Big Red Machine Motorcycle Co., Inc.

Trademark Trial and Appeal Board

Mar 10, 2004

No. 76180997 (T.T.A.B. Mar. 10, 2004)

Mailed: March 10, 2004
Paper No. 16
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Big Red Machine Motorcycle Company, Inc.
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Serial No. 76180997
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Fritz Clapp of Law Offices of Fritz Clapp for Big Red
Machine Motorcycle Company, Inc.
Gina M. Fink, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Walters, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Big Red Machine Motorcycle Company, Inc. (a California
corporation) filed an application on December 15, 2000, to
register on the Principal Register the mark BIG RED MACHINE
for “motorcycles” in International Class 12. The
application is based on applicant’s claimed date of first
use and first use in commerce of October 18, 1997.
Applicant disclaimed the word “machine.”
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76180997
2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark BIG RED for structural parts
for three-wheeled utility and recreational all-terrain
vehicles in International Class 12,1 as to be likely to
cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing.
We reverse the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003).
Turning first to the involved goods, the Examining
Attorney contends that “both parties’ goods are types of
recreational vehicles and/or structural parts for
1 Registration No. 1289975, issued August 14, 1984 to Honda Giken
Kogyo Kabushiki (Honda) for goods identified as “three-wheeled
utility and recreational all-terrain vehicles and structural
parts therefor.” The Section 8 affidavit (which included a
statement regarding excusable non-use), was accepted by the USPTO
only for a portion of the original identified goods,
specifically, “structural parts.” Thus, the cited registration
is limited to “structural parts,” for such vehicles.
Ser. No. 76180997
3
recreational vehicles” (brief, unnumbered page 3); and that
motorcycles, all-terrain vehicles and structural parts for
both are all sold in motorcycle shops and through on-line
retailing web sites. In addition, the Examining Attorney
contends that “Honda is at times synonymous with the term
‘big red’ in terms of racing and motorcycles.” (Brief,
unnumbered page 4.)
The Examining Attorneys2 submitted (i) printouts of
numerous third-party registrations to show that consumers
are familiar with the fact that the same companies make
motorcycles and all-terrain vehicles, as well as structural
parts and accessories for both; (ii) printouts of pages
from a few web sites to show that both parties’ goods
emanate from a single source; and (iii) a few excerpted
stories retrieved from the Nexis database to show that
“Honda” is well known in connection with motorcycles and
that “Honda,” the company, is well known as “BIG RED.”
Applicant takes the position that these goods are
completely distinct; that the trade channels and purchasers
are completely different; and that the goods are costly and
2 Two different Examining Attorneys have been assigned, at
different times, to this case.
Ser. No. 76180997
4
the purchasers would exercise care in obtaining these
goods, thereby avoiding a likelihood of confusion.3 In
addition, applicant argues that there is a third-party
registration (No. 2121046) for the mark BIG RED for “tow
tractors and structural parts therefor”; that registrant
(Honda) has ceased using the mark BIG RED for the three-
wheeled all-terrain vehicles; and that even when Honda did
use the term BIG RED on these goods, it appeared
subordinate to the house mark, “HONDA.”
The problem with the Examining Attorney’s position is
that registrant’s involved goods, as identified (after the
filing and acceptance of registrant’s Section 8 affidavit
of use), do not include three-wheeled all-terrain vehicles,
but rather are limited to structural parts for such
vehicles. There is insufficient evidence of record that
the same entity offers goods such as applicant’s
motorcycles, and also offers structural parts for three-
wheeled all-terrain vehicles under the same mark. Many of
the Examining Attorney’s third-party registrations are for
motorcycles and all-terrain vehicles and/or for various
services offered with respect to both motorcycles and all-
terrain vehicles (e.g., providing extended warranty
3 Applicant’s attorney averred in a declaration, inter alia, that
applicant’s motorcycles retail for over $16,000.
Ser. No. 76180997
5
contracts, financing services, retail store services,
distributorships). The web sites also generally refer to
motorcycles and all terrain vehicles.
Moreover, applicant’s motorcycles are expensive and
would be purchased only with care. Likewise, presumably,
purchasers who seek structural parts for their three-
wheeled all-terrain vehicles must purchase such parts with
care in order to obtain the proper part.
Simply put, we cannot conclude from the evidentiary
record furnished by the Examining Attorney that motorcycles
and structural parts for three-wheeled all-terrain vehicles
emanate from a single source, such that the careful
consumers of these goods would assume a common source.
As a result, even though the respective marks, BIG RED
and BIG RED MACHINE, are very similar in sound, appearance,
meaning and commercial impression, the record does not
support a finding that the contemporaneous use of the mark
BIG RED MACHINE by applicant for motorcycles and
registrant’s BIG RED mark for structural parts for three-
wheeled all-terrain vehicles is likely to cause confusion.
See In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998); and In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Thus, on this ex parte record, we are constrained to
find that the Examining Attorney has not established a
Ser. No. 76180997
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likelihood of confusion. Of course, the Board makes no
finding herein as to what may be shown in any inter partes
case involving this application.
Two matters we note for the record. First, the
Examining Attorney’s evidence regarding the cited mark as
being “well known” is not sufficient to establish the
likelihood of confusion herein because it is evidence that
the registrant itself, Honda, is known as BIG RED. There
is no evidence that the registered mark is well known for
the involved identified goods, namely, structural parts for
three-wheeled all-terrain vehicles.
Second, applicant’s argument regarding a single third-
party registration for the mark BIG RED is not the reason
we have found in applicant’s favor. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001);
and In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001).
Decision: The refusal to register under Section 2(d)
is reversed.