No Fear, Inc.v.David B. Clayton

Trademark Trial and Appeal Board

Oct 29, 2008

No. 92046824 (T.T.A.B. Oct. 29, 2008)

Mailed: October 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

No Fear, Inc.
v.
David B. Clayton
_____

Cancellation No. 92046824
_____

Kit M. Stetina of Stetina, Brunda, Garred & Brucker for No
Fear, Inc.

David B. Clayton, appearing pro se.
______

Before Rogers, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

No Fear, Inc. has petitioned to cancel Registration No.
2930168, owned by David B. Clayton, for the mark:

for “wearing apparel, namely hats, shirts, t-shirts, warm-up
suits, swimsuits, sweatshirts, sweatpants, shorts, pants,
sweaters, vests and jackets” in International Class 25.1

1 The underlying application was filed on August 4, 2003.
Respondent claimed January 12, 1999 as its date of first use
anywhere and date of first use in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92046824
2

Petitioner filed the petition for cancellation on the
ground of priority of use and likelihood of confusion,
alleging, inter alia, that it “has used, or filed federal
applications with an intent to use, in interstate commerce,
the marks NO F’EARS, NO FEAR, FEAR THIS, NO FEAR (PLUS
DESIGN), FEAR ME, FEAR GOD, KNOW FEAR, FEAR SPORTS, LOTS OF
FEAR, SOME FEAR, JUST FEAR, FEAR NOT, FEAR NO. 1, SHOW FEAR,
FEAR NO FISH, FEARLESS, FEARLESS FACTORY, FEAR, FACE YOUR
FEARS LIVE YOUR DREAMS, AND FACE YOUR FEARS (hereinafter
collectively referred to as the NO FEAR TRADEMARKS) … since
long prior to Respondent’s date of first use” stated in its
registration. Specifically, petitioner alleges use of its
NO FEAR marks since “at least as early as April 1986” on,
inter alia, a variety of apparel products, including, many
of the same goods identified in the involved registration.
Overall, petitioner pleaded ownership of thirty-one (31)
registrations containing the term FEAR.
Respondent denied “any and all claims” contained in the
petition for cancellation. Respondent also attached copies
of printouts from his website to the answer.2
Only petitioner filed a trial brief.

2 Generally materials accompanying the pleading are not
considered part of the evidentiary record. Trademark Rule
2.122(c); see also, TBMP § 317 (2d ed. rev. 2004). However, the
same materials were later made of record as exhibits (B10-B31) to
the discovery deposition of Mr. Clayton.
Cancellation No. 92046824
3
The Record
By operation of the rules, the record includes the
pleadings and the subject registration file.
Only petitioner took testimony and introduced evidence.
Specifically, petitioner filed the testimony deposition of
Mark Simo, petitioner’s CEO, with attached exhibits, and
filed a notice of reliance on the following: the discovery
deposition of respondent (with exhibits); respondent’s
answers to petitioner’s interrogatories nos. 1-3, 5, 8-9,
12, 14-19, 26 and 28; respondent’s responses and documents
produced in response to petitioner’s document requests nos.
9-10, 18, 41 and 49;3 and respondent’s responses to
petitioner’s admission requests nos. 1-21.
As to petitioner’s pleaded registrations, only fifteen
of them were properly made of record through the testimony
of Mr. Simo who identified the registrations during his
deposition, confirmed that they are owned by petitioner, and
are valid and subsisting.4 Of these, we have focused our
decision on the following:

3 Respondent admitted that all documents produced by respondent
were authentic in response to petitioner’s admission request. no.
21. Accordingly, petitioner may introduce the documents produced
by respondent by notice of reliance alone. TBMP § 704.11 (2d ed.
rev. 2004).
4 Simo deposition, pp. 8-28 (Exhibit Nos. 1-15). For each of
these registrations, Mr. Simo identified petitioner as the
current owner, stated that each copy of the registration
(attached as an exhibit) was a “true and correct” copy, and that
petitioner has “continuously and uninterruptedly” used the
registered mark. This suffices for purposes of making these
registrations of record. Trademark Rule 2.122(d)(2)(2); see also
Cancellation No. 92046824
4

Mark: SHOW FEAR
Registration No.: 2267558
Goods: wearing apparel, namely, shirts, T-shirts,
shorts, pants, sweatshirts, sweatpants, hats, visors,
shoes and belts;

Mark: FEAR
Registration No.: 2402250
Goods: wearing apparel, namely T-shirt, shirts,
shorts, pants, sweat shirts, sweat pants, hats, visors,
shoes, sandals, and belts;

Mark: NO FEAR (stylized)
Registration No.: 1737420
Goods: wearing apparel; namely, T-shirts, shirts,
shorts, pants, sweat shirts, sweat pants, hats, visors,
shoes, sandals, and belts;

Mark: NO FEAR
Registration No.: 1855031
Goods: inter alia, clothing and footwear; namely,
pants, shirts, shorts, T-shirts, bathing suits,
jackets, sweat shirts, visors, sandals and shoes;

Mark: NO FEAR (stylized)
Registration No.: 2055148
Goods: wearing apparel, namely, shirts, T-shirts,
shorts, pants, sweatshirts, sweatpants, hats, visors,
shoes and belts;

Mark: NO FEAR (stylized)
Registration No.: 2055158
Goods: wearing apparel, namely, shirts, T-shirts,
shorts, pants, sweatshirts, sweatpants, hats, visors,
shoes and belts; and

Mark: KNOW FEAR
Registration No.: 2105774
Goods: wearing apparel, namely shorts, pants, shirts,
T-shirts, sweatshirts, sweatpants, visors, belts and
shoes.

TBMP § 704.03(b)(1)(A) (2d ed. rev. 2004). Although copies of
the remaining pleaded registrations were also attached as
exhibits, Mr. Simo only testified to those registrations in
general terms. The testimony is insufficient for purposes of
properly making those registrations of record. Id.
Cancellation No. 92046824
5
Standing

Because petitioner has properly made of record many of
the pleaded registrations, petitioner has established its
standing to cancel respondent’s registration. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Priority
Because both petitioner and respondent own
registrations, neither party has priority simply because it
owns a registration. Brewski Beer Co. v. Brewski Brothers,
Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). In a case such as
this, “… the registrations of each party offset each other…
[and] petitioner as a plaintiff, must, in the first
instance, establish prior rights in the same or similar
mark…” Id.
In this case, because respondent has not submitted any
evidence of an earlier priority date, the earliest date upon
which he can rely is the filing date of his underlying
application (for the involved registration), that is, August
4, 2003. Intelsat Corp. v. International Telecommunications
Satellite Organization, 226 USPQ 154, 156 n. 5 (TTAB 1985).
On the other hand, several of petitioner's underlying
applications (for the pleaded registrations of record) have
earlier filing dates. In particular, Registration No.
Cancellation No. 92046824
6
2402250 (for the mark FEAR) has a filing date of February
13, 1995, and Registration No. 1855031 (for the mark NO
FEAR) has a filing date of October 19, 1992. Accordingly,
the record establishes petitioner’s priority.
Likelihood of confusion
Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act is based on an analysis of
all 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, 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. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). Again, we have limited our
likelihood of confusion analysis to the subject registered
mark vis-à-vis petitioner’s marks in the seven registrations
referenced above.
We also note that although respondent did not take
testimony, introduce any evidence, or file a trial brief, it
is petitioner who bears the burden of establishing
likelihood of confusion by a preponderance of the evidence.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002) (“[t]he burden of proof
rests with the opposer … to produce sufficient evidence to
Cancellation No. 92046824
7
support the ultimate conclusion of [priority of use] and
likelihood of confusion”).
With the above principles in mind, we first consider
the du Pont factors regarding the similarity or
dissimilarity of the goods, trade channels and classes of
purchasers. In our evaluation of these factors, we are
bound by the goods identified in the involved and pleaded
registrations. In the absence of any restrictions or
limitations in these registrations, we must assume the goods
are sold through all the normal and usual trade channels for
such goods to all the usual purchasers of such goods. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1987). Here, respondent’s and petitioner’s goods
are identical inasmuch as the subject registration and
petitioner’s pleaded registrations (identified above)
include the following identical goods in their respective
identifications: wearing apparel, namely, hats, shirts, t-
shirts, sweatpants, shorts and pants.
Because the goods are identical, in part, the factor
involving the similarity of the goods therefore weighs
strongly in favor of finding a likelihood of confusion.
And, because there are no restrictions in the registrations,
we must presume that the parties’ respective items of
Cancellation No. 92046824
8
wearing apparel would be found in the same channels of trade
and be subject to purchase by the same consumers. See Hard
Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB
1998). These factors too favor finding a likelihood of
confusion.
This brings us to the similarity or dissimilarity of
the marks. Our focus is on whether the marks are similar in
sound, appearance, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We
keep in mind that when marks would appear on identical
goods, as they do here, the degree of similarity of marks
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
In comparing the marks, we find that respondent’s mark,
PRO FEAR (stylized), is similar to petitioner’s mark, FEAR,
inasmuch as petitioner’s entire mark is incorporated into
respondent’s mark. Respondent’s mark is also similar to
petitioner’s other six referenced marks in that they all
contain the term FEAR preceded only by a single syllable
word, i.e., NO, KNOW and SHOW, each of which rhymes with the
term PRO in respondent’s mark. The overall marks are
therefore visually and aurally similar. The stylization
Cancellation No. 92046824
9
employed in respondent’s mark has little effect in
distinguishing the marks. Because each of petitioner’s
marks appears in a registration in typed lettering, these
marks may appear in any reasonable font or style of
lettering, including that used by respondent.
In terms of connotation and commercial impression, we
also find all of the marks to be similar in that they play
on the term “fear.” In his deposition, respondent even
acknowledged that his mark, as well as several of
petitioner’s marks, may be categorized as “fear affirming”
marks, including KNOW FEAR and SHOW FEAR. Clayton
deposition, pp. 13-17. As respondent himself stated in
regard to petitioner’s mark KNOW FEAR, “I would say that it
may be fear affirming because I guess you could – you could
perceive that knowing fear, as in terms of acknowledging
fear, might be an affirmation of fear.” Clayton deposition,
p. 14.
Considering the marks in their entireties, as we must,
we conclude that they are similar. This du Pont factor
favors finding likelihood of confusion.
Although petitioner has argued and presented
(unrebutted) evidence in its favor concerning other du Pont
factors, we need not address those factors in view of the in
part identical nature of the parties’ goods and the
Cancellation No. 92046824
10
similarity of the marks.5 We conclude that respondent’s use
of the mark PRO FEAR, when used on wearing apparel, so
resembles petitioner’s previously-used and registered marks:
FEAR, NO FEAR, SHOW FEAR, and KNOW FEAR, for identical goods
that consumers are likely to mistakenly believe that the
sources of these goods are the same. As a result, there is
a likelihood of confusion.
Decision: The petition to cancel is granted, and
Registration No. 2930168 will be cancelled in due course.

5 Petitioner also argued that there is a prima facie case of
abandonment with respect to respondent’s registration and that
respondent’s mark “should be cancelled for non-use in commerce.”
Brief, p. 14-15. However, neither abandonment nor non-use has
been pleaded by petitioner as grounds for cancellation; moreover,
petitioner has not moved to amend the complaint. Accordingly,
these allegations, to the extent they constituted separate
claims, were not given consideration.