Recreational Equipment, Inc.v.fit GmbH

Trademark Trial and Appeal Board

Jan 31, 2018

No. 91217504 (T.T.A.B. Jan. 31, 2018)

LDR Mailed: January 31, 2018

Opposition No. 91217504

Recreational Equipment, Inc.
v.
fit GmbH

Before Zervas, Ritchie, and Shaw, Administrative Trademark Judges.

By the Board:

Applicant fit GmbH (“Applicant”) is the owner of the following two applications
on the Principal Register, both of which have been opposed by Recreational
Equipment, Inc. (“Opposer”):
1. Serial No. 79132046 (the ‘046 Application) for the mark REI,1 in stylized form
as shown below, for
a. “Rust-proofing agents in the nature of a coating for use as a preservative
against rust,” in International Class 2; and
b. “Perfumery products, namely, perfume; cosmetics, essential oils, soaps,
washing and bleaching substances, namely, laundry detergent and

1 Filed April 29, 2013, pursuant to Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition Nos. 91217504

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bleach; starch and starch preparations for laundry use; colorants for
laundry, namely, laundry blueing; stain-removing, cleaning and
polishing preparations, other than for leather,” in International Class 3.

2. Serial No. 85895039 (the ‘039 Application) for the mark REI IN TUBE,2 in
standard character form, for
a. “Perfumes; non-medicated toiletries; aromatics, namely, essential oils;
laundry detergents; washing preparations for laundry use; bleaching
preparations for laundry use; fabric softeners; spot removers;
preparations for refreshing of clothes and textiles, namely, sachets for
perfuming linen, laundry glaze, deodorant soap, color-brightening
chemicals for household and laundry purposes, smoothing and starching
preparations, dry-cleaning preparations, laundry bluing; washing
preparations for laundry use; soaps; soaps for bleaching textiles;
preparations for cleaning and washing hands, namely, soap; laundry
starch; perfumed sachets; cleaning, polishing, scouring and abrasive
preparations; deodorants for human beings or for animals; perfumed
water,” in International Class 3; and

2 Filed April 4, 2013, pursuant to pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), and disclaiming the exclusive right to use the term “IN TUBE” apart from the
mark as shown.
Opposition Nos. 91217504

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b. “Deodorants for clothing and textiles in form of liquids, powders, creams
and sprays,” in International Class 5.
Opposer alleges prior use of the mark REI and likelihood of confusion under
Section 2(d) of the Trademark Act with four pleaded registrations for the mark REI,
each in typed format3 for, inter alia, “mail order and retail department store
services”;4 “rainwear, underwear, hats, gloves, pants, skiwear, vests, shoes, socks,
sweaters, jackets, pullovers, shirts, boots, belts, scarfs, bandanas, footwear,
sweatpants, sweatshirts, gaiters and suspenders,”5 retail sale services of various
items including clothing;6 and for other items including, as relevant, “sleeping bags
and pillows” and “tents.”7 By way of a motion to amend its pleading filed concurrently
with its first motion for summary judgment, Opposer sought to add a claim alleging
Applicant’s lack of bona fide intent to use its marks on its applied-for goods.8 In an
order dated March 14, 2017, however, while denying the motion for summary
judgment, the Board also granted Opposer’s motion to amend its notice of opposition
but only insofar as it pertained to the ‘039 Application since an opposition filed
“against an application filed under Section 66(a) of the Trademark Act may not be

3 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’ drawings.
The mark on a typed drawing was required to be typed entirely in capital letters. A typed
mark is the legal equivalent of a standard character mark.” TMEP § 807.03(i) (April 2014).
4 Registration No. 1276551 in International Class 42, registered on May 1, 1984. Section 8
and 15 affidavits accepted and acknowledged. Renewed twice.
5 Registration No. 1163815 in International Class 25, registered on August 4, 1981. Section
8 and 15 affidavits accepted and acknowledged. Renewed twice.
6 Registration No. 2310854 in International Class 35, registered on January 25, 2000. Section
8 and 15 affidavits accepted and acknowledged. Renewed.
7 Registration No. 2683701 includes items in International Classes 12, 18, 20, 22, and 28, and
registered on February 4, 2003. Section 8 and 15 affidavits accepted and acknowledged.
Renewed.
8 28 TTABVUE 10-11.
Opposition Nos. 91217504

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amended to add a ground for opposition.”9 Thus, as noted, the claim for lack of bona
fide intent to use may go forward only as to the ‘046 Application. In an Answer filed
on April 4, 2017, Applicant denied the salient allegations of the amended notice of
opposition.
This case now comes up on Applicant’s motion to amend its applications, dated
October 3, 2017 and on Opposer’s second motion for summary judgment on its
likelihood of confusion claim regarding both applications and its lack of bona fide
intent to use claim directed to the ‘039 application, filed June 8, 2017. Since the
motion to amend is germane to the second motion for summary judgment, and affects
the analysis therein, we decide the motion to amend first.
1. Applicant’s motion to amend its applications
The motion to amend proposes to restrict not only the number of goods that
Applicant seeks to register, but also limits both applications to International Class 3,
thereby deleting one other class in each application. Thus, after accepting Applicant’s
motion to amend, our likelihood of confusion analysis is focused on only the remaining
goods in International Class 3, as specified herein.
A. Amendment to Class 3 in each application.
Applicant seeks, by its motion to amend its applications, to limit its applied-for
goods in the ‘039 Application to only “laundry detergents” in International Class 3
and to limit its applied-for goods in the ‘046 Application to only “laundry detergents
for washing by hand,” in International Class 3.10

9 36 TTABVUE 3.
10 51 TTABVUE 3.
Opposition Nos. 91217504

5
Applicant states that the proposed amendments “serve to clarify and limit but in
no way broaden the identification” of its goods. Applicant further states that it
received Opposer’s consent to file the motion to amend on October 2, 2017 and that
“[a]ccordingly, the Applicant’s Motion to Amend Applications is filed with Opposer’s
consent.”11 Opposer has not filed a brief in opposition to Applicant’s motion and refers
to the amended application in its reply brief and addresses the Class 3 goods as
amended for purposes of likelihood of confusion. Inasmuch as the amendments are
appropriately narrowing and Opposer has consented thereto, we grant the motion to
amend both applications in Class 3. See Trademark Rule 2.133(a), 37 C.F.R.
§ 2.133(a); TBMP § 514.02.
B. Deletion of Class 2 from ‘046 application and deletion of Class 5 from
‘039 application.

In an opposition to an application having multiple classes, an amendment to
delete an entire class from an application is an abandonment of that class. See TBMP
§ 602.01 (June 2017). Trademark Rule 2.135, 37 C.F.R. § 2.135, provides in relevant
part as follows:
After the commencement of an opposition, … if the applicant files a written
abandonment of the application or of the mark without the written consent of
every adverse party to the proceeding, judgment shall be entered against the
applicant. The written consent of an adverse party may be signed by the
adverse party or by the adverse party’s attorney or other authorized
representative.

(Emphasis added.) Here, although Applicant alleges Opposer’s consent to the
amendments which include a deletion of one class from each application, neither

11 52 TTABVUE 4.
Opposition Nos. 91217504

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party has submitted Opposer’s written consent to the deletions, which are in effect
abandonments of each class.
Accordingly, judgment is entered against Applicant as to Class 2 in the ‘046
application and Class 5 in the ‘039 application.
We proceed now with our analysis of likelihood of confusion with respect to the
remaining Class 3 goods.
2. Opposer’s second motion for summary judgment
We now turn to Opposer’s second motion for summary judgment. The evidentiary
record upon summary judgment in an inter partes proceeding before the Board
includes, without action by any party, the pleadings, and the file of the application
that is the subject of the proceeding as provided in 37 CFR § 2.122(b). Opposer also
supports its second motion for summary judgment with the declaration of Opposer’s
attorney Stuart R. Dunwoody, dated June 8, 2017, together with attached exhibits A
through W, and the declaration of Opposer’s General Merchandising Manager Tom
Kimmet, also dated June 8, 2017, together with exhibits A through O attached
thereto. Exhibits to the Dunwoody declaration include status and title copies of
Opposer’s pleaded registrations from the TESS database (Exhibit A); other
registrations from Opposer that include the term REI for other goods and services
(Exhibit B); documents from the file of the ‘039 Application, showing that Applicant
was required to disclaim the term “IN TUBE” (Exhibit C); Internet printouts showing
third party use of Applicant’s applied-for goods and Opposer’s goods or services
(Exhibits D through N); email exchanges between counsel regarding, and
Opposition Nos. 91217504

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supplementing Applicant’s discovery requests (Exhibits P through U); and copies of
the discovery requests (Exhibits V and W). Exhibits to the Kimmet declaration
include locations of REI stores (Exhibit A); articles and information about Opposer’s
fame and renown (Exhibits B through H); pictures and information about laundry
detergent sold by Opposer and other evidence of relatedness of the goods and services
(Exhibits K though O).
In opposition to Opposer’s second motion for summary judgment, Applicant did
not submit any affidavits or declarations, but submitted evidence that Opposer sells
in its stores sunglasses, goggles, and other products that are “similar to REI”
(Exhibits A through E).12
Summary judgment is an appropriate method of disposing of cases in which there
is no genuine dispute with respect to any material fact, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c)(1). A party moving for summary
judgment has the burden of demonstrating the absence of any genuine dispute as to
a material fact, and that it is entitled to judgment as a matter of law. See Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is
genuine if, on the evidence of record, a reasonable fact finder could resolve the matter
in favor of the non-moving party. See Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods,
Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).

12 As further discussed, infra, Applicant also referred to “twenty four such third party
registrations” but did not make any of record. 52 TTABVUE 12.
Opposition Nos. 91217504

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When the moving party has supported its motion with sufficient evidence that, if
unopposed, indicates there is no genuine dispute of material fact, the burden then
shifts to the non-moving party to demonstrate the existence of a genuine dispute of
material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92
USPQ2d 1537, 1540 (TTAB 2009). All evidence must be viewed in the light most
favorable to the nonmovant, and all justifiable inferences are to be drawn in the
nonmovant's favor. Lloyd's Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 23
USPQ2d at 1472. Further, in considering whether summary judgment is appropriate,
the Board may not resolve any genuine disputes of material fact necessary to decide
the merits of the opposition. Rather, the Board may only ascertain whether any
material fact cannot be disputed or is genuinely disputed. See Lloyd's Food Products,
25 USPQ2d at 2029; and Olde Tyme Foods, 22 USPQ2d at 1542.
a. 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.
Opposition Nos. 91217504

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1999); see also Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014).
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). Opposer has submitted
evidence that it is the owner of its pleaded registrations and they are extant, and
hence there is no genuine dispute as to either Opposer’s standing or its priority.
b. 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 Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
Opposition Nos. 91217504

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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.
i. Fame
We turn first to the factor of fame because where it exists it plays a dominant role.
Kenner Parker Toys Inc. v. Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). Famous marks are accorded more protection precisely because they
are more likely to be remembered and associated in the public mind than a weaker
mark. Id. A famous mark is one “with extensive public recognition and renown.” Id.
See also Palm Bay Imports 73 USPQ2d at 1694; Bose Corp. v QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002). When analyzing likelihood of
confusion, the fame of the challenger's mark is a factor that will fall somewhere “along
a spectrum of very strong to very weak” and must be considered from the viewpoint
of the relevant consumers. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In re Coors Brewing
Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003). Because we accord a
famous mark a broad scope of legal protection and because fame plays a dominant
role in the likelihood of confusion analysis, the party asserting that its mark is famous
must clearly prove that fact. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901, 1904 (TTAB 2007). Fame may be measured indirectly by, among other
things, the volume of sales of the goods traveling under the mark, advertising
expenditures related to the mark and the goods, and the length of time those indicia
Opposition Nos. 91217504

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of commercial awareness have been evident. E.g., Nina Ricci, S.A.R.L. v. E.T.F.
Enters., Inc., 899 F.2d 1070, 12 USPQ2d 1901, 1902 (Fed. Cir. 1989) (NINA RICCI
found to be a famous mark for perfume, clothing and accessories: $200 million in
sales, over $37 million in advertising over 27 years); Kimberly-Clark Corp. v. H.
Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985) (HUGGIES
found to be a famous mark for diapers: over $300 million in sales over 9 years, $15
million in advertising in one year).
Petitioner asserts that its REI mark “enjoys considerable fame and strength.”13
As described by Opposer’s General Merchandising Manager, Mr. Kimmet, “REI is a
national outdoor retail consumer co-op,” which was founded in 1938 and has issued
20 million memberships, with 6.3 million current memberships.14 Mr. Kimmet notes
that “REI believes it is the largest consumer coop in the United States,”15 referencing
151 stores in 36 states, as well as available options via mail-order, telephone and
online. Mr. Kimmet attested to very high and increasing sales under the REI mark
between 2009 and 2016, ranging from over $1.4 billion in 2009 to over $2.5 billion in
2016.16 He also noted that the company spent an average of $60 million per year on
advertising during the same period, “in which the mark REI has been prominently
depicted.”17 Mr. Kimmet noted that Opposer has a line of products under the house

13 40 TTABVUE 7.
14 41 TTABVUE 3.
15 41 TTABVUE 3.
16 41 TTABVUE 3-4.
17 41 TTABVUE 4.
Opposition Nos. 91217504

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mark, REI, which have “frequently received awards,”18 including its tents, sleeping
bags, back packs, and clothing.
The Kimmet declaration further contains exhibits showing Opposer in the news.
Examples include references to Opposer as having the highest “CQ™” or “Customer
Quotient” among specialty retailers;19 a similar mention by the Harvard Business
Review;20 a reference to Opposer as being among the top sporting goods store brands
of the year in 2017;21 and references to awards given by media to Opposer’s
backpacks, tents, and sleeping bags as top consumer products.22
We conclude that Opposer has established significant market exposure and
overall fame amongst the relevant public. We find no genuine dispute of material
fact that Opposer has established that REI is a strong and well known mark in
connection with Opposer’s retail services and related house products including its
tents, sleeping bags, back packs, and clothing.
ii. Marks
We next 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

18 41 TTABVUE 7.
19 41 TTABVUE 62.
20 41 TTABVUE 86-87.
21 41 TTABVUE 100.
22 41 TTABVUE 154, 157, 225.
Opposition Nos. 91217504

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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).
The mark in the ‘046 Application consists of the mark REI in stylized format,
which is identical to Opposer’s pleaded REI, in typed form. With a registered mark
in typed drawing format, a registrant is entitled to present its mark in any of a
number of different formats, including ones resembling that presented by Applicant's
mark. See Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259
(Fed. Cir. 2011) (“If the registrant … obtains a standard character mark without
claim to ‘any particular font style, size or color,’ the registrant is entitled to depictions
of the standard character mark regardless of font, style, size, or color, not merely
‘reasonable manners' of depicting its standard character mark.”) There is no
indication that the marks would have any differences in sound or commercial
impression. Cf. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The mark in the ‘039
Application consists of the mark REI IN TUBE, in standard characters, where the
Opposition Nos. 91217504

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term “IN TUBE” is descriptive and disclaimed. See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive
or generic with respect to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark”). These marks, too, are highly
similar in sight, sound, and commercial impression in light of the shared term REI.
Overall, we find no genuine dispute of material fact that the mark in the ‘046
Application is identical and the mark in the ‘039 Application is highly similar to
Opposer’s pleaded REI mark.
iii. Goods and Services
Pursuant to the granted amendment, Applicant’s goods are “laundry detergents”
in the ‘039 Application and “laundry detergents for washing by hand” in the ‘046
Application. Opposer’s pleaded registrations identify a variety of goods and services
including “mail order and retail department store services”; “rainwear, underwear,
hats, gloves, pants, skiwear, vests, shoes, socks, sweaters, jackets, pullovers, shirts,
boots, belts, scarfs, bandanas, footwear, sweatpants, sweatshirts, gaiters and
suspenders,” retail of various items including clothing; and for other items including,
as relevant, “sleeping bags and pillows” and “tents.”
Mr. Kimmet’s declaration notes that Opposer has, in the past, sold laundry
detergent, branded with the REI house mark, through its retail outlets.23 These
include the REI Loft II and REI Revive II cleaner products.24 The Kimmet declaration
includes as Exhibit L photographs of the REI Loft II and REI Revive II cleaner

23 41 TTABVUE 9.
24 41 TTABVUE 9.
Opposition Nos. 91217504

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products, and Exhibit M showing blog posts discussing them by name, and including
the mark REI.25 Opposer also submitted at least three use-based, third-party
registrations identifying both laundry detergent and goods or services identified in
Opposer’s pleaded registrations. They are MILLS FLEET FARM (Registration No.
3863272) identifying both laundry detergent and retail of clothing; NORWEX
(Registration No. 4883243) identifying both laundry detergent and shirts and pants;
and SEVENTH GENERATION (Registration No. 1847543) also identifying both
laundry detergent and shirts and pants. Use-based, third-party registrations serve to
suggest that the goods are of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). The blog posts
tend to show consumer perceptions that Opposer’s retail services are related to
laundry detergents, such as those identified by Applicant.
Regarding channels of trade, Opposer submitted web evidence that Nordstrom
offers both laundry detergent and retail department store services, under the same
mark.26 Similarly, webpages from Costco, Sams Club and Target offer retail
department store services and laundry detergent (not under the same mark).27
Additionally, there is nothing in the recital of goods and services in either Opposer’s
pleaded registrations or in the ‘039 Application and ‘046 Application, as amended,
that limits either Opposer’s or Applicant’s channels of trade. In the absence of specific
limitations, we must presume that both Opposer’s and Applicant’s goods and services

25 41 TTABVUE 366, 374, 396, 399, 405.
26 42 TTABVUE 156.
27 42 TTABVUE 86, 168, 195.
Opposition Nos. 91217504

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will travel in all normal and usual channels of trade and methods of distribution.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); see also
In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no
limitations as to channels of trade or classes of purchasers in either the application
or the cited registration, it is presumed that the registration and the application move
in all channels of trade normal for those services, and that the services are available
to all classes of purchasers for the listed services).
We find no genuine dispute of material fact that Opposer’s goods and services and
Applicant’s goods are related and that the channels of trade thereof are related.
iv. Sophistication and degree of consumer care
Opposer urges us to consider that the goods and services at issue in this
proceeding may be subject to impulse purchases. There is evidence that laundry
detergent is offered for sale for as little as $4 per bottle.28 There is also evidence of
inexpensive clothing items, as identified in Opposer’s pleaded registrations.29 We find
there is no genuine dispute of material fact that goods identified by both Applicant
and by Opposer may be purchased on impulse.
v. Similar marks in use on similar goods and services
Applicant asserts that the sixth du Pont factor, the number and nature of similar
marks in use on similar goods and services, “weigh against a finding of a likelihood
of confusion.”30 In particular, “Applicant submits that there are twenty-four such

28 41 TTABVUE 399 (including under Opposer’s REI mark).
29 42 TTABVUE 82.
30 52 TTABVUE 10.
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third party registrations.”31 However, Applicant has not submitted these
registrations in evidence.32 Exhibits A through E to Applicant’s brief show
sunglasses, goggles, headphones, and cameras sold online by Opposer at rei.com, but
Applicant’s sales of these goods are not relevant to the issues before us. To the extent
that some of the goods sold by Opposer include a mark that starts with the letter “R”
followed by a hard “A” sound, such as “Ray-Ban” glasses33 and TYR Black Hawk
Racing Swim Goggles,34 we find that these goods do not have sufficiently similar
marks to narrow the scope of Opposer’s rights in the REI mark.
We find no genuine dispute of material fact that there are no similar third-party
marks in use on similar goods and services.
vi. Actual confusion and length of concurrent use
Applicant argues that we should consider that there has been no actual confusion
during a period of concurrent use. As Opposer points out, however, while evidence of
actual confusion can be useful in a likelihood of confusion analysis, the lack of actual
confusion is not availing. This is particularly so where, as here, Applicant has a
Section 1(b) and a Section 66(a) application, and it unclear whether there has been
meaningful opportunities for confusion to have occurred among purchasers. J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965); Nike

31 52 TTABVUE 12.
32 Applicant lists two registrations in the text of the brief itself. However, a list is not
sufficient for our analysis. Trademark Trial and Appeal Board Manual of Procedure (TBMP)
§ 704.03(b)(1)(B) (June 2017).
33 52 TTABVUE 21.
34 52 TTABVUE 35.
Opposition Nos. 91217504

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Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202 (TTAB 2007). Accordingly, we find
these du Pont factors to be neutral.
vii. Wide variety of goods and services
Opposer urges us to consider the ninth du Pont factor, “[t]he variety of goods on
which a mark is or is not used,” asserting that “Opposer uses its REI mark on a wide
variety of goods and services, for a wide variety of apparel, camping and climbing
equipment, retail services, travel services, and informational services.”35 In addition
to the pleaded registrations, Opposer included registrations identifying these goods
and services with the Dunwoody declaration. Because we find that Opposer uses its
REI mark on a wide variety of goods and services, there is no genuine dispute of
material fact that this du Pont factor favors finding a likelihood of confusion.
3. Conclusion

Applicant’s motion to amend its applications, to limit its applied-for goods in the
‘039 Application to “laundry detergents” in International Class 3 and to limit its
applied-for goods in the ‘046 Application to “laundry detergents for washing by hand,”
in International Class 3 is granted.
In considering Opposer’s second motion for summary judgment, we find that there
is no genuine dispute that Opposer’s REI mark is a famous mark among the relevant
public in connection with Opposer’s retail services and related house products
including its tents, sleeping bags, back packs, and clothing; that the mark in the ‘046
Application is identical in sight, sound, and commercial impression, and the mark in

35 40 TTABVUE 18.
Opposition Nos. 91217504

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the ‘039 Application is highly similar in sight, sound, and commercial impression;
that the goods and services are related and that the channels of trade are related and
may be purchased on impulse; that there is no evidence of third-party uses of similar
marks on similar goods and services; and that Opposer uses its REI mark on a wide
variety of goods and services. In conclusion, we find a likelihood of conclusion exists
as a matter of law between Opposer’s REI mark for its goods and services and the
goods of both the ‘039 Application and the ‘046 Application, as amended.
a. No bona fide intent to use claim
In view of our conclusion on Opposer’s likelihood of confusion claim, we need not
address Opposer’s second claim regarding a lack of bona fide intent to use in the ‘039
Application.
Decision: The opposition is sustained as to both Application Serial No.
79132046 and Application Serial No. 85895039.