Moto Venture, Inc.v.Ride Oklahoma, L.L.C.

Trademark Trial and Appeal Board

Sep 25, 2009

No. 91181926 (T.T.A.B. Sep. 25, 2009)

Mailed:
25 September 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Moto Venture, Inc.
v.
Ride Oklahoma, L.L.C.
_____

Opposition No. 91181926
to application Serial No. 77216126

_____

Daniel R. Scardino of Jackson Walker L.L.P. for Moto
Venture, Inc.

Ride Oklahoma, L.L.C., pro se.
______

Before Grendel, Holtzman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 26, 2007, applicant Ride Oklahoma, L.L.C. filed
an application to register the mark Ride Oklahoma, in
standard character form, on the Principal Register for
“general feature magazine” in Class 16. The application
contains an allegation of a date of first use anywhere and
in commerce of October 1, 2006, and a disclaimer of the term
Oklahoma.
On January 16, 2008, Moto Venture, Inc. (opposer)
opposed the registration of applicant’s mark on the ground
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91181926
2
that applicant’s mark is likely to cause confusion with
opposer’s mark RIDE TEXAS. Opposer claimed common law
rights in the mark “RIDE TEXAS for a magazine featuring
motorcycles, motorcycling, touring and related topics.”
Notice of Opposition at 1. Opposer also claimed ownership
of Serial No. 77273057 for the mark RIDE TEXAS, in standard
character form. Opposer also alleged that it was using the
mark RIDE TEXAS at least as early as 1998. As a result,
opposer submits that there is a likelihood of confusion
between its mark and the opposed mark. Subsequently, on May
20, 2008, the mark RIDE TEXAS, in standard character form,
issued as Registration No. 3430388 under the provision of
Section 2(f) of the Trademark Act for “magazines featuring
motorcycles, motorcycling, touring and related topics” in
Class 16. The dates of first use are listed as 1998 and the
application was filed on September 6, 2007.
Applicant, in effect, has denied the allegations of the
notice of opposition.
The Record
The record consists of the pleadings, the file of the
involved application; and opposer’s Notice of Reliance filed
December 19, 2008. Applicant did not submit any evidence
during the testimony period. We will discuss the evidence
opposer submitted by notice of reliance in the next section.
Opposition No. 91181926
3
Evidence
Opposer has submitted the following documents with its
notice of reliance.
A. Applicant’s Answer to the Opposition (Ex. 1)

B. Applicant’s Response to Opposer’s Interrogatories,
Requests for Production of Documents, and Requests for
Admissions (Exhibits 2 and 3)

C. Registration and Date of Use (Ex. 4)

D. Printed publications (Ex. 5)

E. Opposer’s subscriber database (Ex. 6)

F. Opposer’s magazine distributor list (Ex. 7)

H. Declarations of Miguel and Valerie Asensio (Exhibits
8 – 10)

We begin by noting that Exhibit 1, applicant’s answer,
is already of record as part of the pleadings in this case.
Exhibit 2, which contains applicant’s “Response to Request
for Documents”1 and “Response to Interrogatories,” is
properly submitted by notice of reliance. 37 CFR
2.120(j)(3)(i) and (5). Exhibit 3, while identified in the
Notice of Reliance as “Applicant’s Response to Opposer’s
Request for Production June 17, 2008” is actually “Opposer
MotoVenture, Inc.’s Discovery Answers to Applicant Ride
Oklahoma L.L.C.’s First Set of Interrogatories.” Inasmuch
as applicant has not submitted any evidence and answers to
interrogatories can be “made part of the record only by the

1 No documents were attached to this response.
Opposition No. 91181926
4
receiving or inquiring party,” we will not consider
opposer’s submission of its own responses to interrogatories
(Ex. 3). 37 CFR § 2.120(j)(5).
Exhibit 4 is identified as opposer’s “Registration
Certificate and Application File” (Ex. 4). This exhibit
consists of a cover letter from opposer’s counsel to opposer
forwarding a copy of the recently issued registration
certificate, a copy of the registration certificate issued
by the USPTO, a notice of publication of opposer’s mark with
“Trademark Snap Shot Publication & Issue Review Stylesheet,”
and a printout of opposer’s trademark application. There is
no basis to submit the letter of opposer’s counsel by notice
of reliance so we will not consider it. More importantly,
opposer’s registration is a plain copy of the registration
certificate issued on May 20, 2008, and submitted by notice
of reliance on December 19, 2008.
A registration of the opposer or petitioner pleaded in
an opposition or petition to cancel will be received in
evidence and made part of the record if the opposition
or petition is accompanied by an original or photocopy
of the registration prepared and issued by the United
States Patent and Trademark Office showing both the
current status of and current title to the
registration, or by a current printout of information
from the electronic database records of the USPTO
showing the current status and title of the
registration.

37 CFR § 2.122(d) (2007).

Opposition No. 91181926
5
This copy is not a status and title copy of the
registration and we cannot consider it unless an exception
applies.
Even prior to the change to Trademark Rule 2.122(d) in
2007, there were several ways for a party to introduce a
registration it owns into evidence during a board proceeding
besides attaching status and title copies to the notice of
opposition. A party may also introduce its registration
into the record in the following ways: by identification
and introduction during the testimony period by a qualified
witness who testifies concerning the status and title of the
registration; by admission in the applicant’s answer; or by
the applicant treating the registration as being of record
in its brief. TBMP § 702.03(a) (2d ed. rev. 2004).
Inasmuch as opposer did not call any witnesses and
applicant’s answer did not contain a relevant admission on
this point, the next question is whether applicant treated
the registration as being of record.
In its brief, applicant does indeed treat the
registration as being of record:

Opposition No. 91181926
6
Key dates

Ride Oklahoma L.L.C. files
trademark application

Moto Venture files for Ride
Texas

Ride Oklahoma trademark
application published

Moto Venture files
opposition to Ride Oklahoma

Moto Venture awarded Ride
Texas trademark
June 26, 2007

September 6, 2007

December 4, 2007

January 26, 2008

May 20, 2008

Applicant’s Brief at 4.
Inasmuch as applicant discusses the registration, we
deem the pleadings to be amended and conclude that applicant
has treated this registration as being of record.
Exhibit 5 consists of covers of opposer’s magazines,
which are printed publications, and they are proper subject
of submission by notice of reliance. 37 CFR § 2.122(e).
However, “magazine articles … are hearsay in nature and thus
are probative not for the truth of the matters contained
therein but rather only for what they show on their face.”
Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768 n.5
(TTAB 1980).
Opposer’s Exhibits 6 and 7 are a list of addresses of
its subscribers and its magazine distributors. These are
not “[p]rinted publications, such as books and periodicals,
available to the general public in libraries or of general
circulation among members of the public or that segment of
Opposition No. 91181926
7
the public which is relevant under an issue in a
proceeding.” 37 CFR § 2.122(e). See, e.g., Midwest Plastic
Fabricators Inc. v. Underwriters Laboratories Inc., 12
USPQ2d 1270 n.5 (TTAB 1989) (“[P]rinted material in the
nature of annual reports is not considered printed
publications available to the general public such that it
may be relied on pursuant to Rule 2.122(e)”), aff'd, 906
F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990); Andrea Radio
Corp. v. Premium Import Co., 191 USPQ 232, 234 (TTAB 1976):
Opposer also attempted to introduce into the record by
its notice of reliance the following: copies of its
annual reports for the years 1967 and 1971; copies of
four of its brochures; a copy of its price list; a
reprint of an advertisement alleged to have been
published by a retailer; reprints of advertisements
alleged to have been published; and copies of
advertising mats alleged to have been furnished by
opposer to its retailers for use in newspaper and
magazine advertising. These items are not shown to be
printed publications available to the general public in
libraries or of general circulation and are not in
evidence.

Therefore, we will not consider Exhibits 6 and 7.
Finally, opposer has submitted three declarations from
Miguel and Valerie Asensio. “By written agreement of the
parties, the testimony of any witness or witnesses of any
party, may be submitted in the form of an affidavit by such
witness or witnesses.” 37 CFR § 2.123(b). Inasmuch as
there is no written stipulation of record, we will not
consider these declarations.
Opposition No. 91181926
8
Ultimately, we will only consider opposer’s Exhibits 1,
2, 4 and 5 to be of record. We point out that opposer “may
not reasonably presume evidence is of record when that
evidence was not offered in accordance with the Trademark
Rules.” See Original Appalachian Artworks Inc. v. Streeter,
3 USPQ2d 1717, 1717 n.3 (TTAB 1987). Similar to this case,
the board held that “applicant, an individual acting pro se,
filed neither evidence nor a brief on the case; we cannot
say, therefore, that as the result of any action or
statement, he treated as being of record the material
improperly offered by notice of reliance.” Id. Nothing in
applicant’s brief indicates that applicant treated the
excluded evidence to be of record.
Preliminary Issues
“Opposer requests dismissal sanction for applicant’s
failure to provide discovery.” Brief at 8. Opposer
contends that applicant’s response to its interrogatories
and requests for production of documents consisted of
“prevarications, derisive jokes, and general evasion.
Applicant has employed childish tactics in an apparent
effort to mock this forum.” Brief at 9. Opposer further
“asks that the Board strike any evidence not submitted in
accordance with the Board rules. Applicant [sic] also
requests that the Board submit a default judgment for
Opposer in the instant proceeding as a sanction for
Opposition No. 91181926
9
Applicant’s discovery abuse.” Brief at 11. Inasmuch as
applicant has not submitted any evidence, opposer’s request
to strike applicant’s evidence is moot. Regarding opposer’s
request for a sanction of a default judgment, we note that
“[i]f a party that served a request for discovery receives a
response thereto which it believes to be inadequate, but
fails to file a motion to test the sufficiency of the
response, it may not thereafter be heard to complain about
the sufficiency thereof.” TBMP § 523.04 (2d. ed. rev.
2004). Inasmuch as opposer did not challenge applicant’s
responses to its interrogatories and requests for production
of documents, its request for sanctions is denied. See Time
Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1656
(TTAB 2002) (“We note that, despite her apparent
dissatisfaction with opposer’s interrogatory responses,
applicant never filed a motion to compel further responses
from opposer; applicant will not now be heard to complain
that opposer’s discovery responses were inadequate”).
Next we must consider whether opposer has standing to
bring this opposition proceeding. An opposer must have “a
‘real interest’ in the outcome of a proceeding in order to
have standing.” Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999). “To establish a
reasonable basis for a belief that one is damaged by the
registration sought to be cancelled, a petition may assert a
Opposition No. 91181926
10
likelihood of confusion which is not wholly without merit.”
Lipton Industries v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).2 Opposer’s submission of a
registration that sets out a non-frivolous claim of
likelihood of confusion shows that it has standing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000) (“These registrations and the
products sold under the mark they register suffice to
establish Laser Golf’s direct commercial interest and its
standing to petition for cancellation of Cunningham’s
LASERSWING mark”). Also, as a result of opposer’s
registration (No. 3430388) being of record, opposer has
priority. See King Candy Co. v. Eunice King’s Kitchen, 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
The next question is whether there is a likelihood of
confusion in a situation where the marks are RIDE TEXAS for
magazines featuring motorcycles, motorcycling, touring and
related topics and RIDE OKLAHOMA for a general feature
magazine. In these cases, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

2 Because of the linguistic and functional similarities of the
opposition and cancellation provisions of the Lanham Act, “we
construe the requirements of those two sections of the Lanham Act
consistently.” Ritchie, 50 USPQ2d at 1025 n.2.
Opposition No. 91181926
11
(CCPA 1973). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000).
One important factor in likelihood of confusion cases
is the relationship between the goods of the parties. We
must consider the goods as they are identified in the
identification of goods in the application and registration.
Octocom Systems, Inc. v. Houston Computers Services 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 the
sales of goods are directed”) and Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). We also do not read limitations
into a registration’s or application’s identification of
goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983).
Opposition No. 91181926
12
Opposer’s magazine features motorcycles, motorcycling,
touring and related topics. Applicant’s goods are a general
feature magazine but applicant admits that its magazines
feature motorcycles and motorcycling. Applicant’s Brief at
3 (“Our magazine was developed to showcase Oklahoma
motorcycle riding destinations and people”). Therefore, the
goods are at least overlapping. “When marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992). Furthermore, when the goods are
identical, the channels of trade and purchasers are also
presumed to be the same. Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) (“Given the in-part identical and in-
part related nature of the parties’ goods, and the lack of
any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
Opposition No. 91181926
13
Next, we look at the “DuPont factor [that] requires
examination of ‘the similarity or dissimilarity of the marks
in their entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). Both applicant’s and opposer’s marks are in
standard character form so there is no difference based on
the display of the mark. They can be presumed to be
displayed in the same style. ProQuest Information and
Learning Co. v. Island, 83 USPQ2d 1351, 1359 (TTAB 2007)
(Applicant’s mark “is shown in standard character format.
Hence, we must consider that applicant’s mark is not limited
to any special form or style as displayed on its goods”);
and In re Cox Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB
2007)(“We must also consider that applicant’s mark,
presented in typed or standard character form, is not
limited to any special form or style as displayed on its
goods”).
Thus, the marks are similar because they both begin
with the word “Ride” and they differ because the second word
in the marks is a different state, TEXAS and OKLAHOMA. We
note that opposer has submitted applicant’s response to its
interrogatories that includes a list of marks that contain
the word “Ride” and their serial and registration numbers.
Opposition No. 91181926
14
Since we have no indication of what the goods or services in
these registrations3 are, we cannot give this evidence any
weight.4 In re Melville Corp., 18 USPQ2d 1386, 1388-89
(TTAB 1991) (“Registrations for goods unrelated to the
clothing field are irrelevant to our discussion”); SBS
Products Inc. v. Sterling Plastic & Rubber Products Inc., 8
USPQ2d 1147, 1149 n.6 (TTAB 1988) (“[E]ven if evidence of
such third-party use were submitted, it would be of no aid
to respondent herein where the third-party usage was for
goods unrelated to either petitioner’s skin care products or
respondent’s stuffing box sealant”); and Anderson, Clayton &
Co. v. Christie Food Products Inc., 4 USPQ2d 1555, 1557 n.7
(TTAB 1987) (“The other third-party registrations relating
to marks in unrelated fields are of no probative value”).
Accord Palm Bay Imports, 73 USPQ2d at 1693 (“Evidence of
third-party use of similar marks on similar goods is
relevant to show that a mark is relatively weak and entitled
to only a narrow scope of protection”) (emphasis added).
When we compare applicant’s and registrant’s marks, we
find that they are more similar than different. They both

3 References to trademark applications are not relevant.
Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ
1090, 1092, n.5 (TTAB 1979) (“The filing of a notice of reliance
upon third-party applications is a futile act because copies of
those applications or the publication thereof in the Official
Gazette is evidence only of the filing of the applications and
nothing else”).
4 Applicant’s reference to another RIDE mark in its brief is not
evidence and we will not consider it. Brief at 4.
Opposition No. 91181926
15
begin with the word “Ride” and the only difference is that
the second word is the name of a state, Texas and Oklahoma.
The first word is often important in determining whether the
marks are similar. Palm Bay, 73 USPQ2d at 1692 (“To be
sure, CLICQUOT is an important term in the mark, but VEUVE
nevertheless remains a ‘prominent feature’ as the first word
in the mark and the first word to appear on the label. Not
only is VEUVE prominent in the commercial impression
created by VCP’s marks, it also constitutes ‘the dominant
feature’ in the commercial impression created by Palm Bay’s
mark”). Texas and Oklahoma are states that share a common
border. Notice of Reliance, Ex. 2, Request No. 2.
Applicant’s magazine “occasionally ha[s] a feature about a
ride to Texas.” Answer, ¶ 3. The terms RIDE TEXAS and RIDE
OKLAHOMA are similar in sound, appearance, meaning, and
commercial impression because they begin with the same word
Ride. While they end with a difference state name, this is
not as significant, particularly regarding their meaning and
commercial impression. When used in association with the
goods, both have a similar meaning and commercial impression
of motorcycling in the South West. Specialty Brands, Inc.
v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281, 1283 (Fed. Cir. 1984) (“It is the similarity of
commercial impression between SPICE VALLEY and SPICE ISLANDS
that weighs heavily against the applicant as applied to
Opposition No. 91181926
16
identical goods”). See also Lone Star Mfg. Co. v. Bill
Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974)
(FROSTY AIR and FROSTEMP similar). Potential readers are
likely to assume that there is some association between the
source of RIDE OKLAHOMA and RIDE TEXAS magazines, when the
subject matter of the magazines is motorcycling.
We add that the absence of actual confusion does not
mean there is no likelihood of confusion. Giant Food, Inc.
v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991).
The test is likelihood of confusion. Also, the fact that
applicant was “very careful in [their] first issue and all
subsequent issues to clearly state that Ride Oklahoma
Magazine was owned, published and distributed in Oklahoma”5
and that it has “published editorials about the difference
between Ride Oklahoma Magazine and Ride Texas Traveler6 so
that [their] readers and advertisers don’t confuse the two”
(Brief at 3-4) is not significant. None of these features
appears in the application, which is what we must consider.
An applicant cannot point to other matter that it uses on
its specimens or promotional material that are not part of

5 Applicant does acknowledge that it has a distributor of its
magazines in Sherman, Texas, and that it mails its magazines to
subscribers outside the state of Oklahoma. Notice of Reliance,
Ex. 2, Request No. 30
6 The registered mark is RIDE TEXAS.
Opposition No. 91181926
17
its mark that it presented for registration to avoid
confusion. Dan Robbins & Associates, Inc. v. Questor Corp.,
599 F.2d 1009, 202 USPQ 100, 104 n.6 (CCPA 1979) (“The board
improperly emphasized the contents of the book submitted as
a specimen… The mark, not the specimen, is submitted for
registration”).
In this case, when we consider the fact that both
applicant’s and opposer’s goods include magazines about
motorcycling that are assumed to be sold to the same
purchasers in the same channels of trade, when the marks
RIDE TEXAS and RIDE OKLAHOMA are used on these goods, we
hold that confusion is likely.
Decision: The opposition to the registration of
application Ser. No. 77216126 is sustained.