Nfinity IP, LLCv.Wooter, LLC

Trademark Trial and Appeal Board

Mar 9, 2021

91241564 (T.T.A.B. Mar. 9, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: March 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
TRADEMARK TRIAL AND APPEAL BOARD
_____

Nfinity IP, LLC
v.
Wooter, LLC

Opposition No. 91241564
to Serial No. 87493133

Todd Deveau of Thomas Horstemeyer LLP for Opposer, Nfinity IP, LLC.

Robert Garson of Garson, Segal, Steinmetz, Fladgate LLP for Applicant,
Wooter, LLC.

_____

Before Mermelstein, Kuczma and English,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Wooter, LLC (“Applicant”) filed an application under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), to register the following mark on the Principal
Register:

Opposition No. 91241564
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for:
Sports bags, in International Class 18; and
Hoodies; Shorts; Socks; Sports shirts; Sports caps and hats;
Sports shirts with short sleeves; Sweatpants; Sports
jackets; Sweat jackets, in International Class 25.1
Nfinity IP, LLC (“Opposer”) opposes registration of Applicant’s mark on the
ground of likelihood of confusion under § 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), based on its ownership of the following registrations:
Registration No. 3075134 for the mark 2 for:
Athletic shoes, in International Class 25;
Registration No. 3865939 for the mark 3 for:
Bags, namely, athletic bags, duffel bags, tote bags and
backpacks, in International Class 18;

1 Application Serial No. 87493133 was filed on June 16, 2017, based on Applicant’s claim of
first use anywhere and first use in commerce for the goods in International Classes 18 and
25 since at least as early as June 1, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a). “The mark consists of stylized, interrupted infinity representation.”
2 Registration No. 3075134, renewed.
3 Registration No. 3865939, renewed. “The mark consists of an infinity symbol.”
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Clothing, namely, shirts, sweatshirts, jackets, socks,
uniforms, pants, shorts and clothing for athletic use,
namely, padded combination elbow, arm and palm
compression sleeves; shoes and footwear, in International
Class 25; and
Protective pads for volleyball and basketball, in
International Class 28;
Registration No. 3938591 for the mark 4 for:
Clothing, namely, shirts, sweatshirts, jackets, pants and
shorts; hats and caps; shoes and footwear, in International
Class 25; and

Registration No. 3975302 for the mark 5 for:
Clothing, namely, hats and caps, in International Class 25.
In its Answer to the Notice of Opposition, Applicant denied the salient allegations
and alleged affirmative defenses (which are not true affirmative defenses but
constitute amplifications of Applicant’s denials of the allegations of likelihood of

4 Registration No. 3938591, §§ 8 & 15 accepted and acknowledged. “The mark consists of an
infinity symbol under which is the word ‘NFINITY.’”
5 Registration No. 3975302, §§ 8 & 15 accepted and acknowledged. “The mark consists of an
infinity symbol.”
Opposition No. 91241564
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confusion).6 See Trademark Rule 2.106(b)(2), 37 C.F.R. § 2.106(b)(2); TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 311.02(b) (2020).
I. Accelerated Case Resolution
The parties agreed to resolve this proceeding by Accelerated Case Resolution
(“ACR”) in lieu of trial during a telephone conference with the Board Interlocutory
Attorney. The Board’s Order of February 20, 2020, approved the parties’ stipulation
to proceed by ACR and their agreement regarding the ACR procedure for this case
namely, that:
- The parties agreed to forego their trial periods and stipulated that they will
file ACR briefs with accompanying evidence and those filings will be treated
as the final record and briefs;7

- The Board may resolve any genuine disputes of material fact that may be
presented by the record or which may be discovered by the final hearing
panel;

- Evidence will be filed concurrently with the ACR briefs and all documents
produced by the parties shall be deemed authentic under the Federal Rules
of Evidence;

- The parties reserved the right to object to the evidence on the grounds of
competency, relevance and materiality;

- No cross examination of declarants whose declarations are filed with the
ACR briefs;

- The parties waived the requirement for pretrial disclosures; and

- The parties agreed to a briefing schedule and the page length of the opening
briefs and Opposer’s reply brief.

6 6 TTABVUE.
7 The parties also agreed before ACR briefing to submit stipulations regarding certain facts
in this case, but no factual stipulations were filed. See February 20, 2020 Order (18
TTABVUE 2).
Opposition No. 91241564
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We note that regardless of an ACR stipulation, Opposer, as the party in the
position of plaintiff in this proceeding, bears the burden of proof, requiring Opposer
to prove its case by a preponderance of the evidence. B&B Hardware, Inc. v. Hargis
Industries, Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015) (“The party opposing
registration bears the burden of proof, see § 2.116(b), and if that burden cannot be
met, the opposed mark must be registered, see 15 U.S.C. § 1063(b)”);
Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307,
1311 (Fed. Cir. 1989) (plaintiff’s burden is to establish the case by a preponderance
of the evidence).
In accordance with their stipulation, both parties filed ACR briefs, and Opposer
filed a reply ACR brief.
II. Evidentiary Matters
Applicant objects to certain testimony offered in the Declaration of Opposer’s
witness Foy N. Chalk, Jr., based on Mr. Chalk’s prior discovery deposition testimony
that “he did not have the information sought.”8 Applicant asserts that Mr. Chalk
provides information in his Declaration that was sought, but not provided in his
discovery deposition.
In view of Mr. Chalk’s deposition testimony on page 70, lines 20-22 (25 TTABVUE
71) regarding whether Opposer “sell[s] into stores at all,” Applicant objects to the

8 Applicant’s ACR Brief p. 28-30 (32 TTABVUE 29-31). In an October 20, 2020 Order,
Applicant’s Motion to Strike the Declaration of Foy N. Chalk, Jr., (“Chalk Declaration”)
submitted with Opposer’s ACR Brief (23 TTABVUE 146-166), was denied. 30 TTABVUE.
However, the Order noted that a specific objection to Mr. Chalk’s testimony during his
discovery deposition could be raised in Applicant’s final ACR brief. 30 TTABVUE 6.
Opposition No. 91241564
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subsequent testimony in paragraph Nos. 12 and 13 of the Chalk Declaration (23
TTABVUE 148) regarding the sales and promotion of Opposer’s goods. Applicant’s
counsel’s examination of Mr. Chalk during his deposition addresses whether Opposer
“sells into stores at all” and does not clarify what types of “stores,” i.e., whether this
addressed wholesale or retail stores, Opposer’s “pop-up stores”9 or any other types of
“stores.”
Applicant also objects to paragraph Nos. 25, 26, 28, and 36-42 of the Chalk
Declaration (23 TTABVUE 150-53), as allegedly precluded by the deposition
testimony on page 92, line 23 through page 93, line 11 of the Chalk deposition
transcript (25 TTABVUE 93-94). Applicant’s counsel asked Mr. Chalk if he knew, in
his personal capacity, exactly how many followers each social media account had, to
which Mr. Chalk stated at that time that he “couldn’t speak specifically. It’s
significant.” (see 25 TTABVUE 93-94). Mr. Chalk apparently looked up and provided
that information, which he attested to in his Declaration.
In general, a party that responds to a request for discovery by indicating that it
does not have the information sought, or by stating objections thereto, may be barred
from later introducing the information sought in the request as part of its evidence
on the case provided that the party that propounded the request preserves the
objection in its brief on the case. See TBMP § 527.01(e).10 That is not what happened
in this case. Opposer’s Pretrial Disclosures clearly indicate that Mr. Chalk would

9 See Chalk Declaration, ¶ No. 13 (“Nfinity also promotes and sells its goods to the general
public through physical pop-up stores, . . . ”). 23 TTABVUE 148.
10 30 TTABVUE 5.
Opposition No. 91241564
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provide testimony regarding matter based on Mr. Chalk’s knowledge as an agent or
representative of Opposer as detailed in Opposer’s Pretrial Disclosures including
testimony regarding documents and information provided during discovery. (7
TTABVUE 2-3). Applicant took the deposition of Mr. Chalk in his personal capacity11
while his Testimony Declaration was “based on his personal knowledge and Opposer’s
business records.”12 Thus, Mr. Chalk’s testimony set forth in his Declaration was not
based solely on his personal knowledge and does not appear to be at odds with his
personal deposition testimony. Applicant’s objection is overruled.
III. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s Application Serial No. 87493133, which is
the subject of this proceeding. Additionally, the parties introduced the following
evidence:
Opposer’s evidence:
1. Evidence supported by Declaration of Hannah Reyes (litigation paralegal at
Opposer’s counsel’s law firm) submitted with Opposer’s Opening Accelerated
Case Resolution Brief (23 TTABVUE):

 Exhibit A: Atlanta Journal-Constitution article regarding Opposer
(23 TTABVUE 30-38);

 Exhibit B: Instagram posts showing third-party uses of Nfinity tags
(23 TTABVUE 39-46);

11 See 30 TTABVUE 2.
12 Chalk Declaration ¶ 1 (23 TTABVUE 146).
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 Exhibit C: Screenshot of Alex Aleksandrovski’s (founder of
Applicant) LinkedIn Profile www.linkedin.com (23 TTABVUE 47-
49);

 Exhibit D: Applicant’s custom uniforms and apparel on
wooterapparel.com (23 TTABVUE 50-55);

 Exhibit E: Applicant’s Apparel featuring products offered on
wootershop.com (23 TTABVUE 56-64);

 Exhibit F: Applicant’s apparel shown on wootershop.com (23
TTABVUE 65-67);

 Exhibit G: fan shops listed on wootershop.com (23 TTABVUE 68-75);

 Exhibit H: Applicant’s apparel listed on Yelp (23 TTABVUE 76-114);

 Exhibit I: Better Business Bureau listing of customer reviews for
Wooter, LLC (23 TTABVUE 115-126);

 Exhibit J: Images from Opposer’s website offering NFINITY T-shirts
www.nfiniti.com (23 TTABVUE 127-130);

 Exhibit K: Images from Opposer’s website offering NFINITY athletic
cap www.nfinity.com (23 TTABVUE 131-135);

 Exhibit L: Images from Applicant’s website offering athletic caps and
related products https://wootershop.com (23 TTABVUE 136-141);

 Exhibit M: screenshot of TSDR printout for Serial No. 77683900 (23
TTABVUE 142-144)

2. Testimony Declaration of Foy N. Chalk, Jr. Managing Member of Opposer (23
TTABVUE 146-156):

 Exhibit A: Wayback Machine screenshot of the www.nfinity.com/
volleyball website from 2009 displaying Opposer’s marks (23
TTABVUE 157-158);

 Exhibit B: examples of Opposer’s promotional use of its marks (23
TTABVUE 159-161); and

 Exhibit C: images of backpacks, shoes, sports bras, caps, shorts and
leggings sold under Opposer’s marks (23 TTABVUE 162-166).
Opposition No. 91241564
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Additionally, Opposer submitted copies of reports from the Trademark Electronic
Search System (TESS) and the Trademark Status & Document Retrieval database
(TSDR) showing the current status and title of its pleaded Registration Nos. 3075134,
3865939, 3938591, and 3975302, attached as Exhibit A to the Notice of Opposition,
which are received into evidence and made part of the record. 37 C.F.R. § 2.122(d).
Applicant’s evidence:
1. Discovery Deposition of Foy Chalk, Jr., member of Opposer (25 TTABVUE)
with Exhibits:

 Defendant’s Exhibit A: Notice of Deposition of Foy N. Chalk, Jr. (25
TTABVUE 103);

 Defendant’s Exhibit B: Opposer’s Pretrial Disclosures (25 TTABVUE
104-108);

 Defendant’s Exhibit C: TESS search for marks having design code
for infinity symbol (25 TTABVUE 109-123);

 Defendant’s Exhibit D: TESS Search results (25 TTABVUE 124-141);

 Defendant’s Exhibit E: TESS Search results (25 TTABVUE 142-152);

 Defendant’s Exhibit F: Amazon.com portion of website, Nfinity
website (25 TTABVUE 153-174);

 Defendant’s Exhibit G: Applicant’s website https://wooterapparel
.com (25 TTABVUE 175-182);

 Defendant’s Exhibit H: TTABVUE search for documents containing
NFINITY (25 TTABVUE 183-185);

 Defendant’s Exhibit I: TSDR search results (25 TTABVUE 186-198);

 Defendant’s Exhibit J: Notice of Opposition (25 TTABVUE 199-226);

2. Notice of Reliance (Wooter’s Notice of Reliance No. 1) (31 TTABVUE 2-10):
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 Exhibits 1.1-1.20: copies of pages from Opposer’s website featuring
men’s and women’s products www.nfinity.com (31 TTABVUE 2-3,
11-21, 22-23, 24-28, 29-32, 33-36, 37-38, 39-44, 45-60, 61-70, 71-80,
81-84, 85-86, 87-88, 89-92, 93-95, 97-98, 99-100, 101-110, 111-114);

 Exhibits 2.1-2.12: copies of pages from Applicant’s Amazon webstore
(31 TTABVUE 3-4, 115-118, 119-126, 127-130, 131-138, 139-140,
141-145, 146-150, 151-155, 156-160, 161-164, 165, 166-170);

 Exhibits 3.1-3.5: copies of social media pages associated with
Opposer (31 TTABVUE 4, 171-174, 175-178, 179-180, 181-185, 186);

 Exhibit 4.1-4.6: copies of Google internet searches regarding Opposer
(31 TTABVUE 4-5, 187-188, 189-194, 195-196, 197-198, 199-200,
201-202);

 Exhibit 5.1-5.3: copies of employee reviews of Opposer on
Glassdoor.com (31 TTABVUE 5, 203-213, 214-225, 226-232);

 Exhibit 6: Series of Information Resources on Youth Subcultures:
Understanding Subgroups to Better Address Barriers to Learning &
Improve Schools authored by the UCLA Center for Mental Health in
Schools Program and Policy Analysis (31 TTABVUE 5, 233-244);

 Exhibit 7: list of various registered trademarks of infinity loops (31
TTABVUE 6-9, 245-284);

 Exhibit M: Applicant’s advertising materials and product packaging
(22 TTABVUE 3, 134-157).

3. Declaration of Alexander Aleksandrovski, founder and Chief Executive Officer
of Applicant (32 TTABVUE 33-35).

Opposer and Applicant submitted trial briefs and Opposer submitted a reply brief.
IV. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action, formerly referred to as “standing,” is a
threshold issue that must be proven by the plaintiff in every inter partes case. To
determine whether a party has established entitlement to a statutory cause of action,
Opposition No. 91241564
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we consider whether it has demonstrated a real interest in the proceeding and a
reasonable belief of damage. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020
USPQ2d 11277 (Fed. Cir. 2020) (discussing the application of the zone-of-interests
and proximate causation test under Lexmark Int’l, Inc. v. Static Control Components,
Inc., 572 U.S. 118 (2014)); see also Australian Therapeutic Supplies Pty. Ltd. v. Naked
TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020) (discussing
entitlement to bring a cause of action); Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting
Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063, 1064, remain applicable
as the tests “share a similar purpose and application.” Corcamore, 2020 USPQ2d
11277, at *7.
There is no dispute as to Opposer’s entitlement to a statutory cause of action.
Opposer has made of record its Registrations Nos. 3075134 and 3938591 for the mark
for athletic shoes and clothing items in International Class 25; and Nos.
3865939 and 3975302 for the mark for bags including athletic, duffel and tote
bags in International Class 18; clothing items, including hats, in International Class
25; and protective volleyball and basketball pads in International Class 28. Therefore,
Opposer possesses a real interest in the proceeding, is not an intermeddler and has
met the statutory requirement of establishing a reasonable belief of damage to oppose
registration of Applicant’s mark.
Opposition No. 91241564
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V. Ground for Opposition
To prevail on the ground of likelihood of confusion under § 2(d) of the Trademark
Act, it is Opposer’s burden to prove by a preponderance of the evidence both priority
of use and likelihood of confusion. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1848 (Fed. Cir. 2000); Otto Roth & Co. v. Universal Foods Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); WeaponX Performance Prods. Ltd. v.
Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018).
A. Priority
Because Opposer’s Registrations are of record, and Applicant has not
counterclaimed for cancellation of the Registrations, priority is not at issue in this
proceeding with respect to the marks and goods identified in Opposer’s Registrations.
See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). This is not disputed by Applicant.
B. Likelihood of Confusion
For purposes of our likelihood of confusion analysis, we focus on Opposer’s pleaded
Registration Nos. 3865939 and 3975302 for the mark . We find this mark to be
the most pertinent for our DuPont analysis. See In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). If we find a likelihood of confusion as to
this mark, we need not find it as to Opposer’s other registered mark (i.e., ). On
the other hand, if we do not reach that conclusion as to the mark , we likewise
would not find likelihood of confusion as to the other mark. See Fiserv, Inc. v. Elec.
Opposition No. 91241564
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Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015); Rocket Trademarks
Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 n.14 (TTAB 2011); In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
In determining the likelihood of confusion, we must analyze all of the probative
facts in evidence that are relevant to the factors set forth in DuPont, 177 USPQ at
567. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed.
Cir. 2018) (DuPont “articulated thirteen factors to consider when determining
likelihood of confusion”). We consider each DuPont factor for which there is evidence
and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). However, “each case must be decided on its own facts and the
differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197,
177 USPQ 386, 387 (CCPA 1973).
Two key considerations are the similarities between the marks and the
similarities between the goods. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort
Howard Paper Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have also
considered other DuPont factors for which the parties have submitted evidence
namely, the similarity of trade channels and the conditions under which and buyers
to whom sales are made, strength of Opposer’s mark, the nature and extent of actual
confusion, and the length of time of concurrent use of Opposer’s and Applicant’s
marks without evidence of confusion. DuPont, 177 USPQ at 567.
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Similarity of the Goods, Trade Channels and Classes of
Purchasers
We turn first to the second DuPont factor which involves consideration of the
“similarity or dissimilarity and nature of the goods or services as described in an
application or registration.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous.
Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Paula
Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Applicant’s goods are:
Sports bags, in International Class 18; and
Hoodies; Shorts; Socks; Sports shirts; Sports caps and hats;
Sports shirts with short sleeves; Sweatpants; Sports
jackets; Sweat jackets, in International Class 25.
Inasmuch as a definition of “athletic” is “active or gifted in sports . . . ”,13 Opposer’s
“athletic bags” in International Class 1814 are identical to Applicant’s “sports bags”
in International Class 18.
With respect to the clothing items in International Class 25, shorts, socks, and
hats are covered in Applicant’s application and Opposer’s Registration Nos. 3865939
and 3975302 for . Additionally, the shirts and jackets identified in Opposer’s

13 Definition of “athletic” 2c: active or gifted in sports, games or exercises. merriam-web
ster.com/dictionary/athletic. March 8, 2021.
The Board may sua sponte 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 definitions in online dictionaries that exist in printed
format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
14 See Opposer’s Registration No. 3865939 for the mark .
Opposition No. 91241564
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registration No. 3865939 are broad enough to encompass the sports shirts and sport
shirts with short sleeves, and sweat jackets in Applicant’s application. Sw. Mgmt.,
Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods in an
application or registration are broadly described, they are deemed to encompass all
the goods of the nature and type described).
Some of the parties’ recited goods are identical and the others are closely related.
Thus, customers could reasonably presume that the goods arguably bearing similar
marks originate from a common source. We need not address the similarity of all of
Applicant’s goods once relatedness is established for any item encompassed by the
respective recitations of goods in the application and Opposer’s registrations. See, e.g.,
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) (it is sufficient for a finding of likelihood of confusion if relatedness
is established for any item encompassed by the identification of goods or services
within a particular class in the application); Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014) (it is sufficient for a refusal based on likelihood of
confusion that relatedness is established for a good or service in each class).
Next, we consider the DuPont factor concerning the trade channels and classes of
purchasers. This factor relates to whether Opposer’s and Applicant’s identified or
presumptive trade channels and customers would result in a likelihood customers
would consider the parties’ identified goods and services as “emanat[ing] from the
same source.” Shen Mfg. Co., Inc. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350,
1356-1357 (Fed. Cir. 2004). There are no limitations as to trade channels or classes
Opposition No. 91241564
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of customers set forth in Applicant’s identified goods and most of the goods identified
in Opposer’s registrations.15 Because the goods overlap, we presume that both the
overlapping goods move in the same channels of trade and are available to the same
classes of ordinary customers. See Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1162 (application with no restriction on trade channels cannot be narrowed by
testimony that applicant’s use is restricted to a particular class of purchasers);
Cunningham v. Laser Golf, 55 USPQ2d at 1846 (affirming Board finding that where
the identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”); Am. Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011)
(where the services were legally identical, “the marketing channels of trade and
targeted classes of consumers and donors are the same”); see also In re Viterra, 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on
this legal presumption in determining likelihood of confusion). Thus, the second and
third DuPont factors strongly weigh in favor of a finding of likely confusion.
In view of the foregoing, we find that Applicant’s goods and Opposer’s goods are
identical in-part and otherwise closely related, travel in the same channels of trade,
and offered to the same classes of customers, strongly weighing in favor of a finding
of likely confusion under the second and third DuPont factors.

15 Opposer’s Registration No. 3865939 also includes “clothing for athletic use, namely, padded
combination elbow, arm and palm compression sleeves; shoes and footwear.”
Opposition No. 91241564
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Whether Purchasers of Opposer’s and Applicant’s Goods are
Impulsive
The fourth DuPont factor considers “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. Purchaser sophistication or the degree of care may tend to
minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items
may tend to have the opposite effect. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005)).
Opposer contends that its and Applicant’s in-part identical goods are relatively
inexpensive clothing goods such as athletic shirts and shorts, which are subject to an
impulsive purchase. In support, Opposer notes that Applicant’s t-shirts cost around
$20, Opposer’s t-shirts are similarly priced about $25 to $30, and both sell caps
bearing their respective logos for the price of $24.99.16 Opposer concludes that
confusion is likely “[g]iven the relative economic painlessness of such transactions.”17
Opposer’s limited evidence supports the conclusion that the ordinary nature of
Applicant’s and Opposer’s sports bags and clothing items usually worn as casual
attire are offered for sale to the general public and subject to impulse purchases.18
Thus, this factor is neutral.

16 See Opposer’s Exhibit F, screenshots of shirts for sale on Applicant’s website (23 TTABVUE
65-67); Exhibit J and K, screenshots of shirts and hats for sale on Opposer’s website (23
TTABVUE 127-135); Exhibit L, screenshot of hats for sale on Applicant’s website (23
TTABVUE 136-141).
17 Opposer’s ACR Brief p. 22 (23 TTABVUE 23).
18 Chalk Declaration ¶¶ 7-8, 12-13, 30-31 (23 TTABVUE 147-48, 151).
Opposition No. 91241564
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Strength of Opposer’s Marks
To determine the scope of protection to which Opposer’s marks, and particularly
its mark , is accorded, we consider the strength of this mark. In determining
strength, we consider both inherent strength, based on the nature of the mark itself,
and commercial strength or recognition. Bell’s Brewery, Inc. v. Innovation Brewing,
125 USPQ2d 1340, 1345 (TTAB 2017) (citing Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014)); see also In re Chippendales
USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength
is measured both by its conceptual strength . . . and its marketplace strength . . . .”).
Fame for likelihood of confusion purposes “varies along a spectrum from very
strong to very weak,” In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063
(Fed. Cir. 2003), and arises “as long as a significant portion of the relevant consuming
public . . . recognizes the mark as a source indicator.” Jos. Phelps Vineyards, LLC v.
Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734, (Fed. Cir. 2017)
citing Palm Bay Imps. v. Veuve Clicquot, 73 USPQ2d at 1694 (“[T]he proper legal
standard for evaluating the fame of a mark under the fifth DuPont factor is the class
of customers and potential customers of a product or service, and not the general
public.”).
Opposer introduces evidence including the Testimony Declaration of Foy N.
Chalk, Jr., its Managing Member, that it believes bears on the fame of its marks.19

19 Opposer’s ACR Brief pp. 5, 22-24 (23 TTABVUE 6, 23-25); Chalk Declaration ¶¶ Nos. 12,
13, 18, 21, 22, 25, 26, 28, 29, 35, 42, 50, 51 (23 TTABVUE 148-153, 156) (23 TTABVUE 146-
166).
Opposition No. 91241564
- 19 -
Relevant factors supporting fame include the volume of sales, advertising
expenditures, length of use of the mark, market share, brand awareness, licensing
activities, and the variety of goods bearing the mark. Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1896-97 (Fed. Cir. 2000); see also Bose Corp. v. QSC
Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“[O]ur
cases teach that the fame of a mark may be measured indirectly, among other things,
by the volume of sales and advertising expenditures of the goods traveling under the
mark, and by the length of time those indicia of commercial awareness have been
evident.”).
Opposer’s “market includes women’s, children’s and men’s sports, including
cheerleading, basketball and volleyball.”20 Beginning in 2004 and continuously since
then, Opposer has been offering athletic shoes, hats and caps, expanding its product
line to include “shirts, sweatshirts, jackets, socks, uniforms, pants, shorts, shoes and
footwear, clothing for athletic use, and protective equipment, and added various bags
including athletic bags, duffel bags, tote bags and backpacks.”21
The testimony provided by Mr. Chalk indicates that Opposer sells its products in
the wholesale and retail markets for athletic apparel, accessories, uniforms, footwear,
athletic bags, and attire aimed at women, men and children, through a number of
channels and outlets. Mr. Chalk’s testimony generally refers to sales and promotion
of its goods to the general public, including through field sales representatives, group

20 Chalk Declaration ¶ 5 (23 TTABVUE 147).
21 Chalk Declaration ¶¶ 7 and 8 (23 TTABVUE 147).
Opposition No. 91241564
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sales, direct sales, on social media (including Facebook, Instagram, Pinterest,
Twitter, and Vimeo), through online retail platforms domestically such as
amazon.com, ebay.com, championteamwear.com, cheerzone.com, and omnicheer.com,
and at athletic camps and competitions. Its goods are also promoted and sold to
schools as well as clubs and teams (team sales), including cheerleading, volleyball
and basketball teams and clubs.22
Mr. Chalk further testified that Opposer also sells its goods at physical pop-up
stores across the U.S., “typically coincid[ing] with the Nfinity Championships and
Nfinity Champions League, a series of cheerleading competitions produced,
sponsored, and hosted by Nfinity,”23 which draws “crowds of approximately 2000
attendees per day, including athletes and spectators.”24 Opposer also produces,
sponsors and hosts other special events including camps featuring training by top
coaches in the [cheerleading] industry, hosting “twelve camps in association with its
Marks . . . .”25 As of April 2, 2020, Opposer had 77,645 followers on Facebook,
over 208,000 followers on its Instagram account, @nfinityshoes, and over 70,000
followers on Twitter. Additionally, Opposer maintains a Youtube channel, Nfinity

22 Opposer’s ACR Brief p. 7 (23 TTABVUE 8) citing to Chalk Declaration at ¶¶ 4-5, 9, 12, 15,
16, 36 (23 TTABVUE 146-48, 152).
23 Chalk Declaration ¶¶ 13-14 (23 TTABVUE 148).
24 Chalk Declaration ¶¶ 18-19 (23 TTABVUE 149).
25 Opposer’s ACR Brief p. 7 (23 TTABVUE 8) citing Chalk Declaration at ¶ 21 (23 TTABVUE
149-150).
Opposition No. 91241564
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Athletic, which has 653,000 subscribers and 5 million views.26 While Opposer’s mark
appears to have a fair amount of exposure, the evidence is vague in many respects. It
is unclear as to the types of sports where the mark has been exposed. Much of the
testimony is directed to sales and promotion for cheerleading, and the little
documentary evidence there is seems to indicate that Opposer’s focus is cheerleading,
consistent with Mr. Chalk’s experience as a college cheerleading coach,27 with some
limited exposure in women’s volleyball and basketball.
One example highlighting Opposer’s overbroad evidentiary approach to support
the fame of its mark is Mr. Chalk’s testimony regarding a post by Alexis Kaufman,
aka Alexa Bliss, a “world-famous athlete that competes as a wrestler.”28 While Mr.
Chalk testified that Alexa Bliss has millions of followers on both Instagram and
Twitter, and that she “recently shared [an] image of her[self] wearing Nfinity shoes
bearing the mark” that was “liked” over half-a-million times, no image of Ms.
Bliss wearing her Nfinity shoes bearing the mark was attached to his
Declaration, only citations to twitter.com were provided.29 Although Mr. Chalk failed

26 Opposer’s Reply Brief at p. 10 (33 TTABVUE 14) referring to evidence discussed at
Opposer’s ACR Brief at pp. 8-9 (23 TTABVUE 9-10) citing Chalk Declaration ¶¶ 37-40 (23
TTABVUE 152-153).
27 Chalk Declaration ¶ 2 (23 TTABVUE 146).
28 Applicant’s ACR Brief pp. 21-22 (32 TTABVUE 22-23); Opposer’s ACR Brief p. 8 (23
TTABVUE 9); citing Chalk Declaration ¶¶ 24-25 (23 TTABVUE 150).
29 Chalk Testimony Declaration ¶¶ 24-25 n.4 (23 TTABVUE 150) citing to https:
//twitter.com/Alexa Bliss_WWE/status/1211301101582114822.
In support of various statements made in his Testimony Declaration, Mr. Chalk cites to
the following websites: Opposer’s website (www.nfinity.com), twitter.com, instagram.com,
sgbonline.com, yelp.com, the websites of various publications and a few youtube.com
channels. The citations to the various websites appear to be hypertext links appearing in blue
Opposition No. 91241564
- 22 -
to provide a copy of the image he was referring to, Applicant submitted the image
showing that the mark on Alexa Bliss’s shoe is virtually unrecognizable30:

Opposer offers no evidence relating to the dollar amount of its sales or its
marketing and advertising expenditures featuring its mark to substantiate the
statements set forth in Mr. Chalk’s Declaration, and the testimony on sales volume
is vague. For example, while Mr. Chalk testified that “based on information available
to [him], Nfinity has an approximate 95% market share for [the] cheerleading market
that includes uniforms, shoes, and other apparel, as determined by internal market
analysis,” no supporting evidence of volume of sales or cheerleading market analysis

text. Except for a few pages from Opposer’s website and youtube site attached as Exhibits A-
C to his Testimony Declaration, no copies of the cited web pages were included. Thus, the
cited web pages for which no copies were provided with his Declaration are not received into
evidence. Shael Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d
370880, at *2 (TTAB 2019); Grote Indus., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197,
1200 (TTAB 2019) (Board requires all submissions to be [on paper or] filed through ESTTA);
see also In re Future Ads LLC, 103 USPQ2d 1571, 1572 n.3 (TTAB 2012) (the Board “will not
utilize a link or reference to a website’s internet address to access the site to consider
whatever content may appear therein”).
30 Applicant’s Notice of Reliance Exhibit 3.5. (31 TTABVUE 186), image from https://twitter
.com/AlexaBliss_WWE/status/1211301101582114822.
Opposition No. 91241564
- 23 -
was provided.31 See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1720 (Fed. Cir. 2012). Additionally, Opposer notes that it has been
recognized with numerous awards and recognitions.32 It has hosted nationwide
competitions and camps.33 Yet all of this is supported only by the unsubstantiated
statements in Mr. Chalk’s Declaration.
While Opposer’s sales and promotional activities in the cheerleading market
appear to be strong over the time period covered in its evidence, details regarding the
markets served by such sales and promotional activities for goods bearing Opposer’s
mark through the present would be more supportive if they provided some indication
of Opposer’s sales versus sales of competitive products, as well as amounts spent on
advertising and promotion of goods bearing its mark. Likewise, corroborating support
for the awards and recognition that Mr. Chalk testified to and how it relates to
Opposer’s mark would also be helpful. See Omaha Steaks Int’l, Inc. v. Greater Omaha
Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1689-90 (Fed. Cir. 2018); Bose v. QSC
Audio, 63 USPQ2d at 1305 (“[T]he fame of a mark may be measured indirectly, among
other things, by the volume of sales and advertising expenditures of the goods
traveling under the mark, and by the length of time those indicia of commercial
awareness have been evident.”).

31 Opposer’s ACR Brief p. 24 (23 TTABVUE 25); citing Chalk Declaration at ¶ 49 (23
TTABVUE 155).
32 Chalk Declaration ¶ 43 (23 TTABVUE 153-54).
33 Chalk Declaration ¶¶ 33-34 (23 TTABVUE 151-52).
Opposition No. 91241564
- 24 -
Opposer also argues that it actively polices new registrations and enforces its
rights in the marks, engages watch services to monitor the filing of trademark
applications by others, has successfully prevented the unauthorized use or
registration of its marks, as well as various other stylized infinity marks,
concluding that its “robust enforcement program further strengthens” its mark.34
However, the fact that Opposer filed lawsuits or “brought a number of successful
trademark oppositions since its adoption of these stylized infinity marks” is not
reasonably probative of the fame inquiry, which is focused on whether Opposer’s
mark has achieved “extensive public recognition and renown,” not on enforcement
efforts. Omaha Steaks v. Greater Omaha Packing, 128 USPQ2d 1693 (citing Coach
Servs. v. Triumph Learning, 101 USPQ2d at 1720).
Despite Opposer’s argument that “[t]hrough its extensive sales, advertising, and
publicity . . . , Opposer’s Marks have become famous throughout the United
States,”35 the admissible evidence introduced by Opposer falls short of establishing
that Opposer’s design mark is strong enough to be famous.
While the evidence falls short of establishing fame for purposes of our likelihood
of confusion determination, the record supports a finding that Opposer’s mark is
inherently distinctive in view of its registration on the Principal Register, and
reasonably strong commercially.

34 Opposer’s ACR Brief p. 24 (23 TTABVUE 25) citing the Chalk Declaration ¶¶ 45-46 (23
TTABVUE 154-155).
35 Opposer’s ACR Brief p. 24 (23 TTABVUE 25).
Opposition No. 91241564
- 25 -
Similarity of the Marks
We next consider the DuPont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. In a particular case, any one of these means
of comparison may be critical in finding the marks to be similar. See Cai v. Diamond
Hong, 127 USPQ2d at 1800.
The parties’ marks in this case are design marks which are not capable of being
spoken. Thus, the question of the confusing similarity of the marks in this case must
be decided primarily on the basis of the visual similarity of the marks. See Diamond
Alkali Co. v. Dundee Cement Co., 343 F.2d 781, 145 USPQ 211, 213 (CCPA 1965)
(“When symbol marks such as these are being considered, appearance is most
significant.”); see also Gen. Foods Corp. v. Ito Yokado Co. Inc., 219 USPQ 822, 828
(TTAB 1983) (the comparison of design marks comes down to a “subjective ‘eye ball’
reaction”) (citing Long John Silver’s Inc., v. Lou Scharf Inc., 213 USPQ 263, 267
(TTAB 1982) (visual comparison of pirate design marks)). Additionally, where an
applicant’s goods are identical and closely related to the opposer’s goods, as they are
in this case, the degree of similarity between the marks that is necessary to support
a conclusion of likely confusion is less than it would be if the goods were not identical.
Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721; Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
“[S]imilarity in appearance between marks is really nothing more than a
subjective ‘eyeball’ test. Because a picture is worth a thousand words, there is little
in the way of guidelines to determine that degree of visual similarity which will cause
Opposition No. 91241564
- 26 -
a likelihood of confusion of buyers.” J. Thomas McCarthy, 4 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION, § 23:25 (5th ed. 2020).
The Board has found numerous instances of no likelihood of confusion for using
the same symbol where the marks are distinctly different in overall visual
appearance, even when used on competing products. See, for example:
 Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition,
L.L.C., 600 F.3d 1343, 93 USPQ2d 2030 (Fed. Cir. 2010)
(a “farm boy” for grocery items
versus
for grocery stores);
 National Rural Electric Cooperative Assoc. v. Suzlon
Wind Energy Corp., 78 USPQ2d 1881 (TTAB 2006),
aff’d, 214 Fed. App’x 987 (Fed. Cir. 2007) ( three
“zig-zag” lines for rural electrification training and
association services, and for wind turbines
and their components);
 In re TSI Brands, Inc., 67 USPQ2d 1657 (TTAB 2002)
(stylized “AK” symbols for apparel, applicant’s mark
versus cited registrant’s mark );
 Franklin Mint Corp. v. Master Mfg. Co., 209 USPQ 350,
354 (TTAB 1980) (opposer’s mark for coins, medals
medallions and applicant’s mark for jewelry);
 Alliance Mfg. Co., Inc. v. Allied Telephone Co.,
Opposition No. 91241564
- 27 -
182 USPQ 237 (TTAB 1974) (opposer’s mark for
electric motors and parts and applicant’s mark for
telephonic services are distinctly different in overall
appearance).
Opposer contends that the parties’ marks are similar in appearance, as “both are
representations of a stylized infinity symbol, wherein the outer loop portions do not
entirely connect to fully enclose the two internal sections.”36 According to Opposer,
the marks are applied to goods in such a way that average purchasers would assume
they originated from the same source, particularly when viewed as applied on the
respective goods. The following example shows the parties’ marks used on their
respective caps:

37 38

36 Opposer’s ACR Brief p. 17 (23 TTABVUE 18).
37 Image of Opposer’s hat (23 TTABVUE 132). While Opposer also features images of both
parties marks used on backpacks and athletic clothing (see pp. 18-19, 23 TTABVUE 19-20),
copies of both parties’ marks as used on such goods are not in the record.
38 Image of Applicant’s hat (23 TTABVUE 137).
Opposition No. 91241564
- 28 -
Opposer’s mark, which it identifies as “its ‘Infinity’ trademark,” has the
appearance of a stylized “infinity” symbol, i.e., a figure-eight on its side.39 In
Opposer’s mark, the “infinity” symbol overlaps in the middle completing the figure
eight. On the other hand, Applicant’s mark has the appearance of two circles that
open up into one another. The two circles in Applicant’s mark remain open and
“creat[e] an external disconnect with one internal space flowing into the other.”40
According to Applicant, the appearance of two circles is to remind customers of the
“OO” in Wooter.41 Applicant further distinguishes the marks by noting that the
“loops” in Opposer’s mark are more ovoid than those in Applicant’s mark which
appear much rounder.42 Additionally, the white spaces on the edges of the “infinity
loop” symbol in Opposer’s mark create a three-dimensional impression, whereas
Applicant’s mark appears completely flat, i.e., two-dimensional.43
The test, under the first DuPont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the respective marks is likely to
result. The emphasis must be on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks that may

39 Opposer’s ACR Brief p. 5 (23 TTABVUE 6).
40 Applicant’s ACR Brief p. 19 (32 TTABVUE 20).
41 Applicant’s ACR Brief p. 19 (32 TTABVUE 20).
42 Applicant’s ACR Brief p. 19 (32 TTABVUE 20).
43 Applicant’s ACR Brief p. 20 (32 TTABVUE 21).
Opposition No. 91241564
- 29 -
previously have been seen in the marketplace. Consideration must be given to the
fact that a purchaser’s recollection of design marks is often of a general and hazy
nature. See, e.g., Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 177 USPQ 573
(CCPA 1973); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990);
Bausch & Lomb Inc. v. Gentex Corp., 200 USPQ 117, 121 (TTAB 1978); Matsushita
Electric Indus. Co., Ltd. v. Sanders Assoc., Inc., 177 USPQ 720, 726 (TTAB 1973); see
also Johann Maria Farina Gegenuber Dem Julichs-Platz v. Chesebrough-Pond, Inc.,
176 USPQ 199, 200 (CCPA 1972).
Opposer’s mark features a stylized infinity symbol, while Applicant’s mark
features a stylized depiction of a design which does not convey the same impression
as Opposer’s mark. Apart from the fact that both marks feature two lobes, the marks
contain different elements, including lobes of different shapes and configurations.
The lobes in Opposer’s mark form the recognizable shape of the “infinity” symbol, and
the lobes in Applicant’s mark are of circular shape remaining open in-part, rendering
a different overall image and commercial impression. The descriptions of the parties’
marks in their respective Registrations and application also differ. Opposer’s marks
are described as consisting of “an infinity symbol,”44 while Applicant’s mark is
described as consisting of a “stylized, interrupted infinity representation.”45 Although
the parties’ designs to the extent they are reminiscent of an infinity symbol may be
frequently encountered in a broad sense, this is quite different from concluding that

44 See description of Opposer’s marks in Registration Nos. 3865939, 3938591 and 3975301.
45 See description of Applicant’s mark.
Opposition No. 91241564
- 30 -
they are the same or similar design. See, e.g., Red Carpet Corp. v. Johnstown Am.
Enters. Inc., 7 USPQ2d 1404 (TTAB 1988) (stylized design of houses found to be
dissimilar).
Although there is a general similarity in the parties’ marks, we find this similarity
is outweighed by the differences. When viewed in their entireties, the designs of
Opposer’s and Applicant’s marks are clearly distinct in overall appearance such that
they create different overall commercial impressions on purchasers.
The Number and Nature of Similar Marks in Use in
Connection with Similar Goods
The sixth DuPont factor considers “[t]he number and nature of similar marks in
use on similar goods,” and “addresses marks similar to an opposer’s registered mark,
to demonstrate the strength or weakness of that mark.” Stoncor Grp., Inc. v. Specialty
Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014); Palm Bay
Imps., v. Veuve Clicquot, 73 USPQ2d at 1693 (addressing significance of evidence of
third-party use of marks similar to a registered mark to assess the strength of that
mark). “The weaker [a registrant’s] mark, the closer an applicant’s mark can come
without causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Applicant argues that the sixth DuPont factor weighs against a likelihood of
confusion because the presence of the “infinity loop” in third-party registrations
Opposition No. 91241564
- 31 -
shows that Opposer’s mark is weak and entitled only to a narrow scope of protection.46
In support, Applicant introduces nineteen47 active third-party registrations for marks
containing the “infinity loop” symbol involving the same goods, or related goods, to
those listed in Opposer’s registrations:
Mark Registration No. Int’l Class Goods

4894840 25 Athletic apparel, namely,
shirts, pants, jackets,
footwear, hats and caps,
athletic uniforms; Athletic
tops and bottoms for sports
wear; Clothing, namely, tops,
shirts, bottoms, pants, shorts,
shoes, caps, hats, socks . . .

4679653 5

25

26

Preparations for repelling
water; Shoe deodorizers

Cleats for attachment to
sports shoes; Compression
garments for athletic or other
non-medical use, namely,
shirts, pants, calf sleeves, arm
sleeves; Insoles for footwear;
Socks

Shoe laces

(also goods in Classes 3 and
10)

46 Applicant’s ACR Brief p. 23 (32 TTABVUE 24).
47 See Applicant’s ACR Brief pp. 24-27 (32 TTABVUE 25-28); Applicant’s Notice of Reliance,
Exhibit No. 7 (31 TTABVUE 6-9, 245-284).
Registration No. 4378278 for the mark cited by Applicant has been cancelled for failure
to file a § 8 declaration and has not been considered. Applicant’s Notice of Reliance, Exhibit
No. 7 (31 TTABVUE 269-270). This cancelled registration is only evidence that the
registration issued, and is not evidence of use of the registered mark at any time. See, e.g.,
Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989) (“a canceled registration does not provide constructive notice of anything”).
Opposition No. 91241564
- 32 -

5857629 25 Athletic apparel, namely,
shirts, pants, jackets,
footwear, hats and caps,
athletic uniforms

5799319 25 Athletic apparel, namely,
shirts, pants, jackets,
footwear, hats and caps,
athletic uniforms

(also goods in Class 14)

5313523 25 Goods including: Men’s,
women’s, and children’s
apparel, namely, underwear,
footwear, caps, belts, bottoms,
cardigans, coats, dungarees,
gloves, golf shirts, head wear,
jackets, jeans, jogging suits,
knit tops, overalls, pants,
shirts, shoes and boots, shorts,
socks, polo shirts, sweaters,
sweatpants, sweatshirts, t-
shirts; Athletic apparel,
namely, hoodies, tops, sports
bras, and pants . . .

5629210 28 Goods including: Shin guards
and hand pads for athletic use;
Balls for games; Body-building
apparatus; Bows for archery;
Exercise equipment, namely,
exercise bands, training bars,
rowing machines, not for
physical therapy purposes;
Exercise weights; Boxing
gloves; Punching bags; Wrist
guards for athletic use . . .

5587601 25 Athletic apparel, namely, tops,
bottoms, hats, caps, shorts,
pants, shirts, jackets, vests,
bras, socks, gloves, leggings,
swimwear, and underwear
Opposition No. 91241564
- 33 -

4855344 25 Athletic tops and bottoms for
yoga; Yoga pants; Yoga shirts

6052759 25 Goods including: Footwear;
Boots; Athletic footwear;
Waterproof footwear; Leather
shoes; Leisure shoes; Socks;
Non-slip socks; Anti-
perspirant socks; Toe sock;
Insoles for footwear . . .

4699870 25 Goods including: Clothing,
namely, shirts, tops, t-shirts,
sweatshirts, sweaters,
pullovers, jackets, coats,
pants, sweatpants, jeans,
shorts, belts and wristbands;
athletic apparel, namely,
shirts, pants, jackets,
footwear, hats and caps,
jerseys and athletic uniforms;
footwear, namely, boots,
shoes, socks; headwear,
namely, hats, caps, visors . . .

4544497 25 Footwear; athletic footwear;
jackets, track jackets, track
pants, T-shirts, sweat shirts

4721956 25 Goods including: bandanas;
neckerchiefs; belts; footwear;
boots for sports; headwear;
clothing for gymnastics,
namely, shorts and shirts;
coats; gymnastic shoes; half-
boots; hats; headbands for
clothing; headwear; jackets;
leggings; knitwear clothing,
namely, shirts; leg warmers;
mittens; motorists’ clothing,
namely, jackets, shirts and
pants; outer clothing, namely,
coats, jackets; ready-made
clothing, namely, shirts,
Opposition No. 91241564
- 34 -
pants; rubber shoes; shirts;
shoes; ski boots; ski gloves;
socks; sweat socks; sweaters;
T-shirts; track suits . . .

(also goods in Classes 24 and
28)

4065534 25 Goods including: Camp shirts;
Golf shirts; Hooded sweat
shirts; Knit shirts; Long-
sleeved shirts; Open-necked
shirts; Polo shirts; Rugby
shirts; Short-sleeved or long-
sleeved t-shirts; Sports shirts;
Sweat shirts; Triathlon
clothing, namely, tights,
shorts, singlets, shirts, suits;
Wind shirts and pants; Yoga
shirts; Track pants;
Waterproof jackets and pants;
Yoga pants; Jogging pants; Ski
pants; Snow pants; Sweat
pants; Gym shorts; Rugby
shorts; Shorts; Denim jackets;
Fishermen’s jackets; Men’s
and women’s jackets; Rain
coats; Riding coats; Wind
coats; Athletic shoes; Baseball
shoes; Bowling shoes; Boxing
shoes; Canvas shoes; Cycling
shoes; Deck-shoes; Fitted shoe
or boot covering to protect
from water or other damage;
Football shoes; Golf shoes;
Gymnastic shoes; Handball
shoes; Hockey shoes . . .
5255270 28 Goods including: Elbow and
knee guards for athletic use;
and additional goods including
artificial fishing bait, hooks,
reels, tackle, rods and lines;
Body-building and body-
training apparatus;
Protective paddings for
Opposition No. 91241564
- 35 -
Taekwondo; Weight lifting
belts . . .

5203119 28 Goods including: Elbow
guards and knee guards for
athletic use; Appliances for
gymnastics; Balls for games;
Balls for sports; Body-training
apparatus; Boxing gloves;
Chest expanders; Dumbbells;
Exercise equipment, namely,
exercise bands, training bars,
rowing machines; Punching
bags; Shin guards for athletic
use; . . .

5073952 18
25
Gym bags
Athletic apparel, namely,
shirts, pants, jackets,
footwear, hats and caps,
athletic uniforms; Athletic
pants; Gym shorts

(also services in Class 41)

4989532 25 Goods including: Athletic
apparel, namely, shirts, pants,
jackets, footwear, hats and
athletic uniforms; Athletic
shirts; Jackets and socks;
Motorcycle gloves; Tee shirts .
. .

4298474 10

25
Arch supports for boots or
shoes

Work boots

(also goods in Class 1 and
services in Class 35)

6016532 25 Goods including: Athletic and
sports clothing, namely, pants,
shorts, shirts, t-shirts, and
hats; casual clothing, namely,
pants, shorts, shirts, t-shirts
and hats; clothing for sports,
Opposition No. 91241564
- 36 -
namely, pants, shorts, shirts,
t-shirts, and hats; clothing,
namely, hoods, jackets,
jerseys, and pants; martial
arts uniforms; clothing for
wear in jiu jitsu practice; . . .

In view of these third-party registrations for marks that include an “infinity”
symbol for goods including footwear, apparel, protective pads for sports or athletic
activities, and athletic and sports bags, Applicant argues that the “infinity loop
symbol” in Opposer’s marks is limited to the narrowest scope of protection.48
“[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’
even where the specific extent and impact of the usage has not been established.”
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least
fourteen examples of third-party registered marks used in commerce), citing to Juice
Generation v. GS Enters., 115 USPQ2d at 1674 (at least twenty-six relevant third-
party uses or registrations of record). The Federal Circuit has acknowledged that
evidence of third-party registrations is relevant to show that “some segment that is
common to both parties’ marks may have ‘a normally understood and well-recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak.’” Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136
quoting Juice Generation v. GS Enters., 115 USPQ2d at 1675.

48 Applicant’s ACR Brief p. 27 (32 TTABVUE 28).
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In this case, unlike Juice Generation and Jack Wolfskin, there is no evidence of
third-party uses of marks containing the “infinity” design. The fact that there are a
number of registered marks containing an infinity design does not reflect a crowded
marketplace, nor is it evidence of descriptiveness.
Instead, this is a case where the registrations indicate only that their owners
thought the infinity symbol to be an appropriate trademark for their goods. As
explained in Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA
1967):
All that the third-party registrations demonstrate is that
their owners believe the term “LILLY” to be appropriate for
a trademark for women’s dresses. The question still
remains whether the marks viewed as a whole are
confusingly similar. The existence of third-party
registrations of similar marks has very little weight on this
question.
Based on the marks shown in the registrations identified in the search,
Applicant’s mark is no more similar to Opposer’s mark than the registered marks
shown in the search results. Because “infinity” designs in a broad sense have been
registered by third-parties, in whole or in part, as marks in connection with goods
similar to those of both parties, i.e., footwear, apparel, protective pads for sports and
athletic activities, and athletic and sports bags, the dissimilarities in Opposer’s and
Applicant’s marks outweigh the similarities. However, this evidence by itself is
entitled to very little weight.
Actual Confusion
The seventh and eighth DuPont factors consider the nature and extent of any
actual confusion in light of the length of time and conditions under which there has
Opposition No. 91241564
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been contemporaneous use of the parties’ subject marks. DuPont, 177 USPQ at 567.
Applicant argues that the record is devoid of any evidence of actual confusion arising
from the use by the parties of their marks on their respective products.49
Evidence of actual confusion, where it exists, would of course be highly probative
of a likelihood of confusion. See Edom Labs, Inc. v. Lichter, 102 USPQ2d 1546, 1553
(TTAB 2012) (“The existence of actual confusion is normally very persuasive evidence
of likelihood of confusion and undercuts any possible claim that the marks are so
dissimilar that there can be no likelihood of confusion.”). It has often been recognized
that such evidence is difficult to obtain. Lebanon Seaboard Corp. v. R&R Turf Supply
Inc., 101 USPQ2d 1826, 1834 (TTAB 2012). The opposite, however, is not true; an
absence of evidence of actual confusion usually carries little weight. See In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); J.C. Hall Co.
v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
Therefore, the seventh DuPont factor is neutral. We hasten to add that since the
issue before us is the likelihood of confusion, not actual confusion, it is not necessary
for Opposer to show instances of actual confusion to establish likelihood of confusion.
Herbko Int’l. v. Kappa Books, 64 USPQ2d at 1380; Weiss Assocs., Inc. v. HRL Assocs.,
Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed. Cir. 1990).
The eighth DuPont factor considers the length of time during and conditions under
which there has been concurrent use without evidence of actual confusion. Applicant
contends that the lack of evidence establishing actual confusion weighs against

49 Applicant’s ACR Brief p. 27-28 (32 TTABVUE 28-29).
Opposition No. 91241564
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finding a likelihood of confusion where, as here, the marks have been in use on
identical and related goods. But the absence of reported instances of confusion is
meaningful only if the record establishes appreciable and continuous use by
Applicant of its marks for a significant period of time in the same markets as those
served by Opposer under its mark. See Citigroup Inc. v. Capital City Bank Grp., Inc.,
94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed.
Cir. 2011); New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *17 (TTAB
2020); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Given Applicant’s argument that Opposer’s and Applicant’s marks have existed in
the marketplace for over six years,50 unsupported by evidence of Applicant’s sales and
advertising, the lack of any instance of actual confusion is not indicative of an absence
of a likelihood of confusion. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283,
1287 (TTAB 2007) (the probative value of the absence of actual confusion depends
upon there being a significant opportunity for actual confusion to have occurred); Red
Carpet v. Johnstown Am., 7 USPQ2d at 1406-1407. Thus, the eighth DuPont factor is
also neutral.

VI. Conclusion
We have carefully considered the testimony and other evidence pertaining to the
relevant DuPont factors, as well as all of the parties’ arguments with respect thereto,
including any evidence and arguments not specifically discussed in this opinion. To

50 Applicant’s ACR Brief p. 28 (32 TTABVUE 29).
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the extent that any other DuPont factors for which no evidence was presented may
be applicable, we treat them as neutral.
Opposer’s and Applicant’s marks are used in connection with identical in-part and
otherwise closely related goods that are likely to move in the same channels of trade
to some of the same customers. Turning to the marks, Opposer’s mark is a stylized
infinity symbol. On the other hand, Applicant’s design mark is a different shape than
a traditional infinity symbol that is composed of two circles opening up into one
another. Thus, the designs of Opposer’s and Applicant’s marks are not similar in
appearance or meaning resulting in the marks having different commercial
impressions sufficient to avoid a likelihood of confusion. Notwithstanding that the
goods are, in part, identical, and the channels of trade and purchasers overlap, we
conclude that the marks are too dissimilar to warrant a determination of likely
confusion. We consider this DuPont factor dispositive in this case. See Champagne
Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460
(Fed. Cir. 1998) (holding that Board did not err in deciding likelihood of confusion
based solely on dissimilarity of marks regardless of other DuPont factors that favored
a likelihood of confusion, noting that “we have previously upheld Board
determinations that one DuPont factor may be dispositive in a likelihood of confusion
analysis, especially when that single factor is the dissimilarity of the marks”); Kellogg
Co. v. Pack’em Ent. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We
know of no reason why, in a particular case, a single duPont factor may not be
dispositive.”).
Opposition No. 91241564
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Decision: The Opposition to registration of the mark shown in Serial No.
87493133 under § 2(d) of the Trademark Act is dismissed.