Kuryakyn Holdings, Inc.

Trademark Trial and Appeal BoardJun 10, 2009

No. 77348214 (T.T.A.B. Jun. 10, 2009)

Mailed: June 10, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Kuryakyn Holdings, Inc. ________ Serial No. 77347508 Serial No. 77348214 _______ John M. Weyrauch of Dicke, Billig & Czaja, PLLC for Kuryakyn Holdings, Inc. Christopher Buongiorno, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Grendel, Holtzman and Rogers, Administrative Trademark Judges. Opinion by Grendel, Administrative Trademark Judge: Kuryakyn Holdings, Inc. (applicant) has appealed the refusals of registration in each of the above-captioned applications. The appeals were consolidated by order of the Board dated December 16, 2008, and we shall decide them in this single opinion. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. Nos. 77347508 and 77348214 2 In application Serial No. 77347508,1 applicant seeks registration on the Principal Register of the mark ZOMBIE (in standard character form) for goods identified in the application as “motorcycle aftermarket parts and accessories, namely, shift linkage rods, foot pegs, oil filler caps and windshields,” in Class 12. In application Serial No. 77348214,2 applicant seeks registration of the same mark, ZOMBIE, for Class 12 goods identified in the application as: motorcycle parts, namely, axle covers, brake pedals, brake pedal pads, foot peg heel rests, floorboards, floorboard covers, handle bar grips, front dash panels, dash panel inserts, fuel tank panels, fender trims, namely, chrome plated plastic decorative trims, fender ornaments, gas caps, dipsticks, horn covers, master brake cylinder covers, air cleaner covers, ignition coil covers, latch covers, saddlebag lid covers, saddlebags, motorcycle luggage, namely, fitted carriers for traveling tank bags, windshield trims, fairing trims, wheels, hub spinners, mirrors, brake and clutch levers, shift levers, shift pegs, shift arm covers, saddlebag mount bracket covers, sissy bars, license plate frames, luggage racks, kick stands. 1 This application was filed on December 9, 2007. The application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). February 28, 2006 is alleged in the application as the date of first use of the mark anywhere and the date of first use of the mark in commerce. 2 This application was filed on December 10, 2007. The application is based on applicant’s asserted bona fide intention to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b). Ser. Nos. 77347508 and 77348214 3 In each of the applications, the Trademark Examining Attorney has issued a final refusal of registration on the ground that applicant’s mark ZOMBIE, as applied to applicant’s goods, so resembles the mark ZOMBIE, previously registered on the Principal Register for Class 9 goods identified in the registration as “safety helmets for use in active sports, namely, motorcycling,”3 as to be likely to cause confusion, to cause mistake, or to deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d). Applicant has appealed the final refusal in each application. Applicant and the Trademark Examining Attorney have filed briefs on appeal. After careful consideration of all of the evidence of record and the arguments of counsel, we affirm the refusal to register in each application. 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 3 Registration No. 3128846, issued on August 15, 2006. The registration is owned by KBC America, Inc. Ser. Nos. 77347508 and 77348214 4 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 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. We find that applicant’s mark ZOMBIE (in standard character form) and the previously-registered mark ZOMBIE (also in standard character form) are identical in terms of appearance, sound, connotation and commercial impression. Further with respect to connotation and commercial impression, we find that ZOMBIE is an arbitrary mark, and that whatever connotation and commercial impression it might have as applied to applicant’s motorcycle parts and accessories, it would have the same connotation and commercial impression as applied to registrant’s motorcycle helmets. We reject applicant’s argument that confusion is unlikely because applicant and the registrant use their respective house marks with their ZOMBIE marks. In this proceeding involving the registrability of applicant’s mark, our comparison of the marks is based on the marks as Ser. Nos. 77347508 and 77348214 5 they are depicted in applicant’s applications and in the cited registration, respectively. Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). Neither applicant’s mark as depicted in the applications nor the cited registered mark as depicted in the registration includes a house mark. Because applicant’s mark is identical to the cited registered mark, we find that the first du Pont factor weighs heavily in favor of a finding of likelihood of confusion in this case. The second du Pont factor requires us to determine the similarity or dissimilarity of the goods as identified in the application and in the cited registration, respectively. It is settled that it is not necessary that these respective goods be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be sufficiently related that consumers would be likely to assume, upon encountering the goods under similar marks, that the goods originate from, are sponsored or authorized by, or are otherwise connected Ser. Nos. 77347508 and 77348214 6 to the same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). Moreover, in cases such as this where the applicant’s mark is identical to the cited registered mark, there need be only a viable relationship between the respective goods in order to find that a likelihood of confusion exists. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); and In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). Applying these principles in the present case, we find as follows. Applicant’s and registrant’s goods are not identical, but they are similar and related in that they are products specifically for use in connection with motorcycles and motorcycling. The Trademark Examining Attorney has made of record printouts of five use-based third-party registrations in which motorcycle parts like applicant’s and motorcycle helmets like registrant’s both appear in the identification of goods.4 Although such registrations are 4 Reg. Nos. 2376674, 3080191, 2838455, 3220548 and 3344150, attached to the March 26, 2008 final Office action. Ser. Nos. 77347508 and 77348214 7 not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). Based on this evidence, we find that motorcycle parts like applicant’s and motorcycle helmets like registrant’s are related goods which are or can be marketed by a single source under a single mark. As noted above, there need be only a viable relationship between the respective goods where the marks involved are identical. We find that the requisite relationship between the goods exists in this case. Accordingly, we find that the second du Pont factor weighs in favor of a finding of likelihood of confusion. Under the third du Pont factor, we consider evidence relating to the similarity or dissimilarity of the trade channels in which the respective goods are or would normally be marketed. We find that motorcycle parts like applicant’s and motorcycle helmets like registrant’s are marketed in the same retail trade channels, and to the same specific class of consumers, i.e., motorcyclists. The Ser. Nos. 77347508 and 77348214 8 Trademark Examining Attorney has made of record printouts from the websites of several online specialty retailers of motorcycle-related products.5 These retailers sell both motorcycle parts like applicant’s and motorcycle helmets like registrant’s on their websites. On these websites, motorcycle parts and motorcycle helmets often are found in different departments on different pages, and are accessed via different home page drop-down menu options. However, these different departments and menu options appear on the same home page menu, often in close proximity or even adjacent to each other, and motorcycle parts and motorcycle helmets thus are separated only by one or two mouse clicks. On some of the home pages featuring “weekly specials” or “top picks,” motorcycle helmets and motorcycle parts are advertised and depicted next to each other. Based on this evidence, we find that motorcycle helmets and motorcycle parts are marketed by the same motorcycle specialty retailers, often in close proximity to each other. Motorcyclists and other purchasers would encounter these goods through the same motorcycle specialty retailers, and they would use the same retailers to shop 5 November 10, 2008 denial of request for reconsideration. The websites include www.bikebandit.com, www.cycleshopusa.com, www.terrapowersports.com, www.shopsomersetmotorsports.com, and www.mammothmotorsports.com. Ser. Nos. 77347508 and 77348214 9 for and purchase both applicant’s and registrant’s types of motorcycle products. Because the trade channels and the classes of purchasers for applicant’s and registrant’s goods are the same, we find that the third du Pont factor weighs in favor of a finding of likelihood of confusion. Under the fourth du Pont factor, we consider the nature of the purchasers of the goods and the conditions under which the goods at issue are purchased. It is likely that some purchasers of motorcycle-related products would be experienced riders and careful and knowledgeable purchasers. However, we find it likely that the purchasers of motorcycle-related products also would include new riders and other riders who are less experienced and less knowledgeable about the goods. Moreover, we find that even purchasers knowledgeable about motorcycle-related products per se would not necessarily be immune to source confusion when encountering identical marks on such products. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Also, purchasers might exercise a degree of care in making sure that the products are appropriate for them, e.g., ensuring that a helmet fits properly and has the desired safety features. However, the care taken in determining the functional features of the products themselves does not Ser. Nos. 77347508 and 77348214 10 necessarily immunize purchasers from confusion in determining and distinguishing the source of the products, especially when the products bear identical marks. See id. We also find that although some motorcycle parts and motorcycle helmets might be relatively expensive, this is not necessarily so. There is no evidence in the record showing that applicant’s motorcycle parts necessarily are expensive, and applicant’s goods include items which would appear to be relatively inexpensive, such as “foot pegs,” “gas caps,” and “brake pedal pads.” Similarly, the record shows that motorcycle helmets (including registrant’s) can retail for under one hundred dollars.6 For these reasons, we cannot conclude that the conditions under which the goods at issue are purchased are such that the likelihood of confusion arising from the use of identical marks on such goods necessarily would be mitigated. We therefore find that the fourth du Pont factor is essentially neutral in this case; it certainly does not weigh significantly in applicant’s favor. Under the sixth du Pont factor (number and nature of similar marks in use on similar goods), there is no evidence that anyone other than applicant and registrant 6 www.bikebandit.com website, attached to November 10, 2008 denial of request for reconsideration. Ser. Nos. 77347508 and 77348214 11 uses ZOMBIE as a mark for motorcycle-related products, nor any other evidence which might suggest that registrant’s ZOMBIE mark is weak or diluted in the motorcycle products marketplace. We already have found that ZOMBIE is an arbitrary mark as applied to motorcycle products, and it therefore is entitled to a broad scope of protection in the motorcycle products field. The strength of registrant’s ZOMBIE mark weighs in favor of a finding of likelihood of confusion. Considering all of the evidence of record as it pertains to the du Pont likelihood of confusion factors, and for the reasons discussed above, we find that applicant’s use of the mark ZOMBIE on motorcycle parts is likely to cause confusion with registrant’s use of the identical ZOMBIE mark for motorcycle helmets. Applicant has submitted a printout of a third-party registration of the mark ZOMBIE for goods identified in the registration as “clothing, namely, infant, men’s, women’s and children’s sweatshirts, T-shirts, sweatpants, headwear, shorts, jerseys, shirts and cloth bibs.”7 This registration issued from an application that was filed after the issuance of the ZOMBIE registration for motorcycle helmets 7 Registration No. 3349716, issued on December 4, 2007 from an application filed on September 23, 2006. Ser. Nos. 77347508 and 77348214 12 cited by the Trademark Examining Attorney in this case. Applicant also notes that on certain of the motorcycle products retailer websites submitted by the Trademark Examining Attorney, motorcycle helmets are positioned as a sub-category of an “apparel and accessories” category. Therefore, applicant contends, motorcycle helmets are more similar to apparel than they are to motorcycle parts. Applicant argues that if the third-party ZOMBIE registration for clothing can co-exist with the prior ZOMBIE registration for motorcycle helmets cited by the Trademark Examining Attorney in this case, then applicant’s ZOMBIE mark for motorcycle parts, which are more dissimilar to motorcycle helmets than are apparel items, also should be allowed. We are not persuaded by this argument. The apparel featured in the “apparel and accessories” category of the motorcycle retailer websites appears to be apparel specifically geared toward motorcycle riding, such as motorcycle jackets, motorcycle gloves and the like. In contrast, the ordinary clothing items (including “cloth bibs”) identified in the third-party ZOMBIE registration do not appear to be motorcycle-related. We might assume that this is why the Trademark Examining Attorney who examined Ser. Nos. 77347508 and 77348214 13 the ZOMBIE clothing application did not refuse registration based on the prior ZOMBIE motorcycle helmet registration. However, even if we were to assume that the clothing identified in the third-party ZOMBIE registration should have been deemed by the Trademark Examining Attorney to encompass motorcycle apparel, and that the motorcycle helmet registration could or should have been cited as a bar to registration of the ZOMBIE mark for clothing, those assumptions would not suffice to change our opinion in this case, and on this record, that there is a likelihood of confusion between ZOMBIE for motorcycle parts and ZOMBIE for motorcycle helmets. It is well-settled that the Board is not bound by prior decisions reached by Trademark Examining Attorneys in other applications. In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). We must decide each case on the evidence before us in that case, and the evidence in this case suffices to establish that confusion is likely. We have considered all of applicant’s arguments to the contrary (including those not specifically addressed in this opinion), but we are not persuaded. We conclude that a likelihood of confusion exists. To the extent that any doubts might exist as to the correctness of this conclusion, we resolve such doubts against applicant. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Ser. Nos. 77347508 and 77348214 14 Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc. supra. Decision: The refusal to register is affirmed in each of the applications.