The Mickyard, Inc.

Trademark Trial and Appeal Board

Jun 7, 2000

No. 75036592 (T.T.A.B. Jun. 7, 2000)

Paper No. 012
EWH/cv
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 7. 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Mickyard, Inc.
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Serial No. 75/036,592
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James H. Beusse of MaGuire Voorhis & Wells for The
Mickyard, Inc.
Gene V.J. Maciol, II, Trademark Examining Attorney, Law
Office 109 (Ronald Sussman, Managing Attorney)
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Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
The Mickyard, Inc. (applicant) filed on December 26,
1995 an intent-to use application seeking to register the
mark MICKYARD in typed drawing form for “promoting the
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sporting events of others in the nature of sponsoring
racing vehicles and racing events.”
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the marks THE BRICKYARD and
BRICKYARD 400. Registration Nos. 1,728,302 and 1,844,394.
Both registrations are own by the same entity (Indianapolis
Motor Speedway Corporation) and the services of both
registrations are the same, with the exception being that
following underlined words appear only in the recitation of
services for BRICKYARD 400: “promoting and providing
entertainment services in the form of an annual automobile
race and related events.”
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key
considerations are the similarity of the goods or services
and the similarity of the marks. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
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Considering first the services, registrant’s
entertainment services in the form of an annual automobile
race are obviously directed to the general population, and
in particular, to automobile racing fans. On the other
hand, applicant’s services, as described in the
application, are directed only to owners and managers of
racing vehicles and racing events. These owners and
managers are sophisticated individuals. In addition, there
is no dispute that sponsoring a racing vehicle or racing
event is an expensive proposition which is only entered
into after extensive negotiations. While many owners and
operators of racing vehicles and racing events are also
racing fans, this does not mean that these owners and
operators lose their sophistication as racing fans.
In short, while there is some relationship between
registrant’s services and applicant’s services in that they
all involve vehicle racing, the services are essentially
distinct and are directed to different purchasers. In
addition, the purchasers of applicant’s services are quite
sophisticated and are careful in entering into contracts
with sponsors of their racing vehicles or racing events.
As a primary reviewing Court has made clear, purchaser
“sophistication is important and often dispositive because
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sophisticated consumers may be expected to exercise greater
care.” Electronic Design & Sales v. Electronic Data
Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir.
1992) (The Court found no likelihood of confusion resulting
from the contemporaneous use of applicant’s mark E.D.S. and
opposer’s mark EDS despite the fact that “the two parties
conduct business not only in the same fields but also with
some of the same companies.” 21 USPQ2d at 1391).
Turning to a consideration of the marks, we will focus
simply upon the first cited registration for THE BRICKYARD
because this mark is, obviously, more similar to
applicant’s mark MICKYARD then is the mark of the second
cited registration, namely, BRICKYARD 400.
The marks MICKYARD and THE BRICKYARD are similar in
sound. As for visual appearance, while applicant’s mark
and the key word of registrant’s mark (BRICKYARD) have in
common the same final seven letters, we are of the view
that the differences in the beginning letter of applicant’s
mark and the first two letters of the second word of
registrant’s mark cause the marks to be only slightly
similar in terms of visual appearance. Finally,
in terms of connotation, the marks are quite dissimilar in
that the word “brick” has entirely different meaning than
the first name “Mick”.
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Taking all factors into consideration, we find that
the marks are dissimilar enough such that sophisticated
purchasers of applicant’s services would not confuse the
two marks. This is especially true because before
contracting for applicant’s expensive sponsorship services,
these sophisticated purchasers would engage in extensive
negotiations with applicant.
In making our finding of no likelihood of confusion,
we have taken into account the fact that registrant’s mark
THE BRICKYARD is famous. Indeed, applicant fully
acknowledges this fact. (Applicant’s brief pages 2 and 5).
Moreover, we also taken into account applicant’s
candid admission that “it is entirely possible that those
encountering the mark MICKYARD would be reminded of the
registered mark [THE] BRICKYARD.” (Applicant’s brief page
4). However, the mere fact that applicant’s mark calls to
mind registrant’s mark does not mean that there is
likelihood of confusion. The University of Notre Dame v.
J.C. Food Imports, 703 F.2d 1372, 217 USPQ 505, 507 (Fed.
Cir. 1983).
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Decision: The refusal to register is reversed.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board