Friday, March 21, 2008

TTAB Finds Design Marks for Motorcycles Confusingly Similar: What Say You?

Pro Se Applicant Dakota Motorcycles [yes, corporations may appear pro se before the TTAB - ed.] ran smack into a roadblock in its attempt to register the word-and-design mark shown immediately below, for motorcycles. The Board found the mark likely to cause confusion with the design mark shown next below, registered and previously used by Honda for motorcycles. Honda Motor Co., Ltd. v. Dakota Motorcycles USA Inc., Opposition No. 91162109 (March 5, 2008) [not precedential].

Cruising through the du Pont factors, the Board found the goods to be identical (2nd factor). It therefore assumed, in the absence of any restrictions in the involved application and registration, that the goods travel in the same trade channels to the same classes of purchasers (3rd factor).

The 4th factor weighed in Applicant's favor: "motorcycles can be fairly expensive items which are likely to be purchased with a degree of care."

The 6th factor was "neutral": there was no evidence that any third-party uses a similar design mark on similar goods.

As the 5th factor, Honda failed to establish that its mark is famous, but the Board did find the mark to be a strong one in view of Honda's sales figures (37,000 motorcycles sold for $440 million over the 1996-2005 time period), and in view of the lack of evidence of third-party use of similar marks.

Turning finally to the 1st du Pont factor, the similarity of the marks, the Board first observed that side-by-side comparison of the marks is not the proper approach. "The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks." And, of course, when the goods are identical a lesser degree of similarity in the marks is necessary to support a finding of likely confusion.

As to appearance, the Board found a "high degree of similarity between the design elements."

"Both marks depict human figures presented in profile, who wear horned helmets which readily would be perceived as being Viking helmets. Although the respective Viking figures face different ways, and although the Viking in applicant's mark clearly is male while the Viking in opposer’s mark appears to be female, those points of dissimilarity are outweighed, in our analysis, by the fact that both figures essentially would be perceived as being Vikings. ... they both include elements (the hair streaming behind the Viking in opposer's mark, and the horizontal lines in applicant's mark which look like hair streaming from the Viking's beard or from under his helmet) which suggest that the Viking figures are moving forward at a high rate of speed."

Of course, Opposer's mark would be pronounced "Viking Motorcycles," while Honda's mark contains no pronounceable words. However, the connotations of the marks are "quite similar:" each "suggests and connotes a Viking moving forward at high speed (most likely on a motorcycle)." The word VIKING in Applicant's mark reinforces the "'Viking' motif" and increases the similarity between the marks.

Comparing the marks in their entireties, the Board found the similarities sufficient to support a finding of likelihood of confusion.

Weighing all the pertinent factors, the Board concluded that confusion is likely, noting that any doubts that might exist are to be resolved in favor of the prior registrant.

TTABlog comment: If you were representing Applicant, how would you have bolstered its case?

Text Copyright John L. Welch 2008.


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