Honda Motor Co., Ltd.v.Independent Cycle Inc.

Trademark Trial and Appeal Board

Aug 15, 2016

No. 91218067 (T.T.A.B. Aug. 15, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Honda Motor Co., Ltd.
v.
Independent Cycle Inc.
_____

Opposition No. 91218067
to Application Serial No. 86138520
_____

Dyan Finguerra-Ducharme and Ryan S. Klarberg of Pryor Cashman LLP
for Honda Motor Co., Ltd.

Troy N. Leonard and Sander J. Morehead of Woods, Fuller, Shultz & Smith P.C.
for Independent Cycle Inc.
_____

Before Kuhlke, Shaw and Greenbaum,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Independent Cycle Inc., seeks registration of the mark
in standard characters for goods identified as “Suspension systems for motorcycles,
all-terrain vehicles (ATVs), utility terrain vehicles (UTVs),” in International Class
12.1

1 Application Serial No. 86138520, filed on December 9, 2013, based on an allegation of a
bona fide intention to use the mark in commerce under Section 1051(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
Opposition No. 91218067
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Opposer, Honda Motor Co., Ltd., has opposed registration of Applicant’s mark on
the ground that as used in connection with Applicant’s goods, the mark so
resembles Opposer’s previously used and registered marks AERO for “motorcycles
and structural parts therefor,” and SHADOW AERO for “motorcycles and structural
parts thereof,” as to be likely to cause confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). By its answer, Applicant admitted that:
Opposer “is engaged in the business of manufacturing,
marketing and selling, among other products, motorcycles
and structural parts therefor, as well as all-terrain
vehicles (ATV)s, throughout the world, including the
United States”;
Opposer is the “owner of U.S. Registration No. 2,260,820”
and “Exhibit A is a copy of that registration”;
Opposer is the “owner of U.S. Registration No. 2,932,931”
and “Exhibit B is a copy of that registration”; and
Applicant is a South Dakota corporation in Sturgis, South
Dakota and it filed the subject application on December 9,
2013.
Applicant otherwise denied the remaining salient allegations.
RECORD
The pleadings and, by operation of the Trademark Rules, the file of the subject
application are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122.
Opposer attached to its notice of opposition printouts from the USPTO
Trademark Status & Document Retrieval database (TSDR) consisting of copies of
its pleaded registrations showing their current status and title. The registrations
are summarized as follows:
Opposition No. 91218067
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Registration No. 2932931 on the Principal Register for the
mark AERO in standard characters for “Motorcycles and
structural parts therefor,” in International Class 12, filed
on November 21, 2003, issued on March 15, 2005, section
8 and 15 combined declaration accepted and
acknowledged, renewed; and
Registration No. 2260820 on the Principal Register for the
mark SHADOW AERO in typed form2 for “motorcycles
and structural parts thereof,” in International Class 12,
filed on April 13, 1998, issued on July 13, 1999, section 8
and 15 combined declaration accepted and acknowledged,
renewed.
In addition, Opposer submitted under notice of reliance (“NOR”) (1) more current
TSDR copies of Opposer’s pleaded registrations, (2) Applicant’s responses to
Opposer’s interrogatories, (3) Applicant’s responses to Opposer’s requests for the
production of documents indicating whether or not responsive documents exist, and
(4) Applicant’s responses to Opposer’s requests for admission.3
Finally, Opposer submitted declaration testimony,4 with accompanying exhibits,
of Scott Proffer, Motorcycle Product Planning Manager for Opposer’s wholly owned
subsidiary American Honda Motor Co., Inc. (“AHM”),5 and Lee Edmunds,
Motorcycle National Advertising Manager for AHM.6

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (April 2016).
3 9 TTABVUE; Confidential version 10 TTABVUE.
4 The parties stipulated to the submission of testimony by declarations or affidavits. 5
TTABVUE.
5 11 TTABVUE; 12-13 TTABVUE (confidential version); 21 TTABVUE (rebuttal testimony).
6 14 TTABVUE; 15 TTABVUE (confidential version).
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Applicant submitted the declaration testimony, with accompanying exhibits, of
Jesse Jurrens, founder and shareholder of Applicant.7
In addition, Applicant submitted under NOR (1) printouts of third-party
registrations with marks that contain the term AERO, (2) printouts of web pages
showing use of the marks in some of the third-party registrations and use of the
term AERO by other third-parties, (3) internet search results for the search logic
“aero & motorcycle,” (4) Wikipedia entry for “Aero (motorcycle),” and (5) Opposer’s
responses to Applicant’s requests for production of documents and requests for
admission.8
STANDING/PRIORITY
Because Opposer’s pleaded registrations are of record, are valid and subsisting,
and owned by Opposer, Opposer’s standing to oppose registration of Applicant’s
mark is established and its priority is not in issue as to the goods listed in the
registrations. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We turn to the issue of likelihood of confusion under Section 2(d).

7 18 TTABVUE.
8 19-20 TTABVUE. The submitted produced documents are authenticated by the
admissions.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours and 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) (listing thirteen factors). Two key considerations are the
similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). Further, “[a]lthough confusion, mistake or deception about source or
origin is the usual issue posed under Section 2(d), any confusion made likely by a
junior user’s mark is cause for refusal; likelihood of confusion encompasses
confusion of sponsorship, affiliation or connection.” Hilson Research, Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423, 1429 (TTAB 1993); see also
Majestic, 65 USPQ2d at 1205 (“[M]istaken belief that [a good] is manufactured or
sponsored by the same entity ... is precisely the mistake that Section 2(d) of the
Lanham Act seeks to prevent”). We focus on Opposer’s registration for the standard
character mark AERO because if we do not find a likelihood of confusion with that
mark and its associated goods, then there would be no likelihood of confusion with
the mark in the other pleaded registration. See In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
Relatedness of the Goods, Channels of Trade, Classes of Consumers
We turn first to the goods, channels of trade and classes of purchasers. We must
make our determinations under these factors based on the goods as they are recited
in the application and registration, respectively. See Octocom Systems Inc. v.
Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of
an applicant’s goods, the particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); and In re Elbaum, 211 USPQ 636 (TTAB
1981).
The goods listed in Registration No. 2932931 are “motorcycles and structural
parts therefor” while the goods listed in the Application are “suspension systems for
motorcycles.” Applicant’s goods and those of the Registrant are identical to the
extent that Applicant’s “suspension systems for motorcycles” are encompassed by
Opposer’s broader identification of “motorcycles and structural parts therefor.” See,
e.g., Proffer Test., 11 TTABVUE 7 (“structural parts, such as suspension systems”).
We need not discuss the relationship between motorcycles in general and motorcycle
suspension systems, because “a likelihood of confusion may be found with respect to
a particular class based on any item within the identification of goods for that
class.” Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 (TTAB
Opposition No. 91218067
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2011); see Tuxedo Monopoly Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).
Considering the channels of trade and classes of purchasers, because there are
no limitations as to channels of trade or classes of purchasers in either the
application or Opposer’s registration, we must presume that Applicant’s and
Opposer’s goods travel through all usual trade channels for such goods and to all
classes of prospective purchasers for those goods. See Paula Payne Prods. Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973); and In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Thus, to the extent Applicant’s
goods are identical to the Registrant’s, we must likewise presume that the
purchasers and channels of trade for such goods are also identical. Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-
part related nature of the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers through the same
channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of purchasers”); see In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
Opposition No. 91218067
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Moreover, Opposer’s witness, Mr. Proffer, testified that Opposer’s “motorcycle
structural parts, such as suspension systems, are marketed and sold by retailers
regardless of their direct affiliation with [Opposer]”9 and the record includes
examples where the parties’ motorcycle parts are sold by the same online retail
store,10 as shown below.11

9 Proffer Test., 11 TTABVUE 7.
10 Proffer Test. Exhs. 11-16, 11 TTABVUE 72-175.
11 Retailer Drag Specialties, 11 TTABVUE 81, 87; and JP Cycles, 11 TTABVUE 113, 126.
See also Opp. NOR Exh. C-2, 9 TTABVUE 41-42 (Applicant’s admissions that Drag
Specialties offers parts for Opposer’s motorcycles).
Opposition No. 91218067
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In addition, the first three results from a search for “Honda” and “Legend Aero”
on the internet brought up Honda dealerships that offer for sale both Applicant’s
LEGENDAERO products and Opposer’s AERO and SHADOW AERO motorcycles.12
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade, and classes of purchasers favor a finding of likelihood of
confusion.
With regard to the conditions of sale, Applicant argues that the parties’ potential
purchasers “will exercise more care in making purchasing decisions” because of the
cost of Applicant’s suspension systems, approximately $ 1,175, and Opposer’s
motorcycles are also expensive. App. Br., 25 TTABVUE 22.13 Further, Applicant
asserts that “[p]urchasers of aftermarket motorcycle parts, especially more
expensive components like [Applicant’s] aftermarket coil and air systems, are very
sophisticated and discriminating. These purchasers are particularly brand
conscious and typically engage in substantial research about competitive products
before selecting a component or their personal motorcycle.” App. Br., 25 TTABVUE
27.14 By contrast Opposer asserts that such purchasers are not discriminating and
the “primary concern is whether the part is compatible with their motorcycle [and] a
suspension system called LEGENDAERO will lead consumers to mistakenly believe
that the part is compatible with the Honda AERO/SHADOW AERO motorcycle
because there are no other motorcycles on the market that include the AERO mark

12 See Proffer Rebuttal Test., 21 TTABVUE 3, 6.
13 We note the record shows that some of Opposer’s aftermarket parts are inexpensive items
as shown above.
14 See also Jurrens Test., 18 TTABUVE 8.
Opposition No. 91218067
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in the brand name.”15 Opposer also asserts that its consumer survey filed under seal
“shows that the level of sophistication among purchasers of the products at issue
widely varies.” Opp. Rebuttal Br., 26 TTABVUE 19.
While purchasers of motorcycles and structural parts therefor, including
suspensions, may be somewhat more discriminating in their purchase, this record
does not support a finding that the level of care exercised in such purchase would
obviate confusion. Even where there may be some care taken in the purchasing
process, consumers sophisticated or knowledgeable in a particular field are not
necessarily immune to source confusion. See In re Shell Oil Co., 992 F.2d 1204,
1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); Top Tobacco, LP v. N. Atl. Operating
Co., 101 USPQ2d 1163, 1170 (TTAB 2011). We find this factor to be neutral.
Strength of Opposer’s Mark
Opposer argues that Opposer’s SHADOW AERO and AERO marks are famous
based on inherent strength and marketplace strength. As acknowledged by
Opposer, Opp. Br., 22 TTABVUE 19,16 the term AERO is suggestive of aerodynamic
qualities, and as such, although inherently distinctive it is not a conceptually strong
mark. However, Opposer has established that the SHADOW AERO and AERO
marks have attained commercial strength for motorcycles and structural parts
therefor. The evidence shows the marks SHADOW AREO and AERO have been in
use for many years and have enjoyed broad consumer exposure. SHADOW AERO
has been used on motorcycles which have been sold in high quantities for nearly two

15 Proffer Rebuttal Test., 21 TTABVUE 3.
16 See also App. Br., 25 TTABVUE 15.
Opposition No. 91218067
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decades;17 AERO is placed on the speedometer of the motorcycle;18 the website,
marketing materials and press releases use both marks interchangeably;19 both
marks are advertised in a range of media including cable and network television,
radio, print advertisements in national publications, billboards, mobile advertising,
banners at sports arenas, and dealer materials, website advertising, search engine
marketing;20 and both marks have received some unsolicited media mentions.21
In the likelihood of confusion context, fame “varies along a spectrum from very
strong to very weak.” Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A.,
685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012) (quoting Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005)). A famous mark is one that has extensive public
recognition and renown. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if it exists, plays a dominant role in the
likelihood of confusion analysis. Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). In view of the extreme deference
that is accorded to a famous mark in terms of the wide latitude of legal protection it
receives, and the dominant role fame plays in the likelihood of confusion analysis, it
is the duty of the party asserting that its mark is famous to clearly prove it. The

17 Proffer Test., 11 TTABVUE 6. The specific numbers were submitted under seal.
18 Proffer Test. Exh. 3, 11 TTABVUE 23.
19 Edmunds Test., 14 TTABVUE 4-5.
20 Edmunds Test., 14 TTABUVE 4; Edmunds Test. Exhs. 3-4, 14 TTABVUE 39-50, 56-65
(the examples appear to be limited to website and radio advertising).
21 Edmunds Test. Exh. 2 14 TTABVUE 12-37 Rider Magazine, Motorcycle USA, The Auto
Channel.
Opposition No. 91218067
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commercial strength of a mark “may be measured indirectly, among other things, by
the volume of sales and advertising expenditures of the goods or services traveling
under the mark, and by the length of time those indicia of commercial awareness
have been evident.” Bose, 63 USPQ2d at 1305. In addition, some context in which to
place raw statistics may be necessary. Id. at 1309.
Opposer did not provide evidence as to the market share for the SHADOW
AERO and AERO motorcycles to better understand the impact of the sales and
advertising figures. In addition, while there is testimony as to advertising on
television and at sports arenas, etc., the only evidentiary examples consist of
website advertising and the transcript of a radio advertisement. Nonetheless,
although the record does not support a finding of fame, such that it plays a
dominant role, we find that SHADOW AERO and AERO by itself have attained
commercial strength for motorcycles and structural parts therefor and accord them
a broader scope of protection.
Applicant argues that third-party use and registration of the term AERO “in the
motorcycle market, reflects that the term ‘AERO’ has become synonymous with or
descriptive of motorcycle-related or aerodynamic goods.” App. Br., 25 TTABVUE 15.
Applicant specifically points to several examples of use from the record; for
example, AERO FLEX and AERO TAPERED for motorcycle handlebars;22 AERO
WINDSHIELD for motorcycle windshield;23 AERO MACH and design for a heel

22 19 TTABVUE 235-237.
23 19 TTABVUE 240-243.
Opposition No. 91218067
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shifter for motorcycles;24 AEROFLOW and design for headlight covers and
fairings;25 AEROCHARGER for turbo systems for motorcycles;26 AERO SKIRT for a
skirt for motorcycles;27 and TECH AERO for tank bags for motorcycles.28 The Board
also notes the mark AERO ROTORS for rotors for vehicle brakes.29 Many of the
other third-party uses are for different goods, even if generally in the vehicle field.
For example, AEROSTITCH for primarily motorcycle clothing (but also other
accessories such as tank bags, and products sold under other marks such as
helmets, tents etc. on the online store);30 AERO LEATHER for motorcycle jackets;31
AERO SHEILD for trailers to transport motorcycles;32 AERO TRAILERS for
trailers to transport vehicles;33 AERO STAR GLOBAL LOGISTICS, INC. for
motorcycle transportation services;34 AERO RACE WHEELS for wheel rims for

24 19 TTABVUE 244-247.
25 19 TTABVUE 248-255.
26 19 TTABVUE 256-260.
27 19 TTABVUE 262-264.
28 19 TTABVUE 267.
29 20 TTABVUE 165-171.
30 19 TTABVUE 97-227.
31 19 TTABVUE 238-239.
32 19 TTABVUE 267.
33 19 TTABVUE 270.
34 20 TTABVUE 35-36.
Opposition No. 91218067
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vehicles (appear to be only for cars);35 AERO FIX for bicycles;36 AERO for paint for
vehicles.37
The third-party registrations include OREGON AERO and design for motorcycle
helmets and accessories38; AEROPEG for motorcycle foot pegs;39 OREGON AERO
and design for seat cushions for land vehicles;40 AERO and design for wheel rims.41
Most of the third-party registrations are for different goods, even if generally in the
vehicle field. See also AEROTEX for acoustic insulation for automotive industry;42
AERO SPRAY aerosol paints for automobiles;43 AEROS for bicycle frames;44
AEROVORTEX for vortex generators for use on automobiles and trucks.45 Such
registrations are less relevant and as such have less probative value.
As noted by Opposer there are no specifics regarding the extent of sales or
promotional efforts surrounding the third-party marks; however, third-party
registrations and some evidence of use in the form of web pages may be sufficient
where a considerable number of third parties use similar marks in connection with
similar goods or services. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,

35 20 TTABVUE 38-44.
36 20 TTABVUE 45-75.
37 20 TTABVUE 79-83.
38 19 TTABVUE 24.
39 19 TTABVUE 25.
40 19 TTABVUE 61.
41 19 TTABVUE 78.
42 19 TTABVUE 31.
43 19 TTABVUE 34.
44 19 TTABVUE 38.
45 19 TTABVUE 74.
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115 USPQ2d 1671, 1674-1675 (Fed. Cir. 2015). See also Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d
1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (cert. denied January 25, 2016).
Here, the examples of third-party use are for somewhat different goods. While they
are in the same general vehicular industry or in some cases specific to motorcycles,
none are for suspensions for motorcycles.46 This record does not reveal “extensive
evidence of third-party use and registrations” in connection with “motorcycles and
structural parts therefor” and in particular “Suspension systems for motorcycles,
all-terrain vehicles (ATVs), utility terrain vehicles (UTVs).” Jack Wolfskin v. New
Millennium, 116 USPQ2d at 1136.
The probative evidentiary value of the third-party registrations alone is in
showing the sense in which the term AERO is used and understood. Id. at 1675;
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) (third-
party registrations “may be given some weight to show the meaning of a mark in
the same way that dictionaries are used”). As discussed above, the term AERO has
some suggestiveness evoking the concept of “aerodynamic” in relation to vehicular
goods, including motorcycles. The relevant third-party registrations serve to

46 There is one registration that includes “parts and components of motorcycles, namely, …
shock absorbers, suspension forks” in the identification of goods; however, it is based on
Section 66(a) of the Trademark Act which does not require use in the United States prior to
registration and the evidence of use of this mark (DT aerolite) in the U.S. market is limited
to bicycle components. See App. NOR, 19 TTABVUE 19 (registration), 228-232 (web pages
“DT Swiss is a globally renowned manufacturer of bicycle components with branches in the
USA …”). Several of the third-party registrations are based on either Section 66(a) or
Section 44 of the Trademark Act and have less probative value as to the meaning of a term
to U.S. consumers.
Opposition No. 91218067
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corroborate this and Opposer does not dispute this fact. Opp. Br., 22 TTABVUE 19
(“[T]he AERO mark is a suggestive mark”).
As to the question of the effect of third-party use on consumer perception, this
record does not establish that the term AERO is used in connection with similar
goods to such an extent that customers “have been educated to distinguish between
different … marks on the basis of minute distinctions,” Standard Brands, Inc. v.
RJR Foods, Inc., 192 USPQ 383 (TTAB 1976); at least not to the extent that a mark
that encompasses the entirety of the prior mark on identical goods is not likely to
cause confusion. Thus, while the evidence does weigh in favor of Applicant by
narrowing the scope of protection for the term AERO in connection with vehicle
parts and accessories generally, including motorcycle parts and accessories, it does
not outweigh the factors of the similarity of the marks, relatedness of goods and
trade channels in this case.
Similarity/Dissimilarity of the Marks
We turn then to the du Pont factor of the similarities and dissimilarities between
Applicant’s mark and Opposer’s mark AERO. We analyze “the marks
in their entireties as to appearance, sound, connotation and commercial
impression.” Viterra, 101 USPQ2d at 1908 quoting du Pont, 177 USPQ at 567. See
also Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1691. “When marks would appear
on virtually identical goods or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Opposition No. 91218067
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Applicant argues that LEGEND is the dominant portion of its mark because it is
the first portion and “most likely to be impressed upon the mind of a purchaser and
remembered.” App. Br. (quoting) Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9
USPQ2d 1895, 1897 (TTAB 1988), 25 TTABVUE 24-25. Applicant further argues
that portion of its mark common to Opposer’s mark, AERO, is weak based on the
evidence of use and registration of this term “in the relevant market space.” Id.
While the common term AERO has some suggestive significance, and is used by
itself or as a part of a mark for various vehicular parts and accessories, including in
a few cases certain motorcycle parts and accessories, Opposer’s mark AERO does
have commercial strength in relation to motorcycles and their structural parts.
Applicant’s mark incorporates the entirety of Opposer’s AERO mark. However,
Applicant asserts that the LEGEND portion of its mark distinguishes them not only
because it is first and AERO is weak but also because it is Applicant’s house mark.
Opposer argues that adding the “purported house mark ‘Legend’ does not minimize
the risk of confusion because the dominant portion of both marks -- AERO -- is the
same.” Opp. Br., 22 TTABVUE 21. Opposer asserts that consumers will look to the
common meaning of the word LEGEND suggesting that the “goods have something
to do with the past.” 47 Opp. Br., 22 TTABVUE 23.

47 The Board grants Opposer’s request for judicial notice of the dictionary definition for
LEGEND as “a story coming down from the past; especially: one popularly regarded as
historical although not verifiable.” www.merriam-webster.com; Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Opposition No. 91218067
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Applicant relies on Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d
1313 (TTAB 2013) in support of its argument that the addition of its house mark
precludes a finding of likelihood of confusion. However, in that case the common
term ESSENTIALS was registered by third-parties for identical or nearly identical
goods to the goods in issue. Here, the third-party registrations and uses are not for
“suspensions systems for motorcycles, all-terrain vehicles (ATVs), utility terrain
vehicles (UTVs).” In addition, the term ESSENTIALS was found to be highly
suggestive, whereas this record does not support that level of suggestiveness and
the record establishes a higher level of strength of the mark AERO for Opposer’s
motorcycles.
As recognized by Applicant the addition of other matter may serve to distinguish
the marks where (1) the marks in their entireties convey different commercial
impressions or (2) the matter common to the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely descriptive or diluted.
General Mills Inc. v. Fage Dairy Processing Industry S.A., 100 USPQ2d 1584, 1601,
(citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir.
2004) (RITZ and THE RITZ KIDS create different commercial impressions);
Citigroup v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed.
Cir. 2011) (CAPITAL CITY BANK held not likely to be confused with CITIBANK)),
judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-
precedential). In this case, the addition of LEGEND does not convey such a different
Opposition No. 91218067
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commercial impression to obviate confusion nor is AERO descriptive or so diluted to
preclude confusion.
Further, because Applicant seeks registration in standard characters, its mark is
not limited to any particular depiction. The rights associated with a mark in
standard characters reside in the wording and not in any particular display. In re
RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8
USPQ2d 2012, 2015 (TTAB 1988). Thus, we must consider Applicant’s mark
“regardless of font style, size, or color,” including the manner in which Applicant
actually uses the mark. Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d
at 1258-59. Applicant’s uses illustrate this point:48

48 Jurrens Test. Exhs. C, D, G 18 TTABVUE 20, 23, 58, 59.
Opposition No. 91218067
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We find the marks to be similar in appearance, sound, meaning and overall
commercial impression, and this similarity in the marks outweighs the
dissimilarities. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (confusing similarity found where
the mark STONE LION CAPITAL incorporated the entirety of the registered marks
LION CAPITAL and LION, and LION was dominant part of both parties’ marks).
This factor weighs heavily in Opposer’s favor.
Extent of Potential Confusion
Applicant argues that the potential for confusion is de minimis in view of the
price of the parties’ goods, the sophistication of the purchasers and the “myriad of
third party uses and registrations containing some formative of ‘AERO’.” App. Br.,
25 TTABVUE 24-25. Applicant relies on In re Thor Tech, Inc., 113 USPQ2d 1546
(TTAB 2015) in support of its argument.
In view of the legally identical goods, the similarity of the marks, in particular
considering displays of Applicant’s mark that may emphasize the term AERO and
the commercial strength of Opposer’s mark, and the identical trade channels, likely
confusion is not de minimis. The record in the ex parte proceeding Thor Tech differs
substantially from the record in this inter partes proceeding. The record in Thor
Tech (1) included only two third-party registrations to show a relationship between
the involved goods which were rebutted by 50 third-party registrations showing
towable recreational vehicles and trucks registered by different entities under the
same mark, (2) did not establish overlapping channels of trade, and (3) established
Opposition No. 91218067
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that the towable recreational vehicles and trucks were much more expensive
ranging in price from approximately $8,000 – 40,000.
Balancing the Factors
Because Applicant’s standard character mark is similar to Opposer’s
mark AERO, the goods are legally identical, and the channels of trade and classes of
consumers overlap, confusion is likely between Applicant’s mark and
Opposer’s mark AERO. We acknowledge the narrower scope of protection for the
word AERO in connection with motorcycle accessories and some components,
however, we resolve doubt as we must against Applicant as the newcomer. Century
21 Real Estate Corp. v. Century Life of America, 23 USPQ2d at 1701 (citing In re
Hyper Shoppes (Ohio), 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The opposition is sustained.