Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 1 of 48
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`BIG DOG MOTORCYCLES, L.L.C.,
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`Plaintiff,
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`v.
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`Case No. 04-2419-JWL
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`BIG DOG HOLDINGS, INC.,
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`Defendant.
`______________________________________
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`MEMORANDUM AND ORDER
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`This is a declaratory judgment action involving claims for trademark infringement and
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`unfair competition. Plaintiff Big Dog Motorcycles, L.L.C. (Motorcycles) seeks a declaratory
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`judgment that its use of the mark “Big Dog Motorycles” in conjunction with the sale of
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`motorcycles, motorcycle parts and accessories, promotional products (including apparel and
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`collectibles), and related services does not
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`infringe upon defendant Big Dog Holdings’
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`(Holdings) marks, or otherwise constitute unfair competition under the Lanham Act. This
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`matter is before the court on Motorcycles’ motion for summary judgment (Doc. 69). By way
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`of this motion, Motorcycles asks the court to grant the requested declaratory relief on the
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`grounds that Holdings has failed to establish a genuine issue of material fact concerning the
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`likelihood of confusion among consumers as to the source, sponsorship, or affiliation of
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`Motorcycles’ products. For the reasons explained below, the court finds that no rational trier
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`of fact could find a likelihood of confusion between the two sets of products. Accordingly,
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`the court will grant Motorcycles’ motion in its entirety.
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`

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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 2 of 48
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`STATEMENT OF FACTS
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`Consistent with the well established standard for evaluating a motion for summary
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`judgment, the following facts are uncontroverted or, if disputed, are viewed in a light most
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`favorable to Holdings, the non-moving party. See Adler v. Wal-Mart Stores, Inc., 144 F.3d
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`664, 670 (10th Cir. 1998) (setting forth summary judgment standards).
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`A.
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`General Nature of the Parties and the Origin of Their Dispute
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`Holdings is a holding company for related entities that market and sell clothing and
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`other consumer products bearing the “Big Dogs” and “Big Dog” trademarks and other related
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`marks, which it also licenses to third parties for a variety of goods and services. Holdings’
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`predecessor, Sierra West, first used the name “Big Dogs” in 1984. In 1992, Andrew Feshbach,
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`Holdings’ current chief executive officer, and another investor, Fred Kayne, bought the assets
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`of Sierra West out of bankruptcy. They changed the name of the company to Big Dog Holdings
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`for the parent corporation and established operating companies of Big Dogs U.S.A., Inc. and
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`Big Dogs Sportswear, among others. Big Dog U.S.A., Inc. develops, markets, and sells a
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`collection of high quality consumer lifestyle products such as activewear, casual sportswear,
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`accessories, and gift items under the brand name “Big Dogs.” Holdings is the owner of
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`numerous
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`trademarks and service marks registered with
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`the United States Patent and
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`Trademark Office and around the world for the mark “Big Dogs” and related marks, including
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`“Big Dogs” for all manner of clothing (specifically including t-shirts) and a number of other
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`consumer goods and services, including a wide variety of recreational and sports equipment,
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`2
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`

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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 3 of 48
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`watches and clocks, sunglasses, and mail order and retail store services featuring clothing,
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`jewelry, accessories, home furnishings, and sporting goods.1
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`Motorcycles manufactures and sells high-end customized motorcycles.
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` Sheldon
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`Coleman is Motorcycles’ founder and chief executive officer. According to Mr. Coleman, he
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`first used the term “Big Dog” in conjunction with one of his other endeavors in the early
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`1980s. At that time (before Holdings’ predecessor Sierra West first utilized the Big Dog mark
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`in 1984), Mr. Coleman organized a band called Dewy and the Big Dogs. Sometime after 1985,
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`Mr. Coleman saw a t-shirt made by Sierra West that had a picture of a St. Bernard-like dog with
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`the words “Big Dogs.” Mr. Coleman contacted Sierra West and suggested a co-promotion on
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`a big dog theme between Sierra West, Dewy and the Big Dogs, and The Coleman Company, a
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`company for which he was at that time the chief executive officer. Sierra West rejected Mr.
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`Coleman’s proposal. In 1988, Mr. Coleman continued his commercial use of the term “Big
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`Dog” when he incorporated Big Dog Productions, Inc., a music recording studio in Wichita.
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`In 1992, Mr. Coleman began customizing Harley Davidson motorcycles in his own
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`residential garage with the help of a motorcycle mechanic. Later that year, he moved the
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`operation
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`to a
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`larger, commercial space and formed
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`the company Big Dog Custom
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`Motorcycles.2 By 1993, Big Dog Custom Motorcycles had three people working to customize
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`1 A number of these marks were registered prior to 1994 (when Motorcycles was
`formed) and many were based on use prior to 1994.
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`2 There is no evidence that Mr. Coleman made any further attempt (after Sierra West
`rejected his suggestion of doing a co-promotion between the two companies in the 1980s) to
`determine how Holdings was using its marks at the time he adopted this as the name of his
`motorcycle company. He stated in his deposition that at the time he formed his motorcycle
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`3
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 4 of 48
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`Harley Davidson motorcycles, which were then sold. In 1994 the company shifted from
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`customizing Harley Davidson motorcycles to making its own motorcycles from after-market
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`parts. Consistent with this new approach, Mr. Coleman changed the name of the business to
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`Big Dog Motorcycles, L.L.C., the name that it has today. According to his deposition
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`testimony and an affidavit from him, he believed “Big Dog Motorcycles” was an appealing
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`name because it connoted a certain image that fit well with motorcycle culture, it had a good
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`rhythm and sound, and he had a previous association with the term “Big Dog.”
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`In June of 1995, Holdings contacted Motorcycles claiming that Motorcycles’ use of
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`the name “Big Dog Motorcycles” violated Holdings’ trademarks. Holdings expressed concern
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`that Motorcycles’ sale of t-shirts constituted an infringement of Holdings’ trademarks, but
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`Holdings stated that it did not at that time oppose Motorcycles’ use of the name Big Dog
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`Motorcycles on motorcycles.
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` Holdings demanded that Motorcycles cease using the “Big
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`Dog” mark or any confusingly similar mark in connection with any t-shirts or other items of
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`apparel. This led to the two companies filing lawsuits against each other. These actions were
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`eventually settled in 1997. The settlement agreement provided that Motorcycles would assign
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`its rights in the marks “Big Dog,” “Big Dog Motorcycles,” “Big Dog Service Center,” and the
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`“Big Dog Motorcycles” logo to Holdings in return for an exclusive, perpetual license to use
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`the marks in conjunction with its business under the terms set forth in a license agreement.
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`business he planned to sell clothing under the “Big Dog Motorcycles” mark.
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`4
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 5 of 48
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`Holdings unilaterally terminated the license agreement in August of 2004. Under the
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`terms of the settlement agreement, this meant that the parties’ relative positions reverted to
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`the time of the settlement. At the time Holdings terminated the license agreement, Holdings
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`demanded that Motorcycles cease using the names “Big Dog” and “Big Dog Motorcycles” with
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`its business.
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` Shortly
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`thereafter, Motorcycles brought
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`this action seeking a declaratory
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`judgment of noninfringement and no unfair competition.
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` Following
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`is a more
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`thorough
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`explanation of the manner in which each of the parties uses the marks at issue.
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`B.
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`Big Dog Holdings, Inc.
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`A picture of the exterior of a Big Dogs store, a copy of its catalog, and its Internet
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`website reflects that Holdings uses the wording “Big Dogs” in stenciled capital letters on its
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`signage, point of sale materials, catalogs, and web site, and that this logo is commonly
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`displayed in close proximity to Holdings’ distinctive black and white dog. Holdings frequently,
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`but not exclusively, uses this black and white, anthropomorphic dog “character” on many of its
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`products. For example, Holdings’ biggest selling product is t-shirts and the “Big Dogs” logo
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`in combination with the black and white dog appears on the vast majority of Holdings’ t-shirts
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`as a decorative element and/or on the tags and labels.
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`The “Big Dog(s)” marks are used so that products on which they appear will appeal to
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`a wide range of consumers who want to send a message about themselves to those who see
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`them with the “Big Dog(s)” products: men, women, and children of all ages, and especially
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`baby boomers and their children who have an interest in any of a wide variety of leisure or
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`recreational activities—including motorcycle riding.
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` The kind of “interest” Holdings seeks
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`5
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 6 of 48
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`from consumers includes not just those consumers who participate in such activities, but those
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`consumers who aspire to so participate or who just wish to convey an attitude or experience
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`generally associated with such activity. Holdings’ apparel line often attempts to be humorous
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`by portraying caricatures of dogs in different situations.
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` Holdings’ t-shirts often include
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`parodies of other designs and trademarks that are intended to be humorous. These same
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`themes are used on men’s underwear, fleece products, and other items.
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`The “Big Dog(s)” brand is designed to permit consumers to convey to others various
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`modes of an “in charge” attitude—from tongue-in-cheek to “edgy.” Holdings’ products are
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`designed to appeal to enthusiasts of various recreational and leisure activities who wish to
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`convey a variety of attitudinal modes.
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` Holdings
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`follows
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`(and sometimes
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`leads)
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`the
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`leisure/recreational marketplace. For example, when cigar-smoking became popular several
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`years ago, Holdings developed new graphics to appeal to cigar smokers. Similarly, Holdings
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`has developed a “Big Dog Surf Company” identity to capitalize on those interested in the
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`surfing lifestyle, a “Big Dog Trucking Company,” a “Big Dog Construction Company,” and a
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`“Big Dog Garage,” and other “fake company” identities. Holdings carries a full line of extra
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`and extra-extra large sizes, again consistent with the “large and in charge” attitude the brand
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`seeks to convey.
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`Holdings (or its predecessor) has been selling t-shirts depicting motorsports, including
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`motorcycles, since at least 1990. Some motorcycle enthusiasts wear Holdings’ apparel. Since
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`December of 1996, Holdings has sold more than $4 million worth of t-shirts (more than
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`6
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 7 of 48
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`250,000
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`individual
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`t-shirts) depicting motorcycles or parodying
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`the Harley Davidson
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`motorcycle brand.3
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`Holdings identifies its competitors as branded, active wear companies like J. Crew and
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`the Gap as well as character merchandise companies such as Disney and Warner Bros.
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`Holdings’ customers include a broad customer base but do not reach ethnic, urban, or teenage
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`customers.
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`Holdings currently sells its products in 181 company-owned retail stores located in
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`forty-two states,
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`through
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`its nationally and
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`internationally distributed mail order catalog,
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`through its Internet website at www.bigdogs.com, and through selected licensees. Holdings
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`primarily sells its clothing and other items in wholly owned retail stores located in shopping
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`malls, typically in outlet or discount malls. Holdings’ retail stores sell only “Big Dog” brand
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`products. Out of its 181 retail stores, all but twelve are located in outlet malls. The twelve not
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`located in outlet malls are located in other areas that have high consumer foot traffic, including
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`power center malls, strip center malls, and malls in tourist locations. Approximately ninety-
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`five percent of Holdings’ total net sales occur through its chain of wholly owned stores located
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`3 One of Holdings’ factual allegations states that “Mr. Coleman would object if
`Holdings were to create a t-shirt design for ‘Big Dog Choppers’ because he thinks it would be
`‘confusing’ to consumers” and that he “also thinks Holdings’ ‘Dogs on Hogs’ t-shirt is likely
`to be confused with Motorcycles’ shirts.” SOF ¶ 106. The court finds this factual allegation
`to be immaterial because the issue here is not Mr. Coleman’s perceptions about confusion
`between the parties’ marks but rather whether a rational trier of fact could find that consumers
`are likely to be confused by the similarity of the marks as they encounter those marks in the
`marketplace, which is an issue that must be analyzed in light of the six nonexhaustive factors
`that are used to determine whether a likelihood of confusion exists between the two marks.
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`7
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 8 of 48
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`in shopping malls. Holdings does not now sell its products on a wholesale basis, i.e., to others
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`for resale in places like department stores, but it has done so in the past, and likely will do so
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`again in the future.
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`Internet and mail order sales account for approximately five percent of Holdings’ total
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`sales. This year, Holdings already has sold approximately 100,000 t-shirts over the Internet
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`and via direct mail alone. Since 1992 Holdings has sold approximately two million t-shirts
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`over the Internet and by mail order.
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`Holdings generally sells its t-shirts and other adult apparel at a discount in its retail
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`stores. For example, adult sized t-shirts at Holdings’ retail stores generally are marked for
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`approximately fifteen dollars and often further discounted by being offered on a two-for-one
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`pricing basis. Holdings prices its clothing higher in its catalogs and on its website so that it
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`can advertise in the outlet store that the clothing is being sold at a discount.
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`Holdings primarily advertises its products via the products themselves. The products,
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`such as t-shirts and coffee mugs, almost exclusively are meant to be used in public. Holdings
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`designs products to permit the consumer to convey his or her “Big Dog” attitude to others, and
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`also so as to permit Holdings to familiarize those others with the “Big Dog” marks and brand.
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`Holdings’ products, particularly its graphic apparel, are “walking advertisements” for the “Big
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`Dogs” brand.
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` Holdings also sends out millions of catalogs to consumers promoting its
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`apparel. Holdings distributes catalogs to consumers who request them, who order from
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`someone else’s catalog, and who are listed on other retailers’ for-sale mailing lists. Holdings
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`mails catalogs at least twice every year, and in 2004 alone mailed 1,599,878 catalogs to
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`8
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 9 of 48
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`consumers. Holdings has mailed more than twenty-three million catalogs to consumers since
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`1993. Holdings occasionally uses billboard signage to promote its stores. Holdings employs
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`a “grass roots” marketing strategy including local and charity sponsorships and community-
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`oriented promotional events. In the late 1980s, for example, Holdings’ predecessor sponsored
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`a race car. Holdings owns and uses (through a licensee) the “Big Dog Shootout” mark for drag
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`racing, first used in 1996. Holdings’ products are available on the Internet, and Holdings pays
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`others to link to Holdings’ site. Holdings does not send representatives to motorcycle rallies
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`or events, nor does it advertise its products in magazines specifically aimed at motorcycle
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`enthusiasts. Since Holdings acquired the “Big Dog” marks in 1992, it has spent more than $15
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`million
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`in advertising, exclusive of
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`the costs of
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`the “walking advertisement” products
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`themselves.
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`Holdings has registered the mark as a word mark (i.e., without a specific design) and
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`uses the mark in a wide variety of typefaces, styles, and positions on its products, particularly
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`as viewed in public (as opposed to on apparel care labels, for example). Holdings also uses
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`“Big Dog” in the singular. Following is a sampling of the manner in which Holdings’ uses the
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`word mark in its logos:4
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`4 The court realizes that Holdings uses its marks in a variety of ways and these two logos
`are not intended to be representative samples. Rather, they are simply a starting point to begin
`to familiarize the reader with Holdings’ marks.
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`9
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`

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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 10 of 48
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`C.
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`Big Dog Motorcycles, L.L.C.
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`Among American-made motorcycles, Motorcycles is second in sales only to Harley
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`Davidson. Motorcycles is the largest manufacturer in the world of the popular “chopper-style”
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`motorcycles.
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` The company recently received the number one ranking of all motorcycle
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`manufacturers from
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`the prestigious dealer magazine, “Dealernews Magazine.”
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` This rating
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`placed Big Dog Motorcycles above Harley Davidson, all Japanese, and all European
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`motorcycle manufacturers
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`in product style, product
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`features, and customer service.
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`Motorcycles makes a range of bikes that are priced at retail from approximately $27,000 to
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`$34,000. These bikes are over-the-road, cruiser models that have names such as Ridgeback,
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`Pitbull, Chopper, Mastiff, and Bulldog.
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` Motorcycles offers
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`these five base models of
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`motorcycles that may be customized with various performance parts and accessories at the
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`buyer’s request. Another key feature of the motorcycles is the detailed, hand painted graphics
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`that may be selected from a series of stock graphics and colors, or specially ordered.
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`Motorcycles also sells parts and accessories for its motorcycles. A majority of the parts are
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`sold to dealers to service the bikes. The accessories include items such as customer passenger
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`seats, performance exhausts, and sissy bars.
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`10
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`

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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 11 of 48
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`Motorcycles also sells apparel and other promotional items. The apparel consists
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`primarily of shirts, caps, and jackets carrying the Big Dog Motorcycles’ brand name and/or
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`logo thereon. The designs that Motorcycles uses on its apparel and other products include, for
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`example, Maltese crosses,
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`flames, and/or skulls.5
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` The other promotional
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`items
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`that
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`Motorcycles sells include calendars, bar stools, pens, shot glasses, and pocket knives that bear
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`the Big Dog Motorcycles logo.
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`Motorcycles usually, but not always, uses “Big Dog Motorcycles” in a logo form
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`consisting of the words “big dog” displayed in lower case stylized lettering bordered by upper
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`and lower lines with the word “MOTORCYCLES” in capital letters underneath, as follows:6
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`All apparel that includes the words “Big Dog” also has the word “Motorcycles” in close
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`proximity. Mr. Coleman’s affidavit states that this logo is prominently featured on signage and
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`5 As Holdings points out, these types of designs are not exclusively of interest to
`motorcycle enthusiasts or unique to motorcycle company clothing, but rather are used on
`different types of apparel.
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`6 As with Holdings’ sample logos set forth above, this sample logo of Motorcycles is
`simply intended to be a starting point to familiarize the reader with Motorcycles’ mark.
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`11
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`

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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 12 of 48
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`point of sale displays at the dealerships,7 on Motorcycles’ web site and promotional materials,
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`and on the motorcycles and some parts and accessories. This logo also appears as a decorative
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`element on many of the promotional items.
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`Motorcycles sells
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`its new8 motorcycles exclusively
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`through
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`its own showroom
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`in
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`Wichita, Kansas, and through ninety-four authorized dealers, eight of whom are “branded
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`dealers” that incorporate “Big Dog Motorcycles” as part of their name. Motorcycles also sells
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`its apparel and other promotional items through its own showroom and its authorized dealers.9
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`Motorcycles’ products carry
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`the name “Big Dog Motorcycles” or, for some parts and
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`accessories, simply “BDM.” Motorcycles’ promotional items are only available through its
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`motorcycle dealerships.
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`The following chart sets forth Motorcycles’ sales since 1997 for its three categories
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`of products:
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`7 Holdings states that it controverts this statement of fact to the extent that Mr.
`Coleman states this logo is prominently featured at Motorcycles’ dealerships, rather than only
`its showroom in Wichita. Holdings’ argument is based on the fact that one of the exhibits
`Motorcycles cited in support of this factual allegation consists of pictures of Motorcycles’
`showroom only, not other dealerships. But, Motorcycles supported this factual averment not
`only by referencing the pictures of the showroom, but also Mr. Coleman’s affidavit which
`more broadly refers to Motorcycles’ dealerships in general.
` Holdings has submitted no
`evidence to controvert this factual allegation and therefore the court deems it admitted for
`summary judgment purposes.
`
`8 Holdings points out that this factual allegation excludes re-sales of used Big Dog
`Motorcycles by original owners, some of which are being sold on the Internet under the name
`“Big Dog.” Holdings has not, however, controverted that Motorcycles’ apparel and other
`promotional products are sold only
`through Motorcycles’ showroom and
`its authorized
`dealers.
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`9 This includes its dealers’ websites, as discussed below.
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`12
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 13 of 48
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`Year
`
`Motorcycle
`Sales
`
`Parts,
`Accessories,
`& Service
`Sales
`
`Clothing
`Sales
`
`Total
`Sales
`
`1997
`
`1998
`
`1999
`
`2000
`
`2001
`
`2002
`
`2003
`
`2004
`
`YTD 2005 as
`of 6/30/05
`
`TOTAL
`
`$4,223,168
`
`5,778,236
`
`15,075,076
`
`20,552,628
`
`30,860,589
`
`42,903,568
`
`78,527,769
`
`100,270,286
`
`61,310,379
`
`$262,469
`
`$15,992
`
`$4,501,629
`
`236,917
`
`235,708
`
`492,782
`
`1,037,565
`
`1,423,674
`
`2,335,283
`
`4,163,883
`
`4,143,467
`
`16,933
`
`43,188
`
`120,221
`
`213,422
`
`310,956
`
`406,722
`
`605,326
`
`404,349
`
`6,032,086
`
`15,353,972
`
`21,165,631
`
`32,111,576
`
`44,638,198
`
`81,269,774
`
`105,039,495
`
`65,858,195
`
`$361,921,137
`
`$14,429,205
`
`$2,137,109
`
`$378,487,451
`
`During each of the last five years, promotional clothing and consumer product sales
`
`have accounted for less than one percent of Motorcycles’ gross sales.10 Notwithstanding this,
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`Motorcycles believes that its sales of apparel and other consumer products bearing the “Big
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`Dog Motorcycles” logo is important to its ability to sell motorcycles through its dealership
`
`network. Mr. Coleman explains that this is because wearing a Motorcycles’ shirt or cap or
`
`10 Holdings points out that the dollar value of Motorcycles’ motorcycle and clothing
`sales, combined with the average prices of those items, indicate that Motorcycles has sold
`approximately 85,000 clothing items and only approximately 10,000 motorcycles since 1997.
`Holdings also points out that Motorcycles’ clothing sales are on pace to approach $1 million
`in 2005 alone.
` While
`the volume of Motorcycles’ clothing sales might provide some
`understanding of why Holdings has chosen to devote its resources to litigating this case, the
`court cannot envision how this consideration is relevant to whether consumers are likely to be
`confused by the parties’ marks.
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`13
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 14 of 48
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`displaying a Big Dog Motorcycles barstool are important ways of identifying oneself with the
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`motorcycle culture and to other motorcycle enthusiasts. The retail price of Motorcycles’
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`branded t-shirts is usually approximately twenty dollars.
`
`Motorcycles competes with all motorcycle companies, but Mr. Coleman views
`
`Motorcycles’ primary competitors as American motorcycle manufacturers and custom shops
`
`such as American Ironhorse and Vengeance. A Big Dog Motorcycles brand motorcycle is
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`rarely the first motorcycle owned by the purchaser. Seventy-eight percent of Motorcycles’
`
`customers have more than five years of experience riding motorcycles. Sixty-four percent of
`
`this group have more than ten years of riding experience before purchasing a Big Dog
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`Motorcycles brand motorcycle. Similarly, sixty-three percent of the purchasers of Big Dog
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`Motorcycles brand have also owned other motorcycles.
`
` Eighty percent of Motorcycles’
`
`customers are over the age of thirty-four; forty-three percent of them are over the age of forty-
`
`five. Of course, Motorcycles sells its clothing and promotional items to people who have not
`
`necessarily purchased its motorcycles.
`
`Motorcycles has a website on which it displays its bikes, apparel, collectibles, and other
`
`items.
`
` In 2004, Motorcycles discontinued selling motorcycle parts, accessories, branded
`
`apparel, and collectibles on its web site to strengthen dealer sales. Motorcycles’ website
`
`states: “To purchase anything from our apparel line, please contact your nearest Big Dog
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`Motorcycle dealer. For a complete listing of Big Dog Motorcycle dealers, use your dealer
`
`locator.” Of Motorcycles’ ninety-four dealers, twelve currently sell apparel on their web sites.
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`14
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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 15 of 48
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`A number of the dealers have web sites on which they show the different models of
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`motorcycles, but customers are not permitted to purchase a motorcycle from the web sites.
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`Motorcycles primarily advertises its motorcycles in media that are likely to be viewed
`
`by motorcycle enthusiasts. For example, it advertises in nationally distributed motorcycle
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`publications such as “American Iron” and “Easy Riders.” It sometimes advertises on nationally
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`syndicated cable
`
`television shows such as “American Chopper,” “Texas Hardtails,” and
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`“American Thunder.” Motorcycles promotes its motorcycle brand by attending motorcycle
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`rallies and events. Motorcycles also participates in cooperative advertising with its dealers for
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`local newspaper and radio advertisements in their area featuring the dealership and its Big Dog
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`Motorcycles’ brand of bikes. Mr. Coleman testified in his deposition that Motorcycles’ arena
`
`is the “cruiser lifestyle” established by Harley Davidson, to whom Motorcycles looks, among
`
`others in the industry, when designing apparel and collectibles. Since 2001, Motorcycles has
`
`spent over $2 million advertising and promoting its Big Dog Motorcycles’ brand.
`
`None of Motorcycles’ dealers carries any of Holdings’ products. Motorcycles does
`
`not use graphics or pictures of dogs in its logo, advertising, or on any of its products.11
`
`Motorcycles does not distribute mail order catalogs. Mr. Coleman’s affidavit states that
`
`Motorcycles’ dealerships are not typically located in outlet malls or shopping complexes, and
`
`Holdings has not submitted any evidence to the contrary.
`
`11 One of Motorcycles’ authorized dealers uses the image of a dog in its own
`advertising, but there is no evidence in the record indicating that Motorcycles itself does so.
`
`15
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`

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`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 16 of 48
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`D.
`
`Survey Evidence Regarding Customer Confusion12
`
`Holdings’ retained Lou Weiss to conduct two surveys to measure the likelihood of
`
`confusion. One survey was a non-comparative survey. The other was a comparative survey.
`
`The surveys were conducted in eight malls across the country. Four of the malls had a “Big
`
`Dogs” store and four of the malls did not have a “Big Dogs” store. None of the interviews
`
`were conducted at motorcycle dealerships or other locations where motorcycle enthusiasts
`
`are known to shop. The universe of respondents in both surveys was prospective purchasers
`
`of t-shirts and caps.
`
`In
`
`the non-comparative survey, Mr. Weiss surveyed
`
`three hundred respondents.
`
`Approximately one-half of the respondents were shown a photograph of three products sold
`
`by Holdings, including a t-shirt, a mug, and a hat (“Photo A”). The other one-half were shown
`
`a photograph of three products sold by Motorcycles, including a t-shirt, a mug, and a hat
`
`(“Photo B”). Both groups of respondents were asked a series of questions designed to elicit
`
`whether the respondent was familiar with the brand of products depicted in the photograph,
`
`whether they could identify the brand, and what other products the respondent believed were
`
`produced by the company that produced the products in the photograph. Seventy-seven percent
`
`of the respondents incorrectly identified the brand name of Motorcycles’ products as “Big
`
`12 Motorcycles presented evidence from the depositions of Mr. Feshback, Holdings’
`executive vice president and general counsel Anthony Wall, and Mr. Coleman regarding
`instances
`in which
`they were questioned by others about confusion between
`the
`two
`companies. Holdings does not, however, rely on this evidence to establish actual customer
`confusion. Because Holdings does not rely on this evidence to withstand summary judgment,
`then, the court will not delve into this evidence. See also note 16, infra.
`
`16
`
`

`
`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 17 of 48
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`Dog” or “Big Dogs.” A small percentage of respondents (10%-25%) associated Motorcycles
`
`with motorcycles or motorcycle accessories. Consumers did not distinguish between the
`
`products produced by these two different companies.
`
`In the comparative survey, Mr. Weiss surveyed 299 respondents. They were shown an
`
`array of twelve photographs of products. Six of the photographs depicted hats and one side of
`
`t-shirts sold by Holdings. The other six photographs depicted hats and one side of t-shirts sold
`
`by Motorcycles. The respondents were asked to sort the twelve photographs by the company
`
`they believed made the products depicted in the photographs. Ninety-five percent of the
`
`respondents failed to accurately sort the products. Twenty-eight percent of the respondents
`
`completed the exercise with the lowest possible score -- one that would have been achieved
`
`by a random sort. Based on the survey results, Mr. Weiss concluded that only five percent of
`
`the respondents were able to divide the products into two piles without error.
`
`Based on the results of the two studies, Mr. Weiss opined that there was a “substantial
`
`level of confusion by consumers” between the products of the two companies.
`
`E.
`
`Common Use of the Term “Big Dog”
`
`Motorcycles has submitted a variety of evidence relating to use of the term “Big Dog.”
`
`This evidence consists of the following. First, a search of the Dun & Bradstreet database listed
`
`1,782 companies in the United States doing business and using the phrase “Big Dog” in their
`
`names. This includes 763 listings of companies using the name “Big Dog” that are not
`
`affiliated with Holdings or Motorcycles. Additionally, a search of federal and state trademark
`
`17
`
`

`
`Case 2:04-cv-02419-JWL Document 107 Filed 12/02/05 Page 18 of 48
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`office records revealed that there are eleven issued federal registrations13 and thirty-three
`
`issued state registrations for marks incorporating the term “Big Dog” or “Big Dawg” that are
`
`owned by the parties other than Holdings and Motorcycles. Also, research on the Internet
`
`performed on behalf of Motorcycles revealed that the phrase “Big Dog” is used pervasively on
`
`the Internet. A search on the “Google” search engine revealed over 19 million hits,14 including
`
`references to dozens of businesses, organizations, and people using the name “Big Dog.” This
`
`Internet research also revealed that the phrase “Big Dog” is commonly used in popular culture
`
`and has been defined in a number of different ways in popular culture. For example, the phrase
`
`has been used generally to describe someone who is in charge and it also has been used to
`
`identify particular individuals such as former President Bill Clinton.
`
`Holdings is aware that a number of companies use the mark “Big Dog” in commerce
`
`such as Big Dog Logistics, Big Dogs Hospitality Group, Big Dog Trucking, and Big Dawg
`
`Automotive Mechanical Service. Big Dogs Hospitality Group uses the names “Big Dog’s Bar
`
`and Grill” and “Big Dog’s Bar and Casino” in Las Vegas, Nevada. Holdings has consented to
`
`Big Dogs Hospitality Group’s registration of the term “Big Dog Casino” and has specifically
`
`13 Of these federal trademark registrations, five of them are owned by either Big Dogs
`Hospitality Group, Inc. or Metra Electronics Corp., both of which have agreements with
`Holdings limiting their use of any “Big Dog” logo on apparel and otherwise.
`
`the number of hits achieved by
`14 Holdings has submitted evidence surrounding
`searching other terms on the Internet. The court need not delve into this evidence, however,
`because the cour