Mark S.Dimulias

Trademark Trial and Appeal Board

Jul 18, 2006

No. 78353428 (T.T.A.B. Jul. 18, 2006)

Mailed:
July 18, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mark S. Dimulias
________

Serial No. 78353428
_______

Thomas P. Philbrick of Allmark Trademark for Mark S.
Dimulias

Mary Boagni, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney)
_______

Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Mark S. Dimulias has appealed from the final refusal
of the Trademark Examining Attorney to register EVIL TWINS
and design, as shown below, as a collective membership mark
for “indicating membership in a motorcycle club.”1 The
lining shown in the drawing is a feature of the mark. The

1 Application Serial No. 78353428, filed January 17, 2004, based
on Section 1(b) of the Trademark Act (intent-to-use).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78353428
2
colors black, red, blue, yellow, orange, and gray are
claimed as a feature of the mark.
The wording Evil Twins and MC are in
red lettering on blue background
banners. The pitchforks are red. The
devils are red with yellow and orange
teeth. The engine body graphic is
gray. The engine flames are yellow,
orange and red. The background behind
the blue banners, pitchforks, devil
heads and engines is black.

Applicant has disclaimed exclusive rights to use MC apart
from the mark as shown.

Ser No. 78353428
3

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark EVIL TWIN,
previously registered for “motorcycles,”2 that, if used as a
collective membership mark for a motorcycle club, it is
likely to cause confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed
briefs.3 Applicant did not request an oral hearing.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic

2 Registration No. 2589088, issued July 2, 2002.
3 With its brief applicant submitted two exhibits, with Exhibit
A consisting of a large number of third-party registrations. It
appears that, for the most part, these registrations were
previously submitted with applicant’s request for
reconsideration; the only difference is that the earlier filed
registrations were taken from the USPTO TARR database, and the
documents filed with the appeal brief were taken from the USPTO
TESS database. Therefore, we consider them to be legal
equivalents. However, to the extent that any additional
registrations were submitted with the brief, they have not been
considered. See Trademark Rule 2.142(d) (the record in an
application should be complete as of the filing of the notice of
appeal). The Exhibit B that is attached to the appeal brief
appears to be a slightly different version of the Exhibit B that
was attached to applicant’s request for reconsideration. Because
it is the earlier-submitted version that is properly of record,
that is the exhibit that we have considered in making our
decision herein. We add, though, that our decision would be the
same if the later-filed version had been made of record.
Ser No. 78353428
4
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In this case, because applicant has
applied to register a collective membership mark, we are
not dealing with “services” per se, but the indication of
membership in a motorcycle club.
Thus, although the ultimate inquiry is the same, the
analysis under Section 2(d) with respect to collective
membership marks is somewhat different from that with
respect to trademarks or service marks. The trademark or
service mark analysis typically involves a determination of
likelihood of confusion among purchasers as to the source
of goods or services. However, as the Board stated in In
re Code Consultants Inc., 60 USPQ2d 1699, 1700-01 (TTAB
2001), a collective membership mark does not involve
purchasers of goods or services. The sole purpose of a
collective membership mark is to indicate membership in an
organization. While goods or services may be provided by
the members of an organization, a collective membership
Ser No. 78353428
5
mark, as used or displayed by the members of an
organization, serves only to identify the fact that such
members belong to the collective organization and to inform
relevant persons of the members' association with the
organization. See, e.g., Allstate Life Insurance Company
et al. v. Cuna International, Inc., 169 USPQ 313 (TTAB
1971). Thus, the finding of likelihood of confusion
between a collective membership mark and a trademark or
service mark is not based on confusion as to the source of
any goods or services which happen to be provided by the
members of the collective organization. Rather, the
question is whether relevant persons are likely to believe
that the collective organization is endorsed by or in some
other way associated with the owner of the trademark for
the goods.
Nevertheless, the principles involved in the analysis
of the du Pont factor of the similarity of goods/services
are similar, i.e., are the goods and the indication of
membership in a motorcycle club sufficiently related that,
if confusingly similar marks were used in connection with
them, relevant persons would be likely to believe that the
motorcycle club in which the mark indicates membership is
sponsored by or affiliated with the source of the
motorcycles. Relevant persons in the context of
Ser No. 78353428
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applicant’s collective membership mark do not consist of
“purchasers” as such, but rather could encompass all who
might know of the motorcycle club and then become
purchasers or potential purchasers of motorcycles or,
conversely, could be purchasers or potential purchasers of
motorcycles and then be exposed to the membership mark.
Applicant quotes from a book published by Matthew
Bender to assert that “in analyzing noncompeting goods [in]
trademark cases, courts often consider a list of factors
developed from prior case law.” The quote goes on to list
particular factors, including “whether the respective
products are of the same genus” and “the fame of the
owner’s mark.”4 It appears that the quote is referring to
the entire likelihood of confusion analysis, and not to the
individual factor of the similarity of the goods/services.
As noted, we are guided in the analysis of likelihood of
confusion by the factors listed in the du Pont decision.
With respect to the particular factor of the similarity of
the goods/services, we follow the well-established
principle, set forth in In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978):
It is not necessary that the goods of
the parties be similar or competitive,

4 The citation provided by applicant is “2-5 Trademark
Protection and Practice §5.05.”
Ser No. 78353428
7
or even that they move in the same
channels of trade to support a holding
of likelihood of confusion. It is
sufficient that the respective goods of
the parties are related in some manner,
and/or that the conditions and
activities surrounding the marketing of
the goods are such 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 producer.

To demonstrate the necessary relationship between
motorcycles and membership in a motorcycle club, the
Examining Attorney has submitted a number of third-party
registrations which show that such companies as Harley-
Davidson, Inc. and Indian Motorcycle International, LLC
have registered their marks for motorcycle club services or
for association services, namely, promoting the interests
of motorcycle riders. See Registration No. 1455825 for
HARLEY OWNERS GROUP and Registration No. 1436034 for LADIES
OF HARLEY, and Registration No. 2914846 for INDIAN. The
Examining Attorney has also made of record third-party
registrations owned by automobile companies for use of
their marks for motor club services. See, for example,
Registration No. 2742936 for FORDDIRECT, owned by Ford
Motor Company, for, inter alia, motor clubs, namely
automobile clubs and Registration No. 1848622 for MERCEDES-
BENZ CLUB and design, owned by Daimlerchrysler AG for,
Ser No. 78353428
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inter alia, services of an automobile club, namely,
arranging and conducting motor sport competitions, and
organizing and conducting meetings of a social nature.
In addition, the Examining Attorney has submitted
Internet web pages which show a connection between
motorcycle clubs and motorcycles with specific trademarks,
including, in the first-listed excerpt, a statement that
motorcycle club websites are linked to the websites of the
motorcycles themselves:
Motorcycle Clubs
Some clubs exist to further a
particular make and model such as the
Honda PC-800 club, the GWRRA, or the
Cushman Motor Scooter Club.
...That’s why I continue to make a
concerted effort to seek out motorcycle
clubs that have Web sites and get them
linked to the Motorcycles site. … I
would also hope that each club Web site
would also put up a link to the
Motorcycles site.
http://motorcycles.about.com/cs/clubs
and groups/a/motorcycleclubs.htm

Kawasaki Owners Club
Description
A Mailing list/Forum for owners and
enthusiasts of Kawasaki Motorcycles.
Meet others and share your experiences
with Kawasaki motorcycles. All are
invited to join. Here you can discuss
the bikes, post pictures, add links
etc. This site has been created as a
resource for all Kawasaki owners and
enthusiast’s. [sic]
htt://motorcylces.about.com/gi/dynamic/
offsite.htm

Ser No. 78353428
9
There are also search summaries from the Google website
which, because they are fragments, are rather limited in
what they show,5 but there are several listings of “Honda
Riders Association—HRA: The office Honda motorcycle club,”
and the “Kawasaki Motorcycle Club.”
Applicant discounts this evidence because:
in every example cited by the Examining
Attorney, the “enthusiast” club
involved an undeniably “famous”
trademark and/or product. This
includes the attachments for “Kawasaki
Motorcycle Club,” “Suzuki Motorcycle
Club,” “Honda Motorcycle Club,” “Indian
Motorcycle Club of America,” and the
“Harley Owners Group.” There can be no
doubt that every one of these clubs
concerns a “famous” motorcycle brand.

Brief, p. 4. (emphasis in original). However, with respect
to the mark EVIL TWIN, it is applicant’s position that this
brand is not famous; rather, these motorcycles “are unknown
to anyone remotely familiar with motorcycles.” Brief, p.
4. Thus, while applicant acknowledges the credibility of
the Examining Attorney’s argument that “a consumer who
encounters a mark indicating membership in a motorcycle
club is likely to believe that the registrant’s motorcycles
are endorsed by … the collective organization” when a

5 See TBMP §1208.03 (a search result summary from a search
engine, such as Yahoo! or Google, which shows use of a phrase as
key words by the search engine, is of limited probative value.)

Ser No. 78353428
10
famous brand of motorcycle is involved, he argues that “the
same cannot be said for obscure, non-famous makes of
motorcycles.” Brief, p. 5.
We consider the evidence of record, along with
applicant’s acknowledgements, sufficient to show that
companies that make motorcycles also have trademarks for
motorcycle clubs, and/or sponsor or are affiliated with
motorcycle clubs and the services connected with such
clubs. Further, there is obviously a complementary
relationship between motorcycle clubs and motorcycles;
motorcycle clubs are clearly clubs for people who own
and/or ride motorcycles. Thus, the relevant persons for
applicant’s membership mark and the purchasers of the
registrant’s goods are, in part, the same. See In re Code
Consultants Inc., supra.6 The fact that there is no
evidence that EVIL TWIN is a famous mark for motorcycles
does not affect the relatedness of motorcycle clubs and
motorcycles. Moreover, for purposes of our analysis, we
cannot accept applicant’s statement that EVIL TWIN
motorcycles “are unknown to anyone remotely familiar with
motorcycles.” Obviously, if we posit that no one has seen

6 As discussed infra, the relevant public would also include a
motorcycle purchaser or potential purchaser who is exposed to a
motorcycle club membership mark through news reports.

Ser No. 78353428
11
or heard of a cited mark, or will ever encounter it, there
would never be a likelihood of confusion. But we are
required to determine likelihood of confusion based on what
is on the Register. The question, thus, is whether those
people who are familiar with EVIL TWIN motorcycles might
encounter applicant’s mark indicating membership in a
motorcycle club and, if so, whether they might believe that
a motorcycle club membership is related to motorcycles,
such that a connection in affiliation or sponsorship will
be presumed if confusingly similar marks are used.
For the reasons we have discussed above, we answer
both questions in the affirmative. Simply put, people who
own motorcycles (including the EVIL TWIN motorcycle) are
likely to encounter motorcycle clubs and/or offers of
membership in such a club. Therefore, they may be exposed
to both applicant’s and the registrant’s marks. Further,
because of the evidence that owners of trademarks for
motorcycles own registrations for motorcycle club services
and/or have official motorcycle clubs, and because of the
complementary nature of motorcycles and motorcycle clubs,
the consuming public is likely to assume a connection if
confusingly similar marks were used for both.
We note that applicant has submitted a large number of
third-party registrations for motorcycle club services that
Ser No. 78353428
12
do not contain a motorcycle mark, or for which there is no
corresponding motorcycle mark.7 There is no question that a
mark may be registered for motorcycle club services or to
indicate membership in a motorcycle club which makes no
reference to a trademark for motorcycles. Further, it is
likely that, compared to the total number of motorcycle
club service marks, there would be very few
membership/motorcycle club service marks that are the same
as or a variation of a mark for motorcycles, since there
are a limited number of motorcycle brands. The fact that
applicant has submitted so many “unaffiliated” third-party
marks, however, does not affect our conclusion that
applicant’s motorcycle club and motorcycles are related.
The question before us is whether, if a trademark for a
motorcycle is used as, or as part of, a collective mark
indicating membership in a motorcycle club, relevant
persons would be likely to assume a connection or
affiliation with or sponsorship by the owner of the

7 Applicant has stated that in his search of the Office records
for “goods/services motorcycle club!” and status, “not a single
motorcycle club mark was also registered in connection with
actual motorcycles.” (emphasis in original), brief, p. 7.
However, as the Harley-Davidson registrations show, the marks for
motorcycle club services appear to be a variation on the name
HARLEY-DAVIDSON, including LADIES OF HARLEY and HARLEY OWNERS
CLUB. The same is true for the marks for automobile club
services, e.g., MERCEDES-BENZ CLUB and design and FORDDIRECT.
Ser No. 78353428
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motorcycle trademark. As stated previously, the answer to
that question is yes.
This brings us to a consideration of the marks. We
note that the registered mark, EVIL TWIN, must be
considered a strong mark. Applicant states that, while it
“is admittedly not a particularly ‘weak’ mark, it is also
not an obviously ‘strong’ mark such as ‘Kodak’ or Cisco’.”
Brief, p. 4. Although the registered mark is not an
invented term like KODAK, but consists of two recognizable
English words, EVIL TWIN is an arbitrary term as applied to
motorcycles, and therefore is entitled to a broad scope of
protection. Moreover, there is no evidence of any third-
party uses of EVIL TWIN or similar marks which might
indicate that relevant persons would look to other elements
of the mark to distinguish one EVIL TWIN mark from another.
The du Pont factor of the number of similar marks for use
on similar goods/services therefore favors a finding of
likelihood of confusion.
As noted previously, the registered mark is EVIL TWIN.
Applicant’s mark is EVIL TWINS depicted on a scroll,
situated above a design of two devils and two exhausts that
are essentially in a mirror image. The letters MC, which
stand for motorcycle club, appear in smaller letters to the
right of, and toward the bottom of, the design.
Ser No. 78353428
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It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the present
case, although the design element in applicant’s mark
figures prominently, it is our view that the word portion,
EVIL TWINS, is the dominant element and deserves greater
weight in our comparison of the marks. The words EVIL
TWINS is how the motorcycle club would be referred to when
speaking of it, as it is the only element that can be
articulated. As a result, the words are likely to make a
stronger impression. See In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). Further, the design element
reinforces the meaning of the words, as the design would be
perceived as twin devils, i.e., evil twins. The two engine
bodies continue the twin motif. All in all, while the
design adds certain differences to the appearance of the
marks, these differences in appearance are outweighed by
the identical pronunciation and connotation of the marks.
Although the relevant persons may certainly note the
Ser No. 78353428
15
design, they are likely to regard applicant’s mark as a
variation of the word mark EVIL TWIN. This is especially
likely in view of the fact that many of the motorcycle and
automobile club registrations are for marks that are
variations on the marks used for motorcycles and
automobiles. Thus, we find that the marks convey similar
commercial impressions.
We add that we are aware that applicant’s mark uses
the words EVIL TWINS, while the cited mark is for EVIL
TWIN. However, we do not think that relevant persons will
note the presence or absence of the “S” or, if they do,
that they will ascribe any source-differentiating
significance to it. Similarly, while we note the
additional element MC in applicant’s mark, these letters,
which are a recognized abbreviation for “motorcycle club”
and have been disclaimed by applicant in acknowledgement of
this fact, do not have any source-indicating significance.
To the extent that relevant persons notice the letters,
they will assume that they are present in this mark, and
not in the registered mark EVIL TWIN, because this mark is
used for a motorcycle club, while EVIL TWIN is used for
motorcycles.
Applicant has argued that “the ‘motorcycle club’
community is extremely sophisticated in matters of
Ser No. 78353428
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motorcycles and motorcycle clubs.” Brief, p. 6. Applicant
further asserts that the commitment of a member to his club
comes above family, friends, job, personal possessions and
personal safety, and that the process of becoming a formal
member takes several years. As a result, applicant argues
that the decision to become a member of a club is not made
on impulse. Applicant apparently bases these assertions on
Exhibit B, which is a policy statement by a particular
motorcycle club about what a motorcycle club is. We note
that this policy statement also recognizes that “there are
many lesser clubs whose membership is made up of equally
lesser individuals.” It would appear from this statement
that not all clubs would have the same rules about becoming
a member.
However, even if we accept that it takes a certain
amount of time to become a full member of a club, such
that, before one ultimately would join applicant’s club,
one would know that the club is not associated with the
maker of EVIL TWIN motorcycles, that is not determinative
of the question of likelihood of confusion. The question
is whether one might first consider or attempt to join the
club because he believes that there is an association or
connection. We do not dispute that one making a decision
to join a club will note the differences between EVIL TWIN
Ser No. 78353428
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and applicant’s EVIL TWINS and design marks; however, as
discussed, they will not ascribe these differences to
different sources of the goods/membership club. As to the
sophistication of motorcycle club members or potential
members, because there is evidence, as discussed above,
that manufacturers of motorcycles (and cars) use and/or
register their motorcycle (and automobile) marks or a
variation thereof for motorcycle (and automobile) clubs
and/or club services, the fact that those in the motorcycle
club community are sophisticated will not prevent them from
believing that there is an association between the maker of
a motorcycle and a motorcycle club if a similar mark is
used for both.
We also point out that members or potential members of
applicant’s motorcycle club are not the only persons that
are likely to be confused. The general public may be aware
of motorcycle clubs through news reports, especially if, as
Exhibit B mentions, “one club causes a problem that touches
the public sector.” That exhibit goes on to say that in
that situation, “the general public does not draw a
distinction between different club colors,” and “the
offending club’s identity is either confused or ignored,
and heat comes down to suppress all clubs.” As a result,
if applicant’s motorcycle club, identified by its EVIL
Ser No. 78353428
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TWINS and design mark, receives bad publicity, it might
affect the purchasing decision of someone who is not a
motorcycle aficionado or part of the club community, and
result in his not buying a EVIL TWIN motorcycle.
After considering all the du Pont factors on which
there is evidence or argument, we find that, if applicant
were to use his applied-for mark to indicating membership
in a motorcycle club, it is likely to cause confusion with
the previously registered mark EVIL TWIN for motorcycles.
Decision: The refusal of registration is affirmed.