Virginia Rhodes

Trademark Trial and Appeal Board

May 26, 1999

EX (T.T.A.B. May. 26, 1999)

Paper No. 20
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 26,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Virginia Rhodes, dba Cycle Shirts
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Serial Nos. 74/574,596; 74/574,597; 74/574,598; and
74/574,599
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Lynne M. Fletcher of Allen, Dyer, Doppelt, Milbrath &
Gilchrist, P.A. for Virginia Rhodes.
George C. Pologeorgis, Trademark Examining Attorney, Law
Office 107 (Thomas S. Lamone, Managing Attorney).
_______
Before Cissel, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 16, 1994, applicant filed the above-
referenced applications to register the following marks on
the Principal Register for “clothing, namely, t-shirts and
caps,” in Class 25: “BLACK HILLS MOTOR CLASSIC,” S.N.
74/574,596; “BLACK HILLS MOTORCYCLE RALLY AND RACES,” S.N.
74/574,597; “STURGIS RALLY AND RACES,” S.N. 74/574,598; and
“BLACK HILLS RALLY AND RACES,” S.N. 74/574,599.
Ser No. 74/574,596
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All of these applications were based on use of the
marks in interstate commerce since August of 1966. All
were subsequently amended to seek registration under the
provisions of Section 2(f) of the Lanham Act based on
applicant’s claims that the marks had become distinctive as
a result of applicant’s use and promotion of them.
These applications are now before the Board on appeal
from refusals to register under Section 2(d) of the Act on
the ground that applicant’s marks, as applied to the
clothing items set forth in the applications, so resemble
the mark shown below that confusion is likely.
Ser No. 74/574,596
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The cited mark is registered1 for “promoting sports
competitions and/or events of others, namely, motorcycle
rallies, exhibits and competitions; and promoting economic
development in the city of Sturgis and the Black Hills area
of South Dakota and Wyoming,” in Class 35.
The registration indicates that registrant makes no
claim to the exclusive right to use “MOTOR CLASSIC” or
“RALLY & RACES BLACK HILLS S.D.” apart from the mark as
shown. The registration further reveals that it was
granted in light of registrant’s claim of distinctiveness
under Section 2(f) with respect to the words “BLACK HILLS
MOTOR CLASSIC.”
The four applications were consolidated for purposes
of appeal, so this opinion relates to each application. No
oral hearing was requested by applicant, but briefs were
filed by both applicant and the Examining Attorney.
Based on careful consideration of the materials of
record in these applications and the written arguments of
applicant and the Examining Attorney, we hold that the
refusals to register are appropriate. Confusion is likely
because each of applicant’s marks is similar to the cited

1 Reg. No. 1,948,097, issued to the Sturgis Area Chamber of
Commerce, a South Dakota non-incorporated, non-profit
association, on January 16, 1996.
Ser No. 74/574,596
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registered mark and the goods set forth in the applications
are commercially related to the services specified in the
registration.
As is frequently the case in resolving the issue of
whether confusion is likely, our analysis focuses primarily
on the similarities between the marks sought to be
registered and the mark cited as a bar to registration, as
well as on the relationship between the services specified
in the cited registration and the products set forth in the
applications.
Turning first to the respective goods and services, we
find that the clothing items identified in the four
applications are clearly commercially related to the
services set forth in the cited registration. The caps and
t-shirts applicant sells are souvenirs or commemorative
clothing items sold in conjunction with the “BLACK HILLS
MOTOR CLASSIC,” which is the motorcycle event that
registrant promotes with its registered mark. The
Examining Attorney’s exhibits show that promoters of
sporting events market both t-shirts and the events under
the same marks. People who attend this event and purchase
applicant’s shirts or caps bearing marks which are similar
to the mark used to promote the event have an obvious
reason to assume that such clothing items emanate from, or
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are somehow authorized or licensed by, the same source that
promotes the event. The affidavit submitted by applicant
in support of her claim of distinctiveness under Section
2(f) of the Act establishes that she in fact sells her
shirts and caps bearing the marks she seeks to register at
the event promoted by the registrant under the registered
mark. The trade channels and customers are not just
similar, they are identical.
As to the similarity of the marks, we note that the
cited registered mark represents a composite mark which
combines both words and graphic designs. The literal
portions of the mark are “BLACK HILLS MOTOR CLASSIC,”
“STURGIS,” and “RALLY & RACES BLACK HILLS S.D.” Each of
the four marks which applicant seeks to register is either
one of these literal elements in registrant’s mark or a
juxtaposition of different literal elements taken from
registrant’s mark, with or without the addition of a
descriptive term.
“BLACK HILLS MOTOR CLASSIC” is the mark in S.N.
74/574,596. These words constitute the entire phrase that
appears at the top of the registered mark between the
concentric circle designs. It is the dominant literal
portion of the registered mark, the part most likely to be
used and recalled in referring to or recommending
Ser No. 74/574,596
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registrant’s services. It is the component of the mark
that the registrant claimed had acquired secondary meaning
in connection with registrant’s services, and unless that
claim had been established to the satisfaction of the
Examining Attorney, the registration would not have issued
as it did.
Applicant should not be permitted to appropriate this
now distinctive, dominant phrase from the registered mark
and register it for goods which are commercially related to
the services registrant renders under the mark.
We turn, then, to the application to register “BLACK
HILLS MOTORCYCLE RALLY AND RACES.” Although the word
“MOTORCYCLE” does not appear in the registered mark,
graphic representations of motorcycles do, and the
registration makes it clear that the services rendered by
registrant center around a motorcycle rally and motorcycle
races, the very same rally and races that are referred to
by the marks used on applicant’s clothing. The word
“MOTORCYCLE” is merely descriptive of both registrant’s
services and applicant’s goods. That applicant has claimed
distinctiveness for the mark in which it is incorporated is
a concession of its descriptiveness in connection with the
caps and shirts bearing it.
Ser No. 74/574,596
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“BLACK HILLS MOTORCYCLE RALLY AND RACES” is simply a
rearrangement of the words shown at the bottom of the
registered mark, “RALLY & RACES BLACK HILLS,” combined with
the descriptive word “MOTORCYCLE.” Combining the
descriptive term with the aforementioned elements taken
from registrant’s mark has certainly not created a mark
which is sufficiently different from the registered mark to
avoid a likelihood of confusion. Applicant’s mark still
creates a commercial impression which is similar to the one
the registered mark creates. As applied to the goods set
forth in the application, the mark “BLACK HILLS MOTORCYCLE
RALLY AND RACES” is likely to cause confusion with the
cited registered mark.
Applicant’s next mark, “STURGIS RALLY AND RACES,”
represents a combination of part of the aforementioned
phrase from the bottom of the registered mark, “RALLY &
RACES,” with the name “STURGIS,” which is shown in the
center of the registered mark in large black letters.
Combining these two literal elements, both appropriated
from the registered mark, does not create a mark which is
readily distinguished from the mark which is the source of
its elements. Rather, the mark applicant seeks to register
so resembles the registered mark on which it is based that
confusion is clearly likely when both marks are used on the
Ser No. 74/574,596
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commercially related goods and services with which we are
presented in this case.
The fourth and final mark applicant seeks to register,
“BLACK HILLS RALLY AND RACES,” combines the first two words
from the distinctive, dominant element shown at the top of
the registered mark with the “RALLY & RACES” language shown
at the bottom of the mark. As with the other marks that
applicant is attempting to register, this mark is, in its
entirety, quite similar to the registered mark. Applicant
has appropriated two of the literal elements from it and
has rearranged them, but the two marks in their entireties
are quite similar. As applied to the related products set
forth in the application, the mark “BLACK HILLS RALLY AND
RACES” is likely to cause confusion with the cited
registered mark.
Applicant argues that because the literal portions of
the registered mark are either disclaimed or were
registered under the provisions of Section 2(f), the public
associates the design, rather than the words, with
registrant’s services. Further, applicant contends that
because applicant’s marks consist of only words, whereas
the registered mark is dominated by the design components
of it, the overall commercial impressions these marks
Ser No. 74/574,596
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engender are sufficiently different that confusion is
unlikely.
As the Examining Attorney points out, however,
applicant has ignored the well-settled principle that the
word, or literal, portions of marks combining both words
and designs generally dominate such marks because people
are more likely to recall the words and use them in
referring to such marks. In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). It is for this reason that we
accord more significance to the literal portions of the
marks in resolving the issue of whether confusion is
likely, regardless of whether such words are disclaimed or
are the subject of claims of distinctiveness. A disclaimer
does not somehow remove a word from a mark for purposes of
a likelihood of confusion analysis. The marks must still
be considered in their entireties. In re National Data
Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applicant raises the argument that the existence of
several third-party registrations of marks which include
the term “BLACK HILLS” dictates that applicant’s marks
should be registered as well. The problem with this
argument is that, contrary to applicant’s contention, the
third-party registrations list goods and/or services which
are unrelated to those of either applicant or registrant.
Ser No. 74/574,596
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Indeed, those marks, when considered in their entireties,
are each quite distinguishable from both the registered
mark and the marks applicant is trying to register.
Typical examples include “BLACK HILLS FLAVORED HONEY” and
design for honey; “CRAZY HORSE SPRING WATER OF THE BLACK
HILLS” for spring water; and “ORIGINAL DAKOTA BLACK HILLS
GOLD JEWELRY” and design for jewelry.
In summary, confusion is likely between applicant’s
marks, as applied to applicant’s clothing, and the
registered mark for promoting sporting events because the
marks create similar commercial impressions and applicant’s
goods are commercially related to the services for which
the cited mark is registered. Accordingly, the refusals to
register in each case are affirmed.
R. F. Cissel
G. D. Hohein
D. E. Bucher
Administrative Trial Judges,
Trademark Trial & Appeal Board
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