Honda Motor Co., Ltd.

Trademark Trial and Appeal Board

Mar 5, 2008

No. 91162109 (T.T.A.B. Mar. 5, 2008)

Mailed:
March 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Honda Motor Co., Ltd.
v.
Dakota Motorcycles USA Inc.
_____

Opposition No. 91162109
to application Serial No. 78206784
filed on January 24, 2003
_____

Anthony L. Fletcher of Fish & Richardson, P.C. for Honda
Motor Co., Ltd.

Dakota Motorcycles USA Inc., pro se.
______

Before Seeherman, Grendel and Walsh, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Dakota Motorcycles USA Inc., applicant herein, seeks
registration on the Principal Register of the mark depicted
below
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91162109
2

for goods identified in the application as “on road
vehicles, namely motorcycles; featuring an in line, air-
cooled, four-cylinder engine.”1 Applicant has disclaimed
MOTORCYCLES apart from the mark as shown.
Honda Motor Co., Ltd., opposer herein, has opposed
registration of applicant’s mark on the ground that the
mark, as applied to applicant’s goods, so resembles the mark
depicted below

previously registered by opposer for goods identified in the
registration as “motorcycles, and structural parts
therefor,”2 as to be likely to cause confusion, to cause

1 Serial No. 78206784, filed on January 24, 2003. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).

2 Registration No. 2414536, issued on November 19, 1998. Section
8 and 15 affidavits accepted and acknowledged, respectively. In
its notice of opposition, opposer also has pleaded and relies
Opposition No. 91162109
3
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant filed an answer to the notice of opposition,
by which it admitted that opposer is the owner of its
pleaded design mark Registration No. 2414536, but otherwise
denied the salient allegations of the notice of opposition.3
Both parties presented evidence at trial. The case is
fully briefed. After careful consideration of the evidence
of record and the arguments of the parties, we sustain the
opposition.
Initially with regard to evidentiary issues, the
Board’s March 7, 2007 order sustaining opposer’s procedural
objections to applicant’s Notices of Reliance Nos. 1-9 and

upon its Registration No. 2088198, which is of the mark VALKYRIE
(in standard character form) for goods identified in the
registration as “land motor vehicles, namely, motorcycles and
structural parts therefor.” In view of our decision sustaining
the opposition as to opposer’s pleaded design mark Registration
No. 2414536, we need not and do not consider opposer’s claim
insofar as it pertains to its word mark registration.

3 In its brief, applicant contends that opposer has abandoned its
pleaded mark, and requests that discovery be reopened to allow
applicant to investigate this issue. Applicant’s request is
denied. Applicant’s abandonment claim would constitute a
compulsory counterclaim for cancellation of opposer’s
registration. Applicant has provided no reason why it could not
have ascertained information about a possible abandonment during
the discovery period, nor has it given any reason for its failure
to amend its pleading to assert a counterclaim in a timely manner
during trial and prior to briefing. We note that there is no
evidence in the record to support an abandonment claim; the
evidence of record in fact directly refutes such a claim. (Gurga
Test. Depo. at 22-23.)

Opposition No. 91162109
4
14-15 stands,4 and that evidence has been given no
consideration. Opposer’s ongoing substantive objections to
applicant’s Notices of Reliance Nos. 6, 10, 11 and 12 are
overruled, and we have given that evidence whatever
probative value it deserves.
The evidence of record in this case thus consists of:
the file of applicant’s involved application; the pleadings
herein; opposer’s Notice of Reliance on status and title
copies of its pleaded registration; the testimony deposition
of opposer’s witness, Robert Gurga, and exhibits thereto;
applicant’s Notice of Reliance No. 6 (excerpts from a
motorcycle magazine); applicant’s Notice of Reliance No. 10
(Wikipedia entry for “Thor”); applicant’s Notices of
Reliance Nos. 11 and 12 (dictionary definitions of
“dictionary” and “reference”); applicant’s Notice of
Reliance No. 13 (opposer’s marketing video, submitted by
applicant without objection by opposer); and opposer’s
rebuttal Notice of Reliance on dictionary definitions of
“Valkyrie,” “Odin,” “Valhalla” and “Viking.”
Because opposer has properly made its pleaded
registration of record, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d

4 We add that even if we had considered all of the evidence
submitted by applicant at trial, our decision herein would be the
same.
Opposition No. 91162109
5
1024, 213 USPQ 185 (CCPA 1982); see also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Moreover, because opposer’s pleaded registration is of
record, Section 2(d) priority is not an issue in this case
as to the mark and goods covered by said registration. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to the second du Pont factor (similarity
or dissimilarity of the goods). We find that the goods
identified in applicant’s application, i.e., “on road
vehicles, namely motorcycles; featuring an in line, air-
cooled, four-cylinder engine,” are encompassed by and thus
legally identical to the goods identified in opposer’s
registration, i.e., “motorcycles, and structural parts
Opposition No. 91162109
6
therefor.” Applicant and opposer both market or intend to
market motorcycles under their respective marks. The second
du Pont factor weighs in favor of a finding of likelihood of
confusion.
Under the third du Pont factor (similarity or
dissimilarity of trade channels), given the legally
identical nature of the parties’ goods (motorcycles) and the
absence of any trade channel restrictions in either party’s
identification of goods, we find that the parties’
motorcycles are or would be marketed in the same trade
channels, to the same classes of purchasers. The third du
Pont factor weighs in favor of a finding of likelihood of
confusion.
Under the fourth du Pont factor (conditions of
purchase), we find that motorcycles can be fairly expensive
items which are likely to be purchased with a degree of
care. The fourth du Pont factor weighs against a finding of
likelihood of confusion.
Under the sixth du Pont factor, there is no evidence of
any third-party use of similar design marks on similar
goods. The sixth du Pont factor is neutral in this case.
Under the fifth du Pont factor (fame of opposer’s
mark), we find that opposer has failed to establish that its
mark is famous. However, we find that the mark is a strong
mark even if not famous, in view of opposer’s evidence of
Opposition No. 91162109
7
sales (37,000 motorcycles sold for $440,000,000 at wholesale
between 1996 and 2005), and in the absence of any evidence
of third-party use of similar marks. To the extent that
such strength in the marketplace exists, the fifth du Pont
factor weighs in favor of a finding of likelihood of
confusion.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first du
Pont factor, is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Finally, in cases such as this, where the applicant’s goods
are identical to the opposer’s goods, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Opposition No. 91162109
8
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Although a side-by-side comparison is not the proper
test in determining the similarity of the marks, we set them
forth below for ease of reference and discussion.
Applicant’s mark:

Opposer’s mark:

In terms of appearance, we find that the marks
obviously are dissimilar to the extent that applicant’s mark
contains wording (VIKING MOTORCYCLES), while opposer’s mark
does not. However, we find that there is a high degree of
similarity between the design elements of the respective
marks. Both marks depict human figures presented in
Opposition No. 91162109
9
profile, who wear horned helmets which readily would be
perceived as being Viking helmets. Although the respective
Viking figures face different ways, and although the Viking
in applicant’s mark clearly is male while the Viking in
opposer’s mark appears to be female, those points of
dissimilarity are outweighed, in our analysis, by the fact
that both figures essentially would be perceived as being
Vikings.5 Finally with respect to our comparison of the
marks in terms of appearance, we find that the marks are
similar to the extent that they both include elements (the
hair streaming behind the Viking in opposer’s mark, and the
horizontal lines in applicant’s mark which look like hair
streaming from the Viking’s beard or from under his helmet6)
which suggest that the Viking figures are moving forward at
a high rate of speed. In sum, we find that although the
marks are not identical in terms of appearance, they are
quite similar in appearance when viewed in their entireties.
In terms of sound, the marks are dissimilar in that
opposer’s mark is a design mark without wording which would

5 The record does not support applicant’s contention that Vikings
were exclusively male, or that relevant purchasers today would be
aware of such fact even if true. Rather, purchasers today are
likely to perceive the figure in opposer’s mark as a female
Viking, regardless of whether there ever were female Vikings as a
matter of historical fact.

6 Given the degree of integration between applicant’s Viking’s
hair and beard and the horizontal lines streaming behind, we are
not persuaded by applicant’s contention that purchasers would
perceive the horizontal lines as a representation of the cooling
fins of applicant’s air-cooled motorcycle engine.
Opposition No. 91162109
10
be pronounced, while applicant’s mark would be pronounced
“Viking Motorcycles.”
In terms of connotation and commercial impression, we
find that the marks are quite similar. Each of the marks
suggests and connotes a Viking moving forward at high speed
(most likely on a motorcycle). The Viking motif is
arbitrary as applied to motorcycles, and it creates the same
commercial impression in both marks. The presence of the
literal word VIKING in applicant’s mark does not distinguish
applicant’s mark from opposer’s mark; in fact, it reinforces
the “Viking” motif of applicant’s mark and increases the
similarity between the marks.
Comparing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression, we
find that the marks are similar. As noted above, where the
parties’ goods are identical, a lesser degree of similarity
between the marks is necessary in order to find a likelihood
of confusion. We find that applicant’s mark is sufficiently
similar to opposer’s mark that confusion is likely to result
from use of the marks on the parties’ identical goods. The
first du Pont factor weighs in favor of a finding of
likelihood of confusion.
Considering and balancing all of the evidence of record
as it pertains to the relevant du Pont factors, and for the
reasons discussed above, we conclude that there is a
Opposition No. 91162109
11
likelihood of confusion between applicant’s mark as applied
to motorcycles and opposer’s registered design mark as
applied to motorcycles. The fact that the goods are likely
to be purchased with a degree of care does not suffice to
overcome the likelihood of confusion arising from the
similarity of the marks, the identical nature of the goods,
trade channels and purchasers, and the strength of opposer’s
mark. We have considered all of applicant’s arguments to
the contrary (including any arguments not specifically
discussed in this opinion), but are not persuaded by them.
To the extent that any doubts might exist as to the
correctness of our likelihood of confusion conclusion, we
resolve such doubts against applicant. See Ava Enterprises
Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); and
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844 (TTAB 2004).
In summary, we find that opposer has established its
standing to oppose and its Section 2(d) ground of
opposition.
Decision: The opposition is sustained.