Klein Bicycle Corp.

Trademark Trial and Appeal Board

Aug 10, 1998

No. 74436521 (T.T.A.B. Aug. 10, 1998)

Paper No. 24
RLS/KRD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 10, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Klein Bicycle Corporation
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Serial No. 74/436,521
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Jim Zegeer for Klein Bicycle Corporation.
Andrew P. Baxley, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
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Before Simms, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Klein Bicycle Corporation (applicant), a corporation of
the state of Washington, has appealed from the final refusal
of the Trademark Examining Attorney to register the mark
PRIME for high technology bicycle tire rims.1 The Examining
Attorney has refused registration under Section 2(d) of the
Act, 15 USC §1052(d), on the basis of Registration No.
1,898,080, issued June 6, 1995, for the mark PRIME AERO (in

1 Application Serial No. 74/436,521, filed September 17, 1993,
based upon applicant’s bona fide intention to use the mark in
commerce under Section 1(b) of the Act, 15 USC §1051(b).
Ser No. 74/436,521
2
the form shown below) for bicycles and structural parts
thereof: namely, frames, brakes, chains, handlebars,
saddles, gears, wheels, and gear shifters.2
Applicant and the Examining Attorney have submitted briefs
but no oral hearing was requested.
We affirm.
Applicant argues that confusion is unlikely for several
reasons. First, applicant points to the suggestive nature
of the term “PRIME,” as well as a number of third-party
registrations which include the term “PRIME.”3 Accordingly,
applicant argues that the term “PRIME” is a weak mark and
that, therefore, protection should be afforded against only
substantially similar trademarks which contain this word.
With respect to the goods, applicant maintains that its high

2 In his appeal brief, the Examining Attorney has withdrawn the
refusal of registration under Section 2(d) with respect to two
other registered marks which the Examining Attorney had earlier
cited against registration of applicant’s mark. These two
registrations, both held by the same entity, covered the marks
PRIME and PRIME USA for a number of items of bike clothing as
well as identification plates for bicycles, among other goods.
The Examining Attorney has stated that one of these registrations
has become “abandoned,” while an affidavit filed under Sections 8
and 15 of the Trademark Act, 15 USC §§1058 and 1065, deleted “the
relevant goods” from the identification in the other
registration.
3 Applicant has submitted a computer printout of over four
hundred such third-party registrations.
Ser No. 74/436,521
3
technology bicycle rims will likely be purchased by
discriminating purchasers who are not likely to be confused.
The Examining Attorney concedes that “PRIME” is a
“laudatorily suggestive” word meaning, among other things,
“of first importance,” “first in rank, authority, or
significance,” or “having the highest quality or value.”
The Examining Attorney argues, however, that “PRIME” is the
dominant part of the registered mark “PRIME AERO.” The term
“AERO” in the registered mark, as used in connection with
the goods listed in the registration, would be considered
“puffery,” according to the Examining Attorney, because
“bicycles generally do not fly in an aeronautic sense.”
Brief, 3. It is the Examining Attorney’s position that the
common use of “PRIME” in both marks gives them the “same
overall commercial impression.”
Further, the common use of PRIME by the
applicant and the registrant is likely
to cause reverse confusion by giving
consumers, who retain only a general
recollection of trademarks, a mistaken
belief that that [sic] prime is a house
mark for both the applicant’s and the
registrant’s goods and that PRIME AERO
bicycles and structural parts therefor
are made by the applicant.
Brief, 3.
With respect to the goods, the Examining Attorney
points out that there is no limitation in the registration.
Accordingly, the Examining Attorney states that he must
presume that registrant’s goods include “high technology”
Ser No. 74/436,521
4
bicycles and parts therefor. According to the Examining
Attorney, applicant’s goods may, therefore, be replacement
parts for registrant’s bicycles. The Examining Attorney
also notes that the registration lists “wheels,” goods which
are identical or similar to applicant’s tire rims. The
Examining Attorney argues that the goods of registrant and
applicant would be sold in the same channels of trade
(bicycle stores) to the same class of purchasers --
bicyclists.
We agree with the Examining Attorney that the
respective goods are substantially similar. And, as we and
the Court of Appeals for the Federal Circuit have noted,
where the goods are identical or substantially similar, less
similarity is required in the marks in order to support a
finding of likelihood of confusion. Century 21 Real Estate
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
With respect to the marks –- PRIME and PRIME AERO -– we
believe this is a relatively close case. The registered
mark contains the additional word “AERO” not contained in
applicant’s mark. This word creates some difference in the
respective marks. However, given the fallibility of memory
and other factors, consumers may well believe that bicycle
parts sold under the marks PRIME and PRIME AERO come from
the same source. Purchasers may well believe, as the
Ser No. 74/436,521
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Examining Attorney contends, that PRIME is a house mark and
that the PRIME AERO goods are another line of products
coming from the same source. If there is any doubt in this
matter, according to precedent, that doubt must be resolved
in favor of the registrant and against the newcomer. We
also observe, as did the Examining Attorney, that the
numerous third-party registrations cover goods remote from
bicycle equipment (except for the registration covering the
mark PRIME VISION for a type of bicycle computer). In any
event, third-party registrations, without more, are not
evidence of what happens in the marketplace or that the
public is familiar with them. See AMF Inc. v. American
Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268, 269-70
(CCPA 1973).
Decision: The refusal of registration is affirmed.
R. L. Simms
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges,
Trademark Trial and
Appeal Board