Exel Oyjv.Edmont P. D'Ascoli, Trustee of the Edmont P. D'Ascoli Revocable Living Trust Dated May 24, 1996 Seal Trademarks PTY Ltd. V. Exel Oyj

Trademark Trial and Appeal Board

Sep 19, 2008

No. 91160397 (T.T.A.B. Sep. 19, 2008)

Mailed:
September 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Opposition No. 91160397

Exel Oyj

v.

Edmont P. D’Ascoli, Trustee of the Edmont P. D’Ascoli
Revocable Living Trust Dated May 24, 1996

__________________________

Counterclaim in Opposition No. 911603971

Seal Trademarks PTY Ltd.

v.

Exel Oyj

_____

1 On June 9, 2008, after the parties filed their trial briefs,
the Board substituted Seal Trademarks PTY Ltd. as a
counterclaimant because the original counterclaimant, Edmont P.
D’Ascoli, Trustee of the Edmont P. D’Ascoli Revocable Living
Trust Dated May 24, 1996, transferred the various registrations
asserted in the counterclaim to Seal Trademarks PTY Ltd. The
application which is the subject of the opposition, however, was
not transferred to Seal Trademark PTY Ltd.; Edmont P. D’Ascoli,
Trustee of the Edmont P. D’Ascoli Revocable Living Trust Dated
May 24, 1996 remains as the owner of the opposed application.

THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opp. No. 91160397
2

Norbert F. Kugele of Warner, Norcross & Judd LLP for Exel
Oyj.

Martin E. Hsia of Cades Schutte LLP for Edmont P. D’Ascoli,
Trustee of the Edmont P. D’Ascoli Revocable Living Trust
Dated May 24, 1996, and for Seal Trademarks PTY Ltd.
______

Before Rogers, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

At the outset, we note that the designation “Oy”
identifies a Finnish private limited company and “Oyj”
identifies a Finnish public limited company. References to
both designations appear in the decision below.
On June 13, 2001, Edmont P. D'Ascoli, Trustee of the
Edmont P. D'Ascoli Revocable Living Trust (“applicant”),
filed an application (Serial No. 76272356) to register the
mark XCEL in standard characters on the Principal Register
for “duffel bags; beach bags; backpacks” in International
Class 18, and for “diving bags” in International Class 28.
Applicant has asserted in his application a bona fide
intention to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b).
Registration of applicant's mark has been opposed by
Exel Oyj (“opposer”). Opposer pleaded in its amended notice
of opposition that it has “manufactured, advertised, sold
and distributed goods under the mark EXEL associated with a
number of outdoor and indoor sports, including Nordic
Opp. No. 91160397
3
walking, Nordic blading, stretching, floorball, Alpine
skiing, Telemark skiing, cross-country skiing,
mountaineering, snowshoeing, and hockey”; and that it began
using the mark EXEL in interstate commerce in the United
States in 1974. Opposer also pleaded ownership of
Registration No. 2394384 (“the ‘384 registration”) for the
mark EXEL for “ski poles, ski pole straps, ski pole handles,
ski pole grips, and ski pole tips,”2 and submitted with its
notice of opposition a certified copy of its registration
establishing its status and title in opposer's name.
Further, opposer has alleged that the goods recited in the
application are “within the natural zone of expansion of
Opposer's current and established product lines”; and that
applicant's mark is confusingly similar to “Opposer's mark
EXEL … and its registration.”3
Applicant has filed an answer in which he admits that
“XCEL, and … ‘EXEL’, would be pronounced identically or
similarly by many potential purchasers of Applicant's and
Opposer's products, and that Applicant’s mark, ‘XCEL’,
closely resembles Opposer’s mark ‘EXEL,’” answer at ¶ 11,
but denies other salient allegations of the notice of

2 Registration No. 2394384, issued on October 10, 2000, Section 8
accepted, to Exel Oy, claims first use anywhere of the mark in
1968 and first use of the mark in commerce in 1974.
3 Opposer has also pleaded that applicant's use of its mark
“would dilute the distinctiveness of Opposer's mark EXEL.”
Because opposer has not discussed its claim of dilution in its
Opp. No. 91160397
4
opposition. Additionally, applicant pleaded several
affirmative defenses, including laches.
Applicant has also counterclaimed to cancel the ‘384
registration for EXEL. In his counterclaim, applicant
asserts ownership of several registrations for the mark XCEL
for various goods such as wetsuits, bathing suits, bicycling
apparel and clothing, and for retail store services, and
made such registrations of record by submitting status and
title copies thereof with the counterclaim. Applicant
alleges fraud, non-ownership of the ‘384 registration, mere
descriptiveness, lack of acquired distinctiveness, priority,
likelihood of confusion and dilution.
Opposer has answered the counterclaim by denying the
salient allegations contained therein. Opposer also raised
several affirmative defenses.
Both parties have filed briefs in both the opposition
and the counterclaim.
The Record
In addition to the pleadings and the certified copies
of applicant's and opposer's pleaded registrations submitted
with the amended notice of opposition and the counterclaim,
the record contains opposer's notice of reliance,
applicant's notice of reliance and the testimony, with
exhibits, of (i) Mr. Erkki Pollanen, former export manager

briefs, we deem opposer to have waived any possible dilution
Opp. No. 91160397
5
for opposer's predecessor; (ii) Mr. Aki Karihtala, senior
vice-president and director of opposer's sports division;
and (iii) Mr. Edmont D’Ascoli.
Preliminary Matters
Opposer has objected to applicant's notice of reliance
upon opposer's initial responses to (i) applicant's first
requests for admissions, and (ii) applicant's first set of
interrogatories. Opposer served initial interrogatory
responses, and later amended its interrogatory responses.
Also, opposer filed a motion to amend or withdraw its
responses to applicant's requests for admissions nos. 1 – 6.
In an order dated March 11, 2005, the Board granted
opposer's motion and accepted opposer's substitute responses
to requests for admissions nos. 1 – 6. Opposer maintains
that its initial responses are irrelevant and would only
confuse the issues and waste time; and that the Board’s
order dated March 11, 2005 stated that “opposer has been
relieved of its responses.” Main brief at p. 18.
With respect to the responses to the requests for
admission, opposer's motion to amend or withdraw the
admissions was only directed to requests for admissions nos.
1 – 6, and there were many more requests for admissions.
The supplemented responses to the requests for admissions
are only for requests nos. 1 – 6. Therefore, to the extent

claim, and do not further consider the issue.
Opp. No. 91160397
6
that opposer objects to our consideration of responses to
requests other than requests nos. 1 – 6, opposer's motion is
denied. To the extent that opposer objects to the original
responses to requests nos. 1 – 6, opposer's motion is also
denied because the responses support applicant's
counterclaim as tried by the parties. See discussion,
infra. The responses are not irrelevant and do not confuse
the issues and waste time. The same holds true for
opposer's initial interrogatory responses, and opposer's
motion is denied with respect to such responses too.
Opposer has also objected to two additional items
submitted with applicant's notice of reliance on the basis
of relevancy. Specifically, opposer has objected to
applicant's submission of (i) a Combined Declaration Of Use
and Incontestability Under Sections 8 and 15 filed by
opposer in connection with its asserted registration on
January 11, 2006, stating that there was no proceeding
involving its right to register the mark pending when in
fact a cancellation proceeding and the present counterclaim
did exist, and (ii) a letter from applicant's counsel
objecting to the Combined Declaration. Opposer's objection
to (i) on the ground of relevance is overruled. The
evidence bears on which entity has made filings with the
Office in connection with the registration sought to be
Opp. No. 91160397
7
cancelled. Opposer’s objection to (ii) is sustained because
such evidence may not be introduced by a notice of reliance.
We now turn to the merits of this case, considering
first applicant's counterclaims to cancel the ‘384
registration pleaded by opposer in the opposition.
Counterclaims
We begin by determining exactly what counterclaims are
properly before us; several of the pleaded counterclaims
differ from the claims discussed in the briefs.
Certain counterclaims stem from a series of assignments
of the application underlying the ‘384 registration and
opposer’s statements made in its initial responses to
requests for admissions nos. 1 – 6 and its responses to
applicant’s interrogatories. Suffice it to say that there
was a series of assignments of corporate assets and
transfers of the underlying application, which was an intent
to use application. Opposer took the position in its
initial responses to applicant's first request for
admissions that Exel Oy, the original applicant, and Exel
Oyj, the opposer and entity which has asserted the
registration in the opposition, are separate companies; and
admitted that there was no assignment of the original intent
to use application. However, through its revised responses
to applicant’s requests for admissions, which the Board
accepted in its March 11, 2005 order, opposer provided the
Opp. No. 91160397
8
following explanation of the corporate transfers and name
changes:

Opp. No. 91160397
9

Applicant's notice of reliance ex. S.
Opp. No. 91160397
10
In addition to claiming priority, likelihood of
confusion, dilution and mere descriptiveness in the
counterclaim, applicant has pleaded that (i) opposer
obtained the ‘384 registration by fraud stemming from
opposer's actions taken in obtaining and maintaining the
registration; (ii) opposer's filing and prosecution of the
opposition is fraudulent because the electronic “cover
sheet” of the initial notice of opposition identified
opposer as Exel Oy but the notice of opposition itself
alleged that opposer Exel Oyj is the owner of the ‘384
registration; and (iii) the continued registration of
opposer's mark concurrently with applicant's marks is likely
to cause confusion. In his brief, applicant argued that
opposer's mark is descriptive, that opposer has not
established any acquired distinctiveness, and that the
application underlying the ‘384 registration was invalidly
assigned in violation of Section 10 of the Trademark Act, 15
U.S.C. § 1060, because “not all of the business relating to
the EXEL mark was ‘ongoing and existing’ at the time of the
assignment.” Brief at p. 35.
We find that applicant has waived all of his pleaded
grounds for cancellation in the counterclaim by not
discussing them in his briefs, except for his claims of mere
descriptiveness and lack of acquired distinctiveness. As
for applicant's unpleaded allegation regarding Section 10 of
Opp. No. 91160397
11
the Trademark Act, we must determine whether this allegation
was tried by implied consent.
Implied consent to the trial of an unpleaded issue can
be found only where the nonoffering party (i) raised no
objection to the introduction of evidence on the issue, and
(ii) was fairly apprised that the evidence was being offered
in support of the issue. See TBMP §507.03(b) (2d ed. rev.
2004) and cases cited therein. See also Fed. R. Civ. P.
15(b). Because opposer raised no objection to the
introduction of evidence on the issue of whether there was
an invalid assignment of the application resulting in
opposer’s pleaded registration,4 and because opposer has not
maintained that it was not fairly apprised that the evidence
was being offered in support of this issue, we find that
applicant's claim of improper assignment was tried by the
consent of the parties.
We now address the merits of the three counterclaims.5

4 The factual allegations and evidence supporting applicant's
claim of fraud as set forth in his counterclaim are substantially
the same as the facts and evidence argued and submitted in
connection with the claim of an improper assignment. It is clear
that opposer was fairly apprised that the evidence was being
offered in support of both claims. Thus, although applicant
subsequently waived the fraud basis for the counterclaim by not
discussing it in his brief, it is obvious that applicant did not
waive the improper assignment claim.
5 Applicant's standing to assert the counterclaims is not an
issue in this proceeding because an applicant has standing to
assert a counterclaim against a pleaded registration by virtue of
its position as a defendant in the opposition. Ohio State
University v. Ohio University, 51 USPQ2d 1289 (TTAB 1999). See
also TBMP § 313.03 (2d ed. rev. 2004).

Opp. No. 91160397
12
Mere Descriptiveness
Applicant maintains that opposer has admitted in
response to request for admissions no. 8 that EXEL is
pronounced as “eks-el”; that “pronunciation is tantamount to
EXCEL” and connotes the “excellence” of opposer's goods; and
that opposer’s own trademark search included a search for
the terms “EXCEL or EXCELL or EXEL or XL or XEL or XELL or
XCEL or XCELL,” which confirms the fact that “EXCEL” is one
of EXEL’s variants. Brief at pp. 28 – 29.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of a
quality, characteristic, function, feature, purpose or use
of the goods or services with which it is used. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). On
the other hand, a term is suggestive if, in the context of
those goods or services, a purchaser must use imagination,
thought, or some type of multi-stage reasoning to understand
the term's significance. See Plyboo America Inc. v. Smith &
Fong Co., 51 USPQ2d 1633 (TTAB 1999).
Applicant's arguments and the evidence that applicant
relies on do not persuade us that the term “exel” is a
merely descriptive laudatory term for opposer's goods. We
construe opposer's admission as admitting that the mark is
pronounced as a combination of the letters “X” and “L.”
Further, the fact that opposer searched many variants of its
Opp. No. 91160397
13
mark has little relevance to the question regarding how the
consuming public will perceive opposer's mark. If we were
to extend applicant's logic, each of the variations of its
mark searched by opposer would be merely descriptive of
opposer's goods.
It is applicant, as the party asserting the claim of
mere descriptiveness, which bears the burden of proof in
establishing that opposer's mark is merely descriptive.
Applicant's evidence and arguments do not persuade us that
opposer's mark, with its spelling dissimilar to “excel” and
its uncertain connotation, is a merely descriptive laudatory
term for opposer's goods.
Acquired Distinctiveness
Because we have found that on this record, opposer has
not established that opposer's mark is merely descriptive,
applicant’s arguments regarding acquired distinctiveness are
moot.
Section 10/Invalid Transfer
By way of background, we point out that opposer's
registration matured from a divisional application, and that
its original intent to use application, application Serial
No. 75050237, included the following goods at the time it
filed its request to divide:
non-metallic pipe couplings and joints in
International Class 17;

Opp. No. 91160397
14
fence posts; telescopic masts for supporting
telecommunication equipment; telescopic support
poles for supporting camouflage netting,
umbrellas, and other applications; lattice towers
for supporting telecommunication equipment and
lighting structures, kite tubes for storing kites;
all of the above being made of non-metal in
International Class 19; and

ski poles; ski pole straps; ski pole handles; ski
pole grips; and ski pole tips in International
Class 28.

The parties do not dispute what transfers and name
changes occurred, or when they occurred, as described in
opposer's response to applicant's request for admissions,
discussed earlier in this decision. However, applicant
contends that “not all of the business relating to the EXEL
mark was ‘ongoing and existing’ at the time of the
assignment” on November 29, 1996; that opposer must show
that, with regard to all of those goods in the original
application, its predecessor had an ongoing and existing
business under the EXEL mark, to which opposer was the
successor; and that the assignment was invalid pursuant to
Section 10. Brief at pp. 35; reply at p. 3. Applicant
targets those goods in International Classes 17 and 19 and
maintains that opposer’s assignor did not have an ongoing
and existing business involving such goods at the time of
the assignment to opposer. We disagree with applicant’s
apparent interpretation of Section 10, insofar as applicant
appears to have concluded that an intent-to-use applicant
must at least be engaged in a particular field or business,
Opp. No. 91160397
15
even if it is not yet using the applied-for mark in such
field or business, to be able to validly transfer the
intent-to-use application for that mark to another. In the
paragraphs that follow, we first discuss applicant's
arguments and the evidence on which he relies and then
discuss the requirements of the statute.
In support of his argument, applicant points to the
numerous product catalogs in the record for ski poles and
ski pole accessories, and notes the lack of evidence of
production of the industrial goods in International Classes
17 and 19 in the record.6 Applicant points out too that
although Mr. Karihtala testified that while the “assets” of
the predecessor were transferred, he did not testify that
the industrial goods “business” was transferred;7 and that

6 Applicant is not correct; there is some evidence in the record
not only of production of such goods but also of use of the mark
EXEL for the International Class 17 and 19 goods; applicant has
made of record the entire file – including the specimen of use -
for Registration No. 2515634 for the mark EXEL, which issued from
opposer's original application on December 4, 2001 for “non-
metallic pipe couplings and joints” in International Class 17,
and “fence posts; telescopic support poles for supporting
camouflage netting, umbrellas, and other applications; lattice
towers for supporting telecommunication equipment and lighting
structures; kite tubes for storing kites, all of the above being
made of non-metal” in International Class 19.
7 Mr. Karihtala testified:
Q. What happened in 1996?

A. 1996, Exel – Neste sold Exel OY to a company
called Mantyharjun and then the second word is
Muovituote OY, so Neste sold all the assets,
including material rights, everything to this
Mantyharjun Muovituote and then I think it was
early ’90 – after a few days from this deal, the
Opp. No. 91160397
16
Mr. Karihtala admitted on cross-examination that the only
“business” which was then ongoing and existing pertained to
ski poles and related accessories.8 Further, applicant
argues that (i) the filings by “Opposer” of requests for
extension of time to file a statement of use of the EXEL
mark for the industrial goods demonstrate that at the time
of the 1996 assignment, such goods were not being
manufactured and sold in commerce and not part of an
“ongoing and existing” business at the time of the

name of Mantyharjun Muovituote was changed to Exel
OY. That’s how it went.

Q. Was this sale through an asset purchase agreement?

A. Yeah.

Q. Did this sale include all the goodwill and
intellectual property rights that Exel OY owned?

A. Yes.

Karahtala Dep. at 9 – 10.

8 His testimony at p. 105 of his trial transcript is:

Q. My question was, in 1996, what was Exel OY
selling in the United States?

A. In 1996, crosscountry ski poles, alpine ski
poles, related accessories and also windsurfing
masts, but by that time, no more under [the] Exel
brand.

Q. Can you recall it was selling anything else in
1996 in the U.S.?

A. Maybe some industrial products like laminates for
the ski manufacturers and ice hockey stick
manufacturers, so some industrial material would
go for the sporting goods, but sort of raw
materials, not Exel branded.

Opp. No. 91160397
17
assignment (“Exel Oy” actually filed the extension
requests); (ii) that opposer initially admitted that “Exel
Oy is not the same entity as Opposer Exel Oyj” and that
“there was no assignment”; and (iii) that opposer’s Canadian
agent submitted an assignment and name change document “to
the Canadian Registrar” in connection with opposer's
Canadian application, and stated that “[i]t is important to
the parties that the chain of title is shown.” Applicant
concludes:
While the ski pole business may have been an
ongoing and existing business in the U.S. under
the EXEL mark, Opposer’s predecessor did not have
an ongoing and existing industrial goods business
in the U.S. under the EXEL mark. Opposer has not
presented a single shred of evidence – not even a
single invoice – to show that its predecessor had
an ongoing and existing industrial goods business
at the time of the assignment in November 1996.
Instead, it is apparent that in 1996, Opposer’s
predecessor transferred, in gross, various
trademark registrations and applications, in
various jurisdictions, as well as patents and
other assets …. In this case, the businesses were
not all ongoing and existing because the
businesses for most of the goods covered by the
assigned application – certain of the industrial
goods in Classes 17 and 19 – were not then ongoing
and existing. The later division of the ski pole
goods [in a divisional application] cannot cure
this statutory invalidity. Accordingly, the
assignment is invalid, and the Ski Pole
Registration which issued from the assigned
application must be cancelled.

Reply at p. 6.

Section 10 of the Trademark Act prohibits the
registration of a mark under Section 1(b) which has been
assigned prior to the filing of an amendment under Section
Opp. No. 91160397
18
1051(c) or the filing of the verified statement of use under
Section 1051(d), “except for an assignment to a successor to
the business of the applicant, or portion thereof, to which
the mark pertains, if that business is ongoing and
existing.” “The purpose of this … limitation on assignment
of an application is to prohibit ‘trafficking’ in marks: the
buying and selling of ‘inchoate’ marks which as yet have no
real existence.” McCarthy, J. Thomas, 3 McCarthy on
Trademarks and Unfair Competition § 18:13 (4th ed. 2008),
citing Senate Judiciary Committee Report on S 1883, S. Rep.
No. 100-515, 100th Cong. 2d Sess. 25 (1988) reprinted in
United States Trademark Association, The Trademark Law
Revision Act of 1988 117 (1989). Unless the statutory
exception is met, the legal effect of assigning an intent to
use application, prior to the filing of a verified
allegation of use, is that the application is void. The
Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996).
We therefore are presented with the question: On
November 29, 1996, when “old” Exel Oy assigned the
application to Mantyharjun Muovituote Oy, i.e., opposer as
known before it changed its name to Exel Oy (and even later
became Exel Oyj), did “old” Exel Oy transfer all of its
business, or that portion of its business to which the
intent to use application pertained, to opposer? The
agreements between the transferor and the transferee are not
Opp. No. 91160397
19
in the record so we are unable to determine from them
whether the transfer was of an entire business or merely a
relevant portion. Thus, we must rely on the testimony of
the witnesses and the discovery responses which are of
record, provided that they are sufficiently probative and
complete. Further, we are not concerned whether “old” Exel
Oy had an ongoing and existing business for each of the
goods identified in the application at the time of the
assignment under the mark. This is a requirement applicant
urges us to read into the statute. The intent to use
provisions of the statute do not require a party to develop
production capacity in a particular field before filing an
intent to use application to register a mark for use in that
field. It is clear, for example, that an intent to use
applicant could plan to make use of a mark by having another
manufacture for the applicant the goods that would be sold
under the mark. Similarly, the intent to use applicant
could choose to wait until it obtained a notice of allowance
before engaging in the costs associated with preparing for
production of actual products. The exception in Section 10
concerning assignment of intent to use applications and, in
particular, the use of the phrase “if that business is
ongoing and existing” should not be read, as applicant has
read it, in a manner that would be inconsistent with the
intent behind Section 1(b) of the Trademark Act, 15, U.S.C.
Opp. No. 91160397
20
§ 1051(b). The statute cannot be read to require, as a
precondition for assignment of an intent to use application,
that there be an ongoing and existing business, or portion
thereof, for each of the goods in an intent to use
application. Rather, we consider the statute as allowing
for assignment of intent to use applications when (i) the
overall business of the applicant was transferred, or (ii)
if the intent to use applicant remained an “ongoing and
existing” business after the assignment, the portion thereof
to which the mark pertains was transferred. The statute
must allow for the transfer of a Section 1(b) application
claiming a bona fide intention to use the mark for goods
which are not yet in production or which may be in the
planning stage, and which may represent an extension of an
applicant’s business. The statute does not require that the
mark ultimately must be used on each of the goods identified
in the application that has been transferred lest the
assignment, ex post facto, be rendered invalid.9 The anti-
trafficking provision of the statute merely requires that if
the application is transferred prior to use of the mark, and
the transferor remains an ongoing and existing business
after the transfer, that the transfer be accompanied by that

9 While the particulars of any transfer may be important in any
assessment of the question whether, when it filed an application,
the applicant had a bona fide intention to use a mark, that is a
distinct question from the validity of a transfer. The latter is
the only question raised by applicant’s counterclaim.
Opp. No. 91160397
21
portion of the transferor’s business to which the mark
pertained, i.e., that portion of the business that would
have used the mark had there been no transfer.
Mr. Karihtala testified:
Q. Mr. Miwa [applicant’s attorney] asked you some
questions about some of the transactions that took
place in 1993 and 1996.

Let’s talk real quickly about the 1993 transaction
when Exel OY was owned by Neste OY and then there
was a transfer of assets to Neste Composites OY.

A. Exel Composites.

Q. From your perspective as employee, did
anything change as a result of that transaction?

A. Nothing changed.

Let’s say if you are looking at the company
from the outside, nothing changed, so everything,
the Exel name in the sporting goods business,
everything was the same, it was Exel always and
nothing changed in that respect. This was just
kind of, I guess you can say kind of a technical
arrangement behind the scene.

Q. When we look at the 1996 transaction, when you
had the asset purchase agreement where Exel OY
sold the assets of the business to what we’re
referring to as MMO, again, from your perspective
as an employee, did that have any significant
change in who you thought you were working for?

A. That had no effect – the company was running
the same way and people were working to promote []
Exel the same way, so there were no changes in the
business operation.

Q. So the ongoing business was owned by Exel OY,
was that then conveyed to MMO?

A. What do you mean [by] the word “conveyed”?

Q. Was that transferred to MMO?

Opp. No. 91160397
22
A. Yeah, the business was traveling along and we
were doing the business the same way, so there was
no effect on our daily work

Q. So one day, the company was owned by or the
business was owned by Exel OY and then the next
day, it was owned by MMO?

A. For a few days, but still from the outside,
you couldn’t have seen any difference.

Q. So from your perspective, it was business as
usual after that transfer?

Q. Yes.

Karihtala dep. at pp. 134 – 136. Mr. Karihtala also
testified that opposer purchased all of the assets of “old”
Exel Oy in 1996. Additionally, opposer introduced into
evidence numerous product catalogs for 1979 – 1983, 1988 –
1989, 1996 – 2000 and 2002 – 2006, which demonstrate that
before and after 1996, opposer was using the mark EXEL in
connection with ski poles and ski pole straps, handles,
grips and tips. Pollanen dep. ex. O-1 – O-5; Karihtala dep.
ex. O-6 – O-17. Moreover, we give little weight to
opposer’s initial admission that “there was no assignment”
in its responses to applicant's requests for admissions -
the Board granted opposer's motion to withdraw its initial
responses, and the remaining evidence of record does not
persuade us that there was no assignment. Further, the
statement that “[i]t is important to the parties that the
chain of title is shown” made by opposer's Canadian agent in
connection with a Canadian application is of little
Opp. No. 91160397
23
relevance in the United States; we cannot discount that
there were special requirements in Canada which prompted the
statement.
Upon considering all of the evidence, it is apparent to
us that all of the assets of the acquired company were
purchased. As far as applicant's contentions regarding the
requests for extensions of time to file a statement of use,
and the fact that there is no evidence that opposer ever
used the mark in connection with the International Class 17
and 19 goods, applicant's contentions are not persuasive
because there is no requirement within Section 10 of the
Trademark Act that the mark which is the subject of the
intent to use application that is transferred with the
ongoing business must eventually be used in commerce for all
or substantially all of the goods identified. The statute
requires that the business be transferred with the mark, or
at least that portion of the business to which the mark
pertains be transferred with the mark, and opposer has
established that the entire business of “old” Exel Oy was
transferred to it concurrently with the assignment of the
intent-to-use application.10

10 In this regard, we note that Mr. Karihtala testified that he
was not familiar with any industrial products. (“If you also
talk about industrial products, again, I have to say that I was
not involved with industrial sales, so it’s very difficult for me
to say what industrial products we were selling in North America.
I believe we did sell something, but I wouldn’t be able to recall
what we were selling there.” Karihtala dep. at p. 106.) As for
Opp. No. 91160397
24
Applicant's counterclaim to cancel opposer's pleaded
Registration No. 2394384 is denied.
We now turn to the issues raised in the opposition,
namely, standing, priority and likelihood of confusion.
Standing in the Opposition
Opposer has established that it is the owner of a valid
and subsisting registration for the mark EXEL. See
discussion of registration, supra. In view thereof, and
because opposer has asserted a likelihood of confusion claim
not wholly without merit, we find that opposer has
established its standing to oppose registration of
applicant's marks in the opposition proceeding. See, e.g.,
Lipton Industries, Inc. v. Ralston Purina Company, 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Priority
Because opposer's registration has been made of record,
Section 2(d) priority is not an issue with respect to the
goods identified in opposer's registration, namely ski
poles; ski pole straps; ski pole handles; ski pole grips;
and ski pole tips. King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); B.V.D.

Mr. Pollanen, he testified that opposer sold “profiles” out of
fiberglass and carbon fiber, and that a “profile” can be used for
a broom handle or a window frame or a mast, such as a telescopic
masts. Pollanen dep. at pp. 29 – 30. He did not recall the
specifics regarding such sales and did not testify as to any
sales in the United States.

Opp. No. 91160397
25
Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1506 (TTAB
2007). In any event, opposer, through the testimony of
Messrs. Pollanen and Karihtala, has established that opposer
has continuously “marketed” the goods identified in its
registration in the United States under the EXEL mark since
1976. Karihtala dep. at pp. 17 – 18; Pollanen dep. at p.
11.
Opposer also argues that it has priority because
applicant's goods are within the natural zone of expansion
of its registered goods, and it has expanded its EXEL
product line from ski poles to ski pole bags and other
sports bags.11 Even if we accept that opposer has priority
for ski poles and parts therefor, and ski pole bags, made
both from a hard material and a soft material, we find that
opposer can not be awarded common law priority as to
applicant’s goods because it has not established that the
bags recited in the application are within the zone of
expansion of ski poles and parts therefor, or of ski pole
bags, whether made from a hard material or a soft material.
The Board has stated the following regarding the zone
of expansion doctrine:

11 Opposer does not base its claim of priority on prior use of its
mark on various bags that are not ski pole bags. Even if it did,
opposer would not prevail because the evidence of record
establishes first use of EXEL for non-ski pole bags as of 1988.
See ex. O-5 Pollanen dep. (EXEL catalog for 1988 – 1989).
Applicant has established that he has used XCEL on bags such as
Opp. No. 91160397
26
Under the doctrine of natural expansion, the
first user of a mark in connection with particular
goods or services possesses superior rights in the
mark not only as against subsequent users of the
same or similar mark for the same or similar goods
or services, but also as against subsequent users
of the same or similar mark for any goods or
services which purchasers might reasonably expect
to emanate from it in the normal expansion of its
business under the mark. This is so whether or
not the first user of the mark has actually
expanded its use of its mark, after the
commencement of the subsequent user's use, to
goods or services which are the same as or closely
related to those of the subsequent user. The
application of the doctrine is strictly limited to
those cases where the expansion, whether actual or
potential, is “natural,” that is, where the goods
or services of the subsequent user, on the one
hand, and the goods or services as to which the
first user has prior use, on the other, are of
such nature that purchasers would generally expect
them to emanate from the same source. The reason
for the limitation is that the prior user of a
mark on particular goods or services cannot extend
its use of the mark to distinctly different goods
or services if the result could be a conflict with
valuable intervening rights established by another
through extensive use and/or registration of the
same or similar mark for the same or closely
related goods or services in the new sphere of
trade.

Among the factors to be considered in
determining whether an expansion is natural are:
(1) whether the second area of business (that is,
the subsequent user's area of business, into which
the first user has or potentially may expand) is a
distinct departure from the first area of business
(of the prior user), thereby requiring a new
technology or know-how, or whether it is merely an
extension of the technology involved in the first
area of business; (2) the nature and purpose of
the goods or services in each area; (3) whether
the channels of trade and classes of customers for
the two areas of business are the same, so that
the goodwill established by the prior user in its

backpacks, duffel-type bags and mesh bags since 1984 on a
rotational basis. D’Ascoli dep. at 24, 26.
Opp. No. 91160397
27
first area of business would carry over into the
second area; and (4) whether other companies have
expanded from one area to the other.

Finally, the determination of whether an
expansion is or would be natural must be made on
the basis of the circumstances prevailing at the
time when the subsequent user first began to do
business under its mark, i.e., what was “natural”
in the relevant trade at that time.

Mason Engineering and Design Corp. v. Mateson Chemical
Corp., 225 USPQ 956, 962 (TTAB 1985)(internal citations
omitted).
In this case, we consider whether the consuming public,
i.e., the general public, would expect the source of
applicant's goods to be opposer in 1984 when, according to
Mr. D’Ascoli, he first began selling bags such as backpacks,
duffel-type bags and mesh bags bearing the XCEL mark on a
rotational basis. D’Ascoli dep. at pp. 24-26.
Opposer has made many arguments in support of its
contention that applicant's goods are within the zone of
natural expansion of opposer's ski poles and/or their parts,
and ski pole bags, either soft-sided or hard-sided. For
example, it has argued that the technology and know-how
required to make ski poles and ski pole bags is similar;
that a company engaged in the production of ski poles would
have relevant know-how to also design, produce and market
bags to house those poles; and that once producing ski pole
bags, this know-how will also be relevant to the design,
production and marketing of other sports bags. Opening
Opp. No. 91160397
28
brief at 11. None of these arguments is supported by any
evidence and therefore is not persuasive. Further, opposer
has argued that numerous other companies have expanded from
one area to the other and relies on two registrations for
support. The registrations are simply too few in number to
be persuasive of applicant's argument. Also, one of the two
registrations is not based on use in commerce but was
registered under Section 44 of the Trademark Act, 15 U.S.C.
§1126, and the registration does not recite ski poles or
even ski bags in its identification of goods - it recites
“ski covers.” See Registration No. 1373801 for DYNASTAR,
applicant's notice of reliance ex. V. Further, applicant's
argument regarding the common nature and purpose of ski pole
bags and applicant's goods misses the mark. First, it is
based on speculation: “[Cross-country skiers] might also
want to use ski pole bags to house and carry the[ir] poles
[and] they might want to use additional sports bags to carry
and store other ski-related gear, such as ski boots, gloves,
goggles, caps and other cold-weather gear.” Main brief at
p. 11. Second, the bags we are concerned with are not
limited to sports bags; they are duffel bags, beach bags,
backpacks and diving bags. We know of no reason why beach
bags and diving bags would be sold as bags for ski-related
gear.
Opp. No. 91160397
29
In view of the foregoing, we find that opposer has not
established that applicant’s goods are within the natural
zone of expansion of opposer's goods, i.e., ski poles and/or
ski pole accessories, or ski pole bags.
Likelihood of Confusion
We have found above that opposer has not established
that it has priority rights with respect to use of its mark,
or any similar mark, for applicant’s goods whether through
actual use of its mark ski pole bags or through the theory
of natural expansion from its registered goods. We
therefore consider now opposer's pleaded claim that its
registered mark is likely to be confused with applicant's
mark, without regard to the theory of natural expansion,
i.e., by comparing only the goods identified in opposer’s
registration and in applicant’s application. Section 2(d)
of the Trademark Act bars registration of a mark that is
confusingly similar to a registered mark, and opposer has
established that it is the owner of a registered mark, i.e.,
Registration No. 2394384.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
Opp. No. 91160397
30
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). We thus focus on the factors concerning the marks
and goods, which the parties have discussed in their briefs.
With regard to the du Pont factor regarding the
similarity or dissimilarity of the parties’ goods and
channels of trade, we find that opposer has not established
that its ski poles and ski pole accessories are similar to
applicant's bags or that they travel in similar channels of
trade. See discussion regarding the zone of expansion,
supra. Moreover, the diving bags in International Class 28,
and the beach bags in International Class 18 are intended
for use in very different sports or environments than
opposer's ski related goods. Simply because some persons
may ski and dive does not compel a finding that the goods
are related. See opposer's argument in its main brief at
pp. 13–14. Further, simply because articles for skiing may
be carried in bags such as those recited in applicant’s
application does not, without more, establish a relationship
between the goods. The du Pont factors regarding the goods
Opp. No. 91160397
31
and trade channels weigh against finding a likelihood of
confusion.
We next consider whether applicant’s mark and opposer’s
mark are similar or dissimilar when viewed in their
entireties in terms of appearance, sound, connotation and
overall commercial impression. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). A side by side
comparison is not the test, see Grandpa Pidgeon's of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973), and 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).
The marks undoubtedly are similar in that the both are
four letter terms that would be perceived by consumers as
misspellings of the term “excel.” There are, of course,
slight differences in sound and appearance of the marks, due
to the different lettering in the marks. Due to the same
connotation and hence the same commercial impression, and
because the differences in sound and appearance are only
slight, we find that the marks are similar. The du Pont
factor regarding the similarity of the marks is resolved in
opposer's favor.
Opp. No. 91160397
32
In considering the strength of the marks, we note that
the term is a highly suggestive one connoting excellence,
see discussion supra, and there is no evidence of third
party use of similar marks.12 While we do not find that
opposer's mark is a weak mark, we accord it a reduced level
of protection in view of its highly suggestive nature.
In balancing the above, and particularly giving weight
to the differences in the goods and the lack of any evidence
that the trade channels of the goods are related, we find
that applicant's mark for those goods listed in his
application will not likely be confused with registrant’s
mark used on those goods identified in its registration.
DECISION: Opposer's opposition to registration of
applicant's mark is dismissed and applicant's counterclaim
to cancel Registration No. 2394384 is dismissed.

12 The record for applicant's application contains a listing of
third party registrations taken from an undetermined source.
Because we do not know the source of this listing, because the
registrations themselves have not been submitted and because
registrations are not evidence of use, this listing has limited
probative value.