H-D Michigan, Inc.v.Boutique Unisexe El Baraka, Inc. and 3222381 Canada, Inc.

Trademark Trial and Appeal Board

Dec 30, 2004

CANC (T.T.A.B. Dec. 30, 2004)

Mailed: December 30, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
H-D Michigan, Inc.
v.
Boutique Unisexe El Baraka, Inc. and 3222381 Canada, Inc.,
joined as a party defendant
_____
Opposition No. 91108265 and
Cancellation Nos. 92027073 and 92029665
_____
Kristin L. Murphy and Michael A. Lisi of Rader, Fishman &
Grauer PLLC and Linda K. McLeod and David M. Kelly of
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
for H-D Michigan, Inc.
Janet F. Satterthwaite of Venable, LLP for Boutique Unisexe
El Baraka, Inc. and 3222381 Canada, Inc.
______
Motion for Reconsideration
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Before Simms, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
The Board, in a decision issued September 30, 2004,
sustained the opposition to defendant’s application to
register the mark SCREAMIN EAGLE for jewelry, posters, beer
mugs, and clothing and accessories. Further, the Board
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91108265; and Cancellation Nos. 92027073 and
92029665
2
granted the petitions to cancel the registrations of the
mark SCREAMING EAGLE for coffee mugs, belt buckles, brooches
and clothing and accessories.
In particular, the Board found that plaintiff had prior
common law use of the mark HARLEY-DAVIDSON SCREAMIN’ EAGLE
PERFORMANCE PARTS and design for pins, belt buckles,
baseball caps, lighters and emblems/patches. Further, the
Board found that defendant’s use of the mark SCREAMIN EAGLE
for its identified goods was likely to cause confusion with
plaintiff’s previously used mark HARLEY-DAVIDSON SCREAMIN’
EAGLE PERFORMANCE PARTS and design for its identified goods.
Defendant has filed a timely motion for
reconsideration. Defendant maintains that the Board erred
in finding that plaintiff has priority and dismissed
defendant’s argument that the marks are not similar. Also,
defendant contends that the Board “disregarded [defendant’s]
argument about the import of third-party use of SCREAMIN’
EAGLE across a variety of goods.” (Reconsideration Motion,
pp. 5-6).
With respect to defendant’s contention that the Board
erred in finding that plaintiff has priority, defendant is
essentially requesting that the Board reweigh the evidence
on this issue. The basis for the Board’s finding on this
issue is clearly articulated in the decision and we do not
find any error in reaching that finding.
Opposition No. 91108265; and Cancellation Nos. 92027073 and
92029665
3
Further, contrary to defendant’s contention, the Board
did not simply “dismiss” defendant’s argument that the marks
are not similar. Rather, the Board clearly articulated the
reasons for our finding that the marks are similar.
(Decision, pp. 23-24).
Finally, contrary to defendant’s contention, the Board
did not disregard defendant’s argument concerning third-
party registrations and third-party uses of SCREAMIN’ EAGLE.
The Board pointed out that third-party registrations are of
limited probative value in determining likelihood of
confusion because they are not evidence of actual use of the
marks in commerce. (Decision, pp. 27-28). Also, the Board
pointed out that the third-party uses were entitled to
little weight because they are for unrelated goods and
services. (Decision, p. 28). As noted by our primary
reviewing court:
The relevant duPont inquiry is “[t]he number
and nature of similar marks in use on similar
goods.” (citation omitted)
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
In sum, we remain convinced that the record establishes
plaintiff’s priority, that the marks are similar, and that
plaintiff’s mark is not weak. Defendant’s motion for
reconsideration is accordingly denied.