Joy Industrial Co., Ltd.

Trademark Trial and Appeal Board

Oct 16, 2014

No. 85677182 (T.T.A.B. Oct. 16, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Joy Industrial Co., Ltd.
_____

Serial No. 85677182
_____

Morton J. Rosenberg of Rosenberg, Klein & Lee for Joy Industrial Co. Ltd.

Tejbir Singh, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Quinn, Wellington, and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Joy Industrial Co., Ltd. (“Applicant”) seeks registration on the Principal Register
of the mark:

for the following goods:
Bicycle and bicycle parts and accessories, namely, bicycle
frame, folding bike, bicycle fork, bicycle seat post, bicycle
stem, bicycle rear shock, bicycle rim, bicycle saddle,
bicycle saddle cushion, bicycle wheel, bicycle hub, bicycle
crank, pump, mudguard, bicycle carrier; electric scooters,
Serial No. 85677182
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electric bicycles, electric assisting bicycles; motorcycle
parts and accessories, namely, motorcycle brakes,
motorcycle wheel, motorcycle hub, motorcycle shock
absorbers, motorcycle clutch brake lever, motorcycle rim
locking nuts in International Class 12.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of the
registered, standard-character mark NOVATECK for “tires, pneumatic, semi-
pneumatic and solid tires for vehicle wheels, wheels for vehicles, inner tubes, wheel
rims, and structural parts for all the aforesaid goods” in International Class 12.2
Applicant has appealed and appeal briefs have been filed. We affirm the
likelihood of confusion refusal for the following reasons.
Likelihood of Confusion
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, however, two key considerations are
the similarities between the marks and the similarities between the goods 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).

1 Application Serial No. 85677182 was filed on July 14, 2012, based upon an allegation of
first use in commerce on May 10, 2011.
2 Registration No. 3498126 issued July 28, 2009.
Serial No. 85677182
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The Goods, Their Trade Channels,
Classes of Consumers and Level of Purchasing Care

We turn first to the du Pont factor involving the relatedness of the involved
goods, as well as the factors involving the trade channels, relevant consumers and
degree of purchasing care for these goods. It is settled that in making our
determinations, we must look to the goods as they are identified in the application
vis-à-vis those recited in the cited registration. See Octocom Sys., Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re
Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). With this latter principle
in mind, we are able to immediately discern that the respective goods are, in part,
identical because Registrant’s “wheels for vehicles … wheel rims … and structural
parts for all the aforesaid goods” encompasses several of Applicant’s bicycle and
motorcycle-oriented goods, namely, “bicycle rims … bicycle wheels … bicycle hubs …
motorcycle wheels … motorcycle hubs … [and] motorcycle rim locking nuts.”3
In cases where the identified goods are identical, we must assume that these
same goods will travel in all of the same, normal channels of trade for such goods
and will be offered to the same classes of purchasers. In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same

3 For purposes of determining the scope of Registrant’s goods, we note that bicycles are by
definition considered “vehicles.” See, e.g., “BICYCLE: a vehicle with two wheels tandem,
handlebars for steering, a saddle seat, and pedals by which it is propelled.” Merriam-
Webster.com. Merriam-Webster, (www.merriam-webster.com/dictionary/bicycle). The Board
may take judicial notice of dictionary definitions, including online dictionaries that exist in
printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014);
Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).
Serial No. 85677182
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class of purchasers”). See also, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion).
In addition to our finding that certain goods are identical, the record further
establishes that Registrant’s wheels and inner tubes are related to many of
Applicant’s more bicycle-specific products. The Examining Attorney submitted
website printouts showing several manufacturers of wheels and inner tubes also
manufacture various bicycle parts, e.g., handlebars, seat posts, forks, frames.4 Both
the wheels and bicycle parts are offered for sale on online retail websites such as
www.nashbar.com.5 The Examining Attorney also submitted printouts of many use-
based, third-party registrations that cover both vehicle wheels and various bicycle-
related products identified in the application.6 These registrations have probative
value to the extent that they suggest that Registrant’s wheels and Applicant’s
bicycle-related products are goods which may be marketed by a single source under
a single mark. See In re Association of the United States Army, 85 USPQ2d 1264,
1270 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).

4 Attached to final Office Actions issued on May 29, 2013 and December 9, 2013; in
particular, printouts from www.easton.com, www.specialized.com, and www.nashbar.com.
5 Id.
6 Id.
Serial No. 85677182
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In its brief, Applicant argues that the involved goods are “specialized goods and
it is therefore believed that [an] elevated standard [of a ‘discriminating purchaser’]
applies” to this situation.7 Applicant further asserts that “consumers would become
familiar with the respective marks such that upon encountering those marks
applied to products, they would be able to readily distinguish them, one from the
other.”8 However, the record does not support these assertions and we cannot find
that the involved goods, namely, bicycle wheels and various other bicycle-related
products are of the type where we can infer a higher degree of purchasing care. To
the contrary, as the Examining Attorney pointed out, the record shows that many of
the identified goods are not expensive and, in general, bicycles and scooters are
purchased by a broad spectrum of the population.
In sum, we find certain goods, as identified in the application and cited
registration, are legally identical and thus may be offered to the same consumers in
the same trade channels.9 Certain other goods identified in the application are
related to Registrant’s goods and may be offered for sale on the same online retail
websites featuring bicycle goods.
Accordingly, the du Pont factor involving the relatedness of the goods, especially
in light of the finding that the goods are legally identical in part, weighs heavily in
favor of finding a likelihood of confusion. The factors regarding trade channels and
classes of consumers also support a determination that there is a likelihood of

7 Brief at p. 12.
8 Id.
9 We note that Applicant readily acknowledges in its brief that “certain goods of Applicant
and [Registrant] may be sold in the same or similar channels of trade.” Brief at p. 10.
Serial No. 85677182
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confusion. We make no finding that the relevant consumers will exercise a higher or
lower than normal degree of care in making their purchasing decisions of the
involved goods and this factor thus remains neutral.
Similarity of the Marks
In comparing the marks, we must consider them in their entireties as to
appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). We also keep in mind that the test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a side-by-side
comparison; “[i]nstead, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, due to the fallibility of
memory and the consequent lack of perfect recall, whether confusion as to source or
sponsorship is likely.” Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992); see also,
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012) (citation omitted). That is, the proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207
USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975).
Serial No. 85

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Serial No. 85677182
- 8 -

which case it would not create a separate or unique commercial impression. Even if
consumers view the letter “N” as being arbitrarily placed in Applicant’s mark, a
single letter or abbreviation is more difficult to remember than a complete term or
word than may be verbalized or spoken. Weiss Associates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990).
As a result, the involved marks’ commercial impressions and connotations derive
entirely, or nearly so, from the terms, “Novateck” and “Novatec.” Although neither
term has a defined meaning, each may be interpreted in the same manner to the
extent that consumers would understand “nova” to mean “new” and “tec” or “teck”
to be an abbreviation “technology.” In which case, both marks will be understood as
suggestive of the Applicant’s and Registrant’s wheels and bicycle components
possessing some innovative technology.
In sum, due to Applicant’s incorporation of the near equivalent of Registrant’s
mark, there is a strong overall similarity between the marks. The additional
elements in Applicant’s mark, not found in the registered mark, are insubstantial
for purposes of obviating this similarity and distinguishing the marks. Thus, this du
Pont factor weighs in favor of finding a likelihood of confusion.
Other factors
The Board has considered the entire record and all arguments set forth by
Applicant and the Examining Attorney. Unless mentioned in this decision, we find
all du Pont factors remain neutral in our likelihood of confusion analysis. In
particular, we note that Applicant has argued that it “brought to the Examining
Serial No. 85677182
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Attorney’s attention numerous examples of other marks registered on the Principal
Register for goods in International Class 12, which share common prefix and suffix
word portions, namely, ‘nova’ and ‘tech’ and derivations thereof.”10 As previously
noted, Applicant also asserts that consumers would “become familiar with the
respective marks … [and] would be able to readily distinguish them, one from the
other.”11 However, there is no evidence of record showing third parties have been
using similar marks on or in connection with the same or similar goods.12 Thus, to
the extent that Applicant is arguing that consumers have become conditioned to
viewing similar marks in use on the same or similar goods and may perceive some
otherwise slight differences in the marks for purposes of distinguishing them, this
has not been established.
Conclusion
Because the marks are very similar, the goods are in-part identical and
otherwise related, and, with respect to the identical goods, we presume the classes
of purchasers and trade channels to be the same, we find that Applicant’s mark is
likely to cause confusion with the cited, registered mark.
Decision: The refusal to register Applicant’s mark is affirmed.

10 Brief at p. 2.
11 Id. at p. 12.
12 In the prosecution of the application, Applicant submitted copies of five (5) registrations
of marks that begin with the term NOVA, but notably did not also contain the term TECH,
or any derivative thereof. See Response filed May 7, 2013. Third-party registrations are not
evidence that the marks are in use in commerce or that consumers have even been exposed
to them. See TBMP Section 1208.02 (2014) and authorities cited therein; Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
public is not aware of registrations reposing in the U.S. Patent and Trademark Office).