Sisco Textiles N.V.v.Technical Knockout, Inc.

Trademark Trial and Appeal Board

Mar 24, 2021

91242509RE (T.T.A.B. Mar. 24, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 24, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Sisco Textiles N.V.
v.
Technical Knockout, Inc.
_____

Opposition No. 91242509

_____

Rochelle D. Alpert, Seth A. Rappaport, and Sharon R. Smith of Morgan, Lewis &
Bockius LLP for Sisco Textiles N.V.

Dale Paul DiMaggio and Kristina M. DiMaggio of Malin Haley Dimaggio
& Bowen, P.A. for Technical Knockout, Inc.
_____
Before Zervas, Lynch, and Hudis, Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Opposition No. 91242509

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I. Background
Technical Knockout, Inc. (“Applicant”) seeks registration on the Principal Register
of the design mark .1 Sisco Textiles N.V. (“Opposer”) opposed
registration of the mark as to certain goods in the application based on alleged
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
with Opposer’s common law and registered marks. Specifically, the opposition
pertained to all the goods in International Classes 9, 18 and 25.2
In a final decision dated February 9, 2021, we sustained the opposition.3 For
purposes of judicial economy, of the various registrations and common law uses
asserted by Opposer, we relied on Opposer’s Registration Number 4085739, which we
noted “covers, inter alia, sunglasses, backpacks, and various clothing items, which
directly overlap with at least some of Applicant’s goods in each opposed International
Class in the application.”4 Precedent and judicial economy dictate that, as set forth
in our final decision, likely confusion need be established only as to at one item in a
class in order to sustain the opposition as to that entire class of goods.5 See Tuxedo

1 Application Serial No. 87516423 was filed on July 5, 2017 based on Applicant’s alleged
intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
2 Applicant’s goods and services in International Classes 5, 16, 21, 27, 28, 32, 41 and 44 were
not subject to this opposition. 29 TTABVUE 37.
3 29 TTABVUE.
4 29 TTABVUE 12.
5 29 TTABVUE 13.
Opposition No. 91242509

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Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981). In the February 9 decision, we found that at least some goods in each opposed
class of the application were in-part identical to goods in Opposer’s registration,
including “sunglasses” and “protective boxing helmets”/“protective helmets” in
International Class 9.6 As a result, the Board’s final decision did not address the
relatedness of other goods within the same class.
On March 8, 2021, Applicant moved for reconsideration of the Board’s February 9
decision.7 See Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c). As a preliminary matter,
Applicant includes a request in its motion that “the deadline to file an appeal is tolled
pending the outcome of this motion pursuant to 37 C.F.R. § 2.145(d).”8 Pursuant to
Trademark Rule 2.145(d)(4), 37 C.F.R. § 2.145(d)(4), “[i]f a request for rehearing or
reconsideration or modification of the Board decision is filed within the time specified
in § 2.127(b), § 2.129(c), or § 2.144, or within any extension of time granted
thereunder, the time for filing an appeal or commencing a civil action shall expire no
later than sixty-three (63) days after action on the request.” Thus, Applicant’s time
to file an appeal will be computed accordingly, from the date of this order.
II. Reconsideration
Turning to the substance of the motion, Applicant “request[s] modification of the
Board’s decision to state that the Opposition in Class 9 be sustained only as to

6 29 TTABVUE 12.
7 30 TTABVUE.
8 30 TTABVUE 4.
Opposition No. 91242509

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“sunglasses,” and that all of Applicant’s remaining goods in Class 9 be allowed to
proceed to registration.”9 According to Applicant, its other goods in Class 9 are
unrelated to Opposer’s goods.
On March 23, 2021, Opposer timely filed a response to Applicant’s motion, and
opposes Applicant’s requested relief as (1) procedurally improper and untimely, and
(2) inappropriate on the merits. First, Opposer points out that Applicant never argued
the unrelatedness of these particular goods at trial, and cannot now raise this new
issue for the first time. Second, Opposer points to the helmets mentioned above, as
well as other examples of Class 9 goods in the application and registration that it
contends are related. Regardless, Opposer notes the “well-accepted authority” relied
on by the Board that an overlap as to one item in Class 9 would suffice for the
likelihood of confusion analysis, obviating the need for the Board to examine the
remaining goods in the class.10
“[T]he premise underlying a request for … reconsideration … is that, based on the
evidence of record and the prevailing authorities, the Board erred in reaching the
decision it issued. The request may not be used to introduce additional evidence, nor
should it be devoted simply to a reargument of the points presented in the requesting
party’s brief on the case.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 543 (2020); see also TBMP § 1219.01. Applicant’s motion fails

9 30 TTABVUE 2.
10 31 TTABVUE 7.
Opposition No. 91242509

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on its face because it does not even allege, much less establish, error by the Board in
the February 9 decision.
Sustaining the opposition as to Class 9 based on even one item of overlap
(although two were noted) was correct because “[i]t is settled, however, that in order
to prevail on a Section 2(d) ground of opposition, an opposer need not prove priority
and likelihood of confusion as to all of the goods or services identified in the
applicant's application. Rather, if priority and likelihood of confusion are established
as to any of the goods or services identified in an opposed class of goods or services,
the opposition to registration of the mark as to all of the goods or services identified
in that class will be sustained.” Baseball Am. Inc. v. Powerplay Sports Ltd., 71
USPQ2d 1844, 1847 n.9 (TTAB 2004) (citations omitted); see also Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014) (“In the context of likelihood
of confusion, it is sufficient to find likelihood of confusion as to the entire class if
likelihood of confusion is found with respect to use of the mark on any item in a class
that comes within the description of goods”). Given this established legal principle,
the Board did not err by declining to engage in an item-by-item analysis of additional
goods in Class 9.
As Opposer points out, Applicant never offered specific arguments on the
unrelatedness of other goods. Thus, Applicant’s motion presents a new argument
never presented at trial, an unfounded assertion that the remaining goods in Class 9
Opposition No. 91242509

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are unrelated, when neither the parties nor the Board assessed them. Applicant’s
new argument is beyond the purview of a motion for reconsideration.11
For the foregoing reasons, we decline to reconsider the Board’s February 9 decision
in this opposition proceeding, and Applicant’s motion is denied.12 The decision of
February 9, 2021 stands.

11 Notably, Opposer already had limited its opposition to only certain classes in Applicant’s
application. If Applicant believed Opposer’s objection applied only to certain of the goods
within the classes opposed, Applicant should have sought to coordinate with Opposer to
divide out the unobjectionable goods from the objectionable ones, by a request to divide
approved by the Board. See 37 C.F.R. §2.87(c); Spirits Int’l, B.V. v. S.S. Taris Zeytin Ve
Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1547 n.3 (TTAB 2011)
(“Therefore, to the extent that opposer is successful in proving likelihood of confusion or lack
of a bona fide intention to use the mark with respect to any of the goods in each class, and
specifically alcoholic beverages, the opposition against the classes in their entirety would be
sustained. In this connection, if applicant believed that opposer's objection to registration of
the mark was limited to the alcoholic beverages listed in the identification of each class, it
could have availed itself of the divisional procedure….”).
12 For the parties’ edification, neither Trademark Rule 2.129(c) nor any of the other rules of
practice applicable to Board proceedings contemplate a second request for reconsideration of
a final decision in a Board inter partes case.