Polaris Industries

Trademark Trial and Appeal Board

Mar 22, 2007

No. 78652190 (T.T.A.B. Mar. 22, 2007)

Mailed: March 22, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Polaris Industries
________

Serial No. 78652190
_______

Andrew S. Ehard and Danielle Mattessich of Merchant & Gould for
Polaris Industries.

Henry S. Zak, Trademark Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
_______

Before Hairston, Holtzman and Mermelstein, Administrative
Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Polaris Industries
(applicant) to register the mark BLACKHAWK (in standard character
format) for "all terrain vehicles and structural parts therefor"
in Class 12.1
The trademark examining attorney has refused registration

1 Application Serial No. 78652190, filed June 16, 2005, based on an
allegation of a bona fide intent to use the mark in commerce.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78652190
2
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark shown below for "motor vehicle accessories,
namely, shock absorbers" in Class 12 as to be likely to cause
confusion.2

When the refusal was made final, applicant appealed. Briefs
have been filed.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the

2 Registration No. 2995279; issued September 13, 2005. The
registration includes a statement that "The mark consists of stylized
words "BLACK HAWK" in which the word "HAWK" is printed over a stylized
hawk's head profile, and the stylized feathers of the hawk's head
profile extend over the word "BLACK."
The examining attorney also initially cited Registration No. 2931254
for BLACKHAWK MOTOR WORKS, INC. (and design) and referenced as a
potential cite application Serial No. 78605811 for BLACKHAWK MOTOR
WORKS," both for "manufacture of custom motorcycles to the order and
specification of others." The cite and the reference were subsequently
withdrawn.
Serial No. 78652190
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goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the marks. Applicant
argues that the two marks are "quite distinctive" in that
registrant's mark is in plain text and applicant's mark includes
a design consisting of a hawk's head profile and stylized
feathers. Applicant further argues that registrant actually uses
its mark with the company name BILSTEIN as shown in registrant's
product literature.
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont,
supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In
addition, we must determine the question of whether the marks are
similar or dissimilar based on the mark as it appears in the
registration, and registrant's company name BILSTEIN is not part
of the registered mark and will not be considered in the
analysis.
Applicant's mark BLACKHAWK and registrant's mark BLACK HAWK
and design are identical in sound. The two marks are also
identical in meaning and commercial impression. There are
certain visual differences in the marks. Registrant's mark
includes the design of a hawk head and "stylized feathers" and
Serial No. 78652190
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applicant's mark omits the space between the two words. However,
these differences are insignificant when compared with the
similarities in the marks, and they are insufficient to
distinguish one mark from the other. The strongest impression of
the marks is conveyed by the wording, and the wording in the
marks is identical. See In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987) ("if one of the marks comprises both a
word and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request the
goods"). Furthermore, the image of a hawk's head, in
registrant's mark, to the extent that it would even be recognized
as such considering its highly stylized form, simply serves to
reinforce the image conveyed by the wording "BLACK HAWK."
Applicant argues that the terms HAWK and BLACK HAWK are used
and registered by a number of different entities for various
forms of transportation and related parts and accessories, and
that as a result, according to applicant, the cited mark is weak
and entitled only to a narrow scope of protection in the field.
To support this position, applicant has submitted a number of
third-party registrations that include the term HAWK, several
registrations that consist entirely of stylized bird designs, and
four registrations, including the cited registration, for marks
consisting of or including "BLACK HAWK," all of which are for
goods in the transportation field. The three registrations of
Serial No. 78652190
5
"BLACK HAWK" are BLACKHAWK and design for trailers (Registration
No. 2951805); BLACKHAWK for power boats (Registration No.
1437219); and BLACK HAWK for military helicopters (Registration
No. 0995600). In arguing that the third-party registrations for
"HAWK" other than "BLACK HAWK" are relevant, applicant reasons
that the term "HAWK" is the most dominant part of the mark in
creating the commercial impression; and that the word "BLACK" is
not significant because it merely describes the color of the
hawk.
It is well settled that third-party registrations are not
evidence of the use of the marks therein. See AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973). They may, however, may be used to indicate that a
commonly registered term has a suggestive meaning for particular
goods or services such that differences in other portions of the
marks may be sufficient to render the marks as a whole
distinguishable. See, e.g., Tektronix, Inc. v. Daktronics, Inc.,
187 USPQ 588, 592 (TTAB 1975), aff'd, 534 F.2d 915, 189 USPQ 693,
694-95 (CCPA 1976). Considering the third-party registrations
for that purpose, we first point out that applicant in its
analysis has improperly dissected the mark in the cited
registration. Although there is nothing in the record to
indicate that "black hawk" is a type of bird, and not just a hawk
that is black in color, we view the term as a unitary phrase and
Serial No. 78652190
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to that extent, the commercial impression of BLACK HAWK as shown
in the cited registration is conveyed by the phrase as a whole,
not by the individual words. Further, we do not view the third-
party marks consisting of stylized bird designs as the equivalent
of the word "hawk," or for that matter "black hawk," and those
marks are not relevant to the question of whether the wording
BLACK HAWK is suggestive. We find that the term "BLACK HAWK"
has, at most, a somewhat suggestive meaning in relation to the
goods. A hawk is a "bird of prey"3 and to that extent the term
may vaguely suggest the strength or power of vehicles and vehicle
parts. In any event, the protection to be accorded the cited
registration would still extend to prevent the registration of
applicant's highly similar mark for related goods.
Thus, we turn to the goods. Applicant argues that its all
terrain vehicles are "significantly dissimilar" and unrelated to
registrant's motor vehicle accessories, namely shock absorbers;
that registrant uses its mark exclusively on shock absorbers for
cars and trucks, and in particular racing cars and trucks; and
that applicant's vehicles are intended for off-road recreational
purposes whereas registrant's goods are intended for use
primarily on racing cars and trucks. Applicant also contends

3 Microsoft Encarta College Dictionary (2001). The Board may take
judicial notice of dictionary definitions. See University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 78652190
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that the goods are not sold through the same trade channels to
the same consumers. According to applicant, registrant only
offers its products "in the automobile industry through select
distributors" and applicant's all terrain vehicles and structural
parts, would only be sold through exclusive dealerships.
Applicant further contends that the goods are not directed to the
same purchasers. As described by applicant, its all terrain
vehicles are targeted to individuals seeking a nonstrenouous
recreational outdoor experience whereas registrant's shock
absorbers are targeted to race car and race truck drivers
"looking to upgrade the speed and suspension of their vehicles."
In support of its arguments, applicant has submitted a printout
of a page from its website (polarisindustries.com) and copies of
registrant's product literature.
Applicant's goods are "all terrain vehicles and structural
parts therefor" (ATVs) and registrant's goods are "motor vehicle
accessories, namely, shock absorbers." The goods are obviously
different in kind. However, the cases are legion that goods need
not be similar or competitive in nature to support a finding of
likelihood of confusion. See Helene Curtis Industries Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). It is sufficient
if the respective goods are related in some manner and/or that
the conditions surrounding their marketing are such that they
would be encountered by the same persons under circumstances that
Serial No. 78652190
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could, because of the similarity of the marks used thereon, give
rise to the mistaken belief that they emanate from or are
associated with, the same source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The respective goods are closely related. Shock absorbers
are integral parts or components of motor vehicles, and the
category of "motor vehicles" in registrant's identification would
include all terrain vehicles. Applicant itself is seeking
registration for vehicle parts as well as the vehicle. We also
note that the Board in the past has held vehicles and vehicle
replacement parts to be commercially related products. See,
e.g., In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992) and
cases cited therein. The examining attorney has submitted
printouts of pages from third-party websites showing that ATVs in
fact use shock absorbers. See, for example,
polarisdiscountparts.com;4 zilmachinery.en.alibaba.com; off-
road.com; and atving.com.
Applicant, by attempting to limit the market for the goods,
the purchasers and intended use of the goods, and the channels of
trade for the goods, has read impermissible limitations into the
application and registration. Our primary reviewing court has
repeatedly stated that the question of likelihood of confusion

4 Applicant's website is polarisindustries.com. It is not clear
whether there is any connection between applicant and the website
polarisdiscountparts.com.
Serial No. 78652190
9
must be determined on the basis of the identification of goods
set forth in the application and registration, rather than on
what any extrinsic evidence might show the actual use of the
goods or their channels of trade or purchasers to be. See J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1464, 18
USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d 1783 (Fed.
Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983).
Absent any limitation in the respective identifications of
goods we must presume that the goods are used for all the
intended purposes, and that they are sold in all the normal
channels of trade to all the usual customers. There is nothing
in the registration that restricts the shock absorbers to a
particular type of motor vehicle. Therefore, we must presume
that registrant's shock absorbers are compatible with all types
of motor vehicles, including applicant's all terrain vehicles.
Furthermore, the examining attorney submitted printouts of
additional pages from applicant's website showing that
applicant's all terrain vehicles are not only used for off-road
"recreational" purposes but are also used as racing vehicles, as
well. In addition, registrant's product literature indicates
that registrant produces shock absorbers that are designed for
off-road racing vehicles, as well as cars and trucks.
Serial No. 78652190
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As to the channels of trade, it is true that ATVs would be
sold through vehicle dealerships. However, while registrant's
own shock absorbers may only be sold through distributors, the
evidence shows that distributors are not the only normal channels
of trade for such goods. The Internet evidence submitted by the
examining attorney shows that vehicle parts suppliers, such as
polarisdiscountparts.com, off-road.com, elkasuspension.com and
pao-jih.com, sell shock absorbers for ATVs, for replacement or
upgrading current parts, directly to the public. In fact,
polarisdiscountparts.com sells shock absorbers specifically for
use with applicant's all terrain vehicles. The examining
attorney has also submitted a third-party registration for online
retail sales of "parts and repair equipment" for vehicles,
including all terrain vehicles. We also note that while ATVs and
shock absorbers are not purchased at the same outlets, some of
the Internet printouts submitted by the examining attorney show
that ATVs are advertised and displayed together on the same
websites. See, e.g., elkasuspension.com and
polarisdiscountparts.com.
Thus, the fact that applicant's and registrants goods may
not be purchased through the same channels of trade is not
particularly significant since both goods would ultimately reach
the same consumers. Those consumers who had previously purchased
applicant's BLACKHAWK ATVs, upon encountering registrant's shock
Serial No. 78652190
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absorbers, as a replacement part or upgrade for the ATV, under
the highly similar mark BLACK HAWK and design, regardless of
where they purchased the ATV, are likely to believe that the
respective goods come from or are in some way connected with the
same company.
Applicant argues that the Office has "consistently allowed
the coexistence of identical and similar marks for various
different vehicle types and related accessories when owned by
different entitles." Applicant has submitted a number of third-
party registrations in the transportation-related field for the
"BLACK HAWK" marks mentioned earlier as well as for numerous
marks which may be arguably similar to each other, but not to the
marks herein.
The coexistence of marks on the register which are
completely dissimilar to the marks in this case have no bearing
on the question of whether the marks and goods herein are likely
to cause confusion. Further, to the extent that applicant is
arguing that in view of the coexistence of other "BLACK HAWK"
marks on the register, applicant's mark should be entitled to
register as well, this argument is not persuasive. The Board has
often noted that each application must be decided on its own
merits. We are not privy to the records of the third-party
registration files and, moreover, the determination of
registrability of those particular marks by the examining
Serial No. 78652190
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attorneys cannot control our decision in the case now before us.
See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) ("Even if some prior registrations had some
characteristics similar to Nett Designs' application, the PTO's
allowance of such prior registrations does not bind the Board or
this court."). We would also point out that the mere coexistence
of any of these third-party marks on the register, including the
third-party "BLACK HAWK" marks, does not prove that such marks
coexist without confusion in the marketplace.
It is reasonable to assume that the purchasers of all
terrain vehicles and the parts for those vehicles would to some
extent be knowledgeable about such products and would exercise
some degree of care in their purchasing decisions. However, even
knowledgeable and careful purchasers of goods can be confused as
to source under circumstances where, as here, highly similar
marks are used on closely related goods. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories
even of discriminating purchasers...are not infallible.").
In view of the foregoing, and because highly similar marks
are used in connection with closely related goods, we find that
confusion is likely.
Serial No. 78652190
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Decision: The refusal to register on the ground of Section
2(d) of the Trademark Act is affirmed.