Blue Collar Records, Inc.v.Lawron, LLC

Trademark Trial and Appeal Board

May 24, 2013

No. 91198801 (T.T.A.B. May. 24, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Blue Collar Records, Inc.
v.
Lawron, LLC
_____

Opposition No. 91198801
to application Serial No. 85055541
filed on June 5, 2010
_____

Rachel B. Rudensky, Jennifer P. Rabin, Mark D. Passler, and David Brafman of
Akerman Senterfitt for Blue Collar Records, Inc.

Don M. Bosco of Bosco & Ward for Lawron, LLC.
_____

Before Seeherman, Kuhlke and Wellington, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Lawron, LLC, seeks registration on the Principal Register of the
mark THE FIGHTERS CREED in standard characters for goods identified as
“athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic
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uniforms; golf shirts; polo shirts; sport shirts; sweat shirts” in International Class
25.1
Opposer, Blue Collar Records, Inc., has opposed registration of applicant’s
mark on the ground that, as used with applicant’s goods, the mark so resembles the
previously used and registered mark CREED for a variety of goods and services,
including “musical sound and video recordings” and “clothing, namely, knit shirts,
hooded shirts, and headwear, namely visors”, as to be “likely to cause confusion,
mistake, and deception as to an affiliation, connection or association between
Opposer and Applicant, or as to the origin, sponsorship or approval of Applicant’s
goods .. [and] [p]otential customers are likely to believe that Applicant’s goods
originate from, or are sponsored or approved by, Opposer, when such is not the
case.” Not. of Opp. ¶ 9. Opposer pleaded the following registrations:2
Registration No. 2770582 for the typed form mark CREED for “metal
key rings and metal key chains” in International Class 6, “rings being
jewelry, pendants, jewelry, and bracelets” in International Class 14,
“paper goods and printed matter, namely, posters, stickers, decals,
temporary tattoos” in International Class 16, “bed blankets” in
International Class 24, “clothing, namely, T-shirts, sweatshirts, tank
tops, polo shirts, jackets, jerseys, wind-resistant jackets, infant wear;
and headwear, namely hats and caps” in International Class 25,
entertainment services, namely, live music performances by a musical
group; providing information about musical groups via a computer
communications network; audio recording and production; and
entertainment, namely, production of shows and videos featuring

1 Application Serial No. 85055541 filed on June 5, 2010, based on an allegation of first use
and use in commerce on April 27, 2010 under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1(a).

2 Subsequent to the filing of the Notice of Opposition, a fourth pleaded registration
(Registration No. 2919348) was cancelled under Section 8 of the Trademark Act for failure
to file a declaration of continuing use and we have not considered this registration.

Opposition No. 91198801

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musical performances” in International Class 41, issued on October 7,
2003, Section 8 accepted;

Registration No. 2204984 for the typed form mark CREED for “musical
sound and video recordings” issued on November 24, 1998, renewed;
and

Registration No. 2865592 for the typed form mark CREED for
“clothing, namely, knit shirts, hooded shirts, and headwear, namely,
visors” in International Class 25, “ornamental novelty patches for
clothing” in International Class 26, issued on July 20, 2004, Section 8
and 15 declaration accepted and acknowledged.

Applicant filed an answer by which it denied the salient allegations.3
The record consists of: (1) the subject application file and pleadings; (2) the
testimony deposition, with exhibits, of Joseph Delerme, an employee of Wealth
Management Associates, a business management firm that provides its services to
opposer (Delerme Test.); (3) opposer’s Notice of Reliance on its pleaded
registrations, third-party registrations and third-party websites, including online
magazines and catalogs; (4) the testimony deposition with exhibits of Ron Modica, a
managing member of applicant (Modica Test.); and (5) applicant’s Notice of Reliance
on third-party registrations.4

3 Applicant’s asserted affirmative defenses are more in the nature of amplifications of its
denials. Applicant asserts that opposer’s mark is entitled to only a limited scope of
protection in view of third-party use and registration of CREED-formative marks for a
variety of goods and services. Although applicant employs the terms estoppel and
acquiescence in regard to these allegations, they simply relate to the du Pont factor
concerned with the scope of protection to be accorded the mark. Applicant also asserts that
opposer’s mark is not famous under Section 43(c), which pertains to a dilution claim not
present in this case.

4 On April 12, 2013, the Board accepted as conceded applicant’s request for an extension of
time to file its notice of reliance.
Opposition No. 91198801

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THE PARTIES
Opposer is “the legal entity of the band, Creed. Blue Collar enters into legal
relationships with vendors and other third parties to authorize the sale of
merchandise and licensing agreements on behalf of the band, Creed.” Delerme
Test. p. 4.
Applicant is a limited liability company that markets and sells apparel for
use by mixed martial arts (MMA) fighters and fans. Modica Test. p. 1, 2-6.
PRIORITY/STANDING
Because opposer’s pleaded registrations are of record, are valid and
subsisting, and owned by opposer, opposer’s standing to oppose registration of
applicant’s mark is established and its priority is not in issue. See Jewelers
Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
Cir. 1987; Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185 (CCPA 1982); and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Accordingly, we turn to the issue of likelihood of confusion under Section 2(d).
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co. Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003).
Opposition No. 91198801

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Fame/Strength
We begin with the strength of opposer’s CREED mark in order to determine
the scope of protection to be accorded opposer’s mark. Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). CREED is arbitrary as to
opposer’s goods and services and, as such, is a conceptually strong mark. The
commercial strength of a mark “may be measured indirectly, among other things,
by the volume of sales and advertising expenditures of the goods traveling under
the mark, and by the length of time those indicia of commercial awareness have
been evident.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002). In addition, some context in which to place raw
statistics may be necessary. Bose Corp., 63 USPQ2d at 1309.
In support of its assertion that its mark is famous, opposer has shown that it
has used the CREED mark in connection with its music, live performances and
related merchandise, including the items listed in its registrations, since 1996. Br.
p. 1, Delerme Test., Exhs. 29-35.5 During the years 1997-2001 CREED released
three multi-platinum albums and was ranked by Billboard magazine as one of the
top 20 artists of the 2000s. Delerme Test. pp. 6, 10, 22, Exhs. 13, 14, 22. Many of
its albums went platinum several times (platinum being sales of 1 million units)
and many of its songs were top ten songs, including number one, on Billboard

5 For purposes of a claim under Section 2(d), a plaintiff may rely on the establishment of
fame through the trial period.

Opposition No. 91198801

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charts. Delerme Test. pp. 18, 21, Exhs. 18, 20, 21.6 As of November 19, 2008,
Creed’s Greatest Hits album went two times platinum (sales of over two million
units). In 2000, one of the band’s songs won the Grammy award for best rock song.
Delerme Test. p. 23. Creed performs live on tour (the last tour of record was
ongoing during the testimony period in 2012). Delerme Test. p. 24.
Based on this record, we find that opposer has shown that its CREED mark
is both conceptually and commercially strong for its music performance services, but
the record evidence does not show such extensive public exposure to rise to the level
of fame such that it plays a dominant role in our determination. Lacoste Alligator
S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009) (“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”); Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901 (TTAB 2007). However, in view of its strength we accord it a broad scope of
protection.
Countering opposer’s evidence of commercial strength, applicant has
submitted evidence to show third-party use of marks in support of its argument
that opposer’s mark is weak. Applicant’s evidence consists of excerpts from two
third-party websites offering t-shirts for sale with the wording ASSASSIN’S
CREED and COMBAT VETERAN’S CREED displayed across the front of the shirts.

6 We do not accept as evidence of opposer’s sales of albums and rankings the information
found in articles on the Wikipedia website, as that is hearsay.

Opposition No. 91198801

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Applicant also submitted TESS printouts of third-party registrations: ASSASSIN’S
CREED, ASSASSIN’S CREED BLOODLINES and ASSASSIN’S CREED II
DISCOVERY for computer games; and COMBAT VETERAN’S CREED and design
for, inter alia, hats and t-shirts.
In general, web site listings are of limited probative value inasmuch as they
give no indication as to actual sales, when the mark was adopted, and customer
familiarity with the marks. Sports Authority Michigan Inc. v. PC Authority Inc., 63
USPQ2d 1782, 1798 (TTAB 2002); cf. AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268, 270 (CCPA 1973). The evidence from these two
websites is not sufficient to limit the scope of protection under the du Pont factor of
third-party use. However, this evidence may be used in the same manner as the
third-party registration evidence, as discussed below.
Third-party registrations may serve to show that a term is so widely
registered it has a certain meaning or suggestiveness such that the mere inclusion
of the element may not be a sufficient basis on which to find a likelihood of
confusion. Here, although the third-party uses and registrations do not serve to
weaken opposer’s mark, they do show use of the word CREED to convey a specific
meaning separate from the word CREED by itself directed to the name of the group,
i.e., ASSASSIN’S or COMBAT VETERAN’S, in the same manner that applicant’s
mark identifies a specific group.
Applicant also argues that opposer has allowed COMBAT VETERAN’S
CREED to remain registered while inconsistently opposing applicant’s mark. We
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first observe that, “it is entirely reasonable for the opposer to object to the use of
certain marks in use on some goods which it believes would conflict with the use of
its marks on its goods and services while not objecting to use of a similar mark on
other goods which it does not believe would conflict with its own use.” McDonald’s
Corp. v. McKinley, 13 USPQ2d 1895, 1899-1900 (TTAB 1989). Further, it is clear
from the record that opposer has actively policed its mark by bringing oppositions
against published applications. See, e.g., Opposition No. 91189458 against
FIGHTER’S CREED FIGHT WEAR; Opposition No. 91179816 against GREED IS
THE CREED; and Opposition No. 91189440 against MILLARD’S CREED.7
Goods/Channels of Trade/Classes of Purchasers
We turn then to consider the similarities between opposer’s and applicant’s
goods, channels of trade and classes of purchasers. We must make our
determinations under these factors based on the goods as they are recited in the
application and registrations, respectively. See Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)
(“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of
an applicant’s goods, the particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); and In re Elbaum, 211 USPQ 636 (TTAB
1981).

7 Opp. NOR Exh. 8. In each instance, the opposition ended in default for failure to file an
answer. None of the examples in the record reached trial.
Opposition No. 91198801

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Although the pleaded registrations have a variety of goods, we focus our
consideration of the du Pont factors on the most closely related goods, specifically
those in International Class 25. Applicant’s and opposer’s polo shirts, sweat shirts,
hats and caps are identical. Applicant’s athletic apparel, namely, shirts, golf shirts,
and jackets encompass opposer’s tank tops, knit shirts, hooded shirts, and wind-
resistant jackets, and, as such these goods are legally identical. In view thereof, we
find the parties’ identified goods to be identical in part. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) (it is
sufficient for a determination of likelihood of confusion if the relatedness is
established for any item encompassed by the identification of goods in the
application). Further, inasmuch as the identifications of goods are identical in part
and given the lack of restrictions in the identifications of goods, we must presume,
for purposes of the likelihood of confusion analysis, that the trade channels and
classes of purchasers overlap. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002) and Octocom, 16 USPQ2d at 1783.
The record also establishes that music groups, such as opposer, sell their
merchandise (t-shirts, sweatshirts, caps and posters) at performance venues, online
(both at their own and third-party websites) and in retail stores such as Target and
Macy’s. Delerme Test. pp. 26, 27. Opposer has been selling merchandise, including
hats, shirts, posters, key chains and sweatshirts, since 1997. Delerme Test. p. 30-
31.
Opposition No. 91198801

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Applicant’s arguments, centered on the differences between the actual
channels of trade and potential purchasers for the parties’ respective goods, ignore
well established case law requiring that the comparison of the goods must be based
on how the goods are identified in the involved application and opposer’s
registration.
In view thereof, these du Pont factors weigh in opposer’s favor.
Conditions of Sale
As to the conditions of sale, the price range for these types of goods does not
exceed fifty dollars. Opposer argues that the parties’ respective goods are impulse
items. While these goods are not the subject of a careful sophisticated purchasing
process, the goods also are not impulse items such that the conditions of purchase
would increase a likelihood of confusion. We find that this factor is neutral in this
case.
Similarity/Dissimilarity of the Marks
We turn to the du Pont factor of the similarities and dissimilarities between
applicant’s mark THE FIGHTERS CREED and registrant’s mark CREED. We
analyze “the marks in their entireties as to appearance, sound, connotation and
commercial impression.” In re Viterra Inc., 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
quoting du Pont, 177 USPQ at 567. See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005).8 In making this finding, the focus is on the recollection of the

8 Applicant’s arguments regarding the actual use of its mark in a design format are
misplaced. For purposes of this factor we note that applicant seeks registration of a
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average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
There are clear differences in the marks THE FIGHTERS CREED and
CREED in terms of appearance and sound. While the marks share the word
CREED, we find applicant’s mark, THE FIGHTERS CREED, to be a unitary phrase
and the word CREED is not the dominant part of applicant’s mark.
With regard to connotation, the word CREED is defined as “a brief
authoritative formula of religious belief” and “a set of fundamental beliefs; also; a
guiding principle.” Merriam-Webster online dictionary at www.merriam-
website.com.9 The word “creed” “is a statement of belief – usually a statement of
faith that describes the beliefs shared by a religious community – and is often
recited as part of a religious service. … The term ‘creed’ can also refer to a person’s
political or social beliefs or is sometimes used to mean religious affiliation.” Modica
Test., Exh. 17 www.wikipedia.org. The word “creed” is associated with a variety of
religious and other belief systems, for example, Old Roman Creed, Nicene Creed,
Apostles’ Creed, Chalcedonian Creed, Masai Creed, Jewish Creed, Islamic Creed,

standard character word mark. Applicant’s standard character mark is not limited to any
particular display, but can be used in any stylization, including that identical to opposer’s.
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59
(Fed. Cir. 2011).

9 The Board may take judicial notice of dictionary definitions. In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006). See also University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Opposition No. 91198801

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The Fire Fighter’s Creed, and U.S. Soldier’s Creed.10 Modica Test. p. 30, Exhs. 17-
22. Thus, while the word “creed” maintains the meaning of “belief system,” there
are an endless variety of applications depending on the type of belief system.
Applicant chose the mark THE FIGHTERS CREED to convey the idea of a
belief system for fighters. Modica Test. p. 4, 53 (“Fighter’s Creed is like a belief
system. Every fighter, even a firefighter, any kind of fighter, freedom fighter, they
all have a belief system that is a fighters’ creed.” … “The Fighters Creed is a belief
system. It’s between – it’s The, The Fighters, and Creed together are a strong word
in itself. There is no dominance, they go together.”)
The clear connotation of THE FIGHTERS CREED is of an oath taken and
belief system adhered to by fighters, in contrast to the word CREED by itself which
is a general impression of a belief system; when used alone, the word, evokes more
of a religious or spiritual connotation. Thus, the marks have very different
connotations. The differences create an overall different commercial impression.
There is nothing in the record to support a finding that THE FIGHTERS CREED
would be perceived as a variant of opposer’s CREED mark. Opposer only uses the
one word, the name of the band CREED, in connection with the various clothing
items.
We find the case before us similar to Champagne Louis Roederer S.A. v.
Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998) where the
Court affirmed the Board’s decision that, despite the fact that the goods and

10 We have not considered the examples listed in applicant’s brief for which there is no
supporting evidence.
Opposition No. 91198801

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channels of trade were the same and plaintiff’s mark had “come to serve as a very
strong indication of origin for [its] champagne,” the marks CRISTAL and CRYSTAL
CREEK evoked very different images in the minds of consumers sufficient to
obviate a likelihood of confusion. Id. at 1460, quoting, slip op. Opposition No.
91080932 at p. 9 (TTAB June 25, 1997). Here, as noted above, the difference in
connotation resulting from the addition of “THE FIGHTER’S” to applicant’s mark,
creates a different commercial impression than that of CREED by itself.
Considering the marks in their entireties, we find that applicant’s and
opposer’s marks differ substantially in appearance, sound, connotation and
commercial impression. Moreover, we find this factor to be pivotal in that even
considering the du Pont factors that favor opposer, this factor of the dissimilarities
of the marks outweighs the other factors. See Kellogg Co. v. Pack’em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason
why, in a particular case, a single du Pont factor may not be dispositive”). See also
Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003).
Actual Confusion
Applicant argues that the lack of evidence of actual confusion despite two and
one half years of concurrent use supports a determination that confusion is not
likely. It has frequently been observed that evidence of actual confusion is difficult
to come by, in particular with relatively inexpensive items. General Mills, Inc. v.
General Mills IP Holdings II, LLC v. Fage Dairy Processing Industry S.A., 101
USPQ2d 1584 (TTAB 2011). See also Lebanon Seaboard Corp. v. R&R Turf Supply
Opposition No. 91198801

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Inc., 101 USPQ2d 1826 (TTAB 2012). Moreover, because customer confusion often
comes to light when fielding complaints about the parties’ branded products, a lack
of evidence of actual confusion may reflect little more than that both parties’ goods
are of acceptable quality. Two years is not a long period of concurrent use and there
is nothing in the record to indicate that there has been a meaningful opportunity for
confusion to occur. Thus, we find that the absence of evidence of actual confusion is
not significant in this case. A showing of actual confusion would of course be highly
probative, if not conclusive, of a likelihood of confusion. The opposite is not true,
however. The lack of evidence of actual confusion carries little weight. J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
Moreover, as often stated, proof of actual confusion is not necessary to establish
likelihood of confusion. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 396 (Fed. Cir. 1983).
Accordingly, the eighth du Pont factor of the length of time during and
conditions under which there has been contemporaneous use without evidence of
actual confusion is considered neutral.
Balancing the Factors
Because the marks are sufficiently different, the du Pont factor of the
dissimilarities of the marks outweighs the other relevant du Pont factors discussed
above. In view thereof, we conclude that there is no likelihood of confusion between
applicant’s mark THE FIGHTER’S CREED and opposer’s CREED mark. In re E.I.
Opposition No. 91198801

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du Pont de Nemours & Co., 177 USPQ at 567 (“[E]ach [of the thirteen elements]
may from case to case play a dominant role”).
Decision: The opposition is dismissed.