Kuryakyn Holdings, Inc.

Trademark Trial and Appeal Board

Jun 10, 2009

No. 77347508 (T.T.A.B. Jun. 10, 2009)

Mailed:
June 10, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kuryakyn Holdings, Inc.
________

Serial No. 77347508
Serial No. 77348214
_______

John M. Weyrauch of Dicke, Billig & Czaja, PLLC for
Kuryakyn Holdings, Inc.

Christopher Buongiorno, Trademark Examining Attorney, Law
Office 102 (Karen M. Strzyz, Managing Attorney).
_______

Before Grendel, Holtzman and Rogers, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Kuryakyn Holdings, Inc. (applicant) has appealed the
refusals of registration in each of the above-captioned
applications. The appeals were consolidated by order of
the Board dated December 16, 2008, and we shall decide them
in this single opinion.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 77347508 and 77348214
2
In application Serial No. 77347508,1 applicant seeks
registration on the Principal Register of the mark ZOMBIE
(in standard character form) for goods identified in the
application as “motorcycle aftermarket parts and
accessories, namely, shift linkage rods, foot pegs, oil
filler caps and windshields,” in Class 12.
In application Serial No. 77348214,2 applicant seeks
registration of the same mark, ZOMBIE, for Class 12 goods
identified in the application as:
motorcycle parts, namely, axle covers, brake
pedals, brake pedal pads, foot peg heel rests,
floorboards, floorboard covers, handle bar grips,
front dash panels, dash panel inserts, fuel tank
panels, fender trims, namely, chrome plated
plastic decorative trims, fender ornaments, gas
caps, dipsticks, horn covers, master brake
cylinder covers, air cleaner covers, ignition
coil covers, latch covers, saddlebag lid covers,
saddlebags, motorcycle luggage, namely, fitted
carriers for traveling tank bags, windshield
trims, fairing trims, wheels, hub spinners,
mirrors, brake and clutch levers, shift levers,
shift pegs, shift arm covers, saddlebag mount
bracket covers, sissy bars, license plate frames,
luggage racks, kick stands.

1 This application was filed on December 9, 2007. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). February 28, 2006 is alleged
in the application as the date of first use of the mark anywhere
and the date of first use of the mark in commerce.

2 This application was filed on December 10, 2007. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce, under Trademark Act Section 1(b), 15
U.S.C. §1051(b).

Ser. Nos. 77347508 and 77348214
3
In each of the applications, the Trademark Examining
Attorney has issued a final refusal of registration on the
ground that applicant’s mark ZOMBIE, as applied to
applicant’s goods, so resembles the mark ZOMBIE, previously
registered on the Principal Register for Class 9 goods
identified in the registration as “safety helmets for use
in active sports, namely, motorcycling,”3 as to be likely to
cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal in each
application. Applicant and the Trademark Examining
Attorney have filed briefs on appeal.
After careful consideration of all of the evidence of
record and the arguments of counsel, we affirm the refusal
to register in each application.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d

3 Registration No. 3128846, issued on August 15, 2006. The
registration is owned by KBC America, Inc.
Ser. Nos. 77347508 and 77348214
4
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn first to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. We find that applicant’s
mark ZOMBIE (in standard character form) and the
previously-registered mark ZOMBIE (also in standard
character form) are identical in terms of appearance,
sound, connotation and commercial impression. Further with
respect to connotation and commercial impression, we find
that ZOMBIE is an arbitrary mark, and that whatever
connotation and commercial impression it might have as
applied to applicant’s motorcycle parts and accessories, it
would have the same connotation and commercial impression
as applied to registrant’s motorcycle helmets.
We reject applicant’s argument that confusion is
unlikely because applicant and the registrant use their
respective house marks with their ZOMBIE marks. In this
proceeding involving the registrability of applicant’s
mark, our comparison of the marks is based on the marks as
Ser. Nos. 77347508 and 77348214
5
they are depicted in applicant’s applications and in the
cited registration, respectively. Interstate Brands Corp.
v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). Neither
applicant’s mark as depicted in the applications nor the
cited registered mark as depicted in the registration
includes a house mark.
Because applicant’s mark is identical to the cited
registered mark, we find that the first du Pont factor
weighs heavily in favor of a finding of likelihood of
confusion in this case.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration,
respectively. It is settled that it is not necessary that
these respective goods be identical or even competitive in
order to find that they are related for purposes of our
likelihood of confusion analysis. That is, the issue is
not whether consumers would confuse the goods themselves,
but rather whether they would be confused as to the source
of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB
1984). The goods need only be sufficiently related that
consumers would be likely to assume, upon encountering the
goods under similar marks, that the goods originate from,
are sponsored or authorized by, or are otherwise connected
Ser. Nos. 77347508 and 77348214
6
to the same source. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). Moreover, in cases such as this
where the applicant’s mark is identical to the cited
registered mark, there need be only a viable relationship
between the respective goods in order to find that a
likelihood of confusion exists. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus
One Inc., 60 USPQ2d 1812 (TTAB 2001); and In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Applying these principles in the present case, we find
as follows.
Applicant’s and registrant’s goods are not identical,
but they are similar and related in that they are products
specifically for use in connection with motorcycles and
motorcycling. The Trademark Examining Attorney has made of
record printouts of five use-based third-party
registrations in which motorcycle parts like applicant’s
and motorcycle helmets like registrant’s both appear in the
identification of goods.4 Although such registrations are

4 Reg. Nos. 2376674, 3080191, 2838455, 3220548 and 3344150,
attached to the March 26, 2008 final Office action.
Ser. Nos. 77347508 and 77348214
7
not evidence that the marks shown therein are in use or
that the public is familiar with them, they nonetheless
have probative value to the extent that they serve to
suggest that the goods listed therein are of a kind which
may emanate from a single source under a single mark. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988).
Based on this evidence, we find that motorcycle parts
like applicant’s and motorcycle helmets like registrant’s
are related goods which are or can be marketed by a single
source under a single mark. As noted above, there need be
only a viable relationship between the respective goods
where the marks involved are identical. We find that the
requisite relationship between the goods exists in this
case. Accordingly, we find that the second du Pont factor
weighs in favor of a finding of likelihood of confusion.
Under the third du Pont factor, we consider evidence
relating to the similarity or dissimilarity of the trade
channels in which the respective goods are or would
normally be marketed. We find that motorcycle parts like
applicant’s and motorcycle helmets like registrant’s are
marketed in the same retail trade channels, and to the same
specific class of consumers, i.e., motorcyclists. The
Ser. Nos. 77347508 and 77348214
8
Trademark Examining Attorney has made of record printouts
from the websites of several online specialty retailers of
motorcycle-related products.5 These retailers sell both
motorcycle parts like applicant’s and motorcycle helmets
like registrant’s on their websites. On these websites,
motorcycle parts and motorcycle helmets often are found in
different departments on different pages, and are accessed
via different home page drop-down menu options. However,
these different departments and menu options appear on the
same home page menu, often in close proximity or even
adjacent to each other, and motorcycle parts and motorcycle
helmets thus are separated only by one or two mouse clicks.
On some of the home pages featuring “weekly specials” or
“top picks,” motorcycle helmets and motorcycle parts are
advertised and depicted next to each other.
Based on this evidence, we find that motorcycle
helmets and motorcycle parts are marketed by the same
motorcycle specialty retailers, often in close proximity to
each other. Motorcyclists and other purchasers would
encounter these goods through the same motorcycle specialty
retailers, and they would use the same retailers to shop

5 November 10, 2008 denial of request for reconsideration. The
websites include www.bikebandit.com, www.cycleshopusa.com,
www.terrapowersports.com, www.shopsomersetmotorsports.com, and
www.mammothmotorsports.com.

Ser. Nos. 77347508 and 77348214
9
for and purchase both applicant’s and registrant’s types of
motorcycle products. Because the trade channels and the
classes of purchasers for applicant’s and registrant’s
goods are the same, we find that the third du Pont factor
weighs in favor of a finding of likelihood of confusion.
Under the fourth du Pont factor, we consider the
nature of the purchasers of the goods and the conditions
under which the goods at issue are purchased. It is likely
that some purchasers of motorcycle-related products would
be experienced riders and careful and knowledgeable
purchasers. However, we find it likely that the purchasers
of motorcycle-related products also would include new
riders and other riders who are less experienced and less
knowledgeable about the goods. Moreover, we find that even
purchasers knowledgeable about motorcycle-related products
per se would not necessarily be immune to source confusion
when encountering identical marks on such products. See
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB
2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Also,
purchasers might exercise a degree of care in making sure
that the products are appropriate for them, e.g., ensuring
that a helmet fits properly and has the desired safety
features. However, the care taken in determining the
functional features of the products themselves does not
Ser. Nos. 77347508 and 77348214
10
necessarily immunize purchasers from confusion in
determining and distinguishing the source of the products,
especially when the products bear identical marks. See id.
We also find that although some motorcycle parts and
motorcycle helmets might be relatively expensive, this is
not necessarily so. There is no evidence in the record
showing that applicant’s motorcycle parts necessarily are
expensive, and applicant’s goods include items which would
appear to be relatively inexpensive, such as “foot pegs,”
“gas caps,” and “brake pedal pads.” Similarly, the record
shows that motorcycle helmets (including registrant’s) can
retail for under one hundred dollars.6
For these reasons, we cannot conclude that the
conditions under which the goods at issue are purchased are
such that the likelihood of confusion arising from the use
of identical marks on such goods necessarily would be
mitigated. We therefore find that the fourth du Pont
factor is essentially neutral in this case; it certainly
does not weigh significantly in applicant’s favor.
Under the sixth du Pont factor (number and nature of
similar marks in use on similar goods), there is no
evidence that anyone other than applicant and registrant

6 www.bikebandit.com website, attached to November 10, 2008
denial of request for reconsideration.
Ser. Nos. 77347508 and 77348214
11
uses ZOMBIE as a mark for motorcycle-related products, nor
any other evidence which might suggest that registrant’s
ZOMBIE mark is weak or diluted in the motorcycle products
marketplace. We already have found that ZOMBIE is an
arbitrary mark as applied to motorcycle products, and it
therefore is entitled to a broad scope of protection in the
motorcycle products field. The strength of registrant’s
ZOMBIE mark weighs in favor of a finding of likelihood of
confusion.
Considering all of the evidence of record as it
pertains to the du Pont likelihood of confusion factors,
and for the reasons discussed above, we find that
applicant’s use of the mark ZOMBIE on motorcycle parts is
likely to cause confusion with registrant’s use of the
identical ZOMBIE mark for motorcycle helmets.
Applicant has submitted a printout of a third-party
registration of the mark ZOMBIE for goods identified in the
registration as “clothing, namely, infant, men’s, women’s
and children’s sweatshirts, T-shirts, sweatpants, headwear,
shorts, jerseys, shirts and cloth bibs.”7 This registration
issued from an application that was filed after the
issuance of the ZOMBIE registration for motorcycle helmets

7 Registration No. 3349716, issued on December 4, 2007 from an
application filed on September 23, 2006.
Ser. Nos. 77347508 and 77348214
12
cited by the Trademark Examining Attorney in this case.
Applicant also notes that on certain of the motorcycle
products retailer websites submitted by the Trademark
Examining Attorney, motorcycle helmets are positioned as a
sub-category of an “apparel and accessories” category.
Therefore, applicant contends, motorcycle helmets are more
similar to apparel than they are to motorcycle parts.
Applicant argues that if the third-party ZOMBIE
registration for clothing can co-exist with the prior
ZOMBIE registration for motorcycle helmets cited by the
Trademark Examining Attorney in this case, then applicant’s
ZOMBIE mark for motorcycle parts, which are more dissimilar
to motorcycle helmets than are apparel items, also should
be allowed.
We are not persuaded by this argument. The apparel
featured in the “apparel and accessories” category of the
motorcycle retailer websites appears to be apparel
specifically geared toward motorcycle riding, such as
motorcycle jackets, motorcycle gloves and the like. In
contrast, the ordinary clothing items (including “cloth
bibs”) identified in the third-party ZOMBIE registration do
not appear to be motorcycle-related. We might assume that
this is why the Trademark Examining Attorney who examined
Ser. Nos. 77347508 and 77348214
13
the ZOMBIE clothing application did not refuse registration
based on the prior ZOMBIE motorcycle helmet registration.
However, even if we were to assume that the clothing
identified in the third-party ZOMBIE registration should
have been deemed by the Trademark Examining Attorney to
encompass motorcycle apparel, and that the motorcycle
helmet registration could or should have been cited as a
bar to registration of the ZOMBIE mark for clothing, those
assumptions would not suffice to change our opinion in this
case, and on this record, that there is a likelihood of
confusion between ZOMBIE for motorcycle parts and ZOMBIE
for motorcycle helmets. It is well-settled that the Board
is not bound by prior decisions reached by Trademark
Examining Attorneys in other applications. In re Sunmarks
Inc., 32 USPQ2d 1470 (TTAB 1994). We must decide each case
on the evidence before us in that case, and the evidence in
this case suffices to establish that confusion is likely.
We have considered all of applicant’s arguments to the
contrary (including those not specifically addressed in
this opinion), but we are not persuaded. We conclude that
a likelihood of confusion exists. To the extent that any
doubts might exist as to the correctness of this
conclusion, we resolve such doubts against applicant. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Ser. Nos. 77347508 and 77348214
14
Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc. supra.

Decision: The refusal to register is affirmed in each
of the applications.