John Shope

Trademark Trial and Appeal Board

Jun 22, 2012

No. 77671449 (T.T.A.B. Jun. 22, 2012)

Hearing: Mailed:
January 31, 2012 June 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re John Shope
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Serial No. 77671449
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Andrew P. Lahser of Law Office of Andrew P. Lahser PLC for
John Shope.

Kaelie E. Kung, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).1
_______

Before Seeherman, Mermelstein and Lykos, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

John Shope, an individual, has appealed from the final
refusal of the trademark examining attorney to register
JOHN SHOPE’S SINISTER INDUSTRIES, in standard characters,
with INDUSTRIES disclaimed, for the following goods and
services:

1 The application was initially examined by Allison E. Hall.
The application was reassigned to Ms. Kung after the issuance of
the final Office action.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77671449
2
Motorcycles, namely, choppers and baggers;
Motorcycle structural parts, namely, choppers and
custom baggers structural parts; Parts of
motorcycles for choppers and custom baggers,
namely, filler panels, floor boards, fenders,
windshields, dash panels, fuel tanks, and stretch
kits comprised of structural parts to expand
motorcycle frames (Class 12); and

Motorcycle customization services, namely,
customization of choppers and baggers; vehicle
maintenance and repair services, namely,
reconditioning of motorcycles in the nature of
choppers and baggers (Class 37).2

JOHN SHOPE is a living individual whose consent is of
record.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark SINISTER
CYCLES, in standard characters and with CYLCES disclaimed,
registered for “retail store services featuring motorcycle
parts and accessories,”3 that, used on applicant’s goods or
in connection with applicant’s services, it is likely to
cause confusion or mistake or to deceive.
The appeal was fully briefed, and an oral argument was
held.

2 Application Serial No. 77671449, filed February 16, 2009. The
application was initially based on Section 1(b) of the Trademark
Act (intent-to-use); applicant subsequently filed an amendment to
allege use asserting first use and first use in commerce on
May 1, 2009.
3 Registration No. 2608668, issued August 20, 2002; Sections 8
and 15 affidavit accepted.

Ser. No. 77671449
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We affirm the refusal.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first consider the du Pont factor of the similarity
of the goods and services. As it has often been stated, it
is not necessary that the goods or services be identical or
even competitive in nature in order to support a finding of
likelihood of confusion, it being sufficient that the goods
or services are related in some manner and/or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks employed thereon, to the mistaken belief that they
Ser. No. 77671449
4
originate from or are in some way associated with the same
producer. In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990).
The examining attorney has submitted a large number of
third-party registrations showing that entities have
registered a single mark for the goods and/or services
identified in applicant’s application and the cited
registration. Third-party registrations which individually
cover a number of different items and which are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type which may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993). With respect to the relatedness
between applicant’s Class 12 goods and the registrant’s
services, see, for example, Registration No. 3403026 for,
inter alia, motorcycles and structural parts therefor and
retail store services … featuring … motorcycle parts;
Registration No. 3243905 for, inter alia, motorcycles and
structural parts therefor and retail store services
featuring motorcycles and structural parts and accessories
for motorcycles; Registration No. 3261030 for, inter alia,
motorcycles, structural parts for motorcycles and retail
stores in the field of motorcycles, motorcycle parts and
accessories. With respect to the relatedness between
Ser. No. 77671449
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applicant’s Class 37 services and the registrant’s
services, see, for example, Registration No. 3533314 for,
inter alia, custom motorcycle parts, custom building of
motorcycles and retail store services featuring motorcycle
parts; Registration No. 3561135 for, inter alia, motorcycle
customization services and retail store services featuring
motor sports specialty goods in the nature of motorcycles
and their parts and accessories; and Registration No.
3027835 for, inter alia, motorcycle customization and
retail store services featuring motorcycle parts and
motorcycle accessories.
In addition, the examining attorney has submitted
evidence from third-party websites advertising that they
sell motorcycle parts and accessories and will customize
motorcycles. For example, the website of Life Style
Cycles, http://lifestylecycles.com, shows a photograph of
the interior of their retail store, and states that they
have “one of the largest inventories of replacement parts
and custom accessories” to “help customize your bike any
way you want it,” and that they “carry an extensive line of
parts.” They also state that they can “handle any repair
or maintenance problem you may have,” and can “[trick] out
your bike with the latest custom accessories.” The website
for Demon’s Cycle, www.demonscycle.com, states that it is a
Ser. No. 77671449
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custom motorcycle company that sells custom motorcycle
parts at locations around the world.
We find that this evidence demonstrates the
relatedness of applicant’s goods and services and the
registrant’s services, and that this du Pont factor favors
a finding of likelihood of confusion. In reaching this
conclusion, we have considered, but are not persuaded by,
applicant’s argument that his goods and services are
limited to custom choppers and custom baggers, and that by
definition “customization” is different from the
registrant’s retail store services because “retail services
does not include customization services because
customization services is never a commodity.” Brief, p. 9.
First, applicant’s goods, for example, motorcycle
structural parts, and parts of motorcycles for choppers,
are not limited to customized goods. Second, based on the
evidence of record, the term “customized,” as used in
connection with motorcycle parts, include parts that are
used to customize one’s motorcycle, but are not necessarily
parts that have been designed specifically for the buyer,
in the way that a custom-made suit would be made directly
to the customer’s own measurements. Thus, customized
motorcycle parts and accessories can be sold in retail
stores, and the evidence shows that such parts are sold in
Ser. No. 77671449
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this manner, and that third parties have adopted a single
mark for both the goods and the services. The Board has
frequently found that goods and retail stores selling such
goods are related. See, e.g., In re Thomas, 79 USPQ2d
1021, 1023 (TTAB 2006), in which applicant’s goods were
identified as “jewelry” and the registrant’s services were
identified as “retail jewelry and mineral store services.”
The Board stated that “these are competitive, inherently
related goods and services,” and quoted J. Thomas McCarthy,
Trademarks and Unfair Competition § 24:25 (2006), “Where
the services consist of retail sales services, likelihood
of confusion is found when another mark is used on goods
which are commonly sold through such a retail outlet.” As
for applicant’s services and the registrant’s services, the
third-party registration evidence shows that companies have
adopted a single mark for both retail stores selling
motorcycle parts and accessories, and for customizing
motorcycles.
This brings us to a consideration of the marks. It is
a well-established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
Ser. No. 77671449
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conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). The registrant’s mark is
SINISTER CYCLES. Because CYCLES describes the goods sold
in the registrant’s stores, consumers will view SINISTER as
the source-identifying part of the mark, and therefore it
is appropriate that we accord much greater weight to this
portion. SINISTER is also, based on this record, an
arbitrary term for a retail store featuring motorcycle
parts and accessories, and therefore we treat the
registrant’s mark as a strong mark. As for applicant’s
mark, the word INDUSTRIES in applicant’s mark has little
source-indicating significance. The effect of applicant’s
mark is that applicant has added his name, JOHN SHOPE, to
the registrant’s mark SINISTER. We recognize that the
marks also differ because of the final words, CYCLES and
INDUSTRIES, but because these terms have little or no
source-indicating significance, consumers are not likely to
distinguish the marks based on that difference.
Applicant has argued strenuously that the presence of
JOHN SHOPE’S in his mark is sufficient to distinguish the
marks because of his personal fame. Applicant, the
individual John Shope, competed in a television show called
“Chopper Challenge,” and applicant contends that he is
Ser. No. 77671449
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well-known and consumers will recognize his name when they
see the mark JOHN SHOPE’S SINISTER INDUSTRIES. However,
whether or not consumers are aware of John Shope, and will
understand that the goods and services offered under his
mark are associated with him, does not avoid the likelihood
of confusion with the registrant’s mark and services. The
examining attorney likens the instant situation to that of
the cases in which the addition of a house mark to a
registered mark was found not sufficient to avoid confusion
with that registered mark, while applicant argues that his
personal name is not a house mark. The key point is not
whether or not JOHN SHOPE’S is technically a house mark,
but the effect of the addition of this name. In that
sense, the cases involving the addition of a house mark are
instructive. Thus, in In re Apparel Ventures, Inc., 229
USPQ 225, 226 (TTAB 1986), the Board found SPARKS BY
SASSAFRAS for women’s blouses, skirts and sweaters was
likely to cause confusion with SPARKS for shoes because:
those already familiar with registrant’s use of
its mark in connection with its goods, upon
encountering applicant’s mark on applicant’s
goods, could easily assume that ‘sassafras’ is
some sort of house mark that may be used with
only some of the “SPARKS” goods. Conversely,
those familiar with only applicant’s mark would,
upon encountering the registered mark on related
goods, assume that all “SPARKS” products come
from a single source, and that the source was in
Ser. No. 77671449
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some instances further identified with the words
“by sassafras.”

See also, In re Christian Dior, S.A., 225 USPQ 533, 534
(TTAB 1985) (LE CHACHET DE DIOR for men’s shirts likely to
cause confusion with CACHET for dresses, soap and cologne:
“In cases involving the addition of a housemark to one of
two otherwise confusingly similar marks, it has been held
that such does not serve to avoid likelihood of confusion.
Rather, such addition may actually be an aggravation of the
likelihood of confusion as opposed to an aid in
distinguishing the marks so as to avoid source
confusion.”).
The same reasoning obtains here. Consumers familiar
with the registrant’s SINISTER CYCLES mark for retail store
services featuring motorcycle parts and accessories are
likely to believe, upon encountering JOHN SHOPE’S SINISTER
INDUSTRIES mark for motorcycles and parts and for
customization of choppers and baggers, that these goods and
services emanate from or are associated with the
registrant, and that the registrant has chosen to further
identify his goods and services by the name JOHN SHOPE’S.
Or, conversely, there is the likelihood of reverse
confusion, with consumers who are familiar with JOHN
SHOPE’S SINISTER INDUSTRIES motorcycles and parts and his
Ser. No. 77671449
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motorcycle customizing services likely to believe, upon
encountering SINISTER CYCLES motorcycle parts and
accessories retail stores, that the registrant’s services
are associated with the applicant. See In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010) (ML for
personal care and skin care products likely to cause
confusion with ML MARK LEES for skin care products; quoting
with approval the USPTO’s argument that the presence of the
additional term MARK LEES in registrant’s mark does not
necessarily eliminate the likelihood of confusion if some
terms are identical).
Applicant has pointed out that there are a different
number of syllables in the two marks, and that applicant’s
mark contains four words while the registrant’s mark has
only two. However, these differences in appearance and
pronunciation are largely due to the addition of JOHN
SHOPE’S in applicant’s mark (as well as the words CYCLES
and INDUSTRIES in the respective marks); for the reasons
discussed above, the differences do not serve to
distinguish the marks.
Applicant also argues that the marks have different
meanings, basing this argument on the fact that “sinister”
has several definitions. According to applicant, consumers
would understand JOHN SHOPE’S SINISTER INDUSTRIES to mean
Ser. No. 77671449
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“the insidious labors of John Shope,” while SINISTER CYCLES
would be understood as “evil motorcycles.” We do not find
this argument persuasive. Rather, the possessive JOHN
SHOPE’S in applicant’s mark would be viewed as providing
additional information as to the source of the goods and
services, i.e., that they come from JOHN SHOPE. Further,
consumers would ascribe the same meaning to SINISTER in
both marks, whatever that meaning might be.
Accordingly, we find that the overall meaning and
commercial impression of both marks is the same, and that
the inclusion of the name JOHN SHOPE’S in applicant’s mark
merely provides additional information as to the source of
the goods. The du Pont factor of the similarity of the
marks favors a finding of likelihood of confusion.
Applicant has asserted that the goods and services are
expensive, and customers would be careful and
discriminating. Applicant bases this argument on the
assumption that “vehicles are among the most expensive
items purchased by consumers.” However, applicant is not
selling only motorcycles, but also parts for motorcycles,
such as windshields, filler panels and fenders. The
website for Kustom Baggers, www.kustombaggers.com,
advertises a windshield for $169.96, while the
Ser. No. 77671449
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Demon Cycle website features pipes exhaust for $69.00; even
applicant sells relatively inexpensive products. As shown
in the specimen submitted with his amendment to allege use,
he sells fender mounting blocks for $95, and a saddle bag
check strap tether for $45. Although the latter items
would not be included in the motorcycle parts listed in
applicant’s identification, they are the types of items
that would be the subject of the registrant’s retail store
services featuring motorcycle parts and accessories.
Nonetheless, we accept that because of the nature of the
goods and services, they would not necessarily be purchased
on impulse or without some degree with care. However, even
if we posit that purchasers would note the differences
between the respective marks, for the reasons we have
already discussed, consumers are not likely to view these
differences as indicating different sources for the goods
and services. Thus, although we find that the du Pont
factor of the conditions of purchase favor’s applicant’s
position, it is not sufficient to outweigh the other du
Pont factors favoring a finding of likelihood of confusion.
The next point we consider is fame. Applicant’s
analysis of the du Pont factors begins with his comments
about his fame, and it appears that he considers his fame a
strong argument for our finding no likelihood of confusion.
Ser. No. 77671449
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It is important to note that applicant is not asserting
that his mark is famous, but rather that he himself is
famous as a result of his television appearances and
articles about him in the press. Thus, applicant is not
asserting that the fifth du Pont factor favors his
position. Indeed, this factor refers to “the fame of the
prior mark,” not to the applicant’s mark. And, obviously,
applicant is attempting to register JOHN SHOPE’S SINISTER
INDUSTRIES, not JOHN SHOPE per se. Applicant is asserting
the fame of his name in connection with the 13th du Pont
factor, “any other established fact probative of the effect
of use.” du Pont, 177 USPQ at 567. This is essentially
the same argument that applicant has made with respect to
the similarity of the marks, namely, that in applicant’s
mark his name will be recognized, and that this will
distinguish his mark from the cited registration. For the
reasons we have already discussed, we are not persuaded by
this argument.
After considering all the relevant du Pont factors
(and to the extent that any factors we have not discussed
are relevant, we treat them as neutral), we find that the
examining attorney has shown that applicant’s use of his
mark for his identified goods and services is likely to
cause confusion with the cited registration.
Ser. No. 77671449
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Decision: The refusal of registration is affirmed.