New York Racing Association, Inc.

Trademark Trial and Appeal Board

Oct 2, 2008

No. 78918925re (T.T.A.B. Oct. 2, 2008)

Mailed: October 2, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re New York Racing Association, Inc.
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Serial No. 78918925
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Request for Reconsideration
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Albert Robin of Cowan, Liebowitz & Latman, P.C. for The New
York Racing Association, Inc.

Cory Boone, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
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Before Seeherman, Kuhlke, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

The Board, in a decision dated June 27, 2008, affirmed
the refusal to register based on likelihood of confusion.
Applicant filed, on July 18, 2008, a request for
reconsideration of the Board’s decision.
It has often been stated that the premise underlying
a request for reconsideration under Trademark Rule 2.129(c)
is that, based on the evidence of record and the prevailing
authorities, the Board erred in reaching the decision it
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78918925
2
issued. See TBMP §544 (2d ed. rev. 2004) and the
authorities cited therein. The request may not be used to
introduce additional evidence, nor should it be devoted
simply to a reargument of the points presented in the
requesting party's brief on the case. See Amoco Oil Co. v.
Amerco, Inc., 201 USPQ 126 (TTAB 1978). Rather, the
request normally should be limited to a demonstration that,
based on the evidence properly of record and the applicable
law, the Board's ruling is in error and requires
appropriate change. See, for example, Steiger Tractor Inc.
v. Steiner Corp., 221 USPQ 165 (TTAB 1984), different
results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984). Cf.
In re Kroger Co., 177 USPQ 715, 717 (TTAB 1973).
With the above principles in mind, we now address
applicant’s self-described “points” in its request for
reconsideration. First, applicant states the decision “is
wrong as a mater (sic) of law” because “the law does
intend...that registration and use be coincident so far as
possible,” citing to In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In this regard,
applicant argues that it has used its mark since 1945, long
before the date of first use in the cited registration.
Contrary to applicant’s assertion that the Board “appears
to have ignored” this argument, we explicitly stated in our
Serial No. 78918925
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decision that “whether applicant used its mark before
registrant is irrelevant to our decision inasmuch as
priority of use is not an issue in an ex parte proceeding,”
citing to In re Calgon Corporation, 435 F.2d 596, 168 USPQ
278, 280 (CCPA 1971). And, while applicant correctly
identifies language from the du Pont decision, made in the
context of weighing a right to use (and right to register)
versus protection of the public interest, we further note
that the Court went on to say that the USPTO’s role lies
“in the protection of a mark by registering it and then
rejecting later improper attempts, of which the registrant
is unaware, to register it or a similar mark.” E. I. du
Pont de Nemours & Co., 476 F.2d 1364. Also, in that case,
the registrant was aware of the applicant’s attempt to
register the mark, and had given its consent thereto. In
the present case, there has been no consent, nor is there
any evidence that the owner of the cited registration is
aware of applicant’s attempt to register its mark.
Second, applicant argues that the Board erred as “a
matter of fact” because evidence submitted by applicant
regarding the registrant’s use of its mark was “ignore[d],”
whereas the Board “accepted evidence [submitted by the
examining attorney] of how the owner of the cited mark uses
its name as if it were evidence of how [registrant] uses
Serial No. 78918925
4
the mark.” While the Board may not have identified in
detail all evidence of record in its decision, applicant
may rest assured that the Board’s decision was based upon a
careful consideration thereof, including the press release
submitted by applicant. In making its point, applicant
also states that the website www.arabianracing.org “has
nothing to do with either the cited mark or its owner.” In
the decision, the Board clearly and correctly attributed
the aforementioned website as belonging to a third party
and the website www.arabianhorses.org as belonging to the
cited registrant.1 In any event and regardless of
ownership, these websites help show that the term “events”
in the cited registration’s recitation of services is broad
enough to encompass Arabian horse races as a means of
demonstrating or promoting the Arabian horse breed.
Third, applicant asserts that the Board’s decision is
“wrong as a matter of policy” because “in order to avoid
its present predicament, applicant would have had to oppose
the cited mark when it was published for opposition even
though applicant did not have, and does not have, a good
faith belief that such an opposition would have any merit.”

1 USPTO records show the cited registration is currently owned by
Arabian Horse Association (by way of assignment recorded on May
16, 2003, at reel 2656, frame 0692). The website
www.arabianhorses.org identifies itself as being owned by the
same entity.
Serial No. 78918925
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The law is clear that a mark may not be registered if it is
likely to cause confusion with a previously registered
mark. Applicant’s belief, at the time the registrant’s
mark was published for opposition, that it was not likely
to cause confusion with applicant’s mark, cannot substitute
for the Board’s judgment that such confusion is likely.
In view thereof, applicant’s request for
reconsideration of the Board’s decision is denied, and the
decision of June 27, 2008 stands.