Automobile Club de l’Ouest de la Francev.R. J. Reynolds Tobacco Co.

Trademark Trial and Appeal Board

Aug 6, 1998

No. 91090621 (T.T.A.B. Aug. 6, 1998)

Hearing: Paper No. 26
May 27, 1997
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 6, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Automobile Club de l’Ouest de la France
v.
R. J. Reynolds Tobacco Company
_____
Opposition No. 90,621
to application Serial No. 74/276,846
filed on May 18, 1992
_____
Vincent F. Bick, Jr. for R. J. Reynolds Company.
Michael J. Striker of Striker, Striker and Stenby for
Automobile Club de l’Ouest de la France.
______
Before Simms, Cissel and Seeherman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 18, 1992, applicant, hereinafter referred to as
“Reynolds,” applied to register the mark “LEMANS” on the
Principal Register for “cigarettes,” in Class 34. The basis
for the application was Reynolds’ assertion that it
possessed a bona fide intention to use the mark in commerce
on these goods.
Opposition No. 90,621
2
On December 14, 1992, a timely notice of opposition was
filed by the Automobile Club de l’Ouest de la France,
hereinafter referred to as the “Automobile Club.” As
grounds for opposition, opposer asserted that it is a French
limited liability company which, for many years prior to the
filing of the opposed application, organized, promoted and
conducted the annual automobile race generally known
throughout the United States as “LeMans” or “The 24 Hours of
LeMans”; that the race, which is promoted in the United
States, is, in the United States, the first or second most
well known automobile race, even though it takes place in
France; that the mark “LE MANS” is famous in the United
States in connection with opposer’s race; and that
applicant’s mark, if used for cigarettes, would so resemble
opposer’s famous mark that confusion would be likely.
Additionally, opposer stated in the notice of opposition
that because cigarette smoking is a direct cause of cancer,
heart disease and numerous other ailments, opposer will be
damaged if its famous trademark is used in connection with
cigarettes.
In answer to the notice of opposition, Reynolds
basically denied the allegations of the Automobile Club with
regard to the likelihood of confusion, and asserted as an
“affirmative defense” that applicant had owned Registration
No. 980,683, issued on March 26, 1974, for the mark “LEMANS”
Opposition No. 90,621
3
for cigarettes, based on use since February 1, 1973, but
that the registration was subsequently canceled voluntarily;
and that third-party use and registration of “LE MANS” and
terms incorporating it or equivalent to it should result in
the Board’s according a very narrow scope of protection to
opposer’s mark and holding that confusion would not be
likely if applicant were to use the mark on cigarettes.
A trial was conducted in accordance with the Trademark
Rules of Practice, briefs were filed by both parties, and an
oral hearing was held before the Board on May 27, 1997.
The record includes the testimony, with exhibits, of
Jacques Grelley1, a retired race car driver who raced at
LeMans and in other professional races; of Ruth O’Brien, an
administrative assistant at the Automobile Club’s law firm;
and of Anne Miller, an employee of Reynolds. Also of
record, by notices of reliance, are various publications
relating to the fame of opposer’s auto race, and two
registrations owned by opposer. Reg. No. 1,332,791 issued
on April 30, 1985 for the mark “LES 24 HEURES DU MANS,”
which translates into English as “THE 24 HOURS OF LE MANS.”
The goods and services listed in the registration when it
issued were as follows: “automobile oil and lubricants,” in

1 Certain of the exhibits to the testimony of Mr. Grelley were
never received by the Board. Upon inquiry, neither opposer nor
applicant was able to locate duplicates, so opposer submitted a
statement that it is not relying on the missing exhibits to this
testimony.
Opposition No. 90,621
4
Class 4; “ignition wires, points, plugs and condensers for
use on land vehicle engines,” in Class 7; “internal
combustion engines for land vehicles; automobiles,
automobile tires,” in Class 12; “single work books and
playing cards relating to automobile racing,” in Class 16;
“key rings, primarily not of metal,” in Class 20; “dishes,”
in Class 21; “clothing-namely, jackets, scarves and hats,”
in Class 25; “equipment sold as a unit for playing a board
game relating to automobile racing,” in Class 28;
“ashtrays,” in Class 34; and “organization and presentation
of automobile races,” in Class 41. In 1991, the goods and
services in the following classes were canceled under
Section 8 of the Act: 4, 7, 12, 21, 28, and 41. The
registration remains in effect, therefore, with respect to,
among other things, “ashtrays” in Class 34.
Reg. No. 1,393,543, issued on May 13, 1986, for the
mark shown below
for “organization and conducting of automobile races,” in
Class 41. Affidavits under Sections 8 and 15 of the Act
were timely filed with respect to this registration.
Opposition No. 90,621
5
After careful consideration of the record in this
proceeding and the arguments on behalf of the parties, we
find that the mark “LE MANS” is famous for the service of
organizing and conducting the Automobile Club’s
international automobile competition, and that, in view of
both the practice of opposer of using and registering its
mark on collateral merchandise, as well as the established
commercial relationship between automobile racing and
cigarettes, confusion would be likely if applicant were to
use “LEMANS” as a trademark for its cigarettes. We agree
with opposer that consumers presented with the mark on
cigarettes would be likely to assume that some sort of
consent from the Auto Club allows the use of its famous mark
by Reynolds. Whether such consent would be presumed to be
in the form of a license, endorsement, sponsorship, or some
other type of permission is not important. The association
between applicant and opposer would be mistakenly assumed to
exist.
We are not led to a contrary conclusion by either the
relatively small amount of use by third parties of marks
consisting of or incorporating “LE MANS” or variations
thereof in connection with services which are unrelated to
cigarettes, or the fact that applicant once was issued a now
defunct registration for this mark in connection with the
same goods specified in the opposed application.
Opposition No. 90,621
6
The evidence and testimony of record in this proceeding
constitute a persuasive showing that the mark “LE MANS” is
famous in the United States for organizing and conducting
the Automobile Club’s annual race in France. The publicity
and renown of the race in this country is clear from the
testimony of Mr. Grelley and Ms. O’Brien, as well as from
the encyclopedias and periodical publications made of record
by the notice of reliance of opposer. The Automobile Club
has conducted its race since 1923, and it is televised and
known here and throughout the world as one of the most
prestigious events in the world of motorsports.
The record which demonstrates the fame of opposer’s
mark also shows that a commercial association exists between
auto racing and cigarettes. Racing cars and teams are often
sponsored by tobacco companies, which capitalize on the
publicity accorded to the cars and their drivers in order to
promote the sale of their cigarettes. The glamour and
excitement associated with car racing seem to generate sales
for these products. The evidence shows that “Rothmans,”
“Camel,” “Winston,” “Lucky Strike” and “Silk Cut” brand
cigarettes are all promoted in this way.2

2 Opposer’s pleading and argument that it fears it would be
damaged if its mark were used by applicant on cigarettes because
they cause numerous diseases appear to be disingenuous in view of
what the record shows in this regard. Opposer itself has
registered its mark for ashtrays. If the association between
racing and tobacco were in fact so odious, such use and
registration, as well as the widespread sponsorship of cars and
advertising on them by tobacco companies would not be tolerated,
Opposition No. 90,621
7
This record also clearly establishes that the
Automobile Club, as the entity which organizes and conducts
the automobile races under the marks “LE MANS” and “THE 24
HOURS OF LE MANS,” has used and registered the latter for a
wide range of collateral products, including clothing, key
rings, books, car parts, dishes, board games and,
significantly, ashtrays.
In view of the commercial association between tobacco
products and auto racing, as well as the fame of opposer’s
mark and its use and registration of it in connection with
collateral products, including ashtrays, which, of course
are used in direct connection with cigarettes, consumers
would be likely to assume that cigarettes bearing the
Automobile Club’s mark are endorsed, sponsored, or somehow
affiliated with the Automobile Club.
The facts of this case and our reasoning in resolving
it are similar in many respects to the situation in K2
Corporation, et al, v. Philip Morris Incorporated, 192 USPQ
174 (TTAB 1976); affirmed by the Court of Customs and Patent
Appeals at 555 F.2d 815, 194 USPQ 81 (CCPA 1981). In that
case, confusion was found to be likely in view of the use of
the mark “K2” on both cigarettes and skis. The tobacco
company sponsored ski races, and we held that consumers
would likely assume a connection or association between the

either by the racing teams themselves, or by the tracks at which
Opposition No. 90,621
8
cigarettes and skis when the same mark was used on both. In
a similar sense, in view of the sponsorship of race cars and
teams by tobacco companies, smokers presented with
cigarettes bearing this famous mark for auto racing would be
likely to assume that some association, endorsement or
sponsorship from the racing organization permits the use of
the mark on the tobacco products.
Our conclusion in the case at hand on this issue is
not, however, based on the testimony of opposer’s witness
Mr. Grelley with regard to the Harley Davidson brand
cigarettes he purchased. Although opposer seems to contend
that his testimony establishes a basis for consumers to
expect famous marks for other products to be used under
license for cigarettes, Mr. Grelley did not testify that
these goods were marketed under license from the motorcycle
manufacturer. For that matter, his testimony does not even
indicate that he assumed that the cigarette maker had
permission from the motorcycle company to use the motorcycle
trademark. All he actually said was that he had purchased
the pack bearing the Harley Davidson trademark at a gas
station in Dallas, but that he had stopped smoking years
earlier at the order of his doctor. Neither counsel for
opposer nor applicant’s counsel inquired further of the
witness on this subject. We do not know who is responsible

they compete.
Opposition No. 90,621
9
for the Harley Davidson trademark on these goods, much less
whether there is any connection between the maker of them
and the owner of the motorcycle trademark. This testimony
falls short of establishing the connection that opposer
sought to establish, and it is not the basis for our
conclusion that confusion is likely.
Turning to applicant’s weak mark theory, as opposer
points out, the four trademark registrations submitted by
applicant are not evidence of the use of these registered
marks. Nor does the evidence of these third-party
registrations for products such as hosiery, bicycles,
luggage and telephones establish that the term has a
recognized meaning in the field of conducting automobile
races and collateral goods, such that opposer’s mark should
only be entitled to a smaller scope of protection.
Applicant further argues that the evidence of actual
use by a relatively small number of businesses in the United
States of marks consisting of or incorporating “LE MANS”
also establishes that opposer’s mark is weak, and that we
should therefore conclude that confusion is not likely. We
agree with opposer, however, that the uses shown by
applicant are generally unrelated to tobacco products and
appear to be de minimis in nature.
We note that the fact that Reynolds once owned a
registration for this mark for the same goods specified in
Opposition No. 90,621
10
the opposed application has no bearing on the resolution of
this proceeding. That registration was voluntarily
surrendered for cancellation, and whatever rights it
represented were extinguished with it.
With regard to opposer’s argument concerning
applicant’s intent, we have no direct evidence or testimony
that Reynolds is simply attempting to enhance the
marketability of its cigarettes by associating them with a
famous and celebrated sporting event. This record does not
establish any reason why applicant intends to adopt
opposer’s mark for use on its own products. We therefore
cannot attribute bad intentions to applicant in this regard.
As discussed above, however, we do find that confusion
would be likely if applicant were to use “LEMANS” as a
trademark for cigarettes, primarily because of the fame of
opposer’s mark, its registration for collateral merchandise,
and the association between automobile racing and tobacco
products. Accordingly, we sustain this opposition, and
registration to applicant is therefore refused.
R.L. Simms
R.F. Cissel
Opposition No. 90,621
11
E.J. Seeherman
Administrative Trademark Judges,
Trademark Trial and Appeal Board