Sara Lee Global Finance, LLCv.Champion Performance Products, Inc.

Trademark Trial and Appeal Board

Mar 23, 2007

No. 91156552 (T.T.A.B. Mar. 23, 2007)

Hearing: Mailed: March 23, 2007
October 18, 2006 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Sara Lee Global Finance, LLC
v.
Champion Performance Products, Inc.
_____

Opposition No. 91156552
to application Serial No. 76336173
filed on November 9, 2001
_____

Joshua S. Bish of Reed Smith, LLP for Sara Lee Global
Finance, LLC.

Perry S. Clegg of Bateman IP Law Group for Champion
Performance Products, Inc.
______

Before Hairston, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Sara Lee Global Finance, LLC (“Opposer”) has opposed
the application of Champion Performance Products, Inc.
(“Applicant”) to register the mark CHAMPION NUTRITION (in
standard character form) for “dietary and nutritional
supplements.”1

1 Application Serial No. 76336173, filed November 9, 2001,
alleging first use dates of September 1987. The word NUTRITION
has been disclaimed apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91156552
2
As grounds for its opposition, opposer asserts that it
and its predecessors “have been engaged in the manufacture,
distribution and sale of men’s, women’s, and children’s
athletic apparel and other related products specifically
directed to the field of athletics and sports;” that since
prior to applicant’s filing date, opposer has used the
trademark CHAMPION and other trademarks that include the
term CHAMPION in connection with such products;
and that applicant’s mark CHAMPION NUTRITION, as used in
connection with applicant’s identified goods, so resembles
opposer’s CHAMPION trademarks as to be likely to cause
confusion.2 Opposer pleaded ownership of a number of
registrations for the mark CHAMPION for various athletic
apparel and related items.
Applicant, in its answer to the notice of opposition,
has denied the salient allegations therein.3
At the outset, we note that applicant has filed a
motion to strike the rebuttal testimony of opposer’s witness

2 Opposer also alleged that registration of applicant’s CHAMPION
NUTRITION mark would cause dilution of opposer’s CHAMPION marks.
Apart from the fact that opposer did not pursue a claim of
dilution, the pleading is insufficient because it does not
include an allegation that opposer’s CHAMPION marks became famous
before the filing date of applicant’s involved application.
Thus, we have given no further consideration to opposer’s
allegation in this regard.
3 Applicant also set forth certain affirmative defenses in its
answer that were neither tried nor argued and are therefore
deemed waived.
Opposition No. 91156552
3
Amber Lewis, as improper rebuttal. We agree with applicant
that this testimony constitutes improper rebuttal. During a
plaintiff’s rebuttal testimony period, the plaintiff may
introduce evidence and testimony to deny, explain, or
discredit facts and witnesses adduced by the defendant.
Evidence is improper rebuttal, however, where it does not
serve to do the above, but rather where it relates to a
witness and facts that might appropriately have been
introduced during the party’s case-in-chief. Western
Leather Goods Co. v. Blue Bell, Inc., 178 USPQ 382 (TTAB
1973). In this case, the Lewis testimony relates to
opposer’s pleaded registrations and opposer’s marketing
activities. As such, it is properly part of opposer’s case-
in-chief. Thus, applicant’s motion to strike is granted,
and we have not considered the Lewis testimony and related
exhibits in reaching our decision herein.
The record, therefore, consists of the pleadings; the
file of the involved application; the testimony, with
exhibits, of applicant’s president and CEO, Michael Zumpano;
and applicant’s notice of reliance on third-party
registrations for marks that include the term CHAMPION.
Briefs have been filed; only applicant’s attorney
appeared at the oral hearing.
Opposition No. 91156552
4
Priority
As noted above, opposer did not properly introduce
testimony or offer any other evidence. In particular,
opposer did not submit evidence which would establish its
priority. However, during the testimony deposition of
applicant’s witness, Mr. Zumpano, applicant introduced
printouts of several of opposer’s pleaded registrations
taken from the USPTO’s TESS database along with current
status and title information taken from the USPTO’s TARR
system. The printouts were introduced by applicant to show
that opposer’s registrations do not include applicant’s
kinds of goods, i.e., dietary and nutritional supplements.
However, where a party makes evidence of record, the adverse
party is entitled to rely upon such evidence for any
purpose. A review of the printouts shows that two of the
registrations are subsisting and currently owned by
opposer.4 They are Registration No. 1860938 issued November
1, 1994 for the mark CHAMPION, as shown below,

for “travel bags, athletic bags, and backpacks” in class 18;

4 The printouts show that the other registrations are owned by a
party other than opposer.
Opposition No. 91156552
5
“shirts, vests, shorts, windwear tops and bottoms, athletic
uniforms, replica athletic jerseys, singlets and tights,
belts, headbands, and wristbands” in class 25, (renewed);
and Registration No. 2125303 issued December 30, 1997 for
the mark CHAMPION in standard character form for “back
packs, fanny packs, gym bags, tote bags” (Section 8 & 15
affidavit filed and accepted, respectively). Thus, for
purposes of our discussion of likelihood of confusion
herein, we presume that opposer has priority as to the marks
CHAMPION in standard character form and CHAMPION and design,
respectively, for the clothing, bags and backpacks
identified in the two registrations. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
The Parties
The only information with respect to opposer is that,
as noted above, it is the owner of two registrations for the
mark CHAMPION and that such registrations are subsisting.
As to applicant, the record shows that Michael Zumpano
formed applicant as Champion Foods in 1983 to develop and
sell dietary and nutritional supplements. In 1988 Champion
Foods incorporated and changed its name to Champion
Performance Products, Inc. Since 1987 opposer has
continuously sold dietary and nutritional supplements in the
Opposition No. 91156552
6
form of bars, capsules, and drinks under the CHAMPION
NUTRITION mark.
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 any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We note that opposer, at p. 13 of its brief, states
that applicant cannot “dispute the fame and remarkable
success” of opposer’s CHAMPION marks throughout the athletic
industry. The fame of a plaintiff’s mark, when fame is
shown in the record, is an important factor in the
likelihood of confusion determination. In this case,
however, opposer failed to properly make any evidence of
record with respect to the fame of its CHAMPION marks. In
addition, we note that opposer also argues in its brief that
Opposition No. 91156552
7
there has been one incident of actual confusion. However,
the testimony concerning this alleged incident of actual
confusion was contained in the Lewis deposition, which has
been stricken from the record. Suffice it to say that
opposer has not established the fame of its CHAMPION marks
or actual confusion.
Turning then to the marks, we find that when considered
in their entireties, applicant’s mark CHAMPION NUTRITION is
highly similar to opposer’s CHAMPION marks in standard
character form and with design. As the Court of Appeals for
the Federal Circuit has stated, while marks must be
considered in their entireties, including any descriptive
matter, 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.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Disclaimed or descriptive terms, though they must be
considered when comparing marks, are typically less
significant. Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Moreover, when
a mark consists of a word portion and a design portion, the
word portion is more likely to be impressed upon a
Opposition No. 91156552
8
purchaser’s memory as it is used in calling for the goods.
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
In this case, when the marks are considered in their
entireties, it is clear that they are highly similar in
sound, appearance, connotation and commercial impression.
The dominant and distinguishing portion of applicant’s
CHAMPION NUTRITION mark is the word CHAMPION due to the
descriptiveness, as evidenced by the disclaimer, of the word
NUTRITION. Moreover, it is well settled that a side-by-side
comparison is not the proper test to be used in determining
the issue of likelihood of confusion since such a comparison
is not the ordinary way that a prospective customer would be
exposed to the marks. Instead, it is the similarity of the
general overall commercial impression engendered by the
marks which must determine, due to the fallibility of memory
and the consequent lack of perfect recall, whether confusion
is likely. The proper emphasis is thus on the recollection
of the average consumer, who normally retains a general
rather than a specific impression of marks. See, e.g.,
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d
586, 177 USPQ 573 (CCPA 1973); Envirotech Corp. v. Solaron
Corp., 211 USPQ 724 (TTAB 1981); and Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). We find that the
descriptive word NUTRITION, while not present in opposer’s
marks, is insufficient to distinguish the parties’ marks
Opposition No. 91156552
9
because the shared term CHAMPION renders the marks highly
similar in sound, appearance and connotation. Overall,
opposer’s CHAMPION marks and applicant’s CHAMPION NUTRITION
mark project substantially similar commercial impressions.
Applicant has asserted that opposer’s CHAMPION marks
are weak and therefore entitled to a limited scope of
protection. In support of its position, applicant submitted
copies of over 100 third-party registrations of CHAMPION
marks. Third-party registrations are not evidence of use of
the marks shown therein, nor are they proof that consumers
are familiar with the marks. Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993). They may, however, be relied on to show that a word
common to each mark has a readily understood and well-known
meaning and that it has been adopted by third parties to
express that meaning. Ritz Hotel Ltd. v. Ritz Closet Seat
Corp., 17 USPQ2d 1467 (TTAB 1990). In this case, the third-
party registrations show that CHAMPION connotes “[o]ne that
is clearly superior or has the attitudes of a winner;”
“superior to all others.”5 Thus, CHAMPION is suggestive in
a laudatory sense. Nonetheless, it is still the case that
the opposer’s CHAMPION marks and applicant’s CHAMPION

5 The American Heritage Dictionary of the English Language (4th
ed. 2000). The Board may take judicial notice of dictionary
definitions.
Opposition No. 91156552
10
NUTRITION mark are substantially similar in connotation and
general commercial impression.
Turning then to the parties’ respective goods, opposer
maintains that its athletic clothing, in particular, and
applicant’s dietary and nutritional supplements are related
because these goods are used by persons who are engaged in
athletic activity. Further, opposer argues that dietary and
nutritional supplements are within the natural expansion of
its athletic clothing business such that prospective
purchasers would be likely to assume that CHAMPION NUTRITION
dietary and nutritional supplements emanate from opposer.
In considering the goods, we begin with the premise
that they need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather, it
is enough that the goods be related in some manner or that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances which could give rise, because of the
marks used thereon, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of the
respective goods. In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991), and cases cited therein. We find opposer’s
proofs to be entirely lacking in this regard.
Opposition No. 91156552
11
Contrary to opposer’s assertion, the fact that the
parties’ goods are used by persons engaged in the same
activities does not establish that the goods of the parties
are sufficiently related that the use of these marks in
connection with them would be likely to cause confusion.
This record is devoid of any probative evidence to show
reasons why consumers would be likely to assume that
clothing (including athletic clothing), bags, and backpacks,
on the one hand, and dietary and nutritional supplements, on
the other hand, emanate from the same source. Further, with
respect to opposer’s “natural expansion” argument, it has
offered no evidentiary support for this argument. In
particular, there is no evidence of record with respect to
the factors considered by the Board when determining whether
an expansion is or would be natural. See Mason Engineering
and Design Corp. v. Mateson Chemical Corp., 225 USPQ 956
(TTAB 1985). In the absence of such evidence, opposer’s
argument in this respect also falls short.
Rather, when we compare opposer’s clothing, bags and
backpacks, on the one hand, and applicant’s dietary and
nutritional supplements, on the other hand, we find that the
goods are sufficiently distinguishable. The nature of the
respective goods is quite different; opposer’s goods are
worn or carried, whereas applicant’s goods are consumed.
Opposition No. 91156552
12
We find that notwithstanding the similarity of the
marks, opposer has simply failed to establish that the
parties’ respective goods are commercially related such that
the uses of these marks in connection with the goods would
be likely to cause confusion.
Decision: The opposition is dismissed.