World Triathlon Corporationv.Iron Man Company

Trademark Trial and Appeal Board

Jan 31, 2007

No. 91153811 (T.T.A.B. Jan. 31, 2007)

Mailed:
January 31, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

WORLD TRIATHLON CORPORATION
v.
IRON MAN COMPANY
_____

Opposition No. 91153811
to Application Serial No. 78114096
filed on 3/11/2002
_____

Frank R. Jakes and Joseph J. Weissman of Johnson, Blakely,
Pope, Bokor, Ruppel & Burns, LLP for World Triathlon
Corporation.

Kevin R. Erdman and M. Kristin Glazner of Baker & Daniels
LLP for Iron Man Company.
______

Before Seeherman, Holtzman and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

World Triathlon Corporation (opposer) has opposed the
intent-to-use application of Iron Man Company (applicant),
an Indiana partnership, to register the mark IRONMAN.COM in
standard-character form for services now identified as
“computer services providing customized online web pages
featuring user-defined information, which includes search
engines and online informational web links to news, weather,
sports, current events, reference materials, and customized
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91153811
2
e-mail messages, all in a wide range of user-defined fields”
in International Class 42.
Opposer alleges two grounds for its opposition.
Opposer first alleges likelihood of confusion under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on
its prior use and registration of a number of marks which
include IRONMAN in varying forms for a wide range of goods
and services.1 Opposer also alleges dilution of its IRONMAN
marks under Trademark Act Section 43(c), 15 U.S.C.
§ 1125(c). Applicant has denied the essential allegations
in the notice of opposition.
In addition to the application file, the record in this
proceeding consists of the following submissions by opposer:
(1) the testimonial depositions of Benjamin Craig Fertic,
president of opposer, and of Anthony Peppler, a partner in
applicant, both taken by opposer; (2) opposer’s notice of
reliance on status and title copies of twenty-five
registrations for IRONMAN marks owned by opposer; and (3)
opposer’s notice of reliance on certain of applicant’s
answers to opposer’s first set of interrogatories. The only
evidence applicant submitted is a notice of reliance on
copies of nine third-party “IRONMAN” registrations.

1 In the notice of opposition opposer refers to its marks as a
family of marks, but it does not pursue this argument in its
briefs. Accordingly, we have not given any consideration to that
allegation.
Opposition No. 91153811
3
Opposer has shown that it has used the IRONMAN marks
and that it is the owner of numerous registrations for those
marks. Accordingly, opposer has established standing. See
generally Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
Priority is not at issue in this proceeding. Opposer
has made of record valid and subsisting registrations for
various IRONMAN marks which it owns. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974).
Opposer
Mr. Fertic, president of opposer, testified as to
opposer’s activities and its use of the IRONMAN marks.
Opposer organizes, promotes and conducts triathlon events in
the United States and elsewhere in the world under the
IRONMAN marks. The events combine long distance swimming,
bicycling and running. Opposer’s predecessor held the first
event, identified as the IRONMAN TRIATHLON WORLD
CHAMPIONSHIP, in Hawaii in 1978. Opposer or its predecessor
has conducted the championship event every year since 1978
in Hawaii; in 2004, 1680 competitors took part in the event.
Opposer also conducts numerous qualifying events each year
under the IRONMAN mark leading up to the championship event,
including “eleven or twelve” in the United States.
Opposition No. 91153811
4
Since 1982 the championship event using the IRONMAN
marks has been telecast nationally on either the ABC or NBC
television network. The telecasts have been nominated for
38 and received twelve Emmy awards. Seven U.S. qualifying
events have also been telecast on cable.
Since 1998 opposer has maintained web sites. Opposer
uses ironmanlive.com as the domain name in conjunction with
its principal web site where it presents information
regarding its events. Opposer also maintains what appear to
be additional sites, one for the sale of DVDs and videos of
races, at ironmandvd.com, and one for the sale of licensed
products, at ironmanstore.com. Opposer also uses the
ironmanlive.com site to air its championship race live “with
full streaming video” and “editorial reports, minute-by
minute updates on lead changes for the entire 17 hours of
the race.”
In 2004, the year previous to Mr. Fertic’s testimony
three and a half million separate individuals or entities
visited the site to view the championship race. Opposer
spends between a half-million and seven hundred thousand
dollars each year to “showcase” the event on the web site.
Mr. Fertic also states more broadly that annually opposer’s
web site receives “upwards of 30 million page views.” The
average person stays on the site for 12 to 15 minutes.
Opposition No. 91153811
5
Opposer has numerous sponsors for its events and
numerous licensees which use its IRONMAN marks with their
products or services to promote the IRONMAN events. For
example, the licensed products include the TIMEX IRONMAN
sports watch which “is the number-one selling sports watch
in the world.” The watches are sold through Wal-Mart, the
Sports Authority and other retailers. Foster Grant, another
licensee, sells its IRONMAN sunglasses through the same type
of retailers. The goods are marketed to athletes and non-
athletes.
The licensed products also include high-end bikes,
bicycle tires, running insoles, wetsuits, treadmills and
other fitness products and jogging strollers.
Opposer is also involved in promotions for Gatorade
beverages where the IRONMAN marks are featured in
advertisements which aired on NASCAR events, AFC and NFC
playoff games and on the MTV network. In describing the
Gatorade campaign Mr. Fertic testified that “the domestic
expenditure will exceed $30 million for the 2005 year.”
Opposer has also conducted promotions with Fig Newtons,
involving use of “the IRONMAN logos” on 20 million packages,
and Campbell’s soup. In these promotions, the IRONMAN marks
are used on products distributed through general grocery
retailers, such as Kroger. Mr. Fertic states that opposer
spends “several million dollars” in advertising the IRONMAN
Opposition No. 91153811
6
marks, but he does not specify either the time period in
question or the forms of advertising. In discussing the
licensed products and promotions, opposer does not specify
the form of the IRONMAN mark used in conjunction with
specific products or in promotions, nor does opposer provide
examples of these uses on actual products or in promotions.
However, many of the licensed products Mr. Fertic discusses
are the subject of the registrations opposer has made of
record.
Opposer has pleaded and properly made of record the
following valid and subsisting registrations which it owns:
Reg. No. 2343316 for the mark IRONMANLIVE.COM for
“providing information concerning athletic competitions
featuring bicycling, swimming and running and
participants therein via global computer networks” in
International Class 41;

Reg. No. 1873783 for the mark IRONMAN for “plastic
trash bags” in International Class 16;

Reg. No. 2022721 for the mark IRONMAN for “electric
vacuum cleaners” in International Class 9;

Reg. No. 1353313 for the mark shown below for
“entertainment services – namely, presentation of
athletic contests featuring running, swimming and
biking” in International Class 41;

Reg. No. 2357949 for the mark IRONMAN for “non-
carbonated soft drinks” in International Class 32;
Opposition No. 91153811
7

Reg. No. 2350149 for the mark shown below for “watches
and chronometers sold in association with contests
consisting of running, biking and swimming” in
International Class 14;

Reg. No. 2911303 for the mark shown below for “swimwear
with built in flotation device, marketed in association
with contests consisting of running, biking and
swimming” in International Class 25;

Reg. No. 2380160 for the mark IRONMAN for “bicycles” in
International Class 12;

Reg. No. 1705114 for the mark IRONMAN TRIATHLON for
“clothing; namely, shirts, shorts, hats, shoes,
headbands and wristbands, pants, pajamas, belts and
sweatshirts marketed in association with contest
consisting of running, biking and swimming” in
International Class 25;

Reg. No. 2356707 for the mark IRONMAN TRIATHLON for
“bicycle carrying bags, namely, saddle bags, handlebar
bags, panniers which affixed (sic) to bicycles” in
International Class 12 and “all purpose sports bags,
back packs, activity bags in the nature of fanny packs,
tote bags” in International Class 18, and “back pack-
style canteens featuring hydration bags” in
International Class 21;

Opposition No. 91153811
8
Reg. No. 2356232 for the mark IRONMAN TRIATHLON for
“sunglasses, frames for glasses; small handheld
electronics with head sets, namely, portable radios,
portable CD players and portable audio cassette tape
players and recorders, marketed in association with
contests consisting of running, biking and swimming” in
International Class 9;

Reg. No. 2369406 for the mark IRONMAN TRIATHLON for
“credit card services” in International Class 36;

Reg. No. 2384055 for the mark IRONMAN TRIATHLON for
“sun block, perfumes, cologne, skin lotions, personal
deodorant, body and massage oils, marketed in
association with contests consisting of running, biking
and swimming” in International Class 3;

Reg. No. 2420355 for the mark IRONMAN TRIATHLON for
“bicycles marketed in association with contests
involving swimming, biking and running” in
International Class 12;

Reg. No. 1462281 for the mark IRONMAN TRIATHLON WORLD
CHAMPIONSHIP for “entertainment services, namely,
presentation of athletic events consisting of running,
swimming and biking contests” in International Class
41;

Reg. No. 2325508 for the mark shown below for “food and
vitamin supplements” in International Class 5;

Reg. No. 2384057 for the mark IRONMAN INSTITUTE for
“physical fitness consultation and physical
rehabilitation services” in International Class 42;

Reg. No. 2384056 for the mark IRONMAN INSTITUTE for
“educational services namely lectures, seminars and
classes in the field of physical fitness and physical
rehabilitation” in International Class 41;

Opposition No. 91153811
9
Reg. No. 2571690 for the mark IRONMAN TRIATHLON for
“non-carbonated soft drinks, namely bottled water” in
International Class 42;

Reg. No. 2869852 for the mark IRONMAN TRIATHLON for
“Entertainment services namely arranging and conducting
athletic competitions consisting of running, swimming
and biking” in International Class 41;

Reg. No. 2443598 for the mark IRONMAN TRIATHLON for
“wetsuits marketed in association with contests
consisting of running, biking and swimming” in
International Class 25 and “sporting equipment, namely,
stationary bicycles, treadmills, steppers, climbers,
elliptical trainers, stretching trainers, strength-
building equipment, namely, weight benches, weights,
home gym trainers, for conditioning the body; swimming
goggles, fins and masks; all marketed in association
with contests consisting of running, biking or
swimming” in International Class 28;

Reg. No. 2457898 for the mark IRONMAN TRIATHLON for
“handheld massagers marketed in association with
contests consisting of running, biking and swimming” in
International Class 10;

Reg. No. 2261283 for the mark IRONMAN for “machine
parts, namely linear ball and roller bearing slides” in
International Class 7;

Reg. No. 2891454 for the mark shown below for “Baby
stroller designed for running and walking” in
International Class 12;

and

Reg. No. 2911298 for the mark IRONMAN for “clothing for
men, women and youths namely, shirts, shorts, jackets,
swimwear, socks, gloves, hats, headbands, wristbands
and wetsuits, marketed in association with contests
Opposition No. 91153811
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consisting of running, biking and swimming” in
Internaional Class 25.

In the case of Reg. Nos. 2911303, 2869852, 2891454 and
2911298, opposer did not assert the registrations in its
notice of opposition. Opposer referenced them for the first
time and submitted status and title copies of these
registrations under a notice of reliance. Applicant has not
objected. In the absence of any objection we conclude that
the parties have tried the issues related to these
registrations by implied consent. Therefore, we deem the
pleadings amended to include opposer’s claims with regard to
these registrations. Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002). See generally
TBMP § 507.03(b)(2d ed. rev. 2004) and cases cited therein.
Furthermore, in its notice of opposition opposer did
reference Reg. Nos. 1258881, 1226245, 1375270, 1356881,
1370616, 1370617, 1873005, 2477113, 2454839, 2450736,
2449376, 2281583 and 1916623. However, opposer did not
submit status and title copies of any of these
registrations. Accordingly, we have not considered these
registrations.
Applicant
Applicant is a partnership and Mr. Peppler appears to
be its most active partner. Mr. Peppler indicates that he
has been involved in a series of information technology and
Internet-related businesses. Most recently he has formed a
Opposition No. 91153811
11
number of businesses which he conducts from his residence.
Mr. Peppler testified that he had conceived numerous
businesses and many had not succeeded. Mr. Peppler has set
up and maintained at least one Internet-related business.
Mr. Peppler discusses his involvment with a company which he
established and which apparently still maintains a web site
at AboutMe.com. In describing the venture, he states, “It’s
just a place where people can go and build their own
websites and we were going to do email, but we have issues
with email due to spam… So it’s just a place where people
can go and post their own websites and their own stuff.”
Mr. Peppler also refers to ventures he began with
FindAVideo.com and RedRocket.com which operated for a time
but no longer operate.
In conjunction with various businesses, including
applicant partnership, Mr. Peppler states that he owns
between 20,000 and 27,000 domain names either personally or
through businesses he has formed. He also states that he
has filed ten trademark applications for marks related to
those domain names for use in connection with businesses he
conceived related to those domain names. These include the
application which is the subject of this proceeding. Mr.
Peppler registered the ironman.com domain name in August of
2000. Mr. Peppler states that he has spent $30,000 on the
development of the business related to the IRONMAN.COM
Opposition No. 91153811
12
domain name and mark, including $10,000 for the development
of a tool bar for the web site related to the business. He
indicates that he has not done anything further with respect
to this business, and has not used the mark, due to the
litigation regarding the trademark.
LIKELIHOOD OF CONFUSION
We first address opposer’s claim regarding likelihood
of confusion. The opinion in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977), sets
forth the factors we may consider in determining likelihood
of confusion. We must determine the issue of likelihood of
confusion case by case and based on the evidence of record
relating to the factors. In re Majestic Distilling Co., 315
F.3rd 1301, 65 USPQ2d 1201, 1203-04 (Fed. Cir. 2003).
Accordingly, we will discuss each of the factors as to which
opposer or applicant has presented evidence or arguments.
The Marks
In comparing the marks we must consider the appearance,
sound, connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Opposition No. 91153811
13
Appeals for the Federal Circuit observed, “… in articulating
reasons for reaching a conclusion on the issue 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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Opposer argues, “WTC’s ‘IRONMANLIVE.COM’ mark and
Applicant’s ‘IRONMAN.COM’ mark are identical except for the
addition of the word ‘LIVE’ in the WTC mark. The dominant
part of both marks is the ‘IRONMAN’ name. The addition of
the word ‘LIVE’ in the WTC mark is nothing more than a
descriptive term regarding the nature of some of the web
content at the WTC site.” Opposer argues further that the
“.com” suffix does nothing to distinguish applicant’s mark
from opposer’s other IRONMAN marks.
Applicant does not argue, as such, that its mark
differs from opposer’s marks. Applicant states, “While the
identity of IRONMAN.COM to WTC’s registered marks is
evident, so is the identity of IRONMAN.COM to several
registered marks that are not related to WTC.” We will
discuss the strength of opposer’s IRONMAN marks later, but
for the purpose of comparing applicant’s mark to opposer’s
Opposition No. 91153811
14
marks we simply note applicant’s comment that the “identity”
of the parties’ marks is “evident.”
We conclude that opposer’s IRONMANLIVE.COM mark is
highly similar to applicant’s IRONMAN.COM mark in all
respects - appearance, sound, connotation and commercial
impression. We conclude so principally because IRONMAN is
both the first and the dominant element in both 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 purchaser
and remembered.”). Here, the inclusion of “LIVE” in
opposer’s mark is insufficient to distinguish the marks. We
would conclude so whether “LIVE” is considered merely
descriptive, as opposer argues, or suggestive of the content
of opposer’s services. We note further that the presence of
the “.com” element in both marks contributes to the overall
similarity even though it is not a distinctive element in
its own right. See In re Oppendahl & Larson LLP, 373 F.3d
1171, 71 USPQ2d 1370 (Fed. Cir. 2004); In re Reed Elsevier
Properties Inc., 77 USPQ2d 1649 (TTAB 2005).
Furthermore, we conclude that applicant’s IRONMAN.COM
mark is similar to opposer’s other IRONMAN marks covered by
the remaining registrations noted above. In each instance,
again, IRONMAN is the dominant element of the registered
Opposition No. 91153811
15
mark, and as we concluded above, the dominant element in
applicant’s mark. In the case of all of opposer’s
registered marks, other than IRONMANLIVE.COM, the additional
word elements are merely descriptive or generic, and as
such, subordinate to IRONMAN in contributing to the
appearance, sound, connotation and commercial impression of
the marks. Also, in the case of opposer’s registered marks
which include a design element, in all instances the design
element is subordinate to the dominant IRONMAN word element.
In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997)
Furthermore, the “.com” element in applicant’s
IRONMAN.COM mark is insufficient to distinguish applicant’s
mark from the registered marks which do not include “.com”
as an element. The “.com” element is devoid of source-
identifying characteristics, and as such, is not
distinctive. Consequently, it has no significant impact on
the overall appearance, sound, and most importantly the
connotation and commercial impression projected by the
IRONMAN.COM mark. In re Oppendahl & Larson LLP, 71 USPQ2d
at 1373.
More generally, in this case, we note that the “.com”
element is not combined with other elements in either mark
in a way which creates a new and distinct commercial
impression. Thus, it is unlike the hypothetical
Opposition No. 91153811
16
“tennis.net” example the Federal Circuit discussed in
Oppendahl & Larson where the addition of the top level
domain (TLD) “.net” created a new and distinctive
combination. Id. at 1373.
The Goods and Services and Channels of Trade
The goods and services of opposer and applicant need
not be identical to find likelihood of confusion under
Section 2(d) of the Trademark Act. They need only be
related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods or services originate
from the same source. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). See also
On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080,
56 USPQ2d 1471 (Fed. Cir. 2000);
Furthermore, in comparing the goods and services and
the channels of trade for the goods and services, we must
consider the goods and services as identified in the
application and registrations. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“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,
Opposition No. 91153811
17
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.”)
Also, the proper inquiry is not whether the goods and
services could be confused, but rather whether the source of
the goods and services could be confused. Safety-Kleen
Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476,
480 (CCPA 1975); In re Rexel, Inc., 223 USPQ 830, 831 (TTAB
1984).
Opposer relies primarily on its registration for
IRONMANLIVE.COM for “providing information concerning
athletic competitions featuring bicycling, swimming and
running and participants therein via global computer
networks,” and applicant agrees that these services are the
closest opposer has to applicant’s. Applicant’s Brief at 7.
Accordingly, we will concentrate on this registration in our
likelihood of confusion analysis.
Applicant identifies its services as “computer services
providing customized online web pages featuring user-defined
information, which includes search engines and online
informational web links to news, weather, sports, current
events, reference materials, and customized e-mail messages,
Opposition No. 91153811
18
all in a wide range of user-defined fields.” Opposer
argues, “Both marks are for domain names for computer
services. Like WTC’s mark Applicant’s proposed mark is for
information relating to ‘sports.’ Thus the similarity of
the described services is great. Applicant’s partial focus
on sports also raises a likelihood of confusion issue with
respect to the many other IRONMAN marks that relate to
triathlon competitions, swimming and biking.” Opposer’s
Main Brief at 13-14.
Applicant attempts to distinguish its “computer
services” from those of opposer by stating,
The closest service that WTC provides is in relation to
its IRONMANLIVE.COM registration for “providing
information concerning athletic competitions featuring
bicycling, swimming and running and participants
therein via global computer networks” which is a non-
user specific information web site operated to support
triathlon services associated with WTC’s other
servicemark (sic) registrations… In distinction IMC
seeks to provide customized web pages based on user-
defined information, such a service would require a
registration or similar process to create the user-
defined fields, all of which would increase the
scrutiny of a customer… Undeniably, WTC and IMC are
not marketing the same goods (IMC does not market any
goods) and services.

Applicant’s Brief at 7.
Applicant’s identification of services is broad and
arguably somewhat ambiguous. To the extent we might
legitimately look to evidence to understand the nature of
those services, we have very little to consider. Cf. In re
Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990). When
Opposition No. 91153811
19
asked whether he had “any documents showing that you had
ever put anything up at the Ironman.com web site” Mr.
Peppler said “no.” He also said that he did not remember
anything that he may have put up on the site. At the time
of Mr. Peppler’s testimony the domain name accessed a page
which simply indicated that something was “coming soon.” In
fact, applicant has not claimed any use of its mark to date.
As we stated above, Mr. Peppler also indicated that he had
put his plans for use of the IRONMAN.COM mark on hold due to
this litigation.
As to his future intentions with regard to use of the
mark, Mr. Peppler testified as follows:
Q Do you have any intent to use this website in the
future?
A Yes.
Q How do you intend to use it?
A In the ways I’ve already described.
Q Which is what specifically again?
A Community site with email so you could have Joseph
Weissman at IronMan.com and post up on the website.
Q Any other way that you intend to use this website
in the future?
A It, not, (sic) I mean that hopefully will be
enough.
Q So then you intend to use Ironman.com basically
just as a community site where people can come and
create their own web pages?
A Yes.

Applicant’s counsel had the opportunity to examine Mr.
Peppler with regard to this and other issues but did not do
so. Nor has applicant provided any other evidence regarding
the services applicant identified in its application.
Opposition No. 91153811
20
In its fundamental argument regarding the similarity of
its services to those identified in the registration opposer
oversimpifies the matter. We must look beyond the facts
that both parties provide “computer services” and that the
content in each case relates to “sports” to some extent.
Cf. Information Resources Inc. v. X*Press Information
Services, 6 USPQ2d 1034, 1038 (TTAB 1988)(no per se rule
holding all computer goods related). We must also look
beyond the simple fact that both services are or would be
provided online. These facts alone would not be sufficient
to conclude that the services are related. Rather, we must
look to the identifications of services in detail to
determine whether, under the totality of the circumstances
before us, opposer’s services are related to applicant’s.
To the extent applicant’s identification of services
may be ambiguous, opposer has argued that we should construe
any ambiguity in the identification in favor of opposer,
citing David Crystal, Inc. v. Soo Valley, Co., 471 F.2d
1245, 176 USPQ 326 (CCPA 1973) and other cases. In
construing the scope of applicant’s services - “computer
services providing customized online web pages featuring
user-defined information, which includes search engines and
online informational web links to news, weather, sports,
current events, reference materials, and customized e-mail
messages, all in a wide range of user-defined fields” – we
Opposition No. 91153811
21
can follow our usual analysis and need not entertain any
presumptions regarding ambiguities.
The construction of “providing customized online web
pages…” is most critical in that analysis. In the absence
of any explicit limitations, we conclude that “providing”
could include both the service of enabling users to design
and display such pages, as well as the service of affording
users the opportunity to view the pages. While designing
web pages may require a higher level of involvement and
attention by the party serviced, as applicant suggests, the
viewing of such pages by a party would require far less
involvement and attention. We also conclude that members of
the general public would be among those potentially availing
themselves of the service either by using the service to
design and display a customized web page or to view a page.
We also conclude, as the identification itself
specifies, that personalized web pages made available for
viewing may include materials or links related to sports.
“Sports” necessarily encompasses biking, running or
swimming. In fact, this type of subject matter could be the
only or dominant subject matter dispalyed on one or more
personalized web pages on the IRONMAN.COM site.
Most importantly, we conclude that the IRONMAN.COM mark
could be displayed and encountered by either potential type
of party serviced, that is, either one seeking to design and
Opposition No. 91153811
22
display a personalized web page or one who is merely viewing
such pages. In the latter case, the viewer, even a casual
user of the service, could encounter the mark in conjunction
with a page or pages which include content related to
running, biking or swimming.
Accordingly, we conclude that the services of applicant
and registrant, as identified in the IRONMAN.COM application
and the INRONMANLIVE.COM registration, are related. We
conclude further that applicant’s services are also related
to opposer’s services identified in other registrations
noted above, in particular, those registrations which
identify services in the field of sports.2 Applicant’s
identification of services specifies “sports” as being among
the potential subject matter for its services.
Furthermore, we conclude on the same basis that
applicant’s services and opposer’s services, which we have
determined to be related, could reach the same consumers
through the same or related trade channels, that is,
principally online.
Fame
Opposer also argues that its marks are famous and
applicant disagrees.
Opposer’s evidence regarding the fame of its IRONMAN
marks includes: 1) long use, that is, conducting opposer’s

2 Reg. Nos. 1353313, 1462281 and 2869852.
Opposition No. 91153811
23
championship and qualifying events under the IRONMAN marks
for nearly 30 years; 2) broadcast of its championship events
on national television since 1982; 3) recognition accorded
those telecasts through the award of twelve Emmys; 4)
broadcast of seven U.S. qualifying events on cable; 5) the
operation of opposer’s web site at IRONMANLIVE.COM since
1998 with “upwards of 30 million page views” annually with
visits of 12 to 15 minutes; 5) video streaming of opposer’s
championship event on the Internet with three and a half
million visitors viewing the race in the previous year; and
6) promotions of opposer’s events and IRONMAN marks through
sponsors and licensed products, including the TIMEX IRONMAN
sports watch, Foster Grant IRONMAN sunglasses, and other
products noted above. Opposer also notes advertising
campaigns featuring its marks broadcast on MTV and during
NASCAR events and the AFC and NFC championship games.
While the showing is superficially impressive, it lacks
precision in a number of respects. Opposer fails to provide
precise figures regarding the number of participants other
than for the 2004 championship event. Opposer does not
indicate the number of viewers for any of the event
telecasts, nor does opposer specify sales figures for any of
its licensed products for particular periods of time.
Similarly, opposer often fails to distinguish U.S.
activities from activities outside the United States;
Opposition No. 91153811
24
activities outside the United States are not relevant for
our purposes. For example, Mr. Fertic states that the TIMEX
IRONMAN watch is the “number-one selling sports watch in the
world,” but he fails to specify precise sales figures either
overall or for any specific years, and he fails to
differentiate U.S. sales from sales outside the United
States. Finally, in stating that opposer spends “several
million dollars” on advertising, the testimony does not
indicate expenditures for specific time periods. In this
case, and more generally, opposer fails to provide documents
reporting relevant data.
The lack of precision detracts significantly from the
impact of a showing which might otherwise be highly
impressive. See Packard Press Inc. v. Hewlett-Packard Co.,
227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir. 2000).
Nonetheless, the record is adequate to establish that the
IRONMAN marks have achieved a significant degree of
recognition or renown with respect to entertainment services
related to athletic competitions involving triathlons,
running, biking and swimming. The recognition or renown
extends to all versions of the mark covered by the
registrations opposer submitted; IRONMAN is by far the most
prominent and dominant element in each of these marks,
including IRONMANLIVE.COM.
Opposition No. 91153811
25
The degree of renown shown here entitles opposer to a
somewhat broader scope of protection for its IRONMAN marks.
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). See Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992). Though we conclude on this record that
opposer’s IRONMAN marks possess a significant degree of
recognition or renown the showing falls short of that
required to qualify the marks for inclusion in the select
class of marks which are characterized as famous. See
NASDAQ Stock Market Inc. v. Antarctica S.r.l., 69 USPQ2d
1718 (TTAB 2003); Toro Co. v. ToroHead Inc., 61 USPQ 1164,
1173 (TTAB 2001).
In view of this renown, we further conclude that the
scope of protection for opposer’s IRONMAN marks in
conjunction with its identified sports-contest entertainment
services would extend to related services such as “computer
services providing customized online web pages featuring
user-defined information, which includes search engines and
online informational web links to news, weather, sports,
current events, reference materials, and customized e-mail
messages, all in a wide range of user-defined fields.” We
note here again our analysis with regard to the scope of
applicant’s services.
Opposition No. 91153811
26
Third-Party Registration/Use of IRONMAN Marks
As we noted above, applicant argues that opposer’s
IRONMAN marks are weak, and applicant offers nine third-
party registrations for marks consisting of or comprising
IRONMAN to support this position. In fact, this is the only
evidence applicant submitted in the case. At the outset we
note our conclusion immediately above that opposer’s IRONMAN
marks have achieved a degree of recognition and renown, a
conclusion which necessarily implies that opposer’s marks
are strong and not weak.
We also point out that third-party registrations are
entitled to little weight on the question of likelihood of
confusion. See, e.g., In re Hub Distributing, Inc., 218
USPQ 284 (TTAB 1983). Such registrations are not evidence
that the marks are in use or that the public is familiar
with them. See, e.g., AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973). As
the Federal Circuit has stated, “[t]he probative value of
third-party trademarks depends entirely upon their usage.”
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1693.
Furthermore, the goods and services covered by the
registrations range from “telephone booths” to “refractory
crucibles” to “tires for motor vehicles“ to “fertilizers for
turf and agricultural use.” The goods and services
Opposition No. 91153811
27
identified in the third-party registrations are generally
far afield from the services of both opposer and applicant.
With respect to the goods and services, the most relevant
registration is Reg. No. 1899110 for the mark IVAN “IRONMAN”
STEWART for “promoting the race driving products of others
and race driving, by making personal appearances, custom
commercials, product promotion, product endorsement, and the
like” in International Class 35. However, in this
registration the mark conveys a very different connotation
than opposer’s IRONMAN marks or applicant’s IRONMAN.COM
mark. Thus, the registrations fail to demonstrate that
IRONMAN is a weak mark or to rebut the evidence submitted by
opposer of the strength of its marks.
In sum, we conclude that applicant has failed to
establish that opposer’s rights in the IRONMAN marks are
weakened as a result of third-party use.
Actual Confusion
Opposer also argues that there has been actual
confusion. Specifically, opposer references instances in
which individuals have used the ironman.com domain name in
an attempt to access opposer’s website without success and
similar instances of confusion with regard to the domain
name. Opposer argues, “People contact WTC regularly asking
whether WTC’s website is down or if something is wrong with
WTC’s server.” Opposer’s Main Brief at 17. Mr. Fertic
Opposition No. 91153811
28
testified that, “A lot of people would e-mail and say, hey,
you’re down. Your web site is down…” Fertic Testimony at
42. Opposer testified as to one instance in which Kodak
listed ironman.com as the web address for ordering
photographs of opposer’s events. Id. at 40. Other
companies, such as Intel, have made similar mistakes,
according to Mr. Fertic’s testimony.
In responding to opposer’s evidence and arguments
regarding actual confusion applicant argues that the four
specific instances of confusion which opposer identifies are
insufficient to show confusion. Applicant questions whether
the examples truly show consumer confusion and more
generally argues that opposer has failed to show that “an
‘appreciable’ number of consumers” have been confused.
Applicant states, “The infringing use need not confuse a
majority of consumers; a confusion level of 15% is not
‘small’ or ‘de minimis’ and is sufficient for liability
under the Lanham Act. James Burrough, Ltd. v. Sign of
Beefeater, Inc., 540 F.2d 266, 279 (7th Cir. 1976). WTC has
failed to even come close to satisfying this burden of
proof.” Applicant’s Brief at 3.
We find flaws in the positions of both opposer and
applicant on this issue. Most importantly, we begin by
noting the practical difficulty in proving actual confusion
Opposition No. 91153811
29
where, as here, one party has not even begun to use its
mark.
In arguing that there has been actual confusion,
opposer relies principally on evidence that companies and
individuals have mistakenly tried to use the ironman.com
domain name. In this evidence, there is no indication that
relevant consumers confused the source of any goods and
services since applicant has not used its mark. In fact,
there is no evidence here that applicant has begun to use
its mark or provide the service it identifies in the
application under that mark. Accordingly, we conclude that
the “confusion” which opposer’s evidence demonstrates is not
the type of trademark confusion contemplated under the
actual-confusion factor in du Pont.
In arguing against opposer’s actual confusion evidence,
applicant relies on the James Burrough case.3 This reliance
is misplaced.4 In the process, applicant misconstrues the
actual-confusion factor for purposes of this proceeding. It
is not necessary to show actual confusion at all, let alone
a defined level of confusion as applicant argues, in order

3 In fact, in a later opinion in the same case the Seventh
Circuit emphasized that, even in an infringement action,
“likelihood of confusion [not actual confusion] is the gravamen
of the action.” James Burrough Ltd. v. Sign of the Beefeater,
Inc., 572 F.2d 574, 197 USPQ 277, 279 n.2 (7th Cir. 1978).
4 Here and elsewhere applicant relies on infringement cases from
the federal courts. These cases are of limited relevance in this
proceeding. In re Bercut-Vandervoort & Co., 229 USPQ at 765
(TTAB 1986).

Opposition No. 91153811
30
to establish likelihood of confusion. See Weiss Associates
Inc. v. HRL Associates Inc., 902 F.2d 1546, 223 USPQ 1025
(Fed. Cir. 1990). In this case, where the intent-to-use
applicant has not begun to use the mark on the services
identified in the application, we must necessarily look to
factors other than actual confusion to determine likelihood
of confusion.
We also reject applicant’s implied argument that the
absence of actual confusion in this record supports its
position. The Federal Circuit has stated, “A showing of
actual confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight (citation omitted) . . .”
Majestic, 65 USPQ2d at 1205. See also In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). Again, in the
case of an intent-to-use application where use has not
commenced it is not logical to ascribe importance to the
actual-confusion factor.
Accordingly, we conclude that the actual-confusion
factor is neutral in this case.
Bad Faith
In developing its evidence and in its briefs opposer
devotes substantial attention to applicant’s alleged bad
faith. We must look to the record to see whether opposer
Opposition No. 91153811
31
has established bad faith. See Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Blue
Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1820 (TTAB
2005).
Opposer offers two types of evidence to establish
applicant’s bad faith. First, opposer presents evidence
regarding Mr. Peppler’s activities with regard to domain
name registrations unrelated the IRONMAN marks,5 and
secondly opposer presents testimony from Mr. Peppler
regarding his “reasons” for selecting the IRONMAN.COM mark.
With respect to the domain name registrations, Mr. Peppler
does testify that he and companies he controlled registered
at least 20,000 and possibly as many as 27,000 domain names.
Mr. Peppler also testified that he received about 100 cease-
and-desist letters regarding domain names he had registered,
apart from ironman.com. Mr. Peppler testified further that
he or companies he controlled had been compelled to transfer
various domain name registrations to complaining parties as
a result of determinations in eight Uniform Dispute
Resolution (UDRP) proceedings.

5 After the close of the testimony periods, opposer had attempted
to reopen its testimony period to place in evidence a decision
under the Uniform Dispute Resolution Policy (“UDRP”) whereby
applicant was compelled to transfer the ironman.com domain name
registration to opposer. The Board denied the request in a
decision dated February 16, 2006. Accordingly, we have not
considered that evidence.
Opposition No. 91153811
32
In response to opposer’s questions regarding
applicant’s reasons for selecting the IRONMAN.COM mark Mr.
Peppler states, “I love the music and I love the song Iron
man and that’s why I wanted it.” He then explains that Iron
Man is a song by Black Sabbath. Opposer notes that Mr.
Peppler was unable to recite any of the lyrics of the Iron
Man song and suggests that this calls into question Mr.
Peppler’s account of his reason for selecting the
IRONMAN.COM mark.
The evidence submitted by opposer certainly casts doubt
on applicant's bona fides in adopting its mark. However,
because we find that opposer has established likelihood of
confusion even in the absence of such evidence, we do not
need to reach the question of whether applicant adopted its
mark in bad faith, and in an attempt to capitalize on
opposer's IRONMAN marks. Cf. NASDAQ Stock Market Inc. v.
Antartica S.r.l., 69 USPQ2d at 1733(“On the other hand,
merely because we decline to find that applicant adopted its
mark [NASDAQ] in bad faith, it does not follow from this
record that applicant has acted entirely in good faith.
While the factor does not weigh in the balance against
applicant, it does not weigh in its favor either”).
Therefore, we have not considered bad faith as a factor
in reaching our conclusions with regard to likelihood of
confusion in this case.
Opposition No. 91153811
33
Conclusion
Finally, we have considered all relevant evidence in
this case bearing on the du Pont factors and conclude that
there is a likelihood of confusion between opposer’s IRONMAN
marks, most notably the IRONMANLIVE.COM mark as well as
opposer’s other IRONMAN marks for sports-related services in
Reg. Nos. 1353313, 1462281 and 2869852, and applicant’s
IRONMAN.COM mark. We conclude so principally because the
marks of opposer and applicant are similar and the services
of opposer and applicant are related, and due to the
strength of opposer’s IRONMAN marks.
DILUTION
Opposer also asserts dilution as a ground for
opposition. In view of our decision to sustain the
opposition on the ground of likelihood of confusion, it is
not necessary for us to consider opposer’s dilution claim.
Decision: The opposition is sustained on the ground of
likelihood of confusion and registration is refused.