion with Mishimoto’s PUSH THE LIMITS Marks as
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`a matter of law, and refusing registration of the PUSH THE LIMIT Designation under Section 2(d)
`
`of the Lanham Act.
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`Submitted in support of this motion are the accompanying Declaration of Melanie A. Miller
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`in Support of Opposer’s Motion for Summary Judgment, and the exhibits thereto, the following
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`Memorandum of Law in Support of Opposer’s Motion for Summary Judgment, and all prior
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`proceedings had herein.
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`Dated: December 12, 2022
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`
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`
`
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`
`
`
`
`
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`Respectfully submitted by:
`
`COZEN O’CONNOR
`
`/s/ Melanie A. Miller
`Camille M. Miller – PA Bar ID No. 79670
`
`

`

`Melanie A. Miller – PA Bar ID No. 73499
`Madison McNulty – PA Bar ID No. 330924
`1650 Market Street, Suite 2800
`Philadelphia, PA 19103
`Tel. (215) 665-7273
`cmiller@cozen.com
`mmiller@cozen.com
`mmcnulty@cozen.com
`
`Attorneys for Opposer, Resource Intl, Inc.,
`d/b/a Mishimoto
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`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`RESOURCE INTL, INC.,
`D/B/A MISHIMOTO
`
`Opposer,
`
`v.
`
`DYNOJET RESEARCH, INC.
`
`Applicant.
`
`
`
`
`Opposition No.: 91269854
`
`Serial No.: 88/488,449
`
`Mark: PUSH THE LIMIT
`
`
`)
`)
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`OPPOSER RESOURCE INTL, INC., D/B/A MISHIMOTO’S MEMORANDUM
`OF LAW IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
`
`
`Pursuant to Rule 56 of the Federal Rules of Civil Procedure and §528.01 of the Trademark
`
`Board Manual of Procedure (“TBMP”), Opposer, Resource Intl, Inc., d/b/a Mishimoto
`
`(“Mishimoto”), by its attorneys, submits the following Memorandum of Law in Support of its
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`Motion for Summary Judgment, which motion (“Motion”) is being filed simultaneously herewith.
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`As there is no factual dispute that Applicant, Dynojet Research, Inc.’s (“Dynojet”) PUSH THE
`
`LIMIT Designation is likely to be confused with Mishimoto’s PUSH THE LIMITS trademarks,
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`Mishimoto respectfully requests that the Trademark Trial and Appeal Board (“Board”) grant its
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`Motion in its entirety.
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`

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`
`
`I.
`
`II.
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`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION .............................................................................................................. 1
`
`STATEMENT OF FACTS ................................................................................................. 2
`
`A.
`
`B.
`
`C.
`
`Mishimoto's Goods and Services. ........................................................................... 2
`Dynojet’s Pre-Opposition Conduct. ........................................................................ 3
`Dynojet's Abuse of the Discovery Process. ............................................................ 4
`
`III.
`
`ARGUMENT ...................................................................................................................... 5
`
`A.
`
`B.
`
`Summary Judgment Standard. ................................................................................ 5
`There is no Genuine Issue of Material Fact that Dynojet’s PUSH THE
`LIMIT Designation is Likely to Cause Consumer Confusion with
`Mishimoto's PUSH THE LIMITS Marks. .............................................................. 6
`The Parties’ Marks are Confusingly Similar. ............................................. 7
`The Goods and Services are Highly Related, if not Identical. .................... 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Trade and Advertising Channels Overlap. ......................................... 11
`Mishimoto’s PUSH THE LIMITS Marks are Well-Known and
`Strong, And There is a Lack of Third Party Uses of Similar Marks
`for Similar Goods and Services. ............................................................... 12
`
`Consumers Overlap and May Make Impulse Purchases When
`Making a Purchasing Decision. ................................................................ 13
`
`Dynojet has Acted in Bad Faith in Using its PUSH THE LIMIT
`Designation. .............................................................................................. 14
`
`CONCLUSION ................................................................................................................. 15
`
`
`
`
`
`IV.
`
`
`
`
`
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................5
`
`Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A.,
`811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) .....................................................................8
`
`Carl Walther GmbH v. Catherina Herriger,
`Opposition No. 91215976, slip op. at 24-25 (TTAB Sept. 1, 2017) ..................................11, 14
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................5
`
`Hewlett-Packard Develop. Co., L.P. v. Vudu, Inc.,
`92 U.S.P.Q.2d 1630 (TTAB 2009) ............................................................................................6
`
`Honda Motor Co., Ltd. v. Friedrich Winkelmann,
`90 U.S.P.Q.2d 1660 (TTAB 2009) ............................................................................................6
`
`In re Am. Cruise Lines, Inc.,
`128 U.S.P.Q.2d 1157, 2018 WL 4812382 (T.T.A.B. 2018) ....................................................13
`
`In re Concordia International Forwarding Corp.,
`222 USPQ 352 (TTAB 1983) ....................................................................................................9
`
`In re Currie,
`Serial No. 87221626, slip op. at 7 (TTAB Sept. 17, 2018) .......................................................7
`
`In re E.I. du Pont de Nemours & Co.,
`476 F.2d 1357 (CCPA 1973) ...............................................................................................6, 14
`
`In re Plastic-Plus Awards,
`2010 WL 985339 (TTAB Mar. 5, 2010)..................................................................................11
`
`In Re Rexel Inc.,
`223 U.S.P.Q. (BNA) ¶ 830 (TTAB Aug. 27, 1984) ..................................................................9
`
`Kenner Parker Toys, Inc. v. Rose Art Indus.,
`963 F.2d 350 (Fed. Cir. 1992)..................................................................................................12
`
`Kinbook, LLC v. Microsoft Corp.,
`866 F.Supp.2d 453 (E.D. Pa. 2012) ...........................................................................................7
`
`
`
`
`
`

`

`
`
`L'Oreal S.A. v. Marcon,
`102 U.S.P.Q.2d 1434, 2012 WL 1267956 (TTAB 2012) ........................................9, 12, 13, 14
`
`Linux Networx, Inc., No. 78854514 (T.T.A.B. May 23, 2008) .......................................................8
`
`McDonald’s Corp.,
`112 U.S.P.Q.2d at 1281 .............................................................................................................9
`
`Specialty Brands, Inc. v. Coffee Bean,
`748 F.2d 669 (Fed. Cir. 1984)..................................................................................................14
`
`Swatch AG v. M.Z. Berger & Co.,
`108 U.S.P.Q.2d 1463,1469 (TTAB 2013) .................................................................................7
`
`Sweats Fashions, Inc. v. Pannill Knitting Co.,
`833 F.2d 1560 (Fed. Cir. 1987)..................................................................................................6
`
`Tao Licensing, LLC v. Bender Consulting Ltd.,
`125 U.S.P.Q.2d 1043 (TTAB 2017) ........................................................................................15
`
`United Country Real Estate, LLC v. United Realty, Inc.,
`Cancellation No. 92064069, slip op. at 21-22 (TTAB Aug. 29, 2018) .....................................8
`
`VDF FutureCeuticals, Inc. v. Owen Ryan,
`Opposition No. 91221928, slip op. at 12 (TTAB Oct. 17, 2018) ..............................................7
`
`Weiss Associates Inc. v. HRL Associates, Inc.,
`902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) ...................................................................8
`
`Other Authorities
`
`Fed. R. Civ. P. 56 .............................................................................................................................5
`
`Fed. R. Civ. P. 56(c) ........................................................................................................................5
`
`Lanham Act Section 2(d) ...........................................................................................................2, 15
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`
`
`INTRODUCTION
`
`This trademark opposition proceeding is ripe for summary judgment, as the undisputed
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`facts make plain that Dynojet’s PUSH THE LIMIT Designation is confusingly similar to
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`Mishimoto’s PUSH THE LIMITS trademarks. Since at least as early as 2008, Mishimoto, a
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`worldwide leader in the automotive parts industry, has used the trademarks PUSH THE LIMITS
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`and
`
` (the “PUSH THE LIMITS Marks”) in connection with
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`Mishimoto’s various automotive related goods and services. As a result of Mishimoto’s
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`advertising, promotion and sales, consumers and the public have come to rely upon and recognize
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`Mishimoto and its goods and services as the source of the PUSH THE LIMITS Marks.
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`
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`More than ten years after Mishimoto’s adoption of its PUSH THE LIMITS Marks, Dynojet
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`began using its PUSH THE LIMIT designation (“PUSH THE LIMIT Designation”) in connection
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`with identical goods and services in the automotive field. Dynojet additionally filed an application
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`with the U.S. Patent and Trademark Office to register the PUSH THE LIMIT Designation.
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`Dynojet, a direct competitor of Mishimoto, has willfully and deliberately used the PUSH THE
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`LIMIT Designation in connection with identical goods and services for the sole purpose of
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`capitalizing on the goodwill associated with Mishimoto’s PUSH THE LIMITS Marks. Dynojet is
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`continuing to use its PUSH THE LIMIT Designation with the intent to confuse and deceive
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`consumers into believing Dynojet’s goods and services are affiliated with, associated with, or
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`otherwise sponsored by, Mishimoto.
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`
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`Despite numerous attempts by Mishimoto to amicably resolve this dispute without the need
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`for Board interference, Dynojet continues to use the PUSH THE LIMIT Designation and has
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`refused to withdraw its trademark application. Registration of the PUSH THE LIMIT Designation
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`would be the source of irreparable damage and injury to Mishimoto as it would restrict and impair
`
`
`
`1
`
`

`

`
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`Mishimoto’s right to use, develop and expand its use of its PUSH THE LIMITS Marks and damage
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`Mishimoto’s goodwill and reputation. Because it remains evident that Dynojet is willfully
`
`infringing Mishimoto’s longstanding rights in its PUSH THE LIMITS Marks, Mishimoto
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`respectfully requests that the Board enter judgment in Mishimoto’s favor, declaring that the PUSH
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`THE LIMIT Designation is likely to cause confusion with Mishimoto’s PUSH THE LIMITS
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`Marks as a matter of law, and refusing registration of the PUSH THE LIMIT Designation under
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`Section 2(d) of the Lanham Act.
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`II.
`
`STATEMENT OF FACTS
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`A. Mishimoto's Goods and Services.
`
`
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`Mishimoto is a worldwide leader in the automotive parts industry. Established in 2005,
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`Mishimoto maintains a presence throughout the world, and has officers and customers throughout
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`the United States and abroad. From at least as early as 2008, Mishimoto has used its PUSH THE
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`LIMITS Marks in connection with a wide variety of automotive products and related services.1
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`See Declaration of Melanie A. Miller (“Miller Decl.”), Ex. A (Mishimoto’s Verified Interrogatory
`
`Responses) p. 3, Ex. B (Examples of use produced by Mishimoto). Mishimoto has produced
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`evidence that its PUSH THE LIMITS Marks appear directly on numerous products, including,
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`inter alia, oil fill caps, overflow reservoir caps, cooling racing thermostats, wooden shift knobs,
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`and race line high-flow fans. See Miller Decl., Ex. B. Moreover, Mishimoto’s PUSH THE
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`LIMITS Marks appear in standard company email blocks, at trade shows and on signage, and in
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`marketing and advertising materials. See Miller Decl., Ex. A, p. 7, Ex. C (Advertising and
`
`marketing materials produced by Mishimoto). Since 2008, Mishimoto has expended significant
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`resources to advertise and promote its PUSH THE LIMITS Marks, as well as the goods and
`
`
`1 Mishimoto produced a detailed spreadsheet of nearly five hundred (500) individual products displaying the PUSH
`THE LIMITS Marks, included in Exhibit B to the Miller Decl.
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`
`
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`2
`
`

`

`
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`services offered thereunder. Advertisements reflecting the PUSH THE LIMITS Marks have
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`appeared in a myriad of media channels, including online, newspapers, magazines, trade journals,
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`trade shows and direct mail. See id. Mishimoto has produced ample evidence of its use of the
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`PUSH THE LIMITS Marks in various advertisements, including in printed materials and at trade
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`shows. See Miller Decl., Ex. C. Further, Mishimoto, and its PUSH THE LIMITS Marks, are
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`continuously featured in various magazines and on prominent industry websites. See Miller Decl.,
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`Ex. D (Images from Mishimoto’s Website located at mishimoto.com).
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`B.
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`Dynojet’s Pre-Opposition Conduct.
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`
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`Despite the well-known nature of Mishimoto’s PUSH THE LIMITS Marks, Dynojet filed
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`an application on June 25, 2019 for the PUSH THE LIMIT Designation in connection with a
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`variety of automotive goods and services, specifically: “[m]otor vehicle dynamometers; fuel
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`injection management systems comprised of downloadable software responsive to air/fuel sensors
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`and power sensors for controlling fuel flow and ignition timing to allow adjustment of engine
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`operating characteristics to achieve a desired operating state in a fuel injected, internal combustion
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`engine; apparatus comprised of computer hardware and downloadable software for monitoring,
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`adjusting and setting performance characteristics for vehicles; downloadable dynamometer control
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`software for controlling and measuring the performance of a motor vehicles while being run on a
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`dynamometer; Rpm limiters, namely, Speed limiters for limiting vehicle engine speed, namely,
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`aftermarket, add-on devices for vehicles in order to limit the maximum speed output of an
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`automobile” in Class 9; “[c]lutch kits comprised of clutch components for power sports vehicles,
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`namely clutch arms, weights, helixes, springs, wrenches” in Class 12; and “[e]ducation services,
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`namely, providing a website featuring information in the form of tutorial sessions in the field of
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`motor vehicle maintenance and performance” in Class 41. See Trademark Application No.
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`88/488,449. Dynojet claims a first use date of June 24, 2019 for the goods in Class 9 and 12 and
`
`
`
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`3
`
`

`

`
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`claims an intent-to-use in Class 41 for the PUSH THE LIMIT Designation. See id. This
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`application was afforded U.S. Trademark Application No. 88/488,449 (the “‘449 Application”),
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`and was ultimately published for opposition on December 15, 2020. See id.
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`
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`After several attempts to contact Dynojet to advise on Mishimoto’s rights in its PUSH THE
`
`LIMITS Marks and to request that Dynojet voluntarily abandon the ‘449 Application and cease all
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`use of the PUSH THE LIMIT Designation, and as Dynojet failed to cease use or withdraw the ‘449
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`Application, Mishimoto was forced to initiate this action and file the Notice of Opposition on June
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`14, 2021 to protect its valuable intellectual property rights. (Doc. No. 1).
`
`C.
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`Dynojet's Abuse of the Discovery Process.
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`
`
` Dynojet has continuously failed to sufficiently respond to discovery requests, which
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`necessitated Mishimoto's filing of several motions to compel and one motion for sanctions against
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`Dynojet, which consequently and improperly delayed resolution of this Opposition. To date,
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`Dynojet has failed to produce any documents related to: (i) the selection or creation of the PUSH
`
`THE LIMIT Designation, (ii) how each good or service is advertised or sold in conjunction with
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`the PUSH THE LIMIT Designation, and (iii) the actual sales and dollar volume of goods and
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`services sold under the PUSH THE LIMIT Designation. See Miller Decl. ¶ 8, Ex. F (Dynojet’s
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`Responses to Mishimoto’s Discovery Requests, including first supplemental responses).
`
`
`
`Although, on September 9, 2022, this Board ordered Dynojet to produce responsive
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`documents within thirty days, Dynojet failed to comply and did not produce a single additional
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`document. See Miller Decl. ¶ 8. Moreover, Dynojet’s counsel ignored Mishimoto’s counsel’s
`
`attempts to communicate regarding this failure. See Miller Decl. ¶ 9, Ex. H (Email sent from
`
`Melanie A. Miller to Dynojet’s counsel on October 12, 2022). To date, the only documents
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`produced by Dynojet are its website and the prosecution history for the ‘449 Application. See
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`Miller Decl. ¶ 8.
`
`
`
`
`4
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`

`

`
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`III. ARGUMENT
`
`Mishimoto’s Motion should be granted as there is no genuine issue of material fact that
`
`Dynojet’s PUSH THE LIMIT designation is likely to be confused with Mishomoto’s PUSH THE
`
`LIMITS Marks. The undisputed facts demonstrate that: (i) the marks at issue are confusingly
`
`similar; (ii) the goods and services are related, if not identical; (iii) the trade and advertising
`
`channels overlap; (iv) Mishimoto’s PUSH THE LIMITS Marks are well-known and strong, and
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`there is a lack of third party uses of similar marks for similar goods and services; (v) the relevant
`
`consumers overlap and may make impulse purchases when making a purchasing decision; and (vi)
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`Dynojet has acted in bad faith in applying for Dynojet’s PUSH THE LIMIT Designation. As such
`
`facts plainly support Mishimoto’s claim, its motion for summary judgment is sound and should be
`
`granted.
`
`A.
`
`Summary Judgment Standard.
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`Summary judgment is appropriate where there is no genuine issue as to any material fact
`
`and the moving party is entitled to a judgment as a matter of law. Fed. R. Civ. P. 56(c). A dispute
`
`is “genuine” only “if the evidence is such that a reasonable jury could return a verdict for the
`
`nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A factual dispute
`
`is “material” only if it might affect the outcome of the case under governing law. Id.
`
`The moving party bears the initial burden of showing that no genuine issue of material fact
`
`exists. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the moving party has met
`
`its initial burden, the nonmoving party must set forth specific facts—through citation to affidavits,
`
`depositions, discovery documents, or other evidence—demonstrating the existence of a genuine
`
`triable dispute. Fed. R. Civ. P. 56. The non-moving party fails to meet this burden if it does not
`
`make “a sufficient showing on an essential element of her case with respect to which she has the
`
`burden of proof.” Celotex, 477 U.S. at 323. While the Board, in considering a motion for summary
`
`
`
`
`5
`
`

`

`
`
`judgment, must view the evidence in a light favorable to the non-movant and draw justifiable
`
`inferences in the non-movant’s favor, Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90
`
`U.S.P.Q.2d 1660, 1660 (TTAB 2009), the non-movant may not rest on general denials or
`
`conclusory statements in its pleadings, but rather, “must proffer countering evidence sufficient to
`
`create a genuine factual dispute,” that is, a dispute that a reasonable jury could resolve in the non-
`
`movant’s favor. Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562 (Fed. Cir.
`
`1987).
`
`B.
`
`There is no Genuine Issue of Material Fact that Dynojet’s PUSH THE LIMIT
`Designation is Likely to Cause Consumer Confusion with Mishimoto's PUSH
`THE LIMITS Marks.
`
`Mishimoto’s Motion should be granted because the undisputed facts support that there is a
`
`likelihood of consumer confusion between Mishimoto’s PUSH THE LIMITS Marks and
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`Dynojet’s PUSH THE LIMIT Designation. In determining whether there is a likelihood of
`
`confusion, the Board examines all of the factors in In re E.I. du Pont de Nemours & Co., 476 F.2d
`
`1357 (CCPA 1973), for which evidence is on record, 2 but “‘may focus … on dispositive factors,
`
`such as similarity of the marks and relatedness of the goods.’” Hewlett-Packard Develop. Co.,
`
`
`2
`These factors include:
`(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation
`and commercial impression[;] (2) The similarity or dissimilarity and nature of the goods or services as
`described in an application or registration or in connection with which a prior mark is in use[;] (3) The
`similarity or dissimilarity of established, likely-to-continue trade channels[;] (4) The conditions under
`which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing[;] (5) The
`fame of the prior mark (sales, advertising, length of use)[;] (6) The number and nature of similar marks
`in use on similar goods[;] (7) The nature and extent of any actual confusion[;] (8) The length of time
`during and conditions under which there has been concurrent use without evidence of actual
`confusion[;] (9) The variety of goods on which a mark is or is not used (house mark, "family" mark,
`product mark)[;] (10) The market interface between Dynojet and the owner of a prior mark: (a) a mere
`"consent" to register or use[;] (b) agreement provisions designed to preclude confusion, i.e. limitations
`on continued use of the marks by each party[;] (c) assignment of mark, application, registration and
`good will of the related business[;] (d) laches and estoppel attributable to owner of prior mark and
`indicative of lack of confusion[;] (11) The extent to which Dynojet has a right to exclude others from
`use of its mark on its goods[;] (12) The extent of potential confusion, i.e., whether de minimis or
`substantial[; and] (13) Any other established fact probative of the effect of use.
`In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).
`
`
`
`
`
`
`6
`
`

`

`
`
`L.P. v. Vudu, Inc., 92 U.S.P.Q.2d 1630, 1632 (TTAB 2009) (citing Han Beauty, Inc. v. Alberto-
`
`Culver Co., 236 F.3d 1333 (Fed. Cir. 2001)). Given that, as discussed below, the facts plainly
`
`show that there is a likelihood of consumer confusion between Mishimoto’s PUSH THE LIMITS
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`Marks and Dynojet’s PUSH THE LIMIT Designation, summary judgment is appropriate and
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`Mishimoto’s Motion should be granted. Mishimoto addresses each pertinent likelihood of
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`confusion factor below, but, given that “[i]n any likelihood of confusion analysis, two key
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`considerations are the similarities between the marks and the similarities between the goods,”
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`Swatch AG v. M.Z. Berger & Co., 108 U.S.P.Q.2d 1463,1469 (TTAB 2013), it presents argument
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`related to these dispositive factors first.
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`1.
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`The Parties’ Marks are Confusingly Similar.
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`There is no genuine issue of material fact as to whether Mishimoto’s PUSH THE LIMITS
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`Marks and Dynojet’s PUSH THE LIMIT Designation are confusingly similar. Federal courts have
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`recognized that “[t]he single most important factor in determining likelihood of confusion is mark
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`similarity.” Kinbook, LLC v. Microsoft Corp., 866 F.Supp.2d 453, 462 (E.D. Pa. 2012) (citing
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`Fisons Horticulture, Inc. v. Vigoro Indus., 30 F.3d 466, 476 (3d Cir. 1994)). Two marks need not
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`be completely identical. Instead, in reviewing this factor, the Board looks at the similarity or
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`dissimilarity of the marks in appearance, sound, connotation and commercial impression. VDF
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`FutureCeuticals, Inc. v. Owen Ryan, Opposition No. 91221928, slip op. at 12 (TTAB Oct. 17,
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`2018). “The proper focus is on the recollection of the average customer, who retains a general
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`rather than specific impression of the marks.” Id. at 13. Moreover, “where, as here, the goods are
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`identical in part, less similarity between the marks is needed for [the Board] to find a likelihood of
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`confusion.” In re Currie, Serial No. 87221626, slip op. at 7 (TTAB Sept. 17, 2018). The Board
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`has found a junior mark to be “very similar” to a senior user’s marks where the junior user’s mark
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`comprises, in its entirety and as the dominant portion of the mark, one or more of the senior user’s
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`marks. See United Country Real Estate, LLC v. United Realty, Inc., Cancellation No. 92064069,
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`slip op. at 21-22 (TTAB Aug. 29, 2018).
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`As an initial matter, there is no dispute that Mishimoto is the senior user. Mishimoto has
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`used its PUSH THE LIMITS Marks continuously since 2008. See Miller Decl., Ex. A, p. 5.
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`Conversely, Dynojet states it began use of its PUSH THE LIMIT Designation over ten (10) years
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`later, in 2019. See Miller Dec., Ex. G, p. 4. Additionally, the marks at issue are very similar in
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`sight, sound, meaning and overall commercial impression. In fact, the marks are nearly identical.
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`Dynojet' PUSH THE LIMIT Designation wholly encompasses Mishimoto’s PUSH THE LIMITS
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`Marks, and only deletes a single letter. The one and only difference between the PUSH THE
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`LIMIT Designation and Mishimoto’s PUSH THE LIMITS Marks is whether “LIMIT[S]” is plural
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`or singular. As is well established, marks may be confusingly similar even if there are additions,
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`deletions, or substitutions of certain letters. See, e.g., Canadian Imperial Bank of Commerce v.
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`Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (holding consumer
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`confusion is likely between COMMCASH and COMMUNICASH when both are used in
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`connection with identical banking services); Weiss Associates Inc. v. HRL Associates, Inc., 902
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`F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (holding TMM confusingly similar to TMS, both
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`for systems software); Linux Networx, Inc., No. 78854514 (T.T.A.B. May 23, 2008) (finding LNXI
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`confusingly similar to LINUX, both for computer systems). The marks presently at issue are
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`visually and phonetically nearly identical, and the addition of a single letter “S” is wholly
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`insufficient to meaningfully distinguish them, especially when considered in relation to the highly
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`related goods and services offered in connection with each mark.
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`2.
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`The Goods and Services are Highly Related, if not Identical.
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`It is undisputed that the goods and services are highly related, if not identical. In reviewing
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`this factor, the Board evaluates the “goods and services as identified in the registration(s) and
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`application(s)” and looks to whether the goods or services are “‘related in some manner and/or
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`[whether] the circumstances surrounding their marketing [are] such that they could give rise to the
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`mistaken belief that [the goods or services] emanate from the same source.’” McDonald’s Corp.,
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`112 U.S.P.Q.2d at 1281 (quoting Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q.2d at
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`1722).
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`Further, goods and services do not need to be completely identical or even competitive to
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`support a finding of likelihood of confusion. L'Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 2012
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`WL 1267956, at *6 (TTAB 2012). This Board generally requires less similarity in the parties’
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`goods and services when the marks are highly similar. See id. (“Where, as in this case, applicant's
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`mark is identical to opposer's L'OREAL PARIS mark, there need only be a viable relationship
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`between the goods to find that there is a likelihood of confusion”); In re Concordia International
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`Forwarding Corp., 222 USPQ 352, 356 (TTAB 1983) (“… the greater the degree of similarity in
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`the marks, the lesser the degree of similarity that is required of the products or services on which
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`they are being used in order to support a holding of likelihood of confusion.”). Notably, in a
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`likelihood of confusion analysis, the inquiry is not whether consumers would confuse the parties’
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`goods or services, but whether consumers would be confused as to the source of the goods or
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`services. In Re Rexel Inc., 223 U.S.P.Q. (BNA) ¶ 830 (TTAB Aug. 27, 1984).
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`Here, the goods and services identified in Dynojet’s ‘449 Application encompass a variety
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`of automotive goods and services, specifically: “[m]otor vehicle dynamometers; fuel injection
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`management systems comprised of downloadable software responsive to air/fuel sensors and
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`power sensors for controlling fuel flow and ignition timing to allow adjustment of engine operating
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`characteristics to achieve a desired operating state in a fuel injected, internal combustion engine;
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`apparatus comprised of computer hardware and downloadable software for monitoring, adjusting
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`and setting performance characteristics for vehicles; downloadable dynamometer control software
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`for controlling and measuring the performance of a motor vehicles while being run on a
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`dynamometer; Rpm limiters, namely, Speed limiters for limiting vehicle engine speed, namely,
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`aftermarket, add-on devices for vehicles in order to limit the maximum speed output of an
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`automobile” in Class 9; “[c]lutch kits comprised of clutch components for power sports vehicles,
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`namely clutch arms, weights, helixes, springs, wrenches” in Class 12; and “[e]ducation services,
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`namely, providing a website featuring information in the form of tutorial sessions in the field of
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`motor vehicle maintenance and performance” in Class 41. Trademark Application No.
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`88/488,449. Additionally, when asked to identify “each good and service formerly and currently
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`being offered or sold by [Dynojet] in conjunction with [Dynojet’s] Mark”, Dynojet merely
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`reiterated the list of goods and services identified in the ‘449 Application. See Miller Decl., Ex.
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`F, pp. 4-5.
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`Mishimoto has provided sufficient evidence that its PUSH THE LIMITS Marks are
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`similarly used in connection with a variety of highly related, if not identical, automotive related
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`goods and services. See Miller Decl., Ex. B.
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`Further, both Mishimoto and Dynojet’s products are specifically used to enhance and
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`improve standard motor vehicles. Dynojet states its consumers are individuals seeking to
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`“improv[e] the performance of their motorsport vehicles”. See Miller Decl., Ex. F, p. 9.
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`Mishimoto’s website, lo