JA Communicationsv.Jonathan Roche Fitness Ventures (IP) LLC

Trademark Trial and Appeal Board

Jan 30, 2014

No. 92052836 (T.T.A.B. Jan. 30, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

JA Communications
v.
Jonathan Roche Fitness Ventures (IP) LLC
_____

Cancellation No. 92052836 against Registration No. 3391997
and
Cancellation No. 92052844 against Registration No. 3792022 1
_____

Peter J. Ims of Westman, Champlin & Kelly, PA for JA Communications.

Peter B. Scull of Hamilton, DeSanctis & Cho, LLP for Jonathan Roche Fitness
Ventures (IP) LLC.2
_____

Before Seeherman, Quinn and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

JA Communications (petitioner) seeks to cancel two registrations owned by
Jonathan Roche Fitness Ventures (IP) LLC (respondent) for the standard character
mark NO EXCUSES WORKOUT (WORKOUT disclaimed) for:

1 The two proceedings were consolidated on March 8, 2011, before trial commenced.
2 William T. Slamkowski of Jackson Kelly PLLC had also represented respondent through
the filing of respondent’s brief on the case. On May 2, 2012 respondent withdrew the
associate power of attorney for Mr. Slamkowski. We accept this withdrawal.
Cancellation Nos. 92052836 & 92052844

2

Audio and video recordings featuring exercise, fitness and
weight loss methods; Digital media, namely, pre-recorded
video cassettes, digital video discs, digital versatile discs,
downloadable audio and video recordings, DVDs, and high
definition digital disks featuring exercise, fitness and
weight loss methods; Downloadable multimedia file
containing artwork, text, audio, video, games, and
Internet Web links relating to exercise, fitness and weight
loss methods; DVDs featuring exercise, fitness and weight
loss methods; Pre-recorded CDs, video tapes, laser disks
and DVDs featuring exercise, fitness and weight loss
methods, in International Class 93
and
Educational services, namely, conducting seminars and
conferences in the field of fitness and distribution of
course material in connection therewith; Educational
services, namely, developing, arranging, and conducting
educational conferences and programs and providing
courses of instruction in the field of fitness; Educational
services, namely, conducting online exhibitions and
displays in the field of fitness; Entertainment services,
namely, providing a website featuring photographic,
audio, video and prose presentations featuring fitness;
Health club services, namely, providing instruction and
equipment in the field of physical exercise; Personal
coaching services in the field of fitness; Personal trainer
services; Personal training services, namely, strength and
conditioning training; Physical education services;
Training services in the field of fitness, in International
Class 41.4
In its first amended petition for cancellation, petitioner alleges that
respondent’s mark, when applied to respondent’s goods and services, so resembles
petitioner’s previously used trademark, service mark or trade name NO EXCUSES

3 Registration No. 3792022, issued on May 25, 2010, based on an application filed on
February 11, 2009 and alleging May 1, 2005 as the date of first use anywhere and in
commerce.
4 Registration No. 3391997, issued on March 4, 2008, based on an application filed on
September 11, 2006, and alleging May 1, 2005 as the date of first use anywhere and in
commerce.
Cancellation Nos. 92052836 & 92052844

3

WORKOUT for “lectures, seminars, articles, books, manuals and video recordings
featuring exercise, fitness and weight loss methods and routines” and for “providing
information regarding exercise routines and other information that promotes
muscle toning, cardiovascular conditioning, fitness and health” as to be likely to
cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Am.
Pet. ¶1. Petitioner alleges that it “has continuously used its NO EXCUSES
WORKOUT mark or trade name in commerce since about at least July 2002 to the
present.” Id. ¶2.
Respondent, in its answer, denied the salient allegations in the amended
petition, and asserted that petitioner cannot prove likelihood of confusion because
petitioner does not have proprietary rights superior to those of respondent.5
Answer, at Affirmative Defenses ¶¶ 1 and 2. Inasmuch as petitioner is asserting
common-law rights, it is petitioner’s burden to prove the acquisition of prior rights.
Thus, the “affirmative defenses” based on this assertion are merely amplifications of
respondent’s denial of petitioner’s pleaded claims.
Petitioner and respondent filed trial briefs, and petitioner filed a reply brief.
Respondent’s Cross-Motion to Strike
Before we make our final determination on the merits, we must address
respondent’s motion to strike certain testimony and exhibits, consideration of which

5 Respondent asserted several other affirmative defenses, but did not pursue them at trial
or in its brief, thus waiving the defenses.
Cancellation Nos. 92052836 & 92052844

4

the Board deferred until final hearing.6
During petitioner’s testimony period, petitioner took the depositions of John
Abdo, President and CEO of petitioner; Gary Chappell, President and CEO of
petitioner’s publisher Nightingale Conant; and, as an adverse witness, respondent’s
founder and CEO, Jonathan Roche. On November 15, 2012, during respondent’s
testimony period, respondent filed a motion to strike ten of the eleven exhibits that
petitioner introduced during Mr. Abdo’s testimonial deposition (Exhibits A through
J), ten of the twenty-six exhibits that petitioner introduced during Mr. Roche’s
testimonial deposition (Exhibits V through Y, AA, EE, FF, HH, II and JJ), the sole
exhibit that petitioner introduced during Mr. Chappell’s testimonial deposition
(Exhibit KK),7 and all related testimony, which ranges from one-third to one-half of
each transcript. The motion is fully briefed.
Exhibit A
Exhibit A consists of two photographs or scans of two DVDs bearing the
wording JOHN ABDO’S NO EXCUSES WORKOUT on the labels, where one label
includes a photograph of a man, and one label includes a photograph of a woman.8
The words NO EXCUSES appear on a separate line and in much larger font than
the other words.

6 The Board also deferred until final hearing consideration of petitioner’s second motion for
leave to file an amended petition. As discussed infra, we need not and do not decide this
motion.
7 During Mr. Chappell’s deposition, petitioner also elicited testimony regarding Exhibits B
and C over respondent’s objections. Exhibits B and C are among the ten exhibits from Mr.
Abdo’s deposition that petitioner seeks to strike.
8 Mr. Abdo testified that the content of the DVDs is the same even though the labels differ.
Abdo Test., p. 10.
Cancellation Nos. 92052836 & 92052844

5

Contrary to respondent’s arguments regarding improper authentication and
lack of foundation, we find that petitioner properly introduced the document into
evidence. Mr. Abdo testified based on his first-hand knowledge that he produced the
DVDs, the DVDs contain an exercise routine, and they have been sold consistently
since 2001 or 2002. Abdo Test., pp. 10-16. In light of this testimony, we further find
that petitioner did not use this exhibit in a “misleading manner” (Mot. to Strike, p.
17), even if the copyright date on the DVDs is not legible. Accordingly, we deny the
motion to strike Exhibit A.
Exhibit B
Exhibit B consists of a one-page photograph of a display of petitioner’s multi-
faceted program entitled “John Abdo’s Vital Living from the Inside-Out” (hereafter,
“Vital Living program”). The Vital Living program, as shown in Exhibit B, includes
a manual and a video component in the form of cassettes and DVDs all entitled
JOHN ABDO’S VITAL LIVING FROM THE INSIDE-OUT (where VITAL LIVING
appears in larger font). The Vital Living program also includes a workout video
bearing the label JOHN ABDO’S NO EXCUSES WORKOUT (where NO EXCUSES
appears in larger font), shown on the lower left side of Exhibit B, and a manual
entitled JOHN ABDO’S NO EXCUSES! WORKOUT & EATING PLAN (where NO
EXCUSES! appears in larger font), shown on the middle right side of the exhibit.
Respondent asserts that petitioner is estopped from relying on this exhibit,
contending that petitioner’s counsel first produced Exhibit B on September 20,
2012, the day before Mr. Abdo’s testimony deposition. See e.g., Panda Travel, Inc. v.
Cancellation Nos. 92052836 & 92052844

6

Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1792-93 (TTAB 2009) (documents
not produced until after the start of trial stricken). There is no question that Exhibit
B is responsive to certain discovery requests, and that petitioner did not produce
this document as part of its disclosures or during discovery. However, the record
shows that Mr. Abdo provided Exhibit B (and Exhibit A) to respondent’s prior
counsel, Kevin Callahan, in response to a cease and desist email on July 12, 2010.9
As respondent has had a copy of Exhibit B since July 12, 2010, we deny the
motion to strike this exhibit. We see no undue prejudice to respondent based on
petitioner’s failure to also produce the document during discovery, or to identify it
on September 18, 2012 as one of the documents that would be used during Mr.
Abdo’s testimony.
As will be seen below, none of the other exhibits that respondent seeks to
exclude is outcome determinative. Given this, coupled with the number of
objections, we see no compelling reason to discuss the other objections.
Record
The record consists of the pleadings; the files of the involved registrations;
the testimonial depositions, with accompanying exhibits, of Messrs. Abdo, Chappell
and Roche; and each party’s notice of reliance.

9 In response to the motion to strike, petitioner’s counsel submitted, with his own
declaration, a copy of the July 12, 2010 email exchange (on which he was copied), and
printouts of Exhibits A and B, which he avers were attached to Mr. Abdo’s email.

The revocation of Mr. Callahan and appointment of respondent’s current counsel, Mr. Scull,
was filed on November 17, 2010, approximately 10 days after initial disclosures were due.

Cancellation Nos. 92052836 & 92052844

7

The Parties
Both parties are involved in the fitness and training industry, and both have
developed workouts that can be done outside the gym in a limited amount of time.
Mr. Abdo, petitioner’s principal, testified that he developed the “no excuses
philosophy” in the 1980s, after hearing various excuses from athletes and other
individuals about why they could not exercise (e.g., injury, time, motivation). Mr.
Abdo further testified that in conjunction with this philosophy, he developed an
exercise routine, which he named the “No Excuses Workout,” that provides a total
body workout that anyone can do anywhere, at any time. Abdo Test., pp. 7-8.
Mr. Roche, respondent’s founder and CEO, testified that respondent’s NO
EXCUSES WORKOUT video “is in-home strength training using body weight that
can be done in 6-, 12-, 18- or 24-minute increments.” Roche Test., p. 37. According to
Mr. Roche, respondent provides the NO EXCUSES WORKOUT video as part of a
larger program entitled the “No Excuses Workout System,” which now is web-based.
Id., pp. 67-69, 131. Mr. Roche further testified that respondent also provides, as
part of the “No Excuses Workout System,” web-based training services for various
races, such as marathons and mini-triathlons. Id., p. 68.
Standing
We first consider whether petitioner has standing to bring this opposition
proceeding. Standing is a threshold issue that must be proven by a plaintiff in every
inter partes case.10 See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025

10 Contrary to petitioner’s assertions in its reply brief, respondent was not required to plead
petitioner’s lack of standing as an affirmative defense, or even to raise the issue.
Cancellation Nos. 92052836 & 92052844

8

(Fed. Cir. 1999); Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021, 2023 (Fed. Cir. 1987); Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 188 (CCPA 1982). The purpose of the standing
requirement, which is directed solely to the interest of the plaintiff, is to prevent
litigation when there is no real controversy between the parties. Lipton, 213 USPQ
at 189.
Under Section 14 of the Trademark Act, 15 U.S.C. § 1064, anyone with a
reasonable belief that he would be damaged by a registration has standing to file a
petition to cancel the registration. Respondent contends that all documentary
evidence points either to John Abdo or JA Fitness, rather than the named
petitioner, JA Communications, as the proper party to this proceeding; that Mr.
Abdo’s testimony on the issue is “vague” and “self-serving”; and that his testimony,
in general, suffers from a “lack of credibility.” Resp. Br., p. 5. We disagree, and
instead find that Mr. Abdo’s testimony is credible and establishes that petitioner
uses the wording shown in petitioner’s Exhibits A and B for goods similar to the
goods and the subject matter of the services identified in the subject registrations.
Abdo Test., pp. 86-89. As that wording includes NO EXCUSES and WORKOUT,
petitioner possesses a real interest in the proceeding and is not a mere
intermeddler. Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB
2009) (common-law use sufficient to establish standing).
Cancellation Nos. 92052836 & 92052844

9

Priority
To establish priority on a likelihood of confusion claim brought under
Trademark Act §2(d), a party must prove that it owns “a mark or trade name
previously used in the United States … and not abandoned….” Trademark Act
Section 2, 15 U.S.C. §1052. A party may establish its own prior proprietary rights in
a mark through ownership of a prior registration, actual use or through use
analogous to trademark use, such as use in advertising brochures, trade
publications, catalogs, newspaper advertisements and Internet websites which
create a public awareness of the designation as a trademark identifying the party as
a source. See Trademark Act §§2(d) and 45, 15 U.S.C. §§1052(d) and 1127. See also
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996).
There must be “regular or recurring activity” such as to constitute source
identification in the eyes of consumers. Giersch v. Scripps, 90 USPQ2d 1020, 1023
(TTAB 2009).
As petitioner does not own an existing registration, petitioner must rely on
its common-law use to prove priority. In order for a plaintiff to prevail on a claim of
likelihood of confusion based on its ownership of common-law rights in a mark, the
mark must be distinctive, inherently or otherwise, and the plaintiff must show
priority of use. Id; see also Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
209 USPQ 40 (CCPA 1981).
The labels for the DVDs in Exhibit A and the video in Exhibit B bear the
wording JOHN ABDO’S NO EXCUSES WORKOUT. Further, based on the manner
Cancellation Nos. 92052836 & 92052844

10

in which the mark is displayed, with NO EXCUSES in larger letters and on a
separate line from JOHN ABDO’s, which is above it, and WORKOUT, which is
below it, NO EXCUSES makes a separate commercial impression such that we can
conclude that it is, per se, a trademark for the DVD and video. The same is true for
the manual: NO EXCUSES appears on a separate line and in larger letters than
JOHN ABDO’S, which is above it, and WORKOUT & EATING PLAN which is
below it. In addition, the term WORKOUT, which is defined as “a structured regime
of physical exercise,”11 is a generic term for petitioner’s exercise videos, and
therefore has no source-identifying function for these goods.12 Accordingly, we focus
on petitioner’s use of NO EXCUSES in the remainder of this decision.
In a case involving common-law rights, “the decision as to priority is made in
accordance with the preponderance of the evidence.” Hydro-Dynamics Inc. v. George
Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772 (Fed. Cir. 1987). In this
case, the most relevant evidence consists of Exhibits A and B to Mr. Abdo’s
testimonial deposition, and the associated testimony of Messrs. Abdo and Chappell.
Mr. Abdo testified that the NO EXCUSES workout consists of free-hand and
calisthenics exercises that can be done anywhere, anytime, with no need for
equipment, that he compiled into a video. Abdo Test., p. 8. He further testified that

11 Definition from Dictionary.com (based on The Random House Dictionary (2013)). The
Board may take judicial notice of dictionary definitions, including online dictionaries with
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff'd., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
12 Similarly, WORKOUT has no source-identifying function for respondent’s goods and
services and, as noted previously, it has been disclaimed in the involved registrations. See
In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986).
Cancellation Nos. 92052836 & 92052844

11

the NO EXCUSES manual shown as part of the Vital Living program displayed in
Exhibit B contains every exercise on the video, with still figures depicting the
beginning and end of each exercise, and a description of the exercise and the
muscles involved, plus a separate eating plan with nutritional guidelines. Abdo
Test., p. 24. Mr. Abdo also testified, and Mr. Chappell confirmed, that Nightingale
Conant has sold the Vital Living program since 2002, and that the NO EXCUSES
video and manual were included in each sale (Abdo Test., pp. 28, 31-33, 42-43;
Chappell Test., pp. 8-9, 14-15). In addition, Mr. Abdo testified that since 2001 or
2002, he continuously has sold the NO EXCUSES DVDs displayed in Exhibit A
through his website, through the Life Extension Foundation website, and at some of
his lectures and seminars. Abdo Test., pp. 15-16. Based on the foregoing testimony
and evidence, we find that petitioner has established common-law rights to the
mark NO EXCUSES for “manuals and video recordings featuring exercise, fitness
and weight loss methods and routines” through actual use since at least 2002.
Respondent does not claim use of its mark prior to 2005. Roche Test., pp. 23,
24, 30, 31, 33-35, et al. Since petitioner has shown use of NO EXCUSES as a mark
for the pleaded “manuals and video recordings featuring exercise, fitness and
weight loss methods and routines” since 2002, petitioner has established its
priority.
Inasmuch as petitioner has established priority, we now turn to the
likelihood of confusion analysis.
Cancellation Nos. 92052836 & 92052844

12

Likelihood of Confusion
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin with a comparison of petitioner’s mark NO EXCUSES and
registrant's mark NO EXCUSES WORKOUT in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). In comparing the marks, the test 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 and services 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, it is well settled that one feature
of a mark may have more significance than another, and there is nothing improper
Cancellation Nos. 92052836 & 92052844

13

in giving greater weight to the more significant feature. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In this case, NO EXCUSES constitutes the entirety of petitioner’s mark. NO
EXCUSES also is the dominant and most significant feature of respondent’s mark,
not only because it appears first in respondent’s mark (see Palm Bay, 73 USPQ2d at
1692), but also because it has stronger source-identifying potential than the word
WORKOUT. As mentioned above, WORKOUT is a generic term for the subject
matter of the goods and services identified in the registrations, and appropriately
has been disclaimed in each registration. Descriptive and disclaimed matter
typically is less significant or less dominant when comparing marks. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000), quoting In re National Data Corp., 224 USPQ at 752 (Fed. Cir. 1983)
(“Regarding descriptive terms, this court has noted that the descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion.”). Thus, the addition of the generic word WORKOUT is not sufficient to
distinguish the marks. See In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004).
Because of the overall similarities of the marks, consumers are likely to view
NO EXCUSES and NO EXCUSES WORKOUT as variations of each other, with
both marks indicating a single source for the goods and services. Even if we treat
NO EXCUSES as mildly suggestive of an exercise program that is convenient and
time-efficient, this term has the same meaning for petitioner’s goods and the goods
Cancellation Nos. 92052836 & 92052844

14

and services described in the registrations. Therefore, we find that the parties’
marks are substantially similar in sound, appearance, connotation and commercial
impression.
We turn next to a consideration of the goods and services, channels of trade
and class of purchasers. As noted above, the identification of goods in Registration
No. 3792022 includes audio and video recordings, DVDs and pre-recorded CDs,
video tapes and laser discs all featuring exercise, fitness and weight loss methods.
The record shows that petitioner uses the substantially similar NO EXCUSES mark
on exercise and fitness videos (Abdo Test., pp. 8, 10, 18), and that respondent’s
identified goods must be deemed to encompass the type of videos on which
petitioner uses its mark. We make our determination about likelihood of confusion
based on the goods and services as they are described in respondent’s registrations.
Octocom Systems, Inc., v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). This is sufficient for us to find that petitioner’s
goods and the goods in Registration No. 3792022 are legally identical, and for this
factor to favor petitioner. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net,
Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Further, the various educational, entertainment, health club and personal
training services identified in Registration No. 3391997 also pertain to exercise,
fitness and weight loss, the subjects of petitioner’s videos and manual. It is well
recognized that goods and services may be related if they involve the same subject
Cancellation Nos. 92052836 & 92052844

15

matter. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed.
Cir. 1988) (furniture and general merchandise store services); INB National Bank v.
Metrohost, Inc., 22 USPQ2d 1585, 1587-1588 (TTAB 1992) (banking services and
credit cards); Steelcase, Inc. v. Steelcare, Inc., 219 USPQ 433, 435 (TTAB 1983)
(furniture and furniture refinishing). We therefore find that petitioner’s exercise
and fitness videos and manual are related to the services recited in Registration No.
3391997.
Because there are no limitations as to channels of trade or classes of
purchasers in the descriptions of goods and services in respondent’s registrations, it
is presumed that respondent’s goods and services move in all channels of trade
normal for those goods and services, and that they are available to all classes of
purchasers for those goods and services. See Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Packard
Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1360-61, 56 USPQ2d 1351, 1357
(Fed. Cir. 2000) (“When the registration does not contain limitations describing a
particular channel of trade or class of customer, the goods or services are assumed
to travel in all normal channels of trade.”). Such purchasers would include
individuals who are too busy to exercise at a gym. Respondent’s principal, Mr.
Roche, confirmed this presumption. Roche Test., p. 37 (“our target customer is
really a stay-at-home mom who’s too busy to go to a gym.”). Petitioner also targets
the same class of customers. Abdo Test., p. 8. Likewise, both parties presented
testimony that they sell or give away their exercise videos at educational events.
Cancellation Nos. 92052836 & 92052844

16

Abdo Test., pp. 16, 41; Roche Test., p. 181. We therefore find that the classes of
purchasers and the channels of trade are, at least in part, the same.
Conclusion
We have confined our discussion to the du Pont factors discussed by the
parties. To the extent that any other factors are relevant, we have treated them as
neutral.
For the reasons discussed above, we find that respondent’s mark NO
EXCUSES WORKOUT, as used on respondent’s goods and in connection with
respondent’s services, so closely resembles petitioner’s earlier used mark NO
EXCUSES, as to be likely to cause confusion, mistake or deception as to the source
of respondent’s goods and services.

Decision: The petition for cancellation is sustained as to each registration.
Respondent’s Registrations Nos. 3792022 and 3391997 will be cancelled in due
course.13

13 We need not decide petitioner’s second motion for leave to amend the pleadings to add
claims of fraud and abandonment, as entry of judgment on the likelihood of confusion claim
will result in cancellation of respondent’s registrations, and judgment on the additional
claims “would neither bar [respondent] from filing a new application nor allow petitioner to
challenge it on the basis of claim preclusion,” as the claims relate specifically to the
procurement and use of the involved registrations. Multisorb Tech., Inc. v. Pactiv Corp.,
109, USPQ2d 1170, 1172 (TTAB 2013). “We see no point in this instance in engaging in
further litigation over whether the registration was procured by fraud when the only
remedy — cancellation of this registration — has already been granted and a decision on
the fraud claim would have, at best, limited effect on petitioner's ability to challenge any
future attempt by respondent to register the mark.” Id.