Hawk RacingDownload PDFTrademark Trial and Appeal BoardSep 22, 2011No. 76698132 (T.T.A.B. Sep. 22, 2011) Copy Citation Mailed: September 22, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Hawk Racing ________ Serial No. 76698132 _______ Jeffrey M. Furr of Furr Law Firm for Hawk Racing. Howard Smiga, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Quinn, Zervas and Taylor, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Hawk Racing has filed an application to register on the Principal Register the mark for goods ultimately identified as “bicycle wheels made of carbon or alloy; bicycle hubs and bottom brackets; bicycle bearings; bicycle accessories, namely, fork, seat post, and crank sets” In International Class 12.1 In response to a 1 Serial No. 76698132, filed June 29, 2009 and alleging January 1, 2007 as the date of first use of the mark anywhere and January THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 76698132 2 request by the examining attorney, the word “RACING” is disclaimed. The examining attorney finally refused registration pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the basis that applicant’s mark, as applied to the identified goods, is likely to be confused with the three registered marks owned by the same entity set forth below. Registration No. 34267532 for the typed-form mark HAWK BIKES (BIKES disclaimed) Registration No. 32971773 for the mark Registration No. 34267524 for the mark HAWK as stylized below In all three registrations, the goods are identified as “bicycles and (structural)5 parts thereof, bicycle bells, 1, 2009 as the date of first use of the mark in commerce. The application also claims the colors red and black and contains the following statements: “The literal element of the mark consists of ‘HAWK RACING’. The mark consists of ‘HAWK RACING’ in stylized lettering. The color red appears in the word ‘HAWK”. The color black appears in the word ‘RACING’ and the outline in the word ‘HAWK’.” 2 Issued May 13, 2008. 3 Issued May 13, 2008. 4 Issued May 13, 2008. 5 The identification in Registration No. 3426752 included the term “structural” to further identify the “parts.” Ser No. 76698132 3 air pumps for bicycles, panniers adapted for bicycles, baskets adapted for bicycles, seats for bicycles, gears for bicycles” in International Class 12. The examining attorney also made final a requirement for a more definite identification of goods because the identification, as initially amended, included the “open-ended wording ‘such as.’” When the refusal was made final, applicant appealed and requested reconsideration of the final refusal. In its request for reconsideration, applicant made arguments in support of its position on the Section 2(d) issue, and proffered an amendment to its identification of goods which, as reflected by the records of the Office, was accepted by the examining attorney. On October 12, 2010, the examining attorney denied the request for reconsideration as to the Section 2(d) issue and, on October 21, 2010, this appeal was resumed. Briefs were filed by both applicant and the examining attorney. For the reasons discussed below, we affirm the refusal to register. As a preliminary matter, the examining attorney has objected to a letter from a third-party Director of Marketing attached to applicant’s appeal brief, arguing that it is an untimely submission. We note, however, that Ser No. 76698132 4 the letter previously was made of record with applicant’s request for reconsideration. As such, it was timely filed and is properly of record. Accordingly, the examining attorney’s objection is overruled. Turning now to the merits of this appeal, 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, two key considerations are the similarities between the marks and the similarities between the goods and/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). In analyzing likelihood of confusion, we limit our discussion to Registration No. 3426753 for HAWK BIKES for “bicycles and parts thereof, bicycle bells, air pumps for bicycles, panniers adapted for bicycles, baskets adapted for bicycles, seats for bicycles, gears for bicycles” as this mark is the closest to applicant’s mark and recited Ser No. 76698132 5 goods. To the extent that there would be confusion with the ‘753 registration, it would serve little purpose to consider the other registrations. And if there is no likelihood of confusion with the ‘753 registration, there would similarly be no likelihood of confusion with the other registrations. Considering first the relatedness of the goods, it is settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods recited in the registration. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Furthermore, where the goods in the application and/or cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential Ser No. 76698132 6 buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Here, we compare applicant’s “bicycle wheels made of carbon or alloy; bicycle hubs and bottom brackets; bicycle bearings; bicycle accessories, namely, fork, seat post, and crank sets” with registrant’s “bicycles and parts thereof, bicycle bells, air pumps for bicycles, panniers adapted for bicycles, baskets adapted for bicycles, seats for bicycles, gears for bicycles.” The examining attorney contends that the respective goods “could well be presumed to be from the same source inasmuch as the goods of the parties relate to bicycle component parts and accessories.” Br. unnumbered p. 6. In support of his position, the examining attorney has made of record printouts of twelve use-based, third- party registrations taken from the USPTO X-Search database showing that a single entity has registered the same mark for goods of the type identified in both applicant’s application and the cited registration. Third-party registrations that individually cover different items and that are based on use in commerce serve to suggest that the listed goods and services are of a type that may emanate from a single source. See Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party registrations are “not evidence that the marks shown Ser No. 76698132 7 therein are in use on a commercial scale or that the public is familiar with them, [they] may nonetheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source”). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Some of the registrations include, by way of example: Registration No. 3095328 for, inter alia, “bicycle parts, namely, wheels and forks” and bicycle parts, namely seats”; Registration No. 3455276 for, inter alia, “bicycle wheels and bicycle parts, namely forks” and “bicycles and bicycle gears”; Registration No. 316221 for, inter alia, “bike forks” and “bicycles and structural parts therefor, namely, bike baskets, bike seats, bike warning bells, and bike panniers”; Registration No. 3490332 for, inter alia, “bicycle wheels and bicycle parts, namely forks and seat posts” and “bicycles and bicycle gears”; and Registration No. 3389922 for, inter alia, “bicycle wheels” and “air pumps of … bicycles.” We find on the face of the respective identifications that applicant’s and registrant’s goods are complementary and/or closely related; that is, applicant’s bicycle components and accessories may be used together with registrant’s bicycles. Moreover, based on the nature of the goods, we find the third-party registrations sufficient Ser No. 76698132 8 to demonstrate that applicant’s bicycle wheels, hubs, bottom brackets, bearings, forks, seat posts and crank sets and registrant’s bicycles, structural parts therefor, and bicycle bells, air pumps, panniers, baskets, seats and gears are closely related, such goods all being bicycles or bicycle components and accessories that are often sold by the same source under the same mark. In an attempt to distinguish its goods from those of registrant, applicant argues that its goods are for road bikes and triathlon bikes, whereas the goods associated with the registered mark are, or are for, mountain bikes. This argument is not well taken. As stated, our determination of the relatedness of the goods is based on a comparison of the goods as identified in the involved application and the cited registration, and not on what any evidence (or argument) may reveal as to the actual nature of the respective goods. Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d at 1815; and Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). In this case, neither applicant’s nor registrant’s respective identifications include limitations with respect to the bicycle type and/or the type(s) of bicycle(s) with which the recited components or accessories are used. Ser No. 76698132 9 Applicant similarly argues that the established, likely to continue trade channels for the goods associated with the marks are very different as mountain bikes are sold through very different channels of trade than are road and triathlon bikes. However, once again, in the absence of any limitations in the identifications of goods as to channels of trade and classes of purchasers in the application and the cited registration, we must presume that the goods will be offered in all usual channels of trade for such goods, such as bicycle shops, and will be purchased by the usual classes of purchasers for those goods, including ordinary purchasers seeking bicycles or a variety of bicycle component parts and accessories. Thus, at a minimum, the channels of trade and classes of purchasers overlap. In re Elbaum, supra. Thus, the du Pont factors of the relatedness of the goods, channels of trade and classes of purchasers strongly favor a finding of likelihood of confusion. With respect to the conditions under which and buyers to whom sales are made, applicant argues that [t]he goods associated with Applicant’s mark are geared toward consumers who are demanding and passionate regarding the products … [who are] looking for very specific qualities in a bike and in the parts for that type of bike; they are very sophisticated consumers. Ser No. 76698132 10 Br. p. 6. As just noted, there is no limitation in either recitation that the goods are purchased solely by “sophisticated” purchasers. As such, we must presume that the respective bicycles and bicycle parts, components and accessories will also be purchased by ordinary consumers who will exercise no more than ordinary care in their purchasing decisions. Moreover, even if the purchasers of applicant’s and registrant’s goods exercise a degree of care in their purchasing decisions, even knowledgeable and careful purchasers can be confused as to source, where, as here, very similar marks are used in connection with complementary and/or closely related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers … are not infallible."). Accordingly, this du Pont factor is neutral. Turning then to the marks, we compare applicant's mark and registrant's mark HAWK BIKES. In determining the similarity or dissimilarity of the marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Ser No. 76698132 11 Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general, rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Applicant argues that the marks are not similar; its mark appearing with all the letters in upper case and as a totally different design6 than the registered mark. Applicant also asserts that the marks do not sound alike or give the same impression. We disagree and find that applicant’s stylized HAWK RACING mark is substantially similar to the cited HAWK BIKES mark. Although we must compare the marks in their entireties, one feature of a mark may be more significant than another and it is not improper to give more weight to 6 As there is no design element in applicant’s mark, we presume that applicant is referring to the stylization of its mark by the use of the term “design.” Ser No. 76698132 12 this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) [“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.”] For instance, as our principle reviewing court has observed, “[t]hat a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of the mark.” See In re National Data Corp., 224 USPQ at 751. In this case, the cited mark consists of two words, the first being the word HAWK, which appears to have no particular meaning in connection with the recited goods. The second word, BIKES, is generic or otherwise merely descriptive of registrant’s identified goods. As such, the term BIKES would not be looked to by consumers as source identifying. Accordingly, the dominant and distinguishing portion of the cited mark is the term HAWK. Applicant’s mark consists of the stylized term HAWK RACING. The word RACING in applicant’s mark also has been disclaimed, as it merely describes a type of bicycle for Ser No. 76698132 13 which applicant’s components and accessories may be used, and likewise would not be looked upon as a source- identifying element. In addition, applicant’s mark is not so highly stylized that its upper case format serves to distinguish that mark from the cited mark given the fact that registrant’s mark is in typed form and, thus, could be displayed in lettering similar to the mark in the cited registration. See, e.g., Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011) (“If the registrant … obtains a standard character mark without claim to any particular font style, size or color, the registrant is entitled to depictions of the standard character mark regardless of font style, size, or color….” (internal quotation marks omitted)); Squirtco v. Tomy Corp, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument concerning a difference in type style is not viable where one party asserts rights in no particular display. By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party”); and In re Hester Industries, Inc., 231 USPQ 881, 883, n.6 (TTAB 1986) (“Inasmuch as the drawing of applicant's mark is in typed form, applicant is not limited to any particular form of display, and might use its mark in the same form as registrant”). We also do not find the Ser No. 76698132 14 colors “red and black” in applicant’s mark to be a distinguishing feature between the two marks. Since the cited registration includes no claim of color, we must consider the possibility that the registrant’s mark may be rendered in the colors red and black. See Citigroup v. Capitol City, supra. See also TMEP § 807.14(e)(i) (7th ed. 2010 and the authority cited therein). For these reasons, even though applicant’s and registrant’s marks contain different wording, because of the descriptive nature of the term RACING in applicant’s mark and the word BIKES in the registered mark, and the lesser weight to which these terms are entitled as we compare the marks in their entireties, applicant’s mark and the registered mark are substantially similar in sound, appearance, connotation and commercial impression. Thus, the factor of the similarity of the marks strongly favors a finding of likelihood of confusion. Applicant maintains that “[t]here are over 70 live trademark registrations on the Trademark Office’s database which contain the term ‘HAWK’ in International Class 12.” Br. p. 7. This assertion, however, is completely unsupported by the record. Even if we were to give the statement some credence, it is devoid of any information regarding the nature of the goods or the marks covered by Ser No. 76698132 15 the “70 registrations” and, thus, is of no probative value with regard to the strength or weakness of the term HAWK in the bicycle industry. Finally, applicant maintains that “there is no recorded confusion regarding the source of the goods associated with the Registered marks and those associated with Applicant’s mark.” Br. p. 7. However, there is nothing in the record to show that there has been meaningful opportunity for such confusion to have occurred. More importantly, in the context of an ex parte proceeding, “the lack of evidence of actual confusion carries little weight.” Majestic Distilling, supra. 65 USPQ2d at 1205. Applicant’s argument regarding actual confusion is therefore unpersuasive, and that du Pont factor is neutral. Based on all of the evidence of record bearing on the relevant du Pont factors, we find applicant’s mark for its identified goods is likely to cause confusion with the cited registration for HAWKS BIKES. We conclude so principally due to the similarity of the marks and the relatedness of the goods. In view of our finding regarding the cited HAWKS BIKES registration, we need not discuss the other cited registrations. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation