The North Face Apparel Corp.v.Lorenz Hoser

Trademark Trial and Appeal Board

Apr 30, 2007

No. 91162069 (T.T.A.B. Apr. 30, 2007)

Mailed:
April 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The North Face Apparel Corp.
v.
Lorenz Hoser
_____

Opposition No. 91162069
to application Serial No. 78187739
filed on November 21, 2002
_____

Susan M. Kayser of Howrey LLP for The North Face Apparel
Corp.

Patrick R. Roche of Fay, Sharpe, Fagan, Minnich & McKee, LLP
for Lorenz Hoser.
______

Before Quinn, Hohein and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Lorenz Hoser filed an application in accordance with
Sections 1(b) and 44(e) of the Lanham Act, 15 U.S.C.
§§1051(b) and 1126(e), to register the mark NEVER STOP
MOVING, in standard character format, for goods ultimately
identified as “bicycles and parts thereof, namely, bicycle
bells, air pumps for bicycles, panniers adapted for
bicycles, baskets adapted for bicycles, seats for bicycles,
gears for bicycles, mechanical anti-theft devices for
bicycles, bicycle frames, bicycle forks, wheel set for
THIS OPINION IS NOT
A PRECEDENT OF THE T.T.A.B.
Opposition No. 91162069
2
bicycles, engines for bicycles, and auxiliary engines for
bicycles.”1 The North Face Apparel Corp. opposed the
registration of applicant’s mark on the ground of priority
of use and likelihood of confusion. Opposer alleged that
applicant’s use of KEEP ON MOVING for bicycles and parts
thereof so resembles opposer’s mark KEEP ON EXPLORING for a
wide variety of outdoor products, including bicycles, and
apparel as to be likely to cause confusion. Only opposer
introduced evidence and filed a brief. For the reasons set
forth below, we sustain the opposition.
Standing
Opposer introduced a certified copy showing both the
current status and title to Registration No. 2,897,197 for
the mark KEEP ON EXPLORING for the following products:2
1. “backpacks, luggage, duffel bags, waist packs,” in
Class 18:

2. “sleeping bags,” in Class 20;

3. “tents,” in Class 22; and,

4. “clothing, namely, t-shirts, tops, shorts,
sweatshirt, sweaters, pants, jackets, vests,
anoraks, ski suits, ski jackets, ski vests, rain
jackets, and rain pants, footwear and headwear,”
in Class 25.

The registration is subsisting, and ownership of the
registration is in opposer’s name.

1 Application Serial No. 78187739, filed November 21, 2002.
During the prosecution of the application, applicant deleted the
intent-to-use filing basis.
2 Opposer’s notice of reliance, Exhibit 159.
Opposition No. 91162069
3
Because opposer has properly made its pleaded
registration of record, and because opposer’s claim of
likelihood of confusion is not frivolous, we find that
opposer has established its standing. 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 UPSQ 185, 189 (CCPA 1982).
Priority
Because opposer’s pleaded registration is of record,
Section 2(d) priority is not an issue in this case as to the
mark and the goods covered by said registration. King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
We reject opposer’s argument that its “non-technical
use of its mark NEVER STOP EXPLORING” in connection with
bicycles confers priority on opposer for bicycles.
(Opposer’s Brief, p. 30). Use of a term in a manner
analogous to trademark use may be the basis of an opposition
where such use creates a public identification between the
opposer’s mark and product. “Analogous use” may be inferred
from opposer’s use of its mark in advertising brochures,
catalogs, and articles in newspapers and trade publications.
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879, 1881 (Fed. Cir. 1996). “The manner of use must be
‘calculated to attract the attention of potential customers
Opposition No. 91162069
4
or customers in the applicable field of trade.’” Dyneer
Corp. v. Automotive Products plc, 37 UPSQ2d 1251, 1254 (TTAB
1995), quoting Liqwacon Corp. v. Browning-Ferris Industries,
Inc., 203 USPQ 305, 308 (TTAB 1979). There is simply no
evidence in the record evidencing the use of opposer’s mark
KEEP ON EXPLORING in connection with bicycles directed to
potential customers prior to the filing date of applicant’s
application.
Likelihood of confusion
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, 567 (CCPA 1973). The relevant du Pont factors are
discussed below.
A. Similarity of the marks.
We must determine whether applicant’s mark and
opposer’s mark, when compared in their entireties, are
similar or dissimilar in terms of sound, appearance,
connotation and commercial impression. In re E.I. du Pont
de Nemours & Co., supra. The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the goods offered under the
Opposition No. 91162069
5
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975); Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980).
We find that applicant’s mark NEVER STOP MOVING and
opposer’s mark NEVER STOP EXPLORING have similar meanings
and engender a similar commercial impression. “Never stop”
means continuous or to continue. “Moving” means “passing
from one place or position to another.”3 “Exploring” means
“to traverse or range over (a region, area, etc.) for the
purpose of discovery: to explore the island.”4 Thus, both
marks mean continuous motion in some form or another. When
used in connection with the goods of the parties, the marks
engender the commercial impression to continue outdoor
activity (e.g., biking, camping, hiking, etc.) or to
continue striving. See Flannery Deposition Exhibit 6,
opposer’s 1997 Technical Outdoor Clothing and Equipment
catalog.5 That exhibit is illustrative of the commercial

3 Dictionary.com Unabridged (v 1.1), based on the Random House
Unabridged Dictionary (2006). The Board may take judicial notice
of dictionary evidence. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006); TBMP §704.12 (2nd ed. rev 2004).
4 Id.
5 Deposition of Joseph Flannery, opposer’s Vice President of
Marketing.
Opposition No. 91162069
6
impression engendered by opposer’s mark as shown by the
following text:
Never Stop Exploring
1997

What does it mean to explore? Most
would say it’s simply about going places
we’ve never been before. More deeply,
it’s about expanding personal limits,
find out what we’re really made of.
Exploration means escaping the ordinary,
feeling the exhilaration of getting to
the top, accomplishing things others
thought impossible. These are life’s
great moments. Once you’ve stopped
exploring, you’ve stopped growing. At
North Face, we’ve always believed that
any product, no matter how good, can be
made better. The men and women who use
our products are always challenging
their limits. So are we. . . . There
will always be a challenge. We will
never stop exploring.

The similarity in the meaning and commercial impression
of the marks emphasizes the similarity in the appearance of
the marks especially because both marks begin with the words
“Never Stop.” See Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 UPSQ2d 1698, 1700 (Fed.
Cir. 1992)(upon encountering each mark (CENTURY 21 and
CENTURY LIFE OF AMERICA), consumers will notice the
identical lead word first); Presto Products Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(the first
part of the mark is that part of the mark most likely to be
impressed on the mind of the consumer and remembered). For
the same reason, the marks have a similar sound.
Opposition No. 91162069
7
In view of the foregoing, we conclude that the marks
are similar and that this factor favors opposer.
B. The similarity or dissimilarity of the goods.
It is well settled that the goods of the parties need
not be identical or even competitive in nature in order to
support a finding a likelihood of confusion. In determining
whether there is likelihood of confusion, it is sufficient
that the goods are related in some manner and/or that they
may be purchased by the same consumers under circumstances
likely to give rise to the mistaken belief that the products
emanate from the same source. In other words, the issue is
not whether purchasers can differentiate the goods, but
rather whether purchasers are likely to confuse the source
of the goods. Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618, 1624 (TTAB 1989).
NEVER STOP EXPLORING is a mark that is used as an
advertising tagline or motto to symbolize opposer’s
corporate image. The mark is placed on products and
hangtags and it appears in advertising, signage, and store
fixtures.6 Since 1997, NEVER STOP EXPLORING has been used
in connection with a wide variety of clothing and equipment
for cycling and other outdoor activities. Those products
include the following:
1. Fanny packs specifically designed for mountain
biking;

6 Flannery Dep., pp. 22-23.
Opposition No. 91162069
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2. Adventure travel accessories packs used to
organize and hold personal items during trips by
cyclists;

3. Clothing used for cycling and other aerobic
activities;

4. Stuff sacks for cycling and other activities;

5. Daypacks for cycling and other activities; and

6. Hydration packs (i.e., water bottles) for cycling
and other activities.7

In view of the foregoing, we believe that the
relationship between the goods of the parties is
significant, especially because opposer is “the largest
specialty outdoor equipment supplier in the world”8 whose
mark has been extensively promoted. In light of the
similarity of the marks, the complementary nature of
opposer’s cycling and outdoor clothing and gear and
applicant’s bicycles will lead consumers to believe that
there is a common source for the products. Accordingly, we
find that the goods of the parties are similar and that this
factor favors opposer.
Before considering the next du Pont factor, we would be
remiss if we did not comment on the third-party
registrations submitted by opposer. We have consistently
held that third-party registrations which have issued under
Sections 44 and 66 of the Lanham Act, without any use in

7 Flannery Dep., pp. 82-92; Exhibits 6, 8, 11, 12, and 13.
8 Flannery Dep., pp. 16, 108, and 119.
Opposition No. 91162069
9
commerce, have very little, if any, persuasive value in
suggesting that the goods and services listed therein may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1786 (TTAB 19993); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 2988).
Nevertheless, opposer submitted 91 third-party registrations
based on Sections 44 and 66 of the Lanham Act. Only the 65
use-based registrations should have been introduced into
evidence.
Opposer stated that it submitted the third-party
registrations purportedly “to show that third parties own
registered trademarks that include (1) goods related to
bicycles of the type sold by Opposer and (2) bicycles of the
type identified in Applicant’s application and that
consumers, therefore, would expect these categories of goods
to originate from the same source when sold under trademarks
at issue.”9 However, the last 13 use-based registrations
submitted (Exhibits 143-145 and 147-156) do not list both
bicycles and bicycle related goods. Opposer should have
reviewed the third-party registrations to ensure that each
registration was, in fact, probative.
Finally, the third-party registrations were submitted
to show that opposer’s outdoor clothing and outdoor
equipment and bicycles are the types of products that

9 Opposer’s notice of reliance, p. 5.
Opposition No. 91162069
10
emanate from a single source. Opposer submitted multiple
registrations for similar marks. For example, opposer
submitted, inter alia, three registrations for marks
comprising the letters REI (Exhibits 42, 43, and 105), two
registrations for marks comprising the letters BMW (Exhibits
48 and 78), and three registrations for marks comprising the
word VOLKSWAGEN (Exhibits 93, 113, and 120). Multiple
registrations with essentially the same mark are
unnecessarily cumulative, rather than probative.
It was poor practice for opposer simply to “dump” the
third-party registrations into the record and expect the
Board to ferret through the evidence to identify any
possibly relevant registrations. Opposer’s obligation, like
that imposed on all other litigants, is to submit only such
evidence as is relevant and probative, rather than force the
Board to search through reams of irrelevant paper to find
the probative evidence.
C. The similarity or dissimilarity of likely-to-continue
trade channels.

The channels of trade factor concerns how and to whom
the respective products are sold and distributed. In other
words, this factor focuses on whether the same class of
persons are exposed to the marks at issue under
circumstances likely to give rise to the belief that the
products emanate from a single source. Jeanne-Marc, Inc. v.
Cluett, Peabody & Co., Inc., 221 USPQ 58, 61 (TTAB 1984).
Opposition No. 91162069
11
Opposer sells its outdoor/cycling apparel and equipment
through outdoor specialty stores, sports specialty stores,
high-end gear and apparel stores, general sporting goods
store, and high-end department stores.10 Representative
retailers of opposer’s products include Recreational
Equipment, Inc. (REI), The Sports Authority, Hudson Trail
Outfitters, and Dick’s Sporting Goods.11 Many of opposer’s
retail customers also sell bicycles.12 Such retailers often
promote opposer’s products in conjunction with bicycles.13
Since its inception in the 1960’s, opposer has
sponsored numerous outdoor exhibitions and events, including
cycling events such as pole-pedal-paddle races, adventure
races, triathlons and challenge bike rides. Opposer uses
its NEVER STOP EXPLORING mark in connection with these
events.14
Consumers who purchase or use opposer’s outdoor and
cycling clothing and equipment also purchase and use
bicycles. In addition, the same class of persons are likely
to be exposed to the marks at issue when purchasing the

10 Flannery Dep., p. 17.
11 Flannery Dep., p. 18.
12 Flannery Dep., pp. 113-121; Exhibits 33-35; Siroff Dep. and the
exhibits attached thereto. Jason Siroff is a private
investigator representing opposer. Opposer engaged the services
of Mr. Siroff to visit retail stores in the Washington, D.C.
metropolitan area and document how opposer’s products were
presented to the public.
13 Flannery Dep., p. 121; Siroff Dep. and the exhibits attached
thereto.
Opposition No. 91162069
12
parties’ products or taking part in a cycling exhibition or
event. We find, therefore, that the channels of trade and
classes of consumers are the same, and therefore this factor
favors opposer.
E. Balancing the factors.
We find that because the marks of the parties are
similar, their products are similar, and their products move
in the same channels of trade to the same classes of
consumers, confusion is likely between applicant’s mark
NEVER STOP MOVING for “bicycles and parts thereof, namely,
bicycle bells, air pumps for bicycles, panniers adapted for
bicycles, baskets adapted for bicycles, seats for bicycles,
gears for bicycles, mechanical anti-theft devices for
bicycles, bicycle frames, bicycle forks, wheel set for
bicycles, engines for bicycles, and auxiliary engines for
bicycles” and opposer’s mark NEVER STOP EXPLORING for the
products identified in its pleaded registration.
Decision: The opposition is sustained, and
registration to applicant is refused.

14 Flannery Dep., pp. 128-134. Strangely, opposer introduced into
evidence the home page for one of its sponsored footraces
(Flannery Exhibit 38), rather than for a bicycle event.