Marathon Tours, Inc.v.Richard Donovan

Trademark Trial and Appeal Board

Mar 9, 2017

No. 91214917 (T.T.A.B. Mar. 9, 2017)

Mailed: March 9, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Marathon Tours, Inc.
v.
Richard Donovan
_____

Opposition No. 91214917
to Application Serial No. 86088840
_____

Michael J. Bevilacqua and Barbara A. Barakat of Wilmer Cutler Pickering
Hale and Dorr LLP,
for Marathon Tours, Inc.

Joshua M. Gerben and Eric J. Perrott of Gerben Law Firm, PLLC,
for Richard Donovan.
_____

Before Wellington, Ritchie, and Goodman, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On October 10, 2013, Richard Donovan (“Applicant”) applied to register
THE 7 CONTINENTS MARATHON CLUB (and design), as shown below, for
“T-shirts, singlets; running shorts; hats; beanies; clothing, namely, base
layers; fleece tops; wind pants; wind jackets,” in International Class 25, and
“Providing recognition and incentives by the way of awards to promote
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91214917
2
running in marathons; providing an honor society in which runners are
admitted in recognition of marathon running achievement,” in International
Class 41:
1
The application disclaims the exclusive right to use the term “The 7
Continents Marathon Club,” for International Class 41 only.
Marathon Tours, Inc. (“Opposer”), filed an opposition to the registration of
Applicant’s mark on the ground that Applicant’s mark is likely to cause
confusion with Opposer’s mark, SEVEN CONTINENTS CLUB. Opposer
alleged in the Notice of Opposition that it adopted use of the mark SEVEN
CONTINENTS CLUB “as early as 1995 in connection with its travel service
for runners and their friends” as well as providing “recognition by entrance
into an honor society and incentives such as clothing to its clients to
commemorate running in marathons and half marathons in recognition of
their running achievement.”2 Opposer further asserted that it has filed
application Serial No. 86089411 for “travel services, namely, organizing,

1 Application Serial No. 86088840 filed under Section 1(a) of the Trademark Act,
alleging first dates of use and first dates of use in commerce in both classes in
September, 2013.
2 1 TTABVUE 4.
Opposition No. 91214917
3
arranging and reserving travel, tours, excursions, sightseeing, and cultural
events and providing travel guide and information services,” based on use of
the mark “since at least as early as September 1995,” and that the
application has been provisionally rejected by the Office pending the outcome
of Applicant’s application, despite Opposer’s priority, and resulting in injury
to Opposer.3 Opposer’s application contains a claim of acquired
distinctiveness as to the entire mark.
Applicant denied the salient allegations of the notice. Applicant further
asserted several affirmative defenses including that there is no likelihood of
confusion because Opposer’s pleaded mark is “highly descriptive” or
“deceptively misdescriptive.”4 Both parties filed briefs, and Opposer filed a
reply brief.
The Record and Evidentiary Objections
The record consists of the pleadings; the file of the involved application;
Opposer’s first notice of reliance on its pleaded application; Opposer’s second
notice of reliance on discovery responses from Applicant; the testimonial
deposition of Matt Bergin, an avid runner who became a member of
Opposer’s Seven Continents Club in 2000, dated October 29, 2015; the
testimonial deposition of Jeffrey T. Doyle, another avid runner who became a
member of Opposer’s Seven Continents Club in 2015, with exhibits, dated
October 29, 2015; the testimonial deposition of Thomas F. Gilligan Jr.,

3 4 TTABVUE 4-6.
4 4 TTABVUE 5.
Opposition No. 91214917
4
Opposer’s owner and president, with exhibits, dated November 19, 2015; the
testimonial deposition of Richard Donovan, with exhibits, dated March 11,
2016; and Applicant’s notice of reliance on discovery responses from Opposer.
With its brief, Applicant objected to references by Opposer in Opposer’s
brief to Opposer’s Response to Applicant’s Interrogatory No. 12, asserting
that this response is not of record. However, as Opposer points out, Applicant
submitted the response with his Notice of Reliance.5 As indicated by our
rules, “[w]hen evidence has been made of record by one party in accordance
with these rules, it may be referred to by any party for any purpose permitted
by the Federal Rules of Evidence.” 37 CFR § 2.122(a). Accordingly, the
objection is overruled.
Background Findings
1. Opposer’s Business and Use of Mark:
Opposer offers travel services in conjunction with marathons around the
world. In particular, Opposer organizes tours and sightseeing, and provides
travel-related services.6 In this regard, Opposer is the creator and organizer
of the Antarctica Marathon, which it first offered in 1995.7 The Antarctica
Marathon is held on King George Island, in the Shetland Islands.8 After
organizing the first Antarctica Marathon, Opposer’s owner and president,
Mr. Gilligan, realized that several runners had completed marathons on all

5 28 TTABVUE 15.
6 29 TTABVUE 41.
7 29 TTABVUE 36.
8 29 TTABVUE 115-116.
Opposition No. 91214917
5
seven continents, which inspired his creation of the SEVEN CONTINENTS
CLUB.9 Describing the club, he noted: “we call it our VIP loyalty club, like a
frequent traveler club, and then within that, we recognize those people who
finish running a marathon on all seven continents.”10
Q: Okay. And how many members do you have now in that club?

A: Well, we have – it has become a membership club for anyone
interested in running marathons on all seven continent [sic] or
anywhere, so it’s kind of a frequent travel loyalty club. It’s
not just for runners who want to run a marathon on every
continent, but we have about 560 names on the finishers list,
male and female, who have completed a marathon on all seven
continents. We probably have another, I would say 500, possibly
as high as a thousand, people who are in the pipeline to finish a
marathon on every continent. I do know that we have
approximately 2,170 people who have paid to join the Seven
Continents Club or were grandfathered in before we charged
people to join.11

In addition to providing an honorary club service and website, Mr.
Gilligan testified that Opposer provides and sells denim tee-shirts under the
mark, and has done so “for 15 years or more.”12 Social media is a popular
form of advertising for Opposer.13 Opposer also hands out brochures at
events. Mr. Gilligan testified regarding advertising, but noted that he does
not have specific figures related to advertising the mark or the services for

9 29 TTABVUE 74.
10 29 TTABVUE 93.
11 29 TTABVUE 75-76.
12 29 TTABVUE 82.
13 29 TTABVUE 63.
Opposition No. 91214917
6
SEVEN CONTINENTS CLUB.14 With the deposition of Mr. Gilligan, Opposer
submitted testimony and evidence of press releases, as well as the following
unsolicited media coverage of its SEVEN CONTINENTS CLUB:
Runner’s World & Running Times: Young 7-Continents
Marathoner Ran Some of Antarctic Race in Chile:
March 19, 2013: . . . The Toochecks’ reference is to one of the
rules of The Official 7 Continents Marathon Club. . . .
However, the club was formed after the White Continent
Marathon by the marathon’s race director. Another club, the
Seven Continents Club, was formed in 1995, after Marathon
Tours & Travel put on the first marathon on Antarctica. Thom
Gilligan, the owner of Marathon Tours & Travel, disputes the
new club’s rule about what constitutes a completed Antarctic
marathon.15

Fitness Runner: Antarctica Marathon: by Jim Whiting:
September/October 2000: Think south. Very south. About as far
south as you can get. Next February 5 is the fourth running of
the Antarctica Marathon, also known as The Last Marathon by
its organizers, Marathon Tours of Cambridge, MA.
. . . .Perhaps one reason for its sudden popularity is that many
hard-core marathoners, not satisfied with merely being
members of the 50 States and D.C. Club, are now seeking an
even more elite soubriquet: The Seven Continents Club.16

Opposer also submitted the testimony of two members of the SEVEN
CONTINENTS CLUB. Matt Bergin who ran the Antarctica Marathon in
1997, and became a member of Opposer’s SEVEN CONTINENTS CLUB in
2000, testified that he first learned about the club in 1996.17 Jeffrey Doyle,

14 29 TTABVUE 126-127; see also 28 TTABVUE 12-13. Although, as discussed
below, the parties mentioned the price of their respective marathons and tours,
Opposer did not submit evidence of its revenues for the SEVEN CONTINENTS
CLUB.
15 29 TTABVUE 310-311.
16 29 TTABVUE 336-337.
17 20 TTABVUE 38.
Opposition No. 91214917
7
who said he had just become a member in June before his deposition in
October 2015, also testified that he first became aware of the club in 1996.18
2. Applicant’s Business and Use of Mark:
Applicant is an event organizer, who has himself run over fifty
marathons.19 Since January 2006, he has been organizing the Antarctic Ice
Marathon & 100K, which takes place in the interior of the Antarctic.20 In
2009, three years after organizing the first Antarctic Ice Marathon, Applicant
set up the 7 Continents Marathon Club.21 To this end, Applicant included in
the record a list of members in the club as of November 2009.22 At the time,
there were 111 members. Applicant testified that there were, at the time of
this deposition, 154 members, of which 39 were from the United States.23
Qualifications to join Applicant’s 7 Continents Marathon Club include
running “a marathon on all seven continents.”24 Those who join are honored
with a medal, certificate, tee-shirts, and other paraphernalia.25 There is no
extra fee to become a member of Applicant’s 7 Continents Marathon Club,
but rather Applicant says the fee is “inclusive of your fee in entering the
Antarctic Ice Marathon.”26 Since Applicant is currently the only one
organizing a commercial marathon on the mainland of Antarctica, he

18 29 TTABVUE 17.
19 26 TTABVUE 8, 55.
20 26 TTABVUE 10, 51.
21 26 TTABVUE 71.
22 26 TTABVUE 199.
23 26 TTABVUE 70.
24 26 TTABVUE 62.
25 26 TTABVUE 72-73.
Opposition No. 91214917
8
currently considers only entrants in his own marathons as possible members
of his 7 Continents Marathon Club.27 There are no unsolicited media articles
of record regarding Applicant’s 7 Continents Marathon Club.28
3. Third party Use.
Opposer’s founder and president, Mr. Gilligan, testified that there is a
third party, Steven Hibbs of Marathon Adventures who offers a similar
marathon to the Antarctica Marathon, called the White Continent Marathon,
for which “they use a lot of the same course.”29 Mr. Gilligan referred to a 2013
article, which states that a runner in Mr. Hibbs’ White Continent Marathon
was denied entry to the list of finishers of Opposer’s Seven Continents Club
due to the location of where that runner finished his White Continent
Marathon.30 Mr. Gilligan further testified that shortly after this occurred,
Mr. Hibbs registered the name the Official 7 Continents Marathon Club.31
Q: This is Steven Hibbs?

A: Yes.

Q: But not Richard Donovan.

A: Right. She’s confusing the reference to the Official 7
Continents Marathon Club, so there’s confusion not only with
your, with the applicant for the 7 Continents Marathon Club,
but with another one.32

26 26 TTABVUE 104-105.
27 26 TTABVUE 51-52, 71-72.
28 An article was mentioned in a response to interrogatory by Applicant, but the
article was not submitted into the record. 19 TTABVUE 18.
29 29 TTABVUE 73.
30 29 TTABVUE 139-140; 309-311.
31 29 TTABVUE 136. The registration is not of record.
32 29 TTABVUE 136.
Opposition No. 91214917
9
Mr. Gilligan further acknowledged that he had been involved in a domain
name dispute procedure under the Uniform Dispute Resolution Policy,
through the World Intellectual Property Organization (“WIPO”) against Mr.
Hibbs for ownership of the domain name
official7continentsmarathonclub.com, but that WIPO had ruled in favor of
Mr. Hibbs.33
Standing and Priority
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). To establish standing in an
opposition, opposer must show both “a real interest in the proceedings as well
as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Opposer has established standing in its pleading and testimony in that its
application for the mark SEVEN CONTINENTS CLUB was suspended on
the ground of likelihood of confusion with Applicant’s pending application.34
See Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014) TBMP § 309.03(b) (Jan. 2017). To
establish priority on a likelihood of confusion claim brought under

33 29 TTABVUE 137.
34 29 TTABVUE 83, 276.
Opposition No. 91214917
10
Trademark Act Section 2(d), a party must establish that, vis-à-vis the other
party, it owns “a mark or trade name previously used in the United States …
and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052. A party
may establish its own prior proprietary rights in a mark through ownership
of a prior registration, actual use or through use analogous to trademark use,
such as use in advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet websites which create a public
awareness of the designation as a trademark identifying the party as a
source. See Trademark Act §§ 2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127. See
also T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed.
Cir. 1996), vacating Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668
(TTAB 1994).
Inasmuch as Opposer has not pleaded ownership of any registered
trademark, Opposer must rely on its common law use of SEVEN
CONTINENTS CLUB as a trademark to prove priority. In order for a
plaintiff to prevail on a claim of likelihood of confusion based on its
ownership of common law rights in a mark, the mark must be distinctive,
inherently or otherwise, and plaintiff must show priority of use. See Otto
Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA
1981); Gierscsh v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB
2009) (no “regular and recurring activity” shown such as to establish certain
asserted common law rights by plaintiff); see also Bass Pro Trademarks,
Opposition No. 91214917
11
L.L.C. v Sportsmans Warehouse, Inc., 89 USPQ2d 1844, 1852 (TTAB 2008)
(“the issue of priority is based on the priority of acquired distinctiveness.”)
We note that Opposer has applied to register its mark SEVEN
CONTINENTS CLUB for travel services with a claim of acquired
distinctiveness, thereby admitting that the term is not inherently distinctive
in connection with those services. Cold War Museum Inc. v. Cold War Air
Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where
an applicant seeks registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”). Applicant claims that
indeed “Opposer’s mark is highly descriptive of Opposer’s Services, which
includes a club for participants who allegedly ran, or want to run, marathons
on all seven continents.”35
There is testimony from several witnesses indicating the descriptiveness
of Opposer’s mark in connection with travel club services. Runner and
SEVEN CONTINENTS CLUB member Jeffrey Doyle testified as to the
descriptiveness of the term SEVEN CONTINENTS CLUB:
Q: Does the Seven Continents Club accurately describe the club
that is run by Marathon Tours?

A: Yes.36

35 33 TTABVUE 13.
36 29 TTABVUE 22.
Opposition No. 91214917
12
Runner and SEVEN CONTINENTS CLUB member Matt Bergin echoed
this reaction:
Q: And the words Seven Continents Club accurately describes
the club run by Marathon Tours, correct?

A: Correct.

Q: And the word Seven Continents Club describes a club where
all members have run a marathon on all seven continents,
correct?

A: Correct.37

Even Thom Gilligan, Opposer’s owner and president, noted that Opposer’s
SEVEN CONTINENTS CLUB would be understood as descriptive by the
runners who constitute its members:
Q: Do the words Seven Continents Club describe a club for
people running on all seven continents?

A: Among runners, yes.38

To satisfy its burden that its applied-for mark has acquired
distinctiveness under Section 2(f) of the Trademark Act, a party, in this case
Opposer, may submit any “appropriate evidence tending to show the mark
distinguishes [the party’s] goods [or services],” which evidence “the other
party” could then attempt to discredit. Yamaha International v. Hoshino
Gakki, 840 F.2d 1572, 6 USPQ2d 1001, 1010 (Fed. Cir. 1988), quoting
Trademark Rule 2.41(a), 37 CFR § 2.41(a). Such evidence includes the

37 20 TTABVUE 48.
38 29 TTABVUE 125.
Opposition No. 91214917
13
duration, extent and nature of the use of the mark in commerce, advertising
expenditures, letters or statements from the trade or public, and other
appropriate evidence. Trademark Rule 2.41(a). See also Steelbuilding, 415
F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (acquired distinctiveness
may be shown by copying, unsolicited media coverage and consumer surveys).
“The amount and character of the evidence, if any, required to establish that
a given word or phrase … ‘has become distinctive’ of the goods necessarily
depends on the facts of each case and the nature of the alleged mark.” Roux
Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA
1970). See also In re Steelbuilding.com, 75 USPQ2d at 1424 (“no single factor
is determinative … the determination examines all of the circumstances
involving the use of the mark”). With respect to the nature of the alleged
mark, “the [proving party’s] burden of showing acquired distinctiveness
increases with the level of descriptiveness; a more descriptive term requires
more evidence of secondary meaning.” In re Steelbuilding.com, 75 USPQ2d at
1424.
We find that on the spectrum of descriptiveness, based on the testimony
and evidence of record, SEVEN CONTINENTS CLUB is closer to being
highly descriptive of Opposer’s travel services, particularly as they relate to
offering a club related to running marathons on the seven continents. It
therefore requires more substantial evidence of acquired distinctiveness. As
noted in our Background Findings, Opposer began offering its Seven
Opposition No. 91214917
14
Continents Club services in 1995, and there is evidence that some of
Opposer’s consumers were aware of it since at least 1996. However, as noted,
Opposer did not offer specific information regarding its sales and advertising.
Furthermore, regarding media recognition, there are a scant number of
unsolicited articles of record. Applicant, meanwhile, began use of its own
mark, The 7 Continents Marathon Club (and design), for some of the same
services as those offered by Opposer, in 2009. There also is a third party that
has been using the mark the Official 7 Continents Marathon Club, also for
the same services, since 2013. Opposer did not show that that Seven
Continents Club, points to one unique source for its club services, or that it is
substantially exclusive.
Opposer must show priority of a distinctive mark, in this case a mark that
has acquired distinctiveness, in order to prove likelihood of confusion.
Opposer has not, however, shown that its proposed mark has acquired
distinctiveness for its services, nor in particular that its use of the mark has
been substantially exclusive in connection with Opposer’s travel services,
including offering a club for those who run marathons on all seven
continents. Thus, Opposer cannot show priority as to its services.
Regarding clothing, as noted above, Opposer has submitted testimony
that it has been offering denim tee-shirts for sale for at least 15 years (since
2000), whereas Applicant testified that he has been using his mark since
2009. Thus, Opposer has established priority for, in particular, denim tee-
Opposition No. 91214917
15
shirts, which it sells in connection with its running club services.39 We
therefore proceed with a likelihood of confusion analysis as to these goods.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record related to a likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks.”). We
discuss the du Pont factors for which there is relevant argument and
evidence.
The Goods and Services and Channels of Trade
We have found that Opposer has established priority as to “denim tee-
shirts.” Applicant also includes, in his application, among other goods in

39 29 TTABVUE 82, 274. Mr. Gilligan testified that Opposer is not selling any other
clothing at this time, and therefore we do not find priority as to any other clothing.
Opposition No. 91214917
16
International Class 25, broadly defined “T-shirts,” which would include
Opposer’s more narrowly defined “denim tee-shirts.” Thus, the goods overlap
and are identical in part. It is sufficient for a refusal based on likelihood of
confusion that relatedness is established for any good in the class. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); see also Apple Computer v. TVNET.Net, Inc., 90 USPQ2d
1393, 1398 (TTAB 2007).
As for the channels of trade, where the goods are identical, it is presumed
that the channels of trade are the same as well. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of consumers, the Board
was entitled to rely on this legal presumption in determining likelihood of
confusion).40 We thus find these du Pont factors to strongly favor likelihood of
confusion as to Applicant’s goods.
Applicant has also applied to register services consisting of “providing
recognition and incentives by the way of awards to promote running in
marathons; providing an honor society in which runners are admitted in
recognition of marathon running achievement.” We note that in considering
the similarity or dissimilarity of the goods and services it is appropriate for
us to consider the evidence of record, since Opposer is not relying on a
registration but rather on common law rights. Cf. Octocom Systems, Inc. v.

Id. See also 20 TTABVUE 41.
Opposition No. 91214917
17
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods
set forth in the application regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular channels of trade or
the class of purchasers to which the sales of goods are directed.”) (citations
omitted). Opposer has submitted testimony that its “denim tee-shirts” are
sold in connection with an “VIP loyalty club” that promotes running, thus
evidencing the similarity of these goods and services.41 Mr. Gilligan testified
that such merchandise is sold to members of Opposer’s “membership club for
anyone interested in running marathons on all seven continent [sic] or
anywhere.”42 Runner Matt Bergin also testified that he has a denim tee-shirt
from Opposer, which he “wore this past marathon.”43 Applicant also noted
that members of his honorary club are given tee-shirts, pictures of which are
of record.44
Thus Opposer has carried its burden of showing that its “denim tee-shirts”
and Applicant’s services are related and travel through similar channels of

40 This was also admitted by Applicant in Requests for Admission Nos. 15 and 16.
See 16 TTABVUE 58.
41 In making this finding, we reiterate that we have not found priority as to
Opposer’s services, but rather only as to Opposer’s goods. Thus this likelihood of
confusion analysis is undertaken in comparing Applicant’s goods and services to
Opposer’s “denim tee-shirts” only.
42 29 TTABBUE 75-76; 82.
43 20 TTABVUE 41.
44 26 TTABVUE 72-73, 99.
Opposition No. 91214917
18
trade. We find these du Pont factors to also favor likelihood of confusion as to
Applicant’s services.
The Marks
We consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imports, 73
USPQ2d at 1692. In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the source of the
goods and/or services offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086
(Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average
consumer, who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
Opposer’s mark is SEVEN CONTINENTS CLUB. Applicant’s mark
contains the literal wording THE 7 CONTINENTS MARATHON CLUB, with
a design, as shown below:

Opposition No. 91214917
19

The literal elements of the marks are quite similar, and in this regard,
they look and sound substantially similar. While we recognize that
Applicant’s mark includes a design element, we note, nonetheless that in the
case of a mark consisting of words and a design, the words are normally
given greater weight because they would be used by consumers to request
products. In re Viterra Inc., 101 USPQ2d at 1911, citing CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). We also note that the
design of a runner holding a mini-earth does not significantly alter the
commercial impression of a club for those who run marathons on all seven
continents. Similarly, Opposer’s mark gives the commercial impression of a
club for those who would traverse the seven continents.
Applicant argues that Opposer’s mark is weak. As discussed above, we
have found Opposer’s mark to be merely descriptive and even highly
descriptive of its service of offering a club for those who run marathons on all
seven continents. However, there is no evidence that the mark is similarly
descriptive or weak with regard to “denim tee-shirts.”
Opposition No. 91214917
20
Accordingly, the marks are substantially similar in sight, sound, and
commercial impression, and we find that this du Pont factor, too, favors
finding a likelihood of confusion.
Conditions of Sale
Applicant urges us to consider the high level of purchasing care likely to
be exercised by consumers of these goods and services. This argument focuses
mainly on the relatively high price of the services at issue. In particular,
Applicant notes that in order to enter his honorary club, entrants must run
seven marathons, including his marathon in the Antarctic, which alone costs
in the $15,000 range.45 Opposer’s denim tee-shirts, meanwhile, are
advertised at $75.46
We must base our determination on the least sophisticated consumer.
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that TTAB properly
considered all potential investors for recited services, which included
sophisticated investors, but that precedent requires consumer care for
likelihood-of-confusion decision to be based “on the least sophisticated
potential purchasers”). Although Applicant currently requires members to
complete a marathon in Antarctica, at a cost of $15,000, in order to join his
club, there is nothing in his identification of goods or services that so limits
sales of the goods or providing of recognition and entry into an honorary

45 26 TTABVUE 64.
46 29 TTABVUE 274.
Opposition No. 91214917
21
society of marathon running achievement. Indeed, Opposer offers a
competing club at a cost of $100 to $200.47 Moreover, it is well-established
that even sophisticated consumers are not immune from source confusion.
Stone Lion Capital, 110 USPQ2d at 1163. Although the goods, and in
particular the services, offered by Applicant, are not likely to be purchased on
impulse, neither do we expect that consumers would necessarily exercise
great care in their purchase.
We find this fourth du Pont factor to slightly weigh against likelihood of
confusion.
Conclusion
Balancing all the factors, we find that goods in Applicant’s International
Class 25 overlap with the “denim tee-shirts” for which Opposer has shown
priority, and that Applicant’s services are also shown to be related to
Opposer’s denim tee-shirts which are sold in connection with Opposer’s
running club services, and that both would travel through some of the same
channels of trade. The marks are substantially similar in sight, sound, and
commercial impression. Although some of the targeted consumers may be
sophisticated, this does not significantly alter the analysis, and we find that
although Opposer has failed to prove priority via acquired distinctiveness of
its services, it nevertheless has proven likelihood of confusion both for
Applicant’s goods and for Applicant’s services based on Opposer’s common
law rights for “denim tee-shirts.”

47 29 TTABVUE 77.
Opposition No. 91214917
22
DECISION: The opposition is sustained.