Touratech AG

Trademark Trial and Appeal Board

Jul 6, 2016

No. 86288721 (T.T.A.B. Jul. 6, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: July 6, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Touratech AG
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Serial No. 86288721
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Matthew Shaheen of Tarolli Sundheim Covell & Tummino LLP,
for Touratech AG.
Bridgett G. Smith, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Wellington, Ritchie and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Touratech AG (“Applicant”) seeks registration on the Principal Register of the
mark DriRide (in standard characters) for:
Motorcycle parts and accessories for travel, rallies and
sports, namely, fuel tanks, shock absorbers, suspension
springs and suspension struts, exhaust pipes for
motorcycles, exhaust silencers for engines, clutches, brakes
and brake cables, handlebars, hand guards, mudguards,
splash guards, spoilers, bodywork for motorcycles, namely
moldings and windshield screens, seats, luggage racks and
luggage carriers, map holders, road-book holders, crash
bars, sump guards, windshields, motorcycle bags and
cases, namely saddle bags, saddle cases, motorcycle
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panniers in the nature of aluminum storage boxes, tank
bags and tail bags in International Class 12; and
Arranging and conducting motorcycle travel tours for
others; motorcycle rental in International Class 39.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052 (d), based on a likelihood
of confusion with the following two registered marks:
Registration No. 10442252
Owner: Neese Industries, Incorporated
Mark:

Goods: outer clothing-namely, wind-resistant and water
repellent jackets and trousers in International Class 25.

Registration No. 45168993
Owner: McLeod Accessories Pty. Ltd.
Mark: DRIRIDER (in standard characters)
Goods: Clothing for motorcyclists, namely, jackets, pants,
coats, gloves; motorcyclists footwear, namely, boots;

1 Application Serial No. 86288721 was filed on May 22, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051. The application also contains goods in International Class
16 which were not subject to the refusal to register.

2 Registration No. 1044225 issued on July 20, 1976; renewed; mark amended as shown above
on February 10, 1998. The word “Dry” is disclaimed.
3 Registration No. 4516899 issued on April 22, 2014, under Section 44(e), 15 U.S.C. § 1126(e).
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underwear, t-shirts, long-sleeve t-shirts, jeans, long johns,
long-sleeve tops; motorcyclists headgear, namely,
balaclavas; wet-weather clothing, footwear, headgear for
motorcyclists, namely, wet-weather jackets, raincoats,
motorcycle rainsuits, rain trousers, wet-weather boots,
rain boots, balaclavas designed for use in wet weather in
International Class 25.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). In any likelihood of confusion analysis, 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, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”). Additionally, we consider the channels of trade and the sophistication of the
purchasers. “Not all of the DuPont factors are relevant to every case, and only factors
of significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
Serial No. 86288721
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A. Similarity of Marks as to appearance/sound/meaning/commercial
impression
We consider the first du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression. In re Viterra Inc., 101 USPQ2d at 1908; du Pont, 177 USPQ at 567.
For purposes of our du Pont analysis, we focus on Registration No. 4516899
(DRIRIDER) which we find to be the most relevant of the cited registrations in terms
of the marks themselves and the relatedness of the goods. Accordingly, if we find a
likelihood of confusion as to this cited registration, we need not find it as to
Registration No. 1044225. On the other hand, if we do not reach that conclusion,
neither would we find it as to Registration No. 1044225. See In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
The marks are extremely similar visually; Applicant has essentially adopted the
registered mark dropping the last letter -R. Applicant’s mark DriRide is also similar
in sound to Registrant’s DRIRIDER mark. The only difference between Applicant’s
mark and the cited mark is the addition of the letter “R” found at the end of the cited
mark. This similarity in the overall sound of the marks is significant as similarity in
sound alone may be sufficient to support a finding of likelihood of confusion. See
RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980)
(REMACS and RE/MAX indistinguishable in sound); Molenaar, Inc. v. Happy Toys
Inc., 188 USPQ 469, 471 (TTAB 1975) (FINGER•MAGIC and RINGA•MAJIGS are
substantially similar phonetically); In re Chesebrough-Pond’s Inc., 161 USPQ 310,
311 (TTAB 1969) (CRÈME LE HOT and O-LI-HOT look alike and sound very much
Serial No. 86288721
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alike). Moreover, the addition of the letter “R” at the end of the cited mark merely
changes the verb “ride” in Applicant’s mark to “rider” meaning “[o]ne that rides…”.4
In the context of the involved goods and services, the marks have extremely similar,
if not identical, meanings inasmuch as they are suggestive of protection from the
elements while riding motorcycles. Applicant’s motorcycle accessories, e.g., hand
guards, mudguards, splash guards, spoilers, bodywork for motorcycles, namely
moldings and windshield screens, may provide a “dry ride” for motorcyclists; likewise,
Registrant’s goods are specifically described as providing protection against
inclement weather, i.e., “wet-weather clothing, footwear, headgear for motorcyclists,
namely, wet-weather jackets, raincoats, motorcycle rainsuits, rain trousers, wet-
weather boots, rain boots, balaclavas designed for use in wet weather.”
We find that Applicant’s mark DriRide is extremely similar to the registered mark
DRIRIDER in sight, sound, connotation and commercial impression. Moreover,
Applicant admits that the marks are similar.5 This du Pont factor thus strongly
favors a likelihood of confusion.

4 http://www.thefreedictionary.com/rider. American Heritage® Dictionary of the English
Language, Fifth Edition. Copyright © 2011 by Houghton Mifflin Harcourt Publishing Company.
Accessed June 1, 2016. The Board may take judicial notice of dictionary definitions, Univ. of Notre
Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).

5 Applicant’s Brief p. 5 (4 TTABVUE 6).
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B. Similarity of goods and services and channels of trade
We turn next to the du Pont factor involving the similarity or dissimilarity of
Applicant’s goods and services, “motorcycle parts and accessories for travel, rallies
and sports”6 and “arranging and conducting motorcycle travel tours for others;
motorcycle rental,” in relation to the goods in the cited registration for DRIRIDER for
“clothing for motorcyclists.”7 Applicant contends that its goods and services are
“dissimilar in nature” to Registrant’s goods.8 However, Applicant admits that its
products and services, and Registrant’s goods (clothing, boots, jackets, etc.) which are
“worn by motorcyclists,” are connected “in their relation to motorcycling in general.”9
To support the relatedness of the goods and services identified above, the
Trademark Examining Attorney submitted copies of webpages showing goods similar
to those in the application and cited Registration No. 4516899, i.e., motorcycle parts
and motorcycle clothing offered for sale in conjunction with one another in the same

6 Namely, fuel tanks, shock absorbers, suspension springs and suspension struts, exhaust
pipes for motorcycles, exhaust silencers for engines, clutches, brakes and brake cables,
handlebars, hand guards, mudguards, splash guards, spoilers, bodywork for motorcycles,
namely moldings and windshield screens, seats, luggage racks and luggage carriers, map
holders, road-book holders, crash bars, sump guards, windshields, motorcycle bags and cases,
namely saddle bags, saddle cases, motorcycle panniers in the nature of aluminum storage
boxes, tank bags and tail bags.
7 Namely, jackets, pants, coats, gloves; motorcyclists footwear, namely, boots; underwear, t-
shirts, long-sleeve t-shirts, jeans, long johns, long-sleeve tops; motorcyclists headgear,
namely, balaclavas; wet-weather clothing, footwear, headgear for motorcyclists, namely, wet-
weather jackets, raincoats, motorcycle rainsuits, rain trousers, wet-weather boots, rain boots,
balaclavas designed for use in wet weather.
8 Applicant’s Brief p. 6 (4 TTABVUE 7).
9 Applicant’s Brief p. 6 (4 TTABVUE 7).
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channel of trade.10 In addition, she submitted a copy of third-party Registration No.
2151644, which covers aftermarket motorcycle products similar to Applicant’s
products11 and clothing items12 similar to those covered in cited Registration No.
4516899:
Registration No. Mark Goods/Services
2151644 MUZZY Class 12: aftermarket products
for motorcycles, namely,
exhaust systems comprising
manifolds, exhaust pipes, tail
pipes and mufflers; brake lines,
clutch lines; swing arm lugs;
race stands; steering brackets;
fork springs; structural parts;
and cams

Class 25: clothing, namely, hats
and shirts sold at motorcycle
racetracks and through catalogs
circulated to motorcycle
dealerships

This evidence shows that the goods in cited Registration No. 4516899 and
Applicant’s goods are offered by the same sources and travel in the same trade
channels and indicate that they are of a kind that may emanate from a single source
under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re

10 Examining Attorney’s Appeal Brief (6 TTABVUE 9) citing 9/16/2014 Office Action, pp. 6-
26 and 4/6/2015 Office Action, pp. 56-73.
11 See 9/6/2015 Final Office Action: Registration No. 2151644 MUZZY pp. 7-8.
12 While the clothing covered in cited Registration No. 4516899 is “clothing for motorcyclists”
including “t-shirts, long-sleeve t-shirts” and the clothing items listed in this third-party
registration include “shirts” “sold at motorcycle racetracks and through catalogs circulated
to motorcycle dealerships,” we deem the clothing products to be identical in part and
otherwise closely related.
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Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
With respect to Applicant’s motorcycle rental and tour services and Registrant’s
motorcycle-specific clothing,13 the Trademark Examining Attorney submitted copies
of the following two third-party registrations14:
Registration No. Mark Goods/Services
3996475

Class 25: tops; t-shirts, shirts,
jackets, headwear, hats,
bandanas, caps, gloves, belts

Class 39: …, leasing and rental
of motorcycles, arranging of
travel tours; … providing
information in the field of the
vehicle and motorcycle
industries
4598330 THE ROADERY Class 25: Athletic apparel,
namely, shirts, pants, jackets,
footwear, hats and caps,
athletic uniforms; Footwear;
Gloves; Headwear; Leather
jackets; Scarfs; Sweatshirts;
Wearable garments and
clothing, namely, shirts

Class 39: …; Arranging travel
tours; …; Motorcycle rental;
Travel tour conducting; Travel

13 As noted, the clothing covered in cited Registration No. 4516899 is “clothing for
motorcyclists” and the clothing items listed in the third-party registrations are not so
restricted. However, in view of the inclusion of similar goods such as gloves, jackets and shirts
in both the cited Registration and the third-party registrations, and the inclusion of the
identical motorcycle rental services in the third-party registrations, we deem the clothing
products to be identical in part and otherwise closely related.
14 See 9/16/2014 Office Action: Registration No. 3996475 EAGLERIDER MOTORCYCLES
USA and Design pp. 27-29 and Registration No. 4598330 THE ROADERY pp. 39-41.
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tour guide services; Travel tour
operating and organising

Again, this evidence supports that Applicant’s goods and services and the goods
in Registration No. 4516899, namely motorcycle parts and motorcycle rentals, and
clothing for motorcyclists, are of a kind that may emanate from a single source under
a single mark. See In re Anderson, 101 USPQ2d at 1919; In re Albert Trostel & Sons
Co., 29 USPQ2d at 1785-86; In re Mucky Duck Mustard Co., 6 USPQ2d at 1470 n.6.
Attempting to distinguish the trade channels, Applicant argues that the websites
submitted by the Trademark Examining Attorney evidence a clear line of
demarcation between the area of the site where a purchaser can find clothing, the
area where parts and accessories are located, and the area where tours and rental
services are handled. Thus, according to Applicant, consumers visiting those web
sites are required to make a conscious decision as to which section and which products
or services they view. Applicant concludes that while this may not be dispositive in
and of itself, this fact, taken in view of the level of sophistication of the consumer of
these types of goods and services, amounts to proof that confusion is not likely.15
It is well-settled that the goods and services of the parties need not be identical 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 services of the
parties are related in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they would or could be

15 Applicant’s Brief p. 6 (4 TTABVUE 7).
Serial No. 86288721
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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 Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050
(TTAB 2012).
Applicant acknowledges that the evidence of record shows that the goods and
services are sold through the same online retailers.16 While all of the products and
services are not necessarily displayed on the same web pages, they can be found by
clicking on identified descriptive links to other sections of the same website.
Additionally, some of the home pages feature images of desired products, such as
motorcycle parts and clothing, with direct links to such products all on the same page.
Thus, potential consumers can view and purchase those products through online
motorcycle stores featuring motorcycle equipment and motorcycle clothing.
In view of the foregoing, we find that Applicant’s goods and services are related to
the goods in cited Registration No. 4516899 and travel in the same trade channels,
supporting a likelihood of confusion under the second and third du Pont factors.
C. Sophistication of Purchasers
Applicant argues without support that purchasers of motorcycle parts and
accessories possess brand sophistication, are not casual shoppers subject to impulse
purchases and are highly discerning in their purchases. Because motorcyclists are

16 Applicant’s Brief p. 6 (4 TTABVUE 7).
Serial No. 86288721
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avid enthusiasts that are notoriously keen on aesthetics, according to Applicant, the
products not only have to fit, they also have to be pleasing to the purchaser’s taste
and match the “look” they are going for. As a result Applicant says, the purchase
requires careful research, study and familiarization. For these reasons, Applicant
argues that purchasers of its goods are sophisticated.17
Although there is no evidence to suggest any special degree of sophistication
among purchasers of Applicant’s goods and services, given the nature of the goods
and services, it is clear that purchasers of its goods and services are knowledgeable
about motorcycles. Here, the respective goods and services are sufficiently related
and sold under such similar marks that even sophisticated purchasers could be led to
the mistaken belief that they originated from the same source. It is well-settled that
even careful or sophisticated purchasers who are knowledgeable as to the goods and
services are not necessarily knowledgeable in the field of trademarks or immune to
source confusion arising from the use of confusingly similar marks on or in connection
with goods and services. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1690 (Fed. Cir. 1993); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB
2009); In re Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB 2009), citing Wm. K.
Stamets Co. v. The Metal Products Co., 176 USPQ 92, 93 (TTAB 1972) (even
technically trained purchasers who are extremely familiar with expensive machinery
may be confused when similar marks are used with respect to the same goods). Thus,

17 Applicant’s Brief p. 6 (4 TTABVUE 7).
Serial No. 86288721
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sophisticated purchasers can be confused by very similar marks such as the marks
involved in this case.
Therefore, the du Pont factor relating to the purchasers to whom sales are made,
i.e., “impulse” versus careful, sophisticated purchasing, is neutral.
D. Conclusion
Based on the similarities between Applicant’s mark DriRide and the mark
DRIRIDER in cited Registration No. 4516899 which is registered for related goods
that travel in the same trade channels as Applicant’s goods and services, there is a
likelihood of confusion.
Decision: The refusal to register Applicant’s mark DriRide is affirmed.