Steamboat Springs Chamber-Resort Association, Inc.

Trademark Trial and Appeal Board

Mar 31, 2012

No. 77939915 (T.T.A.B. Mar. 31, 2012)

Mailed: March 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Steamboat Springs Chamber-Resort Association, Inc.
________

Serial No. 77939915
_______

Rick Akin of The Akin Law Firm, LLC for Steamboat Springs
Chamber-Resort Association, Inc.

Laura A. Hammel, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Holtzman, Bergsman and Lykos, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Steamboat Springs Chamber-
Resort Association, Inc. (applicant) to register the mark BIKE
TOWN USA in standard characters for services ultimately
identified as "organizing athletic competitions, namely, bicycle
races" in Class 41.1 The words BIKE and USA are disclaimed.

1 Serial No. 77939915, filed February 19, 2010, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77939915
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's services, so
resembles the registered mark BIKETOWN, in typed form, for the
following services as to be likely to cause confusion.2
Promoting the interests of consumers involved in
lifestyle enhancement and improved health through the
distribution of printed material; promoting public
awareness of the need for improved health and
lifestyle enhancement; promoting the goods and
services of others by arranging for sponsors to
affiliate their goods and services with promotional
contests, in Class 35.

When the refusal was made final, applicant appealed. Briefs
have been filed.3
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the

2 Registration No. 2981907; issued August 2, 2005; combined Sections 8
and 15 declaration accepted and acknowledged.
3 The evidence submitted by applicant for the first time with its reply
brief is manifestly untimely and will not be considered. See Trademark
Rule 2.142(d); and In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001)
(“By attempting to introduce evidence with its reply brief, applicant
has effectively shielded this material from review and response by the
Examining Attorney.”). Nor will we consider applicant's unsupported
arguments in its reply brief which are based on or relate to this
untimely evidence.
Serial No. 77939915
3
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a comparison of applicant’s mark BIKE TOWN
USA with registrant’s mark BIKETOWN and a consideration of the
marks in their entireties in terms of sound, appearance, meaning
and commercial impression. See du Pont, 177 USPQ at 567. See
also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The test under this du Pont factor is not whether the marks
can be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms of
their overall commercial impressions that confusion as to the
source of the goods offered under the respective marks is likely
to result. 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 addition, while marks must be compared in their
entireties, "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
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
Serial No. 77939915
4
The term BIKETOWN is registrant's entire mark, and the
essentially identical term BIKE TOWN is a prominent part of
applicant's mark. BIKE TOWN is the first part of the mark BIKE
TOWN USA that purchasers will see or hear when encountering
applicant's mark, and it is therefore more likely to have a
greater impact on purchasers and be remembered by them when they
encounter these marks at separate times. See Palm Bay, 73 USPQ2d
at 1692-93 (The term VEUVE in the mark VEUVE CLICQUOT is a
"'prominent feature' as the first word in the mark"); and Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) ("it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered").
Contrary to applicant's contention, the presence or absence
of a space between the two words is an inconsequential difference
that even if noticed or remembered by consumers would not serve
to distinguish these marks. See, e.g., Seaguard Corp. v. Seaward
International, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and
SEAGUARD are "essentially identical"); In re Best Western Family
Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984). Moreover,
applicant's mark is in standard characters, and we must consider
that the term BIKE TOWN could be displayed in the same compressed
format as registrant uses thereby rendering this portion of the
marks visually identical. See Citigroup v. Capital City Bank
Serial No. 77939915
5
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011)
(standard character or typed drawings “are not limited to any
particular presentation.”).
The marks have the same meanings and create the same overall
impressions. Both marks suggest the idea of a bicycle-friendly
community, or a place that would appeal to bicycle enthusiasts.
The addition of the geographically descriptive term USA to
applicant's mark does not significantly change the commercial
impression created by the term BIKETOWN or BIKE TOWN alone. If
anything, the term USA serves to increase, rather than decrease,
the similarity in overall impression as it simply describes, more
particularly, the geographic location of the place called “BIKE
TOWN.”
Applicant maintains, in view of the descriptive meaning of
BIKE, that it is the TOWN USA portion of its mark, rather than
the BIKE TOWN portion, that makes the commercial impression in
its mark. Noting that applicant is the Chamber of Commerce of
Steamboat Springs, Colorado, applicant argues that it is the
“town,” of Steamboat Springs that is being promoted as being a
“bicycle-friendly” community. However, we find this to be a
rather strained interpretation of the mark. It is also
contradicted by applicant’s own promotional materials, wherein
applicant promotes the concept of a “BIKE TOWN” and as a
“destination” for bicycling enthusiasts:
Serial No. 77939915
6
Steamboat Springs represents the ultimate destination
for cycling experiences. ...to someday be recognized
as “Bike Town USA” in the summer just as we are known
as “Ski Town USA” in the winter. ...our efforts to
make Steamboat a more Bicycle Friendly destination.
routtcountyriders.org

Although the word BIKE in applicant’s mark is descriptive
and disclaimed, it is well settled that “[n]o part of the mark
can be ignored in comparing the marks as a whole.” Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223
USPQ 1281, 1282 (Fed. Cir. 1984). See also Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983) (finding GIANT to be the dominant portion of a
mark consisting of the words GIANT HAMBURGERS with a large
background design, even though the wording GIANT HAMBURGERS was
disclaimed). The term BIKE still forms part of the mark and it
contributes significantly to the commercial impression of the
mark as a whole.
Because the term BIKETOWN, which is registrant's entire
mark, and BIKE TOWN, which is a prominent portion of applicant's
mark, BIKE TOWN USA, are essentially identical, the marks as a
whole are similar in sound, appearance, connotation and
commercial impression.
We turn then to the du Pont factor regarding the similarity
or dissimilarity of the respective services. It is the examining
attorney’s position that the respective services are highly
Serial No. 77939915
7
related, and that they are of a type that may emanate from the
same source. She argues that a “promotional contest” includes a
promotional competition in the field of athletics; that athletic
competitions frequently have sponsors who affiliate their goods
and services with the competition; that the services are
frequently provided together, in that promotional contests are
frequently provided in connection with athletic competitions to
enhance participation in the competitions; that the promotional
contests can include contests in the field of athletics and
bicycling; and that registrant’s services “are actually in the
field of bicycling.”
To support her position, the examining attorney relies on
the following evidence:
● A dictionary definition of “contest”:
1. competition to find best: an organized competition
for a prize or title, especially one in which the
entrants appear or demonstrate their skills
individually and the winner is chosen by a group of
judges.
encarta.msn.com

● A number of printouts from third-party websites showing that
companies partner with the organizers of athletic competitions,
for example:
An advertisement for the Baltimore Running Festival
identifying the many sponsors for the event on its
website.
thebaltimoremarathon.com

Serial No. 77939915
8
An advertisement for the 2010 FIFA World Cup South
Africa identifying the marketing affiliates, partners
and sponsors for the event.
ifa.com

An article wherein ESPN discusses sponsorship
flexibility at the X Games:
“At Winter X you will see a glimpse of the
transition to a broader base of sponsors, levels
and categories. Sponsors can choose to be
involved on-site, online, in program, depending
on which of those executions meets their
specific objectives.”
sportsbusinessjournal.com

The website of Performance Research provides
marketing analysis for corporate sponsorship of
sports and special events and reports on the
effectiveness of sponsorship activities on viewers of
the events, in this case, the 1999 IRB Rugby World
Cup:
Guinness was the only sponsor who managed to
take advantage of their official sponsorship
position with more than half of the fans
reporting them to be involved with the [event].
... “Until a sponsor develops a relationship
with the fans that effectively communicates the
benefits of the sponsorship to both the
individual and their sport, the opportunity to
develop brand-loyal consumers through
sponsorship will be missed.
performancereasearch.com
● Printouts from websites showing that various sports
competitions, including bicycle races, utilize promotional
contests to encourage participation in the competitions and that
they partner with the sponsors of the promotional event:
An advertisement for the South Atlantic League (SAL)
Hagerstown Suns baseball team announces a promotional
contest which will take place before the game:
Suns ATV giveaway concludes tonight via unusual
giveaway. The Hagerstown Suns will complete the
year-long Twigg Cycles Suzuki ATV Giveaway
Serial No. 77939915
9
contest at tonight’s game at Municipal Stadium
via a unique promotional contest. ... WAYZ
104.7fm Today’s Hottest Country, co-sponsor of
the ATV Giveaway, will be on-hand to monitor and
judge the contest....
oursportscentral.com

An advertisement for the ABA BMX bicycle race
(American Bicycle Association and Bicycle Motocross)
showing that the ABA which “organizes BMX racing” and
is “the largest promoter of action sports” holds
races and also conducts promotional contests:
The Great Suzuki Quad Give Away!
Suzuki and ABA offer chance to win an ATV & More
to all ABA BMX Tracks:

The American Bicycle Association (ABA) and
American Suzuki Motor Corporation, the official
Motorcycle and ATV of the 2007 ABA Bicycle
Motocross (BMX) Racing Series, will be
conducting an exciting promotional contest among
all ABA tracks based on the East, West and
Central regions.

All 274 ABA tracks across North America will be
challenged to create and execute a promotional
program, which enhances participation at their
local track. ... Representatives from American
Suzuki and the ABA will then pick the best 5
promotions from each region, then allow the
tracks in each respective region to vote on a
winner based on originality, creativity,
exposure, success and cost effectiveness. ...
ababmx.com
● Printouts from the websites of various companies that
conduct promotional contests, including contests involving sports
activities, that may be held during athletic competitions:
The web page for Sports & Events Promotions
advertises available “Sports Promotions &
Competitions,” for example:
Footy Target Kick
Team up with Sports & Events Promotions for the
best football payoff promotions around! With
Serial No. 77939915
10
innovative Footy Contests such as a Footy Target
Kick, you’ll go all the way, Target Kick is a
very entertaining game of skill promotion,
popular with the spectators. Randomly select
participants from the crowd or pick a contestant
attending the event out of a draw, to kick
through a target or through a hole in a banner
with your brand for maximum effect.

Hole in One Golf
Add some excitement to your next golf tournament
with a Hole in One Golf Contest offering
irresistible high value prizes underwritten by
our prize insurance cover. Sports & Events
Promotions insured contests are used by
retailers, FMCG companies, event organizers and
many others. ... Make your next golf event
challenging and rewarding by giving your golfers
a chance of a lifetime to win cash, cars or
holidays with a Hole in One Competition....

Basketball Contests
Consider the following popular basketball
contests: 3 Point Shoot Out; Half Court; Around
the World; Pick a Spot
sportsandeventspromotions.com

The website of OddsOn Promotions lists the various
basketball-themed skills contests on the “Sports”
section of the website, including “Full Court Shot”
“Two of Three from Half Court” and “Series Shoot Out
(25 secs)”
oddsonpromotions.com
● Four third-party registrations, two of which arguably cover
the types of services identified in both the application and
cited registration:
Registration No. 3839629 for the mark TEAM VELOCITY
lists “promoting the goods and services of others by
arranging for sponsors to affiliate their goods and
services with sports and entertainment events and
sports competitions”; as well as “organizing
exhibitions in the fields of sports and
entertainment; organization of competitions for
Serial No. 77939915
11
entertainment purposes in the fields of sports and
games.”

Registration No. 3420569 for the mark SOUTH SHORE
SPORTS PROMOTIONS A DEPARTMENT OF THE LAKE COUNTY
CONVENTION & VISITORS BUREAU (and design) lists
“promoting the goods and services of others by
arranging for sponsors to affiliate their goods and
services with an awards program, a sports competition
and sporting events”; as well as “organizing sporting
events, namely, any and all amateur and professional
sports competitions.”

● A printout from the website, bicycling.com, showing that
registrant is promoting bicycling under the mark:
BikeTown Africa 2010. Attend a BikeTown Africa
Event. You could help build and distribute bikes in
Africa this fall. ... About the Bikes: This year
BikeTown participants will receive the Jamis Commuter
1 and Citizen bikes.

We turn to a comparison of the respective services. In
doing so, we acknowledge that the marks are very similar and that
the greater the degree of similarity in the marks, the lesser the
degree of similarity that is required of the services on which
they are used in order to support a finding of likelihood of
confusion. See Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618 (TTAB 1989); and In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
However, the services must still be related in some viable
manner such that they would be encountered by the same persons
under circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that they
Serial No. 77939915
12
emanate from or are associated with the same source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Even if
the marks are identical, if these conditions do not exist, we
have held that confusion is not likely. See In re Unilever
Limited, 222 USPQ 981 (TTAB 1984) and In re Fesco, Inc., 219 USPQ
437 (TTAB 1983).
We also point out that the question of likelihood of
confusion must be determined based on the identification of
services in the application and cited registration, regardless of
what the record may reveal as to the actual nature of the
services, the actual channels of trade or the class of purchasers
to which the services are directed. 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 [or services] set forth in
the application [and registration]”).
Applicant’s services are identified as "organizing athletic
competitions, namely, bicycle races." Registrant’s services are
identified, in pertinent part, as “promoting the goods and
Serial No. 77939915
13
services of others by arranging for sponsors to affiliate their
goods and services with promotional contests.”4
To begin with, we point out that registrant’s services are
not promotional contests. As identified, registrant’s services
involve the affiliation of sponsors with promotional contests.
These services are specifically different from organizing a
sports competition, such as a bicycle race. In view of the
distinct differences between the services, the two third-party
registrations submitted by the examining attorney which arguably
cover both services are insufficient to establish that it is
customary or typical for the services of affiliating sponsors
with promotional contests to emanate from the same entities that
organize sports competitions, or that purchasers would naturally
assume that the services emanate from the same source if they
were offered under the same or similar marks.
Moreover, the evidence is insufficient to persuade us that
the respective services are commercially related. It is true, as
the evidence shows, that promotion, through sponsorship of a
sports competition is necessary to the organization,
presentation and success of the event, and to that extent there
is an inherent relationship between organizing the event and
promoting the event. The evidence also shows that one form of

4 Inasmuch as the examining attorney has not separately addressed
the other services in the identification, we will focus on the
services identified above in our analysis.
Serial No. 77939915
14
promotional support for a sports competition might be to hold a
sports-related promotional contest in conjunction with the sports
competition in order to increase participation in the event or
attendance at the event.5
Again, however, the problem is that the cited mark is not
registered for promotional contests, or for conducting them or
presenting them to the public. Nor is registrant affiliating
sponsors with athletic competitions. While the term “contest”
may broadly include competitions in general, and more
particularly sports competitions such as bicycle races, the
examining attorney has not shown that a “promotional contest” is
the equivalent of a sports competition, and the differences may
be qualitatively significant. Furthermore, the fact that
registrant may actually be promoting bicycling, as the examining
attorney contends, is not relevant. The mark is not registered
for that service and the identification does not encompass that

5 While we agree with applicant that “promotional contests” may involve
the giveaway of cash or products to promote a company’s goods or
services, we disagree that “promotional contests” are limited to games
of chance. One purpose of the contest may be to promote the sale of
goods and services of the sponsors, but the contest is also intended to
entertain the public, and the evidence clearly shows that the contests
can involve athletes or others who compete for prizes by accomplishing
something that requires athletic skill or ability. Furthermore, at
least one of the dictionaries referenced by applicant shows that a
“contest” in the marketing context may involve a “competition”: “A
form of sales promotion in which consumers are induced to buy earlier,
or in greater quantity, by the offer of prizes of cash or merchandise
to be won in a competition.” MONASH University Marketing Dictionary
(buseco.monash,edu.au).
Serial No. 77939915
15
service. Registrant’s activities, as identifed, are limited to
affiliating goods and services with promotional contests.
The respective services are specifically different, and
based on this record any relationship between them is tenuous at
best. Registrant is essentially providing a marketing service
and applicant is organizing bicycle races. These services are
related only in the remote sense that the organizer of a sports
competition who happens to want to include a promotional contest
in conjunction with the event, would contact registrant to
provide sponsors for the contest.
Regarding the purchasers for the respective services, the
examining attorney contends that “the services of both parties
are directed to consumers interested in bicycling.” In
particular, the examining attorney argues that applicant’s
services are directed to consumers interested in bicycling and
competing in bicycle races and registrant’s services “are
directed to promoting interest in bicycling by increasing the
number of bicyclists.” Brief unnumbered, p. 16.
Applicant’s bicycle races are directed to the general
public, including participants in the event, as well as those who
may attend or view the event. Registrant, on the other hand,
essentially provides a marketing service. Its services are
directed to businesses or companies who might wish to use a
promotional contest to sell their products or services, as well
Serial No. 77939915
16
as to the potential sponsors for those promotional contests.
There is nothing in the record to indicate that the participants
or spectators who would encounter applicant’s bicycle race would
ever be exposed to or be aware of registrant’s mark for its
services.
The one class of purchaser that might encounter both marks
comprises sponsors or potential sponsors that would be interested
in promoting their goods or services through both sports
competitions and promotional contests. It is possible that both
services might appeal to the same sponsors. This overlap might
occur, for example, if a company which had previously sponsored
applicant’s BIKE TOWN USA bicycle race, later decides to use a
promotional contest to promote its goods or services, the company
would then encounter registrant’s BIKETOWN marketing services to
accomplish that purpose. However, the likelihood that this
company will believe that the services of organizing bicycle
races come from the same source as a marketing service that
affiliates goods and services with promotional contests seems
theoretical and speculative. See Electronic Design & Sales Inc.
v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388,
1391 (Fed. Cir. 1992) (“We are not concerned with mere
theoretical possibilities of confusion, deception, or mistake or
with de minimis situations.”).
Serial No. 77939915
17
Furthermore, the potential customers that these services
might have in common would be sophisticated and knowledgeable,
and as such, would be expected to exercise greater care in making
purchasing decisions. Electronic Design & Sales, 21 USPQ2d at
1392 (Fed. Cir. 1992) (“sophistication is important and often
dispositive because sophisticated consumers may be expected to
exercise greater care.”; finding no likelihood of confusion
resulting from the contemporaneous use of E.D.S. and EDS despite
the fact that “the two parties conduct business not only in the
same fields but also with some of the same companies.” Id., at
1391).
In view of the foregoing, we find that although the marks in
this case are similar, given the distinct differences in the
services and the sophistication of the purchasers for those
services, confusion is not likely.
Decision: The refusal to register is reversed.