Roxane M. Bresette and Dennis Harris, d/b/a Roxv.Sigma Holding Corporation

Trademark Trial and Appeal Board

Mar 31, 2014

No. 92054984 (T.T.A.B. Mar. 31, 2014)

Mailed:
March 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Roxane M. Bresette and Dennis Harris, d/b/a Rox

v.

Sigma Holding Corporation
_____

Cancellation No. 92054984
_____

Roxane M. Bresette and Dennis Harris, d/b/a Rox, pro se.

J. Philip Polster of Polster Lieder Woodruff & Lucchesi LC
for Sigma Holding Corporation.
_____

Before Seeherman, Wellington and Adlin, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Roxane M. Bresette, who identified herself as doing
business as ROX, a sole proprietorship, filed a petition to
cancel Sigma Holding Corporation’s registration for the
mark ROX, in standard characters, for “bicycle computers”1

1 Registration No. 3742187, issued January 26, 2010, from an
application filed June 18, 2009.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92054984
2
on the grounds of likelihood of confusion, fraud and
dilution.2 During the testimony of petitioner’s witness,
Dennis Harris, it was revealed that he is Ms. Bresette’s
husband and started and runs the business with her, see
Harris dep, p. 5, TTABVue 23, p. 7. Dennis Harris and
Roxane Bresette have both been identified as “Co-Founder
and Co-Owner of ROX” Petitioner’s brief, pp. 2-3, TTABVue
40, pp. 8-9. Respondent has agreed with this description:
“Roxane M. Bresette, is one half of a company called Rox or
Rox USA” and “her husband, Dennis Harris, is the other
half.” Respondent’s brief, p. 1, TTABVue 41, p. 6.
Accordingly, we treat this husband-and-wife sole
proprietorship as being owned by both Roxane M. Bresette

2 The ground of dilution was not well pleaded, e.g., petitioner
did not allege that her mark is famous. However, respondent did
not challenge the adequacy of the pleading, and has argued all
three grounds in its brief, and we therefore have treated the
pleadings as including these grounds.
We note that in its briefs petitioner has asked that
respondent “be held criminally liable for their fraudulent
actions against the United States Patent and Trademark Office.”
Brief, p. 40. The Board has no authority over criminal matters
and petitioner’s request will be given no further consideration.
Petitioner also asserts in its brief, under the heading of
dilution, that the registration must be cancelled under Section
2(f) of the Lanham Act. This section has no relevance to the
ground of dilution, nor does it seem to be relevant to any claim
that petitioner might assert, as Section 2(f) is a basis for
registering a mark that is not inherently distinctive. Since
respondent’s mark is the same as petitioner’s pleaded mark, it
does not appear that petitioner would claim that its own mark is
not inherently distinctive. In any event, petitioner never
pleaded a claim based on Section 2(f), nor was such an issue
tried, and therefore we give it no consideration.

Cancellation No. 92054984
3
and Dennis Harris, and have amended the caption of this
proceeding to reflect this. We will refer to this
business/sole proprietorship as “petitioner,” and refer to
the co-owners by their names.
In its petition to cancel petitioner alleged that it
has used the term ROX as a trademark in the bicycle and
outdoor recreation industries since December 1987; that the
parties use identical trade channels for marketing their
products and have identical consumers; that despite having
been advised by petitioner that a conflict existed,
respondent filed its application that resulted in the
registration sought to be cancelled, thereby displaying “a
reckless and willful disregard for the truth” ¶ 2; and that
respondent’s use of its mark on defect plagued products
“tarnish the reputation of the petitioner … and dilutes its
brand in the bicycle and outdoor industries.” ¶ 6.
In its answer respondent has admitted that certain
correspondence attached to petitioner’s petition for
cancellation was sent to or received by respondent or its
affiliates, and that its application for the subject
registration was filed after the correspondence reflected
in the exhibits. It also admitted, inter alia, that it has
run advertising in a trade publication in which petitioner
asserts it has advertised; and that its president is a
Cancellation No. 92054984
4
former employee of Downeast Bicycle Specialists, a company
through which petitioner alleges it sold products. It
otherwise denied the remaining salient allegations in the
petition to cancel.
The Record
The parties have raised an inordinate number of
evidentiary and other objections, many of which must
certainly be characterized as petty. For example,
petitioner moved to strike respondent’s trial brief because
the appendices to that brief do not have page numbers.
Appendix A to respondent’s brief consists of petitioner’s
brief in which respondent has highlighted phrases or
sentences on every page, and inserted numerous comments
through the “track changes” word processing function. The
majority of the comments are simply two-word phrases, e.g.,
“no evidence” or “purely conclusory.” Appendix B is a one-
page listing of respondent’s exhibits, with a description
of each. We regard both the motion to strike and the
annotated comments, as well as respondent’s request in its
brief that any unsubstantiated statements in petitioner’s
brief be stricken, and petitioner’s response in its reply
brief that some of the comments made by respondent in the
appendix should be stricken, as an unwarranted imposition
on the Board’s time with no substantive purpose. Suffice
Cancellation No. 92054984
5
it to say, the motion is denied and the objections
overruled.
The objections have not stopped with these two
examples. Petitioner’s 40-page trial brief has nine pages
discussing petitioner’s objections to respondent’s notice
of reliance, in which petitioner either has moved to strike
or has objected to virtually every one of the 121 exhibits
submitted by respondent under notice of reliance.
Respondent’s objections and responses to petitioner’s
objections constitute seven pages of its trial brief. And
petitioner’s 14-page rebuttal brief contains only two and a
quarter pages of actual argument, as opposed to seven pages
of responses to respondent’s objections and petitioner’s
objections to statements made in respondent’s brief.
We will not allow the parties’ tactics to force us to
engage in an extended discussion of these objections and
complaints. Therefore, we deal with them in a summary
manner.
Respondent’s motion to strike certain materials
submitted with petitioner’s rebuttal notice of reliance is
granted. These exhibits consist of “private
communications” (Exhibits 61 and 69-73) and “confidential
sales reports” (Exhibits 43-47). Such materials may not be
made of record by notice of reliance as they are not
Cancellation No. 92054984
6
publicly available, see Trademark Rule 2.122(e), and
petitioner’s arguments as to the relevance of these
materials are beside the point.
With respect to the other objections to exhibits, to
the extent that the material objected to is germane to our
determination, we will discuss its acceptability and
probative value in our analysis of the issues. The only
exception is respondent’s exhibit 74, in its third notice
of reliance, which respondent has agreed should be stricken
because it is a summary of search results (of registered
names in the state of Arizona), rather than a web site. In
view thereof, we have given this exhibit no consideration.3
Accordingly, the record contains the pleadings; the
file of the registration sought to be cancelled; the
testimony, with exhibits, of petitioner’s witnesses Roxane
M. Bresette and Dennis R. Harris; and various materials
taken from publications, internet websites and official
records, submitted by petitioner and respondent under
notices of reliance. As previously discussed, petitioner’s

3 There has also been discussion in the parties’ briefs about
the relevance of certain evidence submitted by respondent, with
respondent agreeing that the evidence is irrelevant if, as
respondent asserts, petitioner has limited the channels of trade
of its goods. Petitioner has made clear in its rebuttal brief
that it has not limited the channels of trade, p. 9, and
therefore we do not consider respondent to have agreed that the
evidence it submitted need not be considered.
Cancellation No. 92054984
7
exhibits 43-47, 61 and 69-73 and respondent’s exhibit 74
are not part of the record.
The case has been fully briefed.
The Parties
Roxane Bresette and Dennis Harris, who are husband and
wife, started their business in December 1987, and have
submitted evidence of use of the mark ROX going back to
1988. Mr. Harris identified a photograph of an insulated
bottle holder with a label bearing the mark ROX (Exhibit
C), and testified that this was from 1988. p. 7. He also
identified photographs of backpacks, backpacking equipment
and “bikepacking” equipment (Exhibit E) from that time
period. p. 8. Petitioner’s 1992 catalog, showing the
trade name ROX USA, was distributed at the 1992
International Bike Show, and depicts racing shorts, bib
shorts, bike caps, a cycling jersey, anorak, sport bra,
windbreaker, wind pants, helmet cover, bike bag, bar bag,
rack trunk, underseat wedge bag, back pack, wallet and
saddle covers. Rim strips (also known as rim tape),
identified by the trademark ROX, (Rox Ultralight Rim
Strips), also appear in the catalog. Exhibit B, pp. 6-7.
Petitioner stopped making many of these goods at some
point; there is some suggestion that this happened rather
early in its history. As Mr. Harris testified:
Cancellation No. 92054984
8
… we walked through that door [of the
International Bike Show] in ’92 and we were a
soft goods company that sold clothing and had one
wheel good product, and we left four days later
as a wheel goods product that had a soft goods
line.

p. 7. Mr. Harris testified that petitioner currently makes
ROX Ultralight Rim Tape, ROX SuperDutE Rim Tape, ROX
NePlusUltra Rim Tape, and the ROX Smart Fit clothing line
that includes DogEarz balaclavas, skull caps, an Earz band,
bicycle shorts and jerseys. p. 6. Petitioner manufactures
most its products in Bresette’s and Harris’s home. Harris,
p. 26.
Respondent has not presented any evidence about
itself, but states in its brief that, because the bicycle
computers identified in its registration are presumed to
include any type of bicycle computer and to travel in all
ordinary channels of trade, including those of petitioner,
respondent’s “activities are not particularly relevant to
the issues in this proceeding.” p. 10.
Standing
Petitioner’s use of the mark and trade name ROX and
ROX USA is sufficient to show that it is not a mere
intermeddler and that it has standing. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Cancellation No. 92054984
9
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Likelihood of confusion
There are two elements to proving the ground of
likelihood of confusion: priority and likelihood of
confusion.
Priority
To establish priority, a plaintiff must prove that it
owns “a mark or trade name previously used in the United
States … and not abandoned ….” Trademark Act Section 2, 15
U.S.C. § 1052. As petitioner does not own a registration,
it must rely on its common law use to prove priority. In
order for a plaintiff to prevail on a claim of likelihood
of confusion based on its ownership of common law rights in
a mark, the plaintiff must show that its mark is
distinctive, inherently or otherwise, and that it obtained
rights in that distinctive term through use prior to that
of the defendant. See Otto Roth & Co., Inc. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
There is no question that petitioner’s mark ROX is
inherently distinctive, and that petitioner obtained rights
in the mark prior to respondent. Respondent has not
challenged the distinctiveness of petitioner’s mark, which
is the same mark as respondent’s. See, e.g., Giersch v.
Cancellation No. 92054984
10
Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009)
(“Respondent has not raised an issue as to the
distinctiveness of petitioner's mark or otherwise put
petitioner on notice of this defense, and therefore we find
that the mark is distinctive.”) (citing Wet Seal Inc. v. FD
Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent
argument or evidence from applicant, opposer's mark deemed
distinctive)); Chicago Corp. v. N. Am. Chicago Corp., 20
USPQ2d 1715, 1717 n. 5 (TTAB 1991)(rejecting applicant's
argument that opposer failed to prove that its mark was
distinctive where applicant failed to plead the issue or
introduce evidence of non-distinctiveness). Respondent
also “admits that [petitioner] began use of the mark ROX on
fabric goods long before [respondent] adopted ROX for
bicycle computers.” Brief, p. 16. Respondent has not
submitted any evidence regarding its use, so it may rely
only on the filing date of the application underlying its
registration, namely, June 18, 2009. As previously
discussed, petitioner has submitted testimony and evidence
of use of the mark ROX on both clothing and rim tape much
earlier than that date. However, while we find that
petitioner has established its prior common law rights,
unlike a registration which gives a plaintiff rights to the
goods or services as identified in the registration and the
Cancellation No. 92054984
11
ordinary channels of trade for the goods and services as
identified, common law rights are based on the evidence of
actual use.
Likelihood of confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In this case, petitioner has pointed to a
number of du Pont factors that it considers relevant;
respondent relies primarily on the alleged dissimilarity of
the goods, although it has also submitted evidence and
arguments regarding other factors.
Turning first to the similarity or dissimilarity of
the marks in their entireties as to appearance, sound,
connotation and commercial impression, the marks are both
ROX, and therefore they are identical in pronunciation.
Although petitioner’s common law rights are for the mark as
actually used, which has a slight stylization of the R and
the X, see Exhibit F to Harris deposition, respondent’s
mark is in standard characters, and therefore may be used
in the same stylization. Citigroup Inc. v. Capital City
Cancellation No. 92054984
12
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir.
2011). Accordingly, the marks must be deemed identical in
appearance. Indeed, the manner in which respondent’s mark
is depicted in trade magazines is very similar to the
stylization of petitioner’s ROX mark. Respondent’s notice
of reliance, exhibit 75 (TTABVue 11, p. 7). There is no
evidence that the marks would have different meanings
because of the different goods for which they are used.
Cf. Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB
2007); In re Sears, Roebuck & Co., 2 USPQ2d 1600 (TTAB
1987); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB
1984). Their overall commercial impressions are the same.
We also note that respondent does not contest that the
marks are identical. “In the present case, the marks are
identical.” Brief, p. 17. This weighs heavily in favor of
a finding of likelihood of confusion.
We turn next to the du Pont factor of the similarity
or dissimilarity of the goods which, as previously
mentioned, is the factor which respondent believes most
strongly favors it: “If the Board agrees with [respondent]
that the goods of the parties are so utterly different that
no evidence could possibly prove likelihood of confusion,
then it may skip everything that follows, does not need to
review the evidence, and can enter judgment forthwith.”
Cancellation No. 92054984
13
Brief, p. 1. However, “the degree of ‘relatedness’ must be
viewed in the context of all the factors, in determining
whether the services are sufficiently related that a
reasonable consumer would be confused as to source or
sponsorship.” In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1678, 1689 (Fed. Cir. 1993). “Even when goods or
services are not competitive or intrinsically related, the
use of identical marks can lead to the assumption that
there is a common source.” Id. See also, In re L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012) (where
applicant’s mark is identical to opposer’s mark, “there
need only be a viable relationship between the goods to
find that there is a likelihood of confusion”).
We consider petitioner’s bicycle wheel rim tape to be
the closest to respondent’s bicycle computers, and
therefore concentrate our comments on the similarity or
dissimilarity of these goods. Petitioner’s rim tape is
used inside bicycle wheels to protect the inner tube from
being punctured or damaged by the sharp spoke ends and to
cover the spoke holes. Harris, p. 15. As for respondent’s
goods, they are identified in the registration as “bicycle
computers,” and this identification must be deemed to
encompass all types of bicycle computers. Mr. Harris has
explained that “all bicycle computers have a unit on the
Cancellation No. 92054984
14
handle bars which is your display unit which leads down to
the sensor unit which is always placed on the fork which is
adjacent to the wheel and then a magnet is placed on the
wheel.” pp. 15-16. Catalog and directory listings for
bicycle computers advertise that they have functions that
measure speed, distance traveled, altitude and heart rate.
Other websites showing bicycle computers advertise that
they are low-profile and attach to the bike’s stem or
handlebar. See, e.g., respondent’s notice of reliance
Exhibit 113, TTABVue 14, p. 4.
The parties’ goods are clearly different in purpose.
However, in order to find likelihood of confusion, the
goods of the parties need not be similar or competitive, or
even offered through the same channels of trade. L’Oreal
S.A. v. Marcon, supra at 1439. Here, both goods are
bicycle accessories, as opposed to structural parts. Both
could be purchased separately by cyclists for use with
their bicycles. Given the fact that the marks are
identical, this is sufficient for us to find that the goods
are related.
In reaching this conclusion, we have noted
respondent’s evidence of third parties that use the same
mark, or marks containing the same element, on various
Cancellation No. 92054984
15
bicycle components and accessories, which apparently co-
exist.
Specifically, respondent has made of record a webpage
from the REI website showing a “Garmin Edge 500 Wireless
Bike Computer” (respondent’s notice of reliance Exhibit
113, TTABVue 14, p. 4), and webpages from the EDGE DESIGN
USA website for wheelsets in which Edge or EDGE DESIGN
appears on the wheel (respondent’s notice of reliance
Exhibits 114 and 115, TTABVue 14, pp. 5-6), as well as
showing EDGE COMPONENTS like handlebars and saddles
(Exhibit 116, TTABVue 14, p. 7). The Amazon.com website
offers a Polar CS400 Heart Rate Bike Computer (Exhibit 117,
TTABVue 14, p. 10), while the L.L. Bean website shows an
insulated Polar Water Bottle (Exhibit 118, TTABVue 14, p.
11). The REI website features a “CatEye Strada Wireless
Bike Computer” (Exhibit 119, TTABVue 14, p. 12) and a
“Novara Strada Bike-2013” (Exhibit 121, TTABVue 14, p. 14),
and the BikeTiresDirect.Com website shows a “Clement Strada
LLG 60 TPI Tire” (Exhibit 120, TTABVue 14, p. 13).
We do not find this evidence particularly persuasive
that consumers will view petitioner’s and respondent’s ROX
marks as indicating different sources for the respective
goods. With respect to the EDGE and STRADA example, a
house mark is used with the Garmin product, and house marks
Cancellation No. 92054984
16
are used with the three Strada products. We are not
implying that if respondent’s mark included a house mark we
might reach a different result. However, respondent’s mark
is for ROX per se, and therefore respondent’s protection is
not limited to use of the term with a house mark. We also
point out, in connection with the STRADA marks, that
“strada” means “road” in Italian, and therefore has at
least a highly suggestive connotation for the goods, such
that consumers might look to other elements of the marks to
distinguish source.4 We also view the water bottle in the
POLAR example as being less similar to a bicycle computer
than the rim tape on which petitioner uses its mark since a
water bottle is not necessarily made for use on a bicycle.
The next du Pont factor we consider is the channels of
trade. Again, since petitioner is relying only on common
law rights, we must consider its actual channels of trade.
Mr. Harris’s testimony is that petitioner’s goods are sold
through bicycle distributors, who in turn sell the products
to bicycle shops and outdoor retailers in the United States
and abroad. p. 11. Currently its main distributer is

4 See translation in Collin’s Italian Dictionary, © 2014,
www.collinsdictionary.com. The Board may take judicial notice of
dictionary definitions, including those that are the electronic
equivalent of a print reference work. University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983);
In re Dietrich, 91 USPQ2d 1622, 1631 n.15 (TTAB 2009).
Cancellation No. 92054984
17
Quality Bicycle Products. p. 28. The end consumer is the
cyclist. Id. at 12.
Petitioner has submitted pages from multiple editions
of the Excel Sports Catalog showing that petitioner’s rim
tape was shown in Issue #112 (Page 17 of notice of
reliance, TTABVue 8, p. 17) and respondent’s bicycle
computer, as well as those of other companies, was also
offered in this issue of the catalog (Page 18 of notice of
reliance, TTABVue 8, p. 19).5 In addition, the Excel Sports
website (which is available to those in the bicycle
industry), lists both petitioner’s ROX Ultralight Rim
Strips and respondent’s Sigma ROX 6.0 cycling computer.
(Petitioner’s notice of reliance, pp. 25 and 26, TTABVue 8,
pp. 26-27.) Thus, there is documentary evidence that

5 Respondent has objected to these two exhibits because they do
not include a date on either the page itself or the identifying
information provided by petitioner. The primary purpose of
requiring date information for a printed publication submitted
under notice of reliance is so the adverse party can find the
information in order to check the material for accuracy.
Respondent does not assert that it could not locate the catalog,
and given that Issue #111 (p. 16 of petitioner’s notice of
reliance, TTABVue 8, p. 17) was dated November 16, 2010, we do
not consider respondent to have been unable to determine when the
next issue was published, or to find it.
It should be noted that respondent has not objected to the
exhibits on any other basis, and that respondent has specifically
stated that the exhibit from Issue #111 from the Excel Sports
Catalog is “admissible under 37 C.F.R. 2.122(e).” Brief, p. 4.
Cancellation No. 92054984
18
supports Mr. Harris’s testimony that national retailer
Excel Sports sold both parties’ ROX products. p. 17.6
Respondent has attempted to characterize petitioner’s
channels of trade as being limited to the bicycle and
outdoor retailers to whom petitioner’s distributor, Quality
Bicycle Products, sells its goods, and argues that the
retailers that assemble bicycles are the installers of the
tape, and thus would be the only consumers who would
actually purchase and have contact with petitioner’s rim
tape. However, that position is contradicted by Mr.
Harris’s testimony, as reported above, that the end
consumer is the cyclist. Moreover, respondent’s argument
does not account for cyclists who purchase and install rim
tape themselves.
In short, because respondent’s goods must be deemed to
be sold in all channels of trade that are appropriate for
such goods, including bicycle stores, and because
petitioner has shown that its goods are sold in bicycle
stores, and because the evidence further shows that both

6 Mr. Harris also testified that both parties’ products have
been sold at REI. Respondent has attempted to rebut this
testimony by submitting a webpage from the REI website, printed
on January 30, 2013, indicated one match for “rim tape,” with the
product bearing the mark VELOX, not ROX. There may be many
explanations as to the discrepancy between Mr. Harris’s testimony
and the physical exhibit, including that petitioner’s product has
been sold through REI but is not available there at the moment;
in any event, we have not relied on petitioner’s rim tape being
sold through REI in reaching our conclusion herein.
Cancellation No. 92054984
19
parties’ goods are, in fact, sold through at least one of
the same distributors and retailers, we find that the goods
move in the same channels of trade.
We now turn to the du Pont factor of the fame or
strength of petitioner’s mark. Petitioner does not claim
that its mark is generally famous: “Although no claim has
ever been made by [petitioner] that their mark is famous in
the vast ocean of marks, it is famous, strong, and well
known within the pond known as the bicycle industry.”
Brief, p. 30. However, petitioner has not proved the niche
fame it claims. It has not submitted any evidence of its
sales,7 and its advertising has been minimal. It has not
been to the Interbike trade show since 1998 and there is no
evidence that it participated in other trade shows.
Articles about petitioner and its ROX products and ads for
ROX rim tape, submitted by petitioner under notice of
reliance, are primarily from the 1990s. There is only one
apparently recent article on the Bicycling.com website,
“Cheap Bike Gear Upgrades,” that mentions Rim Strips, and
recommends Rox Ultralights (Petitioner’s Notice of

7 As previously noted, petitioner attempted to submit sales
reports with its rebuttal notice of reliance (Exhibits 43-47).
Even if these documents could have been made of record by notice
of reliance, they would have been improper rebuttal. Showing
fame or strength of a mark is part of the plaintiff’s case-in-
chief.

Cancellation No. 92054984
20
Reliance, p. 10, TTABVue 8, p. 11).8 The mere fact that
petitioner has been using the trademark ROX for 20+ years,
without evidence of sales or more evidence of promotion or
consumer recognition, is insufficient for us to find that
its mark is famous, even in a niche market. As we have
said before about famous marks, “It is the duty of a party
asserting that its mark is famous to clearly prove it.”
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007). Even for niche fame, petitioner’s
proof falls far short.
However, this does not mean that petitioner’s mark is
not entitled to protection. We note that respondent has
submitted 67 third-party registrations, taken from the
USPTO database, for marks that consist of or include the
element ROX. It appears that respondent submitted these
registrations as being “probative of their owner’s use of
and their right to use these ROX formatives for clothing
including athletic clothing that could be sold in bicycle
shops and at REI stores.” Brief, p. 6. However, third-
party registrations are not evidence of use of the marks
shown therein. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993). They may be used to show that a

8 The webpage was printed on February 11, 2012; it is unclear
when the article first appeared.

Cancellation No. 92054984
21
term has a significance in a particular industry, but since
we are concentrating on the similarity of petitioner’s rim
tape and respondent’s bicycle computers, any significance
that ROX may have with respect to clothing does not affect
the scope of protection to be accorded petitioner’s mark
for rim tape. In any event, respondent has not limited the
registrations to goods or services related to bicycles or
sports or clothing, but has submitted what appear to be all
third-party “ROX” registrations, for any and all goods and
services, e.g., ROX ELECTRONICS for “manufacturing services
for others in the field of audio equipment,” Registration
No. 85445298. After carefully reviewing the third-party
registrations, we cannot determine what significance, if
any, petitioner’s mark ROX might have for rim tape. We
can, however, draw some conclusions as to possible meanings
of ROX in general. For example, it appears that in a
number of cases, ROX has been chosen because it is the
phonetic equivalent of ROCKS, and it has the meaning of
actual rocks or stones in these marks. See, for example,
Registration No. 3263500 for ROX PANELS for stones, namely,
selected ledge stones adhered together to form standardized
panels for installation of natural stone veneers;
Registration No. 3166796 for ROX BOX for stone, gravel or
similar products, namely boulders, stepping stones, stone
Cancellation No. 92054984
22
veneer, and crushed stone for use in landscaping, building
construction and paving; Registration No. 4220118 for
jewelry, with “ROX” disclaimed. In other cases, ROX has
the slang meaning of “rocks”: “something that is ultra
cool,”9 e.g., Registration No. 4114362 for LA ROX for
physical fitness instruction; Registration No. 3262054 for
HOCKEY ROX! Or ROX may have been derived from the
trademark owner’s name, e.g., Registration No. 3583944 for
ROX ROX is owned by RoxAnn Stalberger, LLC; Registration
No. 4048668 for ANGELROX is owned by Pamela Roxann Sliger.
Based on the record before us, it appears that ROX is
a strong mark that does not have a meaning when used in
connection with rim tape.
Respondent has also submitted evidence of webpages in
connection with the sixth du Pont factor, the number and
nature of similar marks in use on similar goods.10 Many of
the third-party uses are for goods that we would

9 See respondent’s exhibit 1 to its notice of reliance, TTABVue
9, p. 4, taken from Urban Dictionary, defining “Rox” as another
spelling of the word “rocks.” “Rox is a shorter and sometimes
cooler version of ‘rocks.’ Rox=Rocks. Hannah is awesome! She
rox! Ben rox! This new song rox!”
10 Exhibit 79 (TTABVue 12, p. 4) shows the results of a search
for “rox backpack” on the website “TheFind,” which site has the
subhead “EVERY PRODUCT EVERY STORE.” This webpage lists “23
products from 10 stores for rox backpack.” The listings on this
webpage are somewhat truncated, and appear to merely identify
where the products can be found, so we treat this exhibit as
being in the manner of a Google search summary, rather than as
actual evidence of third-party use. See TBMP Section 1208.03 and
cases cited therein at note 5.
Cancellation No. 92054984
23
characterize as outside the general category of bicycle
products or accessories. For example, Exhibit 80 (TTABVue
12, p. 5), from the Amazon.com website, is for “CAMP USA
Rox Plus Bag.” The next webpage (Exhibit 81) is from the
Camp USA website, www.camp-usa.com, and shows a backpack
that is advertised as being for “a day at the crags.” It
is clear from the rest of the text on this website that
CAMP USA’s products are directed toward rock climbers.
Several exhibits (82, 87 and 89-93, TTABVue 12, p. 7, 13
and 15-19) are from the website http://roxvolleyball.com,
and the text shows that this is a site offering products
for volleyball players. The website with the URL
www.prepsportswear.com has a webpage featuring “Shoals High
School Jug Rox Backpacks” (Exhibit 84, TTABVue 12, p. 9)
and a “Rockford Rox Baseball” sweatshirt (Exhibit 94). The
text on the webpage for the latter product indicates that
it is a custom ordered product, since the “expected
production time” for individual orders is 5 business days,
and 10 business days for bulk orders. This information
gives credence to petitioner’s statement that this is
merely a piece of memorabilia, and to its evidence,
rebuttal exhibit 54, TTABVue 31, p.8, showing that there
was a 1949 Rockford Rox baseball team. As for the Jug Rox
webpage, petitioner has submitted rebuttal evidence
Cancellation No. 92054984
24
indicating that Shoals is the name of a high school, and
Jug Rox is the name of the team. Petitioner’s Rebuttal
Exhibit 52, TTABVue 31, p. 5. The My Locker website
(Exhibit 85) features “Sto Rox Elementary School Vikings
Backpacks” and STO ROX lunch bags, coolers and laptop
sleeves. Respondent’s rebuttal Exhibit 53, TTABVue 31, p.
7, is a webpage for the STO-ROX School District, providing
information for Kindergarten Registration at the Sto-Rox
Elementary School.
The webpages that appear to be for bicycle-related
goods and services include two pages from the Buzzillions
website, consisting solely of reviews from 2009 of an “ETXE
ONTDO Rox Thermal Cycling Jacket.” Exhibit 96, TTABVue 12,
pp. 23-24. There is no other evidence regarding the
product itself that would indicate that it is currently
offered for sale. Indeed, petitioner’s rebuttal evidence,
Exhibit 57, TTABVue 31, pp. 14-18, shows that the Etxeonde
website does not list this jacket at all. Respondent’s
Exhibit 92 from MTBR website lists the “Selle Italia Rox
Saddle,” but without a price, so it is not clear whether it
is available for sale; petitioner’s rebuttal exhibit 58,
TTABVue 31, pp. 19-22, taken from the Selle Italia website
and depicting that company’s road and off-road saddles,
does not show a Rox saddle at all. A webpage showing the
Cancellation No. 92054984
25
name ROCK’S Cycling is essentially contact information, and
is headed “Bicycle Dealers Burley, ID.” Exhibit 98,
TTABVue 12, p. 26. Another website called Local Bicycle
Trader lists a “Womens Mountain Bike Magna” for sale, with
the description “Womens Magna Wall Rox 18 Speed 24" tires”
(Exhibit 101, TTABVue 12, p. 29). These apparently limited
usages of the term “ROX” call to mind Judge Rich’s
statement regarding information obtained through NEXIS:
“It is indeed remarkable to see the thoroughness with which
NEXIS can regurgitate a placename casually mentioned in the
news.” In re Societe Generale des Eaux Minerales de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987).11
Other third-party uses are for variations of ROX that
have a different meaning from ROX per se, e.g., a triathlon
located in the Rocketts Landing area of Richmond, VA
(Exhibit 110, TTABVue 12, p. 39), and the Toyota SheROX
Triathlon Series (Exhibit 111), which has the slogan “She
SWIMS, She RIDES, She RUNS,” in which ROX has the

11 Respondent also submitted a webpage showing a “ROXY ‘Dots rox’
Mini Backpack” on the Bilbo Surf Shop website (Exhibit 83,
TTABVue 12, p. 8). However, the URL shows that this is a UK
company, www.bilbosurfshop.co.uk, and therefore, in addition to
the fact that these goods apparently are not targeted to
consumers of bicycles or bicycle accessories but rather to
surfers, this use outside of the United States would not be
probative evidence on this du Pont factor. Similarly, a webpage
showing a “Magna Wall Rox Green Mountain Bike” as an item in a
2012 auction in the United Kingdom (Exhibit 102, TTABVue 12, p.
30) has no probative value.

Cancellation No. 92054984
26
“ultracool” meaning mentioned previously, i.e., the woman
who competes in the triathlon “rocks” or is cool.
There are some third-party uses that are for bicycle
parts or accessories, including for the “Michelin Country
Rock” tire, but in view of the text in this ad (“Able to
tackle city streets, hardpack and gravel”), the meaning of
“Rock” appears to be that the tire can withstand rocky
roads or trails. Exhibit 107, TTABVue 12, p. 36. And
there are three exhibits showing “Alius ROX” cassette hubs
(Exhibits 103 and 104, both from the website for
TIME2SHINE, and Exhibit 105 from the website for POWERS
BIKE SHOP with the text Alius Rox Custom wheels); in both
ROX is used with what appears to be the house mark ALIUS,
and in fact, in the POWERS webpage, the more prominent
display of the mark is for just ALIUS CUSTOM WHEELS.
Finally, respondent has submitted under notice of reliance
a webpage from BicycleBuys.com featuring the Spinergy Rev-
X-Roks front wheel, Exhibit 106, TTABVue 12, p. 35. Ms.
Bresette has testified that she objected when Spinergy
initially planned to use the mark REV-X-ROX, and that it
changed the mark in response.
The above discussion is not an exhaustive list of the
evidence of third-party usage, but gives a general idea of
it. After reviewing the evidence thoroughly, we conclude
Cancellation No. 92054984
27
that respondent has not shown that the term ROX is in such
common and generally known use in the relevant industry
that the protection to be accorded to petitioner’s ROX mark
for rim tape is so limited that it cannot prevent the use
of the identical mark for bicycle computers. The third-
party uses in the bicycle field of marks containing ROX or
a similar formative all have other distinguishing features,
such as a house name or other element or a difference in
spelling. However, in this case the marks are identical,
and have no additional element that can be used as a
distinguishing feature. This situation thus differs from
those in which, because of the common use of a particular
element in third-party marks, consumers would be presumed
to distinguish between marks based on the other elements.
The next du Pont factor we consider is the conditions
of purchase. Petitioner has admitted that its consumers
are “inherently sophisticated,” and that “thought is given
before the bicyclist purchases this component [ROX rim
tapes].” Brief, p. 31. Petitioner also asserts that
respondent “considers its computers to appeal to a
sophisticated user; certainly there is no need for a
computer on the bicycle, it works fine without one.” Id.
In addition, petitioner states:
Cancellation No. 92054984
28
The specialty retail channel, like the
independent bicycle dealer, enjoys the consumer
with more knowledge of bicycles and their
components than the mass merchant customer. An
argument can be made that all consumers who seek
out specialty retail channels are inherently
sophisticated.

Id. Although petitioner then concludes that this du Pont
factor weighs in its favor, it is clear from its statements
about the sophistication of the consumers and care with
which the parties’ goods are purchased that this factor
favors respondent’s position.
The factors of actual confusion and potential of
confusion can be dealt with briefly. Although there is no
evidence of actual confusion, we do not have any evidence
as to the extent of respondent’s sales, or any evidence as
to the extent of petitioner’s current sales, and petitioner
has not engaged in any advertising for many years. As a
result, we can draw no inference regarding the lack of
evidence of actual confusion. As for the potential for
confusion, petitioner would have us analyze this by merely
revisiting the du Pont factor of trade channels: “The
potential for confusion here is great as both [petitioner’s
and respondent’s] products are sold through identical trade
channels to identical consumers.” Brief, p. 23. However,
we approach this factor in terms of the number of people
who are likely to be confused. By petitioner’s own
Cancellation No. 92054984
29
admissions, they would be limited to consumers who shop in
independent bicycle dealers and specialty retail stores
carrying bicycle accessories, and would be serious bicycle
riders, as opposed to simply a member of the public at
large who would purchase a bicycle for him or herself or
for a child. Although there is no specific evidence as to
the number of people who would be in this category, the
evidence of third-party use and catalogs indicate that this
is not a de minimis number.
Finally, petitioner claims that respondent has acted
in bad faith in adopting its mark, intending to cause
confusion, and therefore its mark should be deemed likely
to do so. Petitioner bases this claim on the fact that one
of respondent’s officers, Brian Orloff, had worked at a
company called Downeast Bicycle Specialists between 1999
and 2002, and therefore would have known of petitioner at
that time. We are not persuaded that petitioner has shown
bad faith adoption by respondent. There is no actual
evidence, only speculation, that Mr. Orloff knew of
petitioner’s mark and product at the time he worked at
Downeast, but more importantly, there is no evidence that,
even if Mr. Orloff had known of it at that time, that he
would have been aware of petitioner’s mark and activities
at the time respondent adopted the mark almost ten years
Cancellation No. 92054984
30
later. Petitioner has not provided any evidence about its
sales, such that we could conclude that its rim tape was
widely known throughout the bicycle industry at the time
respondent chose its mark. And petitioner has acknowledged
that it has not done any advertising since the 1990s. In
any event, mere knowledge of another’s mark is not enough
to infer bad faith. Action Temporary Services, Inc. v.
Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310
(Fed. Cir. 1989) (“mere knowledge of the existence of the
prior user should not, by itself, constitute bad faith”);
Big Blue Products Inc. v. International Business Machines
Corp., 19 USPQ2d 1072, 1075-76 (TTAB 1991). On this
record, we cannot conclude that respondent adopted its mark
with an intent to trade on petitioner’s mark and goodwill.
In considering all the relevant du Pont factors, we
find that the identity of the marks weighs heavily in favor
of petitioner, and requires only a viable relationship
between the goods. The channels of trade are presumed to
be the same, since respondent’s goods can be sold in the
same bicycle specialty stores in which petitioner’s goods
are sold, and the goods in fact are sold through the same
catalogs. Although the purchasers are careful and
sophisticated, because the marks are identical even such
purchasers can be confused, since there is no additional
Cancellation No. 92054984
31
element in respondent’s mark to which they can look to
distinguish the marks. Further, on this record, we find
that petitioner’s mark is sufficiently strong that it is
entitled to protection against respondent’s identical mark.
In view thereof, we find that petitioner has met its
burden of proving likelihood of confusion, and that the
petition to cancel must be granted on this ground.
Dilution and Fraud
Because the petition to cancel is granted on the
ground of likelihood of confusion, there is no need for us
to address the additional grounds for cancellation.
However, in order to render a complete opinion, we will
address them briefly. We dismiss the petition on these
grounds.
With respect to the ground of dilution, Section 43 of
the Trademark Act requires that, to be afforded relief
under this section, the owner must have a famous mark. See
Section 43(c)(1). Further, “a mark is famous if it is
widely recognized by the general consuming public of the
United States as a designation of source of the goods or
services of the mark’s owner.” Section 43(c)(2); Coach
Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1724 (Fed. Cir. 2012). Petitioner does not
even argue that its mark is famous among the general
Cancellation No. 92054984
32
consuming public, and has certainly not submitted evidence,
such as sales figures, advertising figures, or even
substantial advertising, that would allow us to make a
finding of fame.
As for the ground of fraud, petitioner bases this
claim on the fact that, in the underlying application to
register its mark, respondent’s representative signed a
declaration stating that to the best of his/her knowledge
no other person, firm, corporation or association had the
right to use the mark in commerce, when respondent knew of
petitioner’s use of the mark ROX as of April 1, 2009. That
April 1, 2009 date is the date of petitioner’s letter to
respondent, demanding that respondent cease using the mark
ROX.
In Alcatraz Media Inc. v. Chesapeake Marine Tours
Inc., 107 USPQ2d 1750, 1767 (TTAB 2013), the Board
summarized the principles for proving a fraud claim as
follows:
Fraud in procuring a trademark registration or
renewal occurs only when an applicant or
registrant knowingly makes a false, material
representation with the intent to deceive the
PTO. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
1938 1941 (Fed. Cir. 2009) (“Bose”). A party
seeking cancellation of a trademark registration
for fraudulent procurement bears a heavy burden
of proof. Id., citing W.D. Byron & Sons, Inc. v.
Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ
749, 750 (CCPA 1967). Indeed, “the very nature
Cancellation No. 92054984
33
of the charge of fraud requires that it be proven
‘to the hilt’ with clear and convincing evidence.
There is no room for speculation, inference or
surmise and, obviously, any doubt must be
resolved against the charging party.” Id., at
1939, quoting Smith Int'l, Inc. v. Olin Corp.,
209 USPQ 1033, 1044 (TTAB 1981).

There are many reasons why petitioner’s claim of fraud must
fail, not the least of which is that it has not proven that
respondent had an intent to deceive the PTO. That is,
respondent could have had a good faith belief that the
differences in the parties’ goods were sufficient to avoid
a likelihood of confusion, such that it could truthfully
state in the application declaration that “no other person,
firm, corporation, or association has the right to use the
mark in commerce, either in identical form thereof or in
such near resemblance thereto as to be likely, when used on
or in connection with the goods/services of such person to
cause confusion, or to cause mistake, or to deceive.” The
fact that respondent was in receipt of a letter from
petitioner, in which petitioner claimed rights in the mark
ROX, without more, is not sufficient for petitioner to meet
the stringent requirement that fraud be proven to the hilt
with clear and convincing evidence, including of intent to
deceive the Office.12

12 Petitioner also asserts in its brief that respondent is using
the mark on ancillary products, but did not include these goods
Cancellation No. 92054984
34
Decision
The petition to cancel is granted only on the ground
of likelihood of confusion. It is dismissed on the grounds
of dilution and fraud. Registration No. 3742187 will be
cancelled in due course.

in its underlying application, and therefore “this is contrary to
the stated use of the mark ROX in their registration.” Brief, p.
39. This claim was never pleaded in the petition to cancel
(fraud must be pleaded with particularity), nor was it tried by
consent. In any event, there is no requirement that a trademark
owner include in its application every item on which it uses its
mark.