Ironman Magazinev.World Triathlon Corporation

Trademark Trial and Appeal Board

Jan 12, 2009

No. 91167894 (T.T.A.B. Jan. 12, 2009)

Hearing: Mailed:
October 24, 2008 January 12, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ironman Magazine

v.

World Triathlon Corporation
_____

Opposition No. 91167894
to application Serial No. 76521771
filed on June 10, 2003
_____

Joan Optican Herman and Cheryl L. Burbach of Hovey Williams
LLP for Ironman Magazine

Joseph J. Weissman of Johnson, Pope, Bokor, Ruppel & Burns,
LLP for World Triathlon Corp.
______

Before Sams, Chief Administrative Trademark Judge, Seeherman
and Rogers, Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Ironman Magazine, a California partnership, has opposed
the application of World Triathlon Corporation to register
IRONMAN and design, as shown below, as a trademark for the
following goods:
Adult nutritional supplements in powder,
liquid and bar form; food and vitamin
supplements; dressings, namely, wound
dressings and adhesive bandages; wound
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91167894
2
treatment remedies, namely medical
cleansers in the form of creams, sprays,
antibiotics; corn creams, lotions and
ointments; blister creams, lotions and
ointments; callus creams, lotions and
ointments; athletes’ foot preparations
including powder, lotions and creams.1

Opposer has brought this proceeding on the ground of
likelihood of confusion, alleging that opposer and its
predecessor in interest have, since 1936, used the marks
IRON MAN and IRONMAN in connection with the business of
publishing and distributing a magazine directed to the
bodybuilding and weight training industry; that since prior
to applicant’s claimed date of first use of September 1998,
opposer has sold weight training equipment and accessories,
bodybuilding equipment and accessories, weight training
videos, booklets and other publications directed to
nutrition, training and supplementation, and other health,
fitness and nutritional products, marketed under opposer’s
marks; that opposer, through its IRON MAN magazines and its
on-line retail business HOME GYM WAREHOUSE and its
www.ironmanmagzazine.com website, has used opposer’s marks
in connection with the sale of health and nutritional

1 Application Serial No. 76521771, filed June 10, 2003, based on
a claimed date of use and use in commerce as of September 1998.
Opposition No. 91167894
3
products and supplements, marketed under opposer’s brand
MUSCLE-LINC [sic]; that opposer has used the mark IRON MAN
TRAINING AND RESEARCH CENTER for ten years as a column in
its IRON MAN magazine and as a research facility directed to
issues of training and nutrition; that opposer’s marks are
inherently distinctive; and that applicant has appropriated
the whole of opposer’s mark in the word portion of its mark.
In its answer applicant has admitted that opposer’s
IRONMAN mark consists of the same word as applicant’s
IRONMAN mark, and has otherwise denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the testimony, with
exhibits, of John Balik, the managing partner of opposer and
the publisher of its magazine and of Benjamin Fertic,
president of applicant. During its main testimony period
opposer made of record, by notices of reliance, various
printed publications. Trademark Rule 2.122(e). During its
rebuttal testimony period opposer also submitted, under a
notice of reliance, applicant’s responses to opposer’s
interrogatories and requests for production of documents.
It should be noted that documents produced in response to
document production requests cannot be made of record by
notice of reliance, see Trademark Rule 2.120(j)(3)(ii).
However, the responses submitted by opposer do not include
any produced documents; rather, they merely contain
Opposition No. 91167894
4
objections to particular document production requests, or
statements that the documents will be produced. Further,
applicant has specifically stated in its brief that the
notice of reliance forms part of the record. Accordingly,
we have treated the materials submitted with the notice of
reliance as being of record. Applicant has submitted, under
a notice of reliance, opposer’s responses to applicant’s
first set of interrogatories, and status and title copies of
certain of applicant’s registrations, as set forth below:2

for
deodorants, antiperspirants, deodorant
body sprays, non-medicated deodorant and
antiperspirant wipes;3
watches and chronometers sold in
association with contests consisting of
running, biking and swimming;4
entertainment services, namely,
presentation of athletic contests
featuring running, swimming and biking;5

IRONMAN TRIATHLON
with “triathlon” disclaimed,
for

2 Additional registrations were introduced during the testimony
deposition of Benjamin Fertic.
3 Registration No. 2787455, issued November 25, 2003.
4 Registration No. 2350149, issued May 16, 2000; Section 8 & 15
affidavits accepted and acknowledged.
5 Registration No. 1353313, issued August 6, 1985; Section 8 &
15 affidavits accepted and acknowledged; renewed.
Opposition No. 91167894
5
sun block, perfumes, cologne, skin
lotions, personal deodorant, body and
massage oils, marketed in association
with contests consisting of running,
biking and swimming;6
clothing, namely, shirts, shorts, hats,
shoes, headbands and wristbands, pants,
pajamas, belts and sweatshirts marketed
in association with contest consisting
of running, biking and swimming;7
entertainment services namely arranging
and conducting athletic competitions
consisting of running, swimming and
biking;8

IRONMAN TRIATHLON
(without disclaimer)
for
non-carbonated soft drinks, namely,
bottled water9; and

(with “nutrition” disclaimed)
for

food and vitamin supplements.10

6 Registration No. 2384055, issued September 5, 2000; Section 8
& 15 affidavits accepted and acknowledged.
7 Registration No. 1705114, issued August 4, 1992; Section 8 &
15 affidavits accepted and acknowledged; renewed.
8 Registration No. 2869852, issued August 3, 2004.
9 Registration No. 2571690, issued May 21, 2002. Office records
do not indicate that a Section 8 affidavit has been filed as yet.
However, because the Office does not cancel registrations for
failure to file a Section 8 affidavit until it can be determined
that the affidavit was not filed within the grace period, which
expired in this case on November 21, 2008, we have treated the
registration as still being in effect. In any event, whether or
not the registration is in effect does not affect our decision in
this proceeding.
10 Registration No. 2325508, issued March 7, 2000; Section 8 & 15
affidavits accepted and acknowledged.
Opposition No. 91167894
6
The proceeding has been fully briefed, and both parties
were represented at an oral hearing before the Board.11
IRON MAN Magazine was started in 1936 by Peary and
Mabel Rader, and it is the oldest bodybuilding magazine in
the world in continuous publication. In 1986 opposer became
the owner of the magazine. Opposer’s witness, John Balik,
frequently used the word “I” when testifying about the
transaction, so it is not entirely clear whether the
transfer of the entire business was made to opposer,
consisting of Mr. Balik and his partners, or to Mr. Balik
himself. For example, Mr. Balik testified:
In 1986 on its 50th anniversary myself
and partners purchased it [the magazine]
from [Peary Rader] and 21 years later,
here we are. p. 17

And in August of ’86, I believe, I have
to go back to the contract, I think it
was August 4th of ’86, I signed the
contract, and we got our first issue
out. The magazine was being created by
my partner and I, the two of us, and one
freelance art person…. p. 23

What I purchased [from the Raders] was
the subscription list, all the
copyrighted material within the
magazine. There were a great deal of
back issues, there was equipment. Iron
Man placed all kinds of – they were very

11 Both parties filed portions of their testimony and exhibits as
confidential, and also filed confidential as well as redacted
copies of their briefs. We note that some of the information
that has been redacted from the briefs is not based on evidence
that was submitted under seal. Because the parties were quite
specific as to what portions of the testimony depositions and
exhibits were filed under seal, we have treated as confidential
only that specifically identified information.

Opposition No. 91167894
7
big in the barbell and equipment
business at that point. And, of course,
good will. p. 23-24

Of record is an assignment document, executed on October 7,
1986, stating that pursuant to the agreement for the sale of
business between Peary and Mabel Rader to John Balik and his
wife, Stephanie Bier, the Raders assigned the trademark IRON
MAN, along with the goodwill of the business. There is also
an assignment from Mr. Balik and Ms. Bier assigning nunc pro
tunc December 1, 1986 the trademark IRON MAN to the
California partnership known as “Ironman Magazine.” Thus,
at the very least, the documents of record and testimony
reflect that the trademark IRON MAN was transferred from the
Raders, the original owners, and that it became the property
of opposer, via Mr. Balik, the managing partner of opposer.
When the Raders published the magazine, IRON MAN was
depicted as two words. During the 20-plus years that
opposer has been the publisher the mark has changed
slightly, so that it appears sometimes as a single word,
IRONMAN; sometimes with the elements IRON and MAN in
slightly different sizes, so that it gives the impression of
two words although there is no space between them; and
sometimes as two words. Currently the magazine uses IRON
MAN as two words on the front and as one word on the back.
In our findings of fact we have attempted to reflect the
usage shown on the exhibits for the relevant time.
Opposition No. 91167894
8
According to Mr. Balik, at the time opposer purchased
the publication, IRON MAN had a worldwide reputation within
the world of bodybuilding. Opposer increased the
circulation from 3500 copies published bimonthly to a
current monthly publication averaging 175,000 copies. The
magazine’s readership is primarily people who lift weights
and train seriously. Opposer promotes IRON MAN magazine
through trade shows, in particular the annual trade show
associated with the International Federation of
Bodybuilders’ major event, the Iron Man Pro and Fit Expo,
which draws bodybuilders from all over the world. Opposer
has exhibited at this show for over 20 years. Opposer has
licensed the mark Iron Man Naturally for bodybuilding events
held around the country, and has been involved in contests,
including its predecessor-in-interest’s involvement with the
Mr. Ironman contest starting in 1954. Opposer has also
sponsored competitive bodybuilding television programs.
Opposer has a website, www.ironmanmagazine.com. In
addition, opposer advertises IRON MAN subscriptions and
booklets through an affiliate program using 4000 websites.
Opposer also advertises its books and videos, discussed
below, in third-party bodybuilding magazines.
In addition to the magazine, opposer produces a weekly
electronic newsletter, IRON MAN TRAINING E-ZINE, which is
distributed to 40-50,000 people. Opposer also produces
Opposition No. 91167894
9
booklets or bulletins on training, e.g., “Ironman’s 10-
Minutes to Granite Abs,” © 1996 (Balik Exhibit 7) and
“Ironman Bulletin #1 10-Week Size Surge A Crash Course for
Packing on Muscle Weight,” © 1995 (Balik Exhibit 8). In
addition, opposer sells IRONMAN Videos, e.g., “Ironman’s
Critical Chest & Delts,” January 1996 (Balik Exhibit 9) and
IRONMAN clothing such as jackets, muscle shirts, hooded
fleece and denims. Opposer began selling videos and
clothing at least as early as 1995 and still sells them.
During the Raders’ ownership of the magazine they
advertised and sold Iron Man Barbells and Iron Man training
equipment such as gym benches, calf machines and squat
racks. See Balik exhibit 5, IRON MAN magazine July 1968
issue. 12 They also used the mark on belts and straps.
Opposer continued to sell training equipment, in particular,
plates, after it took over the magazine. The ads clearly
show that the items are being ordered from “Ironman
Products.” However, although opposer still has in stock
barbells or weights with the IRON MAN logo on them, opposer
had not sold any in the two-to-three years prior to Mr.
Balik’s deposition, and does not actively advertise them.

12 The advertisement states that the equipment should be ordered
from “Body Culture Equipment Co.” in Alliance, Nebraska. Other
ads on the same page show this same address for Iron Man
Magazine. The ad copy says that these products are being
presented to “readers of Iron Man.”
Opposition No. 91167894
10
Opposer also sells and endorses nutritional
supplements. The Raders began writing about the importance
of nutrition in the 1950s, and opposer has continued to
include articles about supplements and nutrition. It runs a
feature in its magazine called Ironman Research and Training
Center in which it reviews products, primarily food
supplements, and also produces booklets or bulletins on
nutrition. See Balik Exhibit 10, “IRONMAN Magazine Special
Report Eat to Grow.” Companies can and do advertise
opposer’s endorsements of their products by reprinting the
magazine articles.
Opposer’s predecessor sold protein supplements under
the IRON MAN mark in the 1950s or early 1960s, but this
stopped in 1963-64. Since at least 1995 opposer has sold
supplements, but uses the mark MUSCLE-LINK rather than IRON
MAN. Opposer did so in order not to offend companies that
advertise their own nutritional supplements in IRONMAN
magazine, since the magazine gets much of its revenue from
supplement advertisements.
On November 15, 1986, shortly after the transfer of the
Raders’s business to Mr. Balik and Ms. Bier, Mr. Balik and
Ms. Bier entered into an agreement with the Hawaiian
Triathlon Corporation, applicant’s predecessor-in-interest,
in order to settle an opposition brought by Peary Rader and
a cancellation proceeding brought by Balik and Bier against,
Opposition No. 91167894
11
respectively, an application and a registration owned by
Hawaiian Triathlon Corporation. By this agreement Balik and
Bier agreed to withdraw their petition to cancel
Registration No. 1353313, which registration is for the same
mark at issue herein, for presentation of athletic contests
featuring running, swimming and biking, and Hawaiian
Triathlon Corporation agreed to abandon its application for
this mark for items of clothing. The agreement further
provided that
each party can market sportswear and
other goods relating respectively to
body building on the one hand and
[applicant’s] triathlon events on the
other under the respective marks IRON
MAN accompanied by the words “The World
of Body Building” or IRON MAN MAGAZINE
and IRONMAN TRIATHLON and that each
party has the right to register its said
mark for such goods.
¶3.
Applicant runs triathlon competitions. The triathlon
competition started in 1978 in Hawaii, and has been held on
an annual basis since then. In 2007 there were 1700
participants, and the event is so popular that there are
qualifying races which draw a total of 60,000 participants.
The championship race has been broadcast on television
since 1980, first on ABC and then NBC, and since the early
1990s the various races are also shown on cable networks
such as ESPN, as well as on local stations and through the
Internet. In addition, since 2005 NBC has broadcast a
Opposition No. 91167894
12
second triathlon held in Clearwater, FL. Millions of
viewers have seen the events. The triathlons have also
received publicity in print media such as “Sports
Illustrated,” “The New York Times” and “USA Today,” and
through applicant’s own website and the websites of others.
Applicant has licensed its IRONMAN marks for numerous
items, including watches, bicycles, fitness equipment and
nutritional supplements. Since 2003 it has entered into
agreements with approximately 30 licensees. Other companies
are sponsors of the race, and advertise this fact; for
example, Nabisco puts this information on its Fig Newton
packages. As of April 1996 one of applicant’s licensees
sold PR IRONMAN TRIATHLON energy bars, and in 1998 its
licensee Twinlab first shipped TWINLAB IRONMAN TRIATHLON
nutrition products.
Applicant has existing registrations for the “M-Dot
IRONMAN” mark, which is the way applicant refers to the mark
that is the subject of the instant application, for various
goods.
Before turning to the question of likelihood of
confusion there are some preliminary matters we must
address. In its brief applicant has contended that the
chain of title for IRON MAN MAGAZINE is “murky.” P. 11.
Although applicant states that “there is no dispute that
Peary and Mabel Rader were the creators and original owners
Opposition No. 91167894
13
of Iron Man Magazine, … [and] that the Raders assigned Mr.
Balik and his wife Stephanie Bier the trademark “Iron Man”…
on October 7, 1986,” brief, pp. 10-11, and notes Mr. Balik’s
testimony that Mr. Balik and his partners Michael Neveux,
Irving Bier, Sydney Bier and Mario Gambetta bought Iron Man
Magazine in 1986, applicant suggests that Mr. Balik and his
wife never transferred title of Iron Man Magazine to
opposer. Applicant bases this claim on the fact that Mr.
Balik and his wife executed a nunc pro tunc assignment of
the mark to opposer effective December 1, 1986. As a
result, applicant appears to contend that the business was
sold to opposer in October 1986, but the trademark was not
assigned to opposer until December 1986, so that there was a
gap of two months during which the business and the
trademark were separated. Applicant also suggests another
scenario, that although Balik and Bier assigned the mark to
opposer, because no document is of record in which they
assigned the business, the business and the mark have been
“separated” since 1986. Applicant also contends that there
is no evidence that opposer, a partnership, exists at all.
We point out that applicant never raised these issues
in its answer. Although opposer clearly has the burden to
prove its prior use of the unregistered trademark IRON MAN
in order to succeed on its claim of likelihood of confusion,
opposer has met this burden by its testimony and exhibits
Opposition No. 91167894
14
that the magazine IRON MAN was published by opposer prior to
applicant’s claimed first use. By waiting until its brief
to raise questions about opposer’s reliance on the Raders’
prior use, applicant has denied opposer the opportunity to
present evidence to respond to these questions. We note
that during the cross-examination of opposer’s witness, John
Balik, applicant’s counsel questioned Mr. Balik about the
nunc pro tunc assignment, but these questions were not
sufficient to put opposer on notice that applicant was
suggesting that there was an assignment in gross because
opposer was publishing the magazine when the trademark was
owned by Mr. Balik and his wife. Nor did applicant’s
counsel’s questions about when various partners left the
partnership put opposer on notice that the existence of this
partnership or opposer’s ownership of the business was being
called into question. Thus, we do not consider the issue of
an assignment in gross or ownership of the mark to have been
tried.13
We also clarify that the issue of whether applicant had
the right to file the subject application, or was precluded
by contract from doing so, is not before us. Although, as

13 We also point out that Mr. Balik has at all times been the
managing partner of opposer. Thus, even if there were a gap
between Mr. Balik and his wife obtaining the trademark from the
Raders and then transferring it to opposer, Mr. Balik was clearly
exercising control over the use of the trademark since the
business and trademark were assigned by the Raders.

Opposition No. 91167894
15
noted above, there was a 1986 agreement between the parties
which specifically provided applicant with the right to
market sportswear and other goods relating to its triathlon
events under the mark IRONMAN TRIATHLON and the right to
register its mark for such goods, opposer did not raise as a
ground for opposition that the agreement prevents applicant
from using or registering the applied-for mark for goods or
services other than the presentation of athletic contests
featuring running, swimming and biking. Nor, despite
questions directed to Mr. Balik regarding opposer’s
knowledge of applicant’s use of IRONMAN for energy bars and
weight training equipment, and applicant’s submission of
registrations for IRONMAN marks for such goods, is there any
issue of laches. This defense was not raised; further,
since this proceeding was brought during the opposition
period, laches would not apply. See National Cable
Television Association Inc. v. American Cinema Editors Inc.,
937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991).
Thus, the sole ground we consider here is that of
priority and likelihood of confusion.
First, we find that opposer has demonstrated its
standing by its evidence regarding its use of the trademark
IRON MAN and variations thereof. See Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
Opposition No. 91167894
16
As for priority, as noted above, there is some
testimony that opposer’s predecessor used the mark IRON MAN
for nutritional supplements in the 1950s and early 1960s.
However, this use ended substantially before opposer took
over the business in 1986, and any rights that might have
accrued with respect to these goods were long ago abandoned.
Thus, opposer’s rights in terms of establishing its priority
rest on its use of the mark for publications. There is no
question that opposer, through its predecessor-in-interest,
has used the mark IRON MAN since 1936 for a magazine. This
is substantially earlier than any date on which applicant
can rely for the use of its applied-for mark for its
identified goods.
With respect to the issue of likelihood of confusion,
this case presents a somewhat unusual situation in that the
parties involved have both used similar marks for a number
of years. In the early years of their coexistence, their
activities were devoted to somewhat different audiences, and
were somewhat limited, and in 1986 they entered into a
coexistence agreement, presumably in recognition of that
fact. However, through the years both parties, and in
particular applicant, have expanded the goods and services
in connection with which they use their marks, and the marks
themselves have undergone some changes. We must therefore
consider whether the mark applicant now seeks to register,
Opposition No. 91167894
17
as used on the goods that are the subject of its involved
application, is likely to cause confusion with the mark and
goods for which opposer has rights. In reaching this
decision, we must consider the evidence that is relevant to
the factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003).
Turning first to the goods, opposer has shown that it
has prior rights in the mark IRON MAN for a magazine devoted
to bodybuilding. There are, obviously, differences between
magazines and the nutritional and medicinal products that
are identified in applicant’s application. However, it is
not necessary that the goods or services of applicant and
the registrant be similar or competitive, or even that they
move in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
respective goods or services are such that they would or
could be encountered by the same persons under circumstances
that could, because of the similarity of the marks, give
rise to the mistaken belief that they originate from the
same producer. See In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Opposer has focused its claim of likelihood of
confusion on applicant’s use of its mark for nutritional
Opposition No. 91167894
18
supplements. Because likelihood of confusion must be found
if there is likely to be confusion with respect to any item
that comes within the identification of goods in the
application, see Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981), we too
limit our discussion of applicant’s goods to nutritional
supplements. Opposer has shown that nutritional supplements
are related to bodybuilding magazines. The readers of
bodybuilding magazines are interested in nutrition and
nutritional supplements, and opposer’s magazine and
ancillary publications contain articles on or are devoted to
nutrition, including discussing and endorsing nutritional
supplements. Many of the advertisements in the magazine are
for nutrition products. Thus, the magazine and nutritional
supplements are complementary in nature, and the purchasers
are the same.
Further, the record shows that through the years
opposer has sold goods connected with bodybuilding, thus
showing the related nature of such goods and the
publication. For example, opposer has sold, under the mark
IRON MAN or IRONMAN, weight plates and bodybuilding/
weightlifting videos. Moreover, opposer produces both
magazines and nutritional supplements, thereby showing that
both products can emanate from a single entity. It is true
that opposer does not use the same mark for its supplements
Opposition No. 91167894
19
as it does for its magazine, but this is not because
customers would not associate both types of products with a
single source. On the contrary, it is because the mark IRON
MAN for supplements is likely to cause people to view the
goods as emanating from the publisher of IRON MAN magazine
that opposer has chosen to use a different mark for its
supplements, in order not to jeopardize its advertising
revenue from third-party supplement manufacturers. In this
sense, opposer has not merely asserted a theoretical belief
in confusion in order to succeed in this opposition
proceeding. Rather, many years prior to bringing this
proceeding, opposer’s adoption of a different mark from its
IRON MAN magazine mark for its nutritional supplements
manifested its belief that consumers would view bodybuilding
magazines and nutritional supplements marketed under the
same mark as coming from a single source.
In The Conde Nast Publications Inc. v. Vogue Travel,
Inc., 205 USPQ 579 (TTAB 1979), which involved the question
of whether VOGUE for travel agency services was likely to
cause confusion with VOGUE for magazines, the Board
identified four types of situations in which magazines and
goods and services were found to be related. One such
situation exists when the goods or services of the defendant
are of a type normally featured in the plaintiff's magazine
and/or there is some type of advertising tie-in between
Opposition No. 91167894
20
goods or services of this type and the magazine. That is
certainly the situation here. See also In re Cruising
World, Inc., 219 USPQ 757 (TTAB 1983), in which CRUISING
WORLD for outlet services for yachts and marine accessories
was found likely to cause confusion with CRUISING WORLD for
magazines. Applicant attempts to distinguish the VOGUE case
on the basis that the plaintiff’s mark therein was well-
known. First, although we do not find opposer’s mark to be
famous, as discussed infra, the evidence is sufficient to
show that it is well-known in the bodybuilding world.
Second, the same result obtained in the Cruising World case,
and there was clearly no evidence in that ex parte decision
with respect to sales or advertising of the registrant’s
mark. Applicant tries to distinguish the latter case on the
basis that applicant’s goods appeal to a different audience
than does opposer’s magazine. However, applicant’s goods
are nutritional supplements, and it is clear from the
articles and advertisements in opposer’s publications that
nutritional supplements are of interest to opposer’s
customers.
The du Pont factor of the relatedness of the goods
favors a finding of likelihood of confusion.
The next du Pont factor we consider is the strength of
opposer’s mark. Opposer and/or its predecessors have used
the mark IRON MAN for a bodybuilding magazine for over 70
Opposition No. 91167894
21
years, and the testimony is that this mark is well-known in
the world of bodybuilding. While we conclude from this
evidence that the mark is strong and well known in this
limited area, we find that the mark has not achieved the
notoriety of a famous mark. In reaching this conclusion we
recognize that the proper legal standard for evaluating the
fame of a mark under the fifth du Pont factor is the class
of customers and potential customers of a product or
service, and not the general public. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005). However,
because the record does not give us any context for
opposer’s circulation figures, or otherwise provide
objective evidence of the recognition of the mark, we cannot
conclude that the mark is famous. In saying this, we are
mindful of the great weight to which a famous mark is
entitled, and therefore the requirement that fame be clearly
proven.
Applicant has submitted substantial evidence as to the
fame of its various IRONMAN marks. This evidence is not
relevant to the du Pont factor of fame, since that factor
refers to “the fame of the prior [i.e., opposer’s] mark.”14

14 Despite applicant’s assertion that it is the prior user
because it is the first user of an IRONMAN mark on nutritional
supplements, it is clear that opposer is the first user of the
mark IRON MAN, with such use being for magazines.

Opposition No. 91167894
22
Great weight is given to a famous mark of the senior user in
order to discourage junior users from adopting a similar
mark and getting a free ride on the efforts that the senior
user has expended.
A competitor can quickly calculate the
economic advantages of selling a similar
product in an established market without
advertising costs. These incentives
encourage competitors to snuggle as
close as possible to a famous mark.
This court's predecessor recognized that
a mark's fame creates an incentive for
competitors “to tread closely on the
heels of [a] very successful trademark.”

Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992) (citation
omitted). However, applicant has not pointed to any case
law where the fame of the junior user’s mark plays a similar
role. Thus, we consider applicant’s evidence of fame in
terms of the factor of the similarity of the marks, since it
is essentially applicant’s position that its mark is so
well-known that consumers who view the IRONMAN and M Dot
mark on nutritional supplements will associate it with
applicant rather than opposer.
Opposer’s IRON MAN mark, whether it is viewed as one or
two words, is extremely similar to applicant’s mark. The
marks are identical in pronunciation and connotation. As
for appearance, the presence or absence of a space between
IRON and MAN does not serve to distinguish the marks.
First, there is evidence that opposer used the mark as one
Opposition No. 91167894
23
word before applicant’s adoption of its applied-for mark for
nutritional supplements. More importantly, even if we
consider opposer to have rights only in the two word form of
its mark, consumers are not likely to note or remember that
applicant’s mark is one word or differentiate the marks on
this basis.
Applicant’s mark also contains a dot over the “M” in
IRONMAN. Although the marks at issue must be considered in
their entireties, it is well-settled that one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). In this case, it is clearly the word
IRONMAN which is the dominant feature of applicant’s mark.
Many customers are likely not to notice the dot over the M
in applicant’s mark, or will see the dot only as a
meaningless shape, and will view the “M” as just a letter,
rather than a human figure, such that the mark as a whole
will be perceived only as IRONMAN in block letters.
Although consumers who compare the marks side-by-side are
likely to note that there are differences between them, that
is not the test. Rather, the question is whether the marks
are sufficiently similar in their entireties such that
confusion as to the source of the goods offered under the
Opposition No. 91167894
24
respective marks is likely to result. Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323
(TTAB 2007). Further, even if some consumers recognize the
combination of the M and the dot as forming an abstract
design of a human figure, the design merely reinforces the
meaning of the word IRONMAN, a significance that is equally
applicable to opposer’s mark IRON MAN for a magazine for
bodybuilders. Therefore, the marks convey the same
commercial impression, and the design element in applicant’s
mark does not serve to distinguish the marks.
In this connection, the evidence of record is
insufficient for us to conclude that the dot with the M
design is so well-recognized by the consuming public that
they will distinguish applicant’s mark from opposer’s
essentially by the dot alone. In its brief applicant quotes
its witness’s testimony that applicant has “spent millions
of dollars advertising not only just the [M-Dot IRONMAN
logo] but the M-Dot as well, separately and together.”
Brief, p. 26. The quoted language was in response to the
question, “Do you see any confusion with any Ironman-branded
product, as the Ironman mark appears [in the drawing of the
subject application] and Ironman Magazine?” and the response
was made as part of the expression of a general opinion on
the issue of likelihood of confusion. The response does not
provide any details regarding applicant’s advertising of the
Opposition No. 91167894
25
M Dot alone, nor do the exhibits of record show such usage
of the M Dot per se in advertising that we can conclude that
the M Dot alone is a recognized mark for any of opposer’s
products and services, let alone nutritional supplements.
Further, although applicant has certainly received a
great deal of publicity for its triathlon events, the
newspaper and magazine articles that have been submitted
show the mark as IRONMAN, without any special font and
without the dot design. We acknowledge that many of
applicant’s licensed products use IRONMAN with the dot, but
we cannot determine the sales numbers for the products using
this form of the mark We note that applicant’s witness
testified that in 1996 retail sales of its products were
over $150 million, and are currently more than $300 million,
but these figures are not broken down by the specific form
of the IRONMAN mark used on the products. We also note that
applicant’s witness testified that the marks used on
particular products were the same mark as that applied for
herein, but there are several instances in which those marks
are not the same. See, for example, Fertic Exhibit 12,
Bates 3960; Mr. Fertic testified that the mark shown in the
exhibit was the same as the IRONMAN mark that is the subject
of this opposition, but in fact the mark is IRONMAN
TRIATHLON NUTRITION (with a dot above the M). As a result,
we cannot accept Mr. Fertic’s statements that the sales
Opposition No. 91167894
26
figures show use of the mark which is the subject of the
present application. Moreover, we cannot determine to what
extent these sales figures represent goods with which the
consumers of nutritional supplements would come into contact
and thereby see the mark. For example, applicant has
registered its marks for such items as machine parts, namely
linear ball and roller bearing slides (Reg. No. 2261283);
gear boxes and gear motors for use in connection with
electric motors and use in machines and with industrial
machinery (Reg. No. 2811990); power-operated master/slave
manipulator arm used in industry (Reg. No. 3300397); and
safety protection apparel and products used during welding
or construction (Reg. No. 2644971).
Further, the record does not show that the IRONMAN with
Dot design is well-known for nutritional supplements, and it
is for nutritional supplements that applicant is attempting
to register its mark. Applicant’s witness “guessed” that in
the 11-year period starting in 1996 sales of IRONMAN-branded
nutritional supplements were $60-70 million. However, many
of the exhibits depict the mark variously as the IRONMAN and
Dot design with the word TRIATHLON or with the words SPORTS
NUTRITION SYSTEM.
Even if we could say that the IRONMAN with Dot design
had achieved fame for triathlon contest exhibitions, and
while the fame of a mark may give it a greater scope of
Opposition No. 91167894
27
protection against later users, a later user may not build
up its mark in order to take away rights from an earlier
user, or use the fame the later user has built up in one
area to expand into goods that are related to those of an
earlier user, thereby limiting the scope of protection to
which that earlier user is entitled.
After considering the marks as a whole, we find that
the slight differences in appearance do not outweigh the
identical sound, connotation and commercial impression of
the marks. This du Pont factor favors a finding of
likelihood of confusion.
The next du Pont factor discussed by the parties is the
similarity of channels of trade. Because opposer is relying
on its common law rights, we cannot assume that its goods
travel in all appropriate channels of trade for such goods,
as we would if opposer were relying on a registration.
Thus, we must look at the evidence as to the channels of
trade through which opposer distributes its magazines. That
evidence is limited to the testimony about the circulation
of the magazines, as well as the electronic distribution of
its newsletters and its websites. There is no evidence that
the magazines are sold in drugstores or supermarkets where
nutritional supplements might be sold. However, there is
evidence that opposer advertises nutritional supplements in
its magazines, and therefore the customers for both products
Opposition No. 91167894
28
are not only the same, but they are exposed to both products
at the same time. As a result, they are likely to make a
connection between opposer’s magazine and nutritional
supplements sold under a confusingly similar mark, even
though the nutritional supplements and the magazines are not
sold together. Accordingly, we find that this du Pont
factor favors opposer, but only slightly.
With respect to the conditions of purchase, applicant
points out, and we agree, that much of opposer’s arguments
are based on speculation rather than evidence.
There is no evidence in the record as to
whether the goods at issue here are
expensive or inexpensive. Nor is there
any evidence as to the care given by
consumers of nutritional supplements to
their choice of products.

Applicant’s brief, p. 29. In view thereof, we treat this du
Pont factor as neutral.
There is no evidence of third-party use of IRON
MAN/IRONMAN marks. The existence of third-party uses
normally favors the defendant; therefore in the absence of
such evidence we treat this du Pont factor as neutral.
With respect to the factors of actual confusion or the
lack of evidence of actual confusion, we give no probative
value to the anecdotal testimony of opposer’s witness about
misdirected telephone calls. As for applicant’s argument
that the lack of evidence of actual confusion is highly
probative, we are not persuaded by this argument. Applicant
Opposition No. 91167894
29
points to the fact that its IRONMAN-branded products have
been sold since 1996 at major retail outlets such as Wal-
Mart and GNC, and that it has made significant sales.
However, as noted above, many of the nutritional supplements
do not bear the mark IRONMAN and Dot design per se, but
include other wording, including the word TRIATHLON. As
shown by the 1986 agreement between the parties, applicant
was permitted to use IRONMAN for non-triathlon goods and
services if the word TRIATHLON were included in the mark;
therefore, it is clear that the parties believed that the
presence of this word would avoid confusion. We also note
that many of the exhibits show additional source marks on
the nutritional supplements, such as TWINLAB IRONMAN
TRIATHLON and PR’S IRONMAN TRIATHLON, which may also have
avoided any instances of confusion. As a result, we cannot
conclude that the lack of evidence of actual confusion shows
that confusion is not likely if applicant were to use the
applied-for IRONMAN and Dot design without additional source
indicia.
The only other point discussed by the parties is
opposer’s concern that applicant’s use of the mark could
result in safety issues that are outside opposer’s control.
Safety issues normally arise in connection with
pharmaceuticals because of the harm that can occur if the
incorrect medication is taken as a result of confusion of
Opposition No. 91167894
30
trademarks. We do not consider nutritional supplements to
be in this category. Opposer’s concerns about the negative
effect of applicant’s use on its reputation or sales is no
greater than that of any other trademark owner.
After considering all of the relevant evidence and
arguments, we find that applicant’s use of its applied-for
IRONMAN and Dot design for nutritional supplements is likely
to cause confusion with opposer’s mark IRON MAN for
bodybuilding publications. In reaching this conclusion we
have resolved any doubts, as we must, in favor of opposer,
which began using its mark approximately 70 years prior to
applicant’s use of its mark on the identified goods.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937
(Fed. Cir. 1983).
Decision: The opposition is sustained.