HL USA, Inc.

Trademark Trial and Appeal Board

May 18, 2001

No. 75564084 (T.T.A.B. May. 18, 2001)

5/18/01 Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re HL USA, Inc.
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Serial No. 75/564,084
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Eric K. Karich, Esq. for HL USA, Inc.
David A. Stine, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
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Before Hohein, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
HL USA, Inc. has filed an application to register the
mark "CHILI WORKS" and design, as reproduced below,
for "bicycle parts, namely, suspension forks."1
1 Ser. No. 75/564,084, filed on October 2, 1998, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
application states that: "The mark consists in part of a stylized
representation of a chili pepper."
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/564,084
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "HOT CHILI," which is registered for "human powered cycles,
namely, bicycles and structural parts therefor,"2 as to be likely
to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), "in any likelihood of confusion
analysis[,] two key considerations are the similarity of the
goods and the similarity of the marks."3 Here, inasmuch as
applicant's goods are identical in part to registrant's goods,
inasmuch as a suspension fork is a bicycle structural part, and
are otherwise closely related to registrant's bicycles, the
respective goods would be sold through the same channels of trade
to the identical classes of purchasers. The principal focus of
2 Reg. No. 2,034,148, issued on January 28, 1997, which sets forth a
date of first use anywhere of April 30, 1994 and a date of first use
in commerce of September 15, 1994.
3 The court, in particular, pointed out that: "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."
Ser. No. 75/564,084
3
our inquiry, therefore, is on the similarities and
dissimilarities in the marks at issue when considered in their
entireties. Moreover, as pointed out in Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994),
"[w]hen marks would appear on virtually identical goods ... , the
degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines."
Applicant argues that the fact that two marks share the
same term does not necessarily mean that the marks create a
similar commercial impression. In particular, applicant asserts
that the fact that the marks at issue herein contain the common
word "CHILI" does not suffice to engender a similar commercial
impression because "they use the term entirely differently."
According to applicant:
HOT CHILI focuses on the term HOT, with all
of the connotations that arise from the term
HOT, including the slang meaning of "full of
or characterized by any very strong feelings,
or by intense activity, speed, excitement,
enthusiasm, ... sexual desire ...."
Websters® New World Dictionary.
CHILI WORKS, however, focussed [sic] on
the term "works" which is suggestive of the
term "skunk works," which is defined by the
American Heritage® Dictionary of the English
Language as "a small, loosely structured
corporate research and development unit or
subsidiary formed to foster innovation."
....
Translated by the target consumer, HOT
CHILI suggests that the products are
generally "intense" and "exciting," while
CHILI WORKS suggests that the products come
from a high technology R&D department that
makes cutting edge products. Notwithstanding
Ser. No. 75/564,084
4
[the] Examiner's conclusory statements to the
contrary, applicant's mark does not create a
commercial impression that is similar to the
[mark of the] prior registration.
Applicant also contends that "despite the inclusion of
the word CHILI in both marks," the marks are distinguishable in
sound and appearance. Specifically, applicant notes that, both
when pronounced and when viewed in a side-by-side comparison,4
the respective marks "include different secondary terms and the
word orders are inverted." Because, according to applicant,
"these differences are substantial," applicant urges that
confusion is not likely.
We agree, however, with the Examining Attorney that,
when considered in their entireties, the respective marks are
"quite similar in overall commercial impression" due to the
shared presence of the term CHILI, which clearly appears to be
arbitrary as used in connection with bicycles and such structural
parts thereof as suspension forks. As the Examining Attorney
persuasively notes in his brief:
While the respective marks must be considered
in their entireties ..., it is nevertheless
proper to recognize that one feature of a
4 Such a comparison, as the Examining Attorney correctly points out in
his brief, is not the proper test to be used in determining the issue
of likelihood of confusion inasmuch as it is not the ordinary way that
customers will be exposed to the marks. Instead, it is the similarity
of the general overall commercial impression engendered by the marks
which must determine, due to the fallibility of memory and the
concomitant lack of perfect recall, whether confusion as to source or
sponsorship is likely. The proper emphasis is accordingly on the
recollection of the average purchaser, who normally retains a general
rather than a specific impression of marks. See, e.g., Envirotech
Corp. v. Solaron Corp., 211 USPQ 724, 733 (TTAB 1981); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); and Grandpa
Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ
573, 574 (CCPA 1973).
Ser. No. 75/564,084
5
mark may be more significant in creating a
commercial impression. Greater weight is
given to that dominant feature in determining
whether there is a likelihood of confusion.
In re National Data Corp., [753 F.2d 1056,]
224 USPQ 749 (Fed. Cir. 1985); Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693 (CCPA 1976). ....
Application of these standards to the
instant case clearly indicates that the
identical, and completely arbitrary, term
"CHILI" is the obvious dominant feature of
both marks. In applicant's mark, the entity
designation "Works" is clearly subordinate in
size, location and overall presentation to
the "CHILI" brand mark. The "Chili"
significance is reinforced by the graphical
presentation of a chili pepper. The
remaining design element comprises a mere
background for the wording and presents no
objective basis upon which the respective
marks may be distinguished.
Similarly, the overall commercial
impression created by the registered mark is
dominated by the identical term ... "CHILI."
The addition of the adjective ... "HOT" has
little real impact on the overall commercial
impression created by the registered mark,
which clearly creates the overall impression
of a variety of the "CHILI" brand.
We accordingly concur with the Examining Attorney's
conclusion that "prospective purchasers are likely to assume,
incorrectly, that applicant's 'CHILI WORKS' [and design] brand
bicycle components[, namely, suspension forks,] are designed for
use in connection with registrant's 'HOT CHILI' bicycles or that
registrant's 'HOT CHILI' bicycles and [structural] components are
a variety or model of the goods produced by the [same source as
applicant's] 'CHILI WORKS' [and design brand bicycle suspension
forks]". Moreover, even assuming that customers for bicycles and
their structural parts, such as suspension forks, notice and
Ser. No. 75/564,084
6
remember the differences in sound and appearance between the
respective marks, it is still the case that the arbitrary term
"CHILI" so dominates each mark that, for example, consumers
familiar with registrant's "HOT CHILI" mark for bicycles and
structural parts therefor could reasonably assume, upon
encountering applicant's "CHILI WORKS" and design mark for
bicycle suspension forks, that applicant's goods constitute a new
or additional line of components from registrant which are
specially designed for use with registrant's "HOT CHILI"
bicycles. Confusion as to origin or affiliation is therefore
likely to occur from the contemporaneous use of respective marks
in connection with identical and otherwise closely related goods.
Nevertheless, as a final consideration, applicant
contends that confusion is unlikely because purchasers of
bicycles and specialized component parts thereof, such as
suspension forks, are knowledgeable and sophisticated consumers
who "are familiar with the industry and the various
manufacturers" of the goods at issue. Essentially, applicant
insists that such goods are not "a general consumer product,
which is purchased by consumers on the spur of the moment with
little forethought," but are instead relatively expensive
products which are selected with a great degree of care.
However, as the Examining Attorney notes, applicant's
assertions are not only unsupported by any evidence, but in any
event "bicycles are a relatively basic and unsophisticated item,
which may be commonly purchased and used by many people lacking
particular expertise in the field of cycling." Moreover, even
Ser. No. 75/564,084
7
assuming that at least some buyers of bicycles and their
structural parts are highly sophisticated and discriminating
consumers, we observe that the fact that consumers may exercise
care or thought in choosing the respective products "does not
necessarily preclude their mistaking one trademark for another"
or that they otherwise are entirely immune from confusion as to
source or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re Decombe, 9
USPQ2d 1812, 1814-15 (TTAB 1988); and In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). Here, the overall
commercial impression engendered by applicant's "CHILI WORKS" and
design mark and registrant's "HOT CHILI" mark is so similar, due
to the shared presence of the arbitrary and dominant term
"CHILI," that the contemporaneous use thereof in conjunction with
bicycle suspension forks, on the one hand, and bicycles and their
structural parts (which would include suspension forks), on the
other, is likely to cause confusion, even among knowledgeable and
discriminating consumers of such goods.
Decision: The refusal under Section 2(d) is affirmed.