Karamel Divaz MC, Inc.v.Leanda Regan, Daphne Kigler, Joanne Spivey

Trademark Trial and Appeal Board

Oct 19, 2018

No. 91228390 (T.T.A.B. Oct. 19, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: October 19, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Karamel Divaz MC, Inc.

v.

Leanda Regan, Daphne Kigler, Joanne Spivey
_____

Opposition No. 91228390
_____

Nakia V. Gray of Nakia Gray Legal PC,
for Karamel Divaz MC, Inc.
Leanda Regan, Daphne Kigler, Joanne Spivey,
pro se.
_____

Before Ritchie, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Leanda Regan, Daphne Kigler, and Joanne Spivey (“Applicants”) seek registration
on the Principal Register of the following word and design mark:

Opposition No. 91228390
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for “Charitable services, namely, providing community services to the local
communities in the nature of organizing and conducting volunteer programs and
community service projects for the local school system, hospitals and local food banks”
in International Class 35.1
Their application has been opposed by Karamel Divaz MC Inc. (“Opposer”), an
“organized motorcycle club”2 based in Waldorf, Maryland and incorporated under the
laws of the State of Maryland. Opposer’s Notice of Opposition alleges under Section
2(d) of the Trademark Act that the applied-for mark, as used in connection with the
identified services, so resembles Opposer’s previously used common law mark:

1 Application Serial No. 86681019 was filed on July 1, 2015, based upon Applicants’ allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act. The description of the mark states that “Color is not claimed as a feature of the mark.
The mark consists of … the wording ‘LET THE MELT DOWN’ which is centered at the top,
below which is the centered word ‘BEGIN’. Below which is a round circle with drippings of
melted chocolate and caramel on the bottom. Inside of the round circle at the top is a piece
chocolate candy broke in half with caramel dripping out of it. Below that is the word,
‘KARAMEL’. The letter ‘K’ is stylized as a lady, slightly bent over with hands on knees in a
K shape, below which is a motorcycle on a curvy road with caramel dripping out the back tail
pipe. Below that is the word, ‘DIVAZ’, the letter ‘I’ appears in lower case and has a drip from
the caramel to dot the i. At the bottom THE CIRCLE is a puddle of chocolate and caramel
mix. On the left side of the middle image is the letter ‘M’ and ON the right side of the middle
image is the letter ‘C’.”

References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket
system.
2 1 TTABVUE 4 (paragraph 1).
Opposition No. 91228390
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and the word marks KARAMEL DIVAZ MC and LET THE MELTDOWN BEGIN for
“charitable services, namely, facilitating administrative coordination among
charitable organizations; charitable services, namely, organizing and conducting
volunteer programs and community service projects; organizing chapters of a
motorcycle club and promoting the interests of the members thereof,” in International
Class 35, as to be likely to cause confusion or mistake, or to deceive.3 15 U.S.C. §§
1052(d), 1053. Opposer alleges that it has applied to register the mark

on the Principal Register for the services identified above, but that its application has
been suspended pending disposition of Applicants’ earlier-filed application.4
In their Answer, Applicants admit that they filed the subject Application, and that
Opposer owns pending Application Serial No. 87050844 to register its word-and-

3 Notice of Opposition ¶¶ 1-10, 1 TTABVUE 4-7.
4 Application Serial No. 87050844, filed on May 26, 2016, alleging use since November 3, 2005
and use in commerce since January 9, 2006. The description of the mark states that “The
color(s) brown, white, orange, cream, black and peach is/are claimed as a feature of the mark.
The mark consists of an outside circle in brown to resemble chocolate that is melting and
dripping at the bottom and forming a brown puddle beneath the image; a white ring is the
next interior color of the image with the center background done in orange; at the top of the
image is a chocolate covered caramel candy in brown and peach broken in the middle and
dripping a peach colored caramel followed by the name Karamel in a cream color, the letter
K makes use of a cream colored silhouette of a woman leaning over to form part of the letter
K, below is cream colored slash image with a peach colored caramel puddle and the image of
a red, black and white motorcycle, below this is the word Divaz in a cream color with the
peach color dripping down from above forming a peach color dot in the word Divaz.”
Opposition No. 91228390
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design mark, but otherwise deny the salient allegations of likelihood of confusion.5
We sustain the opposition.
I. The Record

The record includes the pleadings, Applicants’ application file,6 and Opposer’s
Notice of Reliance on the following exhibits:
1-2. Screen shots from the State of Maryland’s Business Express Entity Search
website showing Opposer’s date of formation and articles of incorporation;7
3-7. Listing of charity motorcycle ride events and community events organized by
Opposer in the years 2005-2008; publicity posters; correspondence regarding
charitable services; invoices;8
8-9, 11-13. Images from Opposer’s Facebook site depicting fundraising, as well as
other activities organized, conducted by, or participated in by Opposer;9
10. Webpage from “Outdoor Club Adventures” with information about motorcycle
clubs such as Opposer;10

5 Answer, ¶¶ 1-4, 4 TTABVUE 2. Applicants also raised the affirmative defenses of “unclean
hands, estoppel, and acquiescence based upon, in part, their ongoing use of the mark and
work in creation of same,” Answer ¶ 5, 4 TTABVUE 2, but these defenses were not pursued
at trial, and are therefore waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107
USPQ2d 1750, 1753 (TTAB 2013) aff’d 565 F. Appx. 900 (Fed. Cir. 2014); TBMP § 801.01.
6 Trademark Rule 2.122(b), 37 CFR § 2.122(b).
7 egov.Maryland.gov/BusinessExpress/EntitySearch/BusinessInformation/D11306834,
12/13/2017, 15 TTABVUE 8-11.
8 15 TTABVUE 12-110.
9 www.facebook.com/karamel.divaz/photos/a.1002881986410470.1073741825.100288
1953077140/1002894553075880/?type=3&theater 12/13/2017; www.facebook.com/karamel.
divaz/ 12/13/2017; 16 TTABVUE 2-5, 8-10.
10 outdoorclubadventures.com/clubs/onroad/motorcycle/md/waldorf/karamel-divaz-mc/
12/13/2017; 16 TTABVUE 6-7.
Opposition No. 91228390
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14, 16. Trademark Status and Document Retrieval (“TSDR”) record, including
specimens of use, for Opposer’s Application Serial No. 87050844;11
15. TSDR record for Applicants’ subject Application Serial No. 86681019;12
17. Pages from the Merriam Webster Dictionary;13
18. Copy of a cease and desist notice dated Dec. 29, 2015 from Opposer to Applicants.14
19-21. Membership contracts signed by Applicants, offered to show that they were
members of Opposer’s organization.15
22. Opposer’s bylaws.16
Opposer submitted a brief.
Applicants have not objected to any of Opposer’s evidence, have not introduced
any evidence on their own behalf, and have not filed a brief. We therefore consider
the submitted evidence for such probative value as it may have.
II. Standing
“Any person who believes that he would be damaged by the registration of a mark
upon the principal register…may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the grounds therefor….” 15
U.S.C. § 1063. To have standing under the statute, an opposer must show that it has

11 16 TTABVUE 11-14.
12 16 TTABVUE 15-18. It was unnecessary to include the file of the subject Application in
Opposer’s Notice of Reliance, as it is automatically of record.
13 www.Merriam-Webster.com, 12/13/2017, 17 TTABVUE 2-3, 16.
14 17 TTABVUE 17-18.
15 17 TTABVUE 19-25.
16 17 TTABVUE 26-44. Opposer could have strengthened its proof by submitting testimony
in addition to its Notice of reliance. See TBMP §§ 703.01(a), 704.08(c).
Opposition No. 91228390
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a real interest, i.e., a personal stake, in the outcome of the proceeding and a
reasonable basis for its belief that it will be damaged. Empresa Cubana Del Tabaco
v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert.
denied, 135 S. Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999). A claim of likelihood of confusion that “is not wholly without
merit,” including prior use of a confusingly similar mark, may be sufficient “to
establish a reasonable basis for a belief that one is damaged.” Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) quoted in Exec.
Coach Builders, Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1179 (TTAB 2017).
Here, Opposer’s pending trademark application has been suspended pending
resolution of Applicants’ subject application. Opposer thus has reason to believe that
it would be damaged by registration of Applicants’ applied-for mark, and has standing
to pursue this opposition. RxD Media, LLC v. IP Application Development LLC, 125
USPQ2d 1801, 1807 (TTAB 2018).
III. Priority
“Section 2(d) of the Trademark Act permits an opposer to file an opposition on the
basis of ownership of ‘a mark or trade name previously used in the United States …
and not abandoned.’” RxD Media v. IP Application Development, 125 USPQ2d at
1808. “In an opposition founded on section 2(d), the opposer must establish its own
prior proprietary rights in the same or a confusingly similar designation in order to
defeat the application.” T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879,
1881 (Fed. Cir. 1996). Section 2(d) challenges may be based either on ownership of a
registered mark (which is not implicated here) or prior use of an identical or similar
Opposition No. 91228390
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mark. Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1302 n.8 (TTAB 2015); see also
Herbko Int’l., Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed.
Cir. 2002) cited in Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1658 (TTAB
2014).
Applicants have submitted no evidence of use of their applied-for mark, and must
rely upon the filing date of their intent-to-use application, July 1, 2015, as their
constructive use date. See Trademark Act Section 7(c), 15 U.S.C. § 1057(c) (contingent
upon registration); see also Exec. Coach Builders v. SPV Coach, 123 USPQ2d at 1180;
Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009).
Opposer’s pending application, filed almost a year after Applicants’, provides no basis
for priority. Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1960 (TTAB
2008). Nor does the November 2005 date of first use alleged in Opposer’s application.
“The allegation in an application for registration, or in a registration, of a date of use
is not evidence on behalf of the applicant or registrant; a date of use of a mark must
be established by competent evidence.” Central Garden & Pet Co. v. Doskocil Mfg.
Co., Inc., 108 USPQ2d 1134, 1139 (TTAB 2013) (quoting Trademark Rule 2.122(b)(2)).
Opposer must instead prove prior use of one or more of its common law marks by
a preponderance of the evidence. Hydro-Dynamics Inc. v. George Putnam & Co. Inc.,
811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) (“the decision as to priority is
made in accordance with the preponderance of the evidence.”).
We must “look at the evidence as a whole, as if each piece of evidence were part of
a puzzle which, when fitted together, establishes prior use.” West Florida Seafood Inc.
v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (finding
Opposition No. 91228390
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priority of use of mark for restaurant services on the basis of three advertisements in
local newspapers, a Florida state service mark registration, three regulatory licenses,
and a food service inspection report) quoted in Kemi Organics, LLC v. Gupta, 126
USPQ2d 1601, 1605-06 (TTAB 2018). Because Applicants have not objected to the
admissibility of any of Opposer’s evidence, we exercise our discretion to consider each
piece of evidence and accord it whatever limited probative value it may merit, in the
course of fitting the puzzle together. See JSB Int’l, Inc. v. Auto Sound North, Inc., 215
USPQ 60, 60 n. 3 (TTAB 1982); Midwest Plastic Fabricators Inc. v. Underwriters
Laboratories Inc., 12 USPQ2d 1267, 1270 n. 5 (TTAB 1989) aff’d 906 F.2d 1568, 15
USPQ2d 1359 (Fed. Cir. 1990). See generally TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 704.07 (2018) (“Materials improperly offered under
37 C.F.R. § 2.122(e) may nevertheless be considered by the Board if the adverse party
(parties) does not object to their introduction or itself treats the materials as being of
record.”). “[B]ecause an opposition is akin to a bench trial, the Board is capable of
assessing the proper evidentiary weight to be accorded the testimony and evidence,
taking into account the imperfections surrounding the admissibility of such
testimony and evidence.” Grote Inds., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197,
1200 (TTAB 2018) (quoting U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537,
1540 (TTAB 2006)). “Accordingly, we have considered all of the items listed in
Opposer’s notice of reliance, and have accorded each of them whatever probative
value is appropriate.” Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs.,
Inc., 123 USPQ2d 1844, 1847 (TTAB 2017).
Opposer’s evidence indicates that it has indeed used its composite mark
Opposition No. 91228390
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and the word marks KARAMEL DIVAZ MC and LET THE MELT DOWN
BEGIN prior to Applicants’ constructive use date of July 1, 2015. Opposer’s formation
documents, available on the State of Maryland website, document its formation as a
corporation in 2006 under the name Karamel Divaz MC, nearly a decade before
Applicants’ constructive use date.17 Although “the mere act of incorporation, in itself,
does not establish … priority of use,” Liqwacon Corp. v. Browning-Ferris Inds., Inc.,
203 USPQ 305, 309 (TTAB 1979), this is just the first piece of the puzzle. In the years
after it incorporated, Opposer advertised its charitable and motorcycle club services,
as indicated by what appear to be Internet screen shots:

18

17 15 TTABVUE 8-11. See United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1046
(TTAB 2014) (incorporation documents are official records, admissible under Trademark
Rule 2.122(e)(1)).
18 15 TTABVUE 110.
Opposition No. 91228390
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19

20

19 16 TTABVUE 9.
20 16 TTABVUE 10.
Opposition No. 91228390
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21
These printouts, offered via Notice of Reliance, are admissible not for the truth of
the matters they contain, but for what they show on their face: that the relevant
public―motorcyclists and charitable contributors―may have been exposed to those
internet websites and therefore may be aware of Opposer’s advertised services.
Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011);
TBMP § 704.08(b). The advertisements thus show Opposer’s marks being used in
ways that serve the purpose of a service mark. As the Federal Circuit stated in West
Florida Seafood, where it found priority of use of a mark for restaurant services on
the basis of inter alia three advertisements in local newspapers:
As is evident, each of these advertisements shows the mark “FAST
EDDIE’S” used in association with restaurant services, and there can be
no question that a potential customer would have regarded these

21 17 TTABVUE 8. Opposer provided dates of access and URLs of the Internet web pages,
including its Facebook pages, in its Notice of Reliance. 15 TTABVUE 2-5. See 37 CFR §
2.122(e)(2), TBMP § 704.08(b) (Internet materials are admissible via notice of reliance in the
same manner as a printed publication in general circulation if their date of access and source
(URL) are provided). Because the exhibits appended to Opposer’s Notice of Reliance were not
individually numbered, it was sometimes difficult to match them to their description. If
Applicants had challenged Opposer’s submission, Opposer would have had to show with
greater precision that its exhibits advertising its services were available to the public. See
TBMP § 704.08(a).
Opposition No. 91228390
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advertisements as notices to the public that there was a restaurant
operating under the name “FAST EDDIE’S” at the advertised location at
the time that they were published. Particularly persuasive is that two of
these advertisements include maps showing the restaurant’s location,
and that the January 19 advertisement even includes coupons for use at
the restaurant.
. . .
[T]o establish use of a service mark, the mark must be “used or displayed
in the sale or advertising of services” in such a way as “to identify and
distinguish the services of one person . . . from the services of others and
to indicate the source of the services, even if that source is unknown.” 15
U.S.C. Section 1127….

31 USPQ2d at 1663 & n. 8.

Here, in like manner, Opposer’s printouts show its service marks in use,
advertising charitable and motorcycle club services at specific dates, times and
places, and showing participation in such events. Although the evidence is sparse, as
the Board noted in Kemi Organics, LLC v. Gupta, 126 USPQ2d at 1605, the pieces of
the puzzle fit together, and they are unchallenged and uncontroverted by Applicants,
who have submitted no evidence or argument to the contrary. Opposer has thus
established priority by a preponderance of the evidence for the services indicated
above.
IV. Likelihood of Confusion

We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575
U.S. __, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In the course
Opposition No. 91228390
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of applying the DuPont factors, we bear in mind the fundamental purposes
underlying Section 2(d), which are to prevent confusion as to sources and
relationships, and to protect mark owners from damage caused by registration of
confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189,
224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34
USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566.
We have considered each DuPont factor that is relevant, and have treated any
other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378,
78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc.,
114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for
which we have evidence, we focus our analysis on those factors we find to be
relevant.”). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more
or less weighty roles in any particular determination”). Two key considerations are
the similarities between the marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976); Primrose Retirement Communities, LLC v. Edward Rose Senior Living,
LLC, 122 USPQ2d 1030, 1032 (TTAB 2016).
A. Comparison of the Parties’ Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicants’ and Opposer’s marks as compared in their entireties, taking into account
Opposition No. 91228390
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their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ
at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). Opposer
contends that the marks are highly similar in terms of their visual, phonetic and
commercial impression,22 and we agree.
Visually, the entirety of Opposer’s word and design mark, on the left below, is
encompassed by Applicants’ proposed mark, on the right:

In fact, Opposer’s mark forms the centerpiece of Applicants’ applied-for mark,
conveying the same message “KARAMEL DIVAZ,” in the same stylized letters,
framed in the same circular “dripping chocolate/caramel” design. And since
Applicants do not claim color as a feature of their mark, that central word and design
logo could be depicted in the same colors as used in Opposer’s mark. In re Data

22 Opposer’s brief p. 18, 18 TTABVUE 19.
Opposition No. 91228390
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Packaging Corp., 453 F.2d 1300, 172 USPQ 396, 397 (CCPA 1972) (finding that just
as a word mark depicted in typed form may be displayed in any manner, “[s]imilarly,
it seems to us, there is no reason why an applicant should not be able to obtain a
single registration of a design mark covering all the different colors in which it may
appear, that is to say, not limited to a particular color”). See also TRADEMARK MANUAL
OF EXAMINING PROCEDURE (TMEP) § 807.14(e)(1) (October 2017) (“If a mark is
initially depicted in a black-and-white special form drawing in which no color is
claimed, the drawing is presumed to contemplate the use of the mark in any color,
without limitation.”).
Likelihood of confusion is often found where the entirety of one mark is
incorporated within another. In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY’S
PIZZA for restaurant services specializing in pizza and PERRY’S for restaurant and
bar services); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982)
(EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner).
Phonetically, the words “KARAMEL DIVAZ” would be pronounced the same in both
parties’ marks. Applicants’ addition of the words “LET THE MELTDOWN BEGIN”
merely serves to increase the similarity of the parties’ marks, as that is the common
law word mark that Opposer uses to reinforce the “melting caramel” appearance of
its word and design mark. Finally, the letters M and C, which stand for motorcycle
club, echo Opposer’s name, Karamel Divaz MC Inc.
Taking all of these elements together, the commercial impression engendered by
Applicants’ proposed mark is that it is a variant of Opposer’s mark. “[C]areful
purchasers who do notice the difference in the marks will not necessarily conclude
Opposition No. 91228390
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that there are different sources for the [services], but will see the marks as variations
of each other, pointing to a single source.” In re Hitachi High-Tech. Corp., 109
USPQ2d 1769, 1774 (TTAB 2014). The parties’ marks are so similar in all respects
that “persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
For these reasons, the first DuPont factor weighs strongly in favor of Opposer.
B. Comparison of the Parties’ Services

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion v.
Lion Capital, 110 USPQ2d at 1159; DuPont, 177 USPQ at 567. “This factor considers
whether ‘the consuming public may perceive [the respective goods and services of the
parties] as related enough to cause confusion about the source or origin of the goods
and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed.
Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002)). “[I]t is sufficient for such purposes if the
services are related in some manner or if the circumstances surrounding marketing
of these services are such that they could give rise to the mistaken belief that they
originate from or are in some way associated with the same source.” In re USA
Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017).
It is apparent that the parties’ services overlap. Applicants’ application recites,
“Charitable services, namely, providing community services to the local communities
in the nature of organizing and conducting volunteer programs and community
Opposition No. 91228390
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service projects for the local school system, hospitals and local food banks.” Opposer’s
charitable services (described in its use-based application as “charitable services,
namely, organizing and conducting volunteer programs and community services
projects….”) are illustrated by the Sickle Cell fundraiser indicated above.23 This
identity of hospital-related charitable community services, standing alone, favors a
finding a likelihood of confusion as to Applicants’ services in International Class 35.
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) (A likelihood of confusion may be found with respect to a particular class
based on any item within the identification of goods or services for that class); In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2016).
More to the point, “Where, as in this case, the applicant’s mark
is virtually identical to the [opposer’s] mark, there need only be a viable relationship
between the goods [or services] to find that there is a likelihood of confusion. See In
re Shell Oil Co., 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (‘even when the goods or
services are not competitive or intrinsically related, the use of identical marks can
lead to the assumption that there is a common source’)….” In re Thor Tech, Inc., 90
USPQ2d 1634, 1636 (TTAB 2009). Here, the parties’ similar charitable community
services, offered under marks that are strikingly similar, would clearly give rise to
the mistaken belief that they originate from or are in some way associated with the
same source. Accordingly, the second DuPont factor also weighs heavily in favor of

23 15 TTABVUE 110.
Opposition No. 91228390
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finding a likelihood of confusion.
C. Comparison of Channels of Trade and Classes of Consumers

Under the third DuPont factor, we consider the similarity or dissimilarity of
Applicants’ and Opposer’s channels of trade, and the classes of customers to whom
their services are offered. DuPont, 177 USPQ at 567.
Since Applicants’ identified services are identical in part to Opposer’s charitable
services, and since there are no limitations in the application, Applicant’s services
are presumed to travel in all normal channels of trade, including those shown by
Opposer ―e.g., community fundraising events, such as Opposer’s Sickle Cell
fundraiser―and they would travel to the same classes of consumers, namely
charitable donors, participants, and recipients. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). As Opposer correctly contends, “if
Applicants’ mark is registered, both parties would have identical trademarks for
identical services, offered to identical consumers through identical trade channels. In
this scenario, it is impossible to reach … any conclusion other than that Applicants’
mark would cause confusion with Opposer’s existing mark and brand….”24

24 Opposer’s brief p. 21, 18 TTABVUE 22.
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Hence, the channels of trade through which the parties’ services would be offered,
and the classes of customers to whom they would be offered weigh in favor of finding
a likelihood of confusion under the third DuPont factor.
D. Strength of Opposer’s Mark

The fifth DuPont factor is fame of the prior mark. DuPont, 177 USPQ at 567. In
determining the strength of a mark, we consider both inherent strength, based on the
nature of the mark itself, and commercial strength or recognition. Bell’s Brewery, Inc.
v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); see also 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).”). The fame of a mark is not “an all-or-
nothing measure” when considered in the context of a likelihood of confusion analysis.
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017). Rather, likelihood of confusion fame “varies
along a spectrum from very strong to very weak.” Palm Bay Imps. v. Veuve Clicquot,
73 USPQ2d at 1694 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d
1059, 1063 (Fed. Cir. 2003)).
Conceptually, Opposer’s marks, and LET THE MELTDOWN BEGIN,
appear to be fanciful or arbitrary when used in connection with its charitable and
motorcycle club services. The marks are therefore inherently distinctive.
Commercially, we find that Opposer adduced no more than a modicum of admissible
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evidence regarding the market strength of its mark. Because of the extreme deference
that we accord a famous mark in terms of the wide latitude of legal protection it
receives, and the dominant role fame plays in the likelihood of confusion analysis, it
is the duty of the party asserting that its mark is famous to prove it clearly. Coach
Services v. Triumph Learning, 101 USPQ2d at 1721, citing Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). Opposer has
adduced no testimony whatsoever concerning the commercial strength of its common
law marks. Opposer’s Notice of Reliance contains Internet pages displaying
advertisements under its marks, but that evidence fails to show the marks’ extent of
exposure to the relevant public, and thus falls short of proving commercial fame
under the fifth DuPont factor.25
Accordingly, under the fifth DuPont factor, we find that Opposer’s marks are
inherently distinctive, but lack evidence of commercial strength. Overall, this factor
is neutral.
E. Bad Faith of Applicants

Under the thirteenth DuPont factor, evidence of an applicant’s bad faith adoption
of a mark is relevant to our likelihood of confusion analysis. J & J Snack Foods Corp.
v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991)
(“Whether there is evidence of intent to trade on the goodwill of another is a factor to

25 Although Opposer’s brief claims that it has established fame for purposes of protection
against dilution, see Opposer’s brief pp. 24-27, 18 TTABVUE 25-28, we find that Opposer has
neither pleaded nor proven this extent of fame. See Syngenta Crop Prot. v. Bio-Chek, 90
USPQ2d at 1115 n.3 (unpleaded dilution claim not considered; no evidence mark was
famous).
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be considered….”) quoted in Tao Licensing, LLC v. Bender Consulting Ltd., 125
USPQ2d 1043, 1063 (TTAB 2017). Opposer contends that Applicants, after joining
Opposer’s motorcycle club, acted in bad faith by then appropriating Opposer’s mark
for themselves. 26 In support of this contention, Opposer adduces agreements signed
by Applicants when they joined Opposer’s motorcycle club in 2005, 2008, and 2013,
respectively, and a cease-and-desist letter Opposer sent to Applicants later, in
December 2015, instructing them to cease “any and all fundraising activities
associated with the generation or participation in non-profit activities conducted on
behalf of [Opposer]” and to cease “wearing Karamel Divaz colors and any other
garments containing the Karamel Divaz name and logo.”27
Evidence of this sort is clearly not admissible by notice of reliance, and should
have been supported by testimony. See United Global Media Grp., Inc. v. Tseng, 112
USPQ2d at 1047 (“Correspondence is not admissible through a notice of reliance
because it does not constitute printed publications in general circulation.”); Syngenta
Crop Prot. v. Bio-Chek, 90 USPQ2d at 1117 (“Other documents must be introduced
by having them identified and authenticated through the testimony of a competent
witness.”). In view of Applicants’ failure to object thereto, we have exercised our
discretion to accord some degree of probative value to the particular exhibits to which
we have alluded above. However, we accord no probative value to Opposer’s written
agreements and correspondence with Applicants, which clearly “should have been

26 Opposer’s brief pp. 23-24, 18 TTABVUE 24-25.
27 Opposer’s Notice of Reliance, exs. 18-21, 17 TTABVUE 17-25.
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introduced in connection with competent testimony of a witness and not by notice of
reliance. Accordingly, these documents have been given no consideration.” Colt
Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 75 n.
2 (TTAB 1983).
The thirteenth DuPont factor is accordingly neutral.
V. Conclusion

On consideration of all of the arguments, authorities, and evidence, including
portions not specifically mentioned in this decision, we find that the parties’ marks
are highly similar, as are their services, and that they would travel through the same
or similar channels of trade to the same or similar classes of customers. We further
find that Opposer’s marks are inherently distinctive, although Opposer has not
proven their commercial strength, and that Applicants’ bad faith is unproven. We
conclude that Opposer has established priority and likelihood of confusion under
Section 2(d) by a preponderance of the evidence.
Decision: The opposition is sustained.