Rise Above Fitness LLCv.Rise Above Performance Training

Trademark Trial and Appeal Board

May 28, 2019

92065837 (T.T.A.B. May. 28, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: May 28, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Rise Above Fitness LLC

v.

Rise Above Performance Training

_____

Cancellation No. 92065837

_____

Nicholas D. Myers, The Myers Law Group, for Rise Above Fitness LLC.

Soyeun D. Choi, Esq., for Rise Above Performance Training.

_____

Before Kuhlke, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Rise Above Performance Training (“Respondent”) owns a registration for the mark
RISE ABOVE (in standard characters) for
Personal fitness training services and consultancy;
Personal fitness training services featuring aerobic and
anaerobic activities combined with resistance and
flexibility training; Personal training services, namely,
strength and conditioning training and speed training;
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Physical fitness training of individuals and groups;
Providing a web site featuring information on exercise and
fitness; Providing a website featuring online sports
training and training advice and the recording of training
and workouts; Providing an interactive website featuring
information and links relating to fitness; Providing an on-
line computer database featuring information regarding
exercise and fitness; Providing assistance, personal
training and physical fitness consultation to individuals to
help them make physical fitness, strength, conditioning,
and exercise improvement in their daily living; Providing
facilities for strength, speed and physical fitness training;
Providing on-line training instruction in the field of
physical fitness and nutrition; Training in the use of fitness
equipment in International Class 41.1
Rise Above Fitness LLC (“Petitioner”) filed a petition to cancel the registration of
Respondent’s mark on the grounds of abandonment,2 fraud, and likelihood of
confusion. Petitioner has pleaded ownership of an application for the mark RISE
ABOVE FITNESS for
Fitness boot camps; Health club services, namely,
providing instruction and equipment in the field of physical
exercise; Instruction in the field of physical fitness;
Membership club services, namely, providing training to

1 Registration No. 4364848 issued July 09, 2013.
References to the briefs and the record refer to the Board’s TTABVUE docket system.
2Petitioner alleges in the petition under the heading “nonuse of trademark in commerce”
“that Registrant has not been in substantially exclusive and/or continuous use of the Mark
in connection with Registrant’s Services” and “that Registrant does not have a bona fide
intention of continuing to use Registrant’s Mark in the future and, thus, has abandoned all
rights in and to the Registration.” We construe these allegations as an abandonment claim.
See n.28 regarding Petitioner’s allegations of exclusive use. Although argued in the brief, no
allegations were made in the petition for cancellation that Respondent’s mark was not in use
as of the application filing date. While the ESTTA coversheet lists “no use of mark in
commerce before application filed” as a ground for cancellation, this ground was not
sufficiently pleaded or otherwise elaborated upon in the petition for cancellation. The mere
mention of a ground on the ESTTA coversheet is insufficient to allege the ground.
Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1827 n.2 (TTAB 2013).

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members in the field of physical fitness; Personal fitness
training services; Personal fitness training services and
consultancy; Personal trainer services; Personal training
services, namely, strength and conditioning training and
speed training; Personal training services, namely,
strength and conditioning training; Physical fitness
instruction; Physical fitness training of individuals and
groups; Providing fitness and exercise facilities in
International Class 41.3
Respondent filed an answer denying the salient allegations in the petition for
cancellation.
Petitioner filed a brief. Respondent sought to reopen its time to file a brief, but the
motion to reopen was denied.4 During its trial period, Respondent did not submit
testimony or any evidence. However, even though Respondent has filed no testimony,
evidence, or a brief, Petitioner, as plaintiff in this proceeding, must nonetheless prove
its standing and its claims by a preponderance of the evidence.
I. Unpleaded Claim
As stated above, in addition to arguing abandonment, Petitioner also argues in its
brief that one of the issues to be decided is “[w]hether Registrant has made the
requisite use of the ‘848 Mark in commerce,” which would support a claim of nonuse.5
As indicated, Petitioner did not specifically plead allegations for such a claim in the
petition for cancellation nor did it seek leave to amend to add this claim.

3 Application Serial No. 87398479 was filed on April 04, 2017 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a) alleging a date of first use of November 2007 and a date of first use
in commerce of January 2009.
4 11 TTABVUE; 15 TTABVUE.
5 See n.2 regarding a ground listed on an ESTTA coversheet but not set forth in the petition
for cancellation.
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Because Petitioner may not rely on an unpleaded claim, we determine whether
this claim was tried by implied consent. Implied consent can only 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.
Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1656, aff’d, 637 F.3d
1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (quoting TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (TBMP) § 501.03(b)).
We find that Petitioner did not give any indication to Respondent that a nonuse
claim based on Respondent never using the mark in commerce as of the application
filing date was being tried. For this claim, Petitioner relies on certain of the requests
for admission that, as discussed below, have been deemed admitted. In its notice of
reliance, Petitioner explains the relevance of the “requests for admissions”6:
The document is relevant to establish that: (a) Registrant
no longer uses the mark; (b) Registrant obtained the mark
in bad faith/fraud; and (c) there is a likelihood of confusion
between Petitioner’s Mark and Registrant Rise Above
Performance Training’s Mark.
Because we cannot say that Respondent was on notice that Petitioner was
asserting a claim based on Respondent never using the mark in commerce as of the
application filing date, we find that this nonuse claim was not tried with Respondent’s
implied consent. We therefore do not consider this claim.

6 Petitioner’s notice of reliance, 6 TTABVUE 30.
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II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved registration. Petitioner introduced the
declaration testimony of Nicholas D. Myers, Esq., its counsel, and Brandon
Schiepatti, its Chief Executive Officer.7 Petitioner also introduced a notice of reliance
upon the following: 1) its pleaded application; 2) the underlying application for the
involved registration; 3) certificate of registration for the involved registration; 4)
Petitioner’s Request for Admissions; 5) Petitioner’s Request for Production; 6)
Petitioner’s Interrogatories; 7) Notice of deposition of Respondent’s Rule 30(b)(6)
corporate designee; 8) Certificate of non-appearance by Respondent’s 30(b)(6)
corporate designee; 9) Internet materials; and 10) California Secretary of State entity
detail page for Rise Above Fitness LLC.8
With respect to “Petitioner’s requests for admissions,” submitted under notice of
reliance, Petitioner’s counsel testified that Respondent did not respond to the
requests for admission.9 Respondent does not dispute this testimony. Accordingly, the
requests for admission are deemed admitted pursuant to Fed. R. Civ. P. 36 (a)(3). We
highlight the importance of these admissions because all matters are considered to
be “conclusively established unless the court on motion permits withdrawal or

7 7 TTABVUE.
8 6 TTABVUE.
9 Myers Decl., ¶ 6, 7 TTABVUE 4.
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amendment of the admission.” See Fed. R. Civ. P. 36(b). Respondent has not filed
such a motion, and Respondent did not submit evidence or testimony.
III. Standing
To have standing, a plaintiff must have a real interest, i.e., a personal stake in the
outcome of the proceeding and a reasonable basis for its belief that it will be damaged.
See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-28
(Fed. Cir. 1999). Petitioner has established that it has a commercial interest in using
RISE ABOVE FITNESS by testimony from Petitioner’s witness, Mr. Schiepatti, that
Petitioner has adopted and used the mark RISE ABOVE FITNESS on or in
connection with services that are identical in part to Respondent’s services.10
Petitioner also has submitted a copy of its pleaded application. Giersch v. Scripps
Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his
common-law rights in the mark DESIGNED2SELL, and has thereby established his
standing to bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is sufficient
to support opposer’s allegations of a reasonable belief that it would be damaged …”
where opposer alleged likelihood of confusion).
The testimony and evidence shows that Petitioner is not an intermeddler.
Accordingly, we find that Petitioner has established its standing in this proceeding.

10 Schieppati Decl., ¶ 6, 7 TTABVUE 99-100.
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IV. Priority
In order for Petitioner to prevail on a claim of likelihood of confusion based on its
ownership of common-law rights in a mark, the mark must be distinctive, inherently
or otherwise, and Petitioner must show priority of use. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981). Absent
argument or evidence showing otherwise, we find the RISE ABOVE FITNESS mark
is distinctive. Wet Seal Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007).
In a cancellation proceeding, to establish priority on a likelihood of confusion claim
brought under Section 2(d) of the Trademark Act, a party must prove, vis-à-vis the
other party, that it owns “a mark or trade name previously used in the United States
and not abandoned.” Trademark Act Section 2(d), 15 U.S.C. § 1052(d). A party may
establish its own prior proprietary rights in a mark through actual use, use analogous
to trademark use, or an earlier constructive use date accorded to the party’s own
application or registration. See Giersch 90 USPQ2d at 1022. Respondent has not
submitted any testimony or evidence in this case, and we rely on the underlying
application filing date of November 21, 2012 for the involved registration. Id.
Petitioner must prove its priority by a preponderance of the evidence. Hydro-
Dynamics, Inc. v. George Putman & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed.
Cir. 1987),
Here, Petitioner relies on its asserted prior use of RISE ABOVE FITNESS to prove
priority. “Oral testimony, if sufficiently probative, is normally satisfactory to
establish priority of use.” Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127,
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144 USPQ 430, 432 (CCPA 1965). Petitioner’s witness testified that in November
2007 he adopted and began using the mark RISE ABOVE FITNESS on or in
connection with:
Fitness boot camps; Health club services, namely,
providing instruction and equipment in the field of physical
exercise; Instruction in the field of physical fitness;
Membership club services, namely, providing training to
members in the field of physical fitness; Personal fitness
training services; Personal fitness training services and
consultancy; Personal trainer services; Personal training
services, namely, strength and conditioning training and
speed training; Personal training services, namely,
strength and conditioning training; Physical fitness
instruction; Physical fitness training of individuals and
groups; Providing fitness and exercise facilities.11
“In or about January 2009,” he began offering the services throughout the United
States.12 In March 28, 2011, he formed Rise Above Fitness, LLC, and “assigned all
right, title, interest, and goodwill in and to the RISE ABOVE FITNESS mark to
Petitioner Rise Above Fitness, LLC.”13
We also have a request for admission that has been conclusively established:
Admit that Petitioner’s use of Petitioner’s goods and
services in connection with Petitioner’s mark pre-dates
Registrant’s use of Registrant’s goods and services in
connection with Registrant’s mark. 14

11 Schieppati Decl., ¶ 6, 7 TTABVUE 99-100.
12 Schieppati Decl., ¶ 6, 7 TTABVUE 99.
13 Schieppati Decl., ¶¶ 8-9, 7 TTABVUE 100.
14 Petitioner’s notice of reliance, request for admission, no. 22, 6 TTABVUE 39, emphasis in
original omitted). In the requests for admission, “Petitioner goods and services” and
“Petitioner’s mark” are defined as referring to the mark and the goods and services in
application Serial No. 87398479 for RISE ABOVE FITNESS.
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Petitioner’s witness’ testimony is clear and uncontradicted. This testimony, coupled
with the admission that Petitioner’s use of RISE ABOVE FITNESS predates
Respondent’s use of RISE ABOVE for the services identified in Petitioner’s
application (which are the same services identified by Mr. Schiepatti’s testimony) is
sufficient to establish Petitioner’s priority of use for RISE ABOVE FITNESS in
connection with the aforementioned services.
V. Likelihood of confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the marks and the similarities
between the goods or services, the first two du Pont factors. 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.”).
The admissions relevant to likelihood of confusion include the following:15

15 Petitioner’s notice of reliance, requests for admission nos. 2, 10, 12-21, 6 TTABVUE 37-39
(for all quoted requests for admission, emphasis in original omitted). In reaching our ultimate
conclusion regarding likelihood of confusion, we have only considered Respondent’s factual
admissions. We have not considered Respondent’s admission that there is a likelihood of
confusion in this case (request for admission no. 11, 6 TTABVUE 38). See Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153-54 (CCPA 1978)
(likelihood of confusion is a legal conclusion, therefore, it cannot be an “admission,” only facts
may be admitted; a party’s opinion regarding the ultimate conclusion is not an admission and
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Admit that Registrant’s mark and Petitioner’s mark
contain the component “Rise Above.”
Admit that Registrant’s mark and Petitioner’s mark are
similar in sound.
Admit that Registrant’s mark and Petitioner’s mark are
similar in appearance.
Admit that Registrant’s mark and Petitioner’s mark are
similar in connotation.
Admit that Registrant’s mark and Petitioner’s mark are
likely to impose upon customers a similar commercial
impression.
Admit that Registrant’s goods and services are
substantially similar to Petitioner’s goods and services.
Admit that the target customers of Registrant’s goods and
services in connection with Registrant’s mark are likely to
include customers and potential customers of Petitioner’s
goods and services in connection with Petitioner’s mark.
Admit that you were aware Petitioner offered Petitioner’s
goods and services under “Rise Above Fitness” prior to
filing the application.
Admit that your selection and adoption of Registrant’s
mark was done in bad faith.
Admit that your decision to file the application was done in
bad faith.
A. Second du Pont factor
We first consider the second du Pont factor which pertains to the similarity or
dissimilarity of the services. du Pont, 177 USPQ at 567. Where, as here, Petitioner is

does not relieve the decision maker of reaching its “own ultimate conclusion on the entire
record”).

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relying upon common law use of its mark, consideration of the question of likelihood
of confusion must be confined to the specific services on which the mark has been
used. Petitioner has shown use of its pleaded mark for
Fitness boot camps; Health club services, namely,
providing instruction and equipment in the field of physical
exercise; Instruction in the field of physical fitness;
Membership club services, namely, providing training to
members in the field of physical fitness; Personal fitness
training services; Personal fitness training services and
consultancy; Personal trainer services; Personal training
services, namely, strength and conditioning training and
speed training; Personal training services, namely,
strength and conditioning training; Physical fitness
instruction; Physical fitness training of individuals and
groups; Providing fitness and exercise facilities.16
Respondent’s services are identified in the involved registration as
Personal fitness training services and consultancy;
Personal fitness training services featuring aerobic and
anaerobic activities combined with resistance and
flexibility training; Personal training services, namely,
strength and conditioning training and speed training;
Physical fitness training of individuals and groups;
Providing a web site featuring information on exercise and
fitness; Providing a website featuring online sports
training and training advice and the recording of training
and workouts; Providing an interactive website featuring
information and links relating to fitness; Providing an on-
line computer database featuring information regarding
exercise and fitness; Providing assistance, personal
training and physical fitness consultation to individuals to
help them make physical fitness, strength, conditioning,
and exercise improvement in their daily living; Providing
facilities for strength, speed and physical fitness training;
Providing on-line training instruction in the field of
physical fitness and nutrition; Training in the use of fitness
equipment.

16 Schieppati Decl., ¶ 6, 7 TTABVUE 99-100.
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The services are identical in part. The fact that some of the services listed in the
involved registration are identical to some of Petitioner’s services is sufficient to
support a finding that there is a likelihood of confusion. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to be confusion with respect to
any items that come within the identification of goods in the application). In addition,
Respondent has admitted that its services are “substantially similar” to Petitioner’s
services.17
Because Petitioner’s and Respondent’s services are identical in part, this factor
favors Petitioner and a finding of a likelihood of confusion.
B. Third and Fourth du Pont factors
We next consider the third du Pont factor involving the established and likely-to-
continue channels of trade. du Pont, 177 USPQ at 567. Because Petitioner relies on
its common-law rights, for the purposes of this analysis, Petitioner can claim only
those channels of trade and classes of consumers which it has established on the
record. We cannot rely on a presumption that because the services are identical in
part they move in the same channels of trade. Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (no presumptions attach to
unregistered common law mark). While there is no specific testimony about
Petitioner’s customers’ channels of trade, because the identification in the involved

17 Petitioner’s notice of reliance, request for admission no. 19, 6 TTABVUE 39.
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registration has no restrictions on channels of trade, or classes of consumers, we must
presume that Respondent’s services travel in all channels of trade appropriate for
such services, and to all usual purchasers of them, which necessarily includes
Petitioner’s actual channels of trade and classes of consumers for the identical in part
services. Bell’s Brewery, 125 USPQ2d at 1345; Cf. In re Viterra Inc., 671 F.3d 1358,
1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). In
addition, Respondent has admitted that the target customers of Respondent’s
services are likely to include customers and potential customers of the services offered
under Petitioner’s mark.18 This du Pont factor favors a finding of likelihood of
confusion.
The fourth du Pont factor considers conditions under which and buyers to whom
sales are made, e.g., whether the services are purchased on impulse or after careful
consideration, as well as the degree, if any, of sophistication of the potential
purchasers. du Pont, 177 USPQ at 567. Although the record includes an admission
that the parties’ target customers are the same, there is no evidence of record on the
purchasing process for these fitness services or any evidence of purchaser
sophistication. Petitioner argues that purchasers would, at most, exercise a slight

18 Petitioner’s notice of reliance, request for admission no. 12, 6 TTABVUE 38. Respondent
also admitted that Respondent’s and Petitioner’s marks “are or will be advertised through
the same channels of trade.” We view this admission to only relate to the advertising channels
(type of advertising), and not to the channels of trade in which the services move. “The use of
similar methods of advertising does not mean that their respective services will be offered to
consumers under circumstances and through channels of trade which would create a
likelihood of confusion.” Sports Authority Michigan Inc. v. PC Authority Inc, 63 USPQ2d
1782, 1794 (TTAB 2002).
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degree of care. Considering that relevant customers would include ordinary
consumers using an average degree of care, we find this du Pont factor to slightly
favor a finding of likelihood of confusion.
C. First du Pont factor
We turn now to the first du Pont factor. We compare Respondent’s mark and
Petitioner’s common law mark for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. See Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). While the marks are compared in their entireties, in articulating
reasons for reaching a conclusion on the issue of likelihood of confusion, “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
consideration of the marks in their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In cases such as this, where Petitioner’s
services are identical in part to Respondent’s services, the degree of similarity
between the marks which is required to support a finding of likelihood of confusion is
less than it would be if the services were not identical in part. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Respondent’s mark is in standard characters: RISE ABOVE. Petitioner’s mark
has been displayed on its website and in social media in slightly stylized form and
with designs:
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19 20
21 22
Although Petitioner’s common law rights are for the mark as actually used, which
has a slight stylization, Respondent’s mark is in standard characters, and therefore
may be used in the same stylization. Citigroup Inc. v. Capital City Bank Grp. Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). The entirety of Respondent’s
mark RISE ABOVE is included and prominent within Petitioner’s mark RISE
ABOVE FITNESS. The dominant feature in Petitioner’s mark is RISE ABOVE
because FITNESS is a generic term for Petitioner’s services and is entitled to less
weight in our comparison of the marks. Respondent admits that both marks contain
the term RISE ABOVE.
Although we acknowledge that there are visual and aural differences due to the
additional term FITNESS in Petitioner’s mark, the marks are similar in appearance
and sound, as they both contain the term RISE ABOVE. Respondent admits that the
marks are similar in appearance and sound. Given that the dominant term in

19 Website, March 15, 2018, Myers Decl., Exhibit 9, 7 TTABVUE 85.
20 Facebook, March 15, 2018, Myers Decl., Exhibit 9, 7 TTABVUE 87.
21 Twitter, March 15, 2018, Myers Decl., Exhibit 9, 7 TTABVUE 89.
22 Advertisement on social media, March 15, 2018, Myers Decl., Exhibit 9, 7 TTABVUE 93.
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Petitioner’s mark is RISE ABOVE, the meanings and overall impressions conveyed
by the two marks are substantially similar, although Petitioner’s mark would have a
more specific meaning in connection with fitness, since its mark includes such a term.
Respondent has admitted that the marks are similar in connotation and commercial
impression.
When viewed in their entireties, the marks are more similar than dissimilar. The
generic term FITNESS, while not present in Respondent’s mark, adds little to the
overall commercial impression and virtually nothing to its source-identifying function
as it merely identifies the type of services provided under the mark; it does not serve
to distinguish the marks to avoid confusion. See In re National Data Corp., 224 USPQ
at 752 (“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”). We find that the marks on the whole engender similar overall
commercial impressions. The du Pont factor regarding the similarity of the marks
also favors a finding of likelihood of confusion.
D. Fifth & Sixth du Pont Factors
The fifth du Pont factor requires consideration of the fame of Petitioner’s mark.
du Pont, 177 USPQ at 567. In determining fame, or the strength of a mark, we
consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. Bell’s Brewery, 125 USPQ2d at 1345. There is no
evidence in the record that Petitioner’s RISE ABOVE FITNESS mark is conceptually
weak, nor is there evidence as to commercial strength, recognition, or reputation.
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Although Petitioner does not argue its mark is famous, it argues that this factor
should be weighed in its favor due to its “reputation” and “goodwill” based on 10 year’s
use and 9 year’s use in interstate commerce. However, length of use alone does not
entitle Petitioner to a broad scope of protection. We accord Petitioner’s mark the
normal scope of protection and find this du Pont factor neutral.
The sixth du Pont factor is the number and nature of similar marks in use for
similar goods or services. du Pont, 177 USPQ at 567. As Petitioner points out, there
is no evidence of any third-party use of similar marks on similar services. The sixth
du Pont factor also is neutral.
E. Seventh, Eighth and Twelfth du Pont Factors
The seventh and eighth du Pont factors consider, respectively, the nature and
extent of any actual confusion, and the length of time and conditions under which
there has been concurrent use without evidence of actual confusion. du Pont, 177
USPQ at 567. The twelfth du Pont factor considers the potential for confusion, i.e.,
whether de minimis or substantial. Id. Petitioner points to Respondent’s admission
of actual confusion to argue that these factors weigh in its favor.23 Respondent’s
admission lacks sufficient clarity or specificity as to the matters to which actual
consumer confusion exists. Accordingly, we have not accorded any probative value to
the admission regarding actual consumer confusion in our determination of likelihood
of confusion. We find these du Pont factors neutral.

23 Petitioner’s notice of reliance, request for admission no. 15, 6 TTABVUE 38.
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F. Ninth du Pont Factor
This du Pont factor considers the variety of goods on which a mark is used. du
Pont, 177 USPQ at 567. Petitioner argues that this factor weighs in its favor, based
on Respondent’s admission that the parties’ services are substantially similar.24 But
there is no testimony or evidence in the record to support Petitioner’s use of the mark
on a wide variety of goods and services. To the contrary, it appears that Petitioner
only uses its mark for fitness-related products and services. We find this du Pont
factor neutral.
G. Tenth du Pont Factor
The tenth du Pont factor requires us to consider evidence pertaining to the
“market interface” between the parties, including evidence of any past dealings
between the parties which might be indicative of a lack of confusion. du Pont, 177
USPQ at 567. As Petitioner points out, Respondent has admitted through the
requests for admission that there is no evidence of any type of a consent, license or
arrangement between the parties.25 Consequently, this du Pont factor is neutral.
H. Eleventh du Pont Factor
This du Pont factor considers any evidence that Respondent has a right to exclude
third parties from using its applied-for mark. du Pont, 177 USPQ at 567. Petitioner
argues that this factor weighs in its favor, pointing to Respondent’s admissions as to

24 Petitioner’s notice of reliance, request for admission no. 19, 6 TTABVUE 39.
25 Petitioner’s notice of reliance, requests for admission nos. 6, 7 and 8, 6 TTABVUE 37-38.
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lack of exclusive and non-continuous use.26 Because there is no evidence in the record
that Respondent has successfully asserted its rights so as to “exclude” anyone else
from using its mark, we treat this du Pont factor as neutral.
I. Thirteenth du Pont Factor
This factor considers “any other established fact probative of the effect of use.” du
Pont, 177 USPQ at 567. Petitioner argues that Respondent acted in bad faith in
adopting the RISE ABOVE mark. Petitioner specifically relies on Respondent’s
admission that it was aware that Petitioner offered goods and services under the
RISE ABOVE FITNESS mark prior to filing its RISE ABOVE application, and that
the selection and adoption of RISE ABOVE, as well as the filing of an application for
the RISE ABOVE mark, was in bad faith.27
While we deem the factual matters covered by these requests admitted as a result
of Respondent’s failure to respond, we accord little probative value to these
admissions. Mere knowledge of the existence of Petitioner’s mark does not, in and of
itself, constitute bad faith. See Action Temporary Services Inc. v. Labor Force Inc.,
870 F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir 1989). A finding of bad faith must be
supported by evidence of an intent to confuse, rather than mere knowledge of
another’s mark or even an intent to copy. See e.g., Starbucks Corp. v. Wolfe’s Borough
Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1782 (2d Cir. 2009). The admissions

26 Petitioner’s notice of reliance, requests for admission nos. 23-28, 6 TTABVUE 39-40.
27 Petitioner’s notice of reliance, requests for admission nos. 2, 20 and 21, 6 TTABVUE 37,
39.
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regarding Respondent’s knowledge of Petitioner, and its basis for adopting and
seeking to register the mark, are lacking in specificity sufficient to reach any legal
conclusion regarding bad faith. Accordingly, this du Pont factor also is neutral.
Considering and balancing all of the evidence pertaining to the relevant du Pont
factors, we find the first, second, third and fourth du Pont factors weigh in Petitioner’s
favor, while the other du Pont factors are neutral. We therefore find that confusion is
likely between Respondent’s mark RISE ABOVE and Petitioner’s mark RISE ABOVE
FITNESS. We grant the petition for cancellation on the likelihood of confusion
ground.
VI. Abandonment
The Trademark Act provides for the cancellation of a registration if the registered
mark has been abandoned. See Trademark Act Section 14, 15 U.S.C. § 1064. A mark
is deemed abandoned if its use has been discontinued without intent to resume use.
Trademark Act Section 45, 15 U.S.C. § 1127. Nonuse in the United States for a period
of three consecutive years establishes a prima facie case of abandonment. Id.
Petitioner must show that Respondent’s use of the mark has been discontinued
for at least three consecutive years, or that Respondent has discontinued use of the
mark without an intent to resume use. Id.; see also, On-Line Careline, Inc. v. America
Online, Inc., 229 F.3d 1080, 1087, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000) (citing 15
U.S.C. § 1127). “[I]f plaintiff can show three consecutive years of nonuse, it has
established a prima facie showing of abandonment, creating a rebuttable
presumption that the registrant has abandoned the mark without intent to resume
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use.” ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012). In the
absence of any rebuttal of the presumption of abandonment raised by three years
nonuse of the registered mark, abandonment has been established. Satinine Societa
in nome collettivo di S.A. e. M. Usellini v. P.A.B. Produits et Appareils de Beaute, 194
USPQ 209, 213 (TTAB 1977).
Because the subject registration issued under Section 1(a), the earliest date on
which the three-year period may trigger the statutory presumption of nonuse in this
case is the application filing date, November 21, 2012. ShutEmDown Sports, Inc. v.
Lacy, 102 USPQ2d at 1042. Here, Petitioner’s abandonment claim is based on
Respondent’s admissions, which have been conclusively established due to
Respondent’s failure to respond.28
Admit that you have failed to exercise continuous use of Registrant’s
mark since November 21, 2012.

Admit that you have failed to exercise continuous use of Registrant’s
mark since July 9, 2013.

Admit that you do not have any bona fide future plans to use
Registrant’s mark in connection with Registrant’s goods and services.

28 Petitioner’s notice of reliance, requests for admission nos. 26, 28 and 29, 6 TTABVUE 40
(for all quoted requests for admission, emphasis in original omitted). Petitioner also
references, in connection with the abandonment claim, requests for admission nos. 23, 25 and
27, Id. at 39-40, which relate to admissions that Respondent has not had exclusive use of the
mark during certain time periods in 2008, 2012 and 2013. However, maintenance of
exclusivity of rights in a mark is not required to avoid a finding of abandonment. A mark
becomes abandoned only when the mark loses its significance as an indication of origin, not
the sole identification of source. Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp.,
680 F.2d 755, 214 USPQ 327, 336 (CCPA 1982). Thus admissions as to exclusivity of use are
not indicative of abandonment. See Girard Polly-Pig, Inc. v. Polly-Pig by Knapp, Inc., 217
USPQ 1338, 1342 (TTAB 1983) (the fact that a registered mark identifies Respondent as one
of two sources of the services negates an inference of abandonment) (citing Wallpaper
Manufacturers, 214 USPQ at 327).
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Respondent’s admissions are evidence that Respondent was not using its mark at
least since July 9, 2013. Petitioner’s showing that Respondent has not used the
registered mark in interstate commerce continuously for more than three consecutive
years establishes a prima facie case of abandonment that has been unrebutted by
Respondent. In addition, Respondent has admitted it has no intent to resume use.
In view of Respondent’s failure to rebut the presumption of abandonment,
Petitioner has established abandonment by a preponderance of the evidence. We
grant the petition for cancellation on the abandonment ground.
VII. Fraud
We turn last to Petitioner’s fraud claim. Fraud in procuring a trademark
registration occurs when an applicant knowingly makes false, material
representations of fact in connection with its application with an intent to deceive the
USPTO. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009)
(quoting Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48, 1 USPQ2d 1483, 1484
(Fed. Cir. 1986)). A party alleging fraud in the procurement of a registration bears
the heavy burden of proving fraud with clear and convincing evidence. Bose, 91
USPQ2d at 1939 (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB
1981)). Subjective intent to deceive is an indispensable element in the analysis. Id. at
1941. “[B]ecause direct evidence of deceptive intent is rarely available, such intent
can be inferred from indirect and circumstantial evidence. But such evidence must
still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy
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the deceptive intent requirement.” Id. (quoting Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 88 USPQ2d 1001, 1007 (Fed. Cir. 2008)).
Petitioner bases its claim of fraud on various theories that require some
construction and which we summarize. Petitioner has alleged fraud based on
Respondent’s lack of substantially exclusive and continuous use, Respondent’s
conduct in applying for and maintaining a registration that is inconsistent with
“norms of reasonable, honest, and fair commercial behavior,” and its continued
maintenance of its registration despite its knowledge of Petitioner’s rights in
Petitioner’s mark. Additional allegations related to the fraud claims are that
Respondent sought the registration in bad faith by misrepresenting its use under the
RISE ABOVE mark, and that it made a false statement to the Office as to its March
24, 2008 dates of use.29
We construe the allegations of lack of “substantially exclusive and continuous use”
to relate to a Section 2(f) affidavit. Marshall Field & Co. v. Mrs. Fields Cookies, 11
USPQ2d 1355 (TTAB 1989). However, Respondent’s registration is on the Principal
Register without a claim of acquired distinctiveness. We construe the allegations
related to “maintenance” and Respondent’s conduct in maintaining a registration to
be references to maintenance filings made in connection with a registration. See

29 Petitioner did not adequately plead its fraud claim because it did not allege that
Respondent knowingly made false statements with the intent to deceive the USPTO. See e.g.,
Daimlerchrysler Corp. and Chrysler, LLC v. American Motors Corp., 94 USPQ2d 1086, 1088-
89 (TTAB 2010) (intent is an indispensable element of a fraud claim). Nonetheless,
Respondent did not move to dismiss the claim. Noble House Home Furnishings, LLC v.
Floorco Enterprises, LLC, 118 USPQ2d 1413, 1422-23 (TTAB 2016) (considering
insufficiently pleaded fraud claim because respondent did not challenge the pleading and
identified the claim as one of the issues in the case).
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TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) Sections 1602 and 1604.02
(Oct. 2018); Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064
(TTAB 1992). However, nothing in the record shows that Respondent has made such
a filing. Therefore, we find that even if requests for admission are deemed admitted
as to Respondent’s failure to exclusively and continuously use its mark, no fraud could
be found on the basis of either of these theories, in spite of certain of Petitioner’s
requests for admission being deemed admitted.
We construe Petitioner’s allegation relating to “norms of reasonable, honest, and
fair commercial behavior” to be allegations that Respondent filed its application in
bad faith with a fraudulent purpose. Although, as stated above, Respondent has
admitted that it selected and adopted the mark in bad faith, and that its decision to
apply for the RISE ABOVE mark was in bad faith, these admissions are conclusory,
lacking in factual detail, and are insufficient for us to infer that Respondent willfully
made false statements in bad faith with the intent to deceive the USPTO. We further
note that Respondent’s admissions of mere knowledge of Petitioner’s mark, its failure
to conduct a trademark search, and its failure to seek legal advice prior to its selection
and adoption of its mark do not establish bad faith. Action Temporary Services, 10
USPQ2d at 1310; Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 84 (TTAB 1983).
In its brief, Petitioner characterizes its fraud claim as based on a false declaration
“submitted by Registrant when filing Application Serial No. 85785471 to Register the
’848 Mark.” It appears that Petitioner’s argument is that the application declaration
was fraudulent because Respondent knew of Petitioner’s allegedly prior rights in
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RISE ABOVE FITNESS and that the parties’ marks and services are confusingly
similar. Petitioner relies on all of the requests for admission deemed admitted that
were relevant to the likelihood of confusion ground.
However, this theory of fraud was not alleged in the petition for cancellation and
could not be so construed from the allegations provided. As a result, Respondent was
not put on notice that the fraud claim included an allegation of a false declaration
submitted during the filing of the application. Therefore, we have not considered this
theory as a separate basis for the fraud claim. Noble House, 118 USPQ2d at 1423
(not considering an unpleaded fraud claim due to lack of notice to respondent).
Finally, we consider Petitioner’s allegation that Respondent provided a false date
of use of March 24, 2008 in its underlying application and that Respondent
misrepresented that it was using the mark. Even if the stated first use date is false,
that is not material. The mark need only be in use in commerce as of the application
filing date, November 21, 2012. Hiraga v. Arena, 90 USPQ2d 1102, 1107 (TTAB 2009)
(citations omitted).
As for the alleged misrepresentation that Respondent was using the mark, the
most relevant admissions are that Respondent failed to exercise continuous use of
RISE ABOVE since March 24, 2018, that it failed to exercise continuous use since
November 21, 2012, and that it did not begin offering services in connection with its
mark on or before March 24, 2008.30

30 Petitioner’s notice of reliance, requests for admission nos. 24, 26, 30, 6 TTABVUE 39-40.
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Although there is an admission that Respondent was not offering the services in
connection with the mark on or before March 24, 2008, the other two admissions do
not clearly establish that there was no use under the mark in connection with the
services at the time the application was filed. Rather, these admissions establish that
use of the RISE ABOVE mark was not continuous since March 24, 2008 and
November 21, 2012.31
Standing alone, these admissions also fall far short of qualifying as “clear and
convincing” indirect or circumstantial evidence so as to justify drawing an inference
sufficient to satisfy the intent to deceive requirement. “[A]bsent the requisite intent
to mislead the PTO, even a material misrepresentation would not qualify as fraud
under the Lanham Act warranting cancellation.” Bose, 91 USPQ2d at 1940 (citing
King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA
1981)). This record does not support an inference of willful intent. Accordingly, the
petition for cancellation on the fraud ground is denied.
Decision:
In summary, the petition for cancellation is granted on the abandonment and
likelihood of confusion grounds and denied as to the fraud ground. Registration No.
4364848 will be cancelled in due course.

31 An applicant seeking registration under Section 1(a) of the Trademark Act need only use
the mark before the application’s filing date.