KTM-Sportmotor-cycle AG

Trademark Trial and Appeal Board

Feb 8, 2018

No. 79147141 (T.T.A.B. Feb. 8, 2018)

Mailed: February 8, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re KTM-Sportmotorcycle AG
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Serial Nos. 79147140 and 79147141
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Donald L. Otto of Renner Otto Boisselle & Sklar LLP
for KTM-Sportmotorcycle AG.
Saima Makhdoom, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Wellington, Wolfson and Coggins,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
On December 6, 2017, the Board suspended proceedings to allow Registrant time
to file a request under Trademark Act Section 7(e) to restrict a registration. On
January 12, 2018, Registrant filed the Section 7(e) request, asking that the
identification of goods in Registration No. 4192491 in Classes 7 and 12 be limited to
goods designed exclusively for “four-wheeled” vehicles.1

1 The class 7 goods were amended as follows: “Machine parts for four-wheeled vehicles,
namely, cam shafts, cam shaft parts in the nature of cam covers for four-wheeled vehicles
and cam shaft modules made therefrom in the nature of cam covers for four-wheeled vehicles,
variable camshaft adjustment parts in the nature of cam covers for four-wheeled vehicles,
connecting rods for four-wheeled vehicles, in particular from steel or ceramics, one-piece and
composite connecting rods, crank shafts for use in connection with four-wheeled motor
vehicles, composite and assembled crankshafts for use in connection with four-wheeled motor
This Opinion is not a
Precedent of the TTAB
Serial Nos. 79147140 and 79147141

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On February 5, 2018, the Office entered Registrant’s request, after which the
Board resumed proceedings. In view of the present limitation to “four-wheeled
vehicles” in the identification of goods in the cited registration, the continued
limitation to “two-wheeled vehicles” in Applicant’s applications, and the terms of
Applicant’s and Registrant’s Consent Agreement, we find that Applicant’s marks
E SPEED and , for the identified goods in International

vehicles, pistons for use in connection with four-wheeled motor vehicles, compressors for four-
wheeled vehicles, namely, electronic compressors, and components for variable compression,
namely, cam shafts, engines not for motor vehicles, and engine parts for four-wheeled
vehicles, namely, cam shafts, pumps for four-wheeled vehicles, namely, pumps as parts of
machines, and hybrid drives for four-wheeled vehicles, namely, variable speed drives for
machines, joints and shock absorbers for four-wheeled vehicles, namely, shock absorbers for
machines; transmissions for four-wheeled vehicles, air-conditioning compressors for four-
wheeled vehicles.”

The class 12 goods were amended as follows: “Automotive parts for four-wheeled vehicles, in
particular pumps, namely, air pumps, hybrid drives, namely, engines for four-wheeled land
vehicles, engine parts, namely, engine parts for four-wheeled land vehicles, and units for the
drive train made therefrom, namely, wheel hubs, wheel bearings, wheel bearing units,
namely, wheel bearings, and parts thereof, namely, drive shafts and gear wheels and units
assembled thereof, namely, gear wheel units, speed-increasing gears, namely, gear wheels,
speed-reducing gears, namely, gear wheels, shifting claws, namely, gear shifts, differential
gears, namely, gear wheels, lightweight gears, namely, gear wheels, low-cost gears, namely,
gear wheels; connecting rods for four-wheeled land vehicles, except for engine parts, in
particular from steel and ceramics, in particular one-piece and composite connecting rods;
engines for four-wheeled automobiles, in particular lightweight internal combustion engines;
units for drive train of four-wheeled automobiles, namely, wheel hubs, wheel bearings, wheel
bearing units, namely, wheel bearings, constant velocity and length adjustment units,
namely, wheel bearings; longitudinal shafts for four-wheeled vehicles, namely, drive shafts;
side shafts for four-wheeled vehicles, namely, drive shafts; torsion shafts, namely, drive
shafts, all for four-wheeled automobiles and parts thereof, included in this class, in particular
drive shafts, hubs, namely, wheel hubs, connections for longitudinal shafts, namely, drive
shafts for four-wheeled land vehicles, side shafts, namely, drive shafts for four-wheeled land
vehicles, and torsion shafts, namely, drive shafts for four-wheeled land vehicles; automobile
transmissions and parts thereof for four-wheeled vehicles, in particular shafts, namely, drive
shafts for four-wheeled land vehicles and gear wheels and units assembled thereof for four-
wheeled vehicles, namely, gear wheels, speed-increasing gears, namely, gear wheels, and
speed-reducing gears, namely, gear wheels, synchromesh transmissions, shifting claws,
namely, gear wheels, transmissions for electric drives.”
Serial Nos. 79147140 and 79147141

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Classes 6, 7 and 12, are not likely to cause confusion with the mark ESPEED in
Registration No. 4192491.
Decision: The refusals under Section 2(d) are reversed and application Serial
Nos. 79147140 and 79147141 will proceed to registration in due course.