Carlos A. Castrov.Rick Cartwright

Trademark Trial and Appeal Board

Oct 4, 2011

No. 91188477 (T.T.A.B. Oct. 4, 2011)

Mailed:
October 4, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Carlos A. Castro
v.
Rick Cartwright
_____

Opposition No. 91188477
to application Serial No. 77406490
filed on February 26, 2008
_____

Kit M. Stetina and Stephen Z. Vegh of Stetina Brunda Garred
& Brucker for Carlos A. Castro.

Pollie A. Gautsch of G & A Legal for Rick Cartwright.
______

Before Grendel, Kuhlke and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Rick Cartwright (“applicant”) filed an intent-to-use
application for the mark 5 STAR FIGHTWEAR NEVERTAP for the
following goods:
Shirts; short-sleeved or long-sleeved t-
shirts; short-sleeved shirts; sport
shirts; t-shirts; tee shirts; hats;
board shorts; rash guards; wristbands,
in Class 25.

Applicant disclaimed the exclusive right to use the word
“Fightwear.”

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91188477
2
Carlos A Castro (“opposer”) filed a notice of
opposition against the registration of applicant’s mark on
the ground of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d). Specifically, opposer alleged that since
at least as early as October 2003, he has made use of the
mark NEVERTAP in connection with a variety of products and
services in the field of mixed martial arts including
“wearing apparel, including shirts, pants, shorts, footwear,
headgear, caps, cloth patches, embroidered patches, hoods
and jerseys” and that applicant’s mark 5 STAR FIGHTWEAR
NEVERTAP in connection with clothing “is confusingly similar
to Opposer’s NEVERTAP trademark” and is likely to cause
confusion.
Applicant denied the essential allegations in the
notice of opposition. As his affirmative defenses,
applicant alleged, inter alia, that opposer has abandoned
its mark and that opposer’s “alleged use of ‘NEVERTAP’ does
not constitute trademark use.”
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, opposer introduced the following
testimony and evidence:
1. Notice of reliance on the following items:
Opposition Nos. 91188477
3
a. The discovery deposition of applicant with
attached exhibits;
b. Applicant’s responses to opposer’s
interrogatories; and
c. Applicant’s responses to opposer’s request
for production of documents;1 and
2. Opposer’s testimony deposition with attached
exhibits.
Applicant did not introduce any testimony or evidence.
Standing
Opposer described his business as follows:
It’s production, marketing and promotion
of the “Nevertap” brand, including
grappling tournaments, apparel, various
forms of media including the production
of DVD’s and webcasting depicting
Nevertap tournaments.2

In view of the foregoing, we find that opposer has shown
that he has a reasonable belief of damage and a real
interest in this proceeding. Therefore opposer is not a
mere intermeddler, and he has established its standing.

1 Applicant’s responses to opposer’s request for production of
documents may be made of record to confirm that no documents
exist in response to a particular request. L.C. Licensing Inc.
v. Berman, 86 USPQ2d 1883, 1886 n.5 (TTAB 2008); TBMP § 704.11
n.8 (3rd ed. 2011).
2 Castro Dep., p. 8. “Grappling” is a combination of mixed
martial arts. (Castro Dep., p. 11).
Opposition Nos. 91188477
4
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
Priority

In order for opposer to prevail on his Section 2(d)
claim, he must prove that he has a proprietary interest in
the mark NEVERTAP and that he obtained that interest prior
to the earliest date of use that applicant can claim.
Herbko International Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth &
Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43
(CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc., 27
USPQ2d 1711, 1714 (TTAB 1993). For purposes of determining
priority of use, because applicant did not submit evidence
of earlier use, applicant’s date of first use is February
26, 2008, the filing date of his application and, therefore,
the constructive use date of his intent-to-use application.
Opposer testified that on October 5, 2003, he first
offered for sale on Internet, through his website
nevertap.com, shirts with NEVERTAP across the chest.3
Opposer subsequently began using NEVERTAP in a red, white,
and blue logo form on t-shirts in 2004.4

3 Castro Dep., pp. 15-16.
4 Castro Dep., p. 58.
Opposition Nos. 91188477
5
Opposer conducts NEVERTAP fight tournaments.5 Opposer
conducted his first tournament in 2003.6 Opposer sponsored
fighters in those tournaments who wore his apparel.7 In
“late 2005,” opposer released a NEVERTAP DVD featuring “our
tournaments that we did in 2004.”8 Opposer authenticated
his PayPal transaction history of activity from February 1,
2007 through February 6, 2008.9 Opposer also testified that
Budo’s Videos has been selling his DVDs since 2005, the
Cobra-Kai Jujitsu website has been selling his DVDs and
shirts since 2005
Opposer further testified that since 2006, opposer has
been managing and sponsoring fighters.10
Q. What does the sponsorship of a
fighter entail?

A. Sponsorship, I basically will be
giving them product outfitting
their whole fight team for the day
of the event as well as giving them
product for them at my cost and
they see fit what they do with that
product.

Q. I see. When you say giving them
product, I assume you mean by that
that they are wearing some type of
clothing that bears the “Nevertap”
mark?

A. Yes.

5 Castro Dep., pp. 26-27.
6 Castro Dep., p. 54.
7 Castro Dep., p. 55.
8 Castro Dep., pp. 31-32 and Exhibit 10.
9 Castro Dep., pp. 32-33 and Exhibit 11.
10 Castro Dep., pp. 11-13.
Opposition Nos. 91188477
6
Q. Can you give me an example of
products you would give away that
way - - I mean, that you would
sponsor a fighter with?

A. I make their fight shorts. I will
embroider my logo on their fight
shorts. I will make them - - I
have them pick the shirts and
colors they want and I will make
the shirt specifically for them,
outfit their whole entourage.

Q. And they all bear the “Nevertap”
logo?

A. Yes.11

In view of the foregoing, we find that opposer first
used NEVERTAP on t-shirts in 2003, a date prior to the
filing date of applicant’s application.
Applicant argues that opposer’s use of NEVERTAP on
clothing is merely ornamental and, therefore “insufficient
to establish priority.”12 However, the Board held as far
back as 1973 that trademarks placed on t-shirts serve a
trademark function.
It is common knowledge that T-shirts are
“ornamented with various insignia,
including college insignias, or
“ornamented” with various sayings such
as “Swallow Your Leader”. In that sense
what is sought to be registered could be
construed to be ornamental. If such
ornamentation is without any meaning
other than the ornamentation it is
apparent that the ornamentation could
not and would not serve as an indicia of
source. Thus, to use our own example,
“Swallow Your Leader” probably would not

11 Castro Dep., p. 12.
12 Applicant’s Brief, p. 7.
Opposition Nos. 91188477
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be considered as an indication of
source.

The “ornamentation” of a T-shirt can be
of a special nature which inherently
tells the purchasing public the source
of the T-shirt, not the source of
manufacture but the secondary source.
Thus, the name “New York University” and
an illustration of the Hall of Fame,
albeit it will serve as ornamentation on
a T-shirt will also advise the purchaser
that the university is the secondary
source of that shirt.

In re Olin Corporation, 181 USPQ 182, 182 (TTAB 1973).
In this case, the t-shirts feature applicant’s
trademark used in connection with DVDs and fighting
tournaments, and considering the nature of t-shirts, the
NEVERTAP “ornamentation” serves as an indicia of a secondary
source of origin. NEVERTAP is an arbitrary term and can and
does function as a trademark.13
Accordingly, opposer has proven priority of use.
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). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion

13 Applicant testified that “Never Tap means never quitting, never
give up.” (Cartwright Dep., p. 22).
Opposition Nos. 91188477
8
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. 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”).
A. The similarity or dissimilarity and nature of the goods
at issue.

Both parties are using their marks on clothing,
specifically t-shirts.
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Opposer sells his t-shirts through gyms and forums in
the field of mixed martial arts and through the Internet via
opposer’s website, Youtube.com and through social networking
sites such as Facebook.14 Opposer also sells his products
at mixed martial arts tournaments.15 The typical purchasers
of opposer’s NEVERTAP apparel are mixed martial arts
enthusiasts, practitioners, and their friends and
families.16
With respect to applicant’s goods, because applicant’s
description of goods is unrestricted as to its nature, type,
channels of trade or classes of consumers, we must presume

14 Castro Dep., pp. 51-53.
15 Castro Dep., p. 55.
16 Castro Dep., p. 56.
Opposition Nos. 91188477
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that the scope of applicant’s goods encompasses all goods of
the nature and type described, that the goods move in all
channels of trade that would be normal for such goods, and
that the goods would be purchased by all potential
consumers. In re Elbam, 211 USPQ 639, 640 (TTAB 1981).
Accordingly, as a matter of law, applicant’s channels of
trade and classes of consumers encompass opposer’s channels
of trade and classes of consumers.
Notwithstanding the presumption that the channels of
trade and classes of consumers are the same, applicant’s
testimony confirms the identity of the channels of trade and
classes of consumers. Applicant testified that his
distributors or customers sell his clothing at “fight sport
related venues,”17 to a gym and to mixed martial arts
training centers,18 and through social networking sites.19
Applicant’s customers are “primarily fight sport mixed
martial art fans.”20 Applicant also sponsors fighters who
wear his clothing.21
In view of the foregoing, we find that the channels of
trade and classes of consumers are the same.

17 Cartwright Dep., p. 26. See also page 27.
18 Cartwright Dep., pp. 33-35.
19 Cartwright Dep., p. 37.
20 Cartwright Dep., p. 28.
21 Cartwright Dep., p. 28.
Opposition Nos. 91188477
10
C. The similarity of the marks in their entireties in
terms of appearance, sound, meaning, and connotation.

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. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are identical,
the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a
recognizable disparity between the goods and services.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate
One, Inc. v. Real Estate 100 Enterprises Corporation, 212
USPQ 957, 959 (TTAB 1981); ECI Division of E-Systems, Inc.
v. Environmental Communications Incorporated, 207 USPQ 443,
449 (TTAB 1980).
The marks are similar to the extent that they share the
term NEVERTAP, opposer’s entire mark. Because applicant’s
mark encompasses opposer’s entire arbitrary mark, consumers
are likely to mistakenly believe that the clothing
identified as 5 STAR FIGHTWEAR NEVERTAP is a derivation of
Opposition Nos. 91188477
11
NEVERTAP clothing. For example, consumers may perceive the
term “5 STAR” to engender the commercial impression of high
quality products and the term “fightwear” as descriptive of
the type of clothing. 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 and Sons,
Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s
mark BENGAL LANCER for club soda, quinine water and ginger
ale is 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 is 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 is likely to cause confusion with HEAD START for
men’s hair lotion and after-shaving lotion); Helga, Inc. v.
Helga Howie, Inc., 182 USPQ 629 (TTAB 1974) (applicant’s
mark HELGA HOWIE for clothing is likely to cause confusion
with opposer’s mark HELGA for clothing); In re Hepperle, 175
USPQ 512 (TTAB 1972) (applicant’s mark ACAPULCO GOLD for
suntan lotion is likely to cause confusion with ACAPULCO for
lipstick and powder).
Opposition Nos. 91188477
12
Furthermore, we find it likely that consumers will
abbreviate applicant’s mark 5 STAR FIGHTWEAR NEVERTAP to
NEVERTAP. “[U]sers of language have a universal habit of
shortening full names – from haste or laziness or just
economy of words. Examples are: automobile to auto;
telephone to phone; necktie to tie; gasoline service station
to gas station.” In re Abcor Development Corp., 588 F.2d
511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
[C]ompanies are frequently called by
shortened names, such as Penney’s for
J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially
changed its name to Sears alone), Ward’s
for Montgomery Ward’s, and Bloomies for
Bloomingdales.

Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321,
1333 (TTAB 1992).
In this regard, applicant testified that “[i]f a person
comes up to me and asks me if I’m the owner of Never Tap
clothing, I’d say yes.”22 Applicant also testified as
follows:
Q. Do you have a preference for saying
you’re the owner of Never Tap as
opposed to saying you’re the owner
of the Five Star Fightwear Never
Tap clothing line?

A. I would rather be approached as the
owner of Five Star Fightwear Never
Tap clothing line.

Q. But you’re not?

22 Cartwright Dep., p. 53.
Opposition Nos. 91188477
13
A. It varies, it depends on who [sic]
I’m talking about.23

* * *

Q. Then why are you holding yourself
out as the owner and founder of
Never Tap if that’s the way you
want to be approached?

A. I’m having a hard time answering
the question. I feel they’re both
linked together so people recognize
me as both. It’s [sic] some people
recognize me as the owner of Five
Star Fightwear, others recognize me
as the owner of Never Tap.24

* * *

Q. Is the promotion and advertising
that you do on the Facebook and
MySpace and YouTube spaces, is that
done as using the mark Never Tap or
is it done using Five Star
Fightwear or it done using Five
Star Fightwear Never Tap?

A. All three.

Q. So if we were on Facebook, MySpace
and YouTube we’d find promotion
under all three marks?

A. Yes, you should.

Q. I should or would?

A. You should, yes.25

Applicant argues that the marks are not similar because
applicant’s mark includes the term 5 STAR FIGHTWEAR and that
opposer “also seeks to avoid a word count comparison –

23 Cartwright Dep., p. 53.
24 Cartwright Dep., pp. 53-54.
25 Cartwright Dep., pp. 55-56.
Opposition Nos. 91188477
14
Applicant’s mark contains four-words while Opposer’s alleged
mark contains one-word.”26 However, in comparing the marks
the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impression so that confusion as to the source of
the goods and services offered under the respective marks is
likely to result. 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 unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than a specific impression of the marks. 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). As indicated above, mixed
martial arts enthusiasts, practitioners, and their friends
and families. Because the clothing items are sold at mixed
martial arts exhibitions as a souvenir of an event, it is
unlikely that consumers will focus on the differences
between the marks, but rather their similarities.

26 Applicants’ Brief, p. 11.
Opposition Nos. 91188477
15
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
D. Actual confusion.
Applicant testified to the following instances of
purported confusion.
Q. What efforts are being taken to
make sure that on the social
networking websites, namely
Facebook … MySpace, that the Five
Star Fightwear Never Tap is being
correctly written as opposed to
being incorrectly written as a
different mark? Do you understand
the question?

A. Well, we get people all the time
asking me about [opposer’s]
website, we address them to his
website.

Q. Oh, you do?

A. Yes.

Q. Why don’t you tell me about
inquiries about [opposer’s]
website?

A. Just people asking us if we’re
Never Tap.com. I say, “No, we’re
not, we’re Five Star – Never
Tap/Never Tap [sic].” And we
redirect them to Never Tap.com.

Q. How often does that happen?

A. I don’t run the site. I know it
happens maybe in the last couple
years maybe five to eight times.

Q. Per week, month, year?

Opposition Nos. 91188477
16
A. Probably eight times total in the
last couple years.27

* * *

Q. So explain to me how the inquiry -
- give me an example of an inquiry,
explain how you learn about it,
what’s being asked and what you’re
saying in response.

A. Basically asked if it was Never
Tap.com and we reply, “No, this is
Five Star/Never Tap.com.”28

* * *

Q. So knowing that [opposer] uses the
Never Tap mark on T-shirts, on
clothing, do you think there is a
potential for confusion that the
public might believe his Never Tap
T-shirts and your Never Tap T-
shirts are somehow related or from
the same source?

A. Yes, and it could go both ways.

Q. So you believe that confusion could
exist; correct?

A. Yes, yes.29

In a MySpace search for the word “Nevertap,” the first
entry is 5 STAR NEVERTAP FIGHTWEAR and the second entry is
opposer’s NEVERTAP site.30
This evidence does not show actual confusion between
applicant’s use of the mark 5 STAR FIGHTWEAR NEVERTAP for
clothing and opposer’s use of the mark NEVERTAP for clothing

27 Cartwright Dep., pp. 38-39.
28 Cartwright Dep., p. 40.
29 Cartwright Dep., p. 78.
30 Castro Dep., pp. 58-59 and Exhibit 16 (Doc. No. 00045).
Opposition Nos. 91188477
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because there is no evidence that applicant has ever used
the mark 5 STAR FIGHTWEAR NEVERTAP on clothing. Applicant
has used the term NEVERTAP across the front of t-shirts and
across other clothing in the same manner that opposer has
used NEVERTAP, but not 5 STAR FIGHTWEAR NEVERTAP. However,
Mr. Cartwright’s testimony regarding the confusion between
the domain name FIVE STAR NEVER TAP.com and NEVERTAP.com
indicates that 5 STAR FIGHTWEAR NEVERTAP is similar to
NEVERTAP.
F. Balancing the factors.
In view of the facts that the marks are similar and the
goods, channels of trade and classes of consumers are
identical, we find that applicant’s mark 5 STAR FIGHTWEAR
NEVERTAP for clothing is likely to cause confusion with
opposer’s mark NEVERTAP for clothing.
Decision: The opposition is sustained and
registration to applicant is refused.