H-D Michigan LLCv.Bryan C. Broehm

Trademark Trial and Appeal Board

Apr 28, 2009

No. 91177156 (T.T.A.B. Apr. 28, 2009)

Mailed: April 28, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

H-D Michigan LLC1
v.
Bryan C. Broehm
_______

Opposition No. 91177156
to Application No. 78896325
filed on May 30, 2006
_______

David M. Kelly, Linda K. McLeod and Jonathan M. Gelchinsky
of Finnegan, Henderson, Farabow, Garrett & Dunner for H-D
Michigan LLC.

Bryan C. Broehm, Pro Se.
_______

Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

H-D Michigan LLC filed its opposition to the
application of Bryan C. Broehm to register the mark shown
below for “hats, headwear, shirts, T-shirts,” in

1 The original opposer and owner of the pleaded registration, H-D
Michigan, Inc., is now H-D Michigan LLC by merger and change of name
recorded with the USPTO. Thus, we have substituted H-D Michigan LLC for
the original opposer.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91177156
2
International Class 28.2 The application includes a
description of the mark as follows: “The mark consists of
the Christian Cross with a banner in front with the name
HOLY-DIVINESON on the banner and the name JESUS written on
the cross above the banner, and CHRIST written on the cross
below the banner.”

As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered marks
HARLEY, HARLEY-DAVIDSON and a “bar and shield logo” for a
wide variety of goods and services, including clothing
items, as to be likely to cause confusion, under Section
2(d) of the Trademark Act.3

2 Application Serial No. 78896325, filed May 30, 2006, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.

3 Opposer made of record status and title copies of 63 registrations
that it owns. We have considered only those registrations that were
also pleaded in the notice of opposition. Opposer did not amend its
notice of opposition to add the additional registrations, nor does the
record show that the parties tried the issues of likelihood of confusion
or dilution with respect to these unpleaded registrations by either
express or implied consent.

Opposition No. 91177156
3
Opposer also asserts a claim of dilution, alleging that
its pleaded marks became famous before the filing date of
the subject application.
Applicant, in his answer, denied the salient
allegations of the claims.
The Record
The record consists of the pleadings; the file of the
involved application; certified status and title copies of
pleaded registrations owned by opposer; various specified
responses of applicant to opposer’s interrogatories and
requests for admissions, and various printed publications,
all made of record by opposer’s notices of reliance; and the
testimony depositions by opposer of Scott Beck, Director of
Marketing Harley-Davidson Motor Company, and Laura Johnson,
opposer’s counsel’s litigation clerk, both with accompanying
exhibits. The evidence submitted by applicant was untimely,
it was stricken by the Board’s order of January 1, 2009, and
it has been given no consideration. Both parties filed
briefs on the case.
Factual Findings
Opposer has established the subsistence and its
ownership of the pleaded registrations. Of these
registrations, we note the details of the following four
registrations, which are particularly relevant herein:
(emphasis added)
Opposition No. 91177156
4

Registration No.
& Status
Mark Goods/Services
Registration No.
1205380
[issued 8/17/82;
Renewed; Sec. 15
declaration
acknowledged]

“Clothing, namely, T-
shirts,” in
International Class
25
(as well as good in
International Class
12)
Registration No.
1263936
[issued 1/17/1984;
Renewed ; Sec. 15
declaration
acknowledged]

“Clothing, namely, T-
shirts, jackets, blue
jeans, sweat shirts,
underwear,
nightshirts,
bandanas, headwear,
socks, boots, cycle
riding suits, aprons,
belts and
suspenders,” in
International Class
25
(as well as goods in
additional classes)
Registration No.
1571032
[issued 12/12/1989;
Renewed; Sec. 15
declaration
acknowledged]

Disclaimer of
CLOTHES

“Clothing, namely,
jeans, T-shirts and
jackets,” in
International Class
25

Registration No.
1660539
[issued 10/15/1991;
Renewed; Sec. 15
declaration
acknowledged]

Disclaimer of
MOTORCYCLES

“belts, decorative
boot straps, leather
bandanas, boot tips,
chaps, coveralls,
denim pants, gloves,
halter tops, hats,
caps, heel guards,
heel spurs, jackets,
neckties, night
gowns, night shirts,
pants, rain suits,
shirts, socks, sole
plates, suspenders,
sweaters,
Opposition No. 91177156
5
sweatshirts, tank
tops, athletic shoes,
shoes, boots, T-
shirts, underwear,
vests, and wristbands
(as well as goods in
additional classes)
** We refer throughout this opinion to opposer’s design
marks generally as “the bar and shield logos.”

Opposer has manufactured and sold motorcycles under the
mark HARLEY-DAVIDSON since 1903; and it has used HARLEY-
DAVIDSON MOTORCYCLES on the bar and shield logo in
connection with motorcycles and parts since 1910. Opposer
began using the HARLEY-DAVIDSON MOTORCYCLES bar and shield
logo in 1914 in connection with sweaters, jackets and vests
and, over the years, expanded use of this mark to a wide
variety of products, including everything from clothing,
jewelry, belts, wallets and chains to billiard tables, pool
cues and telephones. Since at least the early 1980’s,
opposer has used the bar and shield logo with the name
HARLEY-DAVIDSON appearing on the cross bar of the logo, the
word “Motor” appearing on the shield above the bar, and
different words appearing on the shield below the bar,
including “Company,” “Cycles,” and “Clothes” in connection
with a wide variety of goods and services.
In 1977, opposer began using the bar and shield logo
with no wording in connection with jewelry, shirts, T-
Opposition No. 91177156
6
shirts, sweatshirts, and headwear such as hats and caps, as
shown below.

Opposer’s use of the blank bar and shield logo has expanded
to use in connection with a wide variety of goods and on
fixtures at opposer’s dealerships.
Opposer’s bar and shield logo, blank and with various
wording, is used both on tags and labels and imprinted on
clothing and other products. Opposer’s use of its marks has
been continuous to the present. Opposer licenses the use of
its marks for a wide variety of goods and services. Opposer
has approximately 650 dealerships in the United States that
sell its motorcycles, parts, clothing, accessories and other
branded items. Opposer’s clothing items and headwear are
sold through its own dealerships to motorcycle enthusiasts,
and through kiosks, seasonal outlets, and third-party
retailers such as Wal-Mart, Target, Kmart and various box
stores to the general mass market.
Additionally, opposer has registered and licenses marks
that incorporate its bar and shield logo for particular
constituencies, such as police, sheriffs and fire
departments. For example, opposer has used the marks shown
Opposition No. 91177156
7
below in connection with, at least, shirts, T-shirts, caps
and hats.

Opposer advertises in numerous widely-distributed print
publications, usually with double-page ads, on television
and radio, at sporting events, through catalogs and
brochures and it has a substantial advertising presence on
the Internet. Its advertising is for both its motorcycles
and many of its other products, including its clothing and
headwear. Opposer distributes numerous catalogs and
brochures for its various products, including its clothing
and headwear. Opposer has sponsored professional sports
teams, publishes two magazines for its riders and
enthusiasts, has a “Harley Owners Club” known as “H.O.G.S,”
has had numerous celebrities such as Jay Leno and Mickey
Opposition No. 91177156
8
Roarke appear in its advertisements, and has placed its
products in numerous movies and television shows since at
least the 1950’s. Additionally, opposer has had books
written about its motorcycles and company history and it has
received numerous unsolicited “mentions” in a significant
number of widely-distributed publications and periodicals.
Opposer submitted confidential evidence of licensee
royalties, wholesale and retail revenues, promotional
activities and advertising expenses for the several years
before the trial commenced. Suffice it to say, these
figures are very substantial. Additionally, opposer’s
witness, Scott Beck, Director of Marketing at Harley-
Davidson Motor Company, stated that by 1920, opposer was the
largest motorcycle manufacturer in the world; that, at the
time of trial, opposer was the largest heavyweight
motorcycle manufacturer in the world, owning 58% of the U.S.
marketshare for motorcycles; and that, for at least the five
years before trial, opposer was ranked in the top 50 of
inter-brand rankings in terms of brand value and strength.
Applicant is an individual who chose the proposed mark
to use in connection with motorcycle-related clothing with
Christian themes, rather than with “the dark and evil
paraphernalia associated with the motorcycle-riding
culture.” (Response to Interrogatory No. 7.) He admits
that he was aware of opposer’s marks before selecting his
Opposition No. 91177156
9
mark and that, in fact, he used the Harley-Davidson shield
and bar marks as “the inspiration” for his design and he
admits that the marks “share geometric aspects.” (Admission
Nos. 2, 11-13, and 19.) Applicant also admits that
opposer’s marks HARLEY-DAVIDSON, HARLEY, and the shield and
bar logo marks are famous and well known to the general
public in connection with motorcycles. (Admission Nos. 4-
9.)
To date, applicant has used the proposed mark only as a
decal on his own helmet and T-shirts; he has also registered
the domain names www.holy-divineson.com and
www.holydivineson.com. Applicant owns a Harley-Davidson
motorcycle; he has purchased parts, T-shirts, clothing and
accessories from opposer; and he is a member of the Harley
Owners Group (H.O.G.).
Analysis
Standing
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made its pleaded registrations of
record and, further, has shown that it is not a mere
intermeddler. Opposer’s use and registration of its marks
establish that opposer has standing. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
Opposition No. 91177156
10
(Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Additionally,
opposer has established its use of the blank bar and shield
logo, which we find particularly relevant herein, in
connection with, inter alia, shirts, T-shirts, hats and caps
since at least 1977, which is long prior to the filing date
of this application. Since applicant claims only an
intention to use the mark, and has not submitted any
evidence of earlier use, his filing date is the earliest
date on which he is entitled to rely.
Thus, the only issue to decide herein under Section
2(d) is likelihood of confusion.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
Opposition No. 91177156
11
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
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). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence.
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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein. The relevant du
Pont factors in the proceeding now before us are discussed
below.
Considering the issue of likelihood of confusion, we
focus our comments on opposer’s previously-used blank logo
and shield mark for shirts, T-shirts, hats and caps and,
with respect to opposer’s pleaded and established
registrations, on the four registrations that are described
infra, since these are the marks and registrations that are
the closest to applicant’s mark and goods.
Fame
We turn first to the factor of fame because this factor
plays a dominant role in cases featuring a famous or strong
Opposition No. 91177156
12
mark. Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); Kenner Parker Toys Inc. v. Rose Arts
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992). Famous marks are accorded more protection
precisely because they are more likely to be remembered and
associated in the public mind than a weaker mark. Id.
Indeed, “[a] strong mark . . . casts a long shadow which
competitors must avoid.” Id. A famous mark is one “with
extensive public recognition and renown.” Id. See also
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1694. Given the nature of
opposer’s goods and services, the relevant consuming public
herein comprises the general public.
In this case, applicant has admitted that opposer’s
marks, including the bar and shield logo marks, are famous
and that “[t]he Harley-Davidson bar and shield logo was used
as an inspiration for my design.” (Brief, p. 2.) Moreover,
the evidence establishes that not only has opposer conducted
extensive promotion and advertising and made numerous sales
of, at least, motorcycles, clothing and headwear, but its
marks and goods have been the focus of substantial public
attention in the form of books and numerous unsolicited
articles from the popular press referring to opposer’s goods
Opposition No. 91177156
13
and its marks.4 Therefore, we conclude that the fame of
opposer’s HARLEY-DAVIDSON, HARLEY and bar and shield logo
marks in connection with motorcycles and, at least,
accessories such as clothing and headwear is established in
this case. In particular, we note the use of the bar and
shield logo, both blank and with various wording, especially
in connection with police, sheriff and firefighter badges.
What remains constant among these marks is the shape of the
bar and shield logo, regardless of wording or additional
matter. Thus, we find that the bar and shield logo,
regardless of wording and other matter, is itself a famous
mark in connection with at least motorcycles, clothing and
headwear.
This du Pont factor of the fame of opposer’s marks
weighs strongly in opposer’s favor.
The Goods
It is well established that the goods and/or services
of the parties need not be similar or competitive, or even
offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that
the respective goods and/or services of the parties are

4 While the articles are admissible, such evidence may not be considered
as proof of the statements therein. Life Zone, 87 USPQ2d at 1956 n.5;
7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007). Thus,
while the statements in the articles are not proof of their truth, we
have considered the fact that such a large number of articles have been
written to demonstrate some public recognition of opposer and its goods.

Opposition No. 91177156
14
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods
and/or services, but rather whether there is a likelihood of
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984). The question of
likelihood of confusion must be determined based on an
analysis of the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services identified
in opposer’s pleaded registration(s). Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed.
Cir. 1992.
There is no question that applicant’s goods are
identical to the same goods identified in the four
registrations set forth earlier in this opinion, i.e., “T-
shirts” in Registration Nos. 1205380, 1263936 and 1571032,
“shirts” in Registration No. 1660539, and “headwear” and
“hats and caps” in Registration Nos. 1263936 and 1660539,
Opposition No. 91177156
15
respectively. We also conclude that opposer has used its
blank bar and shield logo in connection with goods that are
identical to the goods identified in the application. Thus,
we conclude that the goods of the parties are legally
identical.
The du Pont factor of the similarities of the goods
weighs in opposer’s favor.
Trade Channels, Purchasers and Conditions of Sale
As indicated above, opposer’s and applicant’s goods are
identical. Thus, we must presume that these identical goods
are rendered in identical trade channels and are purchased
by the same consumers. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987). As noted above, the purchasers
comprise the general public, and these ordinary consumers
would use nothing more than ordinary care in making their
purchasing decisions. Moreover, these identical goods are
not usually expensive items warranting particular care in
making a purchasing decision.
Thus, the du Pont factors of the trade channels,
purchasers and conditions of sale weigh in opposer’s favor.
The Marks
We note that, in determining likelihood of confusion, a
lesser degree of similarity between two parties’ marks is
required when the marks are applied to identical goods or
Opposition No. 91177156
16
services. HRL Associates, Inc. v. Weiss Associates, Inc.,
12 USPQ2d 1819 (TTAB 1989). Further, as the Board stated in
In re J.M. Originals, 6 USPQ2d 1393 (1987):
A finding of likelihood of confusion need not
necessarily be premised on a finding that
prospective purchasers would not be able to
distinguish the two marks when used on identical
or closely related goods. Even if prospective
purchasers could distinguish the two marks, a
finding of likelihood of confusion may
nevertheless be premised on a finding that these
prospective consumers would erroneously believe,
because of the similarities in the marks, that
goods bearing the two marks emanate from the same,
albeit perhaps anonymous, source.

With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692.
We note that as the fame of a mark increases, as in the
case of opposer’s marks, the degree of similarity between
the marks necessary to support a conclusion of likely
confusion declines. Bose Corp. v. QSC Audio Products Inc.,
63 USPQ2d at 1309. As applicant has pointed out, there are
specific differences between the marks, however, "a
purchaser is less likely to perceive differences from a
famous mark." B.V.D. Licensing v. Body Action Design, 846
F.2d 727, 730, 6 USPQ2d 1719, 1722 (Fed. Cir. 1988) (Nies,
J., dissenting)(emphasis in original), and quoted with
approval in Kenner Parker, supra.
Opposition No. 91177156
17
Applicant has clearly delineated the specific
differences between the word and design components of his
mark and opposer’s bar and shield marks and we agree that
these differences exist. However, 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 services 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. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). With
this standard in mind, we find that the marks are remarkably
similar in appearance. Both parties’ marks consist of a
similarly-shaped shield with a rectangular bar bisecting the
shield. It is essentially immaterial that applicant’s
shield has slightly rounded edges or that the rectangle
bisecting applicant’s mark has additional matter
backlighting it. We agree that with the religious wording
in applicant’s mark, the bar and shield could be perceived
as a variation of a cross; however, the same could be said
of opposer’s bar and shield design if it contained religious
wording.
Considering the wording in applicant’s mark and
opposer’s bar and shield logo marks that contain wording,
Opposition No. 91177156
18
the font used to display the wording in both parties’ marks
is essentially the same, and the placement of the words on
the respective bar and shield logos is, similarly, the same.
In opposer’s marks, the predominant, non-descriptive wording
HARLEY-DAVIDSON is on the rectangular cross-bar. In
applicant’s mark, the word HOLY-DIVINESON appears on the
comparable cross-bar. This wording is similar to opposer’s
wording to the extent that it consists of two words
separated by a hyphen, the first word is shorter than the
second word, the first and second words begin with “H” and
“D” respectively, and the second word ends in “SON.”
It is often the case that the word portion of a design
mark, rather than the particular display, may have a greater
impact on purchasers and be remembered by them. See In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553 (TTAB 1987).
However, in this case, because of the fame of the blank bar
and shield logo and the fact that opposer uses this logo
with various different wording in equally famous marks, we
find that the bar and shield design is an integral part of
opposer’s marks and contributes equally with the words to
the commercial impressions of opposer’s marks. See Parfums
de Coeur Ltd. v. Lasarus, 83 USPQ2d 1012 (TTAB 2007) (torso
design in mark has strong visual impact that engages viewer
before word BODYMAN in mark).
Opposition No. 91177156
19
The look of the parties’ marks is so similar that
purchasers familiar with opposer’s marks are likely to
assume that the respective identical and closely related
goods emanate from the same source or a source authorized by
opposer. This is particularly true where, as here, opposer
has used its bar and shield logo alone; opposer has modified
it to use different wording above and below HARLEY-DAVIDSON;
and opposer has created modified marks for special interest
groups to use on T-shirts, hats and caps, such as sheriffs,
police and firefighters, and persons supporting those
groups. It would not be unreasonable for purchasers to
assume that applicant’s bar and shield logo on shirts, T-
shirts, hats and headwear is another mark created by opposer
for a religious special interest group.
We have given no weight to applicant's argument that
his mark is a parody. Parody is an imitation for comic
effect or in ridicule (see Merriam-Webster’s Collegiate
Dictionary, 11th ed. 2003), but we do not see how copying
the essential elements of opposer’s marks and using
religious wording is a parody. Moreover, parody is not a
defense if the marks would otherwise be considered
confusingly similar. See, e.g., Columbia Pictures
Industries, Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981)
(“The right of the public to use words in the English
language in a humorous and parodic manner does not extend to
Opposition No. 91177156
20
use of such words as trademarks if such use conflicts with
the prior use and/or registration of the substantially same
mark by another.”)
We conclude that the appearance and commercial
impression of applicant’s mark and opposer’s bar and shield
logo is similar and the similarities in these two elements
outweigh any differences in pronunciation and connotation.
See In re White Swan Ltd., 9 USPQ2d 1534 (TTAB 1988); and
In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1988) (similarity
in only one of the elements of sight, sound, and meaning is
sufficient to find marks similar). Thus, the du Pont factor
of the similarities of the marks weighs in opposer’s favor.
Conclusion
Having considered all of the evidence properly in the
record and all of the parties’ arguments, including those
not specifically referenced herein, we find that the du Pont
factors weigh strongly in favor of a finding of likelihood
of confusion.
We conclude that consumers familiar with opposer’s
famous HARLEY-DAVIDSON bar and shield logo marks and
opposer’s famous blank bar and shield logo for the above-
noted wide variety of goods and services, including goods
identical to those of applicant, would be likely to believe,
upon encountering applicant’s design mark for “hats,
headwear, shirts, T-shirts,” that the goods and services
Opposition No. 91177156
21
originate from or are associated with or sponsored by the
opposer.
Dilution
In view of the decision to sustain the opposition on
the ground of likelihood of confusion, it is not necessary
to consider opposer’s dilution claim.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.