Rhythm Holding Limitedv.Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N’ Ballin

Trademark Trial and Appeal Board

Dec 12, 2018

OPP (T.T.A.B. Dec. 12, 2018)

Mailed: December 12, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
Rhythm Holding Limited

v.

Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N’ Ballin
_____
Opposition No. 91231106
_____

John L. Welch and William E. Maguire of Wolf Greenfield & Sacks PC,
for Rhythm Holding Limited.
Kevin J. Keener of Keener & Associates PC,
for Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N’
Ballin
————
Before Bergsman, Heasley, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N’ Ballin,
(“Applicants”) jointly seek registration on the Principal Register of the mark
RHYTHM N’ BALLIN (in standard characters) for the following goods:
Shorts for football, basketball, golf, baseball, tennis and hockey; hooded
shirts, t-shirts, caps, polo shirts, leotards; padded elbow compression
sleeves sold as an integral component of athletic uniforms; socks; team
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91231106
2
wear, namely, athletic uniforms and jerseys; Sliding shorts; Sports
shirts with short sleeves; Sweat shorts; T-shirts; Triathlon clothing,
namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon
shirts, triathlon suits; Walking shorts, in International Class 25; and

Footballs, baseballs, golf balls basketball balls, tennis balls, and soccer
balls, in International Class 28. 1

Rhythm Holding Limited (“Opposer”) opposes the registration of Applicants’
mark on the ground of likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). In support of its Section 2(d) claim, Opposer pleaded
ownership of the following registrations:
1. Registration No. 3610417 for the mark RHYTHM (in standard
characters) for “backpacks, day packs” in International Class 18, and
“clothing, namely, shirts, t-shirts, shorts; headgear, namely, hats, caps”
in International Class 25;2

2. Registration No. 3884199 for the mark RHYTHM (in standard
characters) for “Clothing, namely, footwear, casual footwear, sandals;
bathing suits and trunks, beachwear, swimwear, beach and bathing
coverups, bermuda shorts, pants, polo shirts, slacks, sweatshirts, tank
tops, tops, trousers, knit shirts, caps; sleepwear, namely, undershirts”
in International Class 25;3

3. Registration No. 3890579 for the mark RHYTHM LIVIN (in standard
characters) for “clothing, namely, bathing suits and trunks, beachwear,
swimwear, T-shirts, shorts” in International Class 25;4 and

4. Registration No. 4280130 for the mark RHYTHM (in standard
characters) for “snowboards” in International Class 28.5

1 Application Serial No. 86687500, filed on July 8, 2015, based on an allegation of a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
2 Issued on April 21, 2009; renewed.
3 Issued November 30, 2010; renewed.
4 Issued December 14, 2010; renewed.
5 Issued January 22, 2013.
Opposition No. 91231106
3
Additionally, Opposer pleaded prior common law use of the marks RHYTHM and
RHYTHM LIVIN, both for clothing and snowboards.6
In their answer, Applicants denied the salient allegations in Opposer’s pleading.
At trial, Opposer did not pursue its likelihood of confusion claim against
Applicants’ identified International Class 28 goods. Accordingly, Opposer’s Section
2(d) claim, as it pertains to Applicants’ International Class 28 goods, is deemed
waived.7 See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014).
I. Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Applicants’ application file. The record also comprises the evidence
summarized below.
A. Opposer’s Evidence
1. Testimony Declaration of Josh Barrett, Opposer’s Global General
Manager, and accompanying exhibits;8
2. Notice of reliance on status and title copies of Opposer’s pleaded
Registration Nos. 3610417, 3884199, and 3890579;9 and

6 Notice of Opposition ¶ 1; 1 TTABVUE 4.
7 In its trial brief, Opposer states that it is not pursuing the opposition to registration of
Applicants’ mark for the goods identified in International Class 28. See Opposer’s Trial Brief,
p. 7 n.1; 21 TTABVUE 8.
8 13 and 14 TTABVUE.
9 15 TTABVUE.
Opposition No. 91231106
4
3. Rebuttal notice of reliance on (1) the dictionary definitions of the
terms “LIVIN” and “RHYTHM,” and (2) a printout from the
USPTO electronic database showing that Registration No.
1861637 for the mark RHYTHM TRIBE, submitted by Applicant
to demonstrate the purported weakness of Opposer’s pleaded
marks, has been cancelled.10
B. Applicants’ Evidence
1. Testimony Declaration of joint Applicant Christian P. Richards,
Jr.;11
2. Testimony Declaration of joint Applicant Frank Ivey and
accompanying exhibits;12 and
3. Notice of Reliance on (1) various Internet materials, including
excerpts from third-party websites and blogs; (2) dictionary
definitions; and (3) copies of third-party registrations for RHTYHM
formative marks obtained from the USPTO electronic database
records.13 Additionally, Applicants submitted documents under
seal as confidential via their notice of reliance.14
As noted, some of the evidence proffered by Applicants has been designated
confidential and filed under seal. We have discussed only in general terms the
relevant evidence submitted under seal, if necessary. However, to the extent the
Applicants have improperly designated testimony and evidence as confidential, the
Board will disregard the confidential designation when appropriate. Trademark Rule
2.116(g), 37 C.F.R. § 2.116(g) (“[t]he Board may treat as not confidential that material
which cannot reasonably be considered confidential, notwithstanding a designation
as such by a party.”); see also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC,

10 20 TTABVUE.
11 16 TTABVUE.
12 19 TTABUVE.
13 17 TTABVUE.
14 18 TTABVUE (confidential).
Opposition No. 91231106
5
110 USPQ2d 1458, 1461 (TTAB 2014).
II. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” Id. at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d
1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in
the outcome of the proceeding. Ritchie, 50 USPQ2d at 1026.
Opposer has demonstrated through the USPTO database printouts made of
record that it is the owner of its pleaded Registration Nos. 3610417, 3884199, and
3890579 and that these registrations are valid and subsisting. Because these
registrations are of record, Opposer has established its standing. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Section 2(d) Claim
Section 2(d) of the Trademark Act 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.” 15
Opposition No. 91231106
6
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that it has priority in the use of its marks and that
use of Applicants’ mark is likely to cause confusion, mistake, or deception as to the
source or sponsorship of Applicants’ goods. Cunningham, 55 USPQ2d at 1848.
A. Priority
Because Opposer’s pleaded Registration Nos. 3610417, 3884199, and 3890579 are
of record, priority is not an issue with respect to the goods identified in these pleaded
registrations. See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB
1998) (citing King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974)).
B. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on the likelihood of confusion. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”); see also
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
“Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus
… on dispositive factors, such as similarity of the marks and relatedness of the goods.”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002) (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d
1557, 1559 (Fed. Cir. 2001)). These factors, and the other relevant du Pont factors are
Opposition No. 91231106
7
discussed below.
1. Similarity of the Goods
We begin our analysis with the comparison of the goods identified in Applicants’
application vis-à-vis the goods identified in the Opposer’s registrations of record, i.e.,
Registration Nos. 3610417, 3884199, and 3890579, under the second du Pont factor.
Applicants’ identified goods include, inter alia, “t-shirts,” “caps,” “polo shirts,”
“walking shorts,” and “sports shirts with short sleeves.” Opposer’s Registration No.
3610417 includes identical goods: “t-shirts” and “caps.” Similarly, Opposer’s
Registration No. 3884199 identifies the identical goods “polo shirts” and “caps.”
Opposer’s Registration No. Registration No. 3890579 also includes the identical goods
“t-shirts.” Moreover, Opposer’s broadly-worded “shorts” in Registration No. 3890579
encompasses Applicants’ “shorts for football, basketball, golf, baseball, tennis and
hockey,” “sliding shorts,” “triathlon shorts,” “sweat shorts,” and “walking shorts.”
Similarly, Opposer’s broadly-worded “shirts” in Registration No. 3610417 includes
Applicants’ “sport shirts with short sleeves.” Accordingly, the goods at issue are
identical or legally identical in part.
Registration must be refused if Applicants’ mark for any of their identified goods
is likely to cause confusion with Opposer’s marks for any of its identified goods. See
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981).
The second du Pont factor therefore strongly favors a finding of likelihood of
confusion.
Opposition No. 91231106
8
2. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications of Applicants’ goods and Opposer’s goods are
identical or legally identical in part and have no restrictions as to channels of trade
or classes of customers, it is presumed that the trade channels and classes of
purchasers are the same for the identical goods. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical goods are presumed to travel in
same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same);
In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1158 (TTAB 2018).
Applicants argue that their goods are marketed toward urban African-American
youth, while Opposer’s goods are marketed to consumers interested in beach and surf
lifestyle.15 Applicants may not rely on mere argument or extrinsic evidence to restrict
the classes of customers or the channels of trade; since the identification of goods do
not restrict either, we cannot consider the asserted differences in our determination.
In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La
Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoot & Co.,
229 USPQ 763, 764 (TTAB 1986) (extrinsic evidence and argument suggesting trade-
channel restrictions not specified in application rejected). For these reasons, we reject
Applicants’ arguments.

15 Applicant’s Trial Brief, p. 6; 22 TTABVUE 11.
Opposition No. 91231106
9
Thus, the third du Pont factor also weighs in favor of finding a likelihood of
confusion.
3. Strength/Weakness of Opposer’s RHYTHM and RHYTHM LIVIN
marks
The fifth du Pont factor, the fame of the prior mark, and the sixth du Pont factor,
the number and nature of similar marks in use for similar goods, du Pont, 177 USPQ
at 567, are considered in tandem to determine the strength of Opposer’s RHYTHM
and RHYTHM LIVIN marks and the scope of protection to which they are entitled.
Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017).16
“In determining strength of a mark, we consider both inherent strength, based on the
nature of the mark itself, and commercial strength or recognition.” Id. at 1345 (citing
Couch/Braunsdorf v. 12 Interactive, 110 USPQ2d at 1476); see also In re
Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”).
We first address the sixth du Pont factor, the number and nature of similar marks
in use on similar goods. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,
LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Applicants contend that Opposer’s
RHYTHM and RHYTHM LIVIN marks comprise such weak, commonly used

16 The Federal Circuit recently reiterated that “‘[w]hile dilution fame is an either/or
proposition—fame either does or does not exist—likelihood of confusion fame varies along a
spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed Cir. 2005) (internal quotation omitted)).
Opposition No. 91231106
10
elements that consumers will look to the other features in Applicants’ mark to
differentiate the marks in appearance, sound, meaning and commercial impression.17
Specifically, Applicants maintain that the designation RHYTHM is diluted when
used in associated with clothing items like those identified in Opposer’s
registrations.18 To demonstrate this weakness, Applicants submitted nine active, use-
based third-party registrations for marks containing the term RHYTHM, as used in
connection with goods purportedly similar to those identified in Opposer’s
registrations.19 The third-party registrations are summarized in the chart below:
Registration No. Mark Relevant Goods
3195339 GOT RHYTTHM?
(in standard characters)
clothing namely long and
short sleeve t-shirts and
sweatshirts
4498477

Women’s clothing, namely,
designer and fashion
apparel comprising of jacket;
t-shirts, and underwear,
marketed exclusively online
at a proprietary website and
at independent retail
clothing boutiques

17 Applicant’s Trial Brief, pp. 10-12; 22 TTABVUE 15-17.
18 Id. at pp. 10-11; 22 TTABVUE 15-16.
19 Applicants’ Notice of Reliance, Exhs. M-R and T-U; 17 TTABVUE 117-153, and 159-173.
Applicants also submitted a status and title copy of Registration No. 1861637 for the mark
RHYTHM TRIBE (in standard characters) for, among other things, “clothing; namely, T-
shirts, sweat shirts, sweat pants and shorts, jackets, gloves, bandanas, socks, pants.” Id. at
Exh. S, 17 TTABVUE 154-158. This registration, however, has been cancelled. A cancelled
registration is generally evidence only of the fact that that registration issued. See Bond v.
Taylor, 119 USPQ2d 1049, 1054-55 (TTAB 2016); In re Kysela Pere et Fils Ltd., 98 USPQ2d
1261, 1264 (TTAB 2011) (“‘dead’ or cancelled registrations have no probative value at all”);
In re Brown Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006). Thus, we accord the
cancelled registration submitted by Applicants no probative value.
Opposition No. 91231106
11
Registration No. Mark Relevant Goods
4491807

(HEART RHYTHM
disclaimed)
Clothing, namely, shirts, t-
shirts, pants, jackets, lab
coats and hats.
4573172 RHYTHMATHOLOGY
(standard characters)
Headgear, namely, hats,
caps and visors; shirts;
short-sleeved or long-sleeved
T-shirts; sweaters
exclusively marketed in
connection with applicant's
services, namely, instruction
in the field of music.
4972140 Hats; Jackets; Pants;
Shorts; Sweat jackets; Sweat
pants; Sweat shirts; Sweat
suits; T-shirts, all of which
are sold and offered only in
connection with the services
in the nature of organizing,
arranging and conducting
western heritage, poetry
reading and concert events,
the proceeds of which are
donated to charity
5182981 RHYTHM CITY CASINO
RESORT
(standard characters;
CASINO RESORT
disclaimed)
Clothing, namely, t-shirts,
polo shirts, wind shirts,
vests, jackets, sweaters,
sweatshirts, hats and caps.
2859768 RHYTHM & CULTURE
(standard characters)
Clothing, namely shirts,
pants, shorts, jackets,
pullovers, sweatshirts,
sweaters, coats, gloves,
stockings, socks, underwear,
T-shirts, hats, footwear; and
headwear.
3752631 STRICTLY RHYTHM
(standard characters)
T-shirts, jackets,
sweatshirts
Opposition No. 91231106
12
Registration No. Mark Relevant Goods
3372540

Short-sleeved or long-
sleeved t-shirts; Tops; Caps.

Third-party registrations and use of similar marks can bear on the strength or
weakness of a registrant’s mark in two ways: commercially and conceptually. First,
if a mark, or an element of a mark, is used extensively in commerce by a number of
third parties, that could undermine its commercial strength, as the consuming public
may have become familiar with a multiplicity of the same or similar marks, and can
distinguish them based on minor differences. Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). “Evidence of third-
party use of similar marks on similar goods is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imports,
73 USPQ2d at 1693, quoted in 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). “The weaker [a registrant’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 Generation, 115
USPQ2d at 1674.
Opposition No. 91231106
13
Second, if there is evidence that a mark, or an element of a mark, is commonly
adopted by many different registrants, that may indicate that the common element
has some non-source identifying significance that undermines its conceptual strength
as an indicator of a single source. Jack Wolfskin, 116 USPQ2d at 1136 (“[E]vidence of
third-party registrations 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’”) (quoting
Juice Generation, 115 USPQ2d at 1674).
In this case, with respect to commercial strength, Applicants have not submitted
any evidence of third-party usage of the marks shown in the third-party registrations,
or any other pertinent marks demonstrating use in commerce. What is missing is
evidence of the extent of use or recognition of such marks in the marketplace:
“existence of [third-party] registrations is not evidence of what happens in the market
place or that customers are familiar with them….” AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) quoted in In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). That differentiates this case from cases
such as Jack Wolfskin and Juice Generation, in which evidence of commercial use was
submitted. See Jack Wolfskin, 116 USPQ2d at 1136 (noting that third-party
registrations were accompanied by evidence of the marks in use in Internet
commerce: “Jack Wolfskin presented extensive evidence of third-party registrations
depicting paw prints and evidence of these marks being used in internet commerce
Opposition No. 91231106
14
for clothing”); Juice Generation, 115 USPQ2d at 1674 (acknowledging testimony of
applicant’s founder concerning third-party use of similar marks). Accordingly,
Applicants’ third-party registration evidence does not demonstrate that Opposer’s
RHYTHM and RHYTHM LIVIN marks are commercially weak or diluted. Thus, the
sixth du Pont factor is neutral.
However, as previously noted, third-party registrations may be used to show the
conceptual weakness of a term. Juice Generation, 115 USPQ2d at 1675 (“Third party
registrations are relevant to prove that some segment of the composite marks which
both contesting parties use has a normally understood and well recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak.”) (quoting 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:90 (4th ed. 2015)); see also In re i.am.symbolic, 866 F.3d
1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (active third-party registrations may
be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or
so commonly used that the public will look to other elements to distinguish the source
of the goods or services); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693, 694 (CCPA 1976) (although third-party registrations are entitled to little weight
on the question of likelihood of confusion where there is no evidence of actual use,
they may be given some weight to show the meaning of a mark in the same way as
dictionaries). Here, Applicants submitted nine active registrations that incorporate
the term RHYTHM in the mark for goods in International Class 25.
We initially note that none of the third-party registered marks are identical to
Opposition No. 91231106
15
Opposer’s RHYTHM and RHYTHM LIVIN marks. Moreover, many of the third-party
registered marks submitted by Applicants are visually different and convey different
commercial impressions than Opposer’s marks. That being said, each of the third-
party registered marks include the term RHYTYM for goods identical or highly
similar to those identified Opposer’s pleaded registrations of record. Although nine
third-party registrations do not constitute “powerful evidence” of conceptual
weakness, see Juice Generation, 115 USPQP2d at 1674-75 (at least twenty-six
relevant third-party registrations of record) and Jack Wolfskin, 116 USPQ2d at 1135-
36 (at least fourteen relevant third-party registrations of record), these third-party
registrations nonetheless imply that the term RHYTYM has a somewhat suggestive
meaning when used in connection with clothing items.
Based on the foregoing, we find that the term RHYTHM possesses a slight degree
of conceptual weakness due to its suggestive connotation. As a result, the scope of
protection accorded to Opposer’s marks is not as wide as that of an arbitrary or coined
mark. That being said, even conceptually weak marks are entitled to protection, and
likely confusion may still be found where the marks are very similar and the goods
are identical in part, as is the case here. See In re FabFitFun, Inc., 127 USPQ2d 1670,
1676 (TTAB 2018) (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83
USPQ2d 1123, 1125 (Fed. Cir. 2007)).
We next determine the alleged fame of Opposer’s marks under the fifth du Pont
factor.20 In determining the commercial strength of Opposer’s RHYTHM and

20 Opposer’s Trial Brief, pp. 20-21; 21 TTABVUE 21-22.
Opposition No. 91231106
16
RHYTHM LIVIN marks under this factor, such strength “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 mark []; and the general reputation of the [goods].” Tao Licensing,
LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017).
To demonstrate the commercial strength of its RHYTHM and RHYTHM LIVIN
marks, Opposer maintains that it has used its RHYTHM and RHYTHM LIVIN marks
in U.S. commerce since 2008 and 2009, respectively, and that it has filed its
declarations under Section 15 of the Trademark Act for its registrations of record.21
However, statutory presumptions do not affect the likelihood of confusion analysis.
Byk-Gulden, Inc. v. Trimen Laboratories, Inc., 211 USPQ 364, 368 (TTAB 1981),
quoting Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639,
641 (TTAB 1977):
The statutory presumptions, however, do not answer the
question of whether applicant’s mark, for the goods
identified in the application, so resemble either of opposer's
marks as to be likely to cause confusion, mistake or
deception. The registrations alone are incompetent to
establish any facts with regard to the nature or extent of
opposer’s use and advertising of its trademarks or any
reputation they enjoy or what purchasers' reactions to
them may be.
See also Martha White, Inc. v. American Bakeries Co., 157 USPQ 215, 217 (TTAB
1968) (opposer’s registration is not evidence of the nature and extent of opposer's use

21 Id.; 21 TTABVUE 21-22.
Opposition No. 91231106
17
and advertising of its mark and, thus, is not probative of consumer reaction to the
mark, no matter how long it has been registered). Accordingly, the fact that Opposer’s
federally-registered trademarks have achieved incontestable status means that they
are conclusively considered to be valid, but it does not dictate that the marks are
“strong” for purposes of determining likelihood of confusion. See Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031, 1036 (TTAB 2010) cited in In re Fat Boys Water
Sports LLC, 118 USPQ2d 1511, 1518 n. 25 (TTAB 2016).
“In view of the extreme deference that is accorded to a famous mark in terms of
the wide latitude of legal protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting
that its mark is famous to clearly prove it.” Blue Man Prods. Inc. v. Tarmann, 75
USPQ2d 1811, 1819 (TTAB 2005). In light of the limitations in Opposer’s evidence
noted above, Opposer has failed to meet its burden of proof regarding the commercial
success Opposer’s RHYTHM and RHYTHM LIVIN marks have achieved as used in
connection with its identified goods. Evidence regarding the length of time Opposer
has used its marks in U.S. commerce or the incontestable status of Opposer’s
registrations of record, standing alone, is insufficient evidence for the Board to make
a proper evaluation of the commercial strength of Opposer’s marks under the fifth du
Pont factor. See Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1635 (TTAB 2007);
compare Nina Ricci, S.A.R.L. v. ETF Enters., Inc., 203 USPQ 947, 951 (TTAB 1979)
(“Not only has opposer enjoyed long use of its ‘RICCI’ marks, but the record shows
the fame, prestige and reputation which the name ‘NINA RICCI’ has brought to
Opposition No. 91231106
18
opposer as evidenced by the numerous newspaper articles and reports of opposer’s
activities in the ladies’ apparel fields, previously referred to.”).
Moreover, as noted above, the conceptual strength of Opposer’s RHYTHM and
RHYTHM LIVIN marks is somewhat limited. Accordingly, Opposer has failed to
demonstrate that its RHYTHM and RHYTHM LIVIN marks are very strong and,
therefore, the marks would not be entitled to a broader scope of protection under the
fifth du Pont factor.
4. Similarity of the Marks
We now consider the first du Pont likelihood of confusion factor, which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). “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.” Coach Servs. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(internal citation omitted). The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific impression of trademarks. In
re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). Because the goods at issue are clothing, with no
restrictions as to price or quality, the average purchaser is an ordinary consumer.
Further, because the involved goods are identical in part, a lesser degree of similarity
between the marks is necessary to support a finding of likelihood of confusion. See
Opposition No. 91231106
19
Century 21 v. Century Life, 23 USPQ2d at 1700; In re Bay State Brewing Co., 117
USPQ2d 1958, 1960 (TTAB 2016).
Lastly, our analysis cannot be predicated on dissection of the involved marks. See
Stone Lion Capital, 110 USPQ2d at 1161. Rather, we are obliged to consider the
marks in their entireties. Id.; see also Franklin Mint Corp. v. Master Mfg. Co., 667
F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not
be dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). Nonetheless, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Stone Lion, 110 USPQ2d at 1161.
Opposer’s marks are RHYTHM and RHYTHM LIVIN and Applicants’ mark is
RHYTHM N’ BALLIN. Initially, we compare Opposer’s RHYTHM mark and
Applicants’ RHYTHM N’ BALLIN mark. Here, Applicants have incorporated
Opposer’s entire RHYTHM mark as a significant feature of their own mark. While
there is no explicit rule that likelihood of confusion automatically applies where a
junior user’s mark contains the whole senior user's mark, the fact that Opposer’s
RHYTHM mark is subsumed by Applicants’ mark increases the similarity between
the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (applicant’s mark ML is similar to registrant's mark ML MARK LEES);
The Wella Corp. v. Val. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1997); (CALIFORNIA CONCEPT and surfer design for men's cologne, hair spray,
Opposition No. 91231106
20
conditioner and shampoo is likely to cause confusion with the mark CONCEPT for
cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis,
Tenn., Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975); (applicant's mark BENGAL LANCER for club soda, quinine water and ginger
ale is likely to cause confusion with BENGAL for gin); Lilly Pulitzer, Inc. v. Lilli Ann
Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for
women's dresses is likely to be confused with LILLI ANN for women’s apparel
including dresses); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB
2014) (applicant’s PRECISION DISTRIBUTION CONTROL mark found confusingly
similar to opposer’s PRECISION mark).
Visually and aurally, the only difference between Opposer’s RHYTHM mark and
Applicants’ RHYTHM N’ BALLIN mark is the inclusion of the wording “N BALLIN”
in Applicants’ mark. We find that this difference is insufficient to distinguish the
marks, particularly since Applicants’ mark begins with the term RHYTHM which
comprises the entirety of Opposer’s RHYTHM mark and because the term RHYTHM
conveys the same connotation and engenders the same commercial impression in
each of the party’s respective marks.22 See Palm Bay Imps., 73 USPQ2d at 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”

22 Opposer submitted the dictionary definition of the term RHYTHM which is defined, inter
alia, as “1. Movement of variation characterized by the regular recurrence or alteration of
different quantities or conditions: the rhythm of the tides; 2. The patterned recurring
alternations of contrasting elements of sound or speech; and 3. Music a. the patterning of
musical sound, as by differences in the timing, duration, or stress of consecutive notes.”
Opposer’s Rebuttal Notice of Reliance, Exh. 6, 20 TTABVUE 18-21. The definition of the term
RHYTHM submitted by Applicants, see 17 TTABVUE Exh. A, defines the term as “one of the
most important things in music” is consistent with the third definition submitted by Opposer.
Opposition No. 91231106
21
is the first word in the mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992) (upon encountering the marks, consumers will first notice the identical
lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting
that the dominance of BARR in the mark BARR GROUP is reinforced by its location
as the first word in the mark); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”).
Accordingly, when viewing these two marks in their entirety, and keeping in mind
that the word “rhythm” has a somewhat suggestive significance, we find that
Opposer’s RHYTHM mark and Applicants’ RHYTHM N’ BALLIN marks are more
similar than different in sound, appearance, connotation and commercial impression.
We next compare Opposer’s RHYTHM LIVIN mark and Applicant’s RHYTHM N’
BALLIN mark. For the same reasons explained above, we find that Applicants’ mark
is similar to Opposer’s RHYTHM LIVIN mark in sound, appearance, connotation,
and commercial impression. Both marks begin with the identical term RHYTHM. As
noted above, the Board has often recognized that the first word in a mark plays a
dominant role in the Section 2(d) analysis because it is likely to be the part noticed
and remembered by consumers. Moreover, the ordinary consumer will recognize the
standard meaning of RHYTHM in Opposer’s RHYTHM LIVIN mark, and will
recognize that same meaning in the first word of Applicants’ mark. Additionally, in
both Opposer’s RHYTHM LIVIN mark and Applicant’s RHYTHM N’ BALLIN mark,
Opposition No. 91231106
22
the letter “G” is dropped at the end of the last word in each mark giving the two marks
a similar look and construction. Further, the inclusion of the term LIVIN to
RHYTHM in Opposer’s mark results in a phrase that suggests the addition of
“rhythm” to one’s lifestyle. Similarly, the addition of “N’ BALLIN” to RHYTHM in
Applicants’ mark produces a similar phrase that suggests the addition of “rhythm” to
one’s wealthy lifestyle.23 Finally, consumers familiar with Opposer’s marks
RHYTHM and RHYTHM LIVIN used in connection with clothing items would be
likely to believe that RHYTHM N’ BALLIN is another variation in Opposer’s lines of
clothing. See In re Southern Belle Frozen Foods Inc., 48 USPQ2d 1849, 1851 (TTAB
1998) (observing that consumers familiar with registrant’s SHRIMP ROYALE
packaged shrimp meal may conclude that applicant’s SEAFOOD ROYALE frozen
crab product is a new line of seafood from the maker of the SHRIMP ROYALE
product); NutraSweet Co. v. K & S Foods, Inc., 4 USPQ2d 1964, 1968 (TTAB 1987)
(purchasers familiar with NUTRASWEET product, upon viewing NUTRA SALT,
would be likely to believe it was a new product line put out by the NUTRASWEET
producer or that the product was somehow associated with or sponsored by the people
producing the NUTRASWEET product); Nina Ricci S.A.R.L. v. Haymaker Sports Inc.,
134 USPQ26, 28 (TTAB 1962) (persons familiar with NINA RICCI or RICCI for
women’s apparel would logically assume that women's clothing bearing RICCI OF
HAYMAKER emanates from same source or is connected in some way).

23 Applicants submitted a dictionary definition of the term “ballin” from Wiktionary which
defines the term as “1 (African American vernacular, slang) Having an ostentatiously
wealthy lifestyle.” See Applicants’ Notice of Reliance, Exh. A; 17 TTABVUE 9-10.
Opposition No. 91231106
23
In view of the foregoing, we find that Opposer’s RHYTHM LIVIN mark and
Applicant’s RHYTHM N’ BALLIN mark, when viewed in their entirety, are, at a
minimum, similar in appearance, connotation and commercial impression,
notwithstanding how a consumer may pronounce the parties’ respective marks. In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (similarity in either sight,
sound or connotation is sufficient to support likely confusion).
Thus, the first du Pont factor also favors a finding of likelihood of confusion.
5. Market Interface
The tenth du Pont factor requires us to consider the “market interface” between
the parties, including evidence of any past dealings between the parties that might
indicate a lack of confusion in the present case. Opposer argues that since the goods
at issue are identical in part, the parties’ trade channels must be presumed to be
identical. In contrast, Applicant argues that Opposer’s goods are directed to
consumers who enjoy a relaxed beach-hipster lifestyle, while Applicants’ goods are
marketed toward urban, African-American youth. The tenth du Pont factor, however,
does not concern the trade channels in which the goods of the parties travel or the
classes of purchasers who purchase the goods. Instead, this factor concerns matters
“such as (1) consent to register or use; (2) contractual provisions designed to preclude
confusion; (3) assignment; and (4) laches and estoppel attributable to the challenger
that would indicate lack of confusion.” Cunningham, 55 USPQ2d at 1847; du Pont,
177 USPQ at 567. In this case, Applicants assert none of these matters. We therefore
deem this du Pont factor neutral.
Opposition No. 91231106
24
6. Conditions of Sale
Next we consider the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
The identifications in the application and registrations consist of apparel items at
no specified price point. We cannot assume that these items are rendered to different
classes of buyers in different marketing contexts at different prices. See Bercut-
Vandervoort, 229 USPQ at 764 (evidence that relevant goods are expensive wines sold
to discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration). Rather, we must assume that the types
of buyers vary from the sophisticated fashionista to the ordinary bargain hunter.
Ordinary consumers are likely to exercise only ordinary care, and given the lack of
price restrictions in the identifications, may even buy inexpensive clothing items on
impulse. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed.
Cir. 2000) (“When products are relatively low-priced and subject to impulse buying,
the risk of likelihood of confusion is increased because purchasers of such products
are held to a lesser standard of purchasing care.”). Accordingly, this factor weighs in
favor of finding a likelihood of confusion.
7. Applicants’ Right to Exclude Others from Using Their Mark
The eleventh du Pont evidentiary factor is “the extent to which applicant has a
Opposition No. 91231106
25
right to exclude others from use of its mark on its goods.” There is no such evidence
with respect to Applicants’ intent-to-use application, so this factor is neutral.
8. Actual Confusion and Contemporaneous Use
We now turn to the seventh du Pont factor (nature and extent of any actual
confusion) and the related eighth du Pont factor (extent of the opportunity for actual
confusion) as argued by Opposer.24
As Opposer correctly observes, the current filing basis for the involved application
is intent-to-use, and we have no evidence that Applicants have used their applied-for
mark in commerce. Actual confusion cannot yet occur and evidence of actual
confusion cannot yet exist. Accordingly, these du Pont factors are neutral.
9. Extent of Potential Confusion
Last, we consider the extent of potential confusion, i.e., whether de minimis or
substantial. Opposer maintains that since the marks at issue are similar and the
involved goods are identical in part, there is a substantial likelihood of confusion as
to the source of the involved goods.25 We agree. Because we have found that the goods
at issue are identical in part and are offered under similar marks and are of the type
that would be marketed to and purchased by significant numbers of purchasers, the
potential for confusion cannot be deemed de minimis. Accordingly, this du Pont factor
favors Opposer.

24 Opposer’s Trial Brief pp. 22-23; 21 TTABUVE 23-24.
25 Opposer’s Trial Brief p. 23; 21 TTABVUE 24.
Opposition No. 91231106
26
IV. Conclusion
We have considered all of the parties’ arguments and evidence of record, including
those not specifically discussed herein, and all relevant du Pont factors. Because we
have found that the marks at issue are similar; that Applicants’ identified
International Class 25 goods are identical in part to Opposer’s goods; that they would
move in the same or overlapping trade channels; and that they are offered to the same
or overlapping classes of purchasers, we conclude that Applicants’ RHYTHM &
BALLIN mark so resembles Opposer’s RHYTHM and RHYTHM LIVIN marks as to
be likely to cause confusion or mistake, or to deceive under Section 2(d) of the
Trademark Act. Accordingly, Opposer has proven its likelihood of confusion claim by
a preponderance of the evidence. We arrive at this ultimate conclusion even though
the common term RHYTHM is somewhat conceptually weak. A slight narrowing of
the scope of protection for Opposer’s RHYTHM and RHYTHM LIVIN marks based on
the evidence of record, however, does not make confusion unlikely, as even weak
marks are entitled to protection against registration of similar marks for goods that
are identical in part. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
1401 182 USPQ 108, 109 (CCPA 1974); see also In re i.am.symbolic, 127 USPQ2d
1627, 1636 n.13 (TTAB 2018). The remaining du Pont factors discussed either favor
a finding of likelihood of confusion or are neutral.
Decision: The opposition is sustained with regard to the Section 2(d) claim but
only in connection with the goods identified in International Class 25 in Applicants’
application. Applicants’ application, however, will proceed to issuance of a notice of
allowance solely with respect to the goods identified in International Class 28.