Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 PRECISION TUNE, INC.
v.
PRECISION AUTO-TUNE, INC.
v.
PRECISION TUNE UPS
v.
PRECISION TUNE-UP, INC.
Concurrent Use No. 665
June 16, 1987
By the Board:
J. E. Rice, L. E. Rooney and R. L. Simms
Members
In this proceeding applicant/registrant Precision Tune, Ic., (hereinafter applicant) seeks to register the mark PRECISION TUNE for vehicle tune-ups and lubrication services [FN1] for the entire United States except for an area of Connecticut consisting of portions of New Haven and Middlesex Counties, and the city limits of Eureka, California, and Tucson, Arizona. Applicant's Registration Nos. 1,214,325 and 1,214,326 [FN2] are also involved in this proceeding. The former is for the mark PRECISION TUNE, and the latter is for the mark shown below both for vehicle tune-up services.
Applicant cited three users as the exceptions to applicant's exclusive right to use, namely, Precision Auto-Tune, Inc. in Connecticut, Precision Tune Ups in California, and Precision Tune-Up, Inc. in Arizona. On October 26, 1986 the Board entered default judgment against the users in California and Arizona under Rule 2.99(d)(3).
Applicant filed on March 20, 1987 a motion for judgment based on the agreement between applicant and the remaining user, Precision Auto-Tune, Inc.
In an order dated April 14, 1987 the Board discussed the settlement agreement and held that it was persuasive that there will be no likelihood of confusion as a result of applicant's use of its mark vis-a-vis use by Precision Auto-Tune, Inc. However, the Board then allowed applicant time in which to submit a supplemental showing of its right to concurrent use registration relative to the two defaulted users.
Applicant filed the supplemental showing on May 15, 1987, which consists of the affidavit of Stephen J. Simmons, senior vice president and general counsel of applicant. Mr. Simmons states in his affidavit that the two defaulted users operate only a single garage each-one user in Eureka, California, and one user in Tucson, Arizona; that both of those cities are geographically remote from any metropolitan area where applicant is likely to operate; that applicant will not operate any facility in Eureka, California or in Tucson, Arizona, nor will applicant advertise in media located within either city directed to inhabitants of those cities, so long as the excepted users continue to use their marks in connection with automotive services; and that if applicant encounters any actual confusion, it will cooperate reasonably with the user in order to thereafter avoid such confusion.
We believe applicant has now established prima facie as to all three users that the concurrent use of the involved marks is not likely to lead to confusion, mistake, or deception. Accordingly, concurrent use registrations are hereby approved.
Decision: Precision Tune, Inc. is entitled to register the mark PRECISION TUNE for vehicle tune-ups and lubrication services (Application Serial No. 535,103) for the entire United States except for the city limits of Eureka, California, and Tucson, Arizona, and for the portions of New Haven and Middlesex counties in Connecticut specifically delineated as follows:
*2 bounded on the south by the Long Island Sound; on the west by the Housatonic River to the intersection of the Naugatuck River, north on the Naugatuck River to the intersection of Route 42, east on Route 42 to Route 10, Route 10 to the county line of New Haven County, east on the county lines of New Haven and Middlesex Counties to the Connecticut River, south on the Connecticut River to the intersection of Route 82; south and then east on Route 82 to route 85, south on Route 85 to Interstate 95; east on I-95 to the Thames River (including all of the town of New London); and south on the Thames River to the Long Island Sound.
The two registrations (Nos. 1,214,325 and 1,214,326) also owned by Precision Tune, Inc. which are presently unrestricted, will be limited to the same area as set forth above.
J. E. Rice
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 535,104, filed May 1, 1985. Applicant included a claim of distinctiveness under Section 2(f) of the Trademark Act.
FN2. Both registrations issued October 26, 1982 under the provisions of Section 2(f) of the Trademark Act.