World Triathlon Corp.v.Team Ironmen, Inc.

Trademark Trial and Appeal Board

Sep 16, 2008

No. 91171229 (T.T.A.B. Sep. 16, 2008)

Mailed: September 16, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

World Triathlon Corp.
v.
Team Ironmen, Inc.
_____

Opposition No. 91171229
to application Serial No. 78543984
_____

Frank R. Jakes, Joseph J. Weissman and Zachary D. Messa of
Johnson, Pope, Bokor, Ruppel & Burns, LLP for World
Triathlon Corp.

Frederick S Berretta and Alan L. Kessler of Knobbe, Martens,
Olson & Bear, LLP for Team Ironmen, Inc.
______

Before Zervas, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On January 7, 2005 applicant, Team Ironmen, Inc., filed
an application to register on the Principal Register the
mark IRON MEN LOS ANGELES and design as displayed below,
based upon its assertion of February 1, 2003 as a date of
first use of the mark in commerce for “entertainment
services, namely, participation in paintball competitions;
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91171229
2
and training services in the field of competitive
paintball,” in International Class 41.1

Registration has been opposed by World Triathlon Corp.
(“opposer”). As grounds for opposition, opposer asserts
that it is the owner of a family of 37 famous IRON-formative
marks, including the following, previously used and
registered on the Principal Register by opposer and its
predecessors in interest, for the following goods and
services:
IRON MAN (in standard characters)
for “bicycles” in International Class 12;2
IRONMAN (in standard characters)
for “clothing for men, women and youths, namely, shirts,
shorts, jackets, swimwear, socks, gloves, hats, headbands,
wristbands and wetsuits, marketed in association with
contests consisting of running, biking and swimming” in
International Class 25;3

1 Application Serial No. 78543984. Applicant has disclaimed “LOS
ANGELES.”
2 Registration No. 2380160 issued on August 29, 2000. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
3 Registration No. 2911298 issued on December 14, 2004.
Opposition No. 91171229
3
IRONMAN (in standard characters)
for “dumbbells, weight plates, weight bars, weight sets,
exercise accessories in the nature of weight gloves, weight
belts, toning wheels, ankle/writs weights, hand grips,
lifting straps, waist trimmers, push-up bars, chin-up bars,
sit-up bars, exercise tubing, jump ropes, weight benches,
single station and multi-station exercise machines” in
International Class 28;4
IRONMAN TRIATHLON (in standard characters)
for “entertainment services namely arranging and conducting
athletic competitions consisting of running, swimming and
biking” in International Class 41;5
IRONMAN PRODUCTIONS (in standard characters)
for “television, film and video production services
featuring events related to triathlons including the sport
of running, biking and swimming” in International Class 41;6
IRON GIRL (in standard characters)
for “entertainment services namely arranging and conducting
athletic competitions” in International Class 41;7
IRON GIRL IT’S YOUR TURN (in standard characters)

4 Registration No. 2902112 issued on November 9, 2004.
5 Registration No. 2869852 issued on August 3, 2004 with a
disclaimer of “TRIATHLON.”
6 Registration No. 2845630 issued on May 25, 2004 with a
disclaimer of “PRODUCTIONS.”
7 Registration No. 2908851 issued on December 7, 2004 with a
disclaimer of “GIRL.”
Opposition No. 91171229
4
for “entertainment services namely arranging and conducting
athletic competitions” in International Class 41;8 and
IRONWOMAN (in standard characters)
for “t-shirts, sweatshirts, denim shirts and hats, marketed
in association with contests consisting of running, biking
and swimming.9
Opposer argues that it has made use of its IRON-
formative marks in connection with the above goods and
services since prior to any date of first use upon which
applicant may rely; and that applicant’s mark, when used in
connection with applicant’s services, so resembles opposer’s
IRON-formative marks for its recited goods and services as
to be likely to cause confusion, to cause mistake, and to
deceive. Opposer further argues that its IRON-formative
marks are famous and became famous long prior to applicant’s
acquisition of any rights in its involved mark; and that use
by applicant of its involved mark is likely to cause
dilution of the distinctive quality of opposer’s famous
IRON-formative marks.
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition.

8 Registration No. 2929884 issued on February 11, 2003.
9 Registration No. 2450736 issued on May 15, 2001. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
Opposition No. 91171229
5
Evidentiary Objections
In its brief, as well as its separate statement of
objections to opposer’s evidence, applicant objects to 57
trademark registrations, including 24 that were pleaded in
the notice of opposition, that were introduced by opposer
during the testimony deposition of its president, Mr.
Benjamin Fertic. Applicant argues that Mr. Fertic did not
properly make such registrations of record during his
deposition. However, in his testimonial deposition, Mr.
Fertic identified and introduced copies of the registrations
in question, showing the current status thereof and current
title vested in opposer, and testified that such
registrations are active. We find, therefore, that the
copies of opposer’s 24 pleaded registrations submitted with
the deposition of Mr. Fertic are properly of record. See
Trademark Rule 2.122(d). See also TBMP §704.03(b) (2d ed.
rev. 2004) and the authorities cited therein.
Applicant’s objections to the copies of the additional
33 registrations on the ground that they were not pleaded in
the notice of opposition and that, as a result, applicant
was never put on notice thereof, is sustained. See Long
John Silver’s Inc. v. Lou Scharf, Inc., 213 USPQ 263 (TTAB
1982). Accordingly, these registrations will not be
considered.
Opposition No. 91171229
6
In addition, applicant has filed numerous objections in
its brief and separate statement of objections against Mr.
Fertic’s testimony and certain of the exhibits introduced by
opposer thereby. Opposer has responded to applicant’s
objections.
We note, however, that none of the testimony and/or
exhibits sought to be excluded is outcome determinative.
Given this fact, coupled with the number of objections (over
130), we see no compelling reason to discuss the objections
in a detailed fashion. Suffice it to say, with the
exception of the unpleaded registrations specifically
excluded above, we have considered all of the testimony and
exhibits submitted by the parties. In doing so, we have
kept in mind the various objections raised by applicant as
well as opposer, and we have accorded whatever probative
value the subject testimony and exhibits merit.
The Record
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case consists of the pleadings and the
file of the involved application. In addition, and as
discussed above, during its assigned testimony period,
opposer submitted the testimony deposition, with exhibits,
of its president, Mr. Benjamin Fertic.
Opposition No. 91171229
7
During its assigned testimony period, applicant
submitted the testimony deposition, with exhibits, of its
chief executive officer, Dave DeHaan.
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.
Opposer’s Standing and Priority of Use
Because opposer has properly made 24 of its 37 pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because 24 of opposer’s
pleaded registrations are of record, Section 2(d) priority
is not an issue in this case as to the IRON-formative marks
therefor and goods and services covered in those 24
registrations. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion 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. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
Opposition No. 91171229
8
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Fame of Opposer’s IRON-formative Marks
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s IRON-formative marks and to give
great weight to such evidence if it exists. See Bose Corp.
v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303
(Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54
F.2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Upon careful review of the record in this case, we are
not persuaded that opposer’s IRON-formative marks are
Opposition No. 91171229
9
famous. It is the duty of a plaintiff asserting that its
mark is famous to clearly prove it.
Opposer has testified and introduced evidence that it
used its IRONMAN and IRON-formative marks continuously since
the late 1970s in connection with its athletic events. In
1980, ABC began broadcasting opposer’s athletic event
annually on its Wide World of Sports program. NBC began
coverage of the event in 1991. By 2003, coverage of
opposer’s championship event on NBC won nine Sports Emmy
Awards. As of the time of trial, opposer had spent over $19
million on producing the coverage of its IRONMAN athletic
events, and currently expends approximately $1.5 million per
year on such production. Articles concerning opposer and
its athletic events have appeared numerous publications
including The New York Times, USA Today, The Wall Street
Journal, The Washington Post, Sports Illustrated. Opposer
subsequently has used its IRON-formative marks in connection
with a variety of goods and services. Opposer’s Timex
IRONMAN watch, introduced in 1986, currently is the best-
selling sports watch in the world and is sold in over 80,000
U.S. retail outlets.
This testimony and evidence demonstrates that opposer
has expended a great deal of effort in producing and
marketing its athletic events as well as sports watches
under its IRON-formative marks, has enjoyed considerable
Opposition No. 91171229
10
success for its efforts, and has received media recognition
for at least its athletic events. Thus, opposer’s evidence
supports a finding that opposer and its IRON-formative marks
have achieved a level of recognition among triathletes and
followers of the sport of triathlon. However, such evidence
falls short of demonstrating the extent to which such
efforts and recognition translate into widespread
recognition of the IRON-formative marks among the general
public. That is to say, the testimony and evidence does not
establish that opposer’s IRON-formative marks are widely
recognized outside the field of triathlons. Indeed, it is
unclear to what extent opposer’s goods and services are
recognized among the general public. We note in addition
that opposer’s $1.5 million annual production and
advertising figure is very low, compared to annual
advertising figures for other marks we have found to be
famous. See, for example, Motion Picture Association of
America, Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555
(TTAB 2007)(opposer’s member annually spent 4 billion
dollars on advertisements and promotion).
Accordingly, we find on this record that the evidence
falls short of establishing that opposer’s IRON-formative
marks are famous for purposes of our likelihood of confusion
determination. Nevertheless, we find that the evidence is
sufficient to show that opposer’s marks have achieved at
Opposition No. 91171229
11
least some degree of recognition and strength in the sports
market and that the marks are therefore entitled to a
broader scope of protection than might be accorded a less
distinctive mark.
Family of marks
Opposer has pleaded and argues in general terms that it
owns a family of IRON-formative marks for a variety of
mainly sports-related products and services. However, the
requisite showing of a family of marks has not been made.
The fact that opposer has used and registered several marks
incorporating the prefix IRON, is not in itself sufficient
to establish the existence of a family of marks. See J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889 (Fed. Cir. 1991). As stated by the Court “There
must be a recognition among the purchasing public that the
common characteristic is indicative of a common origin of
the goods.” J & J Snack Foods, supra at 1891. Accordingly,
opposer must demonstrate that the marks asserted to comprise
the family, or a number of them, have been used and
advertised in promotional material or in everyday sales
activities in such a manner as to create common exposure and
thereafter recognition of common ownership based upon a
feature common to each mark. See Truescents LLC v. Ride
Skin Care LLC, 81 USPQ2d 1334 (TTAB 2006) citing American
Opposition No. 91171229
12
Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457, 461
(TTAB 1978).
In this case, however, opposer has not submitted any
evidence that it has promoted its IRON-formative marks
together to the public. In short, there is no evidence of
public exposure to opposer’s marks in such a manner that
demonstrates recognition of common ownership thereof based
upon the IRON feature common to each mark.
Therefore, we will determine the issue of likelihood
of confusion based on the individual marks that are the
subject of opposer’s pleaded registrations. In our
analysis, we will concentrate our discussion of the issue of
likelihood of confusion on the registration of opposer’s
which recites services most similar to those of applicant,
namely, Registration No. 2908851 for the mark IRON GIRL in
standard characters for “entertainment services namely
arranging and conducting athletic competitions” in
International Class 41.
The Marks
We turn then to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, is not
Opposition No. 91171229
13
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.
In this case, we find that applicant’s mark,

is similar to opposer’s mark, IRON GIRL. In comparing the
marks, we find that IRON MEN is the dominant element of
applicant’s mark, and accordingly it is entitled to more
weight in our analysis. It is a well-established principle
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of
the marks in their entireties. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In this case, applicant’s mark consists of the words
IRON MEN in large, bold letters, the words LOS ANGELES
beneath in much smaller, outlined letters, and the design of
Opposition No. 91171229
14
a shield surrounding the words in the mark. In addition to
being displayed in much smaller type than IRON MEN, the
geographic wording LOS ANGELES is disclaimed, and thus
appears to serve relatively little source-identifying
function. As a result, LOS ANGELES is both less distinctive
and far less significant visually than IRON MEN. The shield
design, while encompassing the wording in applicant’s mark,
is merely an outline that does not significantly add to the
overall commercial impression of applicant’s mark. Thus, we
also find the shield design to be less significant than the
wording IRON MEN. When a mark comprises both a word and a
design, then the word is normally accorded greater weight
inasmuch it would be used by purchasers to request the goods
or services. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). For these reasons, we consider IRON MEN to be
the dominant feature of applicant’s mark.
Thus, the dominant portion of applicant’s mark, i.e.,
IRON MEN, is highly similar to opposer’s mark, IRON GIRL, in
that they share the identical word IRON followed by the type
of person, MEN and GIRL, respectively, so identified.
Additionally, we note that IRON is also the first word in
both the marks. Presto Products, Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of
some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a
Opposition No. 91171229
15
purchaser and remembered.”). See also Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d
at 1692 (“The presence of this strong distinctive term as
the first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and
hence non-source identifying) significance of ROYALE.”).
Thus, the identical word IRON, being the first word in both
applicant’s and opposer’s marks, is most likely to make a
strong impression upon consumers and to be remembered
thereby.
As a result, we find that, taken as a whole,
applicant’s mark and opposer’s IRON GIRL mark are more
similar than dissimilar in appearance and sound. Both marks
convey the sense of persons possessed of strong body and
resolve, i.e., men and girls of iron. We note in that
regard that “girl” is defined as “a female child, from birth
to full growth”10 or “a young, immature woman”11 and thus may
include females from infancy up to adulthood. Accordingly
the marks respectively suggest men and young women with
wills and bodies of iron, and thus are similar in

10 Random House Unabridged Dictionary, (Random House, 2006). The
Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
11 Id.

Opposition No. 91171229
16
connotation and convey highly similar overall commercial
impressions.
In view thereof, this du Pont factor favors opposer.
The Services
With respect to the services, it is well established
that the goods or services of the parties need not be
similar or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods or
services of the parties are related in some manner, and/or
that the conditions and activities surrounding the marketing
of the goods or services are such that they would or could
be encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
The services identified in opposer’s Registration No.
2908851 for its IRON GIRL mark are “entertainment services
namely arranging and conducting athletic competitions” in
International Class 41. Applicant’s services under its mark
are identified as “entertainment services, namely,
participation in paintball competitions; and training
Opposition No. 91171229
17
services in the field of competitive paintball,” in
International Class 41. We note that opposer’s services are
very broadly identified, and that, as a result, arranging
and conducting athletic competitions must be deemed to
encompass athletic competitions of any sort, including
paintball competitions.
In that regard, applicant’s president, Mr. Dave DeHaan,
testified that its paintball competitions are played by
teams,12 on fields of various sizes,13 and in numerous
tournaments held in various cities.14 Mr. DeHaan testified
in addition that professional paintball teams are similar to
other professional teams in that their players are paid and
may also be acquired from other teams.15 Mr. DeHaan further
testified that a total of 16 teams attend the sport’s World
Cup, held each year in Orlando, Florida.16 Thus, based upon
the testimony of applicant’s president, its paintball
competitions are conducted in the manner of other sporting
events, by athletes comprising regional teams that compete
in tournaments held in different cities. As Mr. DeHaan
testified: “I’ve kind of used the analogy that, you know,

12 DeHaan testimony, p. 12.
13 Id.
14 Id.
15 Id. at 52.
16 Id. at 51.
Opposition No. 91171229
18
like the Cleveland Browns or the Dallas Cowboys, you know,
these are our teams of our little sport.17”
In other words, applicant’s services involve training
and participation in paintball competitions that are in the
nature of sporting events or athletic competitions. As a
result, we find that applicant’s training and participation
in paintball competitions is encompassed by opposer’s more
broadly identified “arranging and conducting athletic
competitions.” We find, therefor, that applicant’s services
under its mark are related to opposer’s services under its
IRON GIRL mark. In coming to this determination, we are
reminded that the issue is not whether purchasers would
confuse the services themselves, but rather whether there is
a likelihood of confusion as to the source thereof. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
In view of the related nature of opposer’s services
under its IRON GIRL mark and applicant’s services, this du
Pont factor also favors opposer.
Channels of Trade
Because we have found that the parties’ services are
related, and because there are no recited restrictions as to
their channels of trade or classes of purchasers, we must
assume that the services are available in all the normal
channels of trade to all the usual consumers of such

17 Id. at 11.
Opposition No. 91171229
19
services, and that the channels of trade and the purchasers
for opposer’s services as well as applicant’s services would
overlap. See Interstate Brands Corp. v. McKee Foods Corp.,
53 USPQ2d 1910 (TTAB 2000). See also Octocom Systems, Inc.
v. Houston Computers Services Inc., supra (“The authority is
legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of
goods set forth in the application regardless of what the
record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the
class of purchasers to which the sales of goods are
directed.”) See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”) In view thereof, we are not
persuaded by applicant’s arguments that “[p]aintball is a
sport of enthusiasts, and the sales of paintball-related
services are largely invisible to the general public”
(brief, p. 16).
We find that, as a result of the foregoing, this du
Pont factor also favors opposer.
Conditions of Sale
The next du Pont factor discussed by the parties is
that of the conditions of sale. Applicant asserts that
Opposition No. 91171229
20
opposer “failed to adduce any evidence that its customers
would act impulsively in selecting triathlon related good
[sic] and services, and the opposite appears to be true”
(Id.). However, as identified, neither opposer’s nor
applicant’s services are so highly specialized or otherwise
restricted only to professional or highly dedicated amateur
players as to exclude casual enthusiasts or beginners. As
such, we must presume that both parties’ services are
available to all levels of competitors at any level of
skill. Moreover, sophisticated purchasers are not
necessarily knowledgeable in the field of trademarks or
immune from source confusion. See In re Decombe, 9 USPQ2d
1812, 1814-1815 (TTAB 1988). In addition, even if we accept
that the parties’ services are expensive, there is no
evidence that they would be purchased only by highly
sophisticated persons. Indeed, both parties’ services would
appear to be available to anyone with the inclination to use
them. Moreover, even if some degree of care were exhibited
in making the purchasing decision, the marks at issue are
sufficiently similar such that even careful purchasers are
likely to assume that the marks identify services emanating
from a single source.
Thus, this du Pont factor also favors opposer.
Opposition No. 91171229
21
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion. Applicant asserts
that the absence of actual confusion suggests no likelihood
of confusion. However, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). Moreover, on the
record before us there is no evidence as to whether there
has been any opportunity for confusion to occur. Thus, this
du Pont factor is neutral.
Summary
We have carefully considered all of the evidence
pertaining to priority of use and the relevant du Pont
factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that opposer has established its standing
to bring this proceeding; its priority of use; and that
consumers familiar with opposer’s services under its IRON
GIRL mark would be likely to believe, upon encountering
applicant’s involved mark for its recited services, that the
parties’ services originate with or are associated with or
sponsored by the same entity. In making our determination,
we have balanced the relevant du Pont factors. The factors
Opposition No. 91171229
22
of the similarity between the marks and the relatedness of
the services weigh strongly in opposer’s favor. To the
extent that any of applicant’s points raise a doubt about
our conclusion, all doubt on the issue of likelihood of
confusion must be resolved in favor of the prior user and
against the newcomer. See San Fernando Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2
(CCPA 1977).
Dilution
Given our determination that there is a likelihood of
confusion herein, we decline to reach a determination on the
question of dilution in this proceeding.
DECISION: The opposition is sustained, and
registration to applicant is refused on the ground of
priority and likelihood of confusion.