Buell Motorcycle Co.v.Honda Giken Kogyo Kabushiki Kaisha

Trademark Trial and Appeal Board

Jul 30, 2003

No. 91121790 (T.T.A.B. Jul. 30, 2003)

Hearing: Mailed: July 30, 2003
March 25, 2003 Paper No. 20
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Buell Motorcycle Company
v.
Honda Giken Kogyo Kabusihki Kaisha
(Honda Motor Co., Ltd.)
_____
Opposition No. 121,790
to application Serial No. 75/536,031
filed on August 13, 1998
_____
Glenn E. Forbis and Kristin L. Murphy of Rader, Fishman &
Grauer PLLC and Linda K. McLeod of Finnegan, Henderson,
Farabow, Garrett & Dunner L.L.P. for Buell Motor Company.
Anthony L. Fletcher of Fish & Richardson P.C. for Honda
Giken Kogyo Kabushiki Kaisha (Honda Motor Company, Ltd.).
______
Before Quinn, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Honda Giken Kogyo
Kabushiki Kaisha (Honda Motor Co., Ltd.) to register
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 121,790
2
STREETFIGHTER as a trademark for “motorcycles and structural
parts therefor.”1
Registration has been opposed by Buell Motorcycle
Company on the ground that STREETFIGHTER is either generic
or merely descriptive of a category of motorcycles. Opposer
alleges that “since at least as early as 1995, [it] has been
involved in the manufacture and sale of motorcycles which
are of a related nature to Applicant’s motorcycles, and
which Opposer has a valid right and legal right to describe
by use of the term streetfighter sought to be registered by
Applicant.”
Applicant has denied the salient allegations in the
notice of opposition.
Evidentiary Matter
At the outset, there is an evidentiary matter we must
discuss. First, at the oral hearing held in this case on
March 25, 2003, opposer’s counsel tendered to the Board
three demonstrative exhibits which she indicated were based
on evidence and testimony of record. Although applicant’s
counsel made no objections to the exhibits at the hearing,
on March 27, 2003, he filed a communication wherein he
objects to one of the exhibits, namely a chart styled
1 Application Serial No. 75/536,031, filed August 13, 1998, and
asserting a bona fide intention to use the mark in commerce.
Opposition No. 121,790
3
“Categories of On-road Motorcycles.” According to
applicant’s counsel, “[The chart] is, at best, a highly
selective syntheses of information contained in various
parts of the record, and one of many such synthesis. It is
not a fair representation or summary of evidence in the
record.”
On April 11, 2003 opposer’s counsel filed a response to
applicant’s communication. Opposer’s counsel maintains that
the chart is based upon evidence and testimony in the record
and therefore requests that we overrule applicant’s
objection.
On April 24, 2003 applicant’s counsel filed a further
communication wherein he essentially reiterates his
objection to the chart.
TBMP Section §802.07 (2d. ed June 2003) provides, in
relevant part that:
The Board will generally allow certain
types of materials, such as graphs, large
depictions of marks, schedules, charts, etc.
to be used at oral hearing, either for
clarification or to eliminate the need for
extended description, when such materials
are based on evidence properly of record.
(citation omitted)
. . . . .
A party may not, however, use an oral
hearing for the purpose of offering new
evidence, whether in the form of charts,
graphs, exhibits, or other materials.
(citation omitted)
Opposition No. 121,790
4
Materials presented at an oral hearing do not form part of
the record in a case, and suffice it to say that in reaching
our decision herein, we have considered only that evidence
which was properly made of record during the parties’
respective testimony periods. In other words, we have not
based any of our findings or conclusions on opposer’s chart.
The Record
The record consists of the pleadings; the file of the
involved application and the testimony depositions (with
exhibits) of opposer’s witnesses Lisa Nielson and David
Edwards. In addition, opposer submitted by way of notices
of reliance the discovery deposition of William F. Herten,
an officer of applicant; applicant’s responses to opposer’s
interrogatories; copies of books; excerpts from printed
publications; and web pages downloaded from the Internet.2
2 While printouts retrieved from the Internet generally do not
qualify for admission into evidence under Rule 2.122(e), in this
case, the parties have stipulated to the entry of the printouts
into evidence.
Opposition No. 121,790
5
Applicant did not take testimony or submit any other
evidence.3 An oral hearing was held at which both parties
were represented by counsel.
The Terminal Date For Evidence Relating To Genericness
Before discussing the genericness and mere
descriptiveness claims, we must first consider what
applicant deems “a critical issue” in this case, namely,
whether evidence of generic use of a term dated after the
filing date of the involved application may be considered in
registrability determinations. It is applicant’s position
that the terminal date for evidence on the issue of
genericness is the application filing date. In other words,
applicant contends that the Board may not consider any
evidence of use of the term STREETFIGHTER which is
subsequent to August 13, 1998, the filing date of
applicant’s application.
3 Applicant did, however, include in its brief on the case a
dictionary definition of the word “streetfighter” from the Random
House Webster’s Unabridged Dictionary (2d ed. 1997). Although
this definition is technically untimely, we have considered it
inasmuch as the Board may properly take judicial notice of
dictionary definitions. See University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). We
note that this dictionary excerpt defines the word
“streetfighter” as a “person whose style of fistfighting was
learned in the streets, as opposed to a trained or proficient
boxer” and “a person who deals with others in an aggressive,
cunning manner.”
Opposition No. 121,790
6
In support of its position, applicant relies on three
cases decided by our primary reviewing court – McCormick &
Company v. Summers, 354 F.2d 668, 148 USPQ 272 (CCPA 1966);
Roselux Chemical Co. v. Parsons Ammonia Co., 229 F.2d 855,
148 USPQ 272 (CCPA 1962); and DeWalt, Inc. v. Magna Power
Tool Corp., 289 F.2d 656, 129 USPQ 275 (CCPA 1961). In
addition, applicant contends that the Trademark Law Revision
Act mandates that the terminal date for evidence on the
issue of genericness be the application filing date.
Considering first the case law on this issue, applicant
appears to have conveniently ignored our primary reviewing
court’s later decision which is clearly inapposite to
applicant’s position. In the case of In re Thunderbird
Products Corporation, 406 F.2d 1389, 160 USPQ 730, 732 (CCPA
1969), the court dealt with the question of “whether the
fact [that a] mark which had become descriptive by 1965
should defeat [the] trademark application filed in 1963, at
which time, as far as the record shows, the mark was
suitable for registration.” The court stated, in relevant
part:
We note that in DeWalt the mark was already
descriptive by the time the trademark application
was filed and the case does not therefore provide
us with a solution to the present situation where
the record does not show the generically
designative connotations of the mark “cathedral
hull” to have been acquired until some period
after the filing date.
Opposition No. 121,790
7
However, DeWalt furnishes a starting point for
a development of the law in this area which
leads next to McCormick & Co., Inc. v. Marion
K. Summers, 354 F.2d 668, 148 USPQ 272 (1966).
McCormick, who since 1955 had used the phrase
HOUSE OF FLAVOR in its advertising, opposed
registration on the Principal Register of
HOUSE OF FLAVORS by Summers who had a registration
of the mark on the Supplemental Register and
alleged use of the mark since 1932. The Summers
application for registration on the Principal
Register was filed on November 23, 1959; however
the Trademark Trial and Appeal Board, determining
the issue of registrability, considered forty six
letters from customers of Marion Kay Products
dated September 27, 1961, almost two years
subsequent to the filing date of the application.
It would appear, therefore, that the board was
considering the issue of registrability against
the factual situation prevailing in 1961 at the
time the problem was before the board rather
than against the factual situation prevailing
when the application was filed in 1959. In McCormick
this court said “registrability of a mark must
be determined on the basis of facts as they
exist at the time when the issue of registrability
is under consideration” and it appears to us
consistent with McCormick and DeWalt as well as
sound principle to decide in the present appeal
that the time when the issue of registrability
is under consideration extends at least to the
time the application is acted on in the Patent
Office.
To summarize, the board properly considered
the literature references published after the
filing of the application and correctly decided
that the term “cathedral hull” designates a
type of boat hull. It is therefore descriptive
and not registrable as a trademark.
In re Thunderbird Products Corporation, pp.
732-733.
Thus, it is clear from the court’s decision in In re
Thunderbird Products Corporation that the issue of
genericness is to be decided on the basis of the facts as
Opposition No. 121,790
8
they exist at the time when the issue is under
consideration.
Also, in Remington Products Inc. v. North American
Philips Corporation, 892 F.2d 1576, 13 USPQ2d 1444, 1449
(Fed. Cir. 1990), the Court stated in determining the
descriptiveness/genericness of the term “travel care,”
“there is a point in DeWalt, repeated in Thunderbird, which
applies to this case, namely that descriptiveness is
determined in cases of this type ‘on the basis of the
factual situation as of the time registration is sought,’
meaning now.” (emphasis in original).
Thus, it is clear from the court’s later decisions that
the issue of genericnes is to be decided on the basis of the
facts as they exist at the time when the issue is under
consideration.
We also note, in this regard, the recently decided
opposition case of Callaway Vineyard & Winery v. Endsley
Capital Group, Inc., 63 USPQ 1919 (TTAB 2002). The
applicant sought to register the term COASTAL WINERY in an
intent-to-use application. Registration was opposed on the
grounds that the term “coastal winery” is generic and merely
descriptive when applied to varietal wines. On summary
judgment, the Board found that the evidence supported a
finding that “coastal wine” is commonly recognized and
understood to mean wines produced from grapes, vineyards or
Opposition No. 121,790
9
wineries located on the California coast. In reaching its
decision, the Board relied on newspaper and trade
publication articles dated after the filing date of the
involved application.
Neither do we find support for applicant’s position in
the Trademark Law Revision Act. Applicant argues that “to
consider the inherent registrability of a mark that is the
subject of an Intent-to-Use application – as is
STREETFIGHTER — at any time after application will frustrate
the intent of the TLRA.” (Brief, p. 10). However, there is
no section in the Act itself which deals with the question
of when evidence bearing on the issue of genericness must be
dated and applicant fails to point to any part of the
legislative history of the Act where this particular
question was discussed.
With respect to applicant’s contention that permitting
a party to submit evidence on the issue of genericness will
result in “trademark destruction,” in that a competitor will
be able to target a mark which is the subject of an intent-
to-use application by using it in a generic manner and
encouraging others to do so, this is nothing more than
speculation on applicant’s part. As applicant acknowledges,
there is certainly no evidence of such a plan in this case,
and again, there is nothing in the legislative history of
the Trademark Law Revision Act which indicates that
Opposition No. 121,790
10
“trademark destruction” was a concern in regard to intent-
to-use applications.
Finally, applicant’s position is untenable in view of
Section 14 of the Trademark Act, 15 U.S.C. §1064 which
permits a party to petition to cancel a registration at any
time if the mark which is the subject thereof “becomes the
generic name of the goods or services.” (emphasis added)
It only makes sense that a party seeking to cancel a
registered mark would be permitted to introduce evidence on
the issue of genericness dated after issuance of the
registration (and thus, after the underlying application
filing date). Applicant has presented no persuasive
authority or reason why the evidentiary standard and burden
for proving genericness should be more strict in an
opposition proceeding than it is in a cancellation
proceeding.
In view of the foregoing, we find that it is
appropriate for us to consider evidence bearing on the issue
of genericness which is dated after August 13, 1998, the
filing date of applicant’s intent-to-use application.
Genericnes
Turning then to the issue of genericness, a generic
term is the common descriptive name for a class or genus of
Opposition No. 121,790
11
goods or services. Our primary reviewing court has stated
that “[d]etermining whether a mark is generic . . . involves
a two-step inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought to be
registered … understood by the relevant public primarily to
refer to that genus of goods or services?” H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc., 782
F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). See also In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961 (Fed. Cir. 1985). Thus, the test for determining
whether a term is generic is its primary significance to the
relevant public; that is, whether the term is used or
understood by purchasers or potential purchasers of the
goods or services at issue, primarily to refer to the class
of such goods or services. See Magic Wand Inc. v. RDB Inc.,
940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); In re
Merrill, Lynch, Pierce, Fenner and Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp.
v. International Association of Fire Chiefs, Inc., supra;
and In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB
1994). Evidence of the relevant public’s understanding of a
term may be obtained from any competent source, including
direct testimony of consumers, consumer surveys, newspapers,
magazines, dictionaries, catalogs, and other publications.
Opposition No. 121,790
12
See In re Merrill, Lynch, Pierce, Fenner and Smith Inc.,
supra; and In re Northland Aluminum Products, Inc., supra.
In this case, applicant’s goods are motorcycles and
structural parts therefore. The target audience for
applicant’s goods primarily comprise motorcyclists.
It is opposer’s position that a “streetfighter” is a
type of motorcycle and in particular a “sub-class of the
sportbike/superbike category.” It is a “high performance
bike” with “less body work than most motorcycles” and the
engine is “typically very powerful such that the motorcycle
is capable of achieving very high speeds.” (Brief, pp. 2-
3).
Applicant, on the other hand, argues that the term
“streetfighter” is simply a metaphor for motorcycles and is
not the common descriptive name for a type of motorcycle.
After careful consideration of the record herein, we
find that there is sufficient evidence to demonstrate that
the relevant public understands the term “streetfighter” to
primarily refer to a type of motorcycle. The evidence from
websites and printed publications which we deem probative of
our finding consists of the following (streetfighter(s) is
highlighted):
Excerpts from the web page of a custom motorcycle shop
named “Streetfighters By Design”:
If you are a motorcycle enthusiast with the passion
and the hunger for the “one of a kind” motorcycle,
let us show you the streetfighter concept
Opposition No. 121,790
13
from Europe that transforms your sports bike
from the boring to the unique-- and exposes your
style.
…
Black chrome flat drag bars were a must, along
with gauges from an R1, and small twin spots-
the signature of a Streetfighter.
…
If there is something you are looking for, we
will do our best to find it for you. Or, if you
need help building your streetfighter, let us
know.
An excerpt from a review of one of opposer’s motorcycles
which appeared in Sport Rider magazine:
Love’em or Hate’em, streetfighter-style
motorcycles are becoming popular in America
(having long had an enormous following
across the pond) and the Buell Lightning
X1, with its aggressive styling and upright
riding position, practically stands up and
screams the part.
An excerpt from the website (www.stormloader.com):
Choppers and streetfighters both represent
ingenuity in the face of conformity. The chopper
is now a tradition, while the streetfighter
is a new form of the same rule-breaking
innovation that has always been the chopper’s
domain.
An excerpt from a review of Honda motorcycles and related
products for 2000 downloaded from the website
www.findarticles.com:
. . . ATV, dirtbike, streetfighter,
Honda has certainly put some punch into its
2000 model line-up.
Excerpts from the website of a company which services
motorcycles and offers motorcycle parts and accessories
(wwww.stick-up.com):
Caption: Street Fighters & Custom
Sport Motorcycles
Opposition No. 121,790
14
You’re probably wondering “What the hell
is a Streetfighter?” Well folks, it’s the
ultimate motorcycle! It’s a Primal
Balls-to-the-walls, Kick-ass machine.
A streetfighter is an aggressive
motorbike which is all about power:
burning tires, screaming exhausts; and
going beyond the fairings to exposing
the bike’s Heart & Soul, the power house.
I started the project in the winter of
1997. At the time it was all I talked
about. The only thing that got me
excited was the idea of my first
streetfighter bike and the possibility
of creating many other unique streetfighter
bikes. I decided that I wanted to pioneer
the first “streetfighter” motorcycle
shop in the U.S.
Excerpts from the website www.streetfighters-usa.com:
This website is dedicated to owners and
future owners of Streetfighters. As well
as finding out what’s happening in the world
of Streetfighters, you will be able to find
tips on how to build your own Streetfighter.
If your (sic) looking for parts or
accessories for your Streetfighter, you’ve
come to the right place. This sight
contains an exclusive on-line shop with
secure ordering for complete peace of mind.
Our secure on-line store should have
everything you need and if it isn’t here just
e-mail us and we will get it for you.
An excerpt from a review of the 2000 Laverdas 750 Strike
motorcycle from the website www.roadracing.com:
The chassis remained composed and never
wandered about when traversing rough
pavement as is the tendency of a number
of other “standards” and “street-fighters.”
An excerpt from the product brochure for the “Yamaha Road
Star Warrior” motorcycle:
Introducing the all-new Road Star Warrior.
Opposition No. 121,790
15
Part muscular modern-day streetfighter, part
cruiser from a by-gone era.
An excerpt from a review of opposer’s Firebolt XB9R
motorcycle from Thunder Press magazine:
At one time, you just bought a motorcycle. Now
though, you buy a touring bike, sportbike,
hooligan, streetfighter, dual sport,
super-motard, cruiser, sportfighter,
etc., etc. In fact, the hairs have
been split even finer as we now have
sport tourers and sport cruisers.
Although there are several excerpts from websites and
printed publications where it is not clear whether
“streetfighter” is being used in a generic sense4, we
nonetheless conclude that the above evidence demonstrates
that the relevant public would understand the term to
primarily refer to a type of motorcycle.
Also, the testimony of opposer’s witness, David
Edwards, is probative of the primary significance of the
term “streetfighter” as used in connection with motorcycles.
Mr. Edwards is the editor-in-chief of Cycle World magazine.
According to Mr. Edwards, Cycle World is the largest monthly
4 For example, an excerpt from an on-line review of the “Triumph
Speed Triple” motorcycle reads: “Its raw, aggressive styling is
built around Triumph’s 955cc three-cylinder engine. This gives
the bike a streetfighter look with explosive performance,
fantastic handling and the best braking on the market. In
addition, an excerpt from the book 100 Motorcycles 100 Years: The
First Century of the Motorcycle by Frederic Winkowski and Frank
D. Sullivan (1999) reads: “On the other side of the wheel are
the sportbike enthusiasts who flock toward aggressively styled
(translation: mean looking), unbelievable fast superbikes whose
‘streetfighter’ image is a direct throwback to the in-your face
attitude of the cafe racers of the 1950’s and 1960’s.
Opposition No. 121,790
16
motorcycle magazine in the United States. Mr. Edwards was
questioned as to use of the term “streetfighter” in Cycle
World:
Q. Have you ever heard of the term “streetfighter?”
A. Yes.
Q. And has Cycle World ever used the term
“streetfighter?”
A. Yes.
Q. How has Cycle World Magazine used the
term streetfighter in this publication?
A. In various stories that cover a certain
type of motorcycle known as streetfighters
we’ve used that term on numerous occasions.
Q. And what do you mean by a “type of
motorcycle?” Can you describe what a
streetfighter is?
A. Generally speaking, a streetfighter is a
sport bike, a high performance bike that
has its body work taken off, higher
handlebars put on, probably a custom
exhaust system, that kind of thing.
(Deposition, p. 5).
In addition, he testified about how he learned of
the term “streetfighter” and the use of the term in the
United States:
Q. Approximately, when did you first hear the
term “streetfighter” used in connection
with motorcycles?
A. Oh, its probably been about five years
ago, maybe a little more. The term came
out of England. We have trade-out
agreements with several British
magazines, and we subscribe to several
of the British magazines. And that’s
where we first sort of ran across the
Opposition No. 121,790
17
term. The British were using it.
Q. Is the term used by anyone in the U.S.
market in the kind of manner you’ve
described?
A. As a - brand name or a trade name?
Q. No.
A. As just a description?
Q. Yes.
A. Yeah. Yeah. It’s used, I would say,
quite universally among motorcycle
enthusiasts. If you mention
“streetfighters,” generally people
will know what you’re talking about.
Q. Do you know how many – the length of
time that it has been known in the
U.S. as a - I guess as a category of
sport bikes?
A. I would say roughly five years. It
might be a year or two more, but about
that time frame.
(Deposition, pp. 6-7)
Further, Mr. Edwards testified on cross-examination as
follows:
Q. Have you heard motorcycle enthusiasts use
the word “streetfighter” yourself?
A. Yes.
Q. When did that start happening, to the best
of your recollection?
A. Again, you know, five to six years ago.
Q. In what situations would you have heard
them use the term?
A. Well, at any gathering of bikes where
there is a streetfighter-type of
motorcycle or generally discussing types
Opposition No. 121,790
18
of bikes.
Q. Is this a term that so far as you can
tell is on the wane or gaining
popularity or holding steady?
A. I would say that that type of motorcycle
in its various iterations is probably
gaining popularity. There are various
names that are used instead of
streetfighter. There’s naked bike.
There’s hooligan bike. But generally
those kind of bikes, sort of the high
performance bikes without fairings, are
gaining, I would say, in popularity.
. . .
Q. In all cases are these bikes that have
been altered from production line models?
A. Well, it certainly started out that way.
You know, there are certainly some
production line bikes that would sort of
fall in the streetfighter realm.
Q. Can you name some?
A. Well, certainly the Honda 919 would fit
in that realm. The Ducati Monster. The
Kawasaki ZRX1200, the Buell White Lightning
from a few years ago. There are probably
a few more that I’m not remembering now.
(Deposition, pp. 7-9)
In support of its genericness claim, opposer also
offered the results of a consumer survey commissioned by it
for use in this case. The survey was directed by Lisa
Nielson and its purpose was to determine whether the term
“Streetfighter” is generic for motorcycles. It was based on
telephone interviews with 171 registered owners of
sportbikes in four markets, namely, New York, Boston,
Opposition No. 121,790
19
Chicago and Atlanta. The owners’ names were obtained from
the Polk List which is a registry of vehicle registrations
in the United States. Ms Nielson testified that in
determining what models of sportbikes to include in the
survey she consulted with the marketing research director of
Harley Davidson, opposer’s parent corporation. According to
Ms. Nielson, she purposely did not include owners of
opposer’s or applicant’s sportbikes and she stated that she
also reviewed the questions to be used in the survey with
opposer’s counsel.
In conducting the survey, the telephone interviewer
asked each respondent whether or not he/she considered the
following seven terms to be brands or kinds of motorcycles.
Monster
Fat Boy
Ninja
Streetfighter
Venture
Thunderbolt
Valkyrie
In the survey, 59.1% of the respondents indicated that
“Streetfighter” is a kind of motorcycle, 21% considered
“Streetfighter” a brand of motorcycle, and 20% did not know
whether it was a kind or brand of motorcycle.
Ms. Nielson concluded from this survey that
“‘Streetfighter’ is a kind of bike and not a brand of bike.”
(Deposition p. 31).
Opposition No. 121,790
20
Not surprisingly, applicant has a raised a number of
objections and perceived flaws regarding the survey. In
particular, applicant points to Ms. Nielson’s failure to use
equal numbers of brands and kinds of motorcycles in the
survey. According to applicant, all but “Streetfighter” are
known brands/names of motorcycles. Also, applicant contends
that it was improper for Ms. Nielson to discuss the survey
with opposer’s attorneys and the marketing director of
opposer’s parent corporation. Although Ms. Nielson is
qualified as a survey expert, we believe that opposer’s
objections do indeed have merit, and thus we have accorded
no probative value to the survey results in reaching our
decision herein.
Further, in reaching our decision herein, we have not
relied on the evidence of use of the term ‘streetfighter” in
publications and websites originating outside the United
States. Applicant has objected to such evidence on the
ground that it is irrelevant to a determination of whether,
in the United States, the term “streetfighter” is the
generic name for a type of motorcycle. We need not decide
that issue, however, because we have found that the evidence
of use of the term “streetfighter” in sources originating in
the United States is sufficient to support a finding of
genericness. We believe, however, that the foreign evidence
establishes the genericness of “streetfighter” in Great
Opposition No. 121,790
21
Britain for a type of motorcycle. Thus, the foreign
evidence lends support to the finding that “streetfighter”
is a generic term in the United States for a type of
motorcycle.5
Mere Descriptiveness
Although we have found the term STREETFIGHTER to be
generic as applied to motorcycles, in the interest of
completeness, we will decide whether STREETFIGHTER is merely
descriptive of such goods.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
about a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
5 See In re Consolidated Cigar Corp., 13 USPQ2d 1481, n. 7 (TTAB
1989). (“Notwithstanding that the material [relating to the uses
of ‘whiffs’ in Great Britain] does not prove genericness in the
United States, we think that the evidence of record establishes
the genericness of ‘whiffs’ for a type of small cigar in Great
Britain. Although it is conceivable that such term would not
have a descriptive or generic status in this country as well, it
is the more plausible assumption that the word would.”)
(citation omitted)
Opposition No. 121,790
22
significant quality, characteristic, function, ingredient,
attribute or feature of the product or service. In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
have on the average purchaser of such goods or service. In
re Recovery, 196 USPQ 830 (TTAB 1977).
In this case, we find that the term “streetfighter” is
merely descriptive of motorcycles in that it describes a
particular type of motorcycle, i.e., a high-performance
motorcycle with less body work than most motorcycles and a
very powerful engine. See In re Abcor Development Corp.,
588 F.2d 811, 816, 200 USPQ 215, 219 (CCPA 1978) (J. Rich,
concurring) (In holding GASBADGE generic for a gas
monitoring badge, Judge Rich noted in his concurring opinion
that “the ultimate in descriptiveness is the name of a
thing.” (emphasis in original).
Decision: The opposition is sustained on the grounds
of genericness and mere descriptiveness.