Athleta, Inc.v.David Sales

Trademark Trial and Appeal Board

Jul 19, 2017

No. 91218461 (T.T.A.B. Jul. 19, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 19, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Athleta, Inc.
v.
David Sales
_______
Opposition No. 91218461
_______
James D. Weinberger and Jennifer Insley-Pruitt of Fross, Zelnick, Lehrman & Zissu,
P.C. for
Athleta, Inc.

Dr. David Sales, appearing pro se.1
_______
Before Wellington, Lykos and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Dr. David Sales (“Applicant”) has filed applications for registration of the standard
character marks ATHLETIKA and ATHLETIKA SP for:2

1 Applicant was represented by counsel earlier in the proceeding. When the counsel withdrew
representation, the Board allowed Applicant time to appoint new counsel or to inform the
Board that he wishes to represent himself. Applicant chose to represent himself. See 21
TTABVUE.
2 Applications Serial Nos. 86097195 (for the mark ATHLETIKA) and 86098697 (for the mark
Opposition No. 91218461

~ 2 ~

Analgesic balm; Medical adhesive tape in International Class 3; and

Body rehabilitation apparatus for medical purposes; Compression socks
for medical or therapeutic use; Exercise machines for therapeutic
purposes; Foam rollers for use in physical therapy; Manually-operated
exercise equipment for physical therapy purposes; Manually-operated
resistance bands for physical therapy purposes; Manually-operated
resistance tubing for physical therapy purposes; Medical and
therapeutic device and apparatus, namely, a force and motion sensing
apparatus and assisted exercise machine for the rehabilitation of hands
and wrists, feet and ankles, knees and shoulders affected by
neuromuscular diseases, disorders, or injuries for home or clinical use;
Medical braces for hands and wrists, feet and ankles, knees and
shoulders; Medical ice packs; Physical exercise apparatus, for medical
purposes; Protective sleeves used with orthopedic bracing systems to
protect skin from abrasions; Therapeutic hot and cold compression
wraps; Therapeutic hot and cold therapy packs; Thermal packs for first
aid purposes in International Class 10.

Athleta, Inc. (“Opposer”) opposes registration of Applicant’s marks in both classes
on the ground of likelihood of confusion with its previously-used and registered mark,
ATHLETA, under Section 2(d) of the Trademark Act. Specifically, Opposer pleads
prior common law rights in the mark in connection with women’s sports and active
apparel, and related goods and services, and ownership of the following eleven
registrations for the standard character mark ATHLETA:
Reg. No. 2427769 for: mail order services featuring sportswear apparel and
computerized online retail services in the field of sportswear apparel in
International Class 35;3

ATHLETIKA SP) were filed on, respectively, October 21 and 22, 2013. Both applications are
based on Applicant’s allegation of a bona fide intent to use the marks in commerce, pursuant
to Section 1(b) of the Trademark Act.
3 Issued on February 13, 2001, renewed.
Opposition No. 91218461

~ 3 ~

Reg. No. 2427933 for: mail order services and computerized online retail services
in the field of athletic apparel, athletic accessories, and athletic equipment in
International Class 35;4

Reg. No. 2474894 for: athletic apparel, namely, caps, shorts, pants, shirts,
jackets, vests, bras, swimwear, and under wear in International Class 25;5

Reg. No. 3931195 for: handbags; purses; backpacks; book bags; tote bags;
messenger bags; all-purpose sport bags; beach bags; duffel bags; general purpose
bags for carrying yoga equipment in International Class 18;6

Reg. No. 3931215 for: personal exercise mats in International Class 28; 7

Reg. No. 3931221 for: retail store services in the field of athletic apparel, athletic
accessories, athletic equipment, sportswear, clothing, namely, tops, t-shirts,
shirts, blouses, bottoms, shorts, pants, jackets, sweaters, shorts, vests, bras,
swimwear, and underwear; headwear; footwear, headwear, athletic bags, tote
bags, sports bags, backpacks, duffle bags and all-purpose carrying bags in
International Class 35;8

Reg. No. 3971029 for: advertising and marketing services, namely, issuing gift
cards and gift certificates that may then be redeemed for goods; customer loyalty
services and customer club services, for commercial, promotional and/or
advertising purposes; retail store services featuring clothing, footwear,
headwear, accessories, bags, athletic accessories and athletic equipment; On-
line retail store services and mail order services featuring clothing, footwear,
headwear, accessories, bags, athletic accessories and athletic equipment in
International Class 35; 9

Reg. No. 4202561 for: bags and cases specially adapted for sports equipment in
International Class 28; 10

4 Issued on February 13, 2001, renewed.
5 Issued on August 7, 2001, renewed.
6 Issued on March 15, 2011, Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
7 Issued on March 15, 2011, Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
8 Issued on March 15, 2011, Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
9 Issued on May 31, 2011, Section 8 affidavit accepted and Section 15 affidavit acknowledged.
10 Issued on September 4, 2012.
Opposition No. 91218461

~ 4 ~

Reg. No. 4372492 for: catalogs in the fields of clothing, shoes, hats, clothing
accessories, hair accessories, bags, exercise equipment and water bottles in
International Class 16; 11

Reg. No. 4372624 for: hair accessories, namely, hair bands in International
Class 26; 12 and

Reg. No. 4445489 for: Clothing, namely, tops, bottoms, skirts, jackets, vests,
swimwear, hooded sweat shirts, dresses, tights, belts, gloves, loungewear,
neckwear, undergarments, tennis wear; headwear in International Class 25.13

Applicant, in his answer, makes certain admissions with regard to his
applications, but otherwise denies the salient allegations in the Notice of Opposition.
Only Opposer filed a brief.
The Record
The record includes the pleadings and, by way of Trademark Rule 2.122, 37 C.F.R.
§ 2.122, the files of the involved applications.
Opposer, during its trial period, filed a copy of the testimonial deposition
transcript, with exhibits, of Allison Kelley, Opposer’s vice-president of customer and
business intelligence.14 Opposer also submitted notices of reliance on the following
materials: copies of its pleaded registrations obtained from the Office’s TSDR
electronic database, showing status and title;15 printouts from the Internet from

11 Issued on July 23, 2013.
12 Issued on July 23, 2013.
13 Issued on December 10, 2013.
14 28 TTABVUE. Opposer also submitted a “confidential” version (29 TTABVUE) which the
Board has also reviewed and treated it as such in rendering our opinion. It is not available
for public viewing.
15 24 TTABVUE. These registrations were already of record in light of Opposer’s submission
of copies of the same from the Office’s TSDR electronic database with its Notice of Opposition,
Opposition No. 91218461

~ 5 ~

various websites, including articles involving Opposer;16 copies of six different
articles from printed publications;17 a copy of Applicant’s answers to Opposer’s first
set of interrogatories; a copy of Opposer’s first set of requests for admission, dated
February 17, 2016, along with a statement from Opposer that Applicant failed to
respond to the requests; and a copy of Applicant’s responses to Opposer’s
interrogatory nos. 4-5, 7-8, and 19.
With respect to Opposer’s requests for admission and its assertion that Applicant
did not respond to them, this has not been contested. Accordingly, the requests for
admission are deemed admitted pursuant to Fed. R. Civ. P. 36; see also Trademark
Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i); TBMP § 407.03(a) (TBMP) (June 2017).
The admissions include the following:
• Opposer has standing to oppose registration of Applicant’s Marks;18

• Opposer’s rights in Opposer’s Mark [ATHLETA] predate any rights Applicant
has in Applicant’s ATHLETIKA [SP] marks;19

• The goods identified in the Applications are closely related to the goods and
services bearing marks owned by Opposer;20

• The first two syllables of the parties’ marks are identical in sight and sound;21

pursuant to Trademark Rule 2.122(d).
16 25 TTABVUE.
17 26 TTABVUE.
18 27 TTABVUE 7; Admission No. 1.
19 Id. at 7-8; Admission Nos. 3-4.
20 Id. at 8; Admission No. 15.
21 Id. at 9; Admission Nos. 20-21.
Opposition No. 91218461

~ 6 ~

• The SP in Applicant’s mark ATHLETIKA SP means “sport”;22

• Opposer’s ATHLETA mark is “well-known” and “famous”;23 and

• “Athletic clothing … yoga mats … accessories for use in sports” are offered
under the same brand name as “goods for use in physical therapy.”24

We underscore the importance of these admissions because all matters admitted
are considered to be “conclusively established unless the court on motion permits
withdrawal or amendment of the admission.” See Fed. R. Civ. P. 36(b). There is no
such motion before us and Applicant has made no attempt to otherwise set aside the
admissions. Thus, even if Applicant attempted to rebut the admissions with evidence,
and it has not, it would be to no avail. Texas Dep’t of Transportation v. Tucker, 95
USPQ2d 1241, 1244 (TTAB 2010); see also American Automobile Ass’n v. AAA Legal
Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991)
(“An admission that is not withdrawn or amended cannot be rebutted by contrary
testimony or ignored by the district court….”). Likewise, even if Applicant filed a brief
arguing that we should not rely upon the admissions, we would disregard the
arguments to avoid any prejudice to Opposer. Id. at 1145. That is, Opposer was
entitled to rely on the admissions and may have forgone introducing additional
evidence to support the issues that are conclusively established by the admissions.
As already noted, Applicant did not introduce any evidence. Nonetheless, as
plaintiff in this proceeding, Opposer still bears the burden of proof.

22 Id.; Admission No. 22.
23 Id.; Admission Nos. 23-24.
24 Id.; Admission Nos. 25-29.
Opposition No. 91218461

~ 7 ~

Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The Court of Appeals for the
Federal Circuit has enunciated a liberal threshold for determining standing in Board
proceedings. Ritchie, 50 USPQ2d at 1030.
Here, Applicant has admitted that Opposer has standing to bring this opposition.
Even without this admission, we would find that Opposer has demonstrated it is more
than a mere interloper and has a real interest in and standing to bring this
proceeding. Particularly, Opposer made of record its ownership of the pleaded
registrations for the mark ATHLETA and Opposer’s vice-president of customer and
business intelligence, Allison Kelley, has provided uncontroverted testimony that,
since 1998, Opposer has used its ATHLETA mark in connection with women’s
athletic apparel that it sells through an “online channel, as well as in [Opposer’s]
stores” and that it has “a hundred twenty-plus stores” in the United States.25

25 28 TTABVUE 12; Kelley Dep. 9:1-3.
Opposition No. 91218461

~ 8 ~

Because Opposer’s pleaded registrations are of record, priority is not at issue with
respect to the goods and services covered by the registrations vis-à-vis the involved
applications. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469
(TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974)).
With respect to Opposer’s pleaded common law rights in the ATHLETA mark,
Applicant has admitted that Opposer’s rights predate any rights Applicant has in
Applicant’s ATHLETIKA [SP] marks. Moreover, through the testimony of Ms. Kelley,
Opposer has established that Opposer began using its ATHLETA mark in 1998 in
connection women’s athletic apparel and related goods and accessories, and retail
services featuring these goods. Opposer’s online retail services involve the sale of its
own goods as well as third-party goods that are “sold under the ATHLETA
trademark,” including compression socks.26 Thus, in addition to Applicant’s
admission that Opposer has priority, Opposer has demonstrated use of its mark in
connection with its goods and services before the filing dates of the involved
applications, i.e., October 21, 22, 2013, which are the earliest dates of use Applicant
can rely upon given he did not submit any evidence.
Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of

26 Id. at 31; Kelley Dep. 28:10-18.
Opposition No. 91218461

~ 9 ~

likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the marks and the similarities
between the goods or services, the first two du Pont factors. See 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.”). Finally,
although Applicant did not introduce any evidence or file a brief, we bear in mind
that it is Opposer who bears the burden of proving its claim of likelihood of confusion
by a preponderance of the evidence.
Similarity of the Parties’ Goods/ Trade Channels
The second and third du Pont factors involve an assessment as to the similarity
or dissimilarity of the parties’ goods and services, and their established, likely-to-
continue trade channels. “In comparing the parties’ goods [and services], ‘[t]he issue
to be determined . . . is not whether the goods [or services] of plaintiff and defendant
are likely to be confused but rather whether there is a likelihood that purchasers will
be misled into the belief that they emanate from a common source.’” Anheuser-Busch,
LLC v. Innvopak Sys. Pty. Ltd., 115 USPQ2d 1816, 1825 (TTAB 2015) (quoting Helene
Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989)).
We must focus on the wording of the applications and registrations, rather than
what the record may reveal regarding the parties’ particular goods, because “‘the
Opposition No. 91218461

~ 10 ~

question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application.’” Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990)).
At the outset, we once again point out an admission made by Applicant – the
relevant admission here is that “[t]he goods identified in the Applications are closely
related to the goods and services bearing marks owned by Opposer.”27 In addition to
this admission, which is significant by itself, Opposer also demonstrated that it uses
its ATHLETA mark in connection with the sale of compression socks via its online
store. Applicant lists “compression socks” in one of the involved applications (Ser. No.
86098697). With respect to Applicant’s “analgesic balm” (in application Ser. No.
86097195), Opposer argues that these goods are similar to its exercise-related goods,
such as personal exercise mats, and cites to a prior Board decision finding a
relationship between a “liniment for external use” and sports equipment.28
With respect to the channels of trade, there are no limitations in the applications
or pleaded registrations as to channels of trade in the descriptions of goods and
services. Therefore, we presume that both parties’ goods and services move in all
channels of trade normal for those goods and services. See Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). As

27 27 TTABVUE 7; Admission No. 15.
28 32 TTABVUE 28; Opposer’s brief, citing to Thermo-Flex, Inc. v. Sw. Drug Corp., 160 USPQ
47 (TTAB 1968).
Opposition No. 91218461

~ 11 ~

noted, Opposer sells compression socks via its online store and compression socks are
listed in Applicant’s application Serial No. 86098697. Given that an online store, such
as Opposer’s, is one possible trade channel for Applicant’s compression socks, we must
assume that Applicant’s compression socks may be found in this same trade channel.
In view of the above, we find that Applicant’s goods identified in both Classes 3
and 10 are related to Opposer’s goods and services. Aside from Applicant’s clear
admission that the involved goods and services are “closely related,” Opposer has
shown that it sells compression socks and their online store is one possible trade
channel for Applicant’s compression socks; thus, there is some overlap in trade
channels for the parties’ goods and services.
Accordingly, the du Pont factor involving relatedness of the goods and services
supports a finding of likely confusion and the du Pont factor involving their trade
channels, at least with respect to compression socks, favors the same finding.
Similarity of the Marks
We now turn to the first du Pont factor involving the similarity of the parties’
marks. We evaluate the marks in their entireties for similarities and dissimilarities
in appearance, sound, connotation and overall commercial impression. Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). “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
Opposition No. 91218461

~ 12 ~

to assume a connection between the parties.” Coach, 101 USPQ2d at 1721 (quotation
omitted).
Applicant admits that the first two syllables in the marks are identical in sight
and sound. We further find that the marks, ATHLETA and ATHLETIKA and
ATHLETIKA SP, in their entireties, are visually and aurally very similar. All three
marks begin with the same initial six letters – indeed, Applicant is essentially
inserting the letters IK into Opposer’s mark, ATHLETA, and, in one instance, adding
the letters SP.
In terms of meaning or commercial impression created by the marks, all three
marks approximate the same words “athlete” and “athletic” and thus are likely to be
perceived by consumers as being suggestive of athletic goods. To the extent that all
three marks have a similar “athletic” connotation, this draws them closer.
Furthermore, Applicant’s addition of the letters SP do little to change this
connotation given Applicant’s admission that these letters mean “sport.” We further
note there is no evidence of weakness based on consumer exposure to extensive third-
party use of the same or similar marks in connection with the same or similar goods
and services.
In sum, we find Applicant’s ATHLETIKA and ATHLETIKA SP marks to be
overall similar to the Opposer’s ATHLETA mark. We make this finding based on the
identity in sight and sound of the first two syllables and the final syllable in all three
marks and the similar connotation created by the marks, with little to distinguish
one mark from the other.
Opposition No. 91218461

~ 13 ~

Accordingly, this du Pont factor also favors a finding of a likelihood of confusion.
Strength or Fame of Opposer's Mark
As a final matter, we address the du Pont factor involving the strength of
Opposer’s registered mark. In the likelihood of confusion context, fame “varies along
a spectrum from very strong to very weak.” Midwestern Pet Foods Inc. v. Societe des
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012) (quoting
Palm Bay, 73 USPQ2d at 1694.
Again, we must give appropriate consideration to Applicant’s admissions that
Opposer’s ATHLETA mark is “well-known” and, indeed, “famous” and find these
matters have been conclusively established. We also bear in mind that a famous mark
“casts a long shadow which competitors must avoid.” Bose Corp. v. QSC Audio Prods.
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); see also Kenner Parker
Toys, Inc. v. Rose Art Ind., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)
(“[T]he Lanham Act’s tolerance for similarity between competing marks varies
inversely with the fame of the prior mark.”).
In addition to Applicant’s admissions, Opposer submitted evidence to help show
that its ATHLETA mark has received some notoriety in connection with women’s
athletic apparel and related goods and accessories, as well as retail services featuring
these goods. While some of the evidence has been designated as “confidential,” we are
able to note that its annual sales and advertising figures are significant and Opposer
has been using its ATHLETA mark for a significant amount of time, nearly twenty
Opposition No. 91218461

~ 14 ~

years.29 Opposer also introduced evidence that it has received unsolicited exposure in
national and local media outlets.30
Accordingly, we find this du Pont factor favors Opposer and a finding that, because
its mark is famous and commercially strong, it should be accorded a wider ambit of
protection.
Conclusion
In sum, we have found that the du Pont factors involving the similarity of the
marks, relatedness of the goods and services, and their trade channels (at least with
respect to compression socks) all weigh in favor of a likelihood of confusion. That
Opposer’s mark is “well-known” and “famous” further creates a situation whereby the
scope of the mark’s protection is widened and the likelihood of confusion is thus
enhanced. Ultimately, we find that Opposer has established by a preponderance of
the evidence that Applicant’s marks, ATHLETIKA and ATHLETIKA SP, are likely
to cause confusion with Opposer’s mark, ATHLETA, when these marks are used on
or in connection with the respective goods and Opposer’s services.
Decision: The opposition is sustained with respect to both applications (Serial
Nos. 86097195 and 86098697).

29 Much of the evidence involving the strength of Opposer’s ATHLETA mark is contained in
the confidential testimonial deposition, with exhibits, of Ms. Kelley (29 TTABVUE).
30 25-26 TTABVUE.