Boss Racing Products, LLC

Trademark Trial and Appeal Board

Mar 3, 2016

No. 86429504 (T.T.A.B. Mar. 3, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Boss Racing Products, LLC
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Serial No. 86429504
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Luke Brean of Breanlaw, LLC for Boss Racing Products, LLC.

Maria-Victoria Suarez, Trademark Examining Attorney, Law Office 102, Mitchell
Front, Managing Attorney.
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Before Zervas, Adlin and Gorowitz, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Boss Racing Products, LLC (“Applicant”) seeks registration of the mark shown
below

Serial No. 86429504
2

(with RACING PRODUCTS disclaimed) for “BMX bicycle parts, namely, handle bar
stems, excluding cruiser parts and bicycles.”1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the following marks registered to
different owners:
BOSS CRUISER in standard characters and with
CRUISER disclaimed, for “bicycles, and structural parts
of bicycles;”2 and

for, among other goods, “gymnastic and
sports articles and equipment, namely, skis, bicycles, golf
clubs, golf tees, golf balls, head covers for golf clubs, golf
gloves, tennis rackets and tennis balls”3

that use of Applicant’s mark in connection with Applicant’s goods is likely to cause
confusion or mistake or to deceive. After the refusal became final, Applicant
appealed and Applicant and the Examining Attorney filed briefs.

1 Application Serial No. 86429504, filed October 21, 2014 without a filing basis, and later
amended to assert Applicant’s intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 3817232 (the “’232 Registration”), issued July 13, 2010.
3 Registration No. 3127031 (the “’031 Registration”), issued August 8, 2006 based on an
international registration; Section 71 Affidavit accepted, Section 15 Affidavit acknowledged.
The registration includes this description of the mark: “The mark is comprised of a green
rectangular shaped box with the words ‘BOSS HUGO BOSS’ in the center in white,” and
the colors green and white are claimed as features of the mark. The registration states that
“The name HUGO BOSS does not identify a living individual.”
Serial No. 86429504
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We focus our analysis on the ‘232 Registration, because if we find confusion
likely between that cited mark and Applicant’s mark, we need not consider the
likelihood of confusion between Applicant’s mark and the mark in the ‘031
Registration, while if we find no likelihood of confusion between Applicant’s mark
and the mark in the ‘232 Registration, we would not find confusion between
Applicant’s mark and the mark in the ‘031 Registration. In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”).
Turning first to the goods, Applicant’s BMX4 “handle bar stems” appear to be
encompassed by Registrant’s “structural parts of bicycles,” which would make the

4 Applicant has established that a BMX bicycle is “an off-road sport bicycle used for racing
and stunt riding. BMX means bicycle motocross.” Office Action response of January 29,
2015 Ex. A (printout from Wikipedia).
Serial No. 86429504
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goods legally identical. However, even if BMX handle bar stems are not “structural”
bicycle parts, it is clear that both handle bar stems and structural parts of bicycles
are types of bicycle parts and thus at least closely related. For example, the
“chainreactioncycles.com” website claims to be “The World’s Largest Online
Bikestore,” and under the heading “Components” includes a subheading for
“Handlebars.” Office Action of January 21, 2015. Furthermore, the record reveals
that several websites offer both bicycles, such as those identified in the cited ‘232
Registration, and bicycle parts, including BMX handle bar stems or handle bars. Id.
(printouts from “chainreactioncycles.com,” “vitalbmx.com,” “danscomp.com” and
“unitedbikeco.com”); Office Action of March 16, 2015 (printouts from
“americasbikecompany.com” and “feltbicycles.com”). Applicant argues that its
handle bar stems connect handle bars to a bike’s headset, and are “necessary for
accurate steering,” based on this diagram:

Serial No. 86429504
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Office Action response of January 29, 2015. In other words, whether or not handle
bar stems are considered a “structural part” of a bicycle or simply a bicycle “part,”
handle bar stems are integral parts of bicycles, and are physically connected,
directly or indirectly, to structural parts of bicycles. Indeed, according to the
drawing Applicant submitted, handle bar stems are not only “necessary for accurate
steering,” but the attached handle bars also serve as mounts for the bike’s brake
lever and attached brake cable. Therefore, handle bar stems play a direct role in
steering, and handle bars an indirect role in stopping, and they are closely related
to both bikes and other types of bike parts.
In short, we need not determine whether handle bar stems are structural or non-
structural parts of bicycles, because either way they are inherently related to
Registrant’s bicycles and to Registrant’s structural parts for bicycles. Applicant does
not dispute that the goods are related. This factor weighs in favor of a finding of
likelihood of confusion.
As for channels of trade, while Applicant’s goods are limited to BMX handle bar
stems, Registrant’s identification of goods does not include any trade channel
restrictions, and we must therefore presume that Registrant’s bicycles and
structural parts of bicycles include BMX bicycles and structural parts therefor.5
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (“An application with ‘no restriction on trade channels’
cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a

5 Applicant’s exclusion of “cruiser parts and bicycles” is essentially irrelevant because
Registrant’s identification of goods is not limited to cruisers or any other types of bicycles.
Serial No. 86429504
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particular class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80
USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Moreover, the Examining Attorney has introduced evidence that bicycles and
structural parts therefor travel in the same channels of trade as handle bar stems,
including BMX handle bar stems. Office Action of January 21, 2015 (printouts from
“chainreactioncycles.com,” “vitalbmx.com,” “danscomp.com” and
“unitedbikeco.com”); Office Action of March 16, 2015 (printouts from
“americasbikecompany.com” and “feltbicycles.com”).
Turning to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). However, one
feature of a mark may be more significant than another, and it is not improper to
give more weight to the dominant feature of a mark in determining its commercial
impression. In re Nat’l. Data Corp., 224 USPQ at 751 (“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 conclusion rests on consideration of the
marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”).
Serial No. 86429504
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Here, the dominant element of both Applicant’s mark and the mark in the ‘232
Registration is the same -- the word BOSS. Indeed, the terms RACING PRODUCTS
in Applicant’s mark and CRUISER in Registrant’s mark are descriptive and
disclaimed.6 Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
(Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’”); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”). Consumers familiar with Registrant’s mark could believe that
Applicant’s mark represents a brand extension from cruisers into BMX bike racing
products.
While Applicant’s mark displays the word BOSS in a stylized format and
includes a design component, this is not enough to prevent confusion when both
marks are used for bicycle parts. In fact, because the cited mark is in standard
character format, it could be displayed in any lettering style, color or font, and
Registrant would be free to display its mark much as Applicant displays its mark,
heightening the likelihood of confusion. In re Viterra Inc., 671 F.3d 1358, 101,
USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc., 98 USPQ2d at 1258-59 and In

6 Applicant introduced a Wikipedia article which indicates that a “cruiser” is a type of
bicycle. Office Action response of January 29, 2015.
Serial No. 86429504
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re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). Furthermore, the
design component of Applicant’s mark is not particularly memorable, and in any
event, where, as here, a mark is comprised of both words and a design, the words
are normally accorded greater weight, because consumers are likely to remember
and use the word(s) to request the goods. In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both
a word and a design, then the word is normally accorded greater weight because it
would be used by purchasers to request the goods or services” and “because
applicant’s mark shares with registrant’s mark that element responsible for
creating its overall commercial impression, the marks are confusingly similar”); see
also In re Viterra Inc., 101 USPQ2d at 1911 (“the verbal portion of a word and
design mark likely will be the dominant portion”). In short, this factor also weighs
in favor of a finding of likelihood of confusion.
Conclusion
We recognize that there are differences between the marks, and Applicant is
correct that we must consider the marks in their entireties. However, the test 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. San Fernando Elec. Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). In this case,
Serial No. 86429504
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because Applicant and Registrant both combine the identical word BOSS with
disclaimed terms which are merely descriptive of their closely-related goods,
consumers may confuse the source of the goods, and could very well perceive
Applicant’s mark as an extension of Registrant’s brand into BMX bicycle parts.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the Act
based on the ‘232 Registration is affirmed.