Automobile Club di Bresciav.Wheelworld GmbH

Trademark Trial and Appeal Board

Nov 17, 2015

No. 91206470 (T.T.A.B. Nov. 17, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Automobile Club di Brescia

v.

Wheelworld GmbH
___

Opposition No. 91206470
___

John C. Holman and Robert S. Pierce of Jacobson Holman PLLC for Automobile
Club di Brescia.

Deborah Pollack-Milgate, David A.W. Wong and Caitlin R. Brandon of Barnes &
Thornburg LLP for Wheelworld GmbH.
______

Before Bergsman, Adlin and Lynch, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Wheelworld GmbH (“Applicant”) seeks registration of the marks MILLE
MIGLIA1 and 1000 MIGLIA2 in standard characters, and the mark shown below

1 Application Serial No. 85402025, filed August 19, 2011, based on an alleged intent to use
the mark in commerce (the “‘025 Application”). According to the application, “The English
translation of the words ‘MILLE MIGLIA’ in the mark is ‘ONE THOUSAND MILES’.”
2 Application Serial No. 85410245, filed August 30, 2011, based on an alleged intent to use
the mark in commerce (the “‘245 Application”). According to the application, “The English
translation of the word ‘MIGLIA’ in the mark is ‘miles’.”
Opposition No. 91206470

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all for “vehicle wheel rims.” In its notice of opposition, Automobile Club di Brescia
(“Opposer”) alleges prior use and registration of MILLE MIGLIA4 and 1000
MILGLIA5 in typed format, and the marks shown below
6 7

3 Application Serial No. 85410278, filed August 30, 2011 based on an alleged intent to use
the mark in commerce (the “‘278 Application”). This application includes the same
translation statement as the ‘245 Application, and this description of the mark: “The mark
consists of an arrow containing the words ‘1000 MIGLIA’.” Color is not claimed as a feature
of the mark.
4 Supplemental Register Registration No. 1776133, issued June 8, 1993 under Section 44(e)
of the Trademark Act for “entertainment in the nature of automobile races,” based on an
Italian registration; renewed (the “‘133 Registration”). According to the registration, “The
English translation of the words ‘MILLE MIGLIA’ in the mark is ‘thousand miles’.”
5 Registration No. 1571782, issued December 19, 1989 for “horological products, namely,
watches, watch movements, watch cases, watch dials and parts and fittings for all the
aforesaid goods;” renewed (the “‘782 Registration”). According to the registration, “The
English translation of the word ‘miglia’ in the mark is ‘miles’.”
6 Registration No. 1767689, issued April 27, 1993 under Section 44(e) for “entertainment in
the nature of automobile races” based on an Italian registration; renewed (the “‘689
Registration”). The registration includes a disclaimer of “1000 MIGLIA,” the same
translation statement as the ‘782 Registration and indicates that “the drawing is lined for
the color red.”
7 Registration No. 3714401, issued November 24, 2009 for “horological and chronometric
instruments, namely, watches, wrist watches, watch movements, watch cases, watch dials,
watch crystal, chronographs for use as watches, chronometers” (the “‘401 Registration”).
Opposition No. 91206470

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which Opposer alleges are all used for “entertainment in the nature of automobile
races and selling related promotional goods.” As grounds for opposition, Opposer
alleges that use of Applicant’s marks is likely to cause confusion with Opposer’s
marks. In its answer, Applicant denies the salient allegations in the notice of
opposition and asserts, in what it apparently intended as affirmative defenses
which are for the reasons explained below untenable, that “Opposer has not made
proper and/or continued use of his (sic) trademarks.”
The Record
The record consists of the pleadings, the files of the involved applications, and
the following:
Opposer’s first notice of reliance (“Opp. NOR No. 1”) on:
Applicant’s discovery responses; status and title copies of
Opposer’s pleaded registrations and the file histories
therefor; file histories of two of Opposer’s related but
unpleaded applications; file histories and status and title
copies of third-party registrations; Internet printouts; and
a printout of an unauthenticated e-mail.8 28-33
TTABVue.9

Applicant’s notice of reliance (“App. NOR”) on: Opposer’s
discovery responses; file histories of Opposer’s pleaded
registrations and several of Opposer’s related but

The registration includes the same translation statement as ‘782 and ‘689 Registrations
and this description of the mark: “The mark consists of an arrow design. The color red is the
background of the arrow design. The color white appears in the wording ‘1000 MIGLIA’ and
the small arrow within the larger arrow on the right.”
8 Because e-mails are not admissible through notice of reliance, Applicant has not
stipulated to the e-mail’s admission and it is not authenticated by testimony or otherwise,
this document has been given no consideration.
9 Citations to the record reference TTABVue, the Board’s online docketing system.
Specifically, the number preceding “TTABVue” corresponds to the docket entry number(s),
and any number(s) following “TTABVue” refer to the page number(s) of the docket entry
where the cited materials appear.
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unpleaded applications; file histories of third-party
applications and registrations; and Internet printouts. 37-
45 TTABVue.

Opposer’s second notice of reliance (“Opp. NOR No. 2”) on
an alleged translation of a sublicensing agreement.10 46
TTABVue.

Procedural and Evidentiary Issues
The parties’ briefs address certain issues which are not properly before us, and
others which are not supported by the evidence submitted. Specifically, while
Opposer pleads common law rights arising out of its alleged prior use of its MIGLIA
marks, Opposer’s evidence, all of which was introduced by notice of reliance alone
and is not accompanied by any testimonial or other evidence, is insufficient to
establish prior trademark use or the acquisition of common law trademark rights.
Indeed, Internet materials and printed publications introduced through notice of
reliance alone are not competent to establish the truth of the matters asserted
therein; we consider them only for what they show on their face. Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031, 1039-40 (TTAB 2010) (“… the documents have
little probative value. They are admissible only to show what has been printed, not
the truth of what has been printed.”); Research in Motion Ltd. v. NBOR Corp., 92
USPQ2d 1926, 1929 (TTAB 2009). On their face, Opposer’s documents are
insufficient to establish prior use or ownership of common law trademark rights.

10 Because neither license agreements nor translations are admissible through notice of
reliance, Applicant has not stipulated to the document’s admission and it is not
authenticated by testimony or otherwise, this document has also been given no
consideration.

Opposition No. 91206470

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For example, Opposer argues that Amici Americani Della Mille Miglia’s use of
the mark shown below
,
for a wide variety of products and services (Reg. No. 2685293) inures to its benefit.
48 TTABVue 11-12 (Opposer’s Trial Brief at 10-11); 31 TTABVue 319-321 (Amici
Americani’s registration). Specifically, Opposer relies on a document from the file
history of Amici Americani’s Reg. No. 2685293 entitled “Agreement Relating to the
‘Mille Miglia’ Trade Mark in U.S.A.,” which includes Opposer’s consent to Amici
Americani’s use of the MILLE MIGLIA mark as well as phrases which are
consistent with a license. 32 TTABVue 206-209. While the document is admissible
evidence, it is of no use to Opposer. Indeed, Opposer may not rely on the
presumptions arising out of Amici Americani’s registration. 15 U.S.C. § 1057(b) (“A
certificate of registration of a mark upon the principal register … shall be prima
facie evidence of … the owner’s ownership of the mark, and the owner’s exclusive
right to use the registered mark ….”) (emphasis added); Chemical New York Corp. v.
Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986); Yamaha
International Corp. v. Stevenson, 196 USPQ 701, 702 n.4 (TTAB 1977); Fuld
Brothers, Inc. v. Carpet Technical Service Institute, Inc., 174 USPQ 473, 475-76
(TTAB 1972) (“Notwithstanding the relationship of Associated Just Distributors,
Inc. to petitioner, it is nevertheless a separate legal entity, it is the record owner of
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the registration, and … only the registrant can rely upon the prima facie
presumptions afforded a registration under Section 7(b).”); TBMP § 704.03(b)(1)(B).
In any event, without authenticating and explanatory testimony, or other evidence,
we cannot find that Amici Americani in fact made any actual use of the mark in its
registration in the first place, much less that any such use inured to Opposer’s
benefit. Similarly, Opposer’s reliance on unauthenticated and unsubstantiated
Internet printouts about its alleged licensee Alkatec, which allegedly used
Opposer’s marks for wheel rims, do not establish that Alkatec’s or another party’s
use of Opposer’s marks, if any, inured to Opposer’s benefit. 33 TTABVue 148-165.11
Even if properly authenticated, a bare, unexplained license or consent to use
cannot, standing alone, help the licensor or trademark owner establish trademark
use upon which it may rely -- we cannot presume use based on the mere existence of
a license agreement, much less an unauthenticated and unexplained license
agreement.
Opposer is however entitled to the statutory presumptions arising out of its own
pleaded registrations, including that Opposer owns its pleaded registered marks
and has the exclusive right to use them in the United States for the goods identified
in the certificates of registration. 15 U.S.C. § 1057(b); J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965) (“A certificate of
registration constitutes prima facie evidence of ownership and ownership imparts

11 Many of Opposer’s Internet printouts were obtained via the Internet Archive’s “Wayback
Machine,” making explanatory testimony or other evidence about the Wayback Machine’s
reliability, which Opposer did not provide, crucial.
Opposition No. 91206470

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prima facie evidence of use even though there be no evidence of record relative to
such use. The presumption of use emanating from the fact of registration relates
back to the filing date of the application on which the registration is predicated.”);
Contour Chair-Lounge Co., Inc. v. The Englander Co., Inc., 324 F.2d 186, 139 USPQ
285, 287 (CCPA 1963) (“As long as a registration relied on by an opposer remains
uncancelled, we treat it as valid, entitled to the section 7(b) presumptions, and take
it at face value.”); The Gillette Co. v. George P. Kempel, 254 F.2d 402, 117 USPQ
356, 357 (CCPA 1958) (“… a registration is prima facie evidence of continuing use of
the registered mark beginning on the filing date of the application on which the
registration was granted.”). In other words, this case boils down to a comparison of
the marks as identified in Applicant’s involved applications to the marks as
identified in Opposer’s pleaded registrations (rather than Opposer’s asserted
common law rights).
As for Applicant, its “defenses” and the allegations in its brief that Opposer
abandoned its pleaded marks through acquiescence or naked licensing, and that
Opposer does not use its mark in the United States, are both untenable because
Applicant failed to counterclaim for cancellation of Opposer’s pleaded registrations.
Trademark Rule 2.106(b)(2)(ii) (“An attack on the validity of a registration pleaded
by an opposer will not be heard unless a counterclaim or separate petition is filed to
seek the cancellation of such registration.”); see also Cosmetically Yours, Inc. v.
Clairol Inc., 165 USPQ 515, 517 (CCPA 1970) (“in the absence of a counterclaim for
cancellation under Section 14 of the Act (15 U.S.C. 1064), it is not open to an
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applicant to prove abandonment of the opposer’s registered mark; and appellant’s
argument (upon which it now stakes its appeal) that opposer no longer uses the
registered mark … must be disregarded”); cf. International Paper Co. v. Valley
Paper Co., 468 F.2d 937, 175 USPQ 704, 705 (CCPA 1972).
As we compare the parties’ marks in their registrations and applications, we
keep in mind that the statutory presumptions arising out of Opposer’s registrations
do not answer the question of whether applicant’s
mark[s], for the goods identified in the application[s], so
resemble … opposer’s marks as to be likely to cause
confusion, mistake or deception. The registrations alone
are incompetent to establish any facts with regard to the
nature or extent of opposer’s use and advertising of its
trademarks or any reputation they enjoy or what
purchasers’ reactions to them may be.

Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 641
(TTAB 1977). In fact, Opposer has intentionally or not taken the “risk that the
registration[s] alone may be deemed insufficient to establish its claim of damage.”
Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1170 (TTAB 1988).
Standing and Priority
Opposer’s pleaded registrations, made of record through Opposer’s NOR No. 1,
establish its standing.12 Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000). And because Applicant has not
counterclaimed for cancellation of any of the registrations, priority is not at issue in
this proceeding with respect to the goods identified in the registrations. King Candy

12 Opposer also made the registrations of record by attaching to its notice of opposition
printouts from an Office database showing their status and title. Trademark Rule 2.122(d).
Opposition No. 91206470

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Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). Opposer bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.
We consider the likelihood of confusion factors about which the parties introduced
evidence, and treat the remaining factors as neutral.
The Marks
Turning first to the marks, it is striking to the point of raising our eyebrows that
Applicant’s marks are individually and collectively mirror images of Opposer’s:
Opposer’s Marks Applicant’s Marks
MILLE MIGLIA MILLE MIGLIA
1000 MIGLIA 1000 MIGLIA
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Opposer’s Marks Applicant’s Marks

Indeed, the parties’ word marks are identical. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’
marks formerly were known as ‘typed’ marks, but the preferred nomenclature was
changed in 2003 to conform to the Madrid Protocol … we do not see anything in the
2003 amendments that substantively alters our interpretation of the scope of such
marks”). And to the extent their design marks are not 100% identical, the
differences between them are at best subtle, forgettable and trifling. Indeed, they
share the same exact literal element, identically placed within virtually identical
designs which the involved application and pleaded ‘401 Registration both describe
as an “arrow,” and the translation statements in the involved application and
pleaded registrations all indicate that “miglia” means “miles.” In short, the marks
are the same in appearance, sound, meaning and overall commercial impression.
This factor not only weighs heavily in favor of a finding of likelihood of confusion,
but also reduces the degree of similarity between the goods and services that is
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required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001).
The Relationship Between the Goods and Services
With respect to the goods and services and their channels of trade, because
Opposer has not introduced any evidence sufficient to establish use of its marks in
the United States for any products or services, we confine our analysis to the
identifications of goods and services in its pleaded registrations: entertainment in
the nature of automobile races; and watches and chronometers.
Opposer has introduced evidence regarding the relationship between these goods
and services and Applicant’s vehicle wheel rims. Specifically, Opposer has made of
record third-party use-based registrations showing that a single mark has been
registered for automobile parts including wheel-related parts on the one hand and
automobile race-related services and to a lesser extent watches on the other, or that
the same entity has offered these products and services under related marks,
including the following:
NASCAR OFFICIALLY LICENSED & Design (Reg. No.
3347992) is registered for “land vehicle parts, namely,
wheels, wheel covers …” while NASCAR in typed form
(Reg. No. 990987) is registered for “regulating, governing,
sanctioning, and promoting stock car automobile racing.”

ELVA in standard characters (Reg. No. 3431226) is
registered for “Motor land vehicles; Structural parts for
automobiles; Parts for automobiles, namely … wheels” on
the one hand and “Providing a website featuring
Opposition No. 91206470

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information about automobiles in the nature of auto
racing, automobile history and events for auto
enthusiasts” on the other.

KASEY KAHNE (Stylized) (Reg. No. 3421209) is
registered for “wheels and wheel covers for automobiles
and motorcycles” on the one hand and “entertainment
services in the nature of participating in professional
automobile races and auto racing exhibitions” on the
other.

VOLVO in standard characters (Reg. No. 3207372) is
registered for “parts, including components, and
accessories for land vehicles, namely … wheels, wheel
bearings, wheel trims, balance weights for wheels … hubs
for vehicle wheels …;” “horological and chronometric
instruments, namely, clocks and watches and travel
alarm clocks;” and “organization of sport competitions and
sport events, arrangement of prize competitions in the
field of automobile, truck and yacht racing ….”

(Reg. No. 3614891) (hereinafter the “Mercedes
Benz Logo”) is registered for “automobile parts, namely …
wheels;” “horological and chronometric instruments,
namely, watches, clocks, chronographs for use as watches
…;” and “organizing sporting events, namely …
automobile races.”

(Reg. No. 2849974) is registered for “hubs for
vehicle wheels” and “rims for vehicle wheels” on the one
hand and “conducting entertainment exhibitions in sports
competitions” on the other.

FERRARI in typed form (Reg. No. 3000743) is registered
for “organizing automobile racing exhibitions for sporting
purposes” and “entertainment in the nature of automobile
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races” and FERRARI (Stylized) (Reg. No. 874164) is
registered for “automobiles and parts therefor.”13

33 TTABVue 3-77. “Third-party registrations which cover a number of differing
goods and/or services, and which are based on use in commerce, although not
evidence that the marks shown therein are in use on a commercial scale or that the
public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009).
Opposer also introduced Internet printouts which appear to show on their face
that:
“360 multi-spoke wheel rims” are promoted, “watches” are
listed and an automobile racing team is mentioned on a
website accessible at “ferrari.com.”

Automobile races and watches are pictured and “wheel
and tire packages” are offered for sale on a website
accessible at “audiusa.com.”

Formula 1 auto race tickets are offered on a website
bearing the marks MERCEDES-BENZ and the Mercedes
Benz Logo; MERCEDES-branded wheels are offered on a
different website; and the website “mbusa.com” includes
one page stating “Add elegance to any Mercedes-Benz
with a Genuine Accessory Wheel Package …” and another
page promoting watches bearing the marks MERCEDES-
BENZ and the Mercedes Benz Logo mark.

13 While Registration Nos 3207372, 3614891, 2849974 and 3000743 issued under Section
44(e), each registrant eventually submitted a Section 8 Affidavit showing use of the mark
for the relevant, cited goods and services.
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There is an “officially licensed wheel of NASCAR”
promoted on the website “thewheelconnection.com.”14

33 TTABVue 79-108.
Opposer’s evidence of a relationship between wheel-related products and
timekeeping devices is quite weak. It consists of only: (1) two third-party
registrations covering both types of goods (one of which appears to be corroborated
by the website printouts showing Mercedes Benz marks used for these types of
products); and (2) the unexplained but arguably apparent association between
watches and wheel rims revealed by the face of the “ferrari.com” website. This
limited evidence is insufficient to establish a relationship between automobile
wheel-related products and timekeeping devices.
Opposer’s evidence of a relationship between automobile racing-related services
on the one hand and automobile wheel-related goods on the other is much more
extensive, however. Indeed, the seven third-party registrations establishing that
these goods and services are offered under the same or related marks are further
supported by the Internet evidence which shows, on its face, that the marks of well-
known automobile manufacturers are associated simultaneously with automobile
racing and automobile wheel-related products. Similarly, the National Association
for Stock Car AutoRacing, Inc. owns the mark NASCAR for “regulating, governing,
sanctioning, and promoting stock car automobile racing,” and the related mark

14 Opposer also introduced a document headed “NASCAR 2015 Sprint Cup Series
Schedule,” which lists races and the speedways or raceways where they were scheduled to
take place, but this document does not contain a url or date of printing, and is therefore not
admissible under Safer, nor is it admissible as a printed publication under notice of reliance
pursuant to Trademark Rule 2.122(e). Accordingly, this document has been given no
consideration.
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NASCAR OFFICIALLY LICENSED for automobile wheels, and it appears from the
face of the NASCAR OFFICIALLY LICENSED mark that consumers are
immediately and prominently informed of the relationship between the sponsor of
automobile races and its “officially licensed” wheels. This evidence is corroborated
by the printout from “thewheelconnection.com,” which on its face suggests that
some consumers of automobile wheels are exposed to the NASCAR-licensed
wheels.15
In short, the record establishes that wheel-related products including wheel rims
are related to automobile race-related services, as identified in Opposer’s ‘133 and
‘689 Registrations, but fails to establish that wheel-related products are related to
timekeeping devices, as identified in Opposer’s ‘782 and ‘401 Registrations. As
indicated, the mark in Opposer’s ‘133 Registration is identical to the mark in
Applicant’s ‘025 Application and the mark in Opposer’s ‘689 Registration is
essentially identical to the mark in Applicant’s ‘278 Application. Furthermore, the
mark in Opposer’s ‘689 Registration, despite its arrow design, is similar to the
standard character mark in Applicant’s ‘245 Application, in that Applicant’s mark
and the literal element of Opposer’s mark (1000 MIGLIA) are identical. See In re
Viterra, 101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely
will be the dominant portion”). Therefore, this factor weighs in favor of a finding of

15 Furthermore, we do not require evidence to recognize that trademarks in the automobile
field are often promoted in connection with automobile races or on racecars. See generally
In re Frankish Enterprises, Ltd., 113 USPQ2d 1964, 1974 (TTAB 2015) (“while some of the
specimens reveal a relatively small yellow oval PENNZOIL sticker on the side of the truck,
as Applicant points out, such use of third-party marks is a convention in the motor sports
industry, and would not be perceived as part of Applicant’s mark”).
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likelihood of confusion between Applicant’s marks and the marks in Opposer’s ‘133
and ‘689 Registrations.
Channels of Trade
With respect to channels of trade, the evidence is inconclusive. That is, while it
appears to show, on its face, that the marks of a few major automobile
manufacturers are used for wheel-related products on the one hand and
timekeeping devices or automobile race-related services on the other, the reliability
of the evidence, comprising mere website printouts unsupported by testimony or
other corroborating or explanatory evidence, is questionable at best. More
importantly, the small number of examples is insufficient to establish that the
channels of trade overlap. This factor is therefore neutral. Opposer concedes as
much. 48 TTABVue 23 (Opposer’s Trial Brief at 22) (“Ultimately, this factor does
not clearly support a finding in either direction and has little relevance.”).
Strength of Opposer’s Marks
Applicant argues that “[t]hird party use of similar marks and the existence of
similar third party registrations undercut the origin-identifying quality and
commercial strength” of Opposer’s marks. 51 TTABVue 18 (Applicant’s Trial Brief
at 12). We are not persuaded. Opposer claims that several of the third parties
Applicant cites are its licensees, and it has introduced evidence which, while not
sufficient to establish a licensing relationship, is consistent therewith, and
sufficient to overcome Applicant’s entirely unsupported allegations of uncontrolled
third-party use. For example, the assignment records of Opposer’s ‘782 and ‘401
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Registrations indicate that there may be some relationship between Opposer and
Chopard International, one of the third-parties Applicant claims is using Opposer’s
marks without authorization. Just as Opposer’s evidence, consisting of third-party
registrations and applications and purported license or consent agreements, cannot
establish use of any marks, or that any use inured to Opposer’s benefit, Applicant’s
essentially similar evidence, also unsupported and unexplained by testimony or
other evidence, cannot establish that Opposer failed to authorize any such alleged
third-party use, when Opposer denies Applicant’s allegations and presents some
evidence consistent with its denials. This factor is neutral.
Purchaser Sophistication
Applicant’s argument that purchasers of wheel rims will exercise “special care”
is unsupported by any reliable evidence, and there is also no evidence that auto race
attendees are sophisticated or exercise a heightened level of care. In any event, even
assuming that this factor weighs against a finding of likelihood of confusion with
respect to Opposer’s auto race services and Applicant’s wheel rims, it is outweighed
by the parties’ virtually identical marks, and the established relationship between
wheel rims and auto race-related services. See, In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); In re
Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); see also, HRL Associates, Inc. v.
Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v.
HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities
Opposition No. 91206470

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of goods and marks outweigh sophisticated purchasers, careful purchasing decision,
and expensive goods).16
Conclusion
Because the parties’ marks are essentially identical and Applicant’s wheel rims
are related to Opposer’s entertainment services in the nature of auto races,
confusion is likely between Applicant’s marks and the marks in Opposer’s ‘133 and
‘689 Registrations, both of which cover auto race services.

Decision: The opposition is sustained and registration of each of Applicant’s
marks is refused.

16 Furthermore, while Applicant assumes that Opposer’s customers will travel to Italy for
the MILLE MIGLIA race there, Opposer’s identification of services is not limited to races in
Italy, but covers all auto races, just as Applicant’s identification of goods is not limited to
expensive or specialized wheel rims, but instead covers all wheel rims. See e.g., Stone Lion
Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63
(Fed. Cir. 2014) (“Stone Lion effectively asks this court to disregard the broad scope of
services recited in its application, and to instead rely on the parties’ current investment
practices … the Board properly considered all potential investors for the recited services,
including ordinary consumers seeking to invest in services with no minimum investment
requirement.”) (emphasis in original).