Pryor Cashman Secures Major Trademark Victory for Honda
Pryor Cashman client, Honda Motor Company, has prevailed in a recent matter before the Trademark Trial and Appeals Board (TTAB) involving the company’s registered trademarks, “AERO” and “SHADOW AERO.” In an effort to protect its marks, Honda opposed an application proffered by an entity which sought to register the mark “LEGENDAERO” in connection with motorcycle and ATV/UTV suspension systems. Partner Dyan Finguerra-DuCharme, a member of the firm’s Intellectual Property and Litigation Groups, and associate Ryan Klarberg successfully represented Honda.
Honda’s Contention: A Likelihood of Confusion
Honda’s contention in challenging the applicant’s registration was that the proposed mark so closely resembled its registered marks, “AERO” and “SHADOW AERO,” as to be likely to cause confusion under Section 2(d) of the Trademark Act.
In evaluating the strength of Honda’s marks – a key factor in a Section 2(d) analysis - the TTAB determined that the AERO and SHADOW AERO marks had attained “commercial strength” in the market for motorcycles and structural parts, and were therefore entitled to a broader scope of protection.
The TTAB went on to assess the similarity of the marks – another essential consideration in a likelihood of confusion determination – ultimately adopting Honda’s position that if consumers encountered the LEGENDAERO mark, they would look to the common meaning of the word “Legend” and believe the goods had “something to do with the past,” and as a result, would be confused as to their source.
TTAB’s Holding
In sustaining Honda’s opposition, the TTAB held, “because Applicant’s standard character mark LEGENDAERO 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.” The full decision can be viewed here.
More About Pryor Cashman’s Trademark Practice
Pryor Cashman’s Trademark Practice manages large-scale trademark maintenance and enforcement programs for some of the world’s most recognizable brands and celebrities. The firm advises on all aspects of trademark law, from establishing vigilance programs to litigating disputes, and has won numerous cases which have become the gold standard for addressing conflicts between intellectual property rights and the First Amendment.
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