Impact Sports, Inc.v.Impact Sports Tech-nologies, Inc.

Trademark Trial and Appeal Board

Aug 13, 2008

No. 91178693 (T.T.A.B. Aug. 13, 2008)

THIS OPINION IS NOT A PRECEDENT
OF THE TTAB

MBA Mailed: August 13, 2008

Opposition No. 91178693
Opposition No. 91178694

Impact Sports, Inc.

v.

Impact Sports Technologies,
Inc.

Before Hairston, Rogers and Bergsman, Administrative
Trademark Judges

By the Board:
Impact Sports Technologies, Inc. (“applicant”) seeks to
register the mark IMPACT SPORTS, in standard character
format, for “Clothing, namely wristbands, armbands,
anklebands, shirts and gloves,”1 and for “Athletic gloves
namely work-out gloves,”2 and registration is opposed by
Impact Sports, Inc. (“opposer”). Opposer alleges in the
above-referenced opposition proceedings that it has priority
of use and that the mark identified in applicant’s
applications is confusingly similar to opposer’s identical

1 Application Serial No. 78977254, filed March 17, 2005, based
on an intent to use the mark in commerce.
2 Application Serial No. 78977255, filed March 17, 2005, based
on an intent to use the mark in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition Nos. 91178693 and 91178694
2
mark IMPACT SPORTS, which opposer claims to use for, among
other things, clothing, clothing accessories, and the sale
and distribution of clothing, clothing accessories, sporting
goods and sports-related equipment manufactured by others.
Opposer also alleges that use of applicant’s mark will “lead
to the belief that Applicant’s goods are sponsored by,
affiliated with, approved by, or otherwise emanate from
Opposer,” and that applicant’s mark will “falsely suggest a
connection between Applicant and Opposer.” In its answers,
applicant denies the salient allegations in the notices of
opposition but admits that it has not yet used its mark for
the goods identified in its applications. Applicant also
pleads, as affirmative defenses in each proceeding, that the
oppositions are barred by opposer’s alleged unclean hands
and fraud, because opposer filed intent to use applications
for marks which opposer claims, in this proceeding, to
actually be using in commerce.
These cases now come up for consideration of opposer’s
motions, filed April 17, 2008 in each proceeding, seeking
summary judgment “on the grounds that there are no genuine
issues of material fact with regard to likelihood of
confusion under Trademark Act Section 2(d) … and Opposer is
entitled to judgment as a matter of law ….” Applicant
contests the motions, which are fully briefed and ready for
decision.
Opposition Nos. 91178693 and 91178694
3
Consolidation
Before addressing the motions for summary judgment, it
is clear that these proceedings involve identical parties,
closely related applications and virtually identical issues.
When cases involving common questions of law or fact are
pending before the Board, the Board may order consolidation
of the cases. See Fed. R. Civ. P. 42(a); see also, Regatta
Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB
1991). In view thereof, Opposition Nos. 91178693 and
91178694 are hereby consolidated.
Opposer’s Motions for Summary Judgment
In its motions for summary judgment, opposer argues
that it has priority of use based on: (1) applicant’s
responses to opposer’s requests for admission (attached to
opposer’s motion as Exhibit 1), which establish that
applicant has not yet used its mark on any of the goods
identified in its applications; and (2) the Declaration of
Daniel Paltz (“Paltz Dec.”), opposer’s Controller and
Corporate Secretary, and the exhibits submitted therewith.
In his Declaration, Mr. Paltz testifies, among other things,
that “[s]ince at least as early as May, 2004:”
• Opposer “has marketed and sold its
own private label line of athletic
clothing and clothing accessories
under the private label brand name
and trademark IMPACT SPORTS,”
including “shirts, t-shirts, polo
shirts, jerseys, sweatshirts, crew
neck sweatshirts, hooded
Opposition Nos. 91178693 and 91178694
4
sweatshirts, sweat pants, jackets,
athletic shorts and athletic caps
and hats;” Paltz Dec. ¶¶ 5-6;

• Opposer’s IMPACT SPORTS mark “has
been and is displayed on tags
affixed to the aforementioned
clothing and clothing accessories
or has been and is imprinted
directly on the clothing and
clothing accessories, and has been
applied to brochures,
advertisements and promotional
literature and materials used in
connection with the advertisement
and sale of the aforementioned
clothing and clothing accessories;”
Paltz Dec. ¶ 7;

• Opposer “has continuously used the
mark IMPACT SPORTS in connection
with advertising and promoting the
distribution and sale of … third
party clothing and clothing
accessories,” including athletic
gloves, and “has also been a
wholesale and retail distributor
and seller of sporting goods and
sports equipment manufactured by
others,” including athletic gloves;
Paltz Dec. ¶¶ 13-15; and

• Opposer has “conducted and
continues to conduct its business
under the trade name Impact
Sports;” Paltz Dec. ¶ 21.

Opposer submitted with the Declaration, among other things:
photographs showing opposer’s use of IMPACT SPORTS on
clothing; brochures bearing the mark IMPACT SPORTS which
display clothing and clothing accessories, including at
least one distributed beginning in 2004; and “Item Sales
Reports” and customer invoices regarding clothing and
Opposition Nos. 91178693 and 91178694
5
clothing accessory items sold under the mark IMPACT SPORTS,
some of which establish sales of clothing and clothing
accessories bearing IMPACT SPORTS “throughout the country
including in the states of California, Florida, Illinois,
Michigan, Minnesota and Wisconsin.” Paltz Dec. ¶¶ 24, 25,
27, 31-43 and Exhibits 2, 3, 5 and 9-19.
Opposer further argues that there is a likelihood of
confusion between the parties’ respective marks because they
are identical, because the goods sold under the parties’
marks are “identical or closely related” and because “the
channels of trade for the parties’s (sic) respective goods
and services are assumed to be identical” given the lack of
any limitation as to channels of trade in applicant’s
applications.
Applicant introduces no evidence whatsoever in its
response to opposer’s motion. Instead, it relies on mere
argument and claims, without evidentiary support, that
during prosecution of its Class 28 application it
“demonstrated that there were over 731 U.S. Registered
Trademarks or Trademark Applications that include the word
IMPACT, with 40 different registered marks in international
class 28 that include the word IMPACT and 40 different
registered marks in international class 25 that include the
Opposition Nos. 91178693 and 91178694
6
word IMPACT,” none of which are owned by opposer.3
Applicant further argues that opposer has “unclean hands”
and that the Paltz Declaration should not be accepted
because the testimony therein “contradicts” two of opposer’s
trademark applications.4 Specifically, applicant argues
that because the Paltz Declaration claims that opposer has
actually used the marks shown in its application Serial Nos.
76643420 and 76643418, and those applications were filed
under the intent to use provisions of 15 U.S.C. § 1051(b),
opposer has unclean hands. Applicant asserts that opposer
has not established use of IMPACT SPORTS on gloves or other
goods in Class 28, and that opposer’s distribution of gloves
bearing third party marks does not establish opposer’s use
of IMPACT SPORTS for gloves.
Applicant effectively concedes that opposer has
priority of use, by not contradicting opposer’s evidence
regarding opposer’s priority date, and by admitting that
applicant has not used its mark on any of the goods
identified in its applications and that “[t]he earliest
possible date that [applicant] can rely upon for purposes of
priority” is the filing date of its applications, i.e. March
17, 2005. In addition, applicant does not dispute that the

3 In fact, applicant only identified six allegedly relevant
registrations, by registration number, during prosecution of its
application.
4 These applications were not pleaded in the notices of
opposition and are not at issue in these proceedings.
Opposition Nos. 91178693 and 91178694
7
parties’ marks and channels of trade are identical, or that
many of the parties’ goods are at least related.
In its reply brief, opposer points out that applicant
has not introduced any evidence. It further argues that the
classification of goods and services “is a purely
administrative determination and has no bearing on the issue
of likelihood of confusion” (emphasis in original).
Finally, opposer argues that its intent to use applications
are not at issue in this proceeding or a basis upon which to
find that opposer has unclean hands.
Decision
Summary judgment is only appropriate where there are no
genuine issues of material fact in dispute, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ. P.
56(c). Opposer, as the movant seeking summary judgment,
bears the initial burden of demonstrating the absence of any
genuine issue of material fact. See, Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 1563, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine
if, on the evidence of record, a reasonable fact finder
could resolve the matter in favor of the non-moving party.
See, Opryland USA Inc. v. Great American Music Show Inc.,
970 F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992);
Opposition Nos. 91178693 and 91178694
8
Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202,
22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, in this case
applicant, and all justifiable inferences are to be drawn in
applicant’s favor. Lloyd’s Food Products, Inc. v. Eli’s,
Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Opryland USA, supra. The Board may not resolve
issues of material fact; it may only ascertain whether
issues of material fact exist. See, Lloyd’s Food Products,
987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme Foods, 961
F.2d at 200, 22 USPQ2d at 1542.
Evidentiary Issue
Applicant argues that we should not consider the Paltz
Declaration because it contains testimony that opposer has
actually used two marks for which opposer seeks registration
under 15 U.S.C. § 1051(b), and that the Declaration is,
therefore, “contradictory.” We do not agree that there is
any contradiction between the Declaration and the intent to
use applications, or that the Declaration should not be
considered. The filing of an intent to use application is
not inconsistent with actual use of the mark prior to the
application’s filing date. See e.g., Corporate Document
Services Inc. v. I.C.E.D. Mgmt. Inc., 48 USPQ2d 1477, 1479
(TTAB 1998); TMEP § 903 (5th ed. 2007)(“A § 1(b) applicant
Opposition Nos. 91178693 and 91178694
9
may assert dates of use that are earlier than the filing
date of the application in an amendment to allege use or
statement of use.”).
Standing
There is no genuine issue of material fact regarding
standing. Opposer’s evidence establishes “its standing to
bring this opposition as the prior user of the mark” IMPACT
SPORTS for clothing and related products and services.
Green Spot (Thailand) Ltd. v. Vitasoy International Holdings
Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (citations omitted).
Applicant does not contend otherwise, much less introduce
contradictory evidence.
Priority
There is no genuine issue of material fact regarding
priority. Opposer’s declaration testimony and the
accompanying exhibits establish that opposer’s first use of
IMPACT SPORTS was at least as early as May 2004. Green Spot
(Thailand), 86 USPQ2d at 1284 (relying on declaration
testimony of opposer’s chairman to establish date of first
use). Applicant concedes that the “earliest possible date”
it can rely upon is March 17, 2005.
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the applicant’s goods originate from the same source as, or
Opposition Nos. 91178693 and 91178694
10
are associated with,” opposer’s goods. In re Majestic
Distilling Co., 315 F.3d 1311, 1314-15, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In considering the question on a motion
for summary judgment, we analyze all probative facts in
evidence which are relevant to any of the 13 likelihood of
confusion factors set forth in In re E.I. du Pont de Menours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as well as
whether there are genuine disputes as to any of these
factors which would be material to a decision on the merits.
In this case, opposer has introduced evidence concerning,
and we have therefore considered, the similarity of the
parties’ marks, goods and services and channels of trade.
Applicant has not introduced any evidence.5
Turning first to the similarity of the parties’ marks,
there is no genuine issue of material fact. The parties’

5 Although applicant claims that there are many third party
applications and registrations for marks including the word
IMPACT in International Classes 25 and 28, we may not consider
this argument because it is unsupported by any evidence. That
is, while an involved application is part of the record in a
Board proceeding, the contents of the application file are not,
unless properly introduced as evidence. Trademark Rule 2.122(b);
British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1200
(TTAB 1993), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir.
1994); see also, Motion Picture Ass’n of America, Inc. v.
Respect Sportswear, Inc., 83 USPQ2d 1555, 1563 (TTAB 2007)
(“Applicant’s mere assertion of such use has no probative value
….”). Furthermore, even if the claim was supported by evidence,
it would not be persuasive because, among other things: (a) there
is no indication whether the alleged marks are confusingly
similar, in overall commercial impression, to IMPACT SPORTS; (b)
there is no indication whether the alleged marks are used on
goods or services similar or related to those at issue in these
proceedings; and (c) the classification of goods sold under the
alleged marks is irrelevant.

Opposition Nos. 91178693 and 91178694
11
marks are identical. This factor weighs heavily in favor of
a finding of likelihood of confusion. Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 1109 (2007); Hornblower &
Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735
(TTAB 2001).
Turning next to the parties’ goods, opposer uses its
mark for, among other things, clothing, including shirts.
In its Class 25 application, applicant seeks to register an
identical mark for, among other things, clothing, including
shirts. “Use of identical marks for virtually identical
services would create a likelihood of confusion.”
Hornblower & Weeks, 60 USPQ2d at 1735. Furthermore, while
the gloves identified in applicant’s Class 28 application
are not identical to opposer’s goods, they are clearly
related, if not similar. Indeed, opposer has established
its use of IMPACT SPORTS for sports-related clothing, and
applicant intends to offer “work-out gloves,” which are also
sports-related clothing, under an identical mark. Applicant
does not deny that at least some of the goods in its Class
25 application are identical to some of opposer’s goods, or
that the goods in its Class 28 application are at least
related to some of opposer’s goods. As opposer points out,
even if opposer does not use its mark on any goods in Class
28, that is irrelevant. Jean Patou Inc. v. Theon Inc., 9
F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (“The
Opposition Nos. 91178693 and 91178694
12
benefits of a Principal Register registration apply with
respect to the goods named in the registration without
regard to the class or classes named in the registration.”).
There is therefore no genuine issue of material fact that
the parties’ goods are in some respects identical, and in
other respects at least related. This factor therefore also
weighs in favor of a finding of likelihood of confusion.
Finally, where, as here, “there is no limitation on the
channels of trade” in the recitations of goods in the
applications at issue, it is presumed that the goods move in
all normal channels of trade, as do opposer’s. See, e.g.,
Octocom Systems, Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, 81
USPQ2d 1887, 1893 (TTAB 2007). Therefore, this factor also
weighs in favor of a finding of likelihood of confusion.
There is no evidence of record bearing on DuPont
factors other than those discussed herein.
Conclusion
Because we find, based on opposer’s uncontradicted
evidence and the applicable law, that the parties’ marks are
identical and the goods are identical in part and otherwise
highly related, because we must presume that the channels of
trade are the same, and because applicant has failed to
introduce any evidence whatsoever which would raise a
Opposition Nos. 91178693 and 91178694
13
genuine issue of material fact, we find that opposer has
established likelihood of confusion as a matter of law.
Accordingly, opposer’s motions for summary judgment are
GRANTED. The oppositions are sustained.
News from the TTAB
The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
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