Derek A. Lopezv.Ted Wong JKD, LLC

Trademark Trial and Appeal Board

Apr 23, 2019

OPP (T.T.A.B. Apr. 23, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: April 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Derek A. Lopez
v.
Ted Wong JKD, LLC
_____

Opposition Nos. 91216538
91216605
912166721
_____

Jon M. Gibbs of Lowndes Drosdick Doster Kantor & Reed, PA
for Derek A. Lopez
Theodore J. Minch of Sovich Minch LLP
for Ted Wong JKD, LLC.
_____

Before Goodman, Heasley, and Lynch,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Ted Wong JKD, LLC (“Applicant”) has filed three applications to register the

1 On August 3, 2017 the Board ordered these three opposition proceedings consolidated, and
designated Opposition No. 91216538 as the “parent” case. 21 TTABVUE. References to the
briefs, motions and orders on appeal are to the Board’s TTABVUE docket system in that
proceeding.
Opposition Nos. 91216538, 91216605, and 91216672
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composite mark (with “JEET KUNE DO” disclaimed) on the Principal
Register for the following goods and services, respectively:
Licensing of intellectual property; Licensing of Lessons in
Martial Arts in International Class 45;2
Training services in the field of Martial Arts in
International Class 41;3 and
Clothing for athletic use, namely, padded elbow
compression sleeves being part of an athletic garment;
Clothing for athletic use, namely, padded pants; Clothing
for athletic use, namely, padded shirts; Clothing for
athletic use, namely, padded shorts; Clothing for wear in
judo practices; Clothing for wear in wrestling games;
Clothing, namely, athletic sleeves; Clothing, namely,
khakis; Headbands for clothing; Jackets; Jerseys; Leather
belts; Perspiration absorbent underwear clothing; Short
sets; Ties; Tops in International Class 25.4
Derek A. Lopez (“Opposer”) has opposed all three applications on the ground of

2 Application Serial No. 85310186 was filed on May 2, 2011 based on Applicant’s claim of first
use anywhere and use in commerce since at least as early as January 1, 2011. The non-Latin
characters in the mark transliterate to “Wong Kam Ming Jeet Kune Do” and this means “Ted
Wong The Way of the Intercepting Fist” in English. The English translation of “JEET KUNE
DO” in the mark is “The way of the intercepting fist”. The description of the mark reads: “The
color(s) red, gold, black and white is/are claimed as a feature of the mark. The mark consists
of the words ‘TED WONG’ above a square and ‘JEET KUNE DO’ in black letters below the
square design with Chinese characters in black inside the square along with a yin and yang
design with arrows on each side in the middle of the square where the yin and yang and
arrows are in a gold and red outlined in black all on a white background….” The translations
and description of the mark are the same in the other two applications.

3 Application Serial No. 85310210 was filed on May 2, 2011 based on Applicant’s claim of first
use anywhere and use in commerce since at least as early as January 1, 2011.
4 Application Serial No. 85310234 was filed on May 2, 2011 based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act. 15 U.S.C. § 1051(b).
Opposition Nos. 91216538, 91216605, and 91216672
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likelihood of confusion with his common law mark:
5
In its Answer, Applicant admits that the mark in paragraph 1 of the notice of
opposition is identical to its applied-for mark,6 but denies that Opposer owns the
mark, and denies all other salient allegations in the notice of opposition. Applicant
also interposed fourteen putative affirmative defenses, which are deemed waived, as
it has submitted no brief. TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1100-
01 (TTAB 2018).
I. The Record

The record consists of the pleadings, Applicant’s application files,7 and Opposer’s
testimonial declaration, with exhibits.8 Applicant has not introduced any evidence,

5 Notice of Opposition, 1 TTABVUE. The notice of opposition erroneously cites Section 43(a)
of the Lanham Act, 15 U.S.C. § 1125. Notice of Opposition ¶ 10, 1 TTABVUE 4. The Board
does not entertain claims for unfair competition under Section 43(a); it only determines the
registrability of marks. Andersen Corp. v. Therm-O-Shield Int’l, Inc., 226 USPQ 431, 432 n.5
(TTAB 1985) (Board may not entertain any claim based on § 43(a) of the Trademark Act).
The notice of opposition also erroneously cites “15 U.S.C. § 1025(a).” Notice of Opposition ¶
10, 1 TTABVUE 4. Nonetheless, it claims that “Applicant’s mark so resembles Opposer’s
Mark, previously used in the United States and not abandoned, as to be likely, when used on
or in connection with Applicant’s Services, to cause confusion, or to cause mistake, or to
deceive, and is therefore unregistrable,” which sufficiently states a ground for opposition
under 15 U.S.C. §§ 1052(d), on which Opposer relies in his brief. See Opposer’s brief, 25
TTABVUE 16. The notice of opposition also claims that Opposer owns copyright in the mark,
and that Applicant abandoned the applied-for mark through naked licensing of third parties.
Notice of opposition ¶¶ 13-15, 1 TTABVUE 4. We shall address these claims infra.
6 Answer ¶ 10, 4 TTABVUE 3.
7 Trademark Rule 2.122(b), 37 CFR § 2.122(b).
8 24 TTABVUE.
Opposition Nos. 91216538, 91216605, and 91216672
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nor has it filed a brief.
II. Standing and Priority

“Any person who believes that he would be damaged by the registration of a mark
upon the principal register…may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the grounds therefor….” 15
U.S.C. § 1063. In order to meet the standing requirement under the statute, an
opposer need only show that he has a real interest, i.e., a personal stake, in the
outcome of the proceeding and a reasonable basis for his belief that he will be
damaged. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014) cert. denied, 135 S. Ct. 1401 (2015); Ritchie v.
Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025-28 (Fed. Cir. 1999).
In this case, Opposer testifies by declaration that he maintains an informational
and educational website displaying the subject composite mark, as well as another
very similar mark, and that Applicant’s applied-for mark is confusingly similar, if not
identical, thereto.9 This testimony shows a personal stake in the outcome of the
proceeding and a reasonable basis for Opposer’s belief that he will be damaged. See
Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner
has established his common-law rights in the mark ..., and has thereby established
his standing to bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1118 (TTAB 2009) (in opposition proceeding under Section 2(d),
testimony that opposer uses its mark “is sufficient to support opposer’s allegations of

9 Lopez decl. ¶¶ 10-15, 20, 27, 34, 49, 24 TTABVUE 6-8.
Opposition Nos. 91216538, 91216605, and 91216672
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a reasonable belief that it would be damaged by registration of applicant’s mark.”).
He thus has standing to maintain this proceeding.
“In an opposition founded on section 2(d), the opposer must establish its own prior
proprietary rights in the same or a confusingly similar designation in order to defeat
the application.” T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881
(Fed. Cir. 1996). Section 2(d) challenges may be based either on ownership of a
registered mark or prior use of an identical or similar mark. Wonderbread 5 v. Gilles,
115 USPQ2d 1296, 1302. n8 (TTAB 2015); see also Herbko Int’l., Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) cited in Hunter Indus.,
Inc. v. The Toro Co., 110 USPQ2d 1651, 1658 (TTAB 2014). Here, because Opposer
has not pleaded or submitted any registrations, he must rely on his asserted common
law rights, which must precede Applicant’s actual or constructive use of its mark.
WeaponXPerformance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034,
1040-41 (TTAB 2018).
Because Applicant has not introduced any evidence of actual use of its applied-for
mark, it cannot rely upon the dates of first use alleged in its two use-based
Applications. Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2) (“The allegation in
an application for registration, or in a registration, of a date of use is not evidence on
behalf of the applicant or registrant; a date of use of a mark must be established by
competent evidence.”) quoted in Central Garden & Pet Co. v. Doskocil Mfg. Co., Inc.,
108 USPQ2d 1134, 1139 (TTAB 2013). The earliest date on which Applicant may rely
for priority purposes is its filing date of May 2, 2011, which is its constructive use
Opposition Nos. 91216538, 91216605, and 91216672
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date. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 (TTAB 2015); see
also Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544
(TTAB 1991) (“[T]here can be no doubt but that the right to rely upon the constructive
use date comes into existence with the filing of the intent-to-use application and that
an intent-to-use applicant can rely upon this date in an opposition brought by a third
party asserting common law rights”).
It is thus Opposer’s burden to demonstrate that he owns a mark that he used prior
to Applicant’s May 2, 2011 constructive use date. Exec. Coach Builders, Inc. v. SPV
Coach Co., 123 USPQ2d 1175, 1180 (TTAB 2017) (citing Otto Roth & Co., Inc. v. Univ.
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981)). “That is, opposer must
prove by a preponderance of the evidence that [his] common law rights were acquired
before any date upon which applicant may rely.” Embarcadero Techs., Inc. v. RStudio,
Inc., 105 USPQ2d 1825, 1834 (TTAB 2013) (citing Hydro-Dynamics Inc. v. George
Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) (The
“decision as to priority is made in accordance with the preponderance of the
evidence”)).
The testimony of a single witness with personal knowledge of the facts may be
sufficient to prove 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). In this case, Opposer is that witness. He testifies in pertinent part that:
2. I make this Testimony Affidavit in support of United States Trademark
Opposition Nos.: 91216672, 91216605, and 91216538 opposing the
Opposition Nos. 91216538, 91216605, and 91216672
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registrations of United States Trademark Applications Serial Nos.: 85/310,186;
85/310,210; and 85/310,234, each consisting of the following logo (“TWJKD
Logo”):

10. I am also the author and owner of the original content of the website
associated with the TWJKD Domain Name located at
http://www.twjkd.com (“TWJKD Website”); I make no claim to the linked
articles authored by others.

11. The TWJKD Website, intended to perpetuate and pay tribute to the
Jeet Kune Do teachings of Ted Wong as taught to him by Bruce Lee, was
authorized by Ted Wong, himself.

12. Jeet Kune Do is a style of martial arts founded and made popular by
the late Bruce Lee.

13. The TWJKD Website comprises educational information relating to Ted
Wong and Jeet Kune Do as well [as] information regarding Jeet Kune Do
training and instruction. …

14. I have never transferred the registration of the TWJKD Domain Name
or the ownership of the original content of the TWJKD Website created by
me to any other person or entity.

15. I published TWJKD Website at least as early as February 2009 and it
has always comprised the following logo (“Sifu Ted Wong Logo”)10, also
created by me:

10 “Sifu,” a Chinese term, is the equivalent of the Japanese “Sensei,” an honorific for a skilled
master or teacher of martial arts. Definitions.net, 4/12/2019. The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format. In
re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118
USPQ2d 1632 (Fed. Cir. 2016).
Opposition Nos. 91216538, 91216605, and 91216672
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19. The first image in each of Composite Exhibits A and B show the Sifu
Ted Wong Logo that I created contemporaneously with the TWJKD Logo.

20. The Sifu Ted Wong Logo and the TWJKD Logo are substantially similar
as they contain many common elements.

26. My use and ownership of the TWJKD Logo and Sifu Ted Wong Logo
pre-dates the January 1, 2011 date of first use claimed by Applicant in the
‘186 Application.

27. I believe that [I] will be damaged by registration of the ‘186 Application
because such registration would give Applicant ownership of, and exclusive
rights to use, a mark that is confusingly similar to the Sifu Ted Wong Logo
and identical to the TWJKD Logo for services which are related to mine
inasmuch as they are contained in, and related to, the content of the
Opposition Nos. 91216538, 91216605, and 91216672
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TWJKD Website, in derogation of my invaluable property rights in the Sifu
Ted Wong Logo and TWJKD Logo.

33. My use and ownership of the TWJKD Logo and Sifu Ted Wong Logo
pre-date the January 1, 2011 date of first use claimed by Applicant in the
‘210 Application.

34. I believe [I] that will be damaged by registration of the ‘210 Application
because such registration would give Applicant ownership of, and the
exclusive rights to use, a mark that is confusingly similar to the Sifu Ted
Wong Logo and identical to the TWJKD Logo for services which are related
to mine inasmuch as they are contained in, and related to, the content of
the TWJKD Website, in derogation of my invaluable property rights in the
Sifu Ted Wong Logo and TWJKD Logo.

48. My use and ownership of the TWJKD Logo and Sifu Ted Wong Logo
pre-date the May 2, 2011 filing date for the ‘234 Application.

49. I believe that [I] will be damaged by registration of the ‘234 Application
because such registration would give Applicant ownership of and the right
to use, a mark that is confusingly similar to the Sifu Ted Wong Logo and
identical to the TWJKD Logo for goods which are related to mine inasmuch
as they are contained in, and related to, the content of the TWJKD Website
and goods that I have had manufactured and sold with the express consent
of Ted Wong, in derogation of my invaluable property rights in the Sifu Ted
Wong Logo and TWJKD Logo.11

On the basis of his testimony, we find that Opposer has established priority.
Opposer’s testimony is based on personal knowledge, is internally consistent, and is
corroborated by documentary evidence. See Kohler Co. v. Baldwin Hardware Corp.,
82 USPQ2d 1100, 1108 (TTAB 2007). Although Opposer’s registration of the
TWJKD.com domain name did not constitute use of a mark, see Stawski v. Lawson,

11 Lopez decl. ¶¶ 10-15, 26, 33, 48, ex. A, 24 TTABVUE 6-7, 11, 12.
Opposition Nos. 91216538, 91216605, and 91216672
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129 USPQ2d 1036, 1045 (TTAB 2018), his maintenance of an informational or
educational website displaying his mark does constitute the rendition of a service in
commerce. See, e.g., Am. Lebanese Syrian Associated Charities, Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1027-28 (TTAB 2011) (“In addition, opposer’s
CURE4KIDS website offers educational content….”); United Glob. Media Grp., Inc.
v. Tseng, 112 USPQ2d 1039, 1043 (TTAB 2014) (registration for inter alia “providing
audio-visual information in the fields of beauty care and health, online via a global
computer network….”); Nat’l Pork Bd. & Nat’l Pork Producers Council v. Co., 96
USPQ2d 1479, 1482 n. 4 (TTAB 2010) (registration for inter alia “providing an
Internet website featuring food preparation/cooking information regarding pork and
accompanying recipes”); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §
1402.11(a)(ii) (Oct. 2018) (“The service of providing information via the Internet is
classified in the class of the service-related subject matter of the information. Entities
that provide these services by computer are considered to be ‘content providers,’ that
is, they provide the informational or substantive content of a website and/or home
page.”). Opposer’s testimony of prior use is uncontradicted by Applicant. See Quirk v.
Village Car, 120 USPQ2d 1146, 1150 n. 20 (TTAB 2016) (petitioner introduced no
evidence to cast doubt on accuracy of respondent’s evidence of prior use).
Consequently, Opposer has established his standing and priority.
III. Applicable Law

“Once standing is established, in order to state a claim, an opposer must base its
ground of opposition on a statutory claim found in the Lanham Act.” Enter. Rent-A-
Opposition Nos. 91216538, 91216605, and 91216672
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Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1820 (Fed.
Cir. 2003). Before addressing Opposer’s claim under Section 2(d), we address three
other putative claims he has raised.
In his notice of opposition, as well as his testimonial declaration, Opposer avers
that he is the owner of his claimed logo under the Copyright Act, 17 U.S.C. § 101 et
seq.12 An allegation of copyright infringement, standing alone, is not a statutory claim
found in the Lanham Act. The Board has no jurisdiction to determine copyright
infringement, as that authority is reposed in the federal courts. Carano v. Vina
Concha y Toro S.A., 67 USPQ2d 1149, 1151 (TTAB 2003) (citing Selva & Sons, Inc. v.
Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983) and Knickerbocker
Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417 (CCPA 1972)). These
averments thus fail to state a ground for opposition under the Lanham Act.
In his brief, Opposer claims that Applicant committed fraud on the USPTO in two
ways. First, according to Opposer, Applicant falsely declared in all three applications
that “to the best of his/her knowledge and belief no other person, firm, corporation, or
association has the right to use the mark in commerce, either in the identical form
thereof or in such near resemblance thereto as to be likely, when used on or in
connection with the goods/services of such other person, to cause confusion, or to
cause mistake, or to deceive” even though Applicant was well aware of Opposer’s
ownership and prior use of the TWJKD Logo and Sifu Ted Wong Logo. Second,
Opposer claims Applicant submitted as its specimens of use screen captures that were

12 Notice of opposition ¶ 4, 1 TTABVUE 4; Lopez decl. ¶¶ 5-7, 24 TTABVUE 5.
Opposition Nos. 91216538, 91216605, and 91216672
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taken from Opposer’s website.13 Opposer’s testimonial declaration describes these
claimed transgressions in greater detail.14
It is well-settled, however, that a plaintiff may not rely upon an unpleaded claim.
See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 314 (2018) and authorities cited therein. Because Opposer did not plead fraud as a
ground for opposition, we do not consider this claim. Syngenta Crop Protection v. Bio-
Chek, 90 USPQ2d at 1115 n.3. Nor do we regard this claim as tried by implied consent
under Fed. R. Civ. P. 15(a)(2). Implied consent to the trial of an unpleaded issue can
be found only where the nonoffering party (1) raised no objection to the introduction
of evidence on the issue, and (2) was fairly apprised that the evidence was being
offered in support of the issue. Fairness considerations are paramount in assessing
whether an issue has been tried by implied consent ― there must be an absence of
doubt that the non-offering party is aware that the issue is being tried. Productos
Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927
(TTAB 2011), aff’d, Civ. No. 11-1623 (D.D.C. Mar. 30, 2017); see TBMP § 507.03(b).
Here, Opposer did not move to amend his notice of opposition to plead fraud, and gave
no indication that this evidence would be used in support of a fraud claim until he
submitted his brief. For these reasons, we do not address the unpleaded fraud claim.
Opposer also alleges in the notice of opposition that “the naked licenses granted
by Applicant to third-parties resulted in the abandonment of any rights that

13 Opposer’s brief, 25 TTABVUE 24-27.
14 Lopez decl. ¶¶ 22-25, 29-32, 37-47, 24 TTABVUE 7-8.
Opposition Nos. 91216538, 91216605, and 91216672
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Applicant may have established in Opposer’s Mark.”15 Abandonment of a mark via
naked licensing is a viable ground for opposition in some cases. 15 U.S.C. § 1127;
Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1864 (TTAB
2007). However, “[w]hether, in fact, sufficient control is exercised is a question of fact
in each case and the burden of proving lack of control or insufficient control is in the
party claiming the abandonment.” Nestle Co. v. Nash-Finch Co., 4 USPQ2d 1085,
1089 (TTAB 1987). In his declaration, Opposer asserts in pertinent part that “I have
learned that Ted Wong and Applicant have granted use of the TWJKD Logo and Sifu
Ted Wong Logo to third parties without restriction and without any quality control
requirements” and “I believe that Applicant’s grant of usage of the TWJKD Logo and
Sifu Ted Wong Logo without restriction amounts to a naked license of both logos.”16
Opposer’s conclusory assertions―which fail to provide the source of his information,
or the number and identity of the third parties, much less the extent, duration, and
nature of their alleged use of the subject logos―fail to establish a prima facie case of
abandonment. See West Fla. Seafood Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1666 (Fed. Cir. 1994) (“The party asserting abandonment bears at a
minimum a burden of coming forth with some evidence of abandonment.”). This claim
is therefore dismissed.
We turn our attention, then, to Opposer’s sole remaining ground for opposition,
likelihood of confusion. We base our determination of likelihood of confusion under

15 Notice of opposition ¶ 13, 1 TTABVUE 4.
16 Lopez decl. ¶¶ 51-52, 24 TTABVUE 9.
Opposition Nos. 91216538, 91216605, and 91216672
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Section 2(d) on an analysis of all of the probative facts in evidence that are relevant
to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Ind.,
Inc., 575 U.S. __, 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). In the
course of applying the DuPont factors, we bear in mind the fundamental purposes
underlying Section 2(d), which are to prevent confusion as to sources and
relationships, and to protect mark owners from damage caused by registration of
confusingly similar marks. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34
USPQ2d 1161, 1163 (1995); Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189,
224 USPQ 327, 331 (1985); DuPont, 177 USPQ at 566. We have considered each
DuPont factor that is relevant, and have treated any other factors as neutral. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). Varying weights may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the
various evidentiary factors may play more or less weighty roles in any particular
determination”). Two key considerations are the similarities between the marks and
the relatedness of the goods and services. See Federated Foods, Inc. v. Fort Howard
Opposition Nos. 91216538, 91216605, and 91216672
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Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); Primrose Ret. Cmtys., LLC
v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016).
A. The Parties’ Marks.
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Opposer’s marks as compared in their entireties, taking into account
their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ
at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
Opposer avers in his testimonial declaration that Applicant’s applied-for mark is
identical to his TWJKD Logo, and substantially similar to his Sifu Ted Wong Logo.17
Applicant admits that the mark depicted in paragraph 1 of the notice of opposition
[the TWJKD Logo] is identical to its applied-for mark.18 And Applicant does not
controvert the averments in Opposer’s declaration. Based on our review of the
evidence, we find that the applied-for marks are identical to Opposer’s TWJKD Logo
and substantially similar to Opposer’s Sifu Ted Wong Logo, which differs only in its
addition of small blue Chinese characters encircling the curved arrows surrounding
the yin-yang symbol.

17 Lopez decl. ¶¶ 2, 15, 26, 27, 34, 49, 24 TTABVUE 5-9.
18 Answer ¶ 10, 4 TTABVUE 3.
Opposition Nos. 91216538, 91216605, and 91216672
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Consequently, the first DuPont factor weighs heavily against Applicant. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984) (“This factor weighs heavily against applicant, as the two word marks are
identical….”).
B. The Parties’ Goods and Services

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” DuPont, 177
USPQ at 567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1159. “This factor
considers whether ‘the consuming public may perceive [the respective goods and
services of the parties] as related enough to cause confusion about the source or origin
of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)).
The issue is not whether purchasers would confuse the parties’ goods and services,
but rather whether there is a likelihood of confusion as to the source of these goods
and services. In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB
2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB
1989). The parties’ goods and services do not need to be identical or even competitive
to find a likelihood of confusion. Rather, it is sufficient that the goods and services
are related in some manner such that a reasonably prudent consumer would believe
that they were from the same source, or are affiliated with, connected with, or
sponsored by the same trademark owner. In re Save Venice New York, Inc., 259 F.3d
Opposition Nos. 91216538, 91216605, and 91216672
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1346, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001). “[I]t is sufficient for finding a likelihood
of confusion if relatedness is established for any item encompassed by the
identification of goods [or services] within a particular class in the application.” In re
Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see also Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
In this case, the relationship between the parties’ services is fairly apparent.
Opposer’s website provides educational information relating to Ted Wong and Jeet
Kune Do martial arts training and instruction.19 Applicant’s identified services
comprise licensing of lessons and training in martial arts, offered under the same or
highly similar TED WONG JEET KUNE DO composite mark. Where, as here, the
parties’ marks are identical or highly similar, even less relatedness between the goods
and services will suffice to support a finding of likelihood of confusion. In re Shell Oil,
26 USPQ2d at 1689 (“even when the goods or services are not competitive or
intrinsically related, the use of identical marks can lead to the assumption that there
is a common source”). It is only necessary that there be a “viable relationship”
between the goods and services to support a finding of likelihood of confusion. L’Oreal
v. Marcon, 102 USPQ2d at 1439. There is clearly a viable relationship between the
parties’ services, both of which involve martial arts education.
A natural offshoot of martial arts training and education is Applicant’s athletic
apparel. It is well recognized that confusion in trade is likely to occur from the use of
the same or similar marks for goods on the one hand and for services related to those

19 Opposer’s brief, 25 TTABVUE 11, Lopez decl. ¶ 13.
Opposition Nos. 91216538, 91216605, and 91216672
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goods on the other. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018); Wet Seal Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1639-40
(TTAB 2007) (likelihood of confusion may result from the use by different parties of
the same or similar marks in connection with goods, on the one hand, and services
related to those goods, on the other). Customers familiar with martial arts education
services offered under Opposer’s mark would be likely to believe that athletic clothing
offered under the same or highly similar mark is simply a line extension that is
affiliated with, connected with, or sponsored by the same trademark owner. See Save
Venice New York, 59 USPQ2d at 1784. Indeed, Opposer avers that he has made
arrangements to have the TWJKD and Sifu Ted Wong Logos printed on T-shirts, and
claims, albeit vaguely, that Applicant’s identified athletic apparel is related to “goods
that I have had manufactured and sold with the express consent of Ted Wong….”20
Although Opposer does not elaborate on the precise nature of goods he has offered for
sale under the marks, his testimony is uncontroverted, and serves at the very least
to demonstrate how his provision of educational and informational services under the
marks could expand to encompass athletic clothing goods of the sort Applicant
identifies.
For these reasons, the second DuPont factor also weighs in favor of Opposer.
C. Channels of Trade, Classes of Customers, and Conditions of Sale
The third and fourth DuPont factors concern “[t]he similarity or dissimilarity of
established, likely-to-continue trade channels,” and “[t]he conditions under which

20 Lopez decl. ¶¶ 40, 44, 49, 24 TTABVUE 8.
Opposition Nos. 91216538, 91216605, and 91216672
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and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated
purchasing.” DuPont, 177 USPQ at 567.
Since Applicant’s identified goods and services are related to Opposer’s provision
of education and information in the field of martial arts, and since the applications’
identifications do not restrict their channels of trade, we must presume that they will
flow through all normal and usual channels of trade―online and retail stores―and be
offered to the same general class of consumers, that is, those interested in martial
arts. See In re Detroit Athletic, 128 USPQ2d at 1052; In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017); In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994) (“since the identification is unrestricted as to channels of
distribution, we must consider the [clothing] goods to travel in all channels
appropriate for goods of this type.”). Since the parties’ marks contain the same literal
wording, TED WONG JEET KUNE DO, consumer searches and word-of-mouth
referrals would tend to lead to either or both parties’ goods or services. And since the
parties have not placed restrictions on the price or quality of their goods or services,
there is no reason to infer that their customers will be particularly sophisticated,
discriminating, or careful in making their purchases. See generally Stone Lion
Capital v. Lion Capital, 110 USPQ2d at 1163; Primrose Ret. Cmtys. v. Edward Rose
Senior Living, 122 USPQ2d at 1039.
Hence, the third DuPont factor favors a finding of likelihood of confusion, and the
fourth DuPont factor is neutral.

Opposition Nos. 91216538, 91216605, and 91216672
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IV. Conclusion

We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors. Because we have
found that the marks at issue are identical or highly similar; that Applicant’s
identified goods and services are related to Opposer’s services; that they would move
in the same or overlapping trade channels; and that they would be offered to the same
class of purchasers, who cannot necessarily be expected to exercise sophistication and
care in their purchases, we conclude that Applicant’s applied-for mark, as used in
connection with the goods and services identified in its three applications, so
resembles Opposer’s marks as to be likely to cause confusion or mistake, or to deceive
under Section 2(d) of the Trademark Act.
Decision: The oppositions to registration of Applicant’s applied-for mark are
sustained, and all three applications are refused registration.