H-D Michigan, Inc.

Trademark Trial and Appeal Board

Nov 19, 1998

No. 74423828 (T.T.A.B. Nov. 19, 1998)

Paper No. 32
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 11/19/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re H-D Michigan, Inc.
________
Serial No. 74/423,828
_______
Thomas P. Arden of McBride Baker & Coles for applicant.
Odette Bonnet, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney).
_______
Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by H-D Michigan, Inc. to
register the mark BIKER BLUES for “clothing, namely,
shorts, gloves, hats, caps, boots, shoes, skirts,
underwear, pajamas, belts, chaps, socks, scarves,
suspenders, sweaters, rain suits, mittens and neckties.”1

1 Application Serial No. 74/423,828, filed August 10, 1993,
alleging a bona fide intention to use the mark in commerce.
Pursuant to applicant’s request to divide the application, a
“child” application, Serial No. 74/802,222, was set up covering
“clothing, namely, shirts, pants, jeans, vests, jackets and
Ser No. 74/423,828
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Act on the ground
the applicant’s mark, if applied to applicant’s goods,
would be merely descriptive of them.
When the refusal was made final, applicant appealed.2
Applicant and the Examining Attorney have filed briefs.3
The Examining Attorney asserts, in refusing
registration, that the mark sought to be registered is
merely descriptive of applicant’s clothing inasmuch as the
clothing is made of blue denim fabric and is sold to
bikers. More specifically, the Examining Attorney contends
that the term “biker” identifies the intended users of
applicant’s clothing, and the term “blues” is descriptive
of blue colored clothing, particularly that made of blue
denim. The Examining Attorney maintains that the
combination of the two terms does not result in an
inherently distinctive mark. In support of the refusal,
the Examining Attorney submitted excerpts retrieved from

bandannas.” That application matured into Registration No.
1,993,625, issued August 13, 1996, pursuant to Section 2(f) of
the Trademark Act.
2 Pursuant to the remands granted to applicant and the Examining
Attorney, all of the evidence submitted in this case has been
considered as part of the appeal record. This evidence is
entitled, of course, to varying degrees of probative value.
3 Although an oral hearing originally was requested, the request
later was withdrawn.
Ser No. 74/423,828
3
the NEXIS database,4 copies of third-party registrations, an
advertisement of a third party, excerpts from one of
applicant’s clothing catalogs, and a copy of applicant’s
previously issued registration.
Applicant argues that its mark is inherently
distinctive, contending that the mark “at most implies a
sad or depressed mood experienced by ‘bikers’ or twelve bar
music written about or by bikers.” (brief, p. 6) In
urging that the refusal be reversed, applicant relied upon
dictionary and thesaurus listings for the terms “bike” and
“blues,” two declarations from individuals experienced in
the clothing industry, excerpts from the Official Gazette,
copies of third-party registrations and applications, and
the file history of a third-party registration.5
Although applicant submitted a dictionary listing for
the term “bike” (and “bicycle”), the Board takes judicial
notice of the listing in The Random House Dictionary of the
English Language (2d ed. 1987) for the term “biker”: “a

4 Several excerpts are from foreign publications. As pointed out
by applicant, there is no evidence that these stories were
circulated in this country. Thus, we cannot infer that these
foreign uses have had any material impact on the perceptions of
the relevant public in this country. In re Men’s International
Professional Tennis Council, 1 USPQ2d 1917, 1918-19 (TTAB 1986).
Accordingly, these particular excerpts are irrelevant to the
issue in this appeal.
5 A third declaration, that of Thomas Arden, applicant’s
attorney, was submitted in connection with the third-party
registrations and applications.
Ser No. 74/423,828
4
person who rides a bicycle, motorcycle, esp. in competition
or as a hobby; informal, a member of a motorcycle gang.”6
The term “blues,” as defined in Webster’s Third New
International Dictionary (1986), means
low spirits, mental depression, usually
used with the; a song sung or composed
in a style originating among the
American Negroes, characterized
typically by the use of the three-line
stanzas in which the words of the
second line repeat the first,
expressing a mood of longing or
melancholy, and marked by continual
occurrence of blues notes in melody and
harmony; the blue uniform of the U.S.
Navy; unreserved seats at the two far
ends of a circus tent usually painted
blue.
The listings in Roget’s International Thesaurus (1977) of
synonyms for the term “bike” are “bicycle” and “ride,”
while synonyms for the term “blues” are “folk music,” “ill
humor,” “sadness” and “song.”
The record includes various excerpts retrieved from
the NEXIS database which show, according to the Examining
Attorney, that the term “biker” describes a particular type
or style of clothing. The following are examples:
Thieves stole leather biker clothing,
valued at $900....
Los Angeles Times, July 1, 1993

6 Dictionary definitions are proper subject matter for judicial
notice. University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 74/423,828
5
Leather motorcycle fashion designers
John Bowman, Richard Stark and Leonard
Kamhout, recent winners of a
prestigious fashion design award,
discuss their line of biker clothing
which runs between $3,000-5,000.
CNN News, June 7, 1993
....their favorite symbols tend to be
crude tattoos, biker clothing,....
Los Angeles Times, June 4, 1993
The suspect, described as a tall,
heavy-set man dressed in leather biker
clothing....
St. Petersburg Times, February 29, 1992
....obscured by a gas station, a Jack
Roberts outlet, a discount divorce
office and the Hot Stuff biker clothing
store.
The Seattle Times, March 1, 1991
....when I ride I wear mostly Biker
Blues, denim jeans with a functional
boot cut and relaxed fit that gives me
more room....
Los Angeles Times, July 14, 1994
The record also includes excerpts showing uses of the
term “blues” in connection with clothing:
Holiday Blues; Denim’s one fabric
that’s never out of season....denim is
being upgraded and paired with street
looks--racing stripes in high-top
sneakers, baggy jeans and biker caps.
The Houston Chronicle, December 15,
1994
Denim treatments: R.E. Denim attempted
to “dress up” its blues with silver
lame paneling on front and back.
The Houston Post, September 14, 1994
Ser No. 74/423,828
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Chasing The Blues--Finding the perfect
pair of denims a stretch for shoppers.
The Cincinnati Enquirer, September 6,
1994
The blues: Denim still is the fabric
of choice among teens.
Star Tribune, August 24, 1994
Look who’s wearin’ the blues! Denim.
Teen, September 1993
Lose Your Blues: Feeling blue? Here’s
a chance to lose your blues (as in blue
jeans), courtesy of Dillard’s stores
and the Perry Ellis clothing company.
Orlando Sentinel Tribune, November 13,
1992
Matteson stocks Biker Blues (blue
jeans),....
Anchorage Daily News, October 9, 1995
Applicant and the Examining Attorney submitted third-
party registrations and applications of marks which
include, as a portion thereof, either the term “biker” or
the term “blues.” The registrations and applications cover
clothing items. Suffice it to say that some registrations
or applications include disclaimers of the terms “biker” or
“blues” apart from the marks, while others do not include
such disclaimers. Other registrations issued under Section
2(f) or on the Supplemental Register.
Also of record is an excerpt from a catalog of J. Crew
which shows the following phrase superimposed on a pair of
denim jeans: “Jeans. True blues and beyond.”
Ser No. 74/423,828
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The Examining Attorney also submitted a catalog of
applicant’s which covers clothing items and various
accessories. The catalog includes items described as
“biker trench coat,” “biker jacket,” “men’s exhaust biker
jacket,” “biker open-tip gloves,” “biker buckles,” and
“biker wallet.” The catalog also includes clothing items
sold under the mark BIKER BLUES. The catalog reveals that
several items sold under the mark are made of denim. In
the catalog, applicant describes its denim pants sold under
the mark as follows:
On Biker Blues jeans, the coin
pocket’s on the left side. That way,
you can dig for toll change with your
left hand, and keep your right hand on
the brake. You may not notice these
road-smart details the first time you
slip on a pair. You’ll just know they
feel right.
Also of record is an article about applicant’s line of
clothing sold under the mark BIKER BLUES. The headline
reads “Harley-Davidson Swaps Its Black Leather for Blue
Jeans.” The article reads as follows:
Motorcycle legend Harley-Davidson will
put its name on another all-American
product when it rolls nationally a line
of jeans under the Biker Blues brand.
H-D hopes to broaden its appeal beyond
bikers, targeting Generation Xers with
ads in alternative newspapers....
Harley-Davidson’s MotorClothes division
has begun testing a line of denim jeans
branded Biker Blues and intends to roll
Ser No. 74/423,828
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out the brand nationally in July....the
jeans line is new, as is the Biker
Blues name created for it.
Adweek, May 30, 1994.
The record includes the declaration of Karen Davidson,
manager, clothing design, for applicant. Ms. Davidson
states, in pertinent part, that the phrase “biker clothing”
does not indicate a type or classification of clothing in
the clothing industry, and that such term is not used in
the industry; and that the term “blues” does not indicate a
type or classification of clothing in the clothing
industry, and that such term is not used to indicate blue
jeans or other denim clothing items. Ms. Davidson further
asserts that applicant’s BIKER BLUES line of clothing
contains items of various colors and that the line does not
include leather clothing for motorcyclists. In this
connection, Ms. Davidson states that the BIKER BLUES
clothing line is targeted to both men and women of various
age groups, income and social status, and that the
advertising was designed to reach a large audience beyond
the motorcycling public. Ms. Davidson maintains that
applicant chose the term “blues” in that it is suggestive
Ser No. 74/423,828
9
of the blues musical style, and that no one else has used
the mark sought to be registered here.7
The second declaration is from Alyssa Gallender, a
retail clothing store manager for The Gap, Inc. Ms.
Gallender has an undergraduate degree in “marketing of
textiles and apparels” and has worked in the clothing
industry since 1991. Ms. Gallender maintains, in pertinent
part, that “biker clothing” is not a classification of any
kind of clothing in the clothing industry, and that such
phrase is not used in the trade; that clothing worn by
motorcyclists would typically be made of leather; that the
term “blues” is not used in the industry to refer to blue
jeans, but rather the term is used in conjunction with the
term “denim” or “jeans” to describe the color of the
clothing; and that jeans are made in several colors other
than blue. Ms. Gallender also states that she has never
heard the phrase “biker blues” used in the clothing
industry, and that the mark sought to be registered does
not convey any readily understood meaning.
Lastly, the Examining Attorney submitted a copy of
applicant’s Registration No. 1,993,625, issued August 13,
1996, for the mark BIKER BLUES for “clothing, namely,

7 Ms. Davidson also sets forth a sales figure of “almost $10
million” and advertising expenditures of “well over $1.7
Ser No. 74/423,828
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shirts, pants, jeans, vests, jackets, and bandannas.” The
registration issued pursuant to a claim of acquired
distinctiveness under Section 2(f) (which was made as an
alternative claim to applicant’s position that the mark is
inherently distinctive). See: Trademark Manual of
Examining Procedure §1212.02(c). The underlying
application, serial no. 74/802,222, was a “child”
application created as a result of applicant’s request to
divide filed in connection with the present “parent”
application. Trademark Rule 2.87.
It is well settled that a term is considered to be
merely descriptive of goods, within the meaning of Section
2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof
or if it directly conveys information regarding the nature,
function, purpose or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute
about them. Moreover, whether a term is merely descriptive
is determined not in the abstract, but in relation to the

million.”
Ser No. 74/423,828
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goods for which registration is sought. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). In this
connection, registration must be refused if the term is
descriptive of any of the goods for which registration is
sought. In re Quik-Print Copy Shop, Inc., 616 F.2d 523,
205 USPQ 505, 507 (CCPA 1980); and In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA 1975).
The meanings of the terms “biker” and “blues” convince
us that the mark sought to be registered, BIKER BLUES, is
merely descriptive when applied to applicant’s clothing
items. We find that the record supplies ample support to
show that the term “biker” identifies a particular style of
clothing or clothing that is intended to appeal to bikers,
that is, motorcyclists. Given the uses of “biker” in
printed publications, and most especially in applicant’s
own catalog, we are somewhat surprised at Ms. Davidson’s
and Ms. Gallender’s claims relative to the term “biker” in
the industry. One need look no further than applicant’s
description of its “BIKER” clothing in terms of “road-smart
details” to discern that in no insignificant way the
clothing is directed to bikers. See, e. g., In re Camel
Manufacturing Co., Inc., 222 USPQ 1031 (TTAB 1984)[mark is
merely descriptive if it describes type of individuals to
whom appreciable number of goods are directed]. Although,
Ser No. 74/423,828
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as applicant points out, its BIKER BLUES line of clothing
is marketed to appeal to a broader group of potential
purchasers than just motorcyclists, the undeniable fact
remains that bikers represent a large segment of that
group.
With respect to the term “blues,” the record is
sufficient for us to find that the term has a particular
meaning when applied to clothing. Although the dictionary
does not list denim clothing as a definition of the term
“blues,” the uses of “blues” in printed publications show
that the term has been used to refer to clothing made of
denim fabric which, according to the evidence of record, is
the fabric used in applicant’s line of BIKER BLUES
clothing. In saying this, we recognize that some of these
uses are ambiguous or in the nature of a double entendre
(e.g., “holiday blues” or “feeling blue”). However, other
uses are clear references to blue denim clothing (e.g.,
“’dress up’ its blues” and “the blues: denim still is the
fabric....”).
Contrary to applicant’s arguments, the combination of
the two words results in a composite mark that is merely
descriptive when applied to applicant’s clothing. That is
to say, the combination of the individually descriptive
words does not result in a mark that is incongruous or
Ser No. 74/423,828
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otherwise just suggestive. We are not persuaded by
applicant’s contention that the mark suggests the
melancholy of motorcyclists or music written about or by
bikers. The test of mere descriptiveness is not done in a
vacuum, but rather the proposed mark must be evaluated in
the context of its application to the goods. When analyzed
in such a fashion here, the term BIKER BLUES merely
describes applicant’s clothing line, that is, denim
clothing intended to be worn by bikers, or denim clothing
in a style worn by bikers.
The third-party registrations and/or applications are
of little help in determining the registrability of the
mark at issue in this case. As often noted by the Board,
each case must be decided on its own set of facts, and we
are not privy to the facts involved with these official
records. While uniform treatment under the Trademark Act
id highly desirable, it is apparent from the evidence
submitted by applicant and the Examining Attorney that the
Office has been inconsistent in its treatment of the terms
comprising applicant’s mark. Indeed, as correctly
characterized by applicant, the register reveals a “mixed
bag.” In any event, our task here is to determine, based
upon the record before us, whether applicant’s mark is
registrable.
Ser No. 74/423,828
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Insofar as the probative value of applicant’s prior
Section 2(f) registration of BIKER BLUES for shirts, pants,
jeans, vests, jackets and bandannas is concerned, this
evidence has been considered, but it is not dispositive.
Applicant makes much of the fact that the claim of acquired
distinctiveness in its registration was made in the
alternative, arguing that this alternative reliance on the
benefits of Section 2(f) does not constitute an admission
of mere descriptiveness. Indeed, applicant is correct in
maintaining that an alternative claim of acquired
distinctiveness under Section 2(f) does not constitute an
admission that the proposed mark is not inherently
distinctive. In re E S Robbins Corp., 30 USPQ2d 1540, 1542
(TTAB 1992); and Trademark Manual of Examining Procedure,
§1212.02(c). The same holds true here, notwithstanding the
fact that applicant accepted a Section 2(f) registration.
In sum, the evidence of record shows that the mark
BIKER BLUES, as applied to applicant’s clothing items,
immediately conveys information about the goods, namely
that they are made of denim fabric and are in the style of
biker clothing, or that the denim clothing is designed to
be worn by bikers. The fact that applicant may have
intended to be the first entity to use the term in the
field is not dispositive where, as here, the term BIKER
Ser No. 74/423,828
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BLUES unequivocally conveys a merely descriptive
connotation. In re MBAssociates, 180 USPQ 338, 339 (TTAB
1973).
Decision: The refusal to register is affirmed.
R. F. Cissel
T. J. Quinn
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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