Alfwear Inc.v.Shuff

Trademark Trial and Appeal Board

Dec 1, 2017

No. 91224467 (T.T.A.B. Dec. 1, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 1, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Alfwear Inc.
v.
Shuff
_____

Opposition No. 91224467
_____

Trent Baker of Baker & Associates PLLC and S. Brandon Owen of Ray Quinney &
Nebeker P.C., for Alfwear Inc.

Eric C. Wood and Thomas A. Kulick of Scheef & Stone, L.L.P.,
for Daniel Shuff.
_____

Before Bergsman, Wellington and Larkin,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Daniel Shuff (“Applicant”) seeks registration on the Principal Register of the mark
KU:L (stylized), shown below, for “bicycles,” in Class 12.1

1 Application Serial No. 86595716 was filed on April 13, 2005, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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Alfwear Inc. (“Opposer”) filed an opposition against the registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark so resembles Opposer’s federally registered trademarks
KUHL, KÜHL, and KUUL for lip balm, clothing, bottled water, and fabrics, as to be
likely to cause confusion. Specifically, Opposer pleaded ownership of the following
registrations:
•Registration 1990375 for the mark KÜHL (stylized), shown below,

for the following goods:
Rugged outdoor clothing, namely, jackets, shirts, pants,
shorts, t-shirts, and hats, in Class 25; and
Bottled water, in Class 32.2
The registration includes the following translation statement: “The English
translation of the mark is ‘cool.’”
•Registration No. 3916866 for the mark KÜHL (standard characters) for “belts;
bottoms; hats; pants; shirts; shorts; tops,” in Class 25.3 The registration includes the
following translation statement: “The English translation of ‘Kühl’ is ‘cool.’”
•Registration No. 4441177 for the mark KUHL (standard characters) for the
following goods:
Lip balm, in Class 3;

2 Registered July 30, 1996; second renewal.
3 Registered February 8, 2011; Sections 8 and 15 declarations accepted and acknowledged.
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Belts; bottoms; hats; jackets; pants; shirts; shorts; tops;
fabric sold as an integral component of finished clothing,
namely, belts, bottoms, hats, jackets, pants, shirts, shorts
and tops, in Class 25; and
Bottled water, in Class 32.4
The registration includes the following translation statement: “The English
translation of ‘Kühl’ in the mark is ‘cool.’”5
•Registration No. 4777532 for the mark KUUL (standard characters) for the
following goods:
Textile fabrics for the manufacture of clothing, in Class 24;
and
Belts; bottoms; hats; jackets; pants; shirts; shorts; tops, in
Class 25.6
Opposer also pleaded that Applicant’s mark is likely to dilute the distinctiveness
of Opposer’s marks pursuant to Section 43(c) of the Trademark Act, 15 U.S.C.
§1125(c).
I. Preliminary Issues
A. Clarifying Opposer’s likelihood of confusion claim.

In its Notice of Opposition, Opposer pleaded that it has a family of “Kühl” marks,7
and that Applicant’s mark is likely to cause confusion with that family.8 Opposer did
not allege that Applicant’s mark is likely to cause confusion with any of the marks in

4 Registered November 26, 2013.
5 We note that Opposer’s mark is KUHL not “Kühl.”
6 Registered July 21, 2015.
7 Notice of Opposition ¶¶7-10, 14-17, and 21-23 (1 TTABVUE 9-13).
8Notice of Opposition ¶21 (1 TTABVUE 12).
Opposition No. 91224467
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Opposer’s pleaded registrations. However, in their briefs, both parties identified
likelihood of confusion with the individual marks in Opposer’s pleaded registrations
as an issue and not likelihood of confusion with Opposer’s alleged “KÜHL” family of
marks.9 Accordingly, we deem the pleadings to be amended by the parties’ express
consent pursuant to Fed. R. Civ. P. 15(b)(2) to assert both a family of marks argument
and arguments that Applicant’s mark is confusingly similar to the marks in each of
Opposer’s pleaded registrations.
B. Whether Opposer has a family of “Kühl” marks?
The Federal Circuit, our primary reviewing court, defines a family of marks as
follows:
A family of marks is a group of marks having a recognizable
common characteristic, wherein the marks are composed
and used in such a way that the public associates not only
the individual marks, but the common characteristic of the
family, with the trademark owner. Simply using a series of
similar marks does not of itself establish the existence of a
family. There must be a recognition among the purchasing
public that the common characteristic is indicative of a
common origin of the goods.…
* * *
Recognition of the family is achieved when the pattern of
usage of the common element is sufficient to be indicative
of the origin of the family. It is thus necessary to consider
the use, advertisement, and distinctiveness of the marks,
including assessment of the contribution of the common
feature to the recognition of the marks as of common origin.
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-
92 (Fed. Cir. 1991). A family of marks is created by use, not registration. See Polaroid

9 Opposer’s Brief, p. 6 (39 TTABVUE 7) and Applicant’s Brief, p. 1 (43 TTABVUE 6).
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Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 420-21 (CCPA 1965)
(ownership and registration of a number of marks containing a common feature is not
sufficient to create a family of marks); Evans Prods. Co. v. Boise Cascade Corp., 218
USPQ 160, 162 (TTAB 1983) (“Ownership of two registrations containing a common
word is not sufficient per se to create the exclusivity under the ‘family of marks’
doctrine.”).
Opposer primarily uses KÜHL or KÜHL (stylized), as shown below:

Opposer uses the name KUHL to promote KÜHL products on social media but there
is no evidence that Opposer uses KUHL on any products and the use of KUHL and
KÜHL together is sporadic at best.10 There is no testimony or evidence showing the
use of KUUL. Evan Shapiro, Opposer’s Vice President, and Melanie Webb, Opposer’s
Marketing Director, testified regarding Opposer’s use of KÜHL. They did not refer to
KUHL or KUUL.11 The most that can be said is that Opposer uses both KUHL and
KÜHL, but it does not have a family of marks. See Colony Foods, Inc. v. Sagemark,
Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed. Cir. 1984) (“That Colony has a number of
marks combining HOBO with another word does not establish any rights of Colony
in the word HOBO as a ‘family’ name.”); The Land-O-Nod Co. v. Paulison, 220 USPQ

10 Webb Decl. Exhibit D, E, F, G, J and K (27 TTABVUE 143-147 and 28 TTABVUE 3-9, 54-
58, 60, 63, 72, 74). See also REI.com advertising the sale of KUHL clothing (30 TTABVUE
51-55).
11 26 TTABVUE and 27 TTABVUE.
Opposition No. 91224467
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61, 66 (TTAB 1983) (opposer “had a ‘couple’ of marks, not a ‘family’’). In other words,
Opposer is using a couple of variations of its KÜHL mark without promoting a KÜHL
family of marks. See, e.g., Int’l Diagnostic Tech., Inc. v. Miles Labs., Inc., 746 F.2d
798, 223 USPQ 977 (Fed. Cir. 1984) (Opposer proved its ownership of a family of
marks ending with a “Stix” suffix comprising N-MULTISTIX-C, N-MULTISIX SG,
CHEKSTIX, and C-STIX); AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177
USPQ 268 (CCPA 1973) (Opposer proved its ownership of a “fish” family of marks
comprising SAILFISH SPORTABOUT, ALCORT SUNFISH, ALCORT CATFISH,
and FLYING FISH); Motorola, Inc. v. Griffiths Elec., Inc., 317 F.2d 397, 137 USPQ
551 (CCPA 1963) (Opposer proved its ownership of a family of “Golden” marks
comprising GOLDEN VOICE, GOLDEN VIEW, GOLDEN BEAM, GOLDEN HEART,
GOLDEN M, and GOLDEN SATELLITE).
In view of the foregoing, Opposer has not shown that it has a family of marks.
Because Opposer’s mark for “rugged outdoor clothing, namely,
jackets, shirts, pants, shorts, t-shirts, and hats” (Registration 1990375) is closer to
Applicant’s mark for “bicycles” than any of the marks in Opposer’s
other pleaded registrations, we concentrate our likelihood of confusion and dilution
analysis on Opposer’s KÜHL (stylized) mark.12 In other words, if we do not find a
likelihood of confusion on the basis of Opposer’s KÜHL (stylized) mark, we would not

12 There is no testimony or evidence regarding whether Opposer’s KÜHL bottled water is
related to Applicant’s KU:L bicycles.
Opposition No. 91224467
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find a likelihood of confusion on the basis of the marks in Opposer’s other pleaded
registrations. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. The record also includes the
following items:
A. Stipulation
The parties stipulated to the admissibility of the discovery depositions of the
following people:13
1. Applicant;
2. Michael S. Pifer, Applicant’s customer;
3. Eric Robert Lorentz, a freelance web developer;
4. Omar Mejia, an independent designer; and
5. JoAnne Lythgoe, Opposer’s graphic designer.
B. Opposer’s testimony and evidence.
1. Notice of reliance on Opposer’s pleaded registrations printed from the
USPTO electronic database showing their current status and title;14
2. Notice of reliance on twenty-four (24) third-party registrations showing the
same mark registered for clothing and bicycles;15

13 17 TTABVUE.
14 18 TTABVUE 8-41.
15 18 TTABVUE 54-116. This notice of reliance was filed a second time at 24 TTABVUE.
Opposition No. 91224467
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3. Notice of reliance on thirty (30) third-party websites showing the sale of
bicycles and clothing by the same entity.16 Ten (10) of the third-party
websites show the same mark used to identify clothing and bicycles.
4. Notice of reliance on excerpts from the discovery deposition of Applicant;17
5. Notice of reliance on excerpts from the discovery deposition of Michael Pifer,
Applicant’s customer;18
6. Notice of reliance on excerpts from the discovery deposition of Omar Mejia,
an independent designer;19
7. Declaration of JoAnne Davidson, an individual who went into a REI store
in New York City and photographed bicycles and messenger bags;20
8. Declaration of Evan Shapiro, Opposer’s Vice President;21
9. Declaration of Melanie Webb, Opposer’s Marketing Director;22
10. Notice of reliance on excerpts from the discovery deposition of JoAnne
Lythgoe, Opposer’s graphic designer;23 and
11. Notice of reliance on the following items:
a. Excerpts from the REI websites (newsroom.rei.com and rei.com)

16 19 TTABVUE.
17 21 TTABVUE.
18 22 TTABVUE.
19 23 TTABVUE.
20 25 TTABVUE.
21 26 TTABVUE.
22 27-28 TTABVUE.
23 29 TTABVUE.
Opposition No. 91224467
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purportedly to provide information regarding Opposer’s largest
customer;24
b. Excerpts from the Back Country website (backcountry.com), one of
Opposer’s customers;25
c. Excerpts from Twitter.com purportedly to show “the number of
Twitter followers of an individual who tagged Alfwear in one of his
tweets”;26
d. Excerpts from Scheels.com, one of Opposer’s customers;27
e. Excerpts from Eastern Mount Sports website (ems.com), one of
Opposer’s customers;28 and
f. Excerpts from GanderMountain.com, one of Opposer’s customers.29
C. Applicant’s testimony and evidence.30
1. Notice of reliance on excerpts from the discovery deposition of Eric Lorentz,
a freelance web developer;31

24 30 TTABVUE 7-55.
25 30 TTABVUE 58-66.
26 30 TTABVUE 68-73. We could find no reference to Opposer in this document.
27 30 TTABVUE 75-76.
28 30 TTABVUE 78-79.
29 30 TTABVUE 81-82.
30 Excerpts from Applicant’s discovery deposition and the Lythgoe, Mejia, and Pifer
depositions were introduced by Opposer. Once testimony and evidence has been introduced,
it may be relied upon by either party for any purpose permitted by the Federal Rules of
Evidence. Trademark Rule 2.120(k)(7), 37 C.F.R. § 2.120(k)(7). It need not be introduced a
second time.
31 34 TTABVUE.
Opposition No. 91224467
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2. Notice of reliance on excerpts from the discovery deposition of JoAnne
Lythgoe;32
3. Notice of reliance on excerpts from the discovery deposition of Omar Mejia;33
4. Notice of reliance on excerpts from the discovery deposition of Michael
Pifer;34 and
5. Notice of reliance on excerpts from the discovery deposition of Applicant.35
III. Standing
Because Opposer’s pleaded registrations have been made of record, Opposer has
established its standing in this proceeding. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
IV. Priority
Because Opposer has properly made of record its pleaded registrations, and
because Applicant has not filed a counterclaim to cancel any of Opposer’s pleaded
registrations, Section 2(d) priority is not an issue in the opposition as to the marks
and the goods covered by the pleaded registrations. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).

32 35 TTABVUE.
33 36 TTABVUE.
34 37 TTABVUE.
35 38 TTABVUE.
Opposition No. 91224467
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V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
Opposition No. 91224467
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relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The strength and fame of Opposer’s KÜHL (stylized) mark.
In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength); Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks
and Unfair Competition § 11:83 (4th ed. 2017) (“The first enquiry focuses on the
inherent potential of the term at the time of its first use. The second evaluates the
actual customer recognition value of the mark at the time registration is sought or at
the time the mark is asserted in litigation to prevent another's use.”). Market
strength is the extent to which the relevant public recognizes a mark as denoting a
single source. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d at 1899.
1. The inherent strength of Opposer’s KÜHL trademark.
KÜHL is the German word for “cool.” Because KÜHL is likely to be pronounced
as “Cool,” consumers are likely to associate KÜHL with the slang word “Cool.” See
the discussion infra. The word “cool” is defined, inter alia, as a slang term for “great;
Opposition No. 91224467
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fine; excellent: a real cool comic,” or “acceptable; satisfactory; okay: If you want to stay
late, that’s cool.”36 Accordingly, when KÜHL is used in connection with clothing, it is
suggestive and, therefore, inherently distinctive. As noted above, Opposer has made
of record its pleaded KÜHL registrations which are not subject to any counterclaims
for cancellation. The registrations are “prima facie evidence of the validity of the
registered mark[s] and the mark[s], of owner’s ownership of the mark[s], and of the
owner’s exclusive right to use the registered mark[s] in commerce on or in connection
with the goods or services specified in the certificate.” Section 7(b) of the Trademark
Act, 15 U.S.C. § 1057(b).
2. The commercial strength of Opposer’s KÜHL trademark.
Opposer alleges that its KÜHL mark has become “a unique and famous identifier
of the Opposer’s goods”37 and argues that the evidence supports finding that
Opposer’s mark is famous.38 Fame, if it exists, plays a dominant role in the likelihood
of confusion analysis because famous marks enjoy a broad scope of protection or
exclusivity of use.
A famous mark has extensive public recognition and renown. Bose Corp. v. QSC
Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker

36 Dictionary.com based on the Random House Dictionary (2017). The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d
594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96
USPQ2d 1031, 1038 n.14 (TTAB 2010).
37 Notice of Opposition ¶¶10 and 13 (1 TTABVUE 10-11).
38 Opposer’s Brief, pp. 28-34 (39 TTABVUE 29-35).
Opposition No. 91224467
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Toys, Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992).
“[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very
weak.’” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed Cir. 2017) (quoting Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059,
1063 (Fed. Cir. 2003))). Fame may be measured indirectly by the volume of sales of
and advertising expenditures for the goods and services identified by the marks at
issue, “the length of time those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by independent sources of the
products identified by the marks, as well as the general reputation of the products
and services. Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at 1305-06 and 1309.
Although raw numbers of product sales and advertising expenses sometimes suffice
to prove fame, raw numbers alone may be misleading. Some context in which to place
raw numbers may be necessary (e.g., the substantiality of the sales or advertising
figures for comparable types of products or services). Id. at 1309.
Finally, because of the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, it is the duty of the party asserting that its
mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning LLC, 668
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F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Opposer introduced the following evidence to prove that KÜHL is a famous mark:
1. Opposer has been using the KÜHL mark since 1993.39 While long use of a mark
is indicative of commercial success, it is not conclusive evidence of fame. Cf. In
re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1286 (TTAB 2000) (applicant’s
use of the product designs ranging from seven to seventeen years is insufficient
to bestow acquired distinctiveness); In re Packaging Specialists, Inc., 221
USPQ 917, 920 (TTAB 1984) (finding evidence submitted by applicant
insufficient to establish acquired distinctiveness of PACKAGING
SPECIALISTS, INC., for contract packaging services, notwithstanding, inter
alia, continuous and substantially exclusive use for sixteen years, deemed “a
substantial period but not necessarily conclusive or persuasive”).
2. Opposer has used the KÜHL mark on 300 styles of outdoor wear per season;40
3. In 2012, Opposer had $33 million dollars in retail sales.41 Opposer has not
provided any context for this figure, so we cannot measure it against other
brands. Because Opposer has provided sales figures for one year, we do not
know whether the 2012 revenues were an outlier or part of a trend. Also, we

39 Shapiro Decl. ¶13 (26 TTABVUE 6).
40 Shapiro Decl. ¶¶14 and 22 (26 TTABVUE 6 and 7).
41 Shapiro Decl. ¶36 (26 TTABVUE 8). The Shapiro testimony did not expressly divide the
sales between U.S. and international sales. For purposes of determining whether Opposer’s
mark is famous, we will give Opposer the benefit of the doubt and interpret the sales as being
sales in the United States.
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do not know how many units of clothing the revenues comprise or how many
different customers purchased Opposer’s KÜHL branded clothing.
4. In 2015, Opposer sold over one million pairs of pants.42 Opposer has not
provided any context for this figure, so we cannot measure it against other
brands. Also, because Opposer has provided the number of KÜHL branded
pants that were sold for one year, we do not know whether the 2015 sales of
pants were an outlier or part of a trend. Moreover, we cannot determine what
percentage of Opposer’s sales pants comprise.
5. From 2012 through 2016, Opposer spent nearly $9 million on marketing and
advertising.43 Opposer has not provided any context for this figure, so we
cannot measure it against other brands. Further, $9 million over 5 years is
approximately $1,800,000 per year. While $1,800,000 per year in advertising
and marketing is not insignificant, it is not such an impressive figure as to
corroborate Opposer’s claim that its KÜHL mark is famous, especially because
the only advertising referred to in Opposer’s testimony is sponsoring a
competitive bicycle team, a bicycle race and social media. See the discussion
infra.
6. One of Opposer’s promotional efforts is sponsoring a competitive bicycle team
that, from 2011 through 2013, competed in California, Idaho, Pennsylvania,

42 Shapiro Decl. ¶37 (26 TTABVUE 8). The Shapiro testimony again did not expressly divide
the sales between U.S. and international sales. For purposes of determining whether
Opposer’s mark is famous, we will again give Opposer the benefit of the doubt and interpret
the sales as being sales in the United States.
43 Webb Decl. ¶7 (27 TTABVUE 7).
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Michigan, Wisconsin, Illinois, Colorado, Kentucky, Ohio, Iowa, and Utah.44
The team wore jerseys that displayed the KÜHL trademark.45 Since 2010,
Opposer has been an official sponsor of the Larry H. Miller Tour of Utah and
has supplied uniforms to competitors.46 In 2016, that tour had 400,000
spectators, more than 28 hours of national television coverage, and almost
700,000 webpage visits.47 The evidence that we are lacking with respect to
Opposer’s sponsorship programs is how many impressions its mark is making.
Opposer’s Exhibit L is not broken down by sponsor. It stretches credulity to
argue that all 400,000 spectators and 700,000 webpage visitors saw the KÜHL
trademark and we will not speculate as to the effectiveness of Opposer’s
marketing.
7. Opposer’s KÜHL branded products are distributed throughout the United
States by over 1,000 retailers, including REI, Scheels, Gander Mountain, and
Eastern Mountain Sports, as well as online retailers;48
8. In 2016, Opposer’s website received 1,304,808 user visits.49 Opposer has not
provided any context for this figure, so we cannot measure it against how many
website visits its competitors may have received. Also, because Opposer only

44 Shapiro Decl. ¶17 (26 TTABVUE 7); Webb Decl. ¶¶69 and 72 (27 TTABVUE 14).
45 Webb Decl. ¶71 (27 TTABVUE 14).
46 Webb Decl. ¶¶58, 59, and 61 (27 TTABVUE 12-13).
47 Webb Decl. ¶¶62 and Exhibit L (27 TTABVUE 13 and 28 TTABVUE 76).
48 Shapiro Decl. ¶¶16, 26, 27, 33 and 34 (26 TTABVUE 6, 7, and 8).
49 Webb Decl. ¶10 (27 TTABVUE 7).
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provided the number of website visits for 2016, we cannot determine whether
the number of website visits in 2016 was an outlier or part of a trend. Finally,
the testimony does not indicate whether the number of user visits were from
different individuals or multiple visits from the same individuals.
9. Opposer sends email blasts to 200,000 customers.50 Opposer has not provided
any further information, e.g., regarding the number of recipients who opened
Opposer’s emails or deleted the emails without looking at them.
10. Opposer has an active social media presence on Facebook, Instagram, Twitter
and YouTube. For example, Opposer’s Facebook page had 31,129 “likes” and
30,558 followers; Opposer’s Instagram account has 8,145 followers; and its
YouTube channel had 342,838 views.51 Opposer has not provided any context
for these figures, so we cannot measure them against other brands. We are
simply without enough information to determine the degree to which Opposer’s
Facebook “likes” and followers, Instagram followers, and YouTube views are
significant.
11. Opposer has been the subject of four online news articles.52 They are listed
below:
a. “From Ski Bum to Ski Empire: Meet KÜHL founder Kevin Boyle and his
amazing team,” was posted on UtahStories.com December 14, 2016.53 The

50 Webb Decl. ¶14 (27 TTABVUE 8).
51 Webb Decl. ¶¶22-56 (27 TTABVUE 9-12).
52 Webb Decl. ¶93 and Exhibits GG (27 TTABVUE 18 and 28 TTABVUE 184-207).
53 28 TTABVUE 184.
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author writes that KÜHL is one of the most successful outdoor retail brands
in the world and that it is the second largest independently-owned outdoor
clothing company anywhere.
b. “Kühl continues to grow strong from its original roots,” was posted on June
14, 2016 on GrassRootsOutdoors.com.54 The article is a profile about
Opposer highlighting its status as an independently-owned company.
c. “About Utah: Company founder has come a long way from living in a snow
cave,” was posted on July 17, 2016 on DesertNews.com.55 This is a profile
about Mr. Boyle, Opposer’s founder. The author states that Opposer “is now
one of the largest privately owned businesses in the outdoor industry.”
d. “Marketplace: To elevate brand, Kühl turns to Main Street,” was posted
September 2, 2016 on ParkRecord.com.56 The article is a report regarding
Opposer’s opening a retail store in Park City, Utah.
The statements regarding the success and renown of Opposer are not accepted as
proven to be true, but are only probative to the extent that they are perceptions of the
authors. See Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1040 (TTAB 2010) (news
articles “are admissible only to show what has been printed, not the truth of what
has been printed.”).

54 28 TTABVUE 195.
55 28 TTABVUE 202.
56 28 TTABVUE 206.
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Because there is no information or testimony regarding the circulation of
publications, we do not know how many people read the stories. However,
UtahStories.com, DesertNews.com, and ParkRecord.com appear to be Utah-based
publications as opposed to national publications.
These four news articles in publications of unknown circulation are not sufficient
to demonstrate that Opposer’s mark is famous. If Opposer’s mark were famous, we
would expect that there would be more than four articles in what appear to be local
publications regarding Opposer and its KÜHL trademark.
12. Opposer’s KÜHL branded products have been worn by celebrities appearing in
national media.57 However, the examples of such use are merely photographs
of celebrities engaged in various activities, and the existence and visibility of
the KÜHL trademark are not highlighted in any way. In fact, one would only
be aware of the KÜHL mark if one were aware it was there and looked for it.
Nor is there any information as to what exposure the photographs received.
For example, a photograph from a New York Times article is reproduced
below.58 Opposer’s logo is displayed on the subject’s sleeve on the reader’s right.
The KÜHL mark is not visible.

57 Webb Decl. ¶82-95 and Exhibits V, W, X, Y, Z, AA, BB, CC, DD, EE, FF, and HH (27
TTABVUE 16-18 and 28 TTABVUE 134-182 and 209).
58 28 TTABVUE 209.
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While we have noted some shortcomings as to the probative value of the individual
pieces of evidence, we must look at the evidence as a whole to determine whether
Opposer has proven the fame of its mark. Cf. West Florida Seafood Inc. v. Jet Rests.
Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (in analyzing priority,
“whether a particular piece of evidence by itself establishes prior use is not
Opposition No. 91224467
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necessarily dispositive as to whether a party has established prior use by a
preponderance. Rather, one should look at the evidence as a whole, as if each piece of
evidence were part of a puzzle which, when fitted together, establishes prior use.”).
Opposer is a successful 24 year old, independently-owned company specializing in
a full line of outdoor wear sold through 1,000 retailers nationwide. However,
Opposer’s commercial success does not equate to the fame of its mark. Because there
is no context for Opposer’s advertising and sales figures, we cannot gauge the relative
level of success or the degree of exposure the general public has had to the KÜHL
trademark. The extent to which consumers have been exposed to Opposer’s clothing
products, bottle water, lip balm, etc. vis-à-vis competitors is unknown and, thus, it is
not possible to determine the renown of Opposer’s mark. Ultimately, and considered
as a whole, Opposer’s evidence falls short of clearly establishing that its KÜHL
trademark is famous. See Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901, 1904 (TTAB 2007).
Nevertheless, the evidence establishes that the KÜHL trademark has achieved
recognition, and in view of the distinctive nature of Opposer’s mark, we find Opposer’s
mark to be a commercially strong trademark.
The du Pont factor of fame is neutral. The distinctiveness of Opposer’s mark,
however, weighs in Opposer’s favor. See L.C. Licensing Inc. v. Berman, 86 USPQ2d
1883, 1888 (TTAB 2008) (opposer’s mark held to be strong but not famous).

Opposition No. 91224467
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B. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “The proper test is not a side-
by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
101 USPQ2d at 1721 (quoting Leading Jewelers Guild, 82 USPQ2d at 1905; see also
San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB
1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Because the goods at issue are bicycles and “rugged outdoor clothing,” the average
customer includes ordinary consumers in the general public.
For ease of reference in following our analysis of the similarities between the
marks, we display them together below:

Opposition No. 91224467
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Opposer’s Mark Applicant’s Mark

The marks are similar in appearance because they both have four characters,
begin with the letter “K,” end with the letter “L,” and the “ü” in Opposer’s mark is
similar to the letter “u” followed by the colon (“u:”) in Applicant’s mark.
While there is no one correct pronunciation for a mark, especially where both
marks have unusual spellings, in this case, however, we find that both marks are
likely to be pronounced as “Cool.”59 Any other possible pronunciation of the marks
would likewise be extremely similar, if not the same, given the marks share the same
first letter (“K”), the sole vowel (“U”) and last letter (“L”).
Because both marks are likely to be pronounced “Cool,” consumers are likely to
perceive that the marks have similar meanings and engender similar commercial
impressions (i.e., great, fine, or excellent). Likewise, because the marks are used in
connection with “rugged outdoor clothing” and “bicycles,” the marks could also mean
and engender the commercial impression of cool or cold weather products. In either
event, the meaning and commercial impressions are similar.

59 Shuff Dep., p. 13 (21 TTABVUE 14) (Applicant’s mark is pronounced “cool.”); Evans Decl.
¶8 (26 TTABVUE 6) (Opposer’s mark KÜHL is pronounced “Cool.”); Mejia Dep., p. 11
(23 TTABVUE 12); Lorentz Dep., p. 13 (34 TTABVUE 13); Applicant’s Brief, p. 14
(43 TTABVUE 19) (“Although Shuff’s Mark and Alfwear’s Marks are both pronounced ‘cool,’
the similarities end there.”).
Opposition No. 91224467
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We find that the marks are similar in their entireties as to their appearances,
sound, connotation and commercial impression.
C. The similarity or dissimilarity and nature of the goods.
Opposer contends that the goods at issue, clothing and bicycles, are related
“because (1) the goods are used together and appeal to the same purchasers, (2) the
goods are sold by the same manufacturers and dealers, (3) use-based registrations
list both bicycles and clothing, and (4) [Opposer] has marketed its products and brand
in connection with bicycles.”60 That “outdoor clothing and bicycles “can be used
together and appeal to the same purchasers,”61 is not dispositive because consumers
generally wear clothing in connection with most activities.
That two products are used together does not, in itself, justify finding that they
are related. “[T]he test is not that goods and services must be related if used together,
but merely that that finding is part of the underlying factual inquiry as to whether
the goods and services at issue … can be related in the mind of the consuming public
as to the origin of the goods.” Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238,
73 USPQ2d 1350, 1355-56 (Fed. Cir. 2004) (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 227 F.3d 1352, 56 USPQ2d 1351, 1355 (Fed. Cir. 2002)). Conversely, goods
that are neither used together nor related to one another in kind may still “be related
in the mind of the consuming public as to the origin of the goods. It is this sense of
relatedness that matters in the likelihood of confusion analysis.” Shen Mfg. Co., 73

60 Opposer’s Brief, p. 37 (39 TTABVUE 38).
61 Opposer’s Brief, p. 37 (39 TTABVUE 38).
Opposition No. 91224467
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USPQ2d at 1356 (quoting Recot, Inc. v. Becton, 54 USPQ2d at 1898 (comparing
FRITO-LAY for snack foods to FIDO LAY for dog treats)). Therefore, although a
purchaser of Applicant’s bicycles would undoubtedly wear clothing, it does not
necessarily follow, from that fact alone, that relevant purchasers would understand
that those products have originated from the same source.
Opposer made of record 24 use-based, third-party registrations for marks covering
both bicycles and various items of clothing, including several of the items identified
in the registration of Opposer. Third-party registrations based on use in commerce
that individually cover a number of different goods may have probative value to the
extent that they serve to suggest that the listed goods are of a type that may emanate
from the same source.62 In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988). Representative registrations, with relevant portions of the identifications, are
listed below.
Mark Reg. No. Goods

GUERCIOTTI 1367504 Bicycles; sportswear, namely, vests,
sweaters, pullovers, shirts, blouses, skirts,
trousers, shorts, jackets, coats, hats, gloves,
socks and shoes

SPEEDPLAY 2039206 Bicycles; clothing for use in connection with
cycling, namely, pants, shirts, jackets,
sweaters, vests, footwear, caps, hats and
visors

62 18 TTABVUE 43-116.
Opposition No. 91224467
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Mark Reg. No. Goods

DE ROSA 1813617 Racing bicycles; sports clothing and shoes,
namely, socks, head bands, bib tights,
jerseys, shorts, gloves, caps, jackets, t-
shirts, and shoes

BONTRAGER 1994941 Bicycles; t-shirts, sweatshirts, and hats

LITESPEED 2821238 Bicycles; clothing, namely, jackets, t-shirts,
shirts, jerseys, socks, pants, shorts, bib
shorts, biking shorts, hats, and shoe covers
for cycling

Opposer also introduced 30 third-party websites “relevant to the relatedness of
goods factor because the website[s] offers both clothing and bicycles for sale.” Of those
30 websites, nine of the third parties advertise the sale of both clothing and bicycles
under the same marks.63 Those third parties are listed below:
• FELT BICYCLES (feltbicycles.com);64
•FOFFA (foffawear.com and foffabikes.com);65
• GUCCI (gucci.com);66
•JAMIS (jamisbikes.com);67

63 19 TTABVUE 2. That the same entity offers both clothing and bicycles for sale is more
probative of the channels of trade than the relatedness of the goods unless the goods are
offered under the same mark.
64 19 TTABVUE 134-139.
65 19 TTABVUE 140-148. This is an English company as indicated by the use of the pound
symbol for pricing. Nevertheless, the website indicates that this entity ships worldwide
through UPS. (19 TTABVUE 140 and 144). Accordingly, we include this website as part of
our analysis.
66 19 TTABVUE 156-160.
67 19 TTABVUE 162-165.
Opposition No. 91224467
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•LL BEAN (llbean.com);68
•SHINOLOA (shinoloa.com);69
•SPECIALIZED (specialized.com);70
•SPOT (spotbrand.com);71
•STATE BICYCLE CO. (statebicycle.com);72 and
•TREK (trekbikes.com).73
As discussed above, since 2010, Opposer has been an official sponsor of the Larry
H. Miller Tour of Utah as the “Official Uniform Provider.”74 The Larry H. Miller Tour
of Utah is a week-long, professional cycling stage race.75 As an official sponsor,
Opposer received media exposure (including television, radio, print, website and
social media) and on-site exposure through signage.76
Also, since 2010, Opposer has sponsored a competitive bicycle team that competes
in mountain bike, cycle cross, road race, and single-speed bicycle competitions.77 The
team wears KÜHL jerseys.78 From 2011 through 2013, the KÜHL team competed in

68 19 TTABVUE 167- 177.
69 19 TTABVUE 236-240.
70 19 TTABVUE 242-252.
71 19 TTABVUE 271-274.
72 19 TTABVUE 276-308.
73 19 TTABVUE 313-333.
74 Webb Decl. ¶58 (27 TTABVUE 12).
75 Webb Decl. ¶61 (27 TTABVUE 13); Lythgoe Dep., pp. 64-66 (29 TTABVUE 70-72).
76 Webb Decl. ¶¶63 and 66-67 and Exhibit P (27 TTABVUE 13-14 and 102).
77 Webb Decl. ¶69-70 (27 TTABVUE 14); Lythgoe Dep., pp. 48-49 and 78-79 (29 TTABVUE
54-55 and 84-85).
78 Webb Decl. ¶71 (27 TTABVUE 14); Lythgoe Dep., pp. 68-70 (29 TTABVUE 74-76).
Opposition No. 91224467
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California, Idaho, Pennsylvania, Michigan, Wisconsin, Illinois, Colorado, Kentucky,
Ohio, Iowa, and Utah.79
Because the description of goods in Opposer’s KÜHL (stylized) registration is
“rugged outdoor clothing, namely, jackets, shirts, pants, shorts, t-shirts, and hats,”
because Opposer’s KÜHL (stylized) mark is a unique, strong mark, and because
Opposer sponsors bicycle races and a competitive bicycle team, Opposer’s third-party
registration evidence and third-party use of similar marks used for both bicycles and
clothing are probative of the relatedness of the goods, and we find, on this record, that
the Opposer’s “rugged outdoor clothing, namely, jackets, shirts, pants, shorts, t-
shirts, and hats” and bicycles are related products.
Applicant argues that the “obvious differences in the products must also be taken
into account.”80 As the preceding discussion shows, we have noted the differences
between the products at issue and taken into account what Opposer needs to do to
prove that bicycles and clothing are related products. Moreover, the issue is not

79 Webb Decl. ¶72 (27 TTABVUE 14). Applicant contends that Opposer’s evidence regarding
its racing sponsorships is irrelevant because the events are “elite-level races for the top
professional cyclists in the country” and directed to “people with an ‘outdoor lifestyle’ who
like to ‘ski, mountain and road bike, backpack, camp, mountaineer, and travel worldwide’”
while conversely Applicant’s bicycles are single-speed cruisers specifically designed for and
marketed to ‘urban commuters looking for recreational transportation and not something for
sport.’” Applicant’s Brief, pp. 16-17 (43 TTABVUE 21-22). Applicant’s description of goods is
“bicycles” without any limitations or restrictions as to the type of bicycles, channels of trade
or classes of consumers and must be deemed to include all types of bicycles. In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). We may not limit, by resort to extrinsic
evidence, the scope of the goods as identified in Opposer’s registration or Applicant’s
application. E.g., In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997); In re Fisher Scientific Co., 440 F.2d 43, 169 USPQ 436, 437 (CCPA 1971); In re La
Peregrina Ltd., 86 SPQ2d 1645, 1646 (TTAB 2008); In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986).
80 Applicant’s Brief, p. 16 (43 TTABVUE 22).
Opposition No. 91224467
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whether purchasers would confuse the goods, but rather whether there is a likelihood
of confusion as to the source of the goods. See Hydra Mac, Inc. v. Mack Trucks, Inc.,
507 F.2d 1399, 184 USPQ 351 (CCPA 1975) (“the confusion found to be likely is not
as to the products but as to their source”); Mini Melts, Inc. v. Reckitt Benckiser LLC,
118 USPQ2 1464, 1471 (TTAB 2016). Here, the evidence shows that the goods of the
parties are such as might reasonably be expected to emanate from the same source.
D. Established, likely-to-continue channels of trade.
In addition to the websites of the 10 third parties advertising the sale of both
clothing and bicycles under the same marks, Opposer made of record 20 websites of
third parties advertising the sale of both clothing and bicycles identified by different
marks.81 Bicycle shops, sporting goods stores, and general online retailers sell both
rugged outdoor clothing and bicycles. Consumers shopping for bicycles may also
purchase clothing for use in connection with bicycling at the same time.
Representative websites are listed below:
•Academy Sports Outdoors (academy.com) advertising the sale of Under Armour,
Columbia, Carhartt, Magellan, and Nike clothing and Airwalk, Allen Sports, Bell,
Diamondback, GMC, Giordano, Hot Wheels, Huffy and Kent bicycles;82
•BackCountry.com advertising the sale of Patagonia and The North Face clothing
and Charge and Diamond Back bicycles;83 and

81 19 TTABVUE 2-333. See also Shapiro Decl. ¶16 (26 TTABVUE 5) (Opposer sells its clothing
to bicycle shops).
82 19 TTABVUE 12-28.
83 19 TTABVUE 33-45.
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•Bicycle World (bicycleworld.com) advertising the sale of, inter alia, The North
Face and Patagonia clothing and Trek, Giant, and Cannondale bicycles.84
Accordingly, clothing and bicycles move in some of the same channels of trade.
Applicant argues that the “crux” of his business is the customization of bicycles.
“By definition, this is a unique channel of trade that is singular to KUL Bikes and
not [Opposer].”85 We reiterate that Applicant’s description of goods is “bicycles,” not
customized bicycles and, as noted in the previous section, we may not limit by
extrinsic evidence the scope of the goods as identified in Opposer’s registration or
Applicant’s application.
E. The conditions under which and buyers to whom sales are made, i.e., ‘impulse’
vs. careful, sophisticated purchasing.

Applicant argues that consumers of Opposer’s clothing are more likely to be
impulse buyers because Opposer’s products “are sold in brick and mortar stores like
REI, where a browsing customer roaming through the store could very easily sport a
t-shirt or pair of pants manufactured by [Opposer] and make an impulse purchase in
a matter of seconds.”86 Assuming this to be true, then a browsing customer may
mistakenly believe that Opposer’s KÜHL brand clothing emanates from the same
source as a KU:L bicycle with which the customer is familiar because of the similarity

84 19 TTABVUE 47-51.
85 Applicant’s Brief, p. 18 (43 TTABVUE 23).
86 Applicant’s Brief, p. 19 (43 TTABVUE 24).
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of the marks. Accordingly, we find that this du Pont factor weighs in favor of finding
that there is a likelihood of confusion.87
F. Analyzing the factors.
Because the marks are similar, and the goods are related and move in the same
channels of trade, and Opposer’s “rugged outdoor clothing” may be purchased by
consumers exercising a low degree of purchasing care, we find that Applicant’s mark
KU:L (stylized) for “bicycles” is likely to cause confusion with Opposer’s mark KÜHL
(stylized) for “rugged outdoor clothing, namely, jackets, shirts, pants, shorts, t-shirts,
and hats.”
VI. Dilution
Having determined that Applicant is not entitled to registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), it is unnecessary to consider Opposer’s
dilution claim. See Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171
(TTAB 2013) (“Like the federal courts, the Board has generally used its discretion to
decide only those claims necessary to enter judgment and dispose of the case. . . [T]he
Board’s determination of registrability does not require, in every instance, decision
on every pleaded claim.”).

87 Again, we cannot take into consideration Applicant’s assertions that his bicycles are not
sold in stores and each is custom made because those limitations, restrictions, or
characteristics are not present in his description of goods.
Opposition No. 91224467
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Decision: The opposition is sustained on the ground of likelihood of confusion
under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), and registration to
Applicant is refused.