Republic Bike Inc.

Trademark Trial and Appeal Board

Mar 26, 2012

No. 77909077 (T.T.A.B. Mar. 26, 2012)

Mailed:
March 26, 2012
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Republic Bike Inc.
________

Serial No. 77909077
_______

Seth I. Appel of Harvey Siskind LLP for Republic Bike Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Bergsman and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Republic Bike Inc. seeks registration on the Principal
Register of the mark REPUBLIC (in standard character format)
for goods identified in the application, as amended, as
follows:
bicycles excluding tires; bicycle accessories,
namely, bicycle frames, bicycle forks, bicycle
handlebars, bicycle cranks, bicycle stems, bicycle
saddles, bicycle grips, bicycle pedals, bicycle
chains, bicycle bells, bicycle baskets, bicycle bags
for affixation to bicycles in International Class 12.1

1 Application Serial No. 77909077 was filed on January 11,
2010, based upon applicant’s claim of use anywhere and use in
commerce on “bicycles excluding tires” since at least as early as
January 19, 2009, and based upon applicant’s allegation of a
bona fide intention to use the mark in commerce in connection
with the balance of the goods listed in International Class 12.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77909077
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The Trademark Examining Attorney issued a final refusal
to register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the identified goods, so resembles
the mark REPUBLIC (in prior typeset format) registered for
“tires” in International Class 12,2 as to be likely to cause
confusion, to cause mistake or to deceive.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register.
Arguments of applicant and the Trademark Examining Attorney
In urging registrability, applicant contends that there
is no likelihood of confusion: because applicant’s bicycles
and bicycle accessories are not related to Goodyear’s tires;
that registrant and applicant use distinct channels of
trade; that the relevant purchasers consider such purchases
with care; and that the position of the Trademark Examining
Attorney contradicts past decisions of the United States
Patent and Trademark Office.
By contrast, the Trademark Examining Attorney takes the
position that there is a likelihood of confusion because the

2 Registration No. 2475808 issued on August 7, 2001; renewed.

Serial No. 77909077
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respective marks are identical, and because the evidence
shows that these respective goods are highly related and may
well be offered in the same trade channels to the same
potential customers.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See 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); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Similarity of the Marks
As to the first du Pont factor, we agree with the
Trademark Examining Attorney that the marks are identical in
every respect, and hence, will convey the same commercial
Serial No. 77909077
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impression. This critical du Pont factor favors a finding
of likelihood of confusion.
The Relationship of the Goods
We turn next to the du Pont factor focused on the
relationship of the goods. We begin our discussion of this
factor by noting that where the respective marks are
identical, as is the case herein, the relationship between
the goods of registrant and applicant need not be as close
to support a finding of likelihood of confusion as might
apply where differences exist between the marks. In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v.
Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
Applicant’s position turns on the argument that the
extent of potential confusion between Republic Bike’s mark
and Goodyear’s cited mark is de minimis given the
practicalities of the commercial marketing world. Applicant
even cites to a Board case, MTD Products Inc. v. Universal
Tire Corp., 193 USPQ 56 (TTAB 1976), where the Board found
no likelihood of confusion between COLUMBIA for bicycles and
COLUMBIA for passenger automobile tires, noting that
opposer’s bicycles and applicant’s auto tires
are generally purchased under different circumstances
and conditions in different marketing environments
based upon different considerations… [That] in the
practicalities of the commercial marketing world,
[there was no] viable chance that there would be a
Serial No. 77909077
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likelihood that these different products would be
attributed to the same source merely because of the
common use of the mark 'COLUMBIA.’

Id. at 60.
Of course, registrant’s relevant goods herein are
simply identified as “tires.” The nature and scope of a
registrant’s goods must be determined on the basis of the
goods as identified in the registration. See In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir.
1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); and Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).
Until such time as the Court of Appeals for the Federal
Circuit tells us differently, we must assume that an
identification of “tires” in a cited registration
encompasses all tires, within reason, and this would include
bicycle tires. Therefore, applicant’s alleged evidence
regarding what registrant actually sells is irrelevant and
cannot be considered in this ex parte proceeding. We are
bound by registrant’s identification of goods, which could,
on its face, reasonably include bicycle tires. It would be
Serial No. 77909077
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impermissible to limit the scope of registrant’s goods by
relying upon extrinsic evidence. Moreover, applicant admits
that registrant (Goodyear Tire and Rubber) had indeed
produced bicycle tires until 2006. Finally, as to the tire
and rubber industry in general, the record shows that
multinational automobile tire manufacturers like
Continental3 and Michelin continue to make a wide range of
tires, including tires for bicycles.
4
5
6
7

In order to show a relationship between bike tires and
applicant’s goods, namely, bicycles, bike parts, and bike
accessories, the Trademark Examining Attorney attached
copies of the following third-party registrations:

3 http://bikemart.com/brands/continental-bicycle-tires-
pq893.htm as accessed by the Trademark Examining Attorney on
October 29, 2010.
4 http://www.trisports.com/tirestubes.html
5 Id.
6 http://www.bicycleeverything.com/
7 http://www.bicyclebuys.com/manufacturer/Michelin/tires

Serial No. 77909077
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MONGOOSE for “bicycles and parts therefor-namely,
bicycle frames, forks, seats and tires”
in International Class 12;8
SUNDANCE for “bicycles and structural parts
therefor; bicycle accessories-namely,
tires, tire inner tubes, horns and bells”
in International Class 12;9

for “bicycle components namely frame
sets; forks; stems; saddles; bicycle
tires; toe straps and bicycle water
bottles” in International Class 12;10
SCHWINN for “bicycles and parts therefor; namely,
saddles, tires and inner tubes therefor,
toe clips, chain stays, handle bars,
forks, and suspensions; bicycle
accessories; namely, saddle covers, water
bottle racks which attach to bicycles,
air pumps which attach to bicycles,
bicycle racks for vehicles and cycling
bags” in International Class 12;11
FREE AGENT for “bicycle frames; bicycle gears;
bicycle handlebar grips; … bicycle parts,
namely, drive chains; … bicycle parts,
namely, forks; … bicycle parts, namely,
handle bar stems; … bicycle parts,
namely, tubes and connectors for bicycle
frames; bicycle pedals; … bicycle
saddles; bicycle seat posts; bicycle
stands; … bicycle wheels; bicycles;
frames for bicycles; inner tubes for

8 Reg. No. 1148240 issued on March 10, 1981; second renewal.
9 Registration No. 1287846 issued on July 31, 1984; renewal.
10 Registration No. 1443031 issued on June 16, 1987; renewed.
11 Registration No. 1909911 issued on August 8, 1995; renewed.
Serial No. 77909077
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bicycles; … rims for bicycle wheels;
… tires of … bicycles; tires for
children’s' bicycles; … wheel hubs of …
bicycles” in International Class 12;12

for “bicycles, and bicycle parts and
accessories, namely, bicycle frames,
bicycle pumps, inner tubes, tires,
saddles, handlebar grips, handlebar
safety pads, handlebars, handlebar tape,
brake levers, handlebar stems, seat
posts, and water bottle cages” in
International Class 12;13

for “bicycle frames; bicycle parts,
namely, forks, saddles, drive trains,
handle bar stems, handle bars, seat
posts, sprockets, tires, rims, pedals,
wheel hubs, wheels; bicycles” in Cl. 12;14
FIT BIKE CO. for “bicycles and parts therefor, namely,
frames, forks, handlebars, …, handlebar
stems, brake levers, handle grips, brake
cables, tires, rims, inner tubes, spokes,
hubs, seat-posts, seat-post clamp, seats,
crank sets, pedals, …” in Int. Cl. 12;15

for “bicycles; bicycle parts, namely,
bicycle gears, bicycle chains, bicycle
tires, bicycle frames, … bicycle pedals,
inner tubes for bicycles, … bicycle
saddles and bicycle saddle covers, air
pumps of two-wheeled motor vehicles or
bicycles, tire pumps, tire patches,
baskets made for bicycles, … ” in
International Class 12;16
ANIMAL BIKES for “bicycles and bicycle parts and
accessories, namely, tires, handlebar
grips, pedals, bicycle seats, bicycle
seat clamps, handlebars, brake wires,
chains, hubs, cranks, and frames” in
International Class 12;17

12 Registration No. 3112041 issued on July 4, 2006; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
13 Registration No. 3183096 issued on December 12, 2006.
14 Registration No. 3266209 issued on July 17, 2007.
15 Registration No. 3311711 issued on October 16, 2007.
16 Registration No. 3329371 issued on November 6, 2007.
17 Registration No. 3346595 issued on December 4, 2007.
Serial No. 77909077
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for “bicycles; bicycle parts and
accessories for bicycles, namely, front
forks, suspension front fork stems, seat
posts, saddles, bicycle frames, … rims,
tires, pedals, grips, … ” in Int. Cl.
12;18
KHAMSIN for “bicycles; bicycle parts, components
and accessories, namely, bicycle frames,
tubes and connectors for bicycle frames,
bicycle wheels, rims and spokes for
bicycle wheels, pedals, hubs, … drive
chains, brakes, … front and back forks, …
handle-bar connections and handle-bars,
forks and cushioned forks, kickstands,
bicycle stands, tires and tubular tires,
inner tubes, tires for bicycles, all for
bicycles” in International Class 12.19
SUBROSA for “bicycles; structural bicycle parts,
namely, wheels, tires, seats, handle
bars, bicycle chains, wheel hubs, cranks,
… drive trains, pedals, … forks, axels,
seat posts, frames and stems” in Cl. 12;20
REALM for “bicycles and parts therefor; namely,
saddles, tires and inner tubes therefor,
toe clips, chain stays, handle bars,
forks, and suspensions; bicycle
accessories; namely, saddle covers, … ”
in International Class 12;21 and
AMSTERDAM for “bicycles and bicycle parts, namely,
bicycle bells, bicycle chain rings,
cranks, bicycle handlebar grips, mud
flaps, bicycle seats, bicycle saddles,
bicycle tires, bicycle tire valve caps,
… ” in International Class 12.22
While these third-party registrations are not evidence
of use, they serve to suggest that the listed goods are of a

18 Registration No. 3381860 issued on February 12, 2008.
19 Registration No. 3399707 issued on March 18, 2008.
20 Registration No. 3407171 issued on April 1, 2008.
21 Registration No. 3433272 issued on May 20, 2008.
22 Registration No. 3726783 issued on December 15, 2009.
Serial No. 77909077
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type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Given the complementary nature of these goods, we find
that bike tires and bicycles/bike parts are indeed closely
related.
The similarity of the trade channels.
Although applicant argues that its trade channels are
indeed quite limited, this ignores the fact that there are
no limitations in its identification of goods. Hence, we
must presume that the respective goods are offered to the
same potential retail customers in the same trade channels.
Specifically, applicant argues inasmuch as it promotes
its bicycles as stylish and fashionable, and limits its
distribution to fashion stores such as Urban Outfitters, and
offers its bicycles and bicycle accessories on its own
website,23 it does not even offer its products in ordinary
bicycle stores. Applicant points out that obviously
Goodyear does not offer its tires in Urban Outfitters or
similar fashion stores. Aside from Republic Bike’s and
Goodyear’s individual marketing practices, applicant points
out again that it would be as strange for a manufacturer of
bicycles and bicycle accessories to offer its products

23 www.republicbike.com

Serial No. 77909077
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through an automobile tire dealership as it would be for a
manufacturer of automobile tires to offer its products
through a bicycle or fashion shop. But of course, that is
not the question before us.
When the focus is on bicycles and bicycle accessories,
on the one hand, and bicycle tires on the other hand, the
Trademark Examining Attorney has placed into the record
numerous examples of online merchants selling bicycles,
bicycle accessories and bicycle tires.
As seen above, in order to find that goods are related,
it is not necessary that they be identical or competitive.
Rather, it is only necessary that they be related in some
way that causes consumers to think mistakenly that they come
from the same source. The record shows that retail
enterprises that sell bicycles and bicycle accessories
invariably also sell bicycle tires. Replacement tires are
an essential feature for regular bicycle riders. Consumers
accustomed to seeing both bicycles and bicycle tires in the
same shop would be confused as to origin if they saw a
bicycle tire having a mark identical to the trademark of a
bicycle.
In addition to the third-party registrations submitted
by the Trademark Examining Attorney, the record also
contains evidence from a number of Internet websites showing
Serial No. 77909077
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that applicant’s types of goods, such as bikes, bike parts
and accessories are all sold right alongside bicycle tires
to the same potential customers in the same trade channels.
This combined evidence seems to belie the assertion made by
applicant that “[c]onsumers are well aware that bicycles and
tires do not generally originate from a single source.”
Applicant’s brief at 3. Or perhaps this is applicant once
again using the term “tires” synonymous with “automobile
tires.”

24

25

Fuji D-6 RC Matt Reed bicycle | WBT MotoRaptor Tire 2.24”26

24 http://www.performancebike.com/
25 http://www.chubbyscruisers.com/
26 http://www.bobs-bicycles.com/
Serial No. 77909077
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27

• Chrome Double Spinning Bike
Bell
• Firmstrong Urban 7 Speed 26
inch Ladies Beach Cruiser
• Micargi Pantera 26" Ladies
Beach Cruiser
• 26” x 1.95” Sunlite Kwest Tires
28

29

• Bikes and Trikes
• Bicycle Tires
30

31

27 http://www.beachbikes.net/
28 http://lightenupbikes.com/
29 http://www.bicycletires.com/
30 http://www.bicycleeverything.com/
31 http://www.bicyclebuys.com/tires/TiresRoad/
Serial No. 77909077
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Applicant analogizes to several other cases where no
relationship was found between particular goods and/or
services. However, the realities of the relevant
marketplace, as seen above, reveal a close relationship
between bicycle tires and bikes/bicycle parts and
accessories. This particular set of facts represents a set
of facts not seen with cooking classes vs. kitchen textiles
(Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d
1350 (Fed. Cir. 2004), a case cited by applicant), or DOVE
chocolates vs. DOVE soap at one’s local CVS store (an
example from applicant’s brief at 6), or for that matter,
any two consumer products one might think of at random being
marketed currently through mass merchandisers, whether one
is putting the disparate items into a virtual cart on
Amazon.com, or into an actual cart while strolling the aisles
of a local brick-and-mortar superstore like Wal Mart.
Accordingly, we find that all the evidence of record
supports the conclusion that the channels of trade herein
are the same and that the classes of consumers are the same.
Conditions surrounding sales
Applicant’s argument as to the relatively high retail
price of each of its bicycles is also irrelevant to our
determination. We cannot resort to such extrinsic evidence
to restrict the price range of applicant’s or registrant’s
Serial No. 77909077
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goods. See In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986) (evidence that relevant goods are expensive
wines sold to discriminating purchasers must be disregarded
given the absence of any such restrictions in the
application or registration). Furthermore, the involved
application also includes a listing of bike parts and
accessories, including bicycle bells and baskets. We assume
these latter items will be sold at all the usual price
points for such goods, which based on bells and baskets
displayed in this record, would be fairly inexpensive.
Hence, for purposes of determining the customer’s likely
standard of care, the purchase of a bicycle bell is not
placed into the same basket as would be the careful and
studied selection of a brand new specialty bike by a bicycle
enthusiast.
We note that as to several of these related du Pont
factors, applicant cites to our non-precedential decision of
In re Hyundai Motor America.32 As to the degree of care
taken by prospective consumers, we find a significant
difference between automobiles and automobile tires, on the
one hand, and bicycle accessories, on the other.33

32 Ser. No. 78889340, 2009 TTAB LEXIS 598 (TTAB Sept. 14,
2009).
33 As noted by the Trademark Examining Attorney, Hyundai Motor
was a different case having quite different facts. In addition
to having significantly higher price points than the goods in the
Serial No. 77909077
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Period of contemporaneous use without actual confusion
Finally, we turn to the du Pont factor dealing with the
length of time during and conditions under which there has
been contemporaneous use without any evidence of actual
confusion. Applicant argues that coexistence over a period
of several years provides strong evidence that confusion is
not likely to occur in the future. As to whether there has
been sufficient opportunity for confusion to occur, the
record contains no indication of the level of sales or
advertising of these items by applicant. The absence of any
instances of actual confusion is a meaningful factor only
where the record indicates that, for a significant period of
time, an applicant’s sales and advertising activities have
been so appreciable and continuous that, if confusion were
likely to happen, any actual incidents thereof would be
expected to have occurred and would have come to the
attention of one or both of these trademark owners.
Similarly, we have no information concerning the nature and
extent of registrant’s use, and thus we cannot tell whether
there has been sufficient opportunity for confusion to
occur.

case at bar, the record in Hyundai Motor did not contain evidence
showing overlapping channels of trade, or that the respective
goods may actually emanate from a single source.
Serial No. 77909077
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All of these enumerated issues materially reduce the
probative value of applicant’s argument regarding asserted
lack of actual confusion. Therefore, applicant’s claim that
no instances of actual confusion have been brought to
applicant’s attention is not indicative of an absence of a
likelihood of confusion. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
In any event, we are mindful of the fact that the test
under Section 2(d) of the Act is likelihood of confusion,
not actual confusion.
Conclusion: Likelihood of Confusion
In conclusion, the du Pont factors favoring a finding
of likelihood of confusion include the fact that the marks
are identical, the goods are complementary and closely
related, and we must presume that they will move through
overlapping trade channels to the same classes of ordinary
consumers.
Decision: The refusal to register this mark based upon
Section 2(d) of the Lanham Act is hereby affirmed.