Hawk Racing

Trademark Trial and Appeal Board

Sep 22, 2011

No. 76698132 (T.T.A.B. Sep. 22, 2011)

Mailed: September 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hawk Racing
________

Serial No. 76698132
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Jeffrey M. Furr of Furr Law Firm for Hawk Racing.

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Hawk Racing has filed an application to register on
the Principal Register the mark

for goods ultimately identified as “bicycle wheels made of
carbon or alloy; bicycle hubs and bottom brackets; bicycle
bearings; bicycle accessories, namely, fork, seat post, and
crank sets” In International Class 12.1 In response to a

1 Serial No. 76698132, filed June 29, 2009 and alleging January
1, 2007 as the date of first use of the mark anywhere and January
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 76698132

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request by the examining attorney, the word “RACING” is
disclaimed.
The examining attorney finally refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the basis that applicant’s mark, as applied to
the identified goods, is likely to be confused with the
three registered marks owned by the same entity set forth
below.
Registration No. 34267532 for the typed-form mark
HAWK BIKES (BIKES disclaimed)

Registration No. 32971773 for the mark

Registration No. 34267524 for the mark HAWK as
stylized below

In all three registrations, the goods are identified as
“bicycles and (structural)5 parts thereof, bicycle bells,

1, 2009 as the date of first use of the mark in commerce. The
application also claims the colors red and black and contains the
following statements: “The literal element of the mark consists
of ‘HAWK RACING’. The mark consists of ‘HAWK RACING’ in stylized
lettering. The color red appears in the word ‘HAWK”. The color
black appears in the word ‘RACING’ and the outline in the word
‘HAWK’.”
2 Issued May 13, 2008.
3 Issued May 13, 2008.
4 Issued May 13, 2008.
5 The identification in Registration No. 3426752 included the
term “structural” to further identify the “parts.”
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air pumps for bicycles, panniers adapted for bicycles,
baskets adapted for bicycles, seats for bicycles, gears for
bicycles” in International Class 12. The examining
attorney also made final a requirement for a more definite
identification of goods because the identification, as
initially amended, included the “open-ended wording ‘such
as.’”
When the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. In its
request for reconsideration, applicant made arguments in
support of its position on the Section 2(d) issue, and
proffered an amendment to its identification of goods
which, as reflected by the records of the Office, was
accepted by the examining attorney. On October 12, 2010,
the examining attorney denied the request for
reconsideration as to the Section 2(d) issue and, on
October 21, 2010, this appeal was resumed. Briefs were
filed by both applicant and the examining attorney. For
the reasons discussed below, we affirm the refusal to
register.
As a preliminary matter, the examining attorney has
objected to a letter from a third-party Director of
Marketing attached to applicant’s appeal brief, arguing
that it is an untimely submission. We note, however, that
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the letter previously was made of record with applicant’s
request for reconsideration. As such, it was timely filed
and is properly of record. Accordingly, the examining
attorney’s objection is overruled.
Turning now to the merits of this appeal, 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 Distilling Co.,
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 analyzing likelihood of confusion, we limit our
discussion to Registration No. 3426753 for HAWK BIKES for
“bicycles and parts thereof, bicycle bells, air pumps for
bicycles, panniers adapted for bicycles, baskets adapted
for bicycles, seats for bicycles, gears for bicycles” as
this mark is the closest to applicant’s mark and recited
Ser No. 76698132

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goods. To the extent that there would be confusion with
the ‘753 registration, it would serve little purpose to
consider the other registrations. And if there is no
likelihood of confusion with the ‘753 registration, there
would similarly be no likelihood of confusion with the
other registrations.
Considering first the relatedness of the goods, it is
settled that the question of likelihood of confusion must
be determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods recited in the
registration. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Furthermore, where the goods in the
application and/or cited registration are broadly
identified as to their nature and type, such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
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buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Here, we compare applicant’s “bicycle wheels made of
carbon or alloy; bicycle hubs and bottom brackets; bicycle
bearings; bicycle accessories, namely, fork, seat post, and
crank sets” with registrant’s “bicycles and parts thereof,
bicycle bells, air pumps for bicycles, panniers adapted for
bicycles, baskets adapted for bicycles, seats for bicycles,
gears for bicycles.” The examining attorney contends that
the respective goods “could well be presumed to be from the
same source inasmuch as the goods of the parties relate to
bicycle component parts and accessories.” Br. unnumbered
p. 6. In support of his position, the examining attorney
has made of record printouts of twelve use-based, third-
party registrations taken from the USPTO X-Search database
showing that a single entity has registered the same mark
for goods of the type identified in both applicant’s
application and the cited registration. Third-party
registrations that individually cover different items and
that are based on use in commerce serve to suggest that the
listed goods and services are of a type that may emanate
from a single source. See Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown
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therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Some of the registrations include, by way of example:
Registration No. 3095328 for, inter alia,
“bicycle parts, namely, wheels and forks” and
bicycle parts, namely seats”;

Registration No. 3455276 for, inter alia,
“bicycle wheels and bicycle parts, namely forks”
and “bicycles and bicycle gears”;

Registration No. 316221 for, inter alia, “bike
forks” and “bicycles and structural parts
therefor, namely, bike baskets, bike seats, bike
warning bells, and bike panniers”;

Registration No. 3490332 for, inter alia,
“bicycle wheels and bicycle parts, namely forks
and seat posts” and “bicycles and bicycle gears”;
and

Registration No. 3389922 for, inter alia,
“bicycle wheels” and “air pumps of … bicycles.”

We find on the face of the respective identifications
that applicant’s and registrant’s goods are complementary
and/or closely related; that is, applicant’s bicycle
components and accessories may be used together with
registrant’s bicycles. Moreover, based on the nature of
the goods, we find the third-party registrations sufficient
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to demonstrate that applicant’s bicycle wheels, hubs,
bottom brackets, bearings, forks, seat posts and crank sets
and registrant’s bicycles, structural parts therefor, and
bicycle bells, air pumps, panniers, baskets, seats and
gears are closely related, such goods all being bicycles or
bicycle components and accessories that are often sold by
the same source under the same mark.
In an attempt to distinguish its goods from those of
registrant, applicant argues that its goods are for road
bikes and triathlon bikes, whereas the goods associated
with the registered mark are, or are for, mountain bikes.
This argument is not well taken. As stated, our
determination of the relatedness of the goods is based on a
comparison of the goods as identified in the involved
application and the cited registration, and not on what any
evidence (or argument) may reveal as to the actual nature
of the respective goods. Canadian Imperial Bank v. Wells
Fargo Bank, 1 USPQ2d at 1815; and Octocom Systems, Inc. v.
Houston Computer Services, Inc., 918 F.2d 937, 942 (Fed.
Cir. 1990). In this case, neither applicant’s nor
registrant’s respective identifications include limitations
with respect to the bicycle type and/or the type(s) of
bicycle(s) with which the recited components or accessories
are used.
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Applicant similarly argues that the established,
likely to continue trade channels for the goods associated
with the marks are very different as mountain bikes are
sold through very different channels of trade than are road
and triathlon bikes. However, once again, in the absence
of any limitations in the identifications of goods as to
channels of trade and classes of purchasers in the
application and the cited registration, we must presume
that the goods will be offered in all usual channels of
trade for such goods, such as bicycle shops, and will be
purchased by the usual classes of purchasers for those
goods, including ordinary purchasers seeking bicycles or a
variety of bicycle component parts and accessories. Thus,
at a minimum, the channels of trade and classes of
purchasers overlap. In re Elbaum, supra.
Thus, the du Pont factors of the relatedness of the
goods, channels of trade and classes of purchasers strongly
favor a finding of likelihood of confusion.
With respect to the conditions under which and buyers
to whom sales are made, applicant argues that
[t]he goods associated with Applicant’s mark
are geared toward consumers who are demanding
and passionate regarding the products … [who
are] looking for very specific qualities in a
bike and in the parts for that type of bike;
they are very sophisticated consumers.
Ser No. 76698132

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Br. p. 6. As just noted, there is no limitation in either
recitation that the goods are purchased solely by
“sophisticated” purchasers. As such, we must presume that
the respective bicycles and bicycle parts, components and
accessories will also be purchased by ordinary consumers
who will exercise no more than ordinary care in their
purchasing decisions. Moreover, even if the purchasers of
applicant’s and registrant’s goods exercise a degree of
care in their purchasing decisions, even knowledgeable and
careful purchasers can be confused as to source, where, as
here, very similar marks are used in connection with
complementary and/or 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."). Accordingly, this du
Pont factor is neutral.
Turning then to the marks, we compare applicant's mark
and registrant's mark HAWK BIKES. In determining
the similarity or dissimilarity of the marks, we must
consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm
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Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as
to the source of the goods offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general, rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant argues that the marks are not similar; its
mark appearing with all the letters in upper case and as a
totally different design6 than the registered mark.
Applicant also asserts that the marks do not sound alike or
give the same impression.
We disagree and find that applicant’s stylized HAWK
RACING mark is substantially similar to the cited HAWK
BIKES mark. Although we must compare the marks in their
entireties, one feature of a mark may be more significant
than another and it is not improper to give more weight to

6 As there is no design element in applicant’s mark, we presume
that applicant is referring to the stylization of its mark by the
use of the term “design.”

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this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) [“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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.”] For
instance, as our principle reviewing court has observed,
“[t]hat a particular feature is descriptive or generic with
respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of
the mark.” See In re National Data Corp., 224 USPQ at 751.
In this case, the cited mark consists of two words,
the first being the word HAWK, which appears to have no
particular meaning in connection with the recited goods.
The second word, BIKES, is generic or otherwise merely
descriptive of registrant’s identified goods. As such, the
term BIKES would not be looked to by consumers as source
identifying. Accordingly, the dominant and distinguishing
portion of the cited mark is the term HAWK.
Applicant’s mark consists of the stylized term HAWK
RACING. The word RACING in applicant’s mark also has been
disclaimed, as it merely describes a type of bicycle for
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which applicant’s components and accessories may be used,
and likewise would not be looked upon as a source-
identifying element. In addition, applicant’s mark is not
so highly stylized that its upper case format serves to
distinguish that mark from the cited mark given the fact
that registrant’s mark is in typed form and, thus, could be
displayed in lettering similar to the mark in the cited
registration. See, e.g., Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59
(Fed. Cir. 2011) (“If the registrant … obtains a standard
character mark without claim to any particular font style,
size or color, the registrant is entitled to depictions of
the standard character mark regardless of font style, size,
or color….” (internal quotation marks omitted)); Squirtco
v. Tomy Corp, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983) (“[T]he argument concerning a difference in type
style is not viable where one party asserts rights in no
particular display. By presenting its mark merely in a
typed drawing, a difference cannot legally be asserted by
that party”); and In re Hester Industries, Inc., 231 USPQ
881, 883, n.6 (TTAB 1986) (“Inasmuch as the drawing of
applicant's mark is in typed form, applicant is not limited
to any particular form of display, and might use its mark
in the same form as registrant”). We also do not find the
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colors “red and black” in applicant’s mark to be a
distinguishing feature between the two marks. Since the
cited registration includes no claim of color, we must
consider the possibility that the registrant’s mark may be
rendered in the colors red and black. See Citigroup v.
Capitol City, supra. See also TMEP § 807.14(e)(i) (7th ed.
2010 and the authority cited therein).
For these reasons, even though applicant’s and
registrant’s marks contain different wording, because of
the descriptive nature of the term RACING in applicant’s
mark and the word BIKES in the registered mark, and the
lesser weight to which these terms are entitled as we
compare the marks in their entireties, applicant’s mark and
the registered mark are substantially similar in sound,
appearance, connotation and commercial impression.
Thus, the factor of the similarity of the marks
strongly favors a finding of likelihood of confusion.
Applicant maintains that “[t]here are over 70 live
trademark registrations on the Trademark Office’s database
which contain the term ‘HAWK’ in International Class 12.”
Br. p. 7. This assertion, however, is completely
unsupported by the record. Even if we were to give the
statement some credence, it is devoid of any information
regarding the nature of the goods or the marks covered by
Ser No. 76698132

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the “70 registrations” and, thus, is of no probative value
with regard to the strength or weakness of the term HAWK in
the bicycle industry.
Finally, applicant maintains that “there is no
recorded confusion regarding the source of the goods
associated with the Registered marks and those associated
with Applicant’s mark.” Br. p. 7. However, there is
nothing in the record to show that there has been
meaningful opportunity for such confusion to have occurred.
More importantly, in the context of an ex parte proceeding,
“the lack of evidence of actual confusion carries little
weight.” Majestic Distilling, supra. 65 USPQ2d at 1205.
Applicant’s argument regarding actual confusion is
therefore unpersuasive, and that du Pont factor is neutral.
Based on all of the evidence of record bearing on the
relevant du Pont factors, we find applicant’s mark
for its identified goods is likely to cause confusion with
the cited registration for HAWKS BIKES. We conclude so
principally due to the similarity of the marks and the
relatedness of the goods. In view of our finding regarding
the cited HAWKS BIKES registration, we need not discuss the
other cited registrations.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.