H-D U.S.A., LLCv.Schmidiger

Trademark Trial and Appeal Board

Feb 23, 2018

No. 91223860 (T.T.A.B. Feb. 23, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

H-D U.S.A., LLC
v.
Schmidiger
_____
Opposition No. 91223860
_____
Linda K. McLeod and David M. Kelly of Kelly IP, LLP
for H-D U.S.A., LLC.

Jürg Schmidiger, pro se.
_____

Before Kuczma, Masiello, and Heasley, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Jürg Schmidiger (“Applicant”) filed an application1 for extension of protection to
the United States of his International Registration of the mark shown below

1 Application Serial No. No. 79160951 was filed on January 7, 2015 under Trademark Act
Section 66(a), 15 U.S.C. § 1141f(a), based on International Registration No. 1236951 dated
January 7, 2015, with a priority filing date of August 8, 2014. The mark consists of the
wording HARLIE CHARPER in stylized, cursive script. Color is not claimed as a feature of
the mark. The application includes a statement that HARLIE CHARPER does not identify a
living individual.
Opposition No. 91223860
2

for the following goods:
Footwear; Woven articles of clothing, namely, suits for men
and women, pantsuits, track suits, dress suits, suits,
business suits, three-piece suits, blazers, jackets, smoking
jackets, tuxedos, shirts, shirts for suits, dress shirts, formal
shirts, casual shirts, short-sleeve shirts, long-sleeve shirts,
golf shirts, Hawaiian shirts, Hawaiian shirts with front
button closure, open-necked shirts, tank tops for sports,
short-sleeve sports shirts, moisture-wicking sports shirts,
polo shirts, bowling shirts, neckties, ascots, bolo ties,
mufflers, bandanas, neckerchiefs, underwear, underwear
for men, long underwear, boy shorts, thermal underwear,
sweat-absorbent underclothing; water-resistant clothing,
namely, jackets; wind-resistant jackets, dress socks for
men, athletic footwear, footwear for sports, sports shoes,
shoes for playing drums; Clothing for sports, namely, track
suits, sports jackets, fishing jackets, wet suits for surfing,
wet suits for surface water sports, bathing suits, bathing
suits for women, bathing suits for men, fitted swimming
costumes with bra cups, tank tops for sports, short-sleeve
sports shirts, moisture-wicking sports shirts, bowling
shirts, polo shirts, rain slickers; Headgear, namely, hats,
caps, hoods, beanies; Footwear, namely, athletic footwear,
footwear for sports, sports shoes, motorcycle boots,
footwear for men and women, pumps; Leather or imitation
leather clothing, namely, suits of leather, motorcycle
jackets, motorcyclists pants, belts, shoes, boots, motorcycle
boots, footwear for men and women, pumps; Motorists
clothing, namely, motorcycle boots, rain suits for
motorcyclists, motorcycle jackets; high-strength synthetic
fiber woven clothing, namely, motorcyclists pants and
jackets, water-resistant jackets, tear-cut and heat proof
motorcyclists jackets, tear-cut and heat proof motorcyclists
pants, tear-cut and heat proof motorcyclists shirts, in
International Class 25.
H-D U.S.A., LLC (“Opposer”) has opposed registration of the mark on the ground
that it so resembles Opposer’s earlier used and registered marks HARLEY and
HARLEY-DAVIDSON (in standard character and stylized forms) as to be likely to
cause confusion, mistake or deception under Section 2(d) of the Trademark Act,
Opposition No. 91223860
3

15 U.S.C. § 1052(d); and on the ground that Applicant’s mark is likely to cause
dilution of the distinctive quality of Opposer’s marks under Section 43(c), 15 U.S.C.
§ 1125(c). Applicant, in his answer, admitted many of Opposer’s allegations, including
the following:2
• That Applicant “thinks the trademark HARLEY-DAVIDSON is a world
wide well known trademark and the company is having good commercial
success”;
• That “Opposer owns the trademarks as listed in the Opposer’s Notice of
Opposition”;
• That “Opposer owns and has owned the trademarks HARLEY and
HARLEY-DAVIDSON prior to the Applicants Harlie Charper trademark
application.”
• That “for the pronunciation in American English it is may true that there
is an affinity in between the two HARLEY and Harlie”;
• That Applicant “has the intention to produce motorcycle clothing not
because of a ‘bad faith intent’ for the company Harley Davidson and their
business. But he (Applicant) has ideas for new innovative motorcycle
clothing as he is a motorcyclist himself and can comprehend their needs”;
• That “the company Harley Davidson has good success in business since
decades”;
• That “the HARLEY-DAVIDSON trademark has become famous long
before the Applicant has filed his application.”

Applicant denied other salient allegations of the notice of opposition. In
particular, Applicant denied “that Opposer has gained high profile under the specific
HARLEY trademark itself”;3 Applicant asserted that he “has never seen any products
labelled with the trademark HARLEY nor such advertising so far”;4 and maintains
that the difference between his mark and Opposer’s marks “is so obvious that the

2 Answer ¶¶ 13, 18, 24, 25, 27, 30, and 32, 8 TTABVUE 3-6.
3 Id. ¶ 13, 8 TTABVUE 3.
4 Id. ¶ 30, 8 TTABVUE 6.
Opposition No. 91223860
4

mental capacity of someone who would seriously confound those different marks
maybe should be doubted.”5
Opposer filed a substantial amount of trial evidence and a brief on the case.
Applicant has neither presented evidence nor filed a brief.
A. The record.
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file for the opposed mark. Opposer has filed the
testimony declaration of Joanne M. Bischmann, Vice President, Communications for
Harley-Davidson, Inc., and President of Harley-Davidson Foundation, Inc. (31
TTABVUE (confidential); public version at 30 TTABVUE) with exhibits thereto (32-
77 TTABVUE). Opposer has also filed seven notices of reliance on the following
evidence:
• Status and title information, from the online records of the USPTO,
regarding 26 U.S. registrations owned by Opposer (14 TTABVUE).
• Opposer’s Annual Reports on Form 10-K for 2011-2016 (15 TTABVUE).
• Applicant’s responses to select requests for admission (16 TTABVUE).
• Decisions relating to Opposer’s enforcement of its trademark rights (18
TTABVUE).
• Applicant’s responses to select interrogatories (19 TTABVUE).
• Excerpts from published books referring to Opposer (20-29 TTABVUE).
• Press notices referring to Opposer (78 TTABVUE).

B. Standing.
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff

5 Id., Amplifying Denials ¶ 1, 8 TTABVUE 7.
Opposition No. 91223860
5

must show that it has a real interest in the proceeding beyond that of a mere
intermeddler and that it has a reasonable basis for its belief of damage resulting from
registration of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999).
Opposer has pleaded and proven6 that it owns the following 13 subsisting U.S.
registrations covering the clothing-related goods listed below (among other goods):
Reg. No. Mark Clothing-related Goods
1406876 HARLEY clothing; namely-- tee shirts for men,
women and children; knit tops for women
and girls; and children’s shirts

1683455 HARLEY shirts, tank tops, boots, and sweatshirts
1708362 HARLEY embroidered patches for clothing
0507163 HARLEY-DAVIDSON motorcycle shirts, sweaters, breeches,
neckties, coveralls, rain coats and hats,
jackets, helmets, caps, and boots

1234404 HARLEY-DAVIDSON Clothing-Namely, Jackets, Pants, Shirts, T-
Shirts, Vests, Jeans, Riding Suits,
Bandannas, Rain Suits, Shorts,
Nightgowns, Halters, Underwear, Tank
Tops, Sweatshirts, Night Shirts, Socks,
Gloves, Hats, Caps and Boots

Sunglasses and Protective Helmets for
Motorcyclists

1450348 HARLEY-DAVIDSON sweat pants, sweaters, suspenders, scarves,
bandanas, leather clothing, namely,
jackets, vests, gloves, jeans, chaps, tops,
boots, shorts, caps, belts, and parts of
footwear, namely boot tips

6 14 TTABVUE. Opposer also demonstrated its ownership of 13 other subsisting
registrations, which are of record.
Opposition No. 91223860
6

Reg. No. Mark Clothing-related Goods
3393840 HARLEY-DAVIDSON House mark for a full line of clothing,
footwear and headwear

3558739 HARLEY-DAVIDSON Leather and imitations of leather, and
goods made of these materials, namely, dog
leashes, dog collars, dog clothing

1793137 HARLEY OWNERS
GROUP
clothing, namely, shirts, sweatshirts, t-
shirts, caps, hats, jacket, vests, bandanas,
belt buckles and ornamental patches

3490890 HARLEY-DAVIDSON House mark for a line of motorcycles,
structural parts for motorcycles and related
motorcycle accessories, namely … (etc.)

1571032 clothing, namely, jeans, t-shirts and jackets
3447304 a full line of clothing
1710643 shirts, sweatshirts, t-shirts, caps,
embroidered patches

Opposer has also demonstrated that over a period of years it has used the marks
HARLEY and HARLEY-DAVIDSON on and in connection with a range of apparel.7
Thus, Opposer has shown that it has a real interest in this proceeding and a
reasonable basis for its belief that it will be damaged by registration of Applicant’s

7 See, e.g., Bischmann dec. ¶¶ 25, 27-28, 31 TTABVUE 16-17; and 57-61 TTABVUE (clothing
catalogues).
Opposition No. 91223860
7

mark, and has established its standing to oppose registration of Applicant’s mark.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Ritchie v. Simpson, 50 USPQ2d at 1025-6; and Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
C. Opposer’s claim under Section 2(d).
Opposer opposes registration of Applicant’s mark under Trademark Act § 2(d), on
the ground that Applicant’s mark “so resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name previously used in the United States by
[Opposer] and not abandoned, as to be likely, when used on or in connection with the
goods of [Applicant], to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.
§ 1052(d). In view of Opposer’s ownership of valid and subsisting registrations of its
pleaded marks, priority is not at issue with respect to the marks and the goods
identified in the registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Our determination 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
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256
(Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In our analysis, below, we have considered all factors with respect to which
there is evidence of record.
Opposition No. 91223860
8

D. The fame of Opposer’s marks.
We will first address Opposer’s contention that its marks HARLEY-DAVIDSON
and HARLEY “are among the most famous marks in the U.S.”8 Fame, if it exists,
plays a dominant role in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection. A famous mark has extensive public recognition
and renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992). For purposes of analysis of likelihood of
confusion, fame is not an “all-or-nothing factor”; rather, it “varies along a spectrum
from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings,
LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations
omitted). Fame is “determined from the viewpoint of consumers of like products,” and
not from the viewpoint of the general public. Id. at 1735. Because of the extreme
deference that we accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in the likelihood of confusion
analysis, it is the duty of the party asserting that its mark is famous to clearly prove
it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904
(TTAB 2007). As we have noted above, Applicant has conceded that “the HARLEY-

8 Opposer’s brief at 38, 80 TTABVUE 45.
Opposition No. 91223860
9

DAVIDSON trademark has become famous long before the Applicant has filed his
application.”9 Applicant has made no such concession regarding the mark HARLEY.
To demonstrate the fame of its marks, Opposer has submitted testimony that
Opposer commenced manufacturing motorcycles in 1903 under the brand HARLEY-
DAVIDSON and is now the largest manufacturer of motorcycles in the United
States.10 “For decades, [Opposer] has been referred to by … the shortened name
Harley ….”11 According to Opposer’s witness, Opposer has used its marks for
motorcycles and apparel of various types from the dates set forth below:12
Mark Goods Date
HARLEY-DAVIDSON Motorcycles. 1903
HARLEY Motorcycles. 1903
HARLEY-DAVIDSON T-shirts, jackets, pants, jeans, rain coats, rain
suits, hats, sweatshirts, gloves, helmets, belts,
and boots.

1914-15
HARLEY-DAVIDSON Sweat pants, suspenders, scarves, bandanas,
leather clothing, boots, caps, and belts.

1947
HARLEY Clothing. 1981

Jeans, jackets, t-shirts. 1988

9 Answer ¶ 32, 8 TTABVUE 6.
10 Bischmann dec. ¶ 12, 31 TTABVUE 4-5.
11 Id. at ¶ 20, 31 TTABVUE 6.
12 Id. ¶¶ 22, 24-25, 28, 30-31, 31 TTABVUE 7-17.
Opposition No. 91223860
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Mark Goods Date
HARLEY OWNERS
GROUP

Clothing and hats. 1984
HOG LADIES OF
HARLEY

Clothing and caps. 1987

For the purpose of demonstrating the fame of its marks, Opposer has disclosed
(confidentially) financial data relating to its revenues from motorcycle sales and from
licensing revenues for t-shirts, other apparel, footwear, eyewear, and juvenile
apparel.13 Apparel revenues are substantial, although revenues from motorcycles are
much greater. Opposer’s marketing of apparel heavily emphasizes an association
between the apparel and Opposer’s core product, motorcycles, i.e., promoting the
apparel as motorcycle accessories or as particularly suitable for use in motorcycling.
Opposer has also submitted substantial evidence regarding its marketing and
promotional activities across all product categories, including its advertising through
print, television, radio, direct mail, signs, billboards, and digital media, product
placement on television and in films, and sponsorship of sporting events, motorcycle
rallies, and other events.14 The evidence includes figures for advertising expenditures
between 2006 and 2016, inclusive.15 Opposer has conducted advertising campaigns
specifically dedicated to its clothing products, including print catalogues for its

13 Id. ¶¶ 84-86, 31 TTABVUE 44-46, and Exhibit 55, 73 TTABVUE 55.
14 Id. ¶¶ 42-79, 31 TTABVUE 27-42.
15 73 TTABVUE 4. The figures include a breakout of costs for Opposer’s “Motorclothes
Catalogue.”
Opposition No. 91223860
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“Motorclothes,” and Opposer has provided voluminous examples of such catalogues
issued between 2002 and 2017.16
Opposer has also provided information regarding unsolicited/unearned media
attention that it has received.17 Opposer has made of record hundreds of pages of
press coverage relating to itself, its goods, and its marks. HARLEY-DAVIDSON has
been referred to as “an iconic American brand”;18 a “famous name,”19 “famous
brand,”20 and “famous trademark.”21 The design form of Opposer’s mark has been
referred to as a “famous logo.”22 The press notices also show recognition of HARLEY
as Opposer’s brand, e.g. “Harley motorcycles,”23 “Harley bike,”24 “Harley hogs,”25
“Harley engine,”26 “Harley apparel,”27 “Harley dealers,” “Harley leathers.”28
Opposer’s motorcycles are often referred to as “Harleys.”29 Opposer itself is often

16 53-61 TTABVUE.
17 Bischmann dec. ¶ 80-81, 31 TTABVUE 43, and Exhibit 54, 73 TTABVUE 6-53.
18 78 TTABVUE 34; see also 78 TTABVUE 25, 44, 58.
19 See 78 TTABVUE 83, 117, 317, 340, 347, 386,389, 398, 570.
20 See 78 TTABVUE 88, 110, 144, 156, 225, 343, 367, 370, 379, 382.
21 See 78 TTABVUE 372, 375.
22 See 78 TTABVUE 65, 73, 170, 321.
23 78 TTABVUE 318.
24 78 TTABVUE 37.
25 78 TTABVUE 76, 380, 471, 491, 498, 560.
26 78 TTABVUE 216.
27 78 TTABVUE 382.
28 78 TTABVUE 453.
29 78 TTABVUE 67, 94- 96, 347, 435, 445, 590, 594.
Opposition No. 91223860
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referred to as “Harley.”30 The press coverage, which issued over a period spanning
many decades, demonstrate an extremely high degree of recognition of both
HARLEY-DAVIDSON and HARLEY as trademarks and trade names associated with
Opposer, as well as the writers’ expectation that readers will be familiar with these
marks and names and have an interest in reading about them. We find the evidence
of record sufficient to persuade us that Opposer’s marks HARLEY-DAVIDSON and
HARLEY enjoy a high degree of fame in the United States market. The fame of
Opposer’s marks enhances the likelihood that customers would perceive a trademark
similar to HARLEY or HARLEY-DAVIDSON as being associated with Opposer.
E. The goods.
We turn next to the similarity or dissimilarity of the goods at issue, as identified
in the Applicant’s application and Opposer’s pleaded registrations. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-
1162 (Fed. Cir. 2014); Octocom Syst. Inc. v. Houston Computs. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Comparing first Applicant’s goods to the goods for which Opposer has registered
its HARLEY mark in standard character form, we see that the application and one
or more of the pleaded registrations cover “shirts,” “tank tops,” and “boots”; that
Applicant’s “shirts” are identified with sufficient breadth to include within their scope
Opposer’s more narrowly identified “tee shirts” and “children’s shirts”; and that
Opposer’s boots are identified with sufficient breadth to include within their scope

30 78 TTABVUE 28, 31, 40, 51, 394, 472, 486, 501.
Opposition No. 91223860
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Applicant’s more narrowly identified “motorcycle boots.” Therefore, Applicant’s goods
are, in part, identical or legally identical to goods for which Opposer has registered
its mark HARLEY.
Comparing next Applicant’s goods to the goods for which Opposer has registered
its HARLEY-DAVIDSON mark in standard character form, we see that the
application and one or more of the pleaded registrations cover “neckties,” “hats,”
“caps,” “jackets,” “boots,” “shirts,” and “underwear”; that Opposer’s “rain coats” are
essentially identical to Applicant’s “rain slickers”; and that Opposer’s “shorts,” “tank
tops,” “socks,” “pants,” “boots,” and “rain suits” are identified with sufficient breadth
to include within their scope Applicant’s more narrowly identified “boy shorts,” “tank
tops for sports,” “dress socks for men,” “motorcyclists pants,” “motorcycle boots,” and
“rain suits for motorcyclists.” Therefore, Applicant’s goods are, in part, identical or
legally identical to goods for which Opposer has registered its mark HARLEY-
DAVIDSON.
We need not consider whether each of Applicant’s identified goods is related to
Opposer’s goods; for purposes of a du Pont analysis, it is sufficient if likelihood of
confusion is found with respect to any of Applicant’s goods in a given International
Class. See Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); Apple Comput. v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397
(TTAB 2007). In sum, we find that the du Pont factor of the similarity or dissimilarity
of the goods favors a finding of likelihood of confusion.
Opposition No. 91223860
14

F. Trade channels; customers.
The parties’ goods are, in part, identical or legally identical. With respect to those
identical goods, we must presume that the channels of trade and classes of customers
are the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012). The customers for clothing items include
ordinary consumers who have no particular sophistication and who would exercise
only an ordinary degree of care in selecting the goods; and we must base our analysis
“on the least sophisticated potential purchasers.” Stone Lion Capital v. Lion Capital,
110 USPQ2d at 1163 (internal quotation marks omitted). The du Pont factors relating
to trade channels and customers favor a finding of likelihood of confusion.
G. The marks.
Next we consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of
the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748, quoting Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks
omitted). While we consider each mark in its entirety, there is nothing improper in
Opposition No. 91223860
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stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided that our ultimate conclusion rests upon a comparison of
the marks in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be unavoidable.” Id.
We will first compare Applicant’s mark to Opposer’s mark HARLEY, in
standard characters. The initial component of Applicant’s mark is HARLIE, in
stylized form, which is essentially identical in sound to the entirety of Opposer’s
mark. HARLIE is also, in part, visually similar to HARLEY inasmuch as both terms
share the letters HARL and E, in the same order. The stylized lettering of Applicant’s
mark and the additional term CHARPER are points of difference in appearance as
compared to Opposer’s mark. We generally give less weight to the stylization of a
mark than to its wording, because the wording would be used by consumers to request
the goods. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See
also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Serv., Inc., 710 F.2d 1565,
218 USPQ 390, 395 (Fed. Cir. 1983). Moreover, Opposer’s mark is registered in
standard character form, such that it is not limited to any particular form of display,
and could be displayed in stylized letters that resemble those of Applicant’s mark.
See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); see
also In re i.am.symbolic, 123 USPQ2d at 1748. Indeed, the record shows that Opposer
has sometimes displayed its marks in exuberant script styles that somewhat
resemble the cursive script of Applicant’s mark:
Opposition No. 91223860
16

31

32
33
In terms of the meanings of the marks, HARLEY is likely to be perceived as a
proper name, either a given name or a surname. HARLIE, too, because of its
pronunciation, is likely to be perceived as a proper name, although evidence of such
a significance is lacking in the record. CHARPER, the second term in Applicant’s
mark, is an unusual term: there is no evidence that this term has any meaning, but
viewed in the context of the mark as a whole, HARLIE CHARPER is likely to be
perceived as a personal name. Overall, the CHARPER element of Applicant’s mark

31 58 TTABVUE 72, 88.
32 59 TTABVUE 69, 83.
33 75 TTABVUE 106.
Opposition No. 91223860
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is a point of difference with respect to the appearance, sound, and meanings of the
two marks.
The overall commercial impressions created by the two marks are similar in part
with respect to appearance, sound, and meaning. To the extent of these similarities,
the du Pont factor of the similarity or dissimilarity of the marks favors a finding of
likelihood of confusion.
Turning to a comparison of Applicant’s mark with Opposer’s other standard
character mark, HARLEY-DAVIDSON, we note again the similarities in appearance,
sound, and meaning between the marks’ initial components HARLIE and HARLEY,
while also noting the distinction created by the stylized lettering of Applicants’ mark.
The respective, second components of the marks, CHARPER (in stylized letters) and
-DAVIDSON are quite different in appearance and sound. In terms of meaning or
connotation, both CHARPER and -DAVIDSON are likely to be perceived as personal
names. The two marks, considered in their entireties, both give the overall impression
of a combination of two personal names; moreover, the two marks commence with
phonetically identical names, HARLIE and HARLEY. Although the marks have
notable differences and are similar only in part, to the extent of their similarities the
du Pont factor of the similarity or dissimilarity of the marks favors a finding of
likelihood of confusion.
H. Balancing the factors.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The parties’ goods
are, in part, identical or legally identical. These goods would be offered to the same
Opposition No. 91223860
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classes of customers through the same channels of trade. The customers are ordinary
consumers who would exercise only ordinary care in selecting the goods, and there is
no evidence suggesting that any particular conditions of sale would affect the
likelihood of confusion. The marks are partly similar in appearance, sound, and
meaning. In commercial impression, the marks all suggest personal names or the
combination of personal names, beginning with HARLEY or HARLIE. Giving due
regard to the differences between the marks, we nonetheless bear in mind that when
identical goods are at issue, the degree of similarity of the marks that is necessary to
find a likelihood of confusion is not as great as where the goods are disparate. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Moreover, we have found HARLEY and HARLEY-DAVIDSON to be
famous, at least with respect to apparel related to motorcycles or motorcycling. A
famous mark “casts a long shadow which competitors must avoid.” Bose v. QSC, 63
USPQ2d at 1305. See also Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 22
USPQ2d at 1456 (“[T]he Lanham Act’s tolerance for similarity between competing
marks varies inversely with the fame of the prior mark.”). Famous marks are given
a broad scope of protection “because of the tendency of the consuming public to
associate a relatively unknown mark with one to which they have long been exposed
if the mark bears any resemblance thereto.” R. J. Reynolds Tobacco Co. v. R. Seeling
& Hille, 201 USPQ 856, 860 (TTAB 1978). We find that the similarity between the
designations HARLEY and HARLIE outweighs the differences between the marks
Opposition No. 91223860
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and renders confusion likely. Accordingly, we SUSTAIN the opposition on the basis
of Opposer’s claim under Section 2(d).
Inasmuch as we have determined that registration of Applicant’s mark should be
refused on grounds of likelihood of confusion, we need not and do not reach Opposer’s
claim of dilution.
Decision: The opposition is SUSTAINED on Opposer’s claim of likelihood of
confusion under Section 2(d).