Precision, Inc.v.Nercon Eng. & Mfg., Inc.

Trademark Trial and Appeal Board

Feb 23, 2021

91247404 (T.T.A.B. Feb. 23, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Precision, Inc.

v.

Nercon Eng. & Mfg., Inc.
_____

Opposition No. 91247404

_____

Jordan E. Meggison-Decker of Brownwinick Law Firm
for Precision, Inc.

Nathan P. Olson of Olson Legal Group LLC
for Nercon Eng. & Mfg., Inc.
_____

Before Zervas, Wolfson and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Nercon Eng. & Mfg., Inc. (“Applicant”) seeks registration on the Principal Register
of the standard character mark ALWAYS MOVING for “conveyors being machines”
in International Class 7.1

1 Application Serial No. 88181642 was filed on November 5, 2018, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. §1051(b).
Opposition No. 91247404
- 2 -

In its Notice of Opposition,2 Precision, Inc. (“Opposer”) opposes registration of
Applicant’s ALWAYS MOVING mark under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in
the Application, so resembles Opposer’s WE KEEP IT MOVING standard character
mark, registered on the Principal Register in connection with “conveyor components,
namely, pulleys, idlers, roller tubes, shafts, bearings, hubs, bushings, roll guards, roll
cages, self-leveling foot pads, saw vices, magnetic speed switches, conveyor belt speed
monitor rolls, magnetic speed switch sensors, time relays, and replacement parts
thereof” in International Class 7,3 as to be likely to cause confusion, mistake, or to
deceive.
Applicant denied the salient allegations of the Notice of Opposition in its Answer;
however, Applicant admits: (1) Opposer’s ownership of Opposer’s WE KEEP IT
MOVING registration for the goods recited therein, (2) that Opposer sent Applicant
a cease-and-desist letter, (3) the various details of its ALWAYS MOVING application,
(4) that the parties’ marks share the term “MOVING”, (5) that Opposer sells conveyor
components, and (6) that Applicant’s goods sold in connection with the ALWAYS
MOVING mark will be targeted to customers seeking to utilize conveyors.4

2 1 TTABVUE. References to the pleadings, the evidence of record and the parties’ briefs refer
to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the
docket entry number; and coming after this designation are the page and paragraph
references, if applicable.
3 Registration No. 5249356 was issued on July 25, 2017.
4 Answer, 4 TTABVUE. As to Applicant’s admissions, see Notice of Opposition (several
paragraphs of which were mis-numbered) and Answer ¶¶ 2, 7, 8, 10, 11, 13, 7 [sic, should be
15] and 15 [sic, should be 16].
Opposition No. 91247404
- 3 -

Applicant’s Answer also asserts what it titled as the “affirmative defense” that the
Notice of Opposition “fails to state a claim upon which relief can be granted.” This is
not a true affirmative defense, and we give it no further consideration. See John W.
Carson Found. v. Toilets.com, Inc.,94 USPQ2d 1942, 1949 (TTAB 2010) (“The
asserted defense of failure to state a claim is not a true affirmative defense because
it relates to an assertion of the insufficiency of the pleading of opposer’s claim rather
than a statement of a defense to a properly pleaded claim.”).
Applicant additionally raised seven other purported affirmative defenses, but they
all constitute mere amplifications of Applicant’s denials, or asserted proofs negating
Opposer’s claim, of likely confusion arising under certain factors from In re E.I.
DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting
forth factors to be considered, hereinafter referred to as the “DuPont factors”).5 Thus,
Applicant’s assertions are not true affirmative defenses, and we do not address them
as such.
In its Brief, Opposer purports to have raised a claim for dilution under Trademark
Act Section 43(c), 15 U.S.C. § 1125(c).6 However, dilution was not asserted in the
Notice of Opposition. A plaintiff may not rely on an unpleaded claim in its brief; to
pursue an unpleaded claim, a plaintiff's pleading must be amended under Fed. R.
Civ. P. 15(a) or (b), or the claim must have been tried by express or implied consent
under Fed. R. Civ. P. 15(b)(2); see, e.g., Brooklyn Brewery Corp. v. Brooklyn Brew

5 Answer, 4 TTABVUE, Affirmative Defenses 2-8.
6 Opposer’s Brief, 21 TTABVUE 6, 9 and 13.
Opposition No. 91247404
- 4 -

Shop, LLC, 2020 USPQ2d 10914, *3 (TTAB 2020); Hornby v. TJX Cos. Inc., 87
USPQ2d 1411, 1415 (TTAB 2008). Opposer, in this case, made no motion to amend
its Notice of Opposition under Fed. R. Civ. P. 15 in any filings with the Board.
However, “[i]mplied consent to the trial of an unpleaded issue can be found …
where the non-offering party (1) raised no objection to the introduction of evidence on
the issue, and (2) was fairly apprised that the evidence was being offered in support
of the issue.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 507.03(b) (2020); see also UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868,
1872 n.3 (TTAB 2011) (dilution claim deemed to have been tried by implied consent
of the parties where Applicant, in its brief, treated the dilution claim as if properly
pleaded.). “The question of whether an issue was tried by consent is basically one of
fairness. The non-moving party must be aware that the issue is being tried, and
therefore there should be no doubt on this matter.” Morgan Creek Prods. Inc. v. Foria
Int’l Inc., 91 USPQ2d 1134, 1139 (TTAB 2009).
The parties debate whether Opposer submitted sufficient evidence to support a
dilution claim.7 Clearly, however, Applicant: (1) raised no objection to the
introduction of Opposer’s evidence relied upon for dilution purposes, (2) did not object
to the inclusion of the dilution claim in Opposer’s main Brief, (3) treated the dilution
claim as if it were properly pleaded, and consequently (4) was fairly apprised that a
portion of Opposer’s evidence was being offered in support of a dilution claim. We

7 Applicant’s Brief, 22 TTABVUE 9-11 and 17; Opposer’s Reply Brief, 23 TTABVUE 13-14.
Opposition No. 91247404
- 5 -

therefore deem the Notice of Opposition to be amended to include a claim for dilution,
and we also deem the Answer to be amended to deny Opposer’s dilution claim.
The case is fully briefed. “‘Opposer, as plaintiff in … [this] opposition proceeding,
bears the burden of proving, by a preponderance of the evidence, its asserted grounds
of (i) priority and likelihood of confusion and (ii) dilution.’” Gen’l Motors Corp. v.
Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1186 (T.T.A.B. 2008)
(quoting Genesco Inc. v. Martz, 66 USPQ2d 1260, 1257 (TTAB 2003). Having
considered the evidentiary record, the parties’ arguments and applicable authorities,
as explained below, we find that Opposer has carried this burden on its Section 2(d)
claim, and sustain the Opposition on this ground. Accordingly, we need not and do
not reach Opposer’s dilution claim. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477,
1478 (TTAB 2017) (Board has “discretion to decide only those claims necessary to
enter judgment and dispose of the case”) (quoting Multisorb Tech., Inc. v. Pactive
Corp., 109 USPQ2d 1170, 1171, 72 (TTAB 2013)).
I. The Evidentiary Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, the
parties introduced the following evidence:
A. Opposer’s Evidence
• Testimony Declaration of Karissa Hastings, Marketing Manager of Opposer’s
Precision Pulley & Idler Division, with exhibits (“Hastings Decl.”) (13
TTABVUE 2-5, 10-112).
• Testimony Declaration of Mark Pedote, owner and founder of Genesis Brand
Insights (“GBI”), a market research and brand strategy consulting firm, with
Opposition No. 91247404
- 6 -

his Trademark Confusion Research Report provided as an exhibit (“Pedote
Decl.”) (13 TTABVUE 6-9, 113-138).
B. Applicant’s Evidence
• Testimony Declaration of Steve Anklam, Vice-President of Applicant, with
exhibits (“Anklam Decl.”) (16 TTABVUE).

C. Opposer’s Rebuttal Evidence
• Testimony Declaration of Karissa Hastings, with captured website pictures
embedded therein (“Hastings Rebuttal Decl.”) (17 TTABVUE).
II. The Parties
Opposer has been involved in the conveyor component industry for 40 years.
Opposer is comprised of two divisions: Precision Pulley & Idler (“PPI”) and Precision
Food Innovations (“PFI”). PPI sells conveyor components and replacement parts. PFI
specializes in conveyor equipment and systems targeted toward the food industry.
Opposer claims use of the WE KEEP IT MOVING mark since at least as early as
October 2011 on conveyor components and replacement parts.8
Applicant has designed and manufactured conveyor systems and equipment for
consumer-packaged goods since 1976. Although its application is based on its bona
fide intent-to-use the mark in commerce, Applicant claims to have used the ALWAYS
MOVING mark since at least as early as October 2016, but not on conveyors per se,
rather in blogs and other online publications..9

8 Hastings Decl., 13 TTABVUE 2-3, ¶¶ 3, 4 and 6
9 Anklam Decl., 16 TTABVUE 2-3, 88-91 ¶¶ 3, 11, Exh. 7.
Opposition No. 91247404
- 7 -

III. Entitlement to a Statutory Cause of Action
To establish entitlement to a statutory cause of action under Trademark Act
Section 13, 15 U.S.C., § 1063, a plaintiff must demonstrate “an interest falling within
the zone of interests protected by the statute and … proximate causation.” Corcamore,
LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020) (citing
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d
2061, 2067-70 (2014)).10 Stated another way, a plaintiff is entitled to a statutory cause
of action by demonstrating a real interest in the proceeding and a reasonable belief
of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); see also Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014).
According to the Court of Appeals for the Federal Circuit, there is “no meaningful,
substantive difference between the analytical frameworks expressed in Lexmark and
Empresa Cubana.” Corcamore, 2020 USPQ2d 11277 at *4. Thus, “a party that
demonstrates a real interest in [opposing registration of] … a trademark
under [Trademark Act Section 13, 15 U.S.C.] § 106[3,] has demonstrated an interest
falling within the zone of interests protected by [the Trademark Act]. … Similarly, a
party that demonstrates a reasonable belief of damage by the registration of a

10 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to bring and maintain a statutory cause of action. Despite the change
in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections
13 and 14 remain equally applicable.
Opposition No. 91247404
- 8 -

trademark demonstrates proximate causation within the context of § 106[3].
Corcamore, 2020 USPQ2d 11277 at *7.
Opposer claims ownership of the WE KEEP IT MOVING mark and Registration
No. 5249356 therefor, and submitted into evidence the U.S. Patent and Trademark
Office (“USPTO”) TSDR database record showing the current active status of the
registration.11 Applicant additionally concedes that Opposer is the owner of
Registration No. 5249356 in connection with goods recited in the registration.12 This
registration, which contains the shared term MOVING, thus gives Opposer
entitlement to bring its statutory cause of action for priority and likelihood of
confusion claim.13 See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000) (“[Plaintiff’s] registrations and the products sold under
the mark they register suffice to establish [Plaintiff]’s direct commercial interest and
its [entitlement to a statutory cause of action under Trademark Act Section 2(d)].”).
Opposer has thus established its entitlement to a statutory cause of action.
IV. Priority
Because Opposer has established its ownership of, and the subsistence of, its
pleaded WE KEEP IT MOVING registration, and because there is no pending
counterclaim to cancel this registration, priority is not an issue with respect to the

11 Hastings Decl., 13 TTABVUE 3, 47-50, ¶¶ 6-9 and Exh. 4.
12 Notice of Opposition, 1 TTABVUE 4-5, ¶¶ 7 and 11; and Answer, 4 TTABVUE 2-3, ¶¶ 7
and 11.
13 Because Opposer has established its entitlement to assert a Section 2(d) claim, it may
assert any other ground that would bar registration, including Opposer’s dilution claim. See,
e.g., Sock It To Me, Inc. v. Aiping Fan, 2020 U.S.P.Q.2d 10611, *1 (T.T.A.B. 2020);
Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB 2011).
Opposition No. 91247404
- 9 -

goods covered by the registration. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280,
1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974)).
V. Likelihood of Confusion
Trademark Act Section 2(d) prohibits the registration of a mark that
[c]onsists of or comprises a mark which so resembles a mark registered
in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely,
when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.
Our analysis is based on all of the probative evidence of record. DuPont, 177
USPQ at 567 (noting the elements, or factors, to be considered). In making our
determination, we consider each DuPont factor for which there is evidence and
argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63
(Fed. Cir. 2019). Varying weights may be assigned to each DuPont factor depending
on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination”).
In applying the DuPont factors, we bear in mind the fundamental purposes
underlying Trademark Act Section 2(d), which are to prevent confusion as to source
and to protect registrants 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.
Opposition No. 91247404
- 10 -

In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See Federated Foods, Inc.
v. Fort Howard Paper 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.”). These
factors, and the other DuPont factors argued by each party and for which there is
evidence, are discussed below.
A. The Similarity or Dissimilarity of the Marks
In our evaluation of the similarity or dissimilarity of the parties’ marks, we
consider the strength of Opposer’s mark, compare the respective marks in their
entireties, and evaluate the significance of Opposer’s proffered confusion survey.
1. Strength of Opposer’s Mark
Before we turn to the similarity of the marks, we consider the strength of
Opposer’s mark, as that will affect the scope of protection to which it is entitled. In
determining the strength of a mark, we consider its conceptual strength, based on the
nature of the mark itself, and its commercial strength, based on marketplace
recognition of the mark. See 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
commercial strength of the mark also is affected by the number and nature of third-
party use of similar marks for similar goods. DuPont, 177 USPQ at 567.
Opposer’s mark is inherently distinctive as evidenced by its registration on the
Principal Register without a claim of acquired distinctiveness under Trademark Act
Opposition No. 91247404
- 11 -

Section 2(f), 15 U.S.C. § 1052(f). Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d
1881, 1889 (TTAB 2006). We specifically find Opposer’s WE KEEP IT MOVING mark
to be suggestive, because the mark “requires imagination, thought, and perception to
arrive at the qualities or characteristics of … [Opposer’s] goods ….” In re MBNA Am.
Bank, N.A., 340 F.3d 1328, 1332, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). That is,
WE KEEP IT MOVING suggests (but does not immediately describe) that Opposer’s
goods enable continuous movement of customers’ goods, which is a function of a
conveyor machine that is necessarily comprised of various conveyor components.
Applicant argues that the term MOVING common to the parties’ marks “should
be afforded relatively less weight” (as weaker terms are provided less protection than
stronger terms) “given that 19 marks containing this term coexist [on the federal
trademark register] in relation to conveyors.”14 Not all of its evidence is probative,
however. Applicant’s pending Application and Opposer’s Registration, are of limited,
if any, probative value because they are subject of this proceeding and not owned by
third parties.
Also less probative are an abandoned third-party application and two cancelled
registrations. Abandoned applications have “‘no probative value other than as
evidence that the applications [were] filed.’” Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1403 n.4 (TTAB 2010) (quoting In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002)). An expired or cancelled registration

14 Applicant’s Brief, 22 TTABVUE 16, citing to USPTO trademark database records made of
record with the Anklam Decl., 16 TTABVUE 24-63, Exh. 3.
Opposition No. 91247404
- 12 -

is evidence of nothing but the fact that it once issued. Sunnen Prods. Co. v. Sunex
Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987). We further give lesser probative value
to four other third-party registrations issued pursuant to the Madrid Protocol
(Trademark Act Section 66(a), 15 U.S.C. § 1141f), because these registrations have
been active for less than five years and no evidence has been made of record that the
marks of these registrations have ever been used in commerce. See In re 1st USA
Realty Professionals, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (“Because …
registrations [based on Section 44 or Section 66 of the Trademark Act] are not based
on use in commerce they have no probative value ….”); cf. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1786 (TTAB 1993) (“[T]hird-party registrations which have
issued under Section 44(e) of the Act, 15 U.S.C. 1126(e), without any use in commerce
basis, have very little persuasive value.”).
“[E]vidence of third-party registrations [including evidence of these marks being
used in commerce] is relevant to ‘show the sense in which a mark is used in ordinary
parlance,’ …; that is, some segment that is common to both parties’ marks may have
‘a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak[.]’” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).
Therefore, properly considered, the USPTO has issued ten third-party active, use-
based registrations, or Madrid-based registrations older than five years, for marks
Opposition No. 91247404
- 13 -

including the term MOVING or MOVE, registered in connection with conveyors,
conveyor components, or conveyor-related services (e.g., installation, maintenance,
repair, and reconditioning). None of these third-party registered MOVING or MOVE
marks also include the terms WE or IT, and only one such mark also includes the
term KEEPING. We therefore consider Applicant’s third-party registration evidence
as showing that the term MOVING is not exceedingly strong in the conveyor industry,
but not as demonstrating that Opposer’s WE KEEP IT MOVING mark as a whole is
inherently weak. Thus, while Opposer’s mark is inherently distinctive, it is somewhat
indicative of conveyors, conveyor components and conveyor-related services.
Turning next to commercial strength, under the fifth DuPont factor, this rests
upon the extent to which “a significant portion of the relevant consuming public ...
recognizes the mark as a source indicator.” Joseph Phelps Vineyards, LLC v.
Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017)
(citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). This involves assessing the
mark “‘along a spectrum from very strong to very weak.’” Id. (internal citations
omitted). At one end of the spectrum, a commercially stronger mark receives a wider
latitude of legal protection in the likelihood of confusion analysis. See Palm Bay
Imps., 73 USPQ2d at 1694. By contrast, “the weaker an opposer’s mark, the closer an
applicant’s mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Juice
Opposition No. 91247404
- 14 -

Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015).
Commercial strength under the fifth DuPont factor may be measured indirectly
by the volume of sales and advertising expenditures in connection with the goods sold
under the mark, and other factors such as length of time of use of the mark;
widespread critical assessments; notice by independent sources of the goods identified
by the marks; and the general reputation of the goods. Weider Publ’ns, LLC v. D & D
Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp. v. QVC
Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing
indirect evidence as appropriate proof of strength).
Opposer points to a variety of evidence of commercial strength, based upon its
asserted use of the WE KEEP IT MOVING mark since October 2011.15 It made of
record company position reports from 2000 to 2019, showing Opposer as a leading
supplier (often in the number one position) of conveyor idlers and pulleys for this
period of time.16 We can only credit Opposer’s industry position since 2011, since that
is when Opposer began use of the WE KEEP IT MOVING mark. However, the
probative value of this evidence is limited because we do not know to what extent
Opposer’s industry position was tied to a particular product line on which the
involved mark was used.

15 Hastings Decl., 13 TTABVUE 3, ¶¶ 6 and 10.
16 Id. at 3, 10-29, ¶ 4 and Exh. 1.
Opposition No. 91247404
- 15 -

Opposer also submitted product sales numbers from 2013 to 2019, with no
explanation of what these numbers represent (e.g., unit quantities vs. sales dollars),
or the types of products sold and their cost17 – rendering these sales figures of
diminished probative value. Opposer further submitted evidence of its attendance at
four trade shows in the United States (at which the mark appeared) in 2016, 2017,
and 2020.18 Numbers of attendees at these trade shows were not provided. Opposer
also supplied examples of corporate brochures, advertising literature, flyers, and
posters bearing the mark,19 with no indication of the date(s) of their printing or use,
or the extent of their distribution.
While we find this evidence somewhat persuasive, its probative value is
diminished by the lack of context such as greater detail of Opposer’s sales numbers,
the absence of advertising expenditures, or Opposer’s relative market share (not just
its sales position) in relation to competitors, Bose Corp., 63 USPQ2d at 1309 (“[S]ome
context in which to place raw statistics is reasonable”); cf. Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB 2016) (probative value of sales
revenue figures quantified as doses sold is diminished by the fact that the amount is
just a raw number without context as to applicant’s market share or whether this
amount is significant in the industry), or other proof of regular, significant consumer
exposure to the WE KEEP IT MOVING mark on a nationwide scale. See Omaha Steaks

17 Id. at 3, 30-31, ¶ 4 and Exh. 2.
18 Id. at 3-4, 88-11, 104-112, ¶¶ 10(a) and 11, and Exhs. 6-11, 22.
19 Id. at 4, 94-103, ¶¶ 10(b)(i)-(x), and Exhs. 12-21
Opposition No. 91247404
- 16 -

Int'l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1690-91 (Fed.
Cir. 2018) (extensive evidence regarding social media following, millions of customers
targeted through direct mail advertising, nationwide retail locations, as well as
national print, radio and TV ads, unsolicited movie and TV publicity).
Opposer argues that the above-described evidence “weigh[s] in favor of finding
Opposer’s mark is a famous mark.”20 Applicant criticizes Opposer’s evidence as failing
to show “how well known Opposer’s mark is” and that “there is no evidence on the
record that could support … [the] assertion” that Opposer’s mark is famous.21 We find
Applicant more accurately describes the significance of Opposer’s evidence of
commercial strength.
To summarize, Opposer’s strength evidence under the fifth DuPont factor does not
rise to the level of demonstrating that its WE KEEP IT MOVING mark falls at the
far end of the spectrum, so as to be considered very strong. However, the record
reflects some degree of commercial success of, and consumer exposure to, Opposer’s
mark. Overall, we find Opposer’s mark to be inherently distinctive but suggestive,
with a modest degree of commercial strength that falls short of being famous.

20 Opposer’s Reply Brief, 23 TTABVUE 14. “[A] mark with extensive public recognition and
renown [for likelihood of confusion purposes] deserves and receives more legal protection
than an obscure or weak mark.” Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350,
353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). However, “fame for likelihood of confusion
purposes and fame for dilution purposes are not necessarily the same. A mark may have
acquired sufficient public recognition and renown to demonstrate that it is a strong mark for
likelihood of confusion purposes without meeting the stringent requirements to establish that
it is a famous mark for dilution purposes. The Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164,
1170 (TTAB 2001).
21 Applicant’s Brief, 22 TTABVUE 11.
Opposition No. 91247404
- 17 -

2. Comparison of the Marks
We now consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005); DuPont, 177 USPQ at 567. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516
(Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted)).
The focus is on the recollection of the average purchaser – here, a company
representative desiring to purchase conveyor machines, conveyor components or
conveyor replacement parts – who normally retains a general rather than a specific
impression of trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268
(TTAB 2007).
Opposition No. 91247404
- 18 -

Opposer asserts that its WE KEEP IT MOVING mark “suggest[s] products …
moving forward in a continuous and uninterrupted manner.”22 Noting that one
definition of the term ALWAYS is “all the time, continuously, uninterruptedly,”23
Applicant “believes that … [its] mark ALWAYS MOVING connotes (1) … [its]
conveyors are always moving; (2) … [its] projects [are] always moving forward, and
(3) … [its] production is always moving.”24
We find that the parties’ marks are somewhat different in appearance and sound.
Notwithstanding these slight differences, the marks share the identical word
MOVING – such that the marks are more similar than dissimilar in these elements.
We further find that the parties’ marks are very similar in meaning and overall
connotation. That is, if one manages to keep something constantly moving (as
conveyed by Opposer’s mark), it is thus always in motion (as conveyed by Applicant’s
mark). This strong similarity in meaning and commercial impression outweighs the
slight differences in sight and sound between the marks. See, e.g., Hancock v. Am.
Steel & Wire Co. of N.J., 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) (“Clearly the
involved marks ‘Tornado’ and ‘Cyclone’ [both for wire fencing] do not look or sound
alike. But a combination of all three factors [appearance, sound and meaning] need
not necessarily exist, and an opposition to registration may be sustained if the marks
are identical or so similar in meaning that confusion as to origin is deemed likely.”);

22 Opposer’s Brief, 21 TTABVUE 15. In the context of the WE KEEP IT MOVING mark as a
whole as related to Opposer’s goods, one definition of “keep” made of record by Applicant is
“to continue in action.” (Anklam Decl., 16 TTABVUE 86, Exh. 6).
23 ALWAYS definition made of record by Applicant. Anklam Decl., 16 TTABVUE 87, Exh. 6.
24 Anklam Decl., 16 TTABVUE 4, ¶ 14.
Opposition No. 91247404
- 19 -

Procter & Gamble Co. v. Conway, 419 F.2d 1332, 164 USPQ 301, 304 (CCPA 1970)
(reversing the Board’s dismissal of the opposition between the marks MR. CLEAN
and MISTER STAIN, both for cleaning products: “While here we have both aural and
optical dissimilarity between ‘stain’ and ‘clean,’ such factors are not necessarily
controlling on the issue of likelihood of confusion in the market place. A designation
may well be likely to cause purchaser confusion as to the origin of goods because it
conveys, as used, the same idea, or stimulates the same mental reaction, or in the
ultimate has the same meaning.”).
3. Opposer’s Survey
As noted, Opposer submitted the Testimony Declaration25 and Trademark
Confusion Research Report26 of Mark Pedote, a market research and brand strategy
consulting expert. Mr. Pedote’s Report (summarized in his Declaration) states the
following opinions and rationale:27
a. There is a likelihood of confusion between Nercon’s ALWAYS MOVING and
PPI’s KEEP IT MOVING slogans. Rationale: Those aware of PPI are more
likely to believe that they have seen or heard of Nercon’s ALWAYS MOVING
slogan than those unaware of PPI;
b. Those aware of Nercon may have seen Nercon’s ALWAYS MOVING slogan
in current use, but more likely are confusing the slogan with other slogans,
including PPI’s KEEP IT MOVING slogan. Rationale: Those aware of Nercon

25 Pedote Decl., 13 TTABVUE 6-9.
26 Trademark Confusion Research Final Report (“Report”), 13 TTABVUE 113-138.
27 Pedote Decl., 13 TTABVUE 8-9, ¶ 8; Report, 13 TTABVUE 120. Mr. Pedote’s qualifications
to offer expert testimony are set out in his report at 13 TTABVUE 134-35. He was disclosed
as an expert to Applicant as indicated by Applicant’s Notice filed with the Board at 8
TTABVUE. There is no indication in the record that Applicant deposed Mr. Pedote, and
Applicant did not object in its Brief that he is unqualified to offer expert testimony. See Fed.
R. Evid. 702, the cornerstone governing the admissibility of expert testimony.
Opposition No. 91247404
- 20 -

are more likely to believe that they have seen or heard of Nercon’s ALWAYS
MOVING slogan than those unaware of Nercon;
c. There is a likelihood of confusion between the Nercon slogan ALWAYS
MOVING and the PPI slogan WE KEEP IT MOVING. Rationale: Those aware
of PPI are more likely to believe they had seen advertising for Nercon’s
ALWAYS MOVING slogan than those unware of PPI; and
d. There is a likelihood of slogan confusion among those aware of PPL
Rationale: Qualified buyers aware of PPI selected ALWAYS MOVING second
only to PPl’s logo and significantly more than those unaware of PPI.
Mr. Pedote’s Report also conveys the following conclusions:28

• Consumer confusion is likely as 20% of consumers aware of Opposer associated
Applicant’s ALWAYS MOVING mark with Opposer.
• Conversely, 24% of consumers aware of Opposer associated Opposer’s WE
KEEP IT MOVING mark with Opposer, which is nearly the same as those
associating Applicant’s ALWAYS MOVING mark with Opposer.
We have several concerns with the survey methodology resulting in the opinions
and conclusions Mr. Pedote describes in his Declaration and Report.
Improper Universe: Mr. Pedote’s Report describes the “Respondent Targets” for
his survey as follows:29
1. Must be currently employed (or retired from organization less than one year)
by a business, company or organization in the U.S. that is a user of qualifying
conveyor systems, products and parts.
2. Must be a current or recent (past 12 months) purchase decision maker or
influencer regarding the purchase of any of the following types of equipment:
Pulleys, idlers, roller tubes, shafts, bearings, hubs, roll guards, self-leveling
foot pads, saw vices, magnetic speed switches, conveyor belt speed monitor
rolls, magnetic speed switch sensors, time relays, and all associated
replacement parts.

28 Report, 13 TTABVUE 129.
29 Id. at 116.
Opposition No. 91247404
- 21 -

As described immediately above, the survey questions were asked of the wrong
persons. Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 223 USPQ 1000,
1005 (2d Cir. 1984) (“[T]he survey utilized an improper universe in that it was
conducted among individuals who had already purchased or leased … [the goods]
rather than those who were contemplating a purchase or lease.”).
Incorrect Survey Methodologies: The accepted series of questions for a
likelihood of confusion survey are set out in Union Carbide Corp. v. Ever-Ready Inc.,
531 F.2d 366, 188 USPQ 623, 640-643 (7th Cir.), cert. denied sub. nom., Ever-Ready,
Inc. v. Union Carbide Corp., 429 U.S. 830, 191 USPQ 416 (1976) (the “Ever-Ready
survey format”):
After being shown the accused product bearing the contested mark:
Who do you think puts out this product?
What makes you think so?
Please name any other products put out by the same concern which puts out
the product shown here?
The Ever-Ready survey format has been accepted in prior Board likelihood of
confusion proceedings. See Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741,
1753-54 (TTAB 2006); Carl Karcher Enters. Inc. v. Stars Rests. Corp., 35 USPQ2d
1125, 1132 (TTAB 1995); Miles Lab’ys, Inc. v. Naturally Vitamin Supplements, Inc., 1
USPQ2d 1445, 1455-60 (TTAB 1986), even when the survey questions also include
additional questions “designed to elicit responses concerning sponsorship, affiliation,
permission and approval.” Starbucks, 78 USPQ2d at 1753.
Opposition No. 91247404
- 22 -

Mr. Pedote, however, did not employ the Ever-Ready survey format. Rather,
Opposer’s survey asked the following questions:30
Q1: Have you seen or heard of the following company slogan [ALWAYS
MOVING] before today?
Q3: Why do you think so?
Q5: Do you think that this slogan was approved or sponsored by another
company?
Simply as a matter of survey question syntax, the first and third questions (Q1
and Q5) are compound (“seen or heard of” and “approved or sponsored by”) and as a
result are unclear. 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1246-47(10th
Cir. 2013) (ambiguity of key question in online likelihood of confusion survey made
survey unreliable). Further, unlike the first question (Q1), the third question (Q5)
does not have the follow-on question “why do you think so?” such that we do not know
respondents’ reasons for their answers. Moreover, the third question (Q5) is leading,
in that it “tends to deliberately plant in the respondent’s mind the idea that”
Applicant required approval or sponsorship by another company before using the
ALWAYS MOVING mark. Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d
1321, 1333-34 (TTAB 1992).

30 Id. at 122-125.
Opposition No. 91247404
- 23 -

To support the Report’s conclusions regarding consumer confusion, another
portion of Mr. Pedote’s survey implemented a slogan and brand matching
methodology.31 Respondents were asked to match conveyor equipment
manufacturing company logos with their slogans. Specifically, respondents were
posed the following question: “Q8: Please match the following slogans to their
company or logo.” The correct matches are listed below:

← Opposer

← Applicant

Based on the respondents’ responses, the Report concludes that Opposer has
developed a relatively high level of slogan recall in the U.S. market, and that there is
a likelihood of slogan confusion among those aware of Opposer.32 As stated above, we
have concerns with this methodology. For one, we do not understand Mr. Pedote’s
“decision to crowd the field with … [five] different [company names and slogans] …
in a survey commissioned in connection with a dispute over … [slogans] between two

31 Id. at 128-131.
32 Id. at 129-130.
Opposition No. 91247404
- 24 -

[conveyor companies].” Girls Clubs of America Inc. v. Boys Clubs of America Inc., 1989
WL 297861, 11 USPQ2d 1523, 1527 (SDNY 1989). This turns the survey exercise into
a reading-and-guessing test. We further question, if used by Mr. Pedote for purposes
of control stimuli to account for survey “noise,” the use of three other competitor
slogans that did not include the term “move,” “moving,” “movement,” or other similar-
meaning term. See Indianapolis Colts, Inc. v. Metro. Balt. Football Club LP, 34 F.3d
410, 31 USPQ2d 1811, 1816 (7th Cir. 1994) (in a trademark dispute between the
INDIANAPOLIS COLTS, formerly the BALTIMORE COLTS and the BALTIMORE
CFL COLTS, criticizing the survey expert’s use of “a hypothetical team
unappetizingly named the ‘Baltimore Horses’” as the survey control, the purpose of
which was to control for survey “noise.”).
Focus on the wrong question: Finally, reviewing Mr. Pedote’s Declaration and
Report in their entireties, it is apparent that the whole intent of Opposer’s survey
methodology was to determine whether likely confusion exists regarding any
(incorrect) association between Applicant’s mark ALWAYS MOVING and Opposer.
The products of the parties are nowhere in the equation. This was the wrong question
to pursue. Rather, “the same goods [bearing similar marks] can be related in the mind
of the consuming public as to the origin of the goods. It is this sense of relatedness
that matters in the likelihood of confusion analysis.” Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). Without a focus upon the origin of the
goods bearing Applicant’s mark in the minds of the respondents, Opposer’s survey
results are relatively meaningless.
Opposition No. 91247404
- 25 -

Considering the above-identified flaws in Opposer’s survey, we afford it low
probative value.
4. Conclusion – The Parties’ Marks are Similar
We find the first DuPont factor, the similarity between the marks in appearance,
sound, meaning and commercial impression, supports a finding that confusion is
likely.
B. The Similarity or Dissimilarity and
Nature of the Goods and Services
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods … as described in an application or registration.…” DuPont, 177 USPQ at
567. “This factor considers whether ‘the consuming public may perceive [the
respective goods of the parties] as related enough to cause confusion about the source
or origin of the goods ….’” 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)).
To determine the relationship between the goods, we are bound by the
identifications in Applicant’s involved Application and Opposer’s Registration. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. 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
Opposition No. 91247404
- 26 -

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.”).
Opposer asserts its goods and Applicant’s goods are identical, pointing to the
products each party sells (untethered to the marks at issue or the identifications in
the Application and Registration here involved).33 This is the wrong comparison.
“Likelihood of confusion must be determined based on an analysis of the mark[s] as
applied to the … [goods] recited in applicant’s application vis-à-vis the … [goods]
recited in [the] … registration, rather than what the evidence shows the [goods] to
be.” In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(citing Canadian Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987)).
The parties’ goods as identified in the ALWAYS MOVING Application and the WE
KEEP IT MOVING Registration indeed are not identical. On the other hand, as
Applicant concedes, the parties’ identified goods – conveyors being machines and
conveyor components and replacement parts – are related.34 In fact, the same
companies that purchase conveyor machines to operate their businesses are also in
need of, and purchase, conveyor components and replacement parts.35 For purposes
of considering whether confusion is likely, it is sufficient that the respective goods are

33 Opposer’s Brief, 21 TTABVUE 17; Hastings Rebuttal Decl., 17 TTABVUE 3-8, ¶¶ 5-11.
34 Applicant’s Brief, 22 TTABVUE 13.
35 See, e.g., Opposer’s Field Technical Engineers brochure, describing the process of Opposer’s
on-site engineers’ surveys of customers’ conveyor component needs, measurement taking,
and recommendations for fitting the components to the customers’ conveyor machines.
Hastings Decl., 13 TTABVUE 94, Exh. 12.
Opposition No. 91247404
- 27 -

related in some manner, or that the conditions and activities surrounding their
marketing 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 source. See Coach Servs., 101
USPQ2d at 1722.
We therefore find the similarity and nature of the goods as described in the
ALWAYS MOVING Application and Opposer’s WE KEEP IT MOVING Registration,
the second DuPont factor, support a conclusion that confusion is likely.
C. Comparison of the Parties’ Trade Channels
The third DuPont factor concerns the “similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567. It is a fundamental
principle of registration practice that regardless of the parties’ actual business
activities, the goods in an application or registration are construed to include all goods
of the type identified, sold in all normal channels of trade for such goods, to all usual
purchasers of them. Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1825-26 (TTAB 2009). Thus, in the absence of specific limitations in Opposer’s
asserted Registration or in the opposed Application (and there are no such
limitations), we must presume that the identified goods will be marketed in all
normal and usual channels of trade and methods of promotion. Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
Opposition No. 91247404
- 28 -

Although Applicant does not identify its specific customers,36 Applicant describes
its business as the design and manufacture of conveyor systems and that it sells such
equipment for consumer-packaged goods.37 Opposer identifies at least some of its
customers to include General Mills, Kelloggs, Pepperidge Farms, Frito-Lay,
Interbake Foods, Mondelez, Hormel, Kraft Heinz, Mars, Schwan’s, Hershey’s, Del
Monte Foods, Nestle, Tyson Foods, and Morgan Foods,38 which are companies that
produce and sell consumer-packaged goods. In its “What Have We Done for You
Lately” advertising pieces, among the types of items Opposer lists as supplying to its
customers under the mark WE KEEP IT MOVING are conveyor equipment and
components.39 The target customers for the parties’ respective goods thus appear to
overlap.
In fact, Applicant concedes that the parties are in the same industry, have
appeared simultaneously at least at one trade show, have advertised in the same
publication, and have marketed their goods on the same websites.40 These
concessions support the overlap of the parties’ trade channels due to the relatedness
of the parties’ identified goods and support a finding that the target customers

36 As the application was filed under an intent-to-use basis, and there is no evidence in the
record that Applicant has commenced use of the ALWAYS MOVING mark on goods, the
record does not support a specific finding that Applicant’s sale of equipment for consumer-
packaged goods is under the mark.
37 Anklam Decl., 16 TTABVUE 2, ¶ 4.
38 Hastings Decl., 13 TTABVUE 3, ¶ 5.
39 Id. at 32-46, Exh. 3.
40 Applicant’s Brief, 22 TTABVUE 9; Anklam Decl., 16 TTABVUE 4, ¶¶ 20-22. See also
Opposer’s evidence of this overlap at Hastings Decl., 13 TTABVUE 4-5, 104-111, ¶ 11 and
Exh. 22.
Opposition No. 91247404
- 29 -

overlap. Therefore, we find that the third DuPont factor, the similarity of trade
channels, supports the conclusion that confusion is likely.
D. Absence of Actual Confusion
The seventh DuPont factor is the “nature and extent of any actual confusion, while
the eighth DuPont factor considers the “length of time during and conditions under
which there has been concurrent use without evidence of actual confusion.” DuPont,
177 USPQ at 567. Applicant argues that “[s]ince there is no evidence of actual
confusion on the record, this factor cannot be used to support a finding of likelihood
of confusion.”41 Opposer does not address this contention, but under the facts of this
proceeding the absence of actual confusion does not aid Applicant.
“The absence of any reported instances of confusion is meaningful only if the
record indicates appreciable and continuous use by applicant of its mark for a
significant period of time in the same markets as those served by opposer under its
marks.” Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB
2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of
actual confusion to be probative, there must have been a reasonable opportunity for
confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283,
1287 (TTAB 2007) (the probative value of the absence of actual confusion depends
upon there being a significant opportunity for actual confusion to have occurred).

41 Applicant’s Brief, 22 TTABVUE 16.
Opposition No. 91247404
- 30 -

The only evidence in the record regarding Applicant’s use of the ALWAYS
MOVING mark is the declaration testimony of Mr. Anklam stating that Applicant
“has used the phrase ‘Always Moving’ since at least as early as October 4, 2016”;
accompanied by what appear to be blogs and other online publications from October
2016, September 2018 and October 2018 bearing the mark. Applicant did not provide
the number of “hits” (user views) on these web pages to demonstrate that the web
pages were widely viewed, thereby indicating that there has been a reasonable
opportunity for confusion to have occurred. Applicant provided no other information
regarding its use of the ALWAYS MOVING mark, and we note here again that the
ALWAYS MOVING Application is based on intent-to-use in commerce with no
evidence that an Amendment to Allege use has been filed in connection with the
Application.
In the absence of evidence showing the extent of concurrent use of the WE KEEP
IT MOVING and ALWAYS MOVING marks in commerce at a level that would show
the opportunity for confusion to occur, we find the absence of actual confusion, the
seventh and eighth DuPont factors, to be neutral.
E. Any other Established Fact Probative
of the Effect of Use (Applicant’s Intent)
The thirteenth DuPont factor considers “[a]ny other established fact probative of
the effect of use.” 177 USPQ at 567. Under the thirteenth DuPont factor, “evidence of
[A]pplicant’s bad faith adoption of … [its] mark is relevant to our likelihood of
confusion analysis.” Edom Lab’ys, Inc. v. Lichter, 102 U.S.P.Q.2d 1546, 1553 (TTAB
2012). On the other hand, “proof of intent to trade on another’s goodwill, while
Opposition No. 91247404
- 31 -

persuasive evidence of likelihood of confusion, is not … a requirement under [S]ection
2(d).” Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d
1628, 1630 (Fed. Cir. 1988).
Contending that Applicant adopted the ALWAYS MOVING mark in bad faith,
Opposer argues:42
Applicant was aware of Opposer’s WE KEEP IT MOVING mark before
filing the application as Opposer sent Applicant a cease and desist letter
on September 6, 2018 as a result of Applicant using the WE KEEP IT
MOVING mark and derivatives thereof in connection with similar goods
….43 Based on Applicant’s brainstorming notes regarding development
of their ALWAYS MOVING mark …,44 Applicant was undeniably
attempting to develop a mark that has a similar appearance, sound and
connotation to Opposer’s mark. Each and every one of the potential
marks contained in Applicant’s notes have a similar appearance, sound
and connotation to Opposer’s mark …. Applicant has not provided any
explanation for why it was important to select a mark providing the
same commercial impression as Opposer’s mark.

Disputing Opposer’s contention of bad faith, Applicant responds:45
Opposer implies that Applicant adopted their ALWAYS MOVING mark
in bad faith. This could not be further from the truth. … First, Applicant
has used ALWAYS MOVING at least as early as October 4, 2016.46 …
This use was well before Applicant was aware of Opposer’s mark and
before Opposer filed their application on October 17, 2006 [sic]. …
Second, the referenced brainstorming notes47 clearly demonstrate that
Applicant was exploring marks containing “move” or “moving”. It is
impermissible for Opposer to expand their scope of protection to
encompass all marks containing this word or a derivative thereof
because Opposer’s mark does not consist solely of the term “moving”.

42 Opposer’s Brief, 21 TTABVUE 19-20.
43 Opposer’s cease-and-desist letter was not made of record.
44 See Anklam Decl., 16 TTABVUE 6-7, Exh. 1.
45 Applicant’s Brief, 22 TTABVUE 16-17.
46 See Anklam Decl., 16 TTABVUE 88-91, Exh. 7.
47 Id. at 6-7, Exh. 1.
Opposition No. 91247404
- 32 -

Instead, it is WE KEEP IT MOVING. … As [previously] discussed …,
there are at least 19 marks related to conveyors containing the word
“move” or “moving”. Some of these existed prior to Opposer’s registration
efforts. While Applicant cannot know the other party’s intent for sure, it
could be based on a play on words as conveyors are used to move things.
… Lastly, the notes from Applicant’s brainstorming session show that
Applicant was taking care to not adopt a mark with conflicts. This is
evidenced by their opinions as to whether conflicts exist ….48
Specifically, the notes demonstrate Applicant’s belief that there doesn’t
appear to be any conflicts with the “ALWAYS MOVING” mark. … Based
on this, Applicant did not have any bad intentions in adopting their
ALWAYS MOVING mark. This factor weighs in Applicant’s favor.
While “bad faith is strong evidence that confusion is likely …, [and] such an
inference … [can be] drawn from the imitator’s expectation of confusion [,]” L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1442 (TTAB 2012), we find no such expectation
on the part of Applicant here. Applicant provides a good faith basis, supported by
evidence, for its adoption of the ALWAYS MOVING mark for use and registration.
We therefore find Applicant’s intent in adopting the ALWAYS MOVING mark to be
a neutral factor.
VI. Conclusion: Likelihood of Confusion
The first, second and third DuPont factors favor a finding of likelihood of
confusion. Opposer’s mark is inherently distinctive and of moderate commercial
strength. The parties’ marks are more similar than dissimilar in appearance, sound,
meaning and overall commercial impression. Their goods are related, and travel in
overlapping trade channels. The absence of actual confusion and Applicant’s intent
are neutral factors. We conclude that likelihood of confusion exists between Opposer’s

48 Id.
Opposition No. 91247404
- 33 -

mark as applied to its identified goods and Applicant’s mark as applied to its
identified goods.
Decision:
The opposition to registration of Applicant’s ALWAYS MOVING mark on the
ground of likelihood of confusion under Trademark Act Section 2(d) is sustained.