This Opinion is not a
Precedent of the TTAB
Mailed: November 25, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
American Council on Exercise
v.
Utah Aces LLC
_____
Opposition No. 91213723
_____
Neil D. Greenstein of Techmark, for American Council on Exercise.
Wendy Peterson of Not Just Patents LLC for Utah Aces LLC.
_____
Before Bergsman, Hightower and Larkin,
Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
Utah Aces LLC (“Applicant”) seeks registration on the Principal Register of the
mark ACES ATHLETICS (in standard characters) for “coaching in the field of sports,”
in Class 41.1 Applicant disclaimed the exclusive right to use the word “Athletics.”
American Council on Exercise (“Opposer”) filed a Notice of Opposition against the
registration of Applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15
1 Application Serial No. 85730170 was filed on September 26, 2012, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as September 1, 2012.
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Opposition No. 91213723
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U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles five of Opposer’s
previously-registered marks ACE and ACE AMERICA COUNCIL ON EXERCISE for
a wide variety of goods and services as to be likely to cause confusion.2 We confine
our analysis to the issue of likelihood of confusion between Applicant’s mark and
Opposer’s Registration No. 1898868 for the mark ACE, in typed drawing form,3 for
the following goods and services:
Physical fitness training manuals and printed exam
materials pertaining to physical fitness; namely, combined
informational brochures and applications for exams and
sample test questions, in Class 16; and
Educational services, namely providing training such as
classes and seminars in the field of physical fitness, in
Class 41.4
If confusion is likely between those marks, there is no need for us to consider the
likelihood of confusion with the marks in Opposer’s other pleaded registrations; the
typed drawing mark for those services, particularly “providing training such as
classes and seminars in the field of physical fitness,” would be a sufficient basis for
us to sustain the opposition. Conversely, if there is no likelihood of confusion between
2 We do not consider Opposer’s pleaded Registration No. 1848588 for the mark ACE
AMERICAN COUNCIL ON EXERCISE and design because Opposer failed to file a
declaration of use and a renewal application. This registration issued on March 21, 1995. It
was renewed in 2005. The second renewal and declaration of continued use was due March
21, 2015 with a six-month grace period terminating September 21, 2015. Because Opposer
did not file a declaration of use and a renewal application by September 21, 2015, the
registration will be cancelled in due course.
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (April
2016).
4 Registered June 13, 1995; second renewal. Section 9 of the Trademark Act, 15 U.S.C. § 1059.
Opposition No. 91213723
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Applicant’s mark and Opposer’s mark in typed form, for “providing training such as
classes and seminars in the field of physical fitness,” then there would be no likelihood
of confusion with the other marks. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
Opposer also pleaded that Applicant’s mark will dilute the distinctive quality of
Opposer’s marks within the meaning of Section 43(c) of the Trademark Act, 15 U.S.C.
§ 1125(c). Insofar as Opposer has not argued the dilution claim in its brief, in
accordance with the Board’s usual practice, we find that claim to have been waived.
See, e.g., Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,
1753 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014); Knight Textile Corp.
v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005).
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.
Applicant has asserted several affirmative defenses that are primarily amplifications
of its denials and are not repeated herein. On March 7, 2014, Applicant filed a motion
to amend its identification of services to read as follows: “Coaching of individuals
and teams in the field of sports excluding certification programs, public
education, continuing education for trainers.” (emphasis added).5 Because
Opposer did not consent to the motion, the Board deferred action on the motion until
final hearing.6
5 8 TTABVUE.
6 11 TTABVUE.
Opposition No. 91213723
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I. Preliminary Issue
In its brief, Applicant argues that because “Opposer has presented no reliable
evidence regarding its use of its pleaded registered marks or any common law rights,”
the presumptions accorded the registrations under Section 7(b) of the Trademark Act,
15 U.S.C. § 1057(b), have been rebutted and the registrations should be given no
evidentiary value.7 Applicant asserts that:
The Board can, when there is conclusive evidence refuse to
accord any evidentiary value to the registration in
determining the question of likelihood of confusion or even
the question of prior rights. Gates Rubber Co. v. Western
Coupling Corp., 179 USPQ 186, 190 (TTAB 1973). The
Section 7(b) presumptions are prima facie presumptions
and are therefore rebuttable.8
Applicant points to the following testimony of Scott Goudeseune, Opposer’s Chief
Executive Officer:
1. Mr. Goudeseune could not identify Opposer’s pleaded registrations;9
2. Mr. Goudeseune could not assign sales revenues to specific marks;10
3. Opposer’s attorney responsible for maintaining Opposer’s registrations did not
ask Mr. Goudeseune whether “all of these marks were in use for all the pages”
of a specimen prior to filing a Section 8 affidavit of continued use;11
7 Applicant’s Brief, pp. 7-9 (55 TTABVUE 8-10).
8 Applicant’s Brief, p. 4 (55 TTABVUE 5).
9 Goudeseune Dep., pp. 121-23 (52 TTABVUE 124-26).
10 Goudeseune Dep., p. 92 (52 TTABVUE 94). Opposer does not collect that type of data. Id.
11 Goudeseune Dep., pp. 96-97 (52 TTABVUE 99-100). The testimony referred to Goudeseune
Deposition Exhibit 7, a copy of the Section 8 and 9 declaration for Registration No. 1898868
for the mark ACE for, inter alia, “educational services, namely, providing training such as
classes and seminars in the field of physical fitness.”(52 TTABVUE 167). The declaration was
Opposition No. 91213723
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4. Mr. Goudeseune testified that the specimen supporting a Section 8 affidavit of
continued use was last used five years prior to the filing of the affidavit;12 and
5. Because clothing does not appear as a revenue line item in Opposer’s auditor’s
reports, Opposer’s sales of clothing constitute token use if such sales exist at
all.13
Opposer is not required to introduce evidence regarding the use of the marks in
its pleaded registrations because, having properly introduced its registrations into
evidence, Opposer is entitled to rely on its pleaded registrations to preclude the
registration of the same or similar marks for related goods or services which
purchasers might reasonably assume emanate from the same source. Gates Rubber
Co. v. Western Coupling Corp., 179 USPQ at 189. Applicant is precluded from
attacking the validity of those registrations because it did not file a counterclaim to
cancel them. See Trademark Rule 2.106(b)(2)(ii), 37 C.F.R. § 2.106(b)(2)(ii) (“An
filed on June 8, 2015. (52 TTABVUE 170). The specimen was a brochure for a training class
scheduled for April 18, 2015 at Results Fitness in Dallas, Texas. (52 TTABVUE 169, 172 and
179). Mr. Goudeseune testified that “[t]his is a workshop that the organization provides to
individuals in this particular area” and that Opposer has been offering such services since at
least as early as 2000. Goudeseune Testimony Dep., pp. 8 and 56-57 (52 TTABVUE 11 and
59-60).
12 Goudeseune Dep., p. 99 (52 TTABVUE 101). This testimony referred to a different part of
Goudeseune Deposition 7, a copy of the Section 8 declaration of use filed on March 7, 2005.
(52 TTABVUE 189 and 191). The specimen at issue is training manual for aquatic exercise.
Mr. Goudeseune testified that the last time Opposer used the booklet was more than five
years ago. Goudeseune Testimony Dep., p. 98 (52 TTABVUE 101). Since Goudeseune was
deposed on July 23, 2015, his testimony regarding the last time Opposer used that manual
is entirely plausible and does not cast doubt on Opposer’s good faith in maintaining its
registration.
13 Goudeseune Dep., pp. 110-111 (52 TTABVUE 113-114).
Opposition No. 91213723
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attack on the validity of a registration pleaded by opposer will not be heard unless a
counterclaim or separate petition is filed to seek cancellation of such registration.”).
However, trademark rights under the Trademark Act are not divorced from
equitable principles, Duffy-Mott Co. v. Cumberland Packing Co., 424 F.2d 1095, 165
USPQ 422, 425 (CCPA 1970), and the Board has exercised its equitable authority to
find that the presumptions accorded a registration under Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), are “effectively rebutted where there is clear and
unmistakable evidence in the record that the registered mark is invalid due to its
having been abandoned, obtained on the basis of a false statement or subject to some
other material defect.”14 Lever Bros. Co. v. Shaklee Corp., 214 USPQ 654, 659-60
(TTAB 1982) (“since the §7(b) presumptions are prima facie, they should not be
accorded where clear and convincing evidence establishes beyond question that the
presumptions are contradicted by the facts”); see also American Optical Corp. v.
Siemens Aktiengesellschaft, 213 USPQ 510, 514 (TTAB 1982) (clear and
unmistakable evidence); Gates Rubber Co., 170 USPQ at 190 (“the evidence to be
effective must be conclusive in character … Nothing should be left for speculation,
inference or surmise.”). In Duffy-Mott Co, the rationale for rebutting the
presumptions was to preclude a registrant from relying on a registration which had
been secured or maintained on the basis of a false statement, in accordance with the
equitable doctrine of “unclean hands.” Duffy-Mott Co. v. Cumberland Packing Co.,
14 Even though Opposer’s registrations are incontestable and, thus, conclusive evidence of
the validity of the registrations, such conclusive evidence is subject to an abandonment
defense. Section 33(b) of the Trademark Act, 15 U.S.C. § 1115(b).
Opposition No. 91213723
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165 USPQ at 425; see also Toro Co. v. GrassMasters Inc., 66 UPSQ2d 1032, 1038
(TTAB 2003).
In this case, Applicant failed to pursue a counterclaim, and only raised questions
about the Opposer’s evidence; the record does not establish that Opposer had
abandoned the use of any of the goods or services listed in the pleaded registrations
and specifically Registration No. 1898868 for the mark ACE for “educational services,
namely providing training such as classes and seminars in the field of physical
fitness” on which we focus our likelihood of confusion analysis below. As noted above,
such presumptions can be rebutted only where there is clear and unmistakable
evidence that the registered mark is invalid. Lever Bros. Co. v. Shaklee Corp., 214
USPQ at 659; American Optical Corp. v. Siemens Aktiengesellschaft, 213 USPQ at
514; Gates Rubber Co., 170 USPQ at 190. The Board may refuse to accord a pleaded
registration its otherwise due presumptions, as a matter of equity, even where there
is no counterclaim, but may do so only if the Board determines that the record shows
abandonment, that a registration was obtained or maintained based on a false
statement, or suffers from some other material defect. In this case, the testimony does
not establish clearly and unmistakably that Opposer abandoned the use of the mark
in connection “providing training such as classes and seminars in the field of physical
fitness.” At most the testimony identifies specimens that are no longer in use. Thus,
we do not find the record establishes abandonment or that, as a matter of equity,
Opposer should be deprived of its ability to rely on the presumptions adhering to this
registration. Therefore, the only issue before us is whether Applicant’s mark is likely
Opposition No. 91213723
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to cause confusion with the mark ACE for “educational services, namely providing
training such as classes and seminars in the field of physical fitness.”
II. The Record and Evidentiary Issues
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.15
A. Opposer’s testimony and evidence.
1. Notice of reliance on the following items:
a. Applicant’s responses to Opposer’s requests for admission Nos. 30,
32, 34, 37, 40 and 43;16
b. Copies of Opposer’s pleaded registrations printed from the USPTO
electronic database showing the current title to and status of the
registrations;17 and
2. Testimony deposition of Scott C. Goudeseune, Opposer’s Chief Executive
Officer, with attached exhibits.18
B. Applicant’s testimony and evidence.
15 Because Applicant’s application file is of record by operation of the rules, Opposer did not
need to introduce it a second time through a notice of reliance.
16 28 TTABVUE 8-20. Opposer also sought to rely on Applicant’s denials to Request Nos. 25,
28 and 29. However, Trademark Rule 2.120(j)(3)(i) provides that only “an admission to a
request for admission” may be introduced through a notice of reliance. The rule does not
extend to denials. See N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497,
1501 n.11 (TTAB 2015) (Board considered only opposer’s admissions, not denials, in response
to applicant’s requests for admission); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1477
(TTAB 2014); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 (TTAB 2008).
17 28 TTABVUE 22-24, 42-43, 67-69, 73-75, 79-80, and 84-86,
18 52 TTABVUE.
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Applicant introduced a notice of reliance on dictionary definitions of the words
“ace,” “athletics,” “coach,” and “sport”19 and excerpts from Applicant’s website.20
C. Whether the rebuttal testimony depositions of Mollie Martin and Billy Beltz
constitute improper rebuttal?
Opposer noticed the rebuttal testimony depositions of Amanda Cass, Billy Beltz,
and Mollie Martin. Applicant moved to quash the depositions on the ground that the
testimony sought to be elicited as identified in the notices of deposition would
constitute improper rebuttal.21 In a telephone conference, the Board denied
Applicant’s motion as against the Board’s practice not to make prospective or
hypothetical evidentiary rulings.22
Opposer deposed Billy Beltz, Opposer’s Marketing Director, and Mollie Martin, a
“Study Assistant” for Opposer, and introduced their depositions into the record.23
Through these depositions, Opposer proffered testimony regarding the services
Opposer renders under the ACE mark (e.g., “Can you describe generally for me the
major areas of [Opposer’s] activities?”24, “Can you tell me where ACE professionals
are employed?”25, and “Are any of the activities of [Opposer] to end users related to
sports?”26). During the depositions, Applicant objected to the testimony as
19 34 TTABVUE 2-17.
20 34 TTABVUE 18-68 and 35 TTABVUE 2-27.
21 40 TTABVUE.
22 42 TTABVUE.
23 Martin Dep. at 51 TTABVUE and Beltz Dep. at 50 TTABVUE.
24 Beltz Dep., p. 10 (50 TTABVUE 13).
25 Beltz Dep., p. 14 (50 TABVUE 17).
26 Beltz Dep., p. 16 (50 TTABVUE 19).
Opposition No. 91213723
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constituting improper rebuttal27 and it renewed that objection in its brief.28 We agree
with Applicant that the testimony of Billy Beltz and Mollie Martin constitutes
improper rebuttal. Evidence which should constitute part of an opposer’s case-in-
chief, but which is made of record during the rebuttal period, is not considered when
the applicant objects.
Applicant is entitled to an opportunity to rebut, during its
testimony period, any testimony and evidence proffered in
support of the allegations in the notice of opposition. This
opportunity is foreclosed if opposer withholds the evidence
until its rebuttal testimony period, which is intended to be
limited to denials, refutations or explanations of applicant's
testimony and evidence. (Emphasis added).
General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977);
see also Automedx Inc. v. Artivent Corp., 95 USPQ2d 1976, 1977 (TTAB 2010); United
States Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1539 (TTAB 2006).
Notwithstanding Opposer’s argument that “Applicant submitted scores of pages of
evidence seeking to explain the nature of its goods and services” [excerpts from
Applicant’s website] which “Opposer has a right to rebut,”29 the testimony was not
introduced for the proper purpose of denying, explaining or discrediting Applicant’s
case but instead was clearly an attempt by Opposer to strengthen its case-in-chief.
The similarity or dissimilarity and nature of the goods and services is a factor in
the likelihood of confusion analysis for which Opposer, in the first instance, has the
burden of coming forward with evidence during its own testimony period.
27 Martin Dep., p. 10 (51 TTABVUE 13); Beltz Dep., p. 7, 11 (50 TTABVUE 10, 14).
28 Applicant’s Brief, pp. 4-5 (55 TTABVUE 5-6).
29 Opposer’s Reply Brief, p. 6 (58 TTABVUE 8).
Opposition No. 91213723
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Opposer very appropriately relied upon its registrations, as
well as some additional evidence, during its case-in-chief.
Applicant could have simply relied upon its application and
then rebuttal testimony may not have been needed or
appropriate. However, Applicant did not simply rely upon
its application. Instead, Applicant submitted scores of
pages of evidence seeking to explain further the nature of
its goods and services.30
Opposer should not have assumed what evidence Applicant would introduce with
respect to any of the DuPont likelihood of confusion factors. Applicant has every right
to introduce testimony and other evidence to distinguish its services from Opposer’s
goods and services.
Applicant’s objection to the rebuttal testimony depositions of Billy Beltz and
Mollie Martin is sustained and they have not been considered.
D. Whether the news articles downloaded from the Internet constitute improper
rebuttal?
Opposer introduced four news articles downloaded from the Internet regarding
the scope of Opposer’s services “to rebut the evidence submitted by [Applicant]
[excerpts from Applicant’s website] in its attempt to distinguish its services from
those of [Opposer].”31
Applicant submitted evidence purporting to expand and
explain [Applicant’s] services and these articles expand
upon and show [Opposer’s] services to assist the trier of fact
in appreciating the overlap in services.32
30 Opposer’s Reply Brief, p. 6 (58 TTABVUE 8).
31 Opposer’s second notice of reliance p. 2 (45 TTABVUE 3).
32 Opposer’s second notice of reliance, p. 2 (45 TTABVUE 3).
Opposition No. 91213723
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For the same reasons we sustain Applicant’s objection to the rebuttal testimony
depositions of Billy Beltz and Mollie Martin, we sustain Applicant’s objection to
Opposer’s second notice of reliance as constituting improper rebuttal.
III. Standing
Opposer has properly made its pleaded registrations of record, with evidence that
its registrations are subsisting and owned by Opposer. Accordingly, 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 Industries, 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 oppositions as to the marks
and the goods and services covered by the pleaded registrations. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
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) (“DuPont”) (cited in B&B Hardware, Inc. v. Hargis Ind.,
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
Opposition No. 91213723
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DuPont factor that is relevant and for which there is evidence of record. See M2
Software, Inc. v. M2 Communications, 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 (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, 116 USPQ2d 1406, 1409 (TTAB 2015).
A. The similarity or dissimilarity of the marks.
We turn first to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. In a particular case, “two
marks may be found to be confusingly similar if there are sufficient similarities in
terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko
v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216
(Fed. Cir. 1992) (citation omitted); see also Eveready Battery Co. v. Green Planet Inc.,
91 USPQ2d 1511, 1519 (TTAB 2009) (quoting Krim-Ko Corp. v. Coca-Cola Co., 390
Opposition No. 91213723
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F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion.”)).
“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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants 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
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the services in
the application involve “coaching in the field of sports” and the services in Opposer’s
registration involve physical fitness training and certification, the average customers
are consumers interested in sports, coaching, and physical fitness and training.
Applicant is seeking to register the mark ACES ATHLETICS. The word
“Athletics” is defined, inter alia, as “sports or exercises engaged in by athletes.”33
33 Collins Dictionary (collinsdictionary.com) attached to the January 14, 2013 Office
Action. See also Merriam-Webster Dictionary (merriam-webster.com) (34 TTABVUE 6).
Opposition No. 91213723
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Therefore, the word “Athletics” is descriptive when used in connection with
Applicant’s “coaching in the field of sports,” and Applicant has disclaimed the
exclusive right to use the word “Athletics.” Thus, the word “Aces” is the dominant
element of Applicant’s mark. Disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser Golf
Corp., 55 USPQ2d at 1846 (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”). There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a mark,
such as a common dominant element, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ
at 751.
The significance of the word “Aces” as the dominant element of Applicant’s mark
is reinforced by its location as the first part of the mark. See Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT
because “veuve” is the first word in the mark and the first word to appear on the
label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
Opposition No. 91213723
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USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will
first notice the identical lead word); Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”).
Applicant’s mark ACES ATHLETICS incorporates Opposer’s entire ACE mark. In
such circumstances, likelihood of confusion has been found where the entirety of one
mark is incorporated within another. See Coca-Cola Bottling Co. of Memphis,
Tennessee, Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105
(CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and
ginger ale likely to cause confusion with BENGAL for gin); Johnson Publishing Co.
v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark
EBONY DRUM for hairdressing and conditioner likely to cause confusion with
EBONY for cosmetics); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979)
(applicant’s mark HEAD START COSVETIC for vitamins for hair conditioners and
shampoo likely to cause confusion with HEAD START for men’s hair lotion and after-
shaving lotion). In this case, Opposer’s mark would appear to prospective purchasers
to be a shortened form of Applicant’s mark. See In re United States Shoe Corp., 229
USPQ 707, 709 (TTAB 1985).
Applicant’s use of the plural form of the word “Aces” in its mark ACES
ATHLETICS has no significance for distinguishing the marks ACES ATHLETICS
and ACE. In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the
pluralization of “Newport” is “almost totally insignificant in terms of the likelihood of
Opposition No. 91213723
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confusion of purchasers.”); see also Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339,
341 (CCPA 1957) (finding no material difference between the singular and plural
forms of ZOMBIE such that the marks were considered the same mark); Weidner
Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014).
The word “Ace” is defined, inter alia, as “of first or high rank or quality ” or “a person who excels at something
.”34 Thus, the
registered mark ACE and Applicant’s mark ACES ATHLETICS engender the
commercial impression of high quality services (e.g., high quality athletics).
In view of the foregoing, we find that Applicant’s mark ACES ATHLETICS is
similar to the registered mark ACE in appearance, sound, connotation and
commercial impression.
Applicant argues that Opposer’s use of ACE is an acronym for “American Council
on Exercise” and, therefore, it engenders a different meaning and commercial
impression than Applicant’s mark ACES ATHLETICS.35 However, this argument has
little relevance because we are concerned here with Opposer’s registered mark ACE,
not as it is displayed in the real world or when used in combination with the trade
name American Council on Exercise. See Trademark Rule 2.52 (“A drawing depicts
the mark sought to be registered.”); Cunningham v. Laser Golf Corp., 55 USPQ2d at
1847-48 (because applicant filed to register a typed drawing of its mark, “it is
irrelevant that [applicant] has a particular display for his mark in commerce, and the
34 Merriam-Webster Dictionary (merriam-webster.com) (34 TTABVUE 2-3).
35 Applicant’s Brief, pp. 12-15 (55 TTABVUE 13-16).
Opposition No. 91213723
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Board was correct to ignore those features”). It is the mark as it is displayed in the
drawing that is controlling. See Electronic Realty Assoc., Inc. v. Extra Risk Assoc.,
Inc., 217 USPQ 810, 816 n.8 (TTAB 1982); see also Salem Commodities, Inc. v. Miami
Margarine Co., 244 F.2d 729, 114 USPQ 124, 126 (CCPA) (since applicant is seeking
to register the words “Nu-Maid,” standing alone, it must be presumed that applicant
intends to use them in that manner).
Even if we considered the derivation of Opposer’s ACE mark as an acronym for
the trade name “American Council on Exercise,” the marks ACE and ACES remain
visually and phonetically similar.
B. The similarity or dissimilarity and nature of the goods and services.
The goods and services do not have to be identical or even competitive to find that
there is a likelihood of confusion; it is sufficient for such purposes that a party
claiming damage establish that the goods and/or services are related in some manner
and/or that conditions and activities surrounding marketing of these goods and/or
services are such that they would or could be encountered by same persons under
circumstances that could, because of similarities of marks used with them, give rise
to the mistaken belief that they originate from or are in some way associated with
the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at
1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB
2010); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford
Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
Opposition No. 91213723
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Applicant is seeking to register its mark ACES ATHLETICS for “coaching in the
field of sports.” The mark in the cited registration ACE has been registered for, inter
alia, “educational services, namely providing training such as classes and seminars
in the field of physical fitness.” For example, Opposer offers a sports conditioning
workshop.
This is a workshop that the organization provides to
individuals in this particular area. It was in Dallas, Texas
on April 18th of this year. And it looks like it was a full day
workshop that focused on honing those individual skills in
sports conditioning. It was a live workshop.36
The word “coach” is defined, inter alia, as “a private tutor” and “one who instructs
or trains ; especially: one who instructs players in the fundamentals
of a sport and direct team strategy .”37 When “coach” is used as a
verb, it is defined as “to teach and train (an athlete or performer)” and “to teach, train,
and direct (a sports team).”38 Accordingly, “coaching services” is synonymous with
“educational services, namely, providing training.”
In addition to “coaching in the field of sports,” Applicant also offers fitness training
services.
About Us
Providing athletes with the methods and systems they
need to achieve their potential.
Aces Athletics Club is a premier training facility designed
for all ages. … We feel we have constructed the most state-
or-the-art facility in all of Utah County with the hopes of
36 Goudeseune Dep., pp. 56-57 (52 TTABVUE 59-60).
37 Merriam-Webster Dictionary (merriam-webster.com) (34 TTABVUE 9).
38 Merriam-Webster Dictionary (merriam-webster.com) (34 TTABVUE 10).
Opposition No. 91213723
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people achieving any goal. Whether your dream is to lose
weight, jump higher, or compete in organized athletics, we
have provided the place and tools to help you achieve your
potential.39
* * *
We have constructed a top of the line sport specific training
facility to provide athletes a way to be faster, jump higher,
and increase strength. Peak Performance Training has
been heavily influenced by many collegiate strength
coaches to be maximized for efficiency and production. Our
equipment has been custom designed and manufactured by
the cutting edge sport provider Edge Athletic.40
* * *
Fitness Classes
• Train like a Professional Athlete •
Aces Athletics is introducing a new line of fitness training
classes that will push you to your limits and help you
achieve your fitness goals. Whether it is to train like a
professional athlete with elite coaches, increase flexibility,
or improve functional ability, we have the solution for
you!41
* * *
JumpStart Kid & Youth Fitness
• Developing Healthy Habits That Last A Lifetime •
JumpStart Fitness is a high-intensity interval training
program especially geared toward youth fitness. Its
mission is to help trainees find a passion and interest for
fitness and help them develop healthy habits not that will
last for a lifetime.
39 34 TTABVUE 18.
40 34 TTABVUE 19.
41 34 TTABVUE 27.
Opposition No. 91213723
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What to expect from the class:
• Fun sports and activities
• Integrated nutrition education
• Fun and engaging workouts
• Suitable for all fitness levels42
* * *
Peak Performance
Speed, strength, power and athletic ability are essential to
be successful in any sport. Here at Aces Athletics we have
quality training for every athlete in the state of Utah. We
have a top of the line facility with new and advanced
equipment to achieve any athletic goal. Our trainers are
qualified in knowledge and experience and will provide a
positive atmosphere that will motivate any athlete to
become their best.
1 on 1 Private Training.
Small Group Training (2-4)
Team and Large Group Training (5+)43
Applicant’s equipment includes equipment that can be found in many health and
fitness centers (e.g., steppers, treadmills, elliptical trainers, stationary bikes, weight
machines, and free weights).44
Applicant’s offering of fitness training services is probative that “coaching in the
field of sports” and “providing training such as classes and seminars in the field of
42 34 TTABVUE 31.
43 35 TTABVUE 7. Applicant also offers strength training (35 TTABVUE 12) and vertical
jump training (35 TTABVUE 20).
44 34 TTABVUE 23-25.
Opposition No. 91213723
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physical fitness” are related. National Football League v. Jasper Alliance Corp., 16
USPQ2d 1212, 1216 (TTAB 1990) (“the fact that opposer currently uses its other NFL
marks on greeting cards is yet another reason why purchasers would be likely to be
confused as to source by applicant’s use of the SUPER BOWL mark” in connection
with greeting cards); Tiffany & Co. v. Classic Motor Carriages, Inc., 10 USPQ2d 1835,
1842 (TTAB 1989) (the context in which applicant uses its mark to appeal to luxury
products for which opposer is well-known will lead consumers to believe that
applicant’s goods are associated with or sponsored by opposer).
We find that the Applicant’s “coaching in the field of sports” services are related
to Opposer’s “educational services, namely providing training such as classes and
seminars in the field of physical fitness.”
C. Established, likely-to-continue channels of trade.
The channels of trade factor includes how and to whom the goods and services are
sold. See Jeanne-Marc Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 61 (TTAB 1984)
(“both parties’ goods might be encountered by the same purchasers” and “the same
customers may purchase any or all of the items of goods involved herein whether for
their own use, for their spouses, relatives or for gifts”).
Applicant’s website advertises that it “will be home of 6 volleyball courts, 4
basketball courts, personal training, group fitness and Peak Performance training for
speed, strength, and vertical jump” with photographs displaying training teams,
fitness exercises, and Peak Performance training.45 Applicant’s strength training
45 34 TTABVUE 50.
Opposition No. 91213723
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program is touted as an “off-season training program.”46 Applicant advertises its
services to consumers looking for coaching services as well as fitness training
services.
We find that Applicant’s services and Opposer’s “educational services, namely
providing training such as classes and seminars in the field of physical fitness” are
likely to be sold to some of the same consumers.
D. Balancing the factors.
Because the marks are similar and the services are related and move in the same
channels of trade, we find that Applicant’s mark ACES ATHLETICS for “coaching in
the field of sports” is likely to cause confusion with Opposer’s registered mark ACE
for “educational services, namely providing training such as classes and seminars in
the field of physical fitness.”
VI. Whether the amended identification of services dispels the likelihood of
confusion?
As noted above, Applicant filed a motion to amend its identification of services
from “coaching in the field of sports” to “coaching of individuals and teams in the
field of sports excluding certification programs, public education, continuing
education for trainers.” (emphasis added). For the reasons set forth below, the
proposed amendment does not dispel the likelihood of confusion.
The addition of the words “individuals and teams” does not change the meaning
of the word “coaching.” Its definition remains “to teach and train (an athlete or
46 35 TTABVUE 13.
Opposition No. 91213723
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performer)” and “to teach, train, and direct (a sports team)” and remains synonymous
with “providing training” whether Applicant is rendering coaching services per se or
coaching individuals and teams. In fact, the proposed amendment does not change
the identification of services because coaching services encompasses coaching
individuals or teams comprising multiple individuals.
The restriction “excluding certification programs, public education, continuing
education for trainers” does not serve to distinguish the services because it does not
affect the scope of Applicant’s coaching services. Applicant’s proposed amendment is
analogous to an identification reading “hammers, excluding saws.” The exclusion of
saws has nothing to do with hammers just like the exclusion of certification programs,
public education, and continuing education for trainers has nothing to do with
coaching services.
Decision: The opposition is sustained.
