D1 Sports Holdings, LLC and D1 Sports Parent, LLCv.D1 Bound Apparel, LLC

Trademark Trial and Appeal Board

Apr 13, 2017

No. 91217032 (T.T.A.B. Apr. 13, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: April 13, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

D1 Sports Holdings, LLC and D1 Sports Parent, LLC

v.

D1 Bound Apparel, LLC
_____

Opposition No. 91217032
_____

Shauna M. Wertheim and Timothy J. Murphy of The Marbury Law Group PLLC,
for D1 Sports Holdings, LLC and D1 Sports Parent, LLC.
J. Scott Humphrey of Humphrey + Law,
for D1 Bound Apparel, LLC.
_____

Before Bergsman, Wolfson and Hightower,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
D1 Bound Apparel, LLC (“Applicant”) seeks registration on the Principal Register
of the mark #D1BOUND (in standard characters) for “hats; hooded sweatshirts; polo
shirts; socks; sweatshirts; t-shirts,” in Class 25.1

1 Application Serial No. 86006694 was filed on July 10, 2013, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere on
February 1, 2012, and first use in commerce on June 1, 2012.
Opposition No. 91217032
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D1 Sports Holdings, LLC and D1 Sports Parent, LLC (“Opposers”) opposed the
registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark so resembles Opposers’ common law
mark D1 used in connection with apparel and clothing since at least as early as 2004
as to be likely to cause confusion.2
I. Evidentiary Issue
This case raises the issue of whether Opposers may introduce their own responses
to Applicant’s interrogatories and document requests in a proceeding utilizing an
Accelerated Case Resolution (“ACR”) procedure. The parties stipulated that the
opposition will proceed under the summary judgment model of ACR.3 See TBMP
§ 702.04(b) (Jan. 2017). Also, the parties stipulated that “[a]ll documents and things
produced in response to written discovery requests served in this proceeding during
discovery are authentic for purposes of admission into evidence.”4 The parties did not
stipulate that the parties were permitted to introduce their own responses to the
written discovery requests propounded by the other party. In this regard, Trademark
Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5), reads, in pertinent part, as follows:
Written disclosures, an answer to an interrogatory, or an
admission to a request for admission, may be submitted

2 Opposers also pleaded ownership of three registrations consisting of variations of the D1
mark for fitness related services. For the sake of economy, we confine our likelihood of
confusion analysis to Opposers’ common law use of the mark D1 for clothing because this
mark is the most similar to Applicant’s mark. If the opposition cannot be sustained on the
basis of Opposers’ common law mark, it could not be sustained on the basis of the marks in
Opposers’ pleaded registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
3 21 TTABVUE 2.
4 22 TTABVUE 2.
Opposition No. 91217032
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and made part of the record only by the receiving or
inquiring party.
Accordingly, answers to interrogatories may be introduced only by the party
propounding the interrogatories.
Document requests do not have a rule analogous to Trademark Rule 2.120(k)(5),
37 C.F.R. § 2.120(k)(5). The rules simply provide that “[a] party who has obtained
documents from another party through disclosure or under Rule 34 of the Federal
Rules of Civil Procedure may not make the documents of record by notice of reliance
alone” unless “the party has obtained an admission or stipulation from the producing
party that authenticates the documents.” Trademark Rule 2.120(k)(3)(ii), 37 C.F.R.
§ 2.120(k)(3)(ii). As noted above, the parties stipulated that documents produced in
response to written discovery requests are authentic for purposes of admissibility into
evidence.
As Exhibits 6 and 7 to Opposers’ trial brief, Opposers introduced Opposers’
response to Applicant’s first set of interrogatories5 and Opposers’ responses to
Applicant’s request for production of documents.6 Applicant, in its brief, did not object
to the admissibility of Opposers’ introduction of its own responses to Applicant’s
interrogatories pursuant to Trademark Rule 2.120(k)(5), nor did it object to the
introduction of Opposers’ responses to Applicant’s document requests.

5 30 TTABVUE 104.
6 30 TTABVUE 121-243.
Opposition No. 91217032
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Because one of the purposes of Accelerated Case Resolution is to facilitate the
introduction of evidence7 and because Applicant did not object to the introduction of
Opposers’ own responses to Applicant’s written discovery, we exercise our discretion
to consider Opposers’ responses to Applicant’s interrogatories and documents
produced in response to Applicant’s request for production of documents to have been
stipulated into the record. See Daniel J. Quirk Inc. v. Village Car Co., 120 USPQ2d
1146, 1151-52 (TTAB 2016) (petitioner’s own interrogatory answers were considered
stipulated into the record); Autac Inc. v. Viking Industries, Inc., 199 USPQ 367, 368
n.2 (TTAB 1978). We add that the evidence at issue is not case dispositive and had it
not been admitted our decision would be the same.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file.8
A. Opposers’ testimony and evidence.
1. Testimony declaration of William Bartholomew, founder and Chief
Executive Officer of Opposers, with attached exhibits;9

7 TBMP § 702.04(a) (“Other approaches to accelerating resolution of a case include
simplifying proceedings through the use of fact stipulations and stipulations regarding the
admissibility of certain evidence.”).
8 It was not necessary for Opposers to introduce a copy of Applicant’s application.
(29 TTABVUE 3).
9 30 TTABVUE 29.
Opposition No. 91217032
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2. Copies of Opposers’ pleaded registrations, listed below, printed from the
USPTO electronic data base showing the current status of and title to the
registrations;10
a. Registration No. 4051175 for the mark D1 and design, shown below, for
“management of wellness centers for others,” in Class 35, “sports
training,” in Class 41, and “physical therapy,” in Class 44;11

b. Registration No. 4051176 for the mark D1 (standard characters) for
“management of wellness centers for others,” in Class 35, and “physical
therapy,” in Class 44;12 and
c. Registration No. 2877559 for the mark D1 (typed drawing) for “sports
training in the fields of football, baseball, hockey, basketball and soccer,”
in Class 41;13

10 Opposers also introduced a copy of Registration No. 4943882 for the mark D1 and design
for “clothing, namely, shirts, shorts, pants, head bands, socks, polo shirts, tee shirts, long
sleeve tee shirts, sweatshirts and hoodies,” in Class 25. This registration issued on April 26,
2016, based on an application filed March 6, 2014. (30 TTABVUE 95). Because Opposers did
not plead ownership of the application for this mark in its Notice of Opposition, and Applicant
did not treat the registration as being of record during trial or in its brief, we do not give this
registration any consideration.
11 Registered November 8, 2011. (30 TTABVUE 61).
12 Registered November 8, 2011. (30 TTABVUE 72).
13 Registered August 24, 2004; renewed. (30 TTABVUE 83).
Opposition No. 91217032
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3. Opposers’ responses to Applicant’s first set of interrogatories;14
4. Opposers’ responses to Applicant’s request for production of documents;15
5. The search results summary page from a GOOGLE search for D1;16
6. Excerpts from the discovery deposition of Aaron Plunkett, Applicant’s
managing member;17
7. Four third-party registrations for two entities, inter alia, clothing and
fitness related services;18
8. Applicant’s responses to Opposers’ “special interrogatories”;19
9. Applicant’s responses to Opposers’ document requests;20
10. Applicant’s supplemental responses to Opposers’ document requests;21
11. An unidentifiable social message communication;22
12. A page from Applicant’s Twitter account;23 and
13. Testimony declaration of Kimberly Chase, one of Opposers’ employees.24

14 30 TTABVUE 104.
15 30 TTABVUE 121-243.
16 29 TTABVUE 2.
17 29 TTABVUE 13.
18 29 TTABVUE 31.
19 29 TTABVUE 35.
20 29 TTABVUE 78.
21 29 TTABVUE 86.
22 29 TTABVUE 92.
23 29 TTABVUE 93.
24 29 TTABVUE 94.
Opposition No. 91217032
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B. Applicant’s testimony and evidence.
Testimony declaration of Aaron Plunkett, Applicant’s managing member, with
attached exhibits.25
III. Standing
The parties stipulated that Opposers have standing.26 Moreover, because
Opposers’ pleaded registrations have been made of record, Opposers have established
their 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
William Bartholomew, Opposers’ founder and Chief Executive Officer, testified
that Opposers began using D1 in connection with apparel and clothing items at least
as early as May 31, 2002.27 Oral testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark proceeding. Daniel J. Quirk,
Inc. v. Village Car Co., 120 USPQ2d at 1151 (quoting Powermatics, Inc. v. Globe
Roofing Prods. Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965)). The testimony
of a single witness with personal knowledge of the facts may be sufficient to prove

25 38 TTABVUE 2.
26 21 TTABVUE 3.
27 Bartholomew Decl. ¶11 (30 TTABVUE 31). See also Opposers’ response to Applicant’s
interrogatory No. 3 (30 TTABVUE 107) (Opposers “first used the D1 Marks in conjunction
with clothing in May 2002.”) and No. 4 (30 TTABVUE 107) (“D1 Marks are used on or in
connection with: Clothing, namely, shirts, shorts, pants, head bands, socks, polo shirts, tee
shirts, long sleeve tee shirts, sweatshirts, hoodies, headwear, and footwear since at least as
early as May 31, 2002.”).
Opposition No. 91217032
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first use if it is clear, convincing, consistent, uncontradicted, and sufficiently
circumstantial to convince the Board of its probative value. See Bass Pro Trademarks,
LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008).
Applicant’s constructive first use date based on the filing date of its application is
July 10, 2013. Aaron Plunkett, Applicant’s managing member, testified that
Applicant first used its mark #D1BOUND on clothing in Spring 2012.28
On the basis of the Bartholomew testimony and Plunkett testimony, we find that
Opposers have established priority in the mark D1 for clothing. Mr. Bartholomew’s
testimony is based on personal knowledge, it is internally consistent, and it is not
contradicted. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108
(TTAB 2007).
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
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 du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,

28 Plunkett Discovery Dep., p. 110 (29 TTABVUE 20). See also Applicant’s response to
Opposers’ interrogatory No. 5 (29 TTABVUE 36-37) (“Logos were designed digitally and
shirts were produced and offered for sale in on [sic] around the spring of 2012.”).
Opposition No. 91217032
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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 services. See In re Chatam Int’l
Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
A. The similarity or dissimilarity and nature of the goods.

Applicant is seeking to register its mark #D1BOUND for “hats; hooded
sweatshirts; polo shirts; socks; sweatshirts; t-shirts.”
Opposers sell D1 branded shirts, shorts, pants, head bands, socks, polo shirts, tee
shirts, long sleeve tee shirts, sweatshirts, hoodies, footwear and headwear.29
Applicant admits that the goods are in part identical.
Opposer [sic] and Applicant are in different primary
businesses, but Applicant admits that both Opposer [sic]
and Applicant are selling t-shirts and other basic clothing
items that are similar in product line. Applicant clearly
sells some clothing that is completely different from
Opposer [sic], but for the sake of this matter, Applicant

29 Bartholomew Decl. ¶10 (30 TTABVUE 30). See also Opposers’ response to Applicant’s
request for production of documents No. 17 (30 TTABVUE 129, 180-182, 185-206, 208-243).
Opposition No. 91217032
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admits the products are in the same general category or
International Class.30
For the purposes of our likelihood of confusion analysis, we find that the goods are
identical.
B. Established, likely-to-continue channels of trade.

Applicant contends that the channels of trade are different.
Opposer [sic] ham-handedly attempts to argue that the
trade channels should both be presumed to be identical,
because both parties are selling t-shirts and sweats “on the
side” of their primary business. This argument is ludicrous,
and underlies the problem with their entire frivolous
opposition to the registration of Applicant’s Mark.
Opposer [sic] only sells through its [sic] own website, or
gym locations. Applicant only sells through its own
website, or at actual athletic tournaments. [Internal
citation omitted]. There is NO overlap whatsoever in terms
of actual trade channels. Neither party sells through big-
box or mass retailers, or even through local clothing
retailers. [Internal citation omitted]. In other words, the
only way to purchase Opposer’s [sic] clothing products,
other than through its [sic] gym locations, is through
www.d1sportstraining.com. The only way to purchase
Applicant’s clothing products, other than through the high
school tournaments they attend, is through
www.d1bound.com or www.collegelevelathletics.com.31
This contention is unavailing, as there is no limitation in Applicant’s description of
goods indicating any restrictions to its channels of trade. Because the scope of the
registration Applicant seeks is defined by its application (and not by the actual use
of its mark), it is the description of goods in the application (and not the actual use of

30 Applicant’s Brief, p. 5 (37 TTABVUE 6).
31 Applicant’s Brief, pp. 5-6 (37 TTABVUE 6-7).
Opposition No. 91217032
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Applicant’s mark) that we must look to in determining Applicant’s right to register.
See Octocom Syst. Inc. v. Houston Computers Svcs. 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.”).
As the Court of Customs and Patents Appeals, the predecessor to our primary
reviewing court, stated in Tuxedo Monopoly, Inc. v. General Mills Fund Group, Inc.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981):
Here, appellant seeks to register the word MONOPOLY as
its mark without any restrictions reflecting the facts in its
actual use which it argues on this appeal prevent likelihood
of confusion. We cannot take such facts into consideration
unless set forth in its application.
See also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
(“There is no specific limitation and nothing in the inherent nature of Squirtco's mark
or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks.
The Board, thus, improperly read limitations into the registration.”).
Because there are no limitations as to channels of trade or classes of purchasers
in Applicant’s description of goods, we must presume that Applicant’s goods move in
all channels of trade normal for those goods, and that they are available to all classes
of purchasers for those goods, “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.” Stone Lion Capital Partners,
Opposition No. 91217032
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LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014)
(quoting Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 16 USPQ2d at 1787).
Accordingly, we must presume Applicant’s goods move through the same channels
of trade as Opposers’ goods and that they are sold to the same classes of consumers.
In fact, the record indicates that the intended customers overlap. For example,
Applicant identified “aspiring college level athletes, and/or their parents, friends,
family, faculty, administration, coaches” as potential customers.32 Likewise,
Opposers identified “adults interested in athletic training, high school athletes
training to become college athletes, college athletes, and professional athletes” as
potential customers.33
We find that the goods move in at least some of the same channels of trade.
C. The strength of Opposers’ mark, including the number and nature of similar
marks in use on similar goods.

Applicant contends that D1 is a weak mark entitled only to a narrow scope of
protection or exclusivity of use, citing a USPTO electronic database search for the
mark D1 and the results from a search on the GOOGLE search engine for D1.34

32 Applicant’s response to Opposers’ interrogatory No. 15 (29 TTABVUE 40). See also
Plunkett Discovery Dep., p. 99 (29 TTABVUE 19) (target customers are “aspiring athletes”);
Plunkett Decl. ¶3 (38 TTABVUE 3) (“Applicant markets and sells T-shirts and other apparel
… to such aspiring athletes and their friends/families.”).
33 Opposers’ response to Applicant’s interrogatory No. 11 (30 TTABVUE 111). See also
Bartholomew Decl. ¶¶5 and 10 (30 TTABVUE 29-30) (Opposers provide “athletic-based
scholastic and adult training programs, professional coaching, and the latest sports therapy
techniques” at their facilities where they also sell D1 branded clothing).
34 Applicant’s Brief, pp. 7-8 (37 TTABVUE 8-9) citing Plunkett Testimony Decl. ¶¶14 and 15
and Exhibits D and E (38 TTABVUE 5, 14-18, and 20-27).
Opposition No. 91217032
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As the results of its USPTO electronic database search, Applicant introduced a
table listing the serial number, registration number, word mark, and “live/dead”
status. There are two problems with Applicant’s table of registrations that limit the
probative value of the search results. First, only 20 of the 119 registrations are active
or “live.” Cancelled or expired registrations have little, if any, evidentiary value.
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307,
1309 (Fed. Cir. 1989) (“a cancelled registration does not provide constructive notice
of anything”); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB
1987) (an expired or cancelled registration is evidence of nothing but the fact that it
once issued).
Second, the list does not include the goods or services for which the marks have
been registered. The relevance of the third-party registrations depends upon the
third-party registrations having been registered for similar or related goods or
services. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d
1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (“None of the third party marks and
uses of ACE made of record are nearly as closely related to the activities of the parties
as the virtually identical uses of the parties are to each other. Thus, we agree with
the Board that nothing in the record shows a narrowing of Editors’ identification with
A.C.E./ACE by third party marks with respect to the relevant public, namely, the film
industry or even the broader entertainment industry. In sum, Cable's argument that
it can use ACE because ACE is a ‘weak’ mark, as an abstract proposition, is not only
unpersuasive but essentially meaningless.”); Key Chem., Inc. v. Kelite Chem Corp.,
Opposition No. 91217032
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464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972) (“Nor is our conclusion altered by the
presence in the record of about 40 third-party registrations which embody the word
“KEY”. The great majority of those registered marks are for goods unrelated to those
in issue, and there is no evidence that they are in continued use. We, therefore, can
give them but little weight in the circumstances present here.”); SBS Products Inc. v.
Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988)
(“[E]ven if evidence of such third-party use were submitted, it would be of no aid to
respondent herein where the third-party usage was for goods unrelated to either
petitioner's skin care products or respondent's stuffing box sealant.”); Anderson,
Clayton & Co. v. Christie Food Products Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987)
(“The other third-party registrations relating to marks in unrelated fields are of no
probative value.”).
Applicant’s GOOGLE search results consist of the search summary. Search
summaries have limited probative value because they are in the nature of listings of
documents (i.e., the websites to which the summary links) rather than documents
themselves. See Edom Lab. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012);
Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1219 (TTAB
2011). To the extent that we can extract context and content from the search
summary, only one third-party uses D1 for services remotely similar to Opposers’
clothing (i.e., “D1.ticker: College Athletics News” for “athletics news in a daily
email.”).35 One third-party use for remotely similar services, without any evidence

35 38 TTABVUE 22.
Opposition No. 91217032
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regarding the extent to which that mark is used or the impact of such use, does not
dilute the strength of Opposers’ D1 mark.
On the other hand, D1 is an abbreviation for the term “Division 1 athletics.”
Q. So what does D1 mean?
A. D1 to anyone who is familiar with sports mean [sic]
Division 1.
Q. Division 1 what?
A. It means Division 1 athletics. Division 1, it means
Division 1.
Q. Of the NCAA?
A. Division 1 is the highest level in the NCAA. The
term D1 is forever entrenched within NCAA
sports.36
* * *
A. I said the term D1 has significance to all athletes.
All athletes associate D1 with Division 1.37
When applied to Opposers’ clothing products, the mark D1 suggests that the
clothing is for collegiate athletes. Accordingly, Opposers’ D1 mark is inherently
distinctive.

36 Plunkett Discovery Dep., p. 95 (29 TTABVUE 17). See also Applicant’s response to
Opposers’ interrogatory No. 2 (29 TTABVUE 36) (“NCAA Division 1 sports are the highest
point a student-athlete can reach.”); Plunkett Testimony Decl. ¶12 (38 TTABVUE 4
(“Applicant uses ‘D1’ as a specific intended reference to ‘division 1’ collegiate athletics, which
is the popular meaning of the term in the United States.”); Plunkett Testimony Decl. ¶14 (38
TTABVUE 5) (“Applicant has never been concerned with other companies using ‘D1’, because
the phrase generically is used to mean ‘division 1” athletics.”).
37 Plunkett Discovery Dep., p. 99 (29 TTABVUE 19).
Opposition No. 91217032
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D. The conditions under which and buyers to whom sales are made, i.e., ‘impulse’
vs. careful, sophisticated purchasing.

As noted above, Applicant identified “aspiring college level athletes, and/or their
parents, friends, family, faculty, administration, coaches” as potential customers,38
and Opposers, likewise, identified “high school athletes training to become college
athletes, college athletes,” as potential customers.39 Moreover, both parties sell their
clothing products in connection with their core business.
2. … Applicant focuses on producing and/or promoting
“highlight videos” which are used by high school athletes
to pique the interest of college athletic recruiters.
3. In conjunction with its primary business, Applicant
markets and sells T-shirts and other apparel (the clothing
to such aspiring athletes and their friends/family, bearing
Applicant’s Mark.40
Likewise, Opposers offer sports training and physical therapy services and, in each
of their “state-of-the-art facilities … offer[] athletic clothing for sale.”41
Under such circumstances, the sale of the parties’ clothing, in part, as collateral
merchandising products, such as t-shirts, indicates that they may be purchased on
impulse. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at
1163-64 (recognizing Board precedent requiring consideration of the “least
sophisticated consumer in the class”). Accordingly, we disagree with Applicant’s
contention that because the clothing products of the parties are collateral

38 Applicant’s response to Opposers’ interrogatory No. 15 (29 TTABVUE 40).
39 Opposers’ response to Applicant’s interrogatory No. 11 (30 TTABVUE 111).
40 Plunkett Testimony Decl. ¶¶3 and 4 (38 TTABVUE 2-3).
41 Bartholomew Testimony Decl. ¶¶5-10 (30 TTABVUE 29-30).
Opposition No. 91217032
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merchandising products ipso facto consumers are aware of the source of the clothing.
In this regard, we note again that there are no limitations as to channels of trade in
Applicant’s description of goods which restricts the sale of Applicant’s clothing to
Applicant’s video business. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764
(TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating
purchasers must be disregarded given the absence of any such restrictions in the
application or registration).
E. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567.
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. Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012);
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d
1323, 1325 (TTAB 2007).
“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
Opposition No. 91217032
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between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1905 (TTAB 2007); 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 Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). As discussed above, the average customer may
include “aspiring high school athletes,” their friends and family, who are ordinary
consumers.
The marks D1 and #D1BOUND are similar in that they share the term “D1.” They
differ because Applicant surrounded the term “D1” with the symbol # and the word
“Bound.” Because Applicant’s mark is in standard characters, it is not limited to any
particular display. The rights associated with a mark in standard characters reside
in the wording, and not in any particular display. Thus, Applicant is entitled to all
depictions of its standard character mark regardless of the font style, size, or color;
Applicant’s mark could at any time in the future be displayed in a manner similar to
any of Registrants’ marks, that is, the word(s) displayed in the same font style and
size. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012);
Opposition No. 91217032
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Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 216 USPQ at 939 (rejecting argument
that for purposes of determining whether two marks are similar, a mark in a typed
drawing (equivalent to modern standard character format) is distinct from such mark
in a logo format; “[b]y presenting its mark in a typed drawing, a difference cannot
legally be asserted by that party” (emphasis in original)); In re RSI Systems, LLC, 88
USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
2015 (TTAB 1988).
Applicant has displayed its mark as shown below:42

Opposers have displayed their mark as shown below:43

The marks are similar in appearance because, as a standard character mark,
Applicant displays the term D1 as the most prominent portion of its mark as shown
above. Moreover, because Applicant is seeking to register #D1BOUND in standard

42 Plunkett Testimony Decl. ¶6, Exhibit B (38 TTABVUE 3 and 10).
43 Opposers’ response to Applicant’s request for production of documents No. 17
(30 TTABVUE 203).
Opposition No. 91217032
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character form, Applicant may display its mark in the same font and size as the letter-
number combination “D1” in Opposers’ mark.
The marks are also similar in sound as the hashtag symbol may merge into the
rest of the mark causing consumers to omit it when calling for the products. It is
impossible to predict how the public will pronounce a particular mark. See
Embarcadero Tech. Inc. v. RStudio Inc., 105 USPQ2d 1825, 1835 (TTAB 2013)
(quoting In re Viterra Inc., 101 USPQ2d at 1912) (“there is no correct pronunciation
of a trademark”); Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1701
(TTAB 2006) (there “is no correct pronunciation of a trademark, and obviously it is
not possible for a trademark owner to control how purchasers will vocalize its mark”).
Furthermore, consumers have a tendency to shorten marks. Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983)
(“Although the record does not indicate that applicant's business is commonly
referred to as “Giant”, it does indicate that people have called it by that name,
omitting the word “Hamburgers”. Thus, in a conversation between two consumers in
opposer's area about a place of business called “Giant”, there likely would be
confusion about which “Giant” they were talking about.”); Marshall Field & Co. v.
Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992); Big M Inc. v. United States
Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore the propensity of
consumers to often shorten trademarks and, in the present case, this would be
accomplished by dropping the “T.H.” in referring to registrant's stores [T.H.
MANDY].”). Thus, #D1BOUND may be shortened to D1BOUND or D1.
Opposition No. 91217032
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Because the term D1 means “division 1 athletics,” both marks engender similar
commercial impressions suggesting that the clothing is appropriate for college
athletes: that is, Opposers’ mark D1 suggests Division 1 athletic clothing and
Applicant’s mark #D1BOUND suggests clothing for a Division 1 bound athlete.
Applicant argues that the hashtag (#) is an important element of its mark because
it is “directly related/referential to the social networking-type of business that forms
Applicant’s primary business.”44 However, the hashtag symbol (#) at the beginning of
Applicant’s mark has little, or no, trademark significance because a hashtag is an
icon used in social media to identify, organize or categorize content.45 See TMEP §
1202.18 (Jan. 2017) (citing Dictionary.com, search of “hashtag,” (June 19, 2013)
(citing Random House Dictionary)).
Generally, the hash symbol and the wording HASHTAG do
not provide any source-indicating function because they
merely facilitate categorization and searching within
online social media (i.e., social-media participants are
directed to search a particular subject by typing, e.g.,
“hashtag ABC,” where ABC is the subject).
TMEP § 1202.18. As such, the hashtag at the beginning of Applicant’s mark is used
to facilitate social media users finding Applicant’s trademark.
A. We have always branded our shirts.
Q. And you have branded it as what?
A. D1 Bound.
Q. Hashtag D1BOUND?

44 Applicant’s Brief, p. 4 (37 TTABVUE 5).
45 Plunkett Discovery Dep., p. 90 (29 TTABVUE 16) (“you look up hashtags immediately
through the social media services that use hashtags which are Twitter and Instagram.”)
Opposition No. 91217032
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A. Correct. That is the only thing that is significant to
our clothing is D1 Bound.46
The hashtag in Applicant’s mark #D1BOUND is a symbol that Applicant uses to point
attention to the D1BOUND portion of its mark.
Applicant also asserts that “Bound” is a dominant part of Applicant’s mark.
[T]he “bound” portion of Applicant’s mark is the very
portion what [sic] makes the mark important and
attractive to Applicant’s customers; “D1” in and of itself is
not the point – the point is that Applicant’s customers are
striving to play collegiate athletics – in other words, they
are or want to be “D1 Bound.” … Simply put … the “Bound”
portion of Applicant’s mark is a strong, distinctive, and
vital part of the mark as used.47
However, as noted above, when looking at Applicant’s mark in its entirety,
#D1BOUND engenders the commercial impression that the person wearing the
clothing is heading for a Division 1 college and, thus, highlights the importance of the
term D1, which is the entirety of Opposers’ mark.
While there is no per se rule that the marks are similar where the applicant’s mark
contains in part the entirety of an opposer’s mark, under the circumstances in this
case, the fact that Opposers’ mark D1 is subsumed by Applicant’s mark #D1BOUND
increases the similarity between the two. See, e.g., Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT
and surfer design for men’s cologne, hair spray, conditioner and shampoo is likely to
cause confusion with the mark CONCEPT for cold permanent wave lotion and

46 Plunkett Discovery Dep., p. 110 (29 TTABVUE 20).
47 Applicant’s Brief, p. 4 (37 TTABVUE 5).
Opposition No. 91217032
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neutralizer); 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); S. Gumpert Co. v. ITT Continental Baking Co., 191 USPQ 409 (TTAB
1976) (FLAV-O-BAKE for seasoned coating mix is likely to cause confusion with
FLAVO for cake icing flavoring products).
We find that Applicant’s mark #D1BOUND is similar to Opposers’ mark D1 in
appearance, sound, connotation and commercial impression.
F. Balancing the factors.
Because the marks are similar, the goods are identical and the goods move in some
of the same channels of trade, we find that Applicant’s mark #D1BOUND for “hats;
hooded sweatshirts; polo shirts; socks; sweatshirts; t-shirts” is likely to cause
confusion with Opposers’ mark D1 for apparel and clothing.
Decision: The opposition is sustained and registration of Applicant’s mark
#D1BOUND is refused.