Finding Motorcycles and Tires Related, TTAB Sustains 2(d) Opposition To "SHADOW" Mark

American Honda rolled to victory over tire maker TBC Corp. in its opposition to registration of the mark SHADOW for tires. American Honda Motor Co. v. TBC Corp., Opposition No. 91121151 (May 31, 2005) [not citable]. The Board found the mark likely to cause confusion with the identical mark registered by Honda Motor Co., and used by exclusive licensee American Honda, for motorcycles and structural parts therefor.

Shadow Aero
The Board first dealt with several procedural issues. American Honda argued that TBC "admitted" likelihood of confusion because it opposed a third-party's application by arguing that marks used for motorcycles and tires are likely to cause confusion. The Board noted, however, that a party's position on likelihood of confusion in another proceeding is not binding on the Board, "but rather is merely illuminative of the shade and tone in the total picture." The Board must still decide the case on the entire record.

TBC asserted that American Honda was estopped from asserting likelihood of confusion because Honda had reached an agreement with TBC in Canada, allowing TBC's registration of SHADOW for tires. But the Board pointed out that the right to object in this country is "completely independent of the respective foreign trademark rights of the parties."

TBC CorporationPalm Beach Gardens, Florida
Turning to the issue of priority, the Board ruled that American Honda could not rely on the Section 7(b) presumptions that are accorded a federal registration because it was not the owner of the registration. Therefore it had to prove prior use of the SHADOW mark, which it did with little difficulty.

Because the marks at issue are identical, "there need be only a viable relationship between the respective goods in order to find that a likelihood of confusion exists." Here, TBC's tires and American Honda's motorcycles are related products. Although TBC actually sells automobile tires under the opposed mark, its application is not restricted to any particular type of tire, and so the Board must assume that motorcycle tires are included. Motorcycles and motorcycle tires are "clearly complementary products that are purchased by a common class of consumers."

"Persons familiar with opposer's SHADOW motorcycles, upon encountering applicant's SHADOW tires, may well believe that such tires are designed for use on opposer's SHADOW motorcycles."

TBC's arguments regarding the weakness of the mark SHADOW in view of third-party registrations, the sophistication of purchasers, and the lack of actual confusion, all hit a dead end, and the Board raised its checkered flag for American Honda.

TTABlog comment: Noteworthy is the absence of proof that any company sells motorcycles and tires under the same trademark.

Text ©John L. Welch 2005. All Rights Reserved.