Mailed: April 16, 2003 Oral Hearing date: Paper No. 38 September 10, 2002 GDH/gdh UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ The Pep Boys Manny, Moe & Jack of California v. Cherng Lian Ent Co., Ltd.
_____ Opposition No. 108,772 to application Serial No. 75/ 138,188 filed on July 18, 1996 _____ Marsha G.
Gentner of Jacobson Holman, PLLC for The Pep Boys Manny, Moe & Jack of California. Thomas J. Moore of Bacon & Thomas for Cherng Lian Ent Co., Ltd.
______ Before Simms, Hohein and Holtzman, Administrative Trademark Judges. Opinion by Hohein, Administrative Trademark Judge: Cherng Lian Ent Co., Ltd. has filed an application to register the mark "ROAD BOY" and design, as shown below, THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB Opposition No.
108,772 2 for "light fixtures for vehicles, namely, lights for automobiles, Opposition No. 108,772 3 fog lights, headlights for automobiles, [and] light bulbs for land vehicles". 1 As set forth in its amended notice of opposition, The Pep Boys Manny, Moe & Jack of California has opposed registration on the grounds that, "long prior to the date of first use alleged in the application opposed herein, Opposer, through its ... more. less.
predecessor in interest and its exclusive licensee The Pep Boys Manny Moe & Jack [...<br><br> hereinafter ... collectively referred to as 'Pep Boys'] has, and is now, engaged in the distribution, marketing, sale, advertising and promotion of a variety of automotive maintenance, repair, parts, accessories and retail store services"; that "Pep Boys has continuously used the name(s) and mark(s) PEP BOYS, THE PEP BOYS, and THE PEP BOYS MANNY, MOE & JACK [hereinafter collectively referred to as the 'PEP BOYS Mark(s)'], as well as a fanciful design of Pep Boys' founders, 'MANNY, MOE & JACK', ... [hereinafter referred to as the 'PEP BOYS Logo'] to identify and designate Opposer, its business, Opposer's wide variety of automotive products, services and retail stores, and to distinguish those goods, services, business and stores from those of others"; that opposer is the owner of and will 1 Ser.<br><br> No. 75/138,188, filed on July 18, 1996, which alleges a date of first use anywhere of March 16, 1990 and a date of first use in commerce of June 1, 1990. The lining, while a feature of the mark, is for shading purposes and is not intended to indicate color.<br><br> The Opposition No. 108,772 4 rely upon certain pleaded registrations for such marks; that opposer "has built up extensive goodwill under its PEP BOYS Mark(s) ... and PEP BOYS Logo, with the result that since prior to the date of first use alleged in the application opposed herein, Opposer's said ...<br><br> marks have become so well recognized as to be 'famous'"; that applicant's "ROAD BOY" and design mark "is a simulation and colorable imitation of, and is confusingly similar to, Opposer's ... famous PEP BOYS Mark(s) ... and/or PEP BOYS Logo"; that applicant's goods "are similar and/or related to Opposer's goods and services, and/or those offered or sold in Opposer's Pep Boys' stores"; that applicant's "ROAD BOY" and design mark, when used in connection with its goods, so resembles opposer's various pleaded marks for its goods and services as to be likely to cause confusion, mistake or deception; that applicant, prior to adopting and determining to use its mark in connection with its goods, had "knowledge of Opposer and its famous PEP BOYS Mark(s) ...<br><br> and PEP BOYS Logo"; and that "the registration and/or commercial use of the opposed ROAD BOY & Design mark by Applicant will cause dilution of the distinctive quality of Opposer's ... famous and distinctive PEP BOYS Mark(s) ... and/or PEP BOYS Logo." mark consists of a silhouette of two men between the words "ROAD BOY." Opposition No.<br><br> 108,772 5 Applicant, in its answer, has denied the salient allegations of the amended notice of opposition. Briefs have been timely filed 2 and an oral hearing, attended by counsel for the parties, was held. Preliminarily, we turn to the request in applicant's brief for leave, pursuant to Fed.<br><br> R. Civ. P.<br><br> 15(b), to amend its answer to assert a counterclaim against two of opposer's pleaded registrations. Specifically, by its proposed counterclaim, applicant seeks to cancel Reg. Nos.<br><br> 310,199 and 1,699,427, each of which is for a mark which, as applicant observes, has a design feature which includes "a cigar in the mouth of Manny." According to applicant, opposer "has ceased use with an intent not to resume use of each mark that shows a cigar in the mouth of Manny, who is one of the Pep Boys" 2 Applicant's consented motion for an extension of time until May 6, 2002 to file its brief on the case is granted. While, with respect to opposer's contested motion for an extension of time to file its reply brief herein, it is pointed out that the provisions of Trademark Rule 2.119(c) are not applicable to a due date set by a Board order, the motion is granted inasmuch as good cause therefor has otherwise been shown for an extension from May 21, 2002 until May 28, 2002. Fed.<br><br> R. Civ. P.<br><br> 6(b) and Patent Rule 1.7, as made applicable by Trademark Rule 2.1. (Nonetheless, had applicant more properly raised by motion, rather than in its brief on the case, its request for leave to amend the answer to assert a counterclaim, it is clear that under the rules of practice opposer would in any event have had the additional time it requested in which to respond thereto, and it should not be deprived thereof by the shortcut taken by applicant in its brief.) Finally, in view of the circumstances, opposer's uncontested motion for leave to exceed the page limitation for its reply brief is granted. The 29-page reply brief submitted by opposer on May 28, 2002 is accordingly accepted, but the "corrected" version thereof, filed by opposer on May 31, 2002, is untimely and has been given no consideration.<br><br> Opposition No. 108,772 6 characters shown in such marks, and thus has abandoned the marks. In particular, applicant contends in support thereof that, "[d]uring the trial testimony [on August 28, 2001] of Opposer's witness, Mr.<br><br> Furtkevic, he testified that these marks have been abandoned" because his testimony was that "in 1990, during the Great American Smoke Out, we decided to remove the cigar from the Manny character ... and that act garnered national media attention." Although applicant further asserts that "[t]he removal of the cigar is clearly a material alteration" of each mark, inasmuch as "[i]f a change garners national media attention, then that change is certainly material," applicant maintains that "[t]his information was not available to Applicant when the Answer to [the] Amended Notice of Opposition ... was filed on February 7, 2001" and, thus, "there was no counterclaim for cancellation at that time." Applicant argues, however, that allowance of the requested amendment is proper at this juncture under Fed.<br><br> R. Civ. P.<br><br> 15(b) as being necessary to cause "the pleadings to conform to the evidence" presented at trial. We agree with opposer, however, that not only is it plain that the issue of opposer's alleged abandonment of two Opposition No. 108,772 7 of the marks which are the subjects of its pleaded registrations was never tried by the express or implied consent of the parties, but in any event there has been no abandonment inasmuch as the removal of the cigar from Manny's mouth results in marks which continue to convey essentially the same commercial impression as those marks do with such a cigar.<br><br> As opposer accurately points out (footnote omitted): Indeed, the whole of the testimony regarding the alleged abandonment issue-- which constitutes a single sentence-- occurred in the midst of Opposer's [witness's] direct testimony regarding the numerous times Opposer has been the subject of publicity. .... It was not raised--nor later addressed--by Applicant's counsel during cross-examination.<br><br> Indeed, Applicant's counsel never raised an issue of abandonment. Thus, the context in which the single sentence was uttered would not have apprised Opposer that Applicant was pursuing as [sic] abandoned [sic] claim. Furthermore, we concur with opposer that it is obvious that (italics in original): The national media attention to Manny's "decision" to quit smoking was not garnered by the significance of the change in the commercial impression of mark[s] ..., but rather by the symbolic value to the anti-smoking movement of the "act" of such a[n] ...<br><br> icon. Indeed, as to the commercial impression [of the marks], one has to look closely to even notice the cigar, [or its absence,] at all. There is no evidence to suggest that consumers have or do notice a "material" difference.<br><br> Opposition No. 108,772 8 Accordingly, applicant's request for leave to amend its answer to assert a counterclaim is denied. Fed.<br><br> R. Civ. P.<br><br> 15(b). The record includes the pleadings; the file of the opposed application; and, as part of opposer's case-in-chief, the testimony, with exhibit(s), 3 of: (i) the director of marketing communications for its parent company, William V. Furtkevic; (ii) the vice president of finance, treasurer and assistant secretary of opposer, Bernard K.<br><br> McElroy; and (iii) 3 Applicant, in its brief, has reiterated the objection, which it raised during the deposition of Mr. McElroy, to consideration of opposer's Exhibit 43, which consists of a list of advertising and sales figures for fiscal years 1985 through 2000. Specifically, applicant notes in its brief that it continues to object to such exhibit to the extent that it "differs from or provides additional information" from "what was produced in discovery," contending that "[i]n the Responses to Applicant's First Set of Interrogatories ..., Opposer provided advertising expense figures [only] for the years from 1994 to 2000." However, inasmuch as applicant has failed to substantiate its objection by submitting a copy of the alleged responses, the objection is overruled and Exhibit 43 has been considered.<br><br> In addition, applicant in its brief expands upon its objection, which it raised during the deposition of Mr. Furtkevic, that the documents offered as exhibits "were not produced before today's trial testimony deposition." (Furtkevic dep. at 45.) Applicant, in particular, requests that all of the exhibits to the depositions of opposer's three witnesses "should be excluded from evidence" because opposer "did not provide Applicant with copies of numerous documents that are now offered[,] as Opposer's Exhibits, until the day of the trial testimony depositions [on August 28, 2001], despite previous discovery requests for these documents." Applicant, however, has not only failed to substantiate its objection by submitting a copy of the documents allegedly supporting its position, but as documented by opposer's reply brief, it appears that the parties, while agreeing to produce requested documents on "a mutually acceptable date or dates," never settled on a specific date or dates by which production would be made.<br><br> Applicant's objection is thus overruled and the exhibit(s) to each of opposer's witnesses' trial depositions have been considered. Opposition No. 108,772 9 opposer's chief administrative officer, Frederick A.<br><br> Stampone. As the rest of its case-in-chief, opposer has submitted notices of reliance upon (i) certified copies of various registrations for its marks and (ii) applicant's responses to certain of opposer's discovery requests. 4 Applicant, as its case-in-chief, has filed a notice of reliance upon opposer's response to one of applicant's requests for admission.<br><br> Applicant did not take testimony or submit any additional evidence, and opposer did not offer any rebuttal evidence. Priority of use is not in issue in this proceeding with respect to those of opposer's pleaded registrations which, as specifically set out later in this opinion, have been established by opposer's notice of reliance to be subsisting and owned by opposer. 5 See King Candy Co.<br><br> v. 4 As a general proposition, it is pointed out that unlike either interrogatories and the answers thereto or requests for admission and the admissions thereof, requests for production of documents and any documents produced in response thereto are not proper subject matter for a notice of reliance under Trademark Rule 2.120(j) with the exception of documents which otherwise meet the requirements of Trademark Rule 2.122(e). See Trademark Rules 2.120(j)(3)(ii) and TBMP §711.<br><br> However, since applicant in its brief has treated opposer's reliance on applicant's responses to certain of opposer's requests for production of documents as forming part of the record by not objecting thereto, such has been considered herein. 5 Specifically, while opposer pleaded in its amended notice of opposition that, among other things, it was the owner of the following registrations, no evidence thereof was made of record: Reg. No.<br><br> 1,395,353, issued on May 27, 1986; Reg. No. 1,420,631, issued on December 9, 1986; Reg.<br><br> No. 1,562,597, issued on October 24, 1989; Reg. No.<br><br> 1,562,599, issued on October 24, 1989; Reg. No. Opposition No.<br><br> 108,772 10 Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Priority of use likewise is not in issue herein as to four additional registrations which, as noted with particularity later on, have also been shown by opposer to be subsisting and owned by opposer. Although such registrations were not pleaded by opposer, they have been considered inasmuch as opposer introduced them as part of its notice of reliance on certain registrations for its pleaded marks during its initial testimony period and applicant, in its brief, has treated those registrations, like the others which accompany such notice, as forming part of the record.<br><br> 6 Accordingly, as to the claim of priority of use and likelihood of confusion, the focus of our determination is on the issue of whether applicant's "ROAD BOY" and design mark, when used in connection with the goods set forth in its application, so resembles one or more of opposer's "PEP BOYS" marks, including those with its "PEP BOYS" logo, for its various goods and services as to be likely to cause confusion, mistake or deception as to source or sponsorship. As to the 1,665,248, issued on November 19, 1991; and Reg. No.<br><br> 1,997,613, issued on August 27, 1996. 6 Applicant states in its brief that opposer's registrations "are recited in the Notice of Reliance" and that "[p]riority is not an issue[,] insofar as Opposer's registrations are concerned, because Applicant has not counterclaimed for cancellation based on priority of use." We accordingly consider opposer's four additional registrations to have been stipulated into the record. Opposition No.<br><br> 108,772 11 claim of dilution, we must determine whether opposer's "PEP BOYS" marks are famous and distinctive, and if so, whether applicant's use of its mark began after opposer's marks had become famous and whether such use causes dilution of the distinctive quality of opposer's marks. According to the record, opposer pleaded and is the owner of subsisting registrations for the following: 7 (1) the mark "THE PEP BOYS" and design, which is registered as shown below 7 The information indicated is in accordance with TBMP §703.02(a), which provides in pertinent part that: [W]hen a Federal registration owned by a party has been properly made of record in an inter partes proceeding, and there are changes in the status of the registration between the time it was made of record and the time the case is decided, the Board, in deciding the case, will take judicial notice of, and rely upon, the current status of the registration, as shown by the records of the PTO. See Royal Hawaiian Perfumes, Ltd.<br><br> v. Diamond Head Products of Hawaii, Inc. , 204 USPQ 144 (TTAB 1979); Duffy-Mott Co.<br><br> v. Borden, Inc. , 201 USPQ 846 (TTAB 1978); and Volkswagenwerk Aktiengesellschaft v.<br><br> Clement Wheel Co. , 204 USPQ 76 (TTAB 1979). Opposition No.<br><br> 108,772 12 for "high pressure lubricants, motor lubricating oils, [and] transmission and differential lubricants" in International Class 4; 8 (2) the mark "PEP BOYS," which is registered for: (a) "retail store services in the field of automotive accessories" in International Class 42; 9 (b) "oil additive[s], transmission fluids, and power steering fluids" in International Class 1; "hand soap cleaners" in International Class 3; and "batteries for land vehicles" in International Class 9; 10 (c) "vehicle servicing, repair and maintenance services and installation of vehicle parts" in International Class 37; 11 and (d) "metal key rings, [and] metal money clips" in International Class 6; "plastic pocket pen knives" in International Class 8; "tape measures 8 Reg. No. 310,199, issued on February 13, 1934, which sets forth a date of first use anywhere and in commerce of August 31, 1933; third renewal.<br><br> "The mark includes as a feature a reproduction of pen and ink sketches intended to resemble the officers of the ... corporation." 9 Reg. No.<br><br> 1,288,346, issued on July 31, 1984, which sets forth a date of first use anywhere and in commerce of 1925; combined affidavit §§8 and 15. 10 Reg. No.<br><br> 1,472,747, issued on January 19, 1988, which sets forth a date of first use anywhere and in commerce of November 23, 1984 for the goods in both International Classes 1 and 3, and July 15, 1984 for the goods in International Class 9; combined affidavit §§8 and 15. 11 Reg. No.<br><br> 1,562,598, issued on October 24, 1989, which sets forth a date of first use anywhere and in commerce of 1945; combined affidavit §§8 and 15. Opposition No. 108,772 13 and metal cases therefor" in International Class 9; "cigarette lighters made of precious metal, [and] watches" in International Class 14; "correspondence holders, pens, playing cards, [and] pen and pencil sets" in International Class 16; "tote bags, non-leather duffle [sic] bags, golf umbrellas, [and] nylon backpacks" in International Class 18; "drinking glasses, mugs, portable beverage coolers; [and] beverage insulators sold together as a unit with sport bottles sold empty" in International Class 21; "beach towels" in International Class 24; "caps, visors, clothing, namely, sweaters, polo shirts, golf shirts, jackets, pullovers, t-shirts, sweatshirts, denim jackets, cotton jackets, baseball jackets, tank tops, [and] nightshirts" in International Class 25; and "tossing disc toys, footballs, golf balls, [and] teddy bears" in International Class 28; 12 and (3) the mark "PEP BOYS" and design, which is registered as reproduced below for "automotive repair and maintenance services" in International Class 37 and 12 Reg.<br><br> No. 2,036,750, issued on February 11, 1997, which sets forth a date of first use anywhere and in commerce of October 1992 for the goods in International Classes 6, 8, 9, 14, 16, 18, 24 and 28, 1984 for the goods in International Class 21 and 1982 for the goods in International Class 25; combined affidavit §§8 and 15. Opposition No.<br><br> 108,772 14 "retail automotive store services" in International Class 42; 13 (4) the mark "PEP BOYS" and design, which is registered as illustrated below for: (a) "vehicle maintenance and repair services" in International Class 37 and "retail automotive store services" in International Class 42; 14 and (b) "metal key rings, [and] metal money clips" in International Class 6; "plastic pocket pen knives" in International Class 8; "tape measures and metal cases therefor" in International Class 9; "cigarette lighters made of precious metal, [and] watches" in International Class 14; "correspondence holders, pens, playing cards, [and] pen and pencil sets" in International Class 16; "tote bags, non-leather duffle bags, golf umbrellas, [and] nylon backpacks" in International Class 18; "drinking glasses, mugs, portable beverage coolers; [and] beverage insulators sold together as a unit with sport 13 Reg. No. 1,699,427, issued on July 7, 1992, which sets forth a date of first use anywhere and in commerce of March 4, 1990 for the goods in both International Classes 1 and 3; combined affidavit §§8 and 15.<br><br> 14 Reg. No. 1,883,21, issued on March 14, 1995, which sets forth a date of first use anywhere and in commerce of October 1, 1991 for the goods in both classes; combined affidavit §§8 and 15.<br><br> Opposition No. 108,772 15 bottles sold empty" in International Class 21; "caps, visors, clothing, namely, sweaters, polo shirts, golf shirts, jackets, pullovers, t-shirts, sweatshirts, denim jackets, cotton jackets, baseball jackets, tank tops, [and] nightshirts" in International Class 25; and "tossing disc toys, footballs, golf balls, [and] teddy bears" in International Class 28; 15 and (5) the mark "THE PEP BOYS MANNY, MOE & JACK" and design, which is registered as depicted below for "watches" in International Class 14; "mugs" in International Class 21; and "clothing, namely t-shirts, sweatshirts, denim jackets, tank tops, [and] nightshirts" in International Class 25. 16 Additionally, the record establishes that opposer is the owner of subsisting registrations for the following: (1) the mark "PEP BOYS PARTS USA" and design, which is registered as shown below 15 Reg.<br><br> No. 2,206,793, issued on December 31, 1996, which sets forth a date of first use anywhere and in commerce of October 1992 for the goods in International Classes 6, 8, 9, 14, 16, 18 and 28, 1984 for the goods in International Class 21 and 1982 for the goods in International Class 25; combined affidavit §§8 and 15. 16 Reg.<br><br> No. 2,001,610, issued on September 17, 1996, which sets forth a date of first use anywhere and in commerce of October 1992 for the goods in International Class 14, 1984 for the goods in International Class 21 and 1982 for the goods in International Class 25; combined affidavit §§8 and 15. Opposition No.<br><br> 108,772 16 for "retail stores featuring automotive parts and accessories" in International Class 42; 17 (2) the mark "PEP BOYS EXPRESS," which is registered for "retail stores featuring automotive parts and accessories" in International Class 35; 18 (3) the mark "PEP BOYS EXPRESS" and design, which is registered as depicted below for "retail stores featuring automotive parts and accessories" in International Class 35; 19 and (4) the mark "PEP BOYS. LOS AUTOS NOS QUIEREN. LA GENTE NOS ADORA.," which is registered for "retail stores featuring 17 Reg.<br><br> No. 2,039,686, issued on February 25, 1997 with a claim of acquired distinctiveness as to the term "USA," which sets forth a date of first use anywhere and in commerce of January 22, 1995. The word "PARTS" is disclaimed.<br><br> 18 Reg. No. 2,226,116, issued on February 23, 1999, which sets forth a date of first use anywhere of November 13, 1997 and a date of first use in commerce of November 20, 1997.<br><br> 19 Reg. No. 2,228,755, issued on March 2, 1999, which sets forth a date of first use anywhere of November 13, 1997 and a date of first use in commerce of November 20, 1997.<br><br> The mark is lined for the colors red and blue. Opposition No. 108,772 17 vehicle parts and related accessories" in International Class 35 and "vehicle repair and maintenance" in International Class 37.<br><br> 20 The record also reveals that opposer is a retailer of automotive parts and accessories as well as a provider of automotive repair and maintenance services. Opposer renders such services through a chain of stores, all of which are owned and managed by opposer rather than operated as franchises. As of the testimony of opposer's witnesses on August 28, 2001, opposer was operating 629 stores in 36 states and Puerto Rico, an increase from the 313 stores which it operated in 17 states as of 1990.<br><br> Opposer occupies a position in the automotive after-market, in light of its most recent retail sales being in excess of two billion dollars, which places it among the "leaders who provide automotive service and sell parts and accessories." (Stampone dep. at 17.) While the largest companies in such field do, on the parts side of the business, "in the neighborhood of three and an half to $4 billion" and operate "thousands of stores," opposer still ranks, in terms of number of stores, "within the top five among automotive parts retailers." (Id .) Opposer "enjoyed a similar share of [the parts] market in 1990, 20 Reg. No.<br><br> 2,345,076, issued on April 25, 2000, which sets forth a date of first use anywhere and in commerce of August 1998 for the services in both classes. The English translation of the mark is: "PEP BOYS. CARS LIKE US.<br><br> PEOPLE LOVE US." Opposition No. 108,772 18 although its "share of the after market would have been larger than it is today" because "many of the automotive parts chains [with which it competes] have grown faster since 1990 than Pep Boys." (Id . at 18.) Measured by the number of service bays in its stores, opposer as of August 28, 2001 "rank[ed] among the top five [automotive service providers] in the country," "operating over 6500 bays." (Id .<br><br> at 17.) In terms of Pep Boys['] size within the automotive service provider category, the larger service and tire chain[s] such as Firestone and Goodyear have probably grown at about the same rate as Pep Boys," so that opposer's market "share would probably have been in 1990 similar to what it is today." (Id . at 18.) Thus, "[b]y virtually any account, Pep Boys is among the nations [sic] leading automotive after-market parts and service providers." (Id . at 17.) Founded in 1921, opposer was originally known as "Pep Auto Supply," but changed its name to "Pep Boys" sometime in the 1920s.<br><br> Opposer derived its name as follows: Manny and Moe, [the two founders of opposer,] ... were sitting in the back room on a case of Pep Valve Grinding Compound .... One guy said that's a great name, that connotes high energy, the word pep.<br><br> So they were convinced that word would lend a lot of success for an otherwise generic automotive company. Opposition No. 108,772 19 The rest of the story relates to an experience with a motorist in Philadelphia who was cited by a policeman for his headlights not working properly.<br><br> He basically pulled this person over and said, you should go and see the boys down at Pep. They had become such a popular place for motorists back in those days. They took on the meaning of being one of the boys, which in Philadelphia is kind of a term that's used with a warm and friendly connotation.<br><br> To be referred to as "one of the boys" is one of the members of an elite club. That reference by this policeman repeatedly caused enough of awareness within Manny and Moe [that they thought] why don't we add that to the name. Consequently, the name was changed from Pep Auto Supplies to Pep Boys.<br><br> (Id . at 12-14.) Basically, opposer "sells a broad assortment of automotive parts, tires, accessories and supplies," including "head lamps" and "[a]lmost any after-market part you can put on a vehicle." (Furtkevic dep. at 8-9.) It "also provide[s] complete automotive diagnostic and repair services" at "[a]ll but 12" of its stores.<br><br> (Id . at 9.) Likewise, according to another of its witnesses, opposer "offer[s] roughly 35,000 different automotive parts, accessories, chemicals, tires, and related automotive supplies" in addition to providing "a vast assortment of automotive maintenance and repair services." (Stampone dep. at 5-6.) Opposition No.<br><br> 108,772 20 With respect to the specific kinds of goods for which applicant seeks registration of its mark, namely, "light fixtures for vehicles," Mr. Furtkevic testified in particular on direct examination as follows: Q Does Pep Boys actually sell light fixtures for vehicles in its stores? A Absolutely, yes, we do.<br><br> Q What are the various light fixtures you sell in the stores? A We sell head lamps primarily. We also sell other bulbs that are used in cars; parking lights; break [sic] lights, turn signal bulbs, bulbs that go in your trunk, glove box, inside the cabin of cars.<br><br> Pretty much sums up most of the places you can put a light bulb in a car. (Id . at 43-44.) Likewise, Mr.<br><br> Stampone testified that, since at least 1989, opposer has continuously sold lights for automobiles, including fog lights, headlights and light bulbs for land vehicles, and confirmed that a 1955 catalog by opposer (Exhibit 44) advertises auto bulbs, fog lamps, back up lamps and headlamps. Opposer, he also noted, has advertised automobile lights in its most recent television advertising. However, as shown by its Exhibits 42A-C, the head lamps or headlights sold by opposer in its retail stores bear the "SYLVANIA" brand name.<br><br> Nothing in the record, including various catalogs introduced by opposer, demonstrates that opposer has ever used any of its "PEP BOYS" marks, or Opposition No. 108,772 21 variations thereof, as trademarks for any vehicle lighting fixtures, such as head lamps or headlights, although it has repeatedly advertised those goods, along with a wide range of other automotive after-market parts and accessories, under its various "PEP BOYS" service marks and variants thereof. Opposer uses the name "PEP BOYS" as a service mark on the building façade of all of its retail outlets, in its print advertising and promotional materials, including brochures, catalogs, newspaper ads and direct mail pieces, on its in-store point-of-purchase graphics, and in connection with its television, radio and Internet advertising.<br><br> Its national television advertising, for example, airs primarily on sports programs and is done on the following networks: "ABC; NBC; Fox; PBS; ESPN; ESPN2; TNT; TNN[;]" and "CBS." (Id . at 16.) In 2001, it conducted local television advertising, mostly on sports shows, "in Los Angeles, Philadelphia, Dallas, Fort Worth and Atlanta." (Id . at 17.) During the same year, opposer's ads appeared in newspapers such as the Atlanta Journal Constitution , Philadelphia Inquirer , Los Angeles Times , USA Today and Miami Herald .<br><br> Opposer, under the domain name "pepboys.com," has also had a website since about 1994. As to its various promotional activities, opposer in 2001 was "the presenting sponsor of the Pennsylvania 500, Opposition No. 108,772 22 which is a Winston Cup NASCAR race on TNT," and was "a race sponsor of the NHRA 50 Anniversary Race in Pomona, California." (Id .<br><br> at 29.) In 2000, it was "the title sponsor of the great outdoor games ... on ESPN" and, "for two years, 1997 and '98," it was "the title sponsor of the Indy Racing League, which includes the single largest spectator event in the world, [namely, the] ... Indianapolis 500." (Id .<br><br> at 29- 30.) Much earlier, "the infamous Pep Boys Snowman Aircraft, which was a flight piloted by Admiral Bird to the South Pole back in 1933," was "[o]ne of many promotional events that Pep Boys has sponsored or been involved with in some way over the years." (Stampone dep. at 14.) Other promotional activities by opposer, besides sponsorship of sporting events, presently include in-store promotions and cross-promotions of its products and services, such as various rebate programs. As another method of promoting itself, opposer, around the mid-1990s, produced a catalog "to advertise and sell licensed logo-bearing merchandise," including sweaters, sweatshirts, uniform shirts and sport bottles bearing its "PEP BOYS" and design mark and polo shirts, jackets, pullovers, sweatshirts, sweaters, sport shirts, t-shirts, boxer shorts, caps, duffel bags, sport bottles, collectible trucks, mugs, umbrellas and pens featuring its "THE PEP BOYS" and design mark.<br><br> (Furtkevic dep. at 30-31.) According to Mr. Furtkevic, Opposition No.<br><br> 108,772 23 opposer "actually distributed all of this merchandise, but today most of it is no longer manufactured with the exception of" such items as polo shirts, caps and collectibles. (Id . at 31.) In addition, "[b]ased upon various promotions," opposer still "will engage a promotional company to manufacture premium items that contain the Pep Boys mark like pens, tablets, other wearable products, hats, [and] key chains." (Id .<br><br> at 31-32.) Such goods are "[d]istributed to employees and are also distributed [to the public at large] at ... NASCAR events, motor sports events, races, [and] other things like that" in which opposer participates as an event sponsor. (Id .<br><br> at 32.) Moreover, coffee mugs bearing opposer's "PEP BOYS" and design mark are sold in its retail stores and such mark has been used on a disposable camera, which was offered as a premium item to its customers during "the winter of 2000 to promote usage of the Pep Boys private label Credit Card." (Id . at 33.) Opposer has been the subject of publicity, receiving mention, for instance, on a radio newscast for its initiation of a job-training partnership program with the Urban League in the City of Los Angeles. Opposer also gained notoriety, according to Mr.<br><br> Furtkevic, in 1990 when, "during the Great American Smoke Out, we decided to remove the cigar from the Manny character of the brand symbol and that act garnered Opposition No. 108,772 24 national media attention on the cover of USA Today" and "it was also featured in the Philadelphia Inquirer." (Id . at 37.) Moreover, besides "photocopies of various press clippings that represent ...<br><br> print publicity ... received over the past number of decades" (Id . at 38), Mr.<br><br> Furtkevic notes that other instances in which opposer and the designation "PEP BOYS" have received publicity include the following: Pep Boys has been mentioned on NBC with the Manny, Moe and Jack characters. We've been repeatedly mentioned and depicted by Jay Leno as part of the Tonight Show broadcast and Late Night with David Letterman. Pep Boys was actually referred to in the 1959 film, "Auntie Mame," starring Rosaline Russell.<br><br> There have been other instances like that where Pep Boys has been featured in films or television programming. There was an episode of the Simpsons [television show] where Manny, Moe and Jack, in an animated fashion, were shown coming off of the façade of one of our buildings and delivered a few lines .... (Id .<br><br> at 37.) Several requests for licenses have also recently been granted by opposer, giving the licensees "permission to use the Pep Boys name and/or marks in feature film or entertainment programming that they're currently producing." (Id . at 41.) For fiscal years 1985 through 2000, opposer's (and its subsidiaries') "merchandise sales," which consist of sales of all products marketed at retail, including those sold under Opposition No. 108,772 25 various "PEP BOYS" and "PEP BOYS" and design marks as well as such third-party brands as, for example, "SYLVANIA," have generally increased on an annual basis from nearly $367 million in 1985 to a peak of almost $2 billion in 1998, with a small decrease from such amount in 1999 before rebounding slightly in 2000.<br><br> 21 Opposer's (and its subsidiaries') "service revenue," which is the labor charged to customers, has steadily increased each year from around $22 million in 1985 to almost $461 million in 2000. 22 Together, merchandise sales and service revenue constitute opposer's (and its subsidiaries') "total net sales," which have progressively climbed from just under $389 million in 1985 to just over $2.418 billion in 2000. 23 21 Specifically, as set forth in opposer's publicly available annual reports, merchandise sales totaled $366,707,000 in 1985, $452,650,000 in 1986, $505,583,000 in 1987, $586,162,000 in 1988, $703,487,000 in 1989, $774,502,000 in 1990, $873,381,000 in 1991, $1,008,191,000 in 1992, $1,076,543,000 in 1993, $1,211,536,000 in 1994, $1,355,008,000 in 1995, $1,554,757,000 in 1996, $1,720,670,000 in 1997, $1,991,340,000 in 1998, $1,954,010,000 in 1999 and $1,957,480,000 in 2000.<br><br> 22 In particular, opposer's service revenues were $22,207,000 in 1985, $33,248,000 in 1986, $48,181,000 in 1987, $69,806,000 in 1988, $95,204,000 in 1989, $110,172,000 in 1990, $128,127,000 in 1991, $147,403,000 in 1992, $164,590,000 in 1993, $195,449,000 in 1994, $239,332,000 in 1995, $273,782,000 in 1996, $335,850,000 in 1997, $407,368,000 in 1998, $440,523,000 in 1999 and $460,988,000 in 2000. 23 Such sales ranged from $388,914,000 in 1985, to $485,899,000 in 1986, $553,764,000 in 1987, $655,968,000 in 1988, $798,691,000 in 1989, $884,674,000 in 1990, $1,001,508,000 in 1991, $1,155,594,000 in 1992, $1,241,133,000 in 1993, $1,406,985,000 in 1994, $1,594,340,000 in 1995, $1,828,539,000 in 1996, $2,056,520,000 in 1997, Opposition No. 108,772 26 "Gross media" expenditures by opposer (and its subsidiaries), which include "any type of advertising ...<br><br> done" (e.g., print, radio and television ads), have for the most part risen from nearly $12 million in 1985 to a high of over $53 million in 1998 before falling by about a million dollars in 1999 and again in 2000. 24 (McElroy dep. at 8.) In all, "after 80 years of promotion ...<br><br> through hundreds of millions of dollars of national and local advertising in very prominent newspapers and [on] national broadcasts and national cable television programs," opposer's witness, Mr. Stampone, was of the opinion that "the Pep Boys name and the Manny, Moe and Jack icons associated with Pep Boys are extremely famous and somewhat invaluable to this company." (Stampone dep. at 19.) The only information of record about applicant and its mark comes from its responses to opposer's discovery requests.<br><br> 25 Specifically, applicant has indicated that has $2,398,708,000 in 1998, $2,394,533,000 in 1999 and $2,418,468,000 in 2000. 24 Specifically, such expenditures totaled $11,936,000 in 1985, $18,601,000 in 1986, $21,470,000 in 1987, $27,312,000 in 1988, $33,512,000 in 1989, $39,154,000 in 1990, $41,758,000 in 1991, $40,346,000 in 1992, $40,293,000 in 1993, $40,825,000 in 1994, $36,614,000 in 1995, $41,069,000 in 1996, $41,430,000 in 1997, $53,189,000 in 1998, $52,334,000 in 1999 and $51,153,000 in 2000. 25 While such responses, which as previously noted have been made of record by opposer, curiously indicate among other things that applicant "denies" that "[o]pposer's Pep Boys stores are part of the Opposition No.<br><br> 108,772 27 used its "ROAD BOY" and design mark in the United States exclusively in connection with the goods recited in its opposed application; that applicant was aware of opposer, and that its various "PEP BOYS" marks were being used by opposer in the United States, before applicant selected and first used its applied-for mark; that applicant expects to continue using its "ROAD BOY" and design mark in the United States in the same manner as it presently does, which includes the use thereof on the exterior of boxes for the goods in such a fashion that the mark may be visible on the shelves of retail outlets; and that while some vehicle service retail stores may sell vehicle parts, such retailers typically do not sell goods of the kind set forth in the opposed application. Applicant admits, however, that goods of the type identified in its application can be found in retail stores featuring automotive products and are intended to be sold at such stores, although not exclusively at those outlets. Similarly, applicant further admits that its goods, including those marketed under its "ROAD BOY" and design mark, are sold in the automotive after-market through such channels of trade as retail stores which feature automotive products, but that such are not the exclusive channels of trade for its United States automotive after[-]market," the preponderance of the evidence plainly demonstrates that opposer's retail outlets are part Opposition No.<br><br> 108,772 28 goods. Applicant, more broadly speaking, also admits that light fixtures for vehicles, fog lights, headlights for automobiles and light bulbs for land vehicles are all sold in the automotive after-market, but that such products are not sold exclusively in the automotive after-market. Finally, contrary to applicant's contention with respect to the sole evidence which it submitted on its behalf, there is no admission by opposer that opposer is unaware of any instances of actual confusion.<br><br> 26 Turning first to the issue of likelihood of confusion, we find upon consideration of the pertinent factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), that on this record opposer has not shown that applicant's "ROAD BOY" and design mark, when used in connection with light fixtures for vehicles, namely, lights for automobiles, fog lights, headlights for automobiles, and light bulbs for land vehicles, so resembles one or more of opposer's "PEP BOYS" marks, of such market.<br><br> (Opposer's Request for Admission No. 28 and response thereto.) 26 Although applicant has shown that it requested opposer to admit that opposer "is unaware of any instances of actual confusion that have resulted from the use of (1) trade names, trademarks and/or service marks comprising 'ROAD BOY' by Applicant, and (2) trade names, trademarks and/or service marks comprising 'PEP BOYS' by Opposer," opposer's response thereto was an objection "to this request as assuming facts not in evidence, and as vague and indefinite." (Applicant's Request for Admission No. 1 and response thereto.) Opposition No.<br><br> 108,772 29 including those with its "PEP BOYS" logo, which opposer uses in connection with its various goods and services as to be likely to cause confusion, mistake or deception with respect to the source or sponsorship thereof. We acknowledge, as a starting point, that with respect to the du Pont factors of the similarity or dissimilarity of the goods and/or services and the similarity or dissimilarity of established, likely to continue trade channels, such factors favor opposer. Applicant's goods are related to opposer's goods and services in that the respective products are sold in the automotive after-market through, inter alia , retail stores which, like opposer's retail outlets, feature the sale of vehicle parts and accessories.<br><br> Applicant, in fact, admits that vehicle light fixtures, including those which it sells under its "ROAD BOY" and design mark, are sold in the automotive after-market and that such goods can be found in retail stores featuring automotive products and are intended to be sold at such stores. Nothing in the record demonstrates, however, that applicant's goods would ever be sold under its "ROAD BOY" and design mark in opposer's retail automotive parts, accessories and vehicle service and maintenance centers since, obviously, opposer would not be expected to foster (or be heard to Opposition No. 108,772 30 complain about) a situation which, due to its own actions, would lead to what it contends is a likelihood of confusion with the products and services which it offers under its "PEP BOYS" marks.<br><br> Moreover, nothing in the record reveals that the products and services which opposer markets under its "PEP BOYS" marks have ever been or would be offered anywhere other than through its own retail automotive parts, accessories and vehicle service and maintenance centers. Nonetheless, it is well settled that the registrability of an applicant's mark must be evaluated on the basis of the identification of goods as set forth in the involved application and the identifications of the goods and/or services as recited in any pleaded registrations of record, regardless of what the record may reveal as to the particular nature of the respective goods and/or services, their actual channels of trade, or the classes of purchasers to which they are in fact directed and sold. See , e.g.<br><br> , Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.<br><br> Cir. 1990) and Canadian Imperial Bank of Commerce, N.A. v.<br><br> Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987).<br><br> It is also well established that, absent any specific limitations or restrictions in the identification of goods as listed in an applicant's application and in the identifications of goods Opposition No. 108,772 31 and services as set forth in an opposer's registrations, the issue of likelihood of confusion must be determined in light of consideration of all normal and usual channels of trade and methods of distribution for the respective goods and services. See , e.g.<br><br> , CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.<br><br> Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.<br><br> Cir. 1983); and Paula Payne Products Co. v.<br><br> Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Here, as identified in the respective application and registrations, neither applicant's "light fixtures for vehicles, namely, lights for automobiles, fog lights, headlights for automobiles, [and] light bulbs for land vehicles" nor opposer's automotive parts, accessories and collateral items contain any restriction or limitation as to the channels of trade or classes of purchasers for such products. The respective goods must therefore be presumed to be available, for example, through third-party retailers of automotive after-market parts, accessories and collateral merchandise, including retailers which, like opposer, additionally offer vehicle maintenance and repair services.<br><br> Similarly, even if opposer's goods and services are regarded as being marketed, under its various "PEP BOYS" marks, only in its own retail stores, it is common knowledge that consumers Opposition No. 108,772 32 of after-market automotive parts, accessories and collateral merchandise, as well as customers for vehicle repair and maintenance services, may cross-shop different retailers thereof, including those providers which offer automotive parts and other merchandise together with vehicle care and repair services. Moreover, aside from consideration of the broad manner in which applicant's goods and opposer' goods and services are set forth in the respective application and registrations, the record clearly shows that opposer has for many years continuously sold at retail such vehicle lights as fog lights, headlights and light bulbs for land vehicles, and has advertised those goods in conjunction with its other automotive supplies and services.<br><br> Retail customers, therefore, have become accustomed to finding the kinds of vehicle lights marketed by applicant being offered for sale in opposer's retail automotive parts and accessories stores, and such outlets, almost without exception, also feature vehicle repair and maintenance services. The respective goods and services at issue herein, and the established, likely-to- continue channels of trade therefor, are in short so similar or closely related in a commercial sense that, if such goods and services are sold or advertised under the same or Opposition No. 108,772 33 substantially similar marks, confusion as to the origin or affiliation thereof would be likely to result.<br><br> Applicant maintains, however, that confusion is not likely because, with respect to the du Pont factor which concerns the conditions under which and buyers to whom sales are made, "[t]he decision whether to purchase the goods of the opposed application ... would be carefully made" inasmuch as "[a] prudent driver does not haphazardly select headlights. Rather, the purchase is a measured decision in view of the possible consequences of [an] incorrect decision." While clearly, in view of their nature, vehicle lighting fixtures such as fog lights and automobile headlights are not "impulse" items in the sense that they are subject to frequent replacement or, as opposer insists in its reply brief, are so inexpensive as to result in "a low level of care in the purchasing decision," neither is there any evidence of record that the purchase of such goods would be carefully made by sophisticated and highly knowledgeable buyers.<br><br> Instead, what evidence there is with respect to customers for vehicle light fixtures and the conditions under which sales of such goods are made indicates that fog lights, headlights for automobiles and other vehicle lights would be purchased by ordinary consumers (members of the general public) who would exercise ordinary, reasonably prudent care to select products Opposition No. 108,772 34 appropriate for their vehicles. Thus, the conditions under which and buyers to whom sales are made is a du Pont factor which, as opposer maintains, favors opposer instead of applicant.<br><br> Another du Pont factor in its favor, opposer insists, is that there is no evidence in the record that there are similar third-party marks containing the words "BOYS" or "BOY" which are in use for similar products. However, suffice it to say that the absence of any evidence with respect to the du Pont factor of the number and nature of similar marks in use on similar goods does not constitute evidence of absence. There simply is no evidence in the record with respect to such factor; it therefore is not applicable to the issue of likelihood of confusion.<br><br> Opposer further contends that another du Pont factor in its favor is the asserted fame of its "PEP BOYS" marks. Although, as applicant notes in its brief, there are plainly some problems with the evidence presented by opposer concerning the alleged fame of its "PEP BOYS" marks, on the whole the record is considered sufficient to establish such fame, at least for purposes of likelihood of confusion. This is because the designation "PEP BOYS," which constitutes the entirety or a dominant and distinguishing portion of opposer's "PEP BOYS" marks, has been satisfactorily demonstrated to be Opposition No.<br><br> 108,772 35 famous in the after-market for automotive parts, accessories and collateral items as well as with respect to retail store services which feature such merchandise and with respect to vehicle repair and maintenance services. Among other things, while the sales and advertising figures offered by opposer cover, in particular, all merchandise sold and advertising expenditures made by opposer and its subsidiaries, and thus include goods sold and advertised under marks other than just its "PEP BOYS" marks (e.g., "SYLVANIA" brand headlights), the failure to break down such amounts to those attributable solely to opposer's "PEP BOYS" marks is not considered fatal to opposer's claim that its marks are famous. The reason therefor is that even if the actual amounts of the sales revenues and advertising outlays which pertain to opposer's own "PEP BOYS" brands of automotive products, accessories and collateral merchandise were somehow not reflective of a substantial portion of its total sales figures and advertising costs, the fact remains that all of opposer's sales and its promotional activities have occurred in connection with the retail automotive parts and accessories store services and vehicle repair and maintenance services which it renders under its various "PEP BOYS" marks.<br><br> In addition, while it is curious that, for a number of its registered marks (e.g., "PEP BOYS PARTS USA" and Opposition No. 108,772 36 design; "PEP BOYS EXPRESS," with and without design; and "PEP BOYS. LOS AUTOS NOS QUIEREN.<br><br> LA GENTE NOS ADORA."), opposer has not provided any evidence as to the extent of their use or manner of promotion, so that it is not possible to conclude that such marks in their entireties have individually become famous, it is clear from the record that the designation "PEP BOYS" in its "PEP BOYS" marks is, as indicated above, famous for purposes of whether there is a likelihood of confusion. The record, in this regard, variously shows that in addition to the sales and advertising figures discussed previously, the designation "PEP BOYS" has been continuously used as a service mark in connection with opposer's retail automotive parts and accessories store services for nearly 80 years and has also been extensively so used for many years in connection with opposer's vehicle maintenance and repair services, which are currently rendered at all but 12 of its retail stores. Opposer operates a chain of 629 company-owned stores in 36 states and Puerto Rico, an increase from the 313 such stores which it operated in 17 states as of 1990.<br><br> In terms of number of stores, opposer presently ranks within the top five among automotive parts retailers and enjoyed a similar and even larger share of such market in 1990. Thus, in the automotive after-market, opposer's sales position places it among the leaders in terms of selling parts and accessories and Opposition No. 108,772 37 providing maintenance and repair services.<br><br> Similarly, as measured by the number of service bays in its stores, opposer ranks among the top five automotive service providers in the country, currently operating over 6500 service bays, and had a similar share of such market in 1990. Additional evidence of the fame of the designation "PEP BOYS" includes the fact that such has appeared as a service mark on the building façade of all of opposer's retail outlets, in its print advertising and promotional materials, including brochures, catalogs, newspaper ads and direct mail pieces, on its in-store point-of-purchase graphics, and in connection with its national television, radio and Internet advertising. Opposer also has promoted the designation "PEP BOYS" in connection with its sponsorship of several auto racing and drag racing events, including NASCAR's Pennsylvania 500 Winston Cup race, the NHRA's 50 Anniversary Race and, as title sponsor thereof, the Indy Racing League's presentation of the largest spectator event in the world, the Indianapolis 500 auto race.<br><br> Furthermore, opposer has promoted itself by producing, in the mid-1990s, a catalog by which it advertised, sold and/or gave away licensed logo-bearing merchandise, including items of apparel, bearing its "PEP BOYS" and design mark and its "THE PEP BOYS" and design mark. Opposer, as noted earlier, has for many years been the subject of Opposition No. 108,772 38 publicity for various civic activities, which have served to promote the "PEP BOYS" designation, and it also has been mentioned in certain television programs and films.<br><br> Other evidence of fame is the receipt by opposer of several requests for licenses, which opposer has granted, giving its licensees permission to use the "PEP BOYS" name and/or marks in feature film or entertainment programming that are being produced. Accordingly, while conclusory, the record supports, and nothing therein contradicts, the opinion by opposer's witness, Mr. Stampone, that "after 80 years of promotion ...<br><br> through hundreds of millions of dollars of national and local advertising in very prominent newspapers and [on] national broadcasts and national cable television programs," the evidence shows that "the Pep Boys name and the Manny, Moe and Jack icons associated with Pep Boys are ... famous ...." (Id .) As noted by our principal reviewing court in Kenner Parker Toys Inc. v.<br><br> Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert.<br><br> denied , 506 U.S. 862, 113 S.Ct. 181 (1992), "the fifth duPont factor, fame of the prior mark, plays a dominant role in cases featuring a famous or strong mark.<br><br> Famous or strong marks enjoy a wide latitude of legal protection." The Federal Circuit reiterated these principles in Recot Inc. v. M.C.<br><br> Becton, 214 F.3d 1322, Opposition No. 108,772 39 54 USPQ2d 1894, 1897 (Fed. Cir.<br><br> 2000), stating that "the fifth DuPont factor, fame of the prior mark, when present, plays a 'dominant' role in the process of balancing the DuPont factors," citing , inter alia , Kenner Parker Toys , 22 USPQ2d at 1456, and reaffirmed that "[f]amous marks thus enjoy a wide latitude of legal protection." Nevertheless, famous or strong marks, in legal contemplation, are not the same as rights in gross, which would preclude the registration to another of the same or similar mark(s) for any goods and services. For instance, even though famous or strong marks are entitled to a wide latitude of legal protection, the court in Electronic Design & Sales Inc. v.<br><br> Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992), underscored in its reversal of the Board's finding of a likelihood of confusion that "the Board gave too much weight to certain DuPont factors, such as the strength of opposer's mark, and failed to give due weight to countervailing DuPont factors, such as the sophistication of purchasers." As set forth in du Pont , supra , "[t]he evidentiary elements are not listed ...<br><br> in order of merit" inasmuch as "[e]ach may from case to case play a dominant role." Thus, while opposer's heavy reliance upon the fame of its "PEP BOYS" marks is an important and significant factor, along with several others previously discussed, in its Opposition No. 108,772 40 favor, such factors are not sufficient to support a finding of likelihood of confusion when another pertinent du Pont factor, namely, the similarity or dissimilarity of the marks at issue when considered in their entireties as to appearance, sound, connotation and commercial impression, weighs overwhelmingly in applicant's favor. Opposer argues, however, that applicant's "ROAD BOY" and design mark "is confusingly similar to" opposer's "PEP BOYS" and design marks "in sight, sound and meaning," contending that because applicant's mark "consists of two elements: the terms 'ROAD' and 'BOY,'" opposer's "PEP BOYS" marks are "virtually identical with similar elements that convey the same commercial impression." In particular, opposer further maintains that because "[b]oth Applicant's and Opposer's marks contain BOY/S as the second word of (usually) a two word mark," such fact "weighs in favor of opposer, especially since the term BOY is completely arbitrary as used in connection with either Applicant's goods or the goods and services offered under Opposer's PEP BOYS mark[s]." Opposer also insists that because "[t]he first term of Applicant's mark ('ROAD') is descriptive in light of the automotive nature of Applicant's goods," "it will have little, if any, distinguishing impact on the mark's commercial impression" and "[t]he word 'BOY' thus will predominate." Finally, noting that some of opposer's "PEP BOYS" marks feature "a fanciful Opposition No.<br><br> 108,772 41 design of, and a textual reference to, Pep Boys' founders, 'MANNY, MOE & JACK,'" opposer asserts that applicant "seeks to play off these ... characters by including a design element which depicts two characters of its own in its mark. According to opposer, "[t]he fact that Applicant chose to employ in its mark a fanciful design of two, and not three characters is of no moment" inasmuch as "the design element of the opposed mark only exacerbates the confusing similarity" thereof with respect to those of opposer's "PEP BOYS" marks which feature the named characters of "MANNY, MOE & JACK" and/or their caricatures.<br><br> We concur with applicant, however, that its "ROAD BOY" and design mark is so different in sound, appearance, connotation and commercial impression from opposer's "PEP BOYS" marks as to preclude any likelihood of confusion. The sole similarities therein, namely, the presence of either the word "BOY" or "BOYS" as the second of the literal elements of the respective marks, are outweighed by the numerous differences, in each instance, when the respective marks are considered in their entireties. To state the obvious, the term "ROAD" in applicant's "ROAD BOY" and design mark simply does not sound or look at all like the term "PEP" in opposer's marks, nor do such terms have the same or similar connotation Opposition No.<br><br> 108,772 42 or engender the same or similar commercial impression, even when respectively paired with the words "BOY" and "BOYS." In particular, not only does the word "ROAD" in applicant's mark sound completely different from the word "PEP" in opposer's marks, but as applicant points out in its brief, its mark visually features "a unique design and a unique style of type that is integral with the words of the mark." Specifically, as applicant accurately notes, while the design between the words "ROAD" and "BOY" in its mark is described in its application as "a silhouette of two men," "[t]here is nothing in any of the marks asserted by Opposer that even remotely resembles" such design. The faces of the Manny, Moe and Jack caricatures in opposer's "PEP BOYS" and design marks, as applicant further observes, are smiling and "exude warmth and welcome," whereas the heads on the two stick-figures seen in silhouette in applicant's "ROAD BOY" and design mark are merely two small dots. Such figures, moreover, "are not immediately recognizable as people." In addition, as to the unique stylization of its mark, applicant properly points out that while "[e]ach of the letters R, A, D, B, and Y are in a unique style of print," "the 'O' of 'ROAD' and the 'O' of 'BOY' are identical [in style], and comprise a design that is different from the style of print used for the other letters" and which "[t]o some ...<br><br> may suggest Opposition No. 108,772 43 headlights" or fog lights. 27 Such features are totally missing from opposer's marks.<br><br> Furthermore, we agree with applicant that, in terms of connotation and overall commercial impression, the respective marks are significantly different. Applicant's "ROAD BOY" and design mark, as applicant persuasively notes in its brief, "creates an impression of a single boy who likes to be on the road, or who has something to do with the road," while the term "PEP BOYS" in opposer's various "PEP BOYS" marks signifies boys with high energy. Although, on this record, the word "BOY" and its plural "BOYS" appear to be arbitrary or fanciful when used in connection with the parties' goods and services, we find nothing which supports 27 Although some of opposer's marks are, of course, registered in a typed format and, thus, are not restricted to a particular manner of display, see , e.g.<br><br> , Phillips Petroleum Co. v. C.<br><br> J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) [a mark registered in a typed format is not limited to the depiction thereof in any special form], such a format does not mean that the marks must be considered in all possible stylized forms.<br><br> Rather, as indicated in Jockey Int'l Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1235 (TTAB 1992), when a registration sets forth a mark in a typed format, the issue of likelihood of confusion is considered on the basis of all reasonable manners in which the mark could be displayed, citing INB National Bank v.<br><br> Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992) ["[a]s the Phillips Petroleum case makes clear, when [a party has] ... a typed or block letter registration of its word mark, then the Board must consider all reasonable manners in which ... [the word] could be depicted"].<br><br> Here, all of the letters in applicant's mark, including the two letters "O" which are suggestive of headlights or fog lights, are depicted in such uniq