Craig R. Bellv.Andre Henderson d/b/a Flavorz

Trademark Trial and Appeal Board

Aug 23, 2016

No. 91211637 (T.T.A.B. Aug. 23, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bell
v.
Henderson
_____

Opposition No. 91211637
to Application Serial No. 85726991
_____

Craig R. Bell, pro se.

Jesse D. Lambert, Esq.
for Andre Henderson.
_____

Before Quinn, Greenbaum and Adlin, Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Andre Henderson, doing business as Flavorz (“Applicant”), filed an application to
register the mark shown below

Opposition No. 91211637

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for “apparel and accessories, namely, men's and women's tee shirts, shoes, socks,
belts, jackets, pants, hats, hooded sweatshirts, bandanas, and headbands” in
International Class 25.1
Craig R. Bell, doing business as Destineé - Eploriums (“Opposer”), opposed
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark, when used in connection with Applicant’s goods, so
resembles Opposer’s previously used and registered RIDE HARD marks for clothing,
namely t-shirts, sweatshirts, pants, hats and jackets, as well as for decals and
stickers, as to be likely to cause confusion.
Applicant, in his answer, denied the salient allegations of likelihood of confusion,
and raised certain affirmative defenses.2
Before turning to the merits of this proceeding, we direct our attention to a
procedural matter. In an order dated August 25, 2014 (8 TTABVUE), the Board
recounted that it held on the same day a telephone conference with pro se Opposer
and counsel for Applicant “to discuss proceeding via ACR [Accelerated Case
Resolution]. The Board further indicated as follows:

1 Application Serial No. 85726991, filed September 12, 2012 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce
on October 31, 1998. The application includes the following description: “The mark consists
of a shield with two banners scrolled across the upper and lower parts, a crown above six
stars across the top, and lines radiating outward. The crest is superimposed over a pair of
outstretched wings, and the term ‘WORK HARD’ is at the top of the design, with the term
‘RIDE HARDER’ along the bottom.”
2 None of the affirmative defenses was pursued during ACR or argued in Applicant’s brief.
Accordingly, these defenses are deemed waived. Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118
USPQ2d 1392, 1394 n.4 (TTAB 2016); ProMark Brands Inc. v. GFA Brands, Inc., 114
USPQ2d 1232, 1236 (TTAB 2015).
Opposition No. 91211637

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During the conference, the parties agreed to proceed via
ACR using the ACR summary judgment model. The parties
were advised that they must stipulate that the Board can
decide any genuine disputes of material fact under this
type of ACR model. The Board advised the parties that it is
also helpful to file a stipulation of undisputed facts. Page
limits for briefing were also discussed.

The parties were not ready to stipulate to all ACR
procedures but expect to file their stipulation within
SIXTY DAYS of this ACR teleconference. The parties are
directed to the TTAB website for examples of ACR
stipulations, via the ACR case list, and it is also suggested
that the parties review TBMP Section 702.04(b) and 528
with respect to the ACR summary judgment model.

In view of “the parties’ intent to proceed via ACR,” the Board reset trial dates.
The parties never filed a stipulation. It is clear from their briefs, however, that
they contemplate that this case will be decided under the Board’s ACR authority. In
fact, one day before his testimony period closed, Opposer filed his brief, accompanied
by exhibits. Applicant in turn filed his brief on the last day of his testimony period,
stating: “The parties had a telephone conference with an Interlocutory Attorney,
regarding proceeding via ACR, and on August 25, 2014 an order issued authorizing
the parties to proceed via the ACR summary judgment model, effectively agreeing
and requesting that the Office decide the matter on the basis of the submitted briefs.”
(22 TTABVUE 3). In his brief, Applicant treated all of Opposer’s exhibits as of record.
Pursuant to an additional stipulated extension, Opposer’s rebuttal testimony period
Opposition No. 91211637

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was set to close on March 31, 2016, and on that day Opposer filed his reply brief,
together with additional evidence.3
Notwithstanding the absence of a stipulation from the parties, it is clear that they
wish this case to be handled by way of ACR. In view of the teleconference, the Board’s
resulting order and the parties’ actions in this case, including their remarks in the
briefs, we will decide this case under ACR. See TBMP §§ 528.05(a)(2); 702.04; 705.
The evidence submitted with the briefs will be considered.
The record consists of the involved application; the pleadings; copies of Opposer’s
pleaded registrations; photographs showing actual use of Opposer’s mark on decals
and caps; and official records (Office actions in third-party applications).
Opposer owns, inter alia, the following valid and subsisting registrations:
RIDE HARD in the stylized form shown below

for “T-shirts, sweatshirts, sweatpants, shorts, and hats, lycra shorts, pants, and
shirts sets, and jackets” in International Class 25;4 and RIDE 1 HARD (in standard

3 Applicant filed a surreply brief. Because the rules do not provide for the filing of a surreply
brief by a party in the position of defendant, this brief is stricken, and given no consideration.
TBMP § 539 (2016). See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464,
1465 n.3 (TTAB 1993) (motion to strike portions of opposer’s reply brief on the case given no
consideration since motion was essentially attempt by applicant to file a surreply brief);
Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 863 n.3 (TTAB 1985)
(defendant’s rejoinder brief stricken).
4 Registration No. 1961494, issued March 12, 1996; renewed.
Opposition No. 91211637

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characters) for “headgear, namely, hats and baseball caps; T-shirts” in International
Class 25.5 We focus our attention on these registered marks, which we find to present
Opposer’s strongest case: the marks are the closest to Applicant’s mark, and the goods
are the most similar. Opposer’s other registrations cover decals and stickers. If
confusion is likely between Applicant’s mark and the marks in these two
registrations, there is no need for us to consider the likelihood of confusion with
Opposer’s other pleaded RIDE HARD marks for decals and stickers; while if there is
no likelihood of confusion between these marks, it would be even less likely between
Applicant’s mark and Opposer’s other pleaded marks. See The North Face Apparel
Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015); Fiserv, Inc. v.
Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015).
Opposer established his standing to oppose registration of the applied-for mark by
virtue of his registrations of the marks RIDE HARD and RIDE 1 HARD for the recited
goods. Thus, Opposer has shown that he is not a mere intermeddler. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
As a result of Opposer’s ownership of valid and subsisting registrations for his
RIDE HARD and RIDE 1 HARD marks, priority is not at issue with respect to the

5 Registration No. 3633749, issued June 9, 2009; Sections 8 and 15 affidavit accepted and
acknowledged.
Opposition No. 91211637

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Class 25 goods identified in Opposer’s pleaded registrations. King Candy, Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
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 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, two key considerations are the similarities
between the marks and the similarities between the goods. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to the du Pont factor involving the similarity of the goods. We must
look to the goods as identified in the pleaded registrations and the application. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014), quoting Octocom Sys., Inc. v. Houston Computers Servs.,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co.,
97 USPQ2d 1990, 1991 (TTAB 2011). We acknowledge that there is no per se rule
governing likelihood of confusion involving clothing items. In re British Bulldog, Ltd.,
224 USPQ 854 (TTAB 1984). However, the goods involved in this case are, in
significant part, identical, and Applicant does not contend otherwise. Both parties list
“t-shirts, jackets, pants, hats and sweatshirts” in their respective identifications of
goods. Likelihood of confusion must be found if there is likely to be confusion with
respect to any item that comes within the identifications of goods in the pleaded
registrations and in the application. See Tuxedo Monopoly, Inc. v. General Mills Fun
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Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116
USPQ2d 1406, 1409 (TTAB 2015).
Given the identity of the goods, we presume that the goods travel through the
same channels of trade (e.g., clothing stores and clothing sections of department
stores), and are offered to the same ordinary potential purchasers. See In re Yawata
Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are
legally identical goods, the channels of trade and classes of purchasers are considered
to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
In view of the nature of the goods, the purchasers would include ordinary
consumers, who would be expected to exercise nothing more than ordinary care in
their clothing purchasing decisions. Further, these clothing items (such as t-shirts)
can be relatively inexpensive (there is no price point reflected in Opposer’s and
Applicant’s identifications of goods, so the clothing items are construed to encompass
inexpensive items), lending themselves to an impulse purchase. “When products are
relatively low-priced and subject to impulse buying, the risk of likelihood of confusion
is increased because purchasers of such products are held to a lesser standard of
purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899
Opposition No. 91211637

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(Fed. Cir. 2000); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669,
223 USPQ 1281, 1282 (Fed. Cir. 1984).
The du Pont factors of the identity of the goods and trade channels, as well as the
identity of the impulse conditions under which and buyers to whom sales are made,
weigh heavily in favor of a finding of likelihood of confusion.
With respect to the first du Pont factor dealing with the similarity of the marks,
we must compare Opposer’s pleaded marks with Applicant’s mark in their entireties
as to appearance, sound, connotation and commercial impression. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ
at 567. “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
In comparing the marks, we are mindful that where, as here, Opposer’s and
Applicant’s goods, as identified, are identical in part, the degree of similarity between
the marks necessary to find likelihood of confusion need not be as great as where
Opposition No. 91211637

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there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); United Global Media
Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Jansen Enters. Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007).
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the mark’s commercial
impression. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“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. Indeed, this type of
analysis appears to be unavoidable.”). In general, when a mark contains words and a
design, such as Applicant’s mark, then the words are normally accorded greater
weight because the words are likely to make an impression upon purchasers, would
be remembered by them, and would be used by them to request the goods. CBS, Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark
comprising a design and words, the verbal portion of the mark is the one most likely
to indicate the origin of the goods to which it is affixed”); Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Thus, it
Opposition No. 91211637

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is likely that consumers, when encountering Applicant’s mark, will focus on the
literal portion, namely the words WORK HARD RIDE HARDER. We remain
cognizant, however, of the fundamental rule in this situation, that is, Opposer’s and
Applicant’s marks must be considered in their entireties. See Jack Wolfskin
Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1134 (Fed. Cir. 2015).
Both of Opposer’s marks, RIDE HARD in stylized form and RIDE 1 HARD in
standard characters, are similar in appearance to Applicant’s mark WORK HARD
RIDE HARDER and design. Applicant’s mark has merely added the superlative suffix
“-er” to RIDE HARD to form RIDE HARDER. Although the design feature and
additional words WORK HARD in Applicant’s mark contribute to a difference in
appearance, the literal portions, RIDE HARD, RIDE 1 HARD and WORK HARD
RIDE HARDER, look more alike than different. Further, the stylization of Opposer’s
mark RIDE HARD has a minimal impact in distinguishing the marks, and those
familiar with Opposer’s marks could view Applicant’s mark as a variation or brand
extension thereof.
As to sound, both marks sound similar to the extent that they include RIDE
HARD and RIDE HARDER. The design feature in Applicant’s mark would not be
pronounced and, thus, does not contribute to any difference in sound. Although
Applicant’s mark also includes the literal portion WORK HARD, the similarity in
sound outweighs the dissimilarity.
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The WORK HARD portion of Applicant’s mark lends it an additional meaning,
namely that after “working hard” one should “ride harder” on, for example, a
motorcycle (or bicycle). Nevertheless, Opposer’s and Applicant’s marks convey the
same idea that one should ride a motorcycle (or bicycle) “hard,” that is, “in an intense
manner,” with “great energy, intensity or persistence.”6 Thus, to that extent, the
marks convey similar meanings. The record is devoid of any third-party uses or
registrations of similar marks in the clothing field, or any other evidence, to show
that RIDE HARD is a weak mark. See Jack Wolfskin Ausrustung Fur Draussen
GmbH v. New Millennium Sports, S.L.U., 116 USPQ2d at 1136; Juice Generation,
Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).
The marks engender overall commercial impressions that are similar. Thus, we
find the marks are sufficiently similar, especially when used in connection with
identical, inexpensive goods, that consumers are likely to be confused as to source.
This du Pont factor weighs in Opposer’s favor.
The parties agree that there have not been any instances of actual confusion
between the marks, but it is not necessary to show actual confusion in order to
establish likelihood of confusion. Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1380 (Fed. Cir. (2002); Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), aff’g HRL Associates,

6 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). See In re Thomas
White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013).
Opposition No. 91211637

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Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989). In any event, there is no
corroborating evidence regarding the extent of use of the parties’ marks, which leaves
us unable to gauge whether there have been meaningful opportunities for instances
of actual confusion to have occurred in the marketplace. See Cunningham v. Laser
Golf Corp., 55 USPQ2d at 1847. Accordingly, the du Pont factor of the length of time
during and conditions under which there has been contemporaneous use of the marks
without evidence of actual confusion is considered neutral.
In making our decision, we have not relied on the Office actions furnished by
Opposer. These actions were issued in third-party applications involving different
parties and different marks from the ones involved herein. Simply put, this evidence
is irrelevant to whether there is a likelihood of confusion between the marks herein.
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”). The USPTO must examine each application on its own merits based
on the record in the application under consideration and neither the USPTO's
Examining Attorneys nor the Board are bound by the decisions of other Examining
Attorneys in other applications. See In re Cordua Rests., Inc., 823 F.3d 594, 118
USPQ2d 1632, 1635 (Fed. Cir. 2016); In re Shinnecock Smoke Shop, 571 F.3d 1171,
91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In re Loggerhead Tools, Inc., 119 USPQ2d
1429, 1440 (TTAB 2016). Similarly, contrary to the gist of one of Applicant’s
arguments, we likewise give little probative value to the fact that the Examining
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Attorney, when conducting a likelihood of confusion search in examining Applicant’s
application, did not cite any of Opposer’s registered marks as a bar under Section
2(d).
We conclude that consumers familiar with Opposer’s clothing items sold under
the marks RIDE HARD and RIDE 1 HARD would be likely to mistakenly believe,
upon encountering Applicant’s mark WORK HARD RIDE HARDER and design for
identical goods subject to impulse purchase, that the goods originate from or are
associated with or sponsored by the same entity.
Decision:
The opposition is sustained, and registration is refused.