Bombardier Recreational Products Inc.v.Duramax, Inc.

Trademark Trial and Appeal Board

Dec 4, 2008

No. 91163205 (T.T.A.B. Dec. 4, 2008)

Mailed:
December 4, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Bombardier Recreational Products Inc.
v.
Duramax, Inc.
________

Opposition No. 91163205
against Serial No. 76479757
_______

Peter B. Kunin, of Downs Rachlin Martin PLLC for Bombardier
Recreational Products Inc.

D. Peter Hochberg of D. Peter Hochberg, Co., L.P.A. for
Duramax, Inc.
_______

Before Bucher, Walsh and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Duramax, Inc. seeks registration on the Principal
Register of the following mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91163205
- 2 -
for services recited in the application, as amended, as
follows:
“distributorships in the fields of land vehicles and
marine equipment” in International Class 35; and
“manufacture of general product lines in the fields
of land vehicles and marine equipment to the order
and specification of others” in Int. Class 40;1
Bombardier Recreational Products Inc. has opposed this
application on the ground of priority of use and likelihood
of confusion, alleging that applicant’s mark, when used in
connection with the recited services, so resembles its
JOHNSON mark, registered in connection with the following
goods and services:
for “outboard motors” in International Class 7;2 JOHNSON
for, inter alia, “internal combustion engines for
boats, marine engines and outboard motors, and parts
therefore-namely, outboard motor stands, fuel filters,
and fresh water flushing attachments” in International
Class 7;
“electrical cigarette lighters; safety equipment-
namely, buoyant vests; marine instruments-namely,
tachometers, speedometers, water pressure gauges,
voltmeters, ammeters, temperature gauges, fuel gauges,
hour meters, trim position indicators and oil pressure
gauges” in International Class 9;.

1 Application Serial No. 76632896 was filed on January 2, 2003
based upon claims of first use anywhere and first use in commerce
in both classes of services at least as early as September 1999.
The mark consists of a stylized letter “J” in an oval; the top of
the “J” extends slightly above the top of the oval; and the text
“Johnson Rubber Company” appears below the oval. No claim is made
to the right to use the words “rubber company” apart from the mark
as shown.

2 Registration No. 0519909 issued to Outboard, Marine &
Manufacturing Company on January 17, 1950; third renewal.
Subsequent assignments are recorded with the Assignment Division of
the United States Patent and Trademark Office at Reel 0026/Frame
0059, Reel 2759/Frame 0642 and Reel 2777/Frame 0469.
Opposition No. 91163205
- 3 -
“motor boat accessories-namely, marine propellers” in
International Class 12;
“instructional booklets available separately –
namely, owner's manuals, service manuals, and parts
catalogs all relating to outboard motors, electric
trolling motors and other marine engines” in
International Class 16;
“maintenance and repair of internal combustion
engines, outboard motors and marine accessories” in
International Class 37; and
“retail store services in the field of marine
equipment” in International Class 42.3
as to be likely to cause confusion, to cause mistake or to
deceive, under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d).
Applicant, in its answer, denied all the essential
allegations of these claims.
I. THE RECORD
By operation of Trademark Rule 2.122, 37 CFR § 2.122,
the record includes the pleadings and the file of the
involved application.
The record also includes opposer’s Notice of Reliance
filed on March 28, 2008, making of record certified copies of
opposer’s registered JOHNSON marks, U.S. Registration Nos.
0519909 and 1277753, as discussed above; a book EVINRUDE

3 Registration No. 1277753 issued to Outboard Marine Corporation
on May 15, 1984; renewed. Subsequent assignments are recorded with
the Assignment Division of the United States Patent and Trademark
Office at Reel 2759/Frame 0642 and Reel 2777/Frame 0469.

Opposition No. 91163205
- 4 -
JOHNSON AND THE LEGEND OF OMC;4 an article form the Milwaukee
Journal Sentinel;5 a news release;6 web pages showing
opposer’s JOHNSON outboard motors and marine engines
currently available for sale;7 and web pages showing retail
dealers of Opposer’s JOHNSON marine products.8
Applicant submitted no testimony or evidence, nor did
applicant file a final brief.
II. FACTUAL FINDINGS
The Rodengen book discusses how the Johnson brothers
started the commercial production of outboard boat motors in
Indiana in 1922. The other sources on which opposer relies
report that eighty-six years later, after enormous changes in
technology, multiple changes in ownership (including a
bankruptcy sale of Outboard Marine in 2000), use of this mark
has been continuous, and opposer is still using the JOHNSON

4 By Jeffrey L. Rodengen, at iii-v, 32 - 43, 67 (Write Stuff
Syndicate, Inc. 1992).

5 Entitled “Trolling for market share BRP stirs the waters to
regain prominence of Evinrude, Johnson motor brands” by staff
writer, Rick Barrett, June 7, 2005.

6 Entitled “Boating Industry Magazine Announces 2007 Top 100 and
Leadership Alliance,” May 30, 2007.

7 http://www.brp.com/en-US/Products/Johnson/Showroom/, as
accessed by opposer’s counsel on March 18, 2008.

8 http://dealerlocator.johnson.com/en/joDealerLocator.asp as
accessed by opposer’s counsel on March 19, 2008.

Opposition No. 91163205
- 5 -
mark to identify outboard motors and marine engines, and to
identify retail services in the field of marine equipment.
Retail dealers who sell and service opposer’s JOHNSON brand
marine products are available nationwide.
III. ANALYSIS
A. Standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be (is)
damaged by the registration is reasonable and reflects a real
interest in the case. See also Jewelers Vigilance Committee
Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023
(Fed. Cir. 1987); and Lipton Industries, Inc. v. Ralston
Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Opposer has submitted evidence of its ownership of its
JOHNSON registrations. We consider this sufficient to
establish opposer’s interest and, therefore, standing, in
this proceeding.
Opposition No. 91163205
- 6 -
B. Priority
Because opposer has established that it owns valid and
subsisting registrations of its pleaded marks, priority is
not an issue. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125 (TTAB 1995).
C. Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. Our determination
must be based upon our analysis of all of the probative facts
in evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. 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 Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
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).
Opposition No. 91163205
- 7 -
The Marks
We turn first to examine the similarity of the parties’
marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Opposer argues that the dominant element in applicant’s
mark is “Johnson,” the sole element in opposer’s mark.
Opposer points out that applicant has disclaimed the
exclusive right to use the words “rubber company” apart from
the mark as shown, and applicant’s design element does little
to distinguish its mark from opposer’s. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987) [Mark having the
word “Appetito” in block letters,
prominently displayed between broad
geometric stripes as applied to
Italian sausages, likely to cause
confusion with “Appetito’s” printed
in small script letters across a
large capitalized letter “A,” and
“Appetito’s Inc.” with a large
capitalized letter “A” and the
design of a sandwich, for
restaurant services].
versus
and

Opposition No. 91163205
- 8 -
We take guidance from our primary reviewing court, which
has on occasion found that the words, rather than the design
features of the respective logos, will create a greater
impression on customers. Giant Food, Inc. v. Nation’s Food
Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983):

GIANT
FOOD

SUPER
GIANT

Similarly, see also Sweats Fashions Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987):
ULTRA SWEATS

Inasmuch as consumers generally call for goods or
services in the marketplace by the word portion of the marks,
we find that there is nothing improper in stating that the
audio-literal element generally has more significance than
the design feature in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion. In the
instant case, we agree that from applicant’s composite mark,
the portion that prospective purchasers will recall and use
in calling for or recommending applicant’s services is the
distinctive, literal element, “Johnson.”
Furthermore, inasmuch as opposer’s mark is presented in
a standard character format, opposer is not limited to any
Opposition No. 91163205
- 9 -
particular presentation. Therefore, applicant cannot avoid
likelihood of confusion with opposer’s mark by presenting its
mark in special form. The record shows opposer’s “Johnson”
mark presented in similar italicized block lettering, and it
might well be reasonable for opposer to use its mark, for
example, with a large letter “J” or within an oval carrier
device. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015
(TTAB 1988); Sunnen Products Co. v. Sunex International Inc.,
1 USPQ2d 1744, 1751 (TTAB 1987); and In re Hester Industries,
Inc., 231 USPQ 881, 883, n.6 (TTAB 1986).
Accordingly, this du Pont factor supports a finding of
likelihood of confusion.
Relatedness of the goods and services, Channels of Trade and
Conditions under which sales are made, and to whom

In looking at the respective recitations of services and
goods, we agree with opposer that the manufacturing and
distribution of marine equipment recited rather broadly in
the involved application are closely-related to, if not even
overlapping with, the services recited in opposer’s ’753
registration, and related to the goods in both cited
registrations. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). When, as here, there is no limitation as to the
nature, type, channels of trade or class of purchasers, it
Opposition No. 91163205
- 10 -
must be assumed that the application and/or opposer’s
registrations encompass all the goods and/or services of the
type described, that they move in all of the same channels of
trade normal for these goods and/or services, and that they
are available to all classes of purchasers.
Hence, these critical du Pont factors also support a
finding of likelihood of confusion.
Renown of opposer’s mark
Finally, as to the du Pont factor focusing on the degree
of fame of opposer’s prior mark (sales, advertising, length
of use, etc.), opposer cites to the “continuous, successive,
and widespread use of that mark since 1922 ….” Opposer’s
brief at 8. Opposer also claims that “[t]he JOHNSON mark has
acquired a legendary status and is clearly one of the most
well-known marks, if not the most known mark, in the United
States to identify outboard motors.” Id. at 2. While it may
indeed be true that opposer’s mark is well-known for boat
motors, it has not been properly demonstrated with evidence
submitted for this record. Nonetheless, given the strong
similarities in the commercial impressions of the respective
marks and the close relationship of the involved services, in
order to sustain the opposition herein, it is not necessary
to find any degree of fame for opposer’s mark.
Opposition No. 91163205
- 11 -
Conclusion
In conclusion, we find that opposer has priority in view
of its registrations of record; that applicant’s services are
closely-related to opposer’s services; and that the
respective trade channels and classes of customers are
presumably identical.
Decision: The opposition is sustained based upon the
ground of likelihood of confusion under Section 2(d) of the
Lanham Act, and registration to applicant is hereby refused.