Down Girls Up, LLC and Starcycle Franchise, LLCv.CB IP, LLC

Trademark Trial and Appeal Board

Sep 20, 2019

92063406 (T.T.A.B. Sep. 20, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Down Girls Up, LLC and Starcycle Franchise, LLC
v.
CB IP, LLC
_____

Cancellation No. 92063406
_____

Konrad K. Gatien of Keats Gatien LLP,
for Down Girls Up, LLC and Starcycle Franchise, LLC.
John F. Bennett and Michael A. Merrero of Ulmer & Berne, LLP,
for CB IP, LLC.
_____

Before Kuhlke, Greenbaum and Pologeorgis,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
CB IP, LLC (“Respondent”) owns a registration on the Principal Register for the
mark CYCLESTAR (in standard characters) for
health club services, namely, providing instruction and
training in the field of exercise and fitness; exercise and
fitness training services; personal training and exercise
and fitness services featuring stationary bicycles; personal
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training and exercise and fitness consulting, in
International Class 41.1
Down Girls Up, LLC (“DGU”) and Starcycle Franchise, LLC (“Starcycle”)
(collectively “Petitioners”) seek to cancel Respondent’s registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of
confusion with their mark STARCYCLE (in standard characters), registered on the
Principal Register for “physical fitness instruction; physical fitness studio services,
namely, providing group exercise instruction, equipment, and facilities” in
International Class 41.2 Petitioners also assert that they have made prior common
law use of the mark STARCYCLE for “fitness instruction via stationary bicycles.”
Respondent, in its answer, denied the salient allegations in the Petition for
Cancellation.
I. Accelerated Case Resolution (“ACR”)
After discovery closed, Petitioners filed a motion for summary judgment, which
was denied. 14 TTABVUE. On August 28, 2018, the parties filed a joint stipulation
to resolve this case by the ACR procedure described in Sections 528.05(a)(2), 702.04
and 705 of the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) (2019), based on the parties’ summary judgment papers, supplemental trial
briefs with additional exhibits and testimony by affidavit or declaration (subject to
cross-examination or objection by the non-offering party), and a joint statement of

1 Registration No. 4830243 issued on October 13, 2015 from an application filed November 6,
2014.
2 Registration No. 4472555 issued January 21, 2014 from an application filed March 27, 2013.
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undisputed facts and evidence.3 (“ACR Stipulation”) 37 TTABVUE. The Board
approved the ACR Stipulation with slight modifications on September 28, 2018,
specifically construing the parties’ agreement that “[t]he Board may resolve any
disputed facts and evidence presented by the record” “as an agreement that the Board
may decide any issues not anticipated by the parties but which the Board may find
the record to present and may issue a final decision on the parties ACR submissions.”
39 TTABVUE 1-2, n.2.
II. Evidentiary Issues
Each party raised several objections to the declaration or affidavit testimony of
their adversary, and certain exhibits submitted therewith. 44 TTABVUE
(Respondent’s Objections); 45 TTABVUE (Petitioners’ Objections). Many of the
objections are to lack of foundation, relevance and hearsay.
Board proceedings are heard by Administrative Trademark Judges, not lay jurors
who might easily be misled, confused, or prejudiced by flawed evidence. Cf. Harris v.
Rivera, 454 U.S. 339, 346 (1981) (“In bench trials, judges routinely hear inadmissible
evidence that they are presumed to ignore when making decisions.”). We employ the
standards the Board previously has applied, and accord the testimony and evidence
whatever probative value it deserves. “Ultimately, the Board is capable of weighing
the relevance and strength or weakness of the objected-to testimony and evidence in
this case, including any inherent limitations, which precludes the need to strike the

3 37 TTABVUE. The parties expressly reserved the right to object to all other facts and
evidence and to conduct supplemental discovery about those facts and evidence. Id. at 2-3.
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challenged testimony and evidence if the objection is well-taken.” Poly-Am., L.P. v.
Ill. Tool Works, Inc., 124 USPQ2d 1508, 1510 (TTAB 2017). We have given the
declarations and affidavits, and their accompanying evidence, their due weight,
keeping in mind any objections. Luxco, Inc. v Consejo Regulador del Tequila, A.C.,
121 USPQ2d 1477, 1479 (TTAB 2017). As necessary and appropriate, we address any
limitations to the testimony and evidence material to our decision. Id.
III. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Respondent’s involved registration. Pursuant to the
ACR Stipulation, the parties also admitted the following evidence from their
respective briefs on Petitioners’ motion for summary judgment or from their ACR
Supplemental Briefs.
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A. Petitioners’ Testimony and Evidence
1. Affidavit of Erin Moone, co-founder and co-owner of Petitioner
DGU, with attached printouts of DGU’s website and weekly class
schedules (Exh. 1), printouts of DGU’s social media pages (Exh. 2),
and a copy of a cease and desist letter to third party Tonef1tness
(Exh. 3). 11 TTABVUE 21-84.
2. Affidavit of Dionne Del Carlo, co-founder and co-owner of
Petitioner DGU, with an attached exhibit consisting of an October
5, 2016 email from Yvonne Faulkner (title/position unknown) to
Ms. Del Carlo, bearing the subject line: “CycleBar/StarCycle
confusion in Denver” (Exh. 4). 11 TTABVUE 85-88.
3. Affidavit of Konrad Gatien, Petitioners’ attorney, with attached
copies of Respondent’s answers to Petitioners’ Requests for
Admission4 (Exh. 5) and responses to Petitioners’ Interrogatories
(Exh. 6).
4. Supplemental Affidavit of Erin Moore, with accompanying exhibits
consisting of a USPTO Trademark Electronic Search System
(TESS) printout of Petitioners’ pleaded STARCYCLE registration
(Reg. No. 4472555), which shows that the registration is subsisting
and owned by Petitioners (Exh. 7), and a screenshot from
Petitioners’ website purportedly showing locations for several new,
soon to open, STARCYCLE fitness studios (Exh. 8). 40 TTABVUE
14-22.
5. Supplemental Affidavit of Konrad Gatien, with printouts of the
websites of Respondent and Respondent’s franchisees, including
class prices (Exh. 9). 40 TTABVUE 23-37.
B. Respondent’s Testimony and Evidence
1. Declaration of Kristian Higgs, Respondent’s General Counsel, with
attached exhibits consisting of an excerpt of Respondent’s branding
and operational guides (Exh. 1), screenshots of Respondent’s website
promoting and recruiting Respondent’s cycling instructors and
associated recruitment materials (Exh.2). 13 TTABVUE 21-31.
2. Declaration of Anisha Mehta, counsel for Respondent, with portions
of TESS search result lists of third-party CYCLE-formative and
STAR-formative marks in International Class 41 and TESS
printouts of third-party registrations for three CYCLE-formative and
six STAR-formative marks. (Exh. 3). 13 TTABVUE 32-53.
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3. Declaration of Hillary Maynard, counsel for Respondent, with
USPTO Trademark Status Document Retrieval (TSDR) printouts
of third-party registrations for three CYCLE-formative and five
STAR-formative marks (Exh. 1).5 41 TTABVUE 10-44.
IV. Standing
Petitioners have established their standing by properly introducing into evidence
a current status and title copy of pleaded Reg. No. 4472555. 40 TTABVUE 15 and 17-
20, Moone Aff., ¶ 19 and Exh. 7 thereto. See Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). The
parties also stipulated that Petitioners own the pleaded registration and that it is in
full force and effect.6 42 TTABVUE 3-4, ¶¶ 3-4.
V. Priority
In a cancellation proceeding in which both parties own registrations, the
petitioner must prove priority of use. See Brewski Beer Co. v. Brewski Bros., Inc., 47
USPQ2d 1281 (TTAB 1998). Here, the parties stipulated to Petitioners’ priority based
on Petitioners’ prior common law use of the mark STARCYCLE for “fitness
instruction via stationary bicycles,” and Petitioners’ pleaded registration for
STARCYCLE for the identified physical fitness services. 42 TTABVUE 3-5, ¶¶ 1-8.

5 The only difference between the TESS and TSDR copies of the third-party registrations
submitted by Respondent is the omission of Reg. No. 3918896 for the mark TRUESTAR,
which has been cancelled under Section 8 of the Trademark Act, 15 U.S.C. § 1058, for that
owner’s failure to file the requisite maintenance documents.
6 Respondent does not dispute Petitioners’ standing.
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VI. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). The standards of proof in an ACR proceeding are
the same as the standards of proof in a traditional Board proceeding. See Bond v.
Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); TBMP § 702.04. Petitioners must
establish that there is a likelihood of confusion by a preponderance of the evidence.
Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307,
1311 (Fed. Cir. 1989) (plaintiff’s burden is to establish the case by a preponderance
of the evidence).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Varying weights may be assigned to each du Pont factor depending on the evidence
presented. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88
(Fed. Cir. 1993). We have considered each du Pont factor for which evidence is of
record. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63
(Fed. Cir. 2019).
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A. Similarity of the Services and Channels of Trade/Classes of Purchasers
The parties stipulated that the services offered under their respective marks “are
identical in kind; namely, the Parties both offer instruction and training in the field
of exercise and fitness, personal fitness training, and exercise and fitness services
featuring stationary bicycles.”7 42 TTABVUE 5, ¶ 9. See also id. at 6-7, ¶¶ 18-20 and
23 (each party offers indoor cycling instruction and fitness classes). The parties also
stipulated to the identity of channels of trade, id. at 9, ¶ 35, and specifically, that they
“both offer indoor cycling instruction in fitness studios in California and Colorado,
though presently in different cities.” Id. at 7, ¶ 23. Based on these stipulations, and
because the identified services are without restriction as to their nature, channels of
trade, or classes of customers, we also must presume that they are offered to all
normal classes of purchasers for such services, see Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746, F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014), and that
the classes of purchasers is the same. See In re Yawata Iron & Steel Co., 403 F.2d
752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same). The
parties stipulated that consumers of Respondent’s CYCLESTAR services “varied in
age from teens to senior citizens and included both male and female.” ¶ 28. Although

7 We need not address the remaining services identified in Respondent’s registration because
a likelihood of confusion may be found as to a particular class based on any item within the
identification for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
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there is no parallel stipulation for Petitioners’ consumers, as we just stated, we
presume they are the same as Respondent’s consumers. Yawata, 159 USPQ at 723.
These du Pont factors strongly favor a likelihood of confusion.
B. Conditions of Sale
Under the fourth du Pont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
du Pont, 177 USPQ at 567. The parties stipulated that they both offer indoor cycling
instruction and fitness classes in bulk packages, with Petitioners’ packages ranging
from $30-$310, and Respondent’s packages ranging from $95-580 for 5-40 classes (or
$19/class for a 5-class package to $14.50/class for a 40-class package). Screenshots of
Petitioners’ website show that Petitioners also offer single classes starting at $18 per
class and packages of 20 classes for $270-$310, depending on the location (or $13.50-
$15.50/class for a 20-class package). 11 TTABVUE 49-51, Exh. 1 to Moone Aff. And
screenshots of Respondent’s website show that Respondent offers single classes at no
charge for first-timers and up to $30 depending on the location. 40 TTABVUE 28-37,
Exh. 9 Gatien Aff. Thus, the parties’ pricing structures and ranges appear very
similar.
Respondent asserts, with no supporting evidence, that “a fitness class package is
a significant monetary commitment” which “further eliminates any likelihood of
incorrect assumptions regarding the source of the services.”8 41 TTABVUE 5.

8 Respondent’s reliance on a finding in a decision in a federal infringement action between
two other fitness clubs is misplaced. See 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness,
LLC, 447 F. Supp. 2d 266 (S.D.N.Y. 2006), aff’d, 247 F. App’x 232 (2nd Cir. 2007). Based on
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However, as discussed, the indoor cycling classes offered by Petitioners and
Respondent must be presumed to include both expensive and inexpensive varieties,
subject to casual, impulse purchases. There is nothing in the nature of these services,
without any limitation as to their types, price points or intended consumers, to
suggest their purchasers are particularly sophisticated or careful. See In re I-Coat
Co., 126 USPQ2d 1730, 1739 (TTAB 2018). In fact, the standard of care is that of the
least sophisticated potential purchaser. Stone Lion, 110 USPQ2d at 1163. And as to
the more modestly priced (or free) cycling classes, which might be purchased by first-
timers or individuals who are beginning an exercise regime, “[w]hen products are
relatively low-priced and subject to impulse buying, the likelihood of confusion is
increased because purchasers of such products are held to a lesser standard of
purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000).
This du Pont factor also favors a likelihood of confusion.
C. Strength of Petitioners’ Mark
Before we address the similarity of the marks, we analyze the strength of
Petitioners’ mark because it affects the scope of protection to which the mark is

the evidence in that case, none of which is present here, the court determined: “While most
fitness club members may not be experts in health club brands, a gym membership is a fairly
significant monetary commitment, requiring a relatively mindful, and therefore
sophisticated, purchasing decision. Furthermore, there is no evidence of any particular
difference in the level of sophistication of the two parties’ consumer bases. Therefore, the
sophistication factor is neutral in this analysis.” This determination certainly does not
support Respondent’s assertion that the fourth du Pont factor favors a finding of no likelihood
of confusion here. Moreover, even were we to consider this factor neutral as the court did, it
would not change the ultimate determination.
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entitled. The fifth du Pont factor is the fame of the prior mark, and the sixth factor is
the number and nature of similar marks in use for similar goods or services.
Petitioners argue that their STARCYCLE mark is arbitrary and strong, while
Respondent contends that the mark is weak due to exposure of the “relevant public
… to many STAR-formative and CYCLE-formative marks in the fitness industry”
which has conditioned them to “rely on small differences among those marks to
distinguish the source of the services.” 41 TTABVUE 7.
Under the fifth du Pont factor, the strength of a mark rests on the extent to which
“a significant portion of the relevant consuming public … recognizes the mark as a
source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691, 1694 (Fed. Cir. 2005). This factor involves assessing the mark “along a
spectrum from very strong to very weak.” Id. (internal citations omitted). A very
strong mark receives a wider latitude of legal protection in the likelihood of confusion
analysis. See Palm Bay Imps., 73 USPQ2d at 1694 (strong marks “enjoy wide latitude
of legal protection” and are “more attractive as targets for would-be copyists”).
In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength based on marketplace
recognition of the mark. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d
1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual
strength (distinctiveness) and its marketplace strength (secondary meaning).”); Top
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Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011)
(the strength of a mark is determined by assessing its inherent strength and its
commercial strength); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899
(TTAB 2006). Commercial strength may be measured indirectly, by volume of sales
and advertising expenditures and factors such as length of use of the mark,
widespread critical assessments, notice by independent sources of the goods or
services identified by the mark, and the general reputation of the goods or services.
Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014).
1. Sales, Advertising and Length of Use of Petitioners’ Mark
The record indicates the Petitioners’ mark likely has only minimal consumer
recognition. Petitioners began to use their mark in one studio in Oregon in 2013, and
have since expanded to 11 studio locations in California, Colorado, Oregon, and
Washington. Stipulations of Fact, 42 TTABVUE 3, ¶ 1 and 7, ¶ 22. Petitioners’ sales
revenues from providing indoor cycling classes increased from approximately
$200,000 in 2013 to $775,000 in 2017. Id. at 7, ¶¶ 25-26. As of November 5, 2018, the
filing date of Petitioners’ Supplemental Trial Brief, Petitioners’ sales revenues for the
year 2018 were $670,000. Id. at 7, ¶ 27. Petitioners’ advertising expenses related to
its indoor cycling instruction services were $150,000 in 2017, and $110,000 for the
year 2018 as of November 5, 2018. Id. at 8, ¶¶ 33-34. As of June 13, 2017, the filing
date of Petitioners’ summary judgment motion, Petitioners’ social media presence
consisted of 3000 followers on Facebook, 2000 followers on Instagram, and 500
followers on Twitter with over 4500 likes on its Twitter page. Id. at 8, ¶ 31.
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2. Third-Party Registration and Use of Similar Marks
Petitioners’ standard character mark STARCYCLE is registered on the Principal
Register without a showing of acquired distinctiveness, and therefore is presumed to
be inherently distinctive under Section 7(b) of the Trademark Act, 15 U.S.C.
§ 1057(b). See Tea Bd. of India, 80 USPQ2d at 1899.
Third-party registrations may be relevant to show the sense in which a mark is
used in ordinary parlance; that is, an element common to both parties’ marks may
have a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that the segment is inherently relatively weak. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); see also In re
Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“[T]hird-
party registrations are relevant evidence of the inherent or conceptual strength of a
mark or term because they are probative of how terms are used in connection with
the goods or services identified in the registrations.). Evidence of third-party use of
similar marks on similar goods or services also can show that customers have been
educated to distinguish between different marks on the basis of minute distinctions.
Jack Wolfskin, 16 USPQ2d at 1136 (quoting Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1673 (Fed. Cir. 2015)).
Respondent does not contend that STARCYCLE has a descriptive meaning in
association with the parties’ services. Rather, Respondent argues that Petitioners’
mark is entitled to a narrow scope of protection due to “many” third-party
registrations for CYCLE-formative or STAR-formative marks for physical fitness
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services. 41 TTABVUE 7. In support of this argument, Respondent submitted
printouts from TSDR of five STAR-formative registrations and three CYCLE-
formative registrations.9
This evidence shows that several third parties have registered marks that
incorporate either STAR or CYCLE for physical fitness related services. It does not,
however, support any conclusions about use of those marks; the manner, nature, or
extent of any use; or consumer exposure to the marks. See, e.g., Palm Bay Imps., 73
USPQ at 1693. Moreover, none of the third-party registrations include both STAR
and CYCLE as elements of their marks. The third-party registration evidence
therefore does not show that the combination of terms STAR and CYCLE, regardless
of their order, is weak.
Although this evidence is probative, it is not sufficient to establish that STAR or
CYCLE formatives are so widespread for physical fitness related services that
consumers have come to distinguish marks containing them based on minute
differences. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751
(Fed. Cir. 2017) (stating that evidence of third-party use “falls short of the ubiquitous
or considerable use of the mark components present in [applicant’s] cited cases”)

9 The registrations are for the marks STAR TRAC, BODYSTAR, STARFITNESS WHERE EXERCISE
IS AN ATTITUDE (& star design), STARPATH YOGA, ACTIVSTARS (& star design), CORE CYCLE,
SOULCYCLE, and WARCYCLE. 41 TTABVUE 10 and 12-44, Maynard Decl., ¶ 3, and Exh. 1 thereto.
As noted above, Reg. No. 3918896 for the mark TRUESTAR has expired because its owner did not file
the required maintenance documents. The existence of a cancelled registration--particularly one
cancelled for failure to provide a declaration of continued use--does not tend to show that the cited
mark is weak due to third-party use. A cancelled registration is only evidence that the registration
issued and it does not carry any of the legal presumptions under Section 7(b) of the Trademark Act,
15 U.S.C. § 1057(b). See Bond v. Taylor, 119 at 1054-55; In re Kysela Pere et Fils Ltd., 98 USPQ2d
1261, 1264 (TTAB 2011) (“‘dead’ or cancelled registrations have no probative value at all.”).
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(quotations omitted); cf. Jack Wolfskin, 116 USPQ2d at 1136 (discussing “voluminous
evidence” of registration and use of paw print design elements); Juice Generation, 115
USPQ2d at 1674-75 (referencing evidence of “a fair number” of third-party marks).
Respondent also submitted printouts of the partial results of two different
searches of the TESS database for marks incorporating the terms STAR or CYCLE
in International Class 41. 13 TTABVUE 32-38, Mehta Decl., ¶ 3 and Exh. 3 thereto.
Except for some of the registrations set out in n.7, supra, the registrations listed are
not of record, and the lists have little, if any, probative value. We cannot determine
from mere listings like this the precise nature of the services, which may identify non-
physical fitness related services. See, e.g., Edom Labs., Inc. v. Lichter, 102 USPQ2d
1546, 1550 (TTAB 2012). Further, some of the search results include applications,
which are only evidence that they were filed with the USPTO. See, e.g., In re Binion,
93 USPQ2d 1531, 1535 n.3 (TTAB 2009). And many of the marks listed appear to
contain substantial additional matter which affect their commercial impression and
thus further reduce their probative value (e.g. ALL-STAR WRESTLING, TEEN
DANCE STAR, GLOBAL CUSTOMER LIFECYCLE and RAPID INQUIRY-DRIVEN
CHANGE CYCLE).
3. Conclusion as to Strength of Petitioners’ Mark
Considering the record as a whole, Petitioners’ mark is inherently distinctive and
likely has only limited consumer recognition. We find no evidence that Petitioners’
mark has a descriptive meaning in association with physical fitness services. Also,
we find five third-party registrations for marks incorporating the term STAR and
three third-party registrations for marks incorporating the term CYCLE for such
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services, with no evidence of actual use, insufficient to limit the scope of protection
due to Petitioners’ inherently distinctive mark. Respondent has not shown that
Petitioners’ mark STARCYCLE is so weak that it is entitled only to a narrow scope
of protection.
The fifth and sixth du Pont factors are neutral. We accord Petitioners’ mark the
normal scope of protection afforded to inherently distinctive marks.
D. Similarity of the Marks
Under this du Pont factor, we must compare the Petitioners’ STARCYCLE mark
and Respondent’s CYCLESTAR mark, both in standard characters, in their entireties
for similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Stone Lion, 110 USPQ2d at 1160. “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 between the parties.” Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018).
The marks “must be considered … in light of the fallibility of memory ….” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quotation
omitted). We focus on the recollection of the average consumer – here, an ordinary
consumer of physical fitness classes – who normally retains a general rather than a
specific impression of trademarks. See id. at 1085; Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). And we bear in mind that
where, as here, the services are identical, “the degree of similarity necessary to
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support a conclusion of likely confusion declines.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quotation
omitted).
The parties stipulated, and it is obvious, that “Respondent’s CYCLESTAR mark
and Petitioners’ STARCYCLE mark contain the terms ‘STAR’ and ‘CYCLE,’ albeit in
a different order.” 42 TTABVUE 5, ¶ 12. In other words, CYCLESTAR and
STARCYCLE are “reverse combinations” of the same words or elements -- a
“transposition of the words” that make up the marks. See, e.g., In re Wine Soc’y of Am.
Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (affirming refusal to register THE WINE
SOCIETY OF AMERICA & Design based on registration of AMERICAN WINE
SOCIETY 1967 & Design, finding that “the transposition of words does not change
the overall commercial impression”); Bank of Am. Nat’l Trust and Sav. Ass’n v. The
Am. Nat’l Bank of St. Joseph, 201 USPQ 842, 845 (TTAB 1978) (“the words
‘BANKAMERICA’ and ‘BANK OF AMERICA’, on the one hand, and ‘AMERIBANC’,
on the other, convey the same meaning and create substantially similar commercial
impressions”).
In In re Nationwide Industries, Inc., 6 USPQ2d 1882, 1884 (TTAB 1988), which
affirmed the refusal to register RUST BUSTER for rust-penetrating spray lubricant
based on the mark BUST RUST for penetrating oil, the Board held that “the reversal
in one mark of the essential elements of another mark may serve as a basis for a
finding of no likelihood of confusion only if the transposed marks create distinctly
different commercial impressions.” Likelihood of confusion ordinarily is found where
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transposed marks do not convey different commercial impressions. See Carlisle
Chem. Works, Inc. v. Hardman & Holden, 434 F.2d 1403, 168 USPQ 110 (CCPA 1970)
(reversing dismissal of oppositions to registration of COZIRC based on use of ZIRCO
for related goods, finding that the marks “are substantially similar, the difference
being in a reversal of syllables which are essentially the same”); In re Gen. Tire &
Rubber Co., 213 USPQ 870 (TTAB 1982) (affirming refusal to register SPRINT
STEEL RADIAL for pneumatic tires based on registration for RADIAL SPRINT for
vehicle tires, finding that the marks “convey the same meaning, that is, a steel radial
tire called ‘SPRINT’ or a radial tire called ‘SPRINT’ both of which could emanate from
the same source”); Plus Prods. v. Physicians Formula Cosmetics, Inc., 198 USPQ 111,
114 (TTAB 1978) (“… the use of identical terms in inverse order as we have in the
present case is likely to cause confusion in trade when used on such closely related
cosmetic products”); Fisher Sci. Co. v. Ipco Hosp. Supply Corp., 165 USPQ 471, 472
(TTAB 1970) (sustaining opposition to MIX O THERM based on THERMIX used for
identical goods, stating “they are in their essentials merely reverse combinations of
the same words, and such being the case, would more than likely convey substantially
the same commercial impressions”); Royal Crown Cola Co. v. Bakers Franchise, 150
USPQ 698, 700 (TTAB 1966), aff’d, 404 F.2d 985, 160 USPQ 192 (CCPA 1969) (“…
the applicant’s compound mark includes the same words which make up opposer’s
mark, that is to say ‘RITE DIET’ is merely ‘DIET-RITE’ transposed. The marks of the
parties create substantially the same commercial impressions .…”). Cf. In re Akzona
Inc., 219 USPQ 94, 96 (TTAB 1983) (“Applicant’s mark ‘SILKY TOUCH,’ conveys the
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impression that applicant’s synthetic yarns are silky to the touch. On the other hand,
registrant’s mark ‘TOUCH O’ SILK,’ suggests that registrant’s clothing products
contain a small amount of silk.”); Murphy, Brill and Sahner, Inc. v. N.J. Rubber Co.,
102 USPQ 420 (Commr. Pat. 1954) (finding that TOPFLITE for shoe soles conveys a
different meaning than FLITE TOP for hosiery).
Respondent’s main argument is that the ordering of the terms in each mark
results in marks with different meanings and different commercial impressions.
Pointing to images from Petitioners’ Facebook page and promotional materials on
Respondent’s website, Respondent asserts that Petitioners’ mark connotes “the shape
of a star and stars in the sky” and “refers to bicycles or cycling and touts them with
the adjective ‘STAR,’” while “Respondent’s mark connotes “a stand-out person.” 13
TTABVUE 9-10.10 According to Respondent’s General Counsel, Respondent intended
its mark to refer to “Respondent’s fitness instructors who are stand-out cyclists” and
to “create an association in customers’ minds with Respondent’s cycling instructors.”
Higgs Decl, 13 TTABVUE 22, ¶ 6. However, Respondent submitted no evidence to
demonstrate that consumers understand Respondent’s mark in this manner, or that
they would not attribute the same meaning to Petitioners’ mark. “[A]n applicant’s or
registrant’s intended interpretation of the mark is not necessarily the same as the
consumer’s perception of it.” In re Yale Sportswear Corp., 88 USPQ2d 1121, 1125
(TTAB 2008); see also Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463,

10 Respondent reiterates these arguments, nearly verbatim, in its Supplemental Brief. See,
generally, 41 TTABVUE 3-4.
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1465 (TTAB 2003) (“In short, it does not matter what applicant’s intentions were in
creating its mark or what its characterization of its mark is.”).
We find that in the context of indoor cycling instruction services, STARCYCLE
and CYCLESTAR convey the same meaning, namely, that of an outstanding cyclist.
To the extent the parties’ Internet printouts provide some understanding of the
connotation and commercial impression conveyed by their marks, the printouts
buttress our finding because they include photographs of the parties’ instructors with
superimposed five-pointed stars, connoting that the instructors are top-notch. See,
e.g., screenshot of Petitioners’ Facebook page, 11 TTABVUE 23 and 65, Moone Decl.,
¶ 11 and Exh. 2 thereto, and screenshots of Respondent’s website, 13 TTABVUE 22
and 27-28, Higgs Decl., ¶ 6 and Exh. 2 thereto.
Respondent also argues that there is no likelihood of confusion because it owns a
“family” of CYCLE-formative marks.11 However, this is not the basis for a defense.
Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1737 (TTAB
2001) (defendant not entitled to rely on asserted ownership of “family” of marks as
defense to Trademark Act § 2(d), 15 U.S.C. § 1052(d) claim).

11 According to Respondent’s General Counsel, Kristian Higgs, Respondent owns three
registrations for its asserted house mark CYCLEBAR, two registrations for “CycleBar
(Design Mark[s]),” and five other registrations for CYCLE-formative marks, which
purportedly comprise a “family” of marks. 13 TTABVUE 21-23, Higgs Decl, ¶¶ 3, 5 and 7.
However, with the exception of Respondent’s CYCLESTAR mark, which is automatically of
record because it is the subject of this proceeding (see Trademark Rule 2.122(b)), none of the
registrations are of record. In any event, mere ownership of various marks with a common
feature, or registrations thereof, does not suffice to establish a family of marks. See J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991);
Consol. Foods Corp. v. Sherwood Med. Indus., Inc., 177 USPQ 279 (TTAB 1973).
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Finally, Respondent’s argument that it uses its CYCLESTAR mark with its
CYCLEBAR “house mark” CYCLEBAR is misplaced because we must consider the
mark as registered, without the presence of the asserted house mark. See Trademark
Rule 2.52, 37 C.F.R. § 2.52 (A drawing depicts the mark sought to be registered);
Cunningham, 55 USPQ2d at 1847 (because the mark was registered as a “typed
drawing,”12 “it is irrelevant that [registrant] has a particular display for his mark in
commerce, and the Board was correct to ignore those features.”); see also Frances
Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA
1959) (“In determining the applicant’s right to registration, only the mark as set forth
in the application may be considered; whether or not the mark is used with an
associated house mark is not controlling.”); In re Rexel Inc., 223 USPQ 830, 832
(TTAB 1984) (“The fact that applicant’s stapler kits bear its house mark ‘REXEL’ as
well as the product mark ‘LITTLE GOLIATH’ is not persuasive of a different result
since applicant is seeking to register the mark ‘LITTLE GOLIATH’ alone.”).
As to sound and appearance, we further find the marks very similar because of
the shared identical terms, although they appear in reverse order.
In sum, viewed in their entireties, the marks are very similar overall, and
Respondent’s mere transposition of the identical two words in Petitioners’ mark does
not distinguish them.

12 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. TMEP § 807.03(i) (October 2018).
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E. Actual Confusion
Petitioners assert that there has been one instance of actual confusion between
the parties’ marks. In support, Petitioners submitted an email dated October 5, 2016
from Yvonne Faulkner, an individual presumably associated with Petitioners, to
Dionne Del Carlo, co-owner and co-founder of Petitioner DGU. 11 TTABVUE 85 and
88, Del Carlo Decl., ¶ 2 and Exhibit 4 thereto. The email states:
Dionne,
I was at my chiropractor’s for a visit. She said, ‘I
understand you guys are partnering with CycleBar’ I said,
‘no, what do you mean?’ She replied that she had been to a
CycleBar class, and the instructor had said she was going
out of town, and StarCycle was going to help cover her
classes. I was confused, until I realized they call their
instructors ‘cycle stars.’ I then asked her if [t]he instructor
could have possibly said her other instructors, or cycle
stars were going to cover her shifts. She stated that yes,
that was probably what she’d heard.
Very confusing!
-Yvonne
As the Board observed in the Order denying Petitioners’ summary judgment
motion, this evidence is entitled to little, if any, probative weight because it is an
instance of hearsay within hearsay. 14 TTABVUE 4-5. Moreover, to the extent the
evidence has any probative value, it undercuts Petitioners’ position because the
chiropractor’s inquiry about whether DGU is “partnering with [Respondent]”
suggests that she believes Petitioner DGU and Respondent are different businesses.
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1479
(TTAB 2014) (email “not evidence of actual confusion because it indicat[ed] the
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prospective customer suspected that there were two different companies seeking
business.”).
Respondent contends that it is unaware of any instances of actual confusion, and
that this favors Respondent. However, proof of actual confusion is not necessary to
show a likelihood of confusion, and its absence is not dispositive. See Herbko Int’l Inc.
v. Kappa Books Inc., 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). A
showing of actual confusion would of course be highly probative, if not conclusive, of
a likelihood of confusion. Yet the opposite is not true; the lack of evidence of actual
confusion generally carries little weight. See J. C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
This du Pont factor is neutral.
F. Conclusion
Having considered all the evidence and arguments bearing on the relevant du
Pont factors, we conclude that Petitioners have established, by a preponderance of
the evidence, that when used in association with identical services that move through
the same channels of trade to the same classes of consumers, Respondent’s registered
mark so resembles Petitioners’ earlier used and registered mark as to be likely to
cause confusion, mistake or deception.

Decision: The petition for cancellation is granted and Registration No. 4830243
will be cancelled in due course.