KTM-Sportmotorcycle AG

Trademark Trial and Appeal Board

Mar 22, 2011

No. 79019115 (T.T.A.B. Mar. 22, 2011)

Mailed:
March 22, 2011
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re KTM-Sportmotorcycle AG
________

Serial No. 79019115
_______

Donald L. Otto of Renner Otto Boisselle & Sklar, LLP for KTM-
Sportmotorcycle AG.

Christine C. Martin, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
KTM-Sportmotorcycle AG seeks registration on the
Principal Register of the mark KTM POWERWEAR (in standard
character format) for goods identified in the application, as
amended, as follows:
“clothing for protection for motorcyclists for
protection against accidents and fire, namely,
gloves and shoes; protective helmets; knee and
elbow pads for protection against accident and
fire; anti-glare motorcycle goggles; and
sunglasses” in International Class 9; and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79019115
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“clothing, namely, t-shirts, polo-shirts,
sweatshirts, blousons, jackets, pullovers,
shirts, parkas, trousers, overalls, gloves,
gloves for motorcyclists, underwear, socks and
clothing for motorcyclists, namely, pants,
coats, overalls” in International Class 25.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to register
this designation based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney
has taken the position that applicant’s mark, when used in
connection with the identified goods, so resembles the
following mark:

registered for “sport pants and sport clothing, namely
compression pants, shirts and shorts” in International Class

1 Application Serial No. 79019115 was filed on October 18,
2005, based upon a request for extension of protection under
Section 66(a) of the Trademark Act (15 U.S.C. § 1141f(a)),
based on International Registration No. 0860850, that issued
on June 29, 2005.
Serial No. 79019115
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25,2 as to be likely to cause confusion, to cause mistake or
to deceive.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. We affirm the
refusal to register as to both classes of goods.
While applicant appears to concede that some of the
clothing items in its identification of goods are related to
registrant’s goods, applicant argues that its motorcycle
safety gear in International Class 9 would move through
different channels of trade to a different class of
purchasers. In any case, in urging registrability in both
classes, applicant argues that the marks are quite dissimilar
as to appearance, meaning and commercial impression.
Applicant argues that the letters “KTM” comprise applicant’s
house mark and are clearly the dominant element of its
composite mark involved herein, and by contrast, that the
design element is the dominant portion of the registered
mark. Accordingly, applicant takes the position that when
applicant's mark and the registered mark are viewed in

2 Registration No. 3045589 issued on January 17, 2006. The
color(s) Red and Black are claimed as a feature of the mark. The
color red appears in the word “wear,” the runner’s head and the
forward leading portion of the runner’s body. The color black
appears in the word “power,” the front leg and the back arm of the
runner.
Serial No. 79019115
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their entireties, the dissimilarities in the marks
outweigh all other relevant du Pont factors.3
By contrast, the Trademark Examining Attorney contends
that the respective marks are highly similar and that the
goods are overlapping in International Class 25 and are
otherwise closely related.
Our determination under Section 2(d) of the Trademark
Act is based upon an analysis of all of the facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The Trademark
Examining Attorney must demonstrate by a preponderance of the
evidence that there is a likelihood of confusion. In any
likelihood of confusion analysis, the two key considerations
are the similarities between the marks and the relationship
between the goods. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factors focused on the
relationship of registrant’s and applicant’s goods and their
trade channels. It is sufficient that the respective goods
are related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such

3 Citing to Kellogg Co. v. Pack'Em Enterprises, Inc.,
951 F. 2d 330, 333, 21 USPQ2d 1142 (Fed. Cir. 1991).

Serial No. 79019115
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that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same source. See Hilson Research, Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993); and In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
We make our determination regarding the similarities
between the respective goods, channels of trade and classes
of purchasers based upon the goods as they are identified in
the application and registration, respectively. Octocom
Systems Inc. v. Houston Computers Services, Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Under this
standard, simply comparing the International Class 25 goods
as listed, we conclude that applicant’s item “pants” is broad
enough to encompass registrant’s “compression pants.” In
fact, as we will see infra, some retailers of motorcycle gear
(including applicant) do sell compression pants.
In considering this du Pont factor, we acknowledge that
there is no per se rule governing likelihood of confusion in
cases involving clothing items. In re British Bulldog, Ltd.,
224 USPQ 854 (TTAB 1984). However, in numerous cases in the
past, many different types of apparel have been found to be
related products which are sold in the same trade channels to
Serial No. 79019115
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the same classes of purchasers, including to ordinary
consumers, and that confusion is likely to result if the
goods were to be sold under similar marks.4
In support of her position, the Trademark Examining
Attorney has submitted for the record a representative
sampling of third-party registrations showing marks used in
connection with goods of the type identified in both classes
of applicant’s goods as well as the type identified by
registrant in the cited registration. “Third-party
registrations which cover a number of differing goods and/or
services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
may nevertheless 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.” In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See

4 Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623,
128 USPQ 549 (CCPA 1961) [women’s boots related to men’s and boys’
underwear]; Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d
1233 (TTAB 1992) [underwear related to neckties]; In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991) [women’s pants, blouses, shorts
and jackets related to women’s shoes]; In re Pix of America, Inc.
225 USPQ 691 (TTAB 1985) [women’s shoes related to outer shirts];
In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) [hosiery
related to trousers]; In re Cook United, Inc., 185 USPQ 444 (TTAB
1975) [men’s suits, coats, and trousers related to women’s
pantyhose and hosiery]; and Esquire Sportswear Mfg. Co. v. Genesco
Inc., 141 USPQ 400 (TTAB 1964) [brassieres and girdles related to
slacks for men and young men].
Serial No. 79019115
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In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
QUADURANCE
for “athletic apparel, namely, T-shirts,
shirts, shorts, pants, sweatshirts, warm-
up suits, running suits; undergarments,
namely, sports bras, tank tops, compression
shorts; outerwear, namely, jackets; and
accessories, namely, gloves for warmth,
hats, and socks” in International Class 25;5

for “protective helmets for motorcyclists
… eyeglasses, sunglasses, goggles,
eyeglass frames; protective clothing for

for , inter alia, “ … helmets for
motorcyclists” in International Class 9;
“Apparel, namely raincoats, jerseys, pants,
gloves” in International Class 25;7
for “motorcycle helmets, bicycles helmets,
snowmobile helmets, automobile racing
helmets, motorcycle goggles, bicycle
goggles, snowmobile goggles, goggles for
sports” in International Class 9;
“boots, namely, motorcycle boots,
automobile racing boots, motorcyclists'
and automobile racers' clothing, namely,
automobile racing jackets, automobile racing
pants, sweatpants, t-shirts, polo shirts,
sweatshirts and sports shirts” in
International Class 25;6
ROSHIN motorcyclists, namely, protective suits, protective jackets, knee pads, shoulder
pads, elbow pads, and parts thereof” in
Int.Cl. 9;
“clothing for motorcyclists, namely…
warm up suits, sport suits, jackets, t-
shirts, sport shirts, sweaters, trousers,
jeans, pullovers; weather resistant
jackets, overalls, anoraks, and raincoats;
gloves; … shoes, boots, and boot covers”
in Int. Class 25;8
for, inter alia, “motorcycle helmets;
motorcycle goggles, sunglasses;
protective clothing for motorcyclists, …
body protectors, namely, leg, arm, shoulder,
chest and back protectors” in International
Class 9;
“casual wear, namely, hats, t-shirts,
sweaters, jackets, shorts and vests” in
International Class 25;9

for , inter alia, “all-terrain vehicle rider safety
and protective clothing and equipment,
namely, eyeglasses, goggles, helmets, body
armors, body protectors, suits, protective face
masks, gloves” in International Class 9;
Roland Sands Design
for, inter alia, “motorcycle helmets and
eyewear” in International Class 9;
“clothing, namely, T-shirts, sweatshirts
and pants, jackets, gloves, caps, hats,
belts, leather boots and shoes” in Class
25;10
“clothing, namely, jerseys, coats, ear muffs,
jackets, gloves, hats, jeans, pants, rainwear,
shirts, shorts, socks, sport coats, sport
shirts, suits, belts, vests, shoes, boots” in
International Class 25;12

for “motorcycle helmets” in Int. Class 9;
“clothing, namely, jackets, gloves,
sweatshirts, fleeces, t-shirts, hats, caps,
polo shirts” in International Class 25;13
NY ALL STARS
for “clothing, namely, shirts, shorts, jerseys,
uniforms, hats, caps, scarves, headbands,
jackets, coats, tops, pants, socks, shoes,
footwear, boots, slippers, sneakers, athletic
footwear, underwear, sleepwear, ties,
bottoms, wristbands, sweatbands, hosiery,
sweat shirts, sweat pants, t-shirts,
swimwear, beachwear, dresses, jumpers, play
suits, thermal underwear, boxer shorts,
jeans, jumpsuits, skirts, overalls, leggings,
warm-up suits, compression shorts” in
International Class 25;11

5 Registration No. 3231531 issued on April 17, 2007.
6 Registration No. 3263908 issued on July 17, 2007. No claim is
made to the exclusive right to use the word “Helmets” apart from
the mark as shown.
7 Registration No. 3400469 issued on March 25, 2008.
8 Registration No. 3177863 issued on November 28, 2006.
9 Registration No. 3443411 issued on June 10, 2008.
10 Registration No. 3504375 issued on September 23, 2008. No
claim is made to the exclusive right to use the word “Design” apart
from the mark as shown. The name “Roland Sands” identifies a
living individual whose consent is of record.
11 Registration No. 3532351 issued on November 11, 2008. No
claim is made to the exclusive right to use the designation “NY”
apart from the mark as shown.
12 Registration No. 3486149 issued on August 12, 2008.
13 Registration No. 3619461 issued on May 12, 2009.
Serial No. 79019115
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A review of the third-party registrations, when combined
with the other evidence in the record, teaches us several
things about the involved goods. First, manufacturers and
merchants of riding gear and apparel sell a variety of
thermal underwear products under the same trademark as safety
equipment (e.g., helmets, goggles and sunglasses) and other
items of apparel (both underwear and outerwear). Second,
items of compression sports clothing have often been targeted
to athletes such as bicyclists and runners. For example,
registrant’s description of its mark identifies the imagery
as representing a “runner.” Athletic apparel made of state-
of-the-art, compression materials provides the benefits of
comfortable moisture-wicking materials with a compression fit
for muscle support to reduce fatigue. These very benefits
have prompted a move into compression shorts and pants for
sport motorcyclists. Finally, in addition to year-round
comfort, thermal compression pants for bikers ensure optimal
protection for cold-weather riding conditions. For a
succinct summary of these points, we need look no further
than applicant’s own language in several related websites
(each listing the same sixteen SKU’s for its “Layer-Tech”
compression pants) with the identical introductory paragraph
highlighted below:
Serial No. 79019115
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14

“Don’t pull on your racing
pants without a base
layer. Athletes in all
sports are wearing
compression-type layers
for the incredible benefits
they provide. Steady
pressure holds muscles
firmly in place during
constant activity while
allowing a full range of
motion and maximum
comfort. Use the Layer-
Tech Pants in warm
weather to wick away
moisture and the Layer-
Tech Thermal Pants in
colder weather to help
regulate your body
temperature.”
15
Other manufacturers also market the goods of both
parties. For example, from two different websites we learn
that Alpinestars sells compression shorts, of the type
marketed by registrant, and the types of motorcycle safety
equipment and apparel listed in the involved application:

14 http://www.ktmcycles.com/
15 www.cernics.com/
Serial No. 79019115
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16
17

Given the lack of restrictions in the identifications of
goods, we must presume that the goods might well travel
through the same ordinary trade channels, including retailers
of motorcycle gear and retailers of apparel and all kinds of

16 www.newenough.com/, as accessed by the Trademark Examining
Attorney on August 12, 2009.
17 http://www.ridersdiscount.com/alpinestars/street-
gear/protection-adult/
Serial No. 79019115
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recreational, athletic and outdoor gear. For example, the
Examining Attorney points out that retailers of outdoor
equipment such as REI sell running
shorts (e.g., UNDER ARMOUR compression
shorts) as well as t-shirts, trousers,
sunglasses, jackets and gloves. 18

The site of INTERNATIONAL JOCK features
shirts as well as compression shorts.19
Men’s Adidas Sport TECHFIT padded
compression shorts appear next to the
index for jackets, shirts, pants, etc.
20
Furthermore, all of these goods would be sold to the
same classes of ordinary customers. An individual racing a
motorcycle who purchases biking gear at www.ktmcycles.com/
may also be a runner who purchases compression pants at REI’s
local brick-and-mortar retail outlet. Moreover, while some
of applicant’s goods will involve price points calling for
extra care in the purchasing decision, applicant’s socks and
sunglasses, or registrant’s shorts, for example, will
presumably involve some less expensive items that may be
subject to an impulse purchase, even during the same shopping
trip.

18 www.rei.com/
19 http://www.internationaljock.com/
20 http://www.shopadidas.com/
Serial No. 79019115
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Accordingly, we find that under these conditions – i.e.,
(1) where the same trademarks are used for compression shorts
and pants as are used for a wide range of apparel for bikers
and for motorcycle safety equipment; and (2) where the same
channels of trade (e.g., retailers of riding gear and
apparel) are carrying these respective goods – if these goods
are sold under confusingly similar trademarks, they could
well give rise to the mistaken belief that they originate
from the same source. These related du Pont factors all
weigh in favor of finding a likelihood of confusion.
We turn then to the similarities of the marks. In doing
so, we must compare applicant’s mark KTM
POWERWEAR to registrant’s mark
(shown again herein), in their
entireties as to appearance, sound,
connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The test,
under the first du Pont factor, 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
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
Serial No. 79019115
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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. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In comparing the marks, applicant’s mark must be
considered in its entirety, including the letters “KTM.”
Applicant says that “the element KTM of applicant's mark has
worldwide significance with the motorcycle trade and
industry and is well known for sport motorcycles all over
the world.” Applicant’s brief at 2. However, in the present
case, applicant has taken the sole literal portion of
registrant’s cited mark, “Powerwear,” and combined it with
applicant’s house mark. On this record, registrant’s
“Powerwear” mark has to be presumed to be an arbitrary mark
for the involved goods.21 At the same time, however, it
represents a prominent portion of applicant’s mark.
Applicant, as the junior user, cannot justify its confusing
use of opposer’s “Powerwear” mark simply by adding on its own
house mark. “Such a usage may merely suggest to customers
that [registrant] has licensed [applicant] or that the
parties are affiliated in some other way.” 3 J.T. McCarthy,

21 Although during the course of prosecution applicant argued
that the term “Powerwear” would not be registrable alone as a
source indicator, this position was not maintained in applicant’s
final brief.

Serial No. 79019115
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MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 23:43 (4th ed. 2011).
See also In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1364 (TTAB
2007) [MVP and CLUB PALMS MVP are confusingly similar; “When,
as in this case, the common part of the marks is identical,
purchasers familiar with registrant’s mark are likely to
assume that the house mark simply identifies what had
previously been an anonymous source.”].
It is true that the cited mark contains a prominent
design, and registrant claims color as a feature of the mark.
And even though registrant intended for the abstract design
to represent a runner, we cannot know whether most
prospective purchasers will interpret it that way. In any
case, it is critical in making this determination as to these
goods to note that it is the literal portion of the cited
mark that consumers will use to call for registrant’s
products. Hence, the similarity between the marks weighs in
favor of a finding of a likelihood of confusion.
Finally, to the extent that the likelihood of confusion
issue is close, we are obligated to resolve doubts in favor
of the registrant and prior user. In re Hyper Shoppes,
837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In conclusion, we find that the goods are closely
related; we find that the respective goods will flow through
similar channels of trade to the same classes of purchasers;
Serial No. 79019115
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and we find that the marks are sufficiently close as to
appearance, connotations and commercial impressions to
support a finding of likelihood of confusion.
Decision: The refusal to register under Section 2(d) of
the Lanham Act is hereby affirmed.