BK Racing, LLC

Trademark Trial and Appeal Board

Jun 30, 2017

No. 86801930 (T.T.A.B. Jun. 30, 2017)

Mailed: June 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BK Racing, LLC
_____

Serial No. 86801930
_____

Karl S. Sawyer, Jr. of Nelson Mullins Riley & Scarborough LLP
for BK Racing, LLC.
Brittany Lee-Richardson, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Taylor, Wolfson and Larkin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
BK Racing, LLC (“Applicant”) seeks registration on the Principal Register of the
stylized mark for:
“Clothing, namely, caps, baseball hats, knit caps, straw
hats, visors, bandanas, sweat shirts, sweat pants, socks,
pants, shorts, T-shirts, tank tops, golf shirts, sweaters and
jackets, all of the foregoing relating to motorsports racing
and marketed as goods associated with a stock car racing
team,” in International Class 25; and
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Serial No. 86801930

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“Toy cars, board games, card games, action figures and
accessories therefor, play sets for action figures, cases for
action figures, protective carrying cases specially adapted
for handheld video games, stuffed and plush toys, toy
building structures and toy vehicle tracks, electronic action
toys, electronic toy vehicles; remote control toys, namely,
cars, race cars, trucks; handheld game consoles, all of the
foregoing relating to motorsports racing and marketed as
goods associated with a stock car racing team,” in
International Class 28.1

The Trademark Examining Attorney refused registration of Applicant’s mark in
both classes under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), finding that
Applicant’s mark so resembles the typed2 mark 26 INTERNATIONAL of
Registration No. 24329983 (“International” disclaimed) for “apparel; namely,
sweaters, knit tops and jackets” in International Class 25, and the design mark
of Registration No. 3831683 for “educational card games” in International Class 28,
that confusion, mistake or deception of prospective purchasers is likely.4

1 Serial No. 86801930 was filed on October 28, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intent to use the
mark in commerce.
2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
See Trademark Rule 2.52(a); 37 C.F.R. 2.52(a).
3 Reg. No. 3831683 was registered on March 6, 2001, and has been renewed.
4 Reg. No. 3831683 was cancelled on April 7, 2017, for failure to file an acceptable declaration
of use under Trademark Act Section 8, 15 U.S.C. § 1058. Accordingly, it no longer bars
registration of Applicant’s mark and we give it no further consideration.

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After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register in part and reverse the
refusal in part.
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, though not exclusive,
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Relatedness of the Goods
We initially address the refusal as to the goods identified in Class 28. As indicated
in footnote 4, Registration No. 3831683 for “educational card games” has been
cancelled. Nonetheless, a finding of likelihood of confusion precluding registration of
Applicant’s mark in International Class 28 may be found if a showing has been made
that registration of Applicant’s mark with respect to the Class 28 goods is likely to
cause confusion with 26 INTERNATIONAL (Reg. No. 2432998) for “apparel;
namely, sweaters, knit tops and jackets.” On this record, we find that no such showing
has been made.
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As discussed infra, the marks are confusingly similar. However, the record does
not support a finding that the goods are related. None of the Class 28 goods recited
in Applicant’s application are complementary or identical to or encompassed by those
in Registrant’s identification, or vice versa. There is no evidence in the record that
clothing and toys/games are sold through similar trade channels or are purchased by
the same classes of consumers. Nor does the record reflect any third-party uses or
registrations that would tend to show that merchants commonly carry both types of
goods under a single trademark. In short, the record does not demonstrate that
Applicant’s toys and games are related to Registrant’s apparel. In International Class
28, Applicant’s mark is not likely to cause confusion with the registered mark 26
INTERNATIONAL.
We next consider whether the 26 INTERNATIONAL registration bars
registration of Applicant’s mark in International Class 25. It is well-established that
in making our determination under the second du Pont factor, we look to the goods
and/or services as identified in the involved application and cited registration. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which sales of the goods are directed.”) See also
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Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002).
Under this du Pont factor, the Trademark Examining Attorney need not prove,
and we need not find, similarity as to each and every item listed in Applicant’s
description of goods. It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the identification of goods in
a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116
USPQ2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d
1734, 1745 (TTAB 2014).
Applicant’s application covers a variety of clothing items, including sweaters and
jackets; Registrant’s identified goods are three clothing items: sweaters, knit tops and
jackets. Two identical items, sweaters and jackets, are listed in both Applicant’s and
Registrant’s identification of goods. Because the goods are identical in-part, the
second du Pont factor strongly favors a finding of likelihood of confusion.
Channels of Trade and Classes of Consumers
The channels of trade and classes of customers for Applicant’s sweaters and
jackets are limited by the identification of goods to apparel “related to motorsports
racing” and the identification specifies that Applicant’s sweaters and jackets will be
marketed “as goods associated with a stock car racing team.” There are no limitations
on the channels of trade or classes of customers for Registrant’s sweaters or jackets,
however, and we must therefore presume that both Applicant’s and Registrant’s
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sweaters and jackets would travel through the same trade channels and be offered to
the same classes of consumers. Applicant argues:
Goods of such character [as Applicant’s jackets and sweaters] are typically
marketed through specialty outlets that feature motorsports racing
merchandise. By contrast, the clothing goods under Registration No.
2,432,998 only comprise “sweaters, knit tops and jackets,” which are
ordinary items of clothing not related to motorsports and sold through
common clothing outlets. Thus, Applicant’s and registrant’s goods differ in
kind and are also marketed through differing channels of commerce.5

Applicant’s argument that Registrant’s goods are not related to motorsports
racing or sold through specialty motorsports racing outlets is of no assistance. An
applicant may not restrict the scope of the goods covered in the cited registration (or
in its application) by argument or extrinsic evidence. In re Midwest Gaming &
Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013), In re La Peregrina Ltd.,
86 USPQ2d 1645, 1647 (TTAB 2008), In re Bercut-Vandervoort & Co., 229 USPQ2d
763, 764 (TTAB 1986). Because Registrant has not restricted its apparel items to any
specific type of clothing, or any specific channels of trade or classes of customers, the
sweaters and jackets sold by Registrant are presumed to include those with a
motorsports racing theme and associated with a stock car racing team, despite any
alleged commercial differences in marketing. We must also presume that both
Applicant’s and Registrant’s sweaters and jackets will be sold at motorsports racing
specialty outlets and be offered to the same classes of purchasers, namely motorsports
racing enthusiasts. See Stone Lion Capital Partners, 110 USPQ2d at 1161; In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); American

5 5 TTABVUE 5.
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Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
The third du Pont factor – the similarity or dissimilarity of established, likely to
continue trade channels – also favors a finding of likelihood of confusion.
Similarity of the Marks
When comparing an applicant’s mark with a previously registered mark, we focus
on the similarities and or dissimilarities of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB
2007)). The test is not whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether they are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods or
services offered under the respective marks is likely to result. Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see
also San Fernando Elec. Mfg. Co. v. JFD Elec’s. Components Corp., 565 F.2d 683, 196
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USPQ 1, 3 (CCPA 1977); Spoons Rest’s. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpub., No. 92-1086 (Fed. Cir. June 5, 1992). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). In this case, the average purchaser of Applicant’s goods is an
ordinary consumer who is interested in motorsports racing and stock car racing
teams.
Applicant’s mark is a stylized rendition of the number 26. The registered mark is
26 INTERNATIONAL. On this record, there is nothing to suggest that the number
“26” carries any special meaning; the number is considered arbitrary. Applicant
argues, however, that the term is commercially weak, based on the results of the
USPTO TESS (Trademark Electronic Search System) search in the record that found
11 live registrations for marks containing the term “26” for various articles of
clothing.6 The existence of these registrations, however, does not support a finding
that “26” has a commonly understood meaning in the field. Even though third-party
registration evidence may show that a term carries a highly suggestive connotation
in the relevant industry, Jack Wolfskin Ausrustung Fur Draussen GmbH v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015);

6 Submitted with Applicant’s May 18, 2016 Response, TSDR 10-50. We do not consider the
three cancelled registrations or the abandoned application that were included in the search
results. A cancelled registration is not evidence of anything except that it issued. See Action
Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989);
TBMP §704.03(b)(1) (June 2017). Similarly, third-party applications are evidence only of the
fact that they have been filed. Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d
1463, 1468 n.6 (TTAB 2003).
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Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675
(Fed. Cir. 2015), in the present case, the registrations are insufficient evidence from
which to draw a conclusion that the number “26” has any special meaning. Six of the
third-party registrations suggest a finding that the number “26.2” has its own, unique
meaning: three of them are for the mark 26.2 (owned by the same company) and
three others include the term 26.2 as part of the marks: IGOTTARUN 26.2,7
RUN26TWO,8 and 26.2012 SAUCONY.9 The distance of “26.2 miles” is recognized
as the official length of a marathon race, which is formally standardized at 26.2
miles.10 As such, the decimal “26.2” imparts a different meaning from the integer 26.
The remaining five live registrations are equally unavailing. One, for the mark ICE
26, does not cover relevant goods, but rather “books and pamphlets regarding energy,
global warming and recycling” in International Class 16 and “plush toys; plastic

7 Reg. No. 4784264; registered August 4, 2015 for “clothing, namely, tops, bottoms, t-shirts,
shorts, and jackets; wristbands; headwear.”
8 Reg. No. 4334622; registered May 14, 2013 for “shorts; t-shirts; tank tops; visors;
wristbands.”
9 Reg. No. 4355649; registered June 18, 2013 for “short-sleeved or long-sleeved t-shirts.”
10 The record does not contain a definition of “26.2.” However, the American Heritage
Dictionary defines the term “marathon” as “a cross-country footrace of 26 miles, 385 yards
(42.195 kilometers).” At https://ahdictionary.com/word/search.html?q=marathon, accessed
June 21, 2007. Converting “385 yards” into miles yields 0.21875 miles, or roughly .2 miles.
See https://www.checkyourmath.com/convert/length/yards_miles.php. See also Levinson,
Encyclopedia of World Sport: from ancient times to the present (1996) (“The distance of the
Olympic Marathon varied … until 1924, when the present 42.195 kilometers (26.2 miles) was
adopted.”). The Board may take judicial notice of dictionary definitions, including definitions
or entries from references that are the electronic equivalent of a print reference work. See
Univ. of Notre Dame du Lac v. J. C. Gourmet Food Imp. Co., Inc., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91
USPQ2d 1332, 1334 n.1 (TTAB 2009).
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character toys” in International Class 28.11 The final four marks are registered for
various clothing items (none related to motorsports), but are distinguishable by the
additional wording or design elements that each mark contains.12 Given that the
registrations are few in number, do not evidence that the marks are in use or the
extent to which they may be in use, see, e.g., In re Morinaga Nyugyo K.K., 120
USPQ2d 1738, 1745 (TTAB 2016), and are dissimilar overall in commercial
impression from the cited mark and from Applicant’s mark, the third-party
registrations do not evidence weakness of “26” in the clothing field. Cf. Juice
Generation, which addressed over twenty uses or registrations of the same phrase for
restaurant services.
While likelihood of confusion cannot be predicated on dissection of a mark, that
is, on only part of a mark, “in articulating reasons for reaching a conclusion on the
issue of confusion, there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We have given
greater weight to the number “26” in the registered mark because it is arbitrary in
relation to the goods and because it is the first term in the mark that will be
encountered by consumers. See Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to

11 Reg. No. 4368780; registered June 7, 2005, renewed.
12 The marks are: MIXXED 26, Reg. No. 319641; EXIT 26, Reg. No. 2961033; STABLE 26,
Reg. No. 4067708; and MT. HOOD 26 and design, Reg. No. 4816607.
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be impressed upon the mind of a purchaser and remembered”); Palm Bay, 73 USPQ2d
at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). The term “International” is less likely to make
an impression as the second word in the mark and because of its suggestive qualities;
in the context of clothing it evokes a sense of global, or international, fashion.13
Moreover, the registered mark incorporates Applicant’s mark in its entirety.
Likelihood of confusion has frequently been found where one mark incorporates the
entirety of another’s mark. See, e.g., The Wella Corp, v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and design
for men’s cologne, hair spray, conditioner and shampoo and CONCEPT for cold
permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis,
Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105,
106 (CCPA 1975) (BENGAL for gin and BENGAL LANCER and design for
nonalcoholic club soda, quinine water and ginger ale); In re Densi, 225 USPQ 624,
626 (TTAB 1985) (PERRY'S PIZZA for pizza restaurants and PERRY’S for restaurant
and bar services).
Applicant argues that the stylization of its mark “influences a consumer’s
visual perception of the mark, especially in the minds of stock car racing fans to whom
Applicant’s mark is focused,”14 presumably based on the unsupported allegation that
the slanted lettering style evokes a racing car driver’s number. There is no evidence

13 As noted supra, the term “International” has been disclaimed apart from the mark as a
whole.
14 Applicant’s Appeal Brief, 5 TTABVUE 11.
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in the record to support Applicant’s claim, and, in any event, the stylization is
minimal and unlikely to make a significant impression on consumers. As the
Examining Attorney articulates, it “fail[s] to create [a] separate and distinct
commercial impression[], as consumers are still likely to request the goods by name
as opposed to the stylization….”15 We find that the slight stylization of Applicant’s
mark does not obviate a likelihood of confusion. Moreover, because Registrant’s mark
is in typed (standard character) format, it could be represented in a similar font style
to that of Applicant’s mark. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d
1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010).
In making our findings, we are mindful that because Applicant’s and Registrant’s
goods are identical in part, the degree of similarity between the marks that is
required to support a finding of likelihood of confusion declines. In re Viterra Inc., 101
USPQ2d at 1908 (citing Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). The du Pont factor regarding the
similarity of the marks weighs in favor of a finding of likelihood of confusion.
Summary
International Class 25
In view of the fact that the marks and 26 INTERNATIONAL are
similar and the goods identified by each mark include identical clothing items, move

15 Examining Attorney’s Brief, 7 TTABVUE 8.
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in identical trade channels and are marketed to the same consumers, we find that
Applicant’s mark so resembles the registered mark as to be likely to cause confusion,
mistake or deception as to the source of Applicant’s goods in International Class 25.
International Class 28
In view of the absence of evidence showing any relation between clothing and
toys/games, we find that Applicant’s mark is not likely to cause confusion vis-à-vis
Registrant’s mark 26 INTERNATIONAL with respect to International Class 28,
despite any similarities between the marks.
Decision: The refusal to register application Serial No. 86801930 under
Section 2(d) of the Trademark Act is affirmed as to the goods identified in
International Class 25 and reversed as to the goods identified in International Class
28. The application will proceed to registration solely as to the goods identified in
Class 28.