Shock Doctor, Inc.v.Bite Tech, Inc.

Trademark Trial and Appeal Board

Apr 9, 2013

No. 91195412 (T.T.A.B. Apr. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Shock Doctor, Inc.

v.

Bite Tech, Inc.
_____

Opposition No. 91195412
to Application Serial No. 77666219
_____

James R. Steffen of Faegre Baker Daniels LLP for Shock Doctor, Inc.

Jeffrey C. Brown of Sapientia Law Group, PLLC for Bite Tech, Inc.
______

Before Quinn, Taylor and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant Bite Tech, Inc. (“Bite Tech” or “applicant”) seeks registration of the
mark PERFORMANCE MOUTHWEAR, in standard characters, for “Mouth guards
for athletic use.”1 Applicant has disclaimed the term “mouthwear.”

1 Application Serial No. 77666219, filed February 9, 2009, alleging a bona fide intent
to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91195412

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In its notice of opposition, opposer Shock Doctor, Inc. (“Shock Doctor” or
“opposer”) alleges that it manufactures and sells “mouthguards and mouthwear for
athletic use,” and that it “uses ‘performance’ descriptively in connection with the
sale and advertising of mouthguards and/or mouthwear.” Notice of Opposition ¶¶ 1,
2. As grounds for opposition, opposer alleges that “performance mouthwear” is “a
generic term for performance mouthpieces including mouth guards and mouth
wear,” and that “performance mouthwear” is merely descriptive of the goods
identified in applicant’s involved application. Id. ¶¶ 7-10. In its answer, applicant
denies the salient allegations in the notice of opposition.
The Record and Applicant’s Evidentiary Objection
The evidence of record consists of the pleadings, the file of the opposed
application and the following:
• opposer’s notices of reliance (“NOR”) Nos. 1-6, filed
January 23 and 24, 2012 (TTABVue Docket #’s 22-27),
which include: newspaper and journal articles which
reference “performance mouthpieces,” “performance
mouthwear” and/or use the word “performance” in
discussing mouthpieces;2 applicant’s responses to certain
of opposer’s interrogatories (“Applicant’s Int. Resp.”) and
requests for admission (“Applicant’s RFA Resp.”); file
histories of pending applications by opposer and third-
parties; and printouts from third-party websites which
show use of “performance,” “mouthwear” and/or
“performance mouthwear;”

• applicant’s NOR Nos. 1-2, filed March 26, 2012
(TTABVue Docket #’s 28-29), which include opposer’s

2 Opposer introduced articles from foreign publications. However, in the absence of
evidence that consumers in the United States would encounter these articles, or that the
designations used in them are also used or understood by consumers in the United States,
the evidence is not probative and has therefore not been considered.
Opposition No. 91195412

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responses to certain of applicant’s interrogatories
(“Opposer’s Int. Resp.”) and requests for admission
(“Opposer’s RFA Resp.”); and applicant’s responses to
certain of opposer’s interrogatories and requests for
admission not cited in opposer’s NORs pursuant to
Trademark Rule 2.120(j)(5); and

• opposer’s testimonial depositions (TTABVue Docket
#’s 31-33) of Robert Molhoek, applicant’s Executive Vice-
President, Business Development (“Molhoek Tr.”) and
Ceyhan Turkbas, opposer’s Senior Vice President of
Marketing and Product Development (“Turkbas Tr.”), and
the exhibits thereto.

Applicant objects to opposer’s evidence which postdates the filing date of the
involved application, arguing that “[e]vidence as to descriptiveness must date from
before the subject application was filed.” Applicant’s Trial Brief at 14-15. We
disagree. As opposer points out, applicant’s objection is based on its misreading of
In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982) and De
Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275 (CCPA 1961).
In fact, as made clear in In re Morton-Norwich and Remington Products Inc. v.
North American Phillips Corp., 892 F.2d 1576, 13 USPQ2d 1444 (Fed. Cir. 1990),
we may consider any otherwise-admissible evidence of descriptiveness or
genericness, whether dated before or after applicant’s filing date. In fact,
descriptiveness and genericness are determined “on the basis of the factual
situation as of the time when registration is sought,” i.e. through trial. See, e.g.,
Remington Products, 13 USPQ2d at 1449.
The Parties
Opposition No. 91195412

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Applicant Bite Tech develops mouth guards and mouthpieces for athletes. In
describing applicant’s mouth guards and mouthpieces, Mr. Molhoek testified: “A
mouth guard is designed for contact sports, for protection purposes. I think of a
mouthpiece as for noncontact sports.” Molhoek Tr. p. 30. Applicant adopted the
alleged mark PERFORMANCE MOUTHWEAR in the Spring of 2008, and at the
time, applicant was aware that in marketing its competing mouthpieces, opposer
indicated that they may improve athletic performance. Molhoek Tr. at 53.
Applicant is also aware that P3 Mouthwear Inc., Brain-Pad and Mahercor use the
term “performance” in connection with their competing mouthpieces. Molhoek Tr.
at 62-63. Mr. Molhoek does not believe that applicant is entitled to exclusive use of
“performance” alone or “mouthwear” alone in connection with mouthpieces.
Molhoek Tr. at 68-69.
Applicant has a license and distribution agreement with Under Armour,
pursuant to which applicant sells its mouthwear products and licenses the mark
PERFORMANCE MOUTHWEAR to Under Armour, which in turn “sells to retail.”
Under Armour distributes mouthpieces offered under the marks ARMOURBITE
MOUTHPIECE, ARMOURBITE MOUTHGUARD and UA MOUTHGUARD. Id. at
6-7, 50, 95, 97. According to applicant, the ARMOURBITE MOUTHPIECE,
AMOURBITE MOUTHGUARD and UA MOUTHGUARD are all “performance
mouthwear.” Id. at 36, 46. Pursuant to applicant’s agreement with Under Armour,
both “parties will collaborate in good faith to secure trademark rights in
PERFORMANCE MOUTHWEAR,” and Under Armour currently owns pending
Opposition No. 91195412

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applications to register UNDER ARMOUR PERFORMANCE MOUTHWEAR, with
MOUTHWEAR disclaimed, for “Athletic equipment, namely, mouth guards” and
“Medical device, namely, intra-oral apparatus for spacing the occlusal surfaces of
teeth.” Id. at 22, 95; Opposer’s NOR No. 3 Exs. 14, 15.3
At one time, applicant also sold and promoted EDGE mouth guards
manufactured by a third party, including the EDGE PERFORMANCE
MOUTHPIECE and the EDGE PERFORMANCE MOUTHGUARD, and used
PERFORMANCE MOUTHWEAR in connection with those products, in brochures
and on signs. Id. pp. 7-9, 17. Applicant currently sells its mouthpieces to Patterson
Dental, certain sports teams and independent retailers. Id. at 50. According to a
newspaper article, applicant “is the brainchild of Jon Kittelsen, the founder of
[opposer] ….” Thomas Lee, Minnesota Start-Up Has Got Bark in Its Bite, Star
Tribune (Minneapolis-St. Paul), Nov. 8, 2009 at D01.
According to the same article, opposer is “the world’s largest retail distributor
of mouth guards.” Id. More generally, opposer “is a protection company of which a
portion or a platform product range is our mouthguards. We also have protective
apparel – cups, jocks, chin straps – in addition to the mouthguards.” Turkbas Tr. at
6. Mr. Turkbas testified that opposer does not currently use the term “performance
mouthwear,” but anticipates the possibility of doing so in connection with a “product
that has a non-protective application.” Id. at 15-16. Opposer is in the process of
developing the technology for such a product. Id. Opposer owns pending intent-to-

3 Application Serial Nos. 77787377 and 77787148, respectively, both filed July 22,
2009 based on an intent to use the mark in commerce.
Opposition No. 91195412

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use applications for registration of S SHOCK DOCTOR PERFORMANCE
MOUTHGUARDS & Design, with PERFORMANCE MOUTHGUARDS disclaimed,
and S SHOCK DOCTOR PERFORMANCE MOUTHWEAR & Design, with
PERFORMANCE MOUTHWEAR disclaimed, both for “Mouth guards for athletic
use.”4 Both applications are currently suspended pending the outcome of
applicant’s involved application. Opposer’s NOR Nos. 3 and 6, Exs. 13 and 38.
Evidence on Genericness and Descriptiveness
Opposer relies upon a number of newspaper and journal articles regarding
applicant’s product or competing products, including the following:
Relevant Quotation(s) Citation (from Opposer’s
NOR No. 1)
“Athletes favor new high-end mouth guards,
which many say improve their performance
through better breathing”

“Mr. Gillis is among a small but growing number
of athletes wearing what manufacturers like to
call ‘performance mouthpieces’ while cycling,
running, or weight training. One of the newest
tools in a performance-enhancement arsenal,
these mouthpieces are light, flexible pieces of
molded plastic that fit over the teeth …”

“Unlike regular mouth guards, which are
available off the shelf and at modest prices,
performance mouthpieces cost hundreds or even
thousands of dollars and must be custom-fitted by
a dentist.”

“Two main brands are on the market – Makkar
and Under Armour – and each makes the claim
that it can increase an athlete’s strength, reduce
stress and improve overall performance.”
Sarah Bowen Shea, A Device to
De-Stress your Workout, N.Y.
Times, Dec. 17, 2009, at E16

4 Application Serial Nos. 85069999 and 85069373, respectively.
Opposition No. 91195412

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“Bite Tech says it has mouth guards that can
improve strength and reduce fatigue. And
athletes are buying into it.”

“Developed by Minneapolis-based Bite Tech Inc.
and being sold under the ubiquitous Under
Armour brand, the ‘performance mouthwear’ is
catching on quickly with NFL and NHL teams.”
Thomas Lee, Minnesota Start-
Up Has Got Bark in Its Bite,
Star Tribune (Minneapolis-St.
Paul), Nov. 8, 2009 at D01
“As a latest must-have sports accessory,
‘performance mouthpieces’ are certainly odd. But
pro athletes and average exercisers by the
thousands now slide a custom mouthpiece over
their teeth before heading out to compete or play.
Touted benefits include less teeth clenching,
improved flexibility and better breathing.”
Stephen Regenold, Fitness on
the Fringe, Star Tribune
(Minneapolis-St. Paul), March
1, 2010 at E01
“This month I am talking with Dr. Paul Belvedere
about a new service for patients: performance-
enhancing mouthpieces by Under Armour.”

“Jeff, I sincerely want to thank Dental
Economics® for its interest in performance-
enhancing mouthwear.”
Jeffrey B. Dalin, Interview with
Dr. Paul Belvedere on
performance mouthpieces,5
Dental Economics, Vol. 100,
Issue 4, April 1, 2010
“With several peer-reviewed studies being
conducted and published, claims of improved
bodily performance are being validated in regard
to performance mouthwear. Under Armour
Performance Mouthwear, a line of performance
enhancing mouthpieces, is one example.”
Susan Corpuz, Give Your
Practice an Edge, Dental
Economics, Vol. 100, Issue 9,
Sept. 1, 2010
“It’s the look he’s gotten for the past month, and
it began when he started hawking Under
Armour’s new performance-enhancing
mouthpiece. A mouthpiece? That enhances
athletic performance?”
Joe Medley, Athletes Finding
New Mouthwear Can Actually
Enhance Performance, The
Anniston Star, Oct. 8, 2009

Opposer also relies on applicant’s responses to opposer’s written discovery
requests and Mr. Molhoek’s testimony, as follows:
Applicant’s Testimony/Statement Source (All in Opposer’s
NOR No. 2)

5 In the title of the article, “performance mouthpieces” appears in entirely lower-cased
letters.
Opposition No. 91195412

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“[applicant’s involved products] are designed to
provide performance benefits for every athlete in
training, competition and rehabilitation”

Applicant’s Int. Resp. No. 4
“Applicant uses the Subject Mark in connection
with mouth pieces for athletic use, including oral
appliances for use in non-contact sports and
mouthguards for use in contact sports”
Applicant’s Int. Resp. No. 11
“… a mouthpiece is generally defined as a part of
any device that functions in or near the mouth. A
mouthguard, on the other hand, is a protective
device for the mouth that covers the teeth and
gums to prevent and reduce injury to the teeth,
arches, lips and gums.”
Applicant’s Int. Resp. No. 11
“… MOUTHWEAR is a term coined by the
Applicant to be used for the sale of its
mouthpieces for athletic use, including oral
appliances for use in non-contact sports and
mouthguards for use in contact sports.”
Applicant’s Int. Resp. No. 12
Admission that Under Armour “describes
products bearing the Subject Mark as providing
‘jaw dropping performance’”
Applicant’s RFA Resp. No. 13
Admission that Under Armour “claims in
advertising or promotional material that goods
bearing the Subject Mark are ‘a category of
performance gear.”
Applicant’s RFA Resp. No. 19
Admission that Under Armour “claims in
advertising or promotional materials that goods
bearing the subject mark ‘enhance performance.’”
Applicant’s RFA Resp. No. 23
Admission that Under Armour “claims in
advertising or promotional materials that ‘The
UA Performance Mouthguard offers superior
protection in addition to performance benefits.’”
Applicant’s RFA Resp. No. 27
Admission that Under Armour “refers, in
advertising or promotional materials, to goods
bearing the Subject Mark as ‘Under Armour
Performance Mouthpiece.’”
Applicant’s RFA Resp. No. 29
Admission that Under Armour “refers, in
advertising or promotional materials, to goods
bearing the Subject Mark as ‘Under Armour
Performance Mouthguard.’”
Applicant’s RFA Resp. No. 31
Admission that Under Armour “refers, in
advertising or promotional materials, to the line
of goods bearing the Subject Mark as ‘UA
Applicant’s RFA Resp. No. 33
Opposition No. 91195412

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Mouthwear Collection.’”
Admission that “Under Armour has designated
and offered for sale an item as ‘UA Performance
Mouthpiece.’”
Applicant’s RFA Resp. No. 36
Admission that “Under Armour has designated
and offered for sale an item as ‘UA Performance
Mouthguard.’”
Applicant’s RFA Resp. No. 38
Admission that “An authorized provider of goods
bearing the Subject Mark has described goods
bearing the Subject Mark, in advertising or
promotional materials, as ‘performance
enhancing mouthwear.’”
Applicant’s RFA Resp. No. 43
when asked what the word “mouthwear” means
to him, Mr. Molhoek testified “if you were to just
use the term generically, I would think about it
as a collection of products that you put in your
mouth,” including mouth guards and mouthpieces
Molhoek Tr. at 27
when asked why someone would wear a
mouthpiece for a noncontact sport, Mr. Molhoek
testified to “improve an athlete’s performance”
Molhoek Tr. at 30
Mr. Molhoek testified that “when we say Under
Armour Performance Mouthwear products, the
ArmourBite Mouthpiece is one of the products” as
is the “UA mouth guard” and the ArmourBite
Mouthguard
Molhoek Tr. at 36-37, 46
Mr. Molhoek was aware, at the time applicant
adopted PERFORMANCE MOUTHWEAR in
2008, that another mouth guard company used
the word “performance” on its packaging
Molhoek Tr. at 54
Mr. Molhoek testified that “there’s a company
called P3 that’s actually trying to steal our term
Performance Mouthwear, that we’re ready to take
action against”
Molhoek Tr. at 62, 185
Mr. Molhoek testified that “performance” is an
“outcome” of applicant’s products, that the
products help users become better athletes and
that applicant markets improved “performance”
as the primary benefit of its non-mouth guard
products, i.e. mouthpieces which do not protect
the mouth
Molhoek Tr. at 71-76
Applicant does not have control over Under
Armour’s advertising and promotion of Under
Armour’s PERFORMANCE MOUTHWEAR
products
Molhoek Tr. at 73-74
Opposition No. 91195412

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Opposer further relies on applicant’s and Under Armour’s packaging and
promotional materials for PERFORMANCE MOUTHWEAR products, including the
following:
Packaging/Communications/Promotional
Material
Citation
Poster for Under Armour Performance
Mouthwear with headline “Jaw-Dropping
Performance,” which claims that the product
“delivers a host of physical benefits that help
athletes train harder and compete at a higher
level than before,” and claims that
ARMOURBITE is a “performance mouthpiece for
non-contact sports”
Molhoek Tr. Ex. 3
Packaging for ARMOURBITE MOUTHPIECE
which proclaims “Be Stronger, Faster & Better”
and touts “increased strength,” “increased
endurance,” “improved reaction time” and “impact
protection”
Molhoek Tr. Ex. 4
Pamphlet stating:

“No one ever told you your jaw could help you
perform better. That’s because no one knew.
Hundreds of years ago, a few people were on to
something: Ancient Greek athletes who bit down
on leather straps for an edge during competition
… Under Armour Performance Mouthwear has
been engineered to unlock power and abilities
that are inside you but blocked by one of the
human body’s instinctive reflex systems – teeth
clenching.”

“Mouthguards provide protection. UA
Performance Mouthwear, which includes
mouthpieces and mouthguards powered by
ArmourBite™ Technology, does more: It
enhances performance.”
Molhoek Tr. Ex. 7
Brochure and printout from applicant’s website
stating:

Molhoek Tr. Exs. 8, 28
Opposition No. 91195412

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“Since Under Armour Performance Mouthwear™
is an entirely new category of performance
mouthpieces and mouthguards, you will likely
encounter many questions from athletes about
this exciting new line of products.”

“Under Armour Performance Mouthwear™ is a
completely new category of performance gear
designed for all athletes looking to get better in
their chosen sport”
Brochure for applicant’s EDGE products which
proclaims that product increases strength and
endurance, speeds reaction times and “enhances
performance”
Molhoek Tr. Ex. 12
Printout from applicant’s website which claims
that Under Armour’s PERFORMANCE
MOUTHWEAR “makes you stronger, faster and
better,” increases strength and endurance, speeds
up reaction time and reduces athletic stress and
impact
Molhoek Tr. Ex. 15
Care instructions for Under Armour’s product
which state “Keep your mouthwear clean by
washing it …,” “Soak your mouthwear in a
disinfecting solution …” and “Keep your
mouthwear in the storage case when not in use.”
Molhoek Tr. Ex. 23
E-mail from Mr. Molhoek to Gene Goldberg dated
January 22, 2010 stating “The NFL said the Edge
could become the official performance mouthwear
of the NFL …”
Molhoek Tr. at 151-157 and Ex.
24
Printout from applicant’s website which states
that applicant hired a National Hockey League
player “to introduce its innovative new line of
performance mouthwear to the Canadian hockey
community,” and that “Research studies have
shown that the technology in [applicant’s]
mouthwear can help athletes improve strength,
endurance and reaction time, reduce athletic
stress and reduce impact from blows to the jaw.”
Molhoek Tr. Ex. 27
“frequently asked questions” from brochure and
printout from applicant’s website including the
following question and answer: “How does
Performance Mouthwear [or “UA Performance
Mouthwear”] differ from mouthguards?
Mouthguards provide protection, Performance
Molhoek Tr. Exs. 28, 29
Opposition No. 91195412

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Mouthwear [or “UA Performance Mouthwear],
which includes mouthpieces and mouthguards
with patented technology from Bite Tech [or
“powered by ArmourBite™ Technology], does
more: It enhances performance …”

Finally, opposer relies on third-parties’ and its own use of the terms
“performance” and/or “mouthwear,” including the following:
Third-Party Use Citation
Opposer’s product catalogue which states
“Performance mouthguards, mouthpieces and
mouthwear that advertise increased strength and
performance are typically called MORA
(Mandibular Oral Repositioning Appliance)
mouthguards.”
Turkbas Tr. Ex. 34
“westlakeddentalarts.com” webpage entitled
“Performance Mouthguards” which asks “But
what if a mouth guard could also enhance
performance?”
Opposer’s NOR No. 4 Ex. 16
“agilityguard.com” website which states “The
potential to improve athletic performance by
using a properly designed mouthguard is not a
new idea. Dentists have, for some 40 years,
noted improvements in athletic performance
when athletes used a properly designed
mouthguard” (emphasis in original). The
webpage goes on to state: “Now there’s
AgilityGuard: Performance Protection”
Opposer’s NOR No. 4 Ex. 17
“px3mouthwear.com” website which states:

“With our Pro Series Mouthwear, a Certified PX3
Doctor will provide a complimentary assessment
…”

“For every sport and any level of competition,
PX3 Custom Mouthwear™ improves your
performance and protects you in ways you have
never imagined.”

“No matter what your sport, level, gender or age,
Opposer’s NOR No. 4 Exs. 19-
22, 31
Opposition No. 91195412

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PX3 Custom Mouthwear is designed to help you
train, play and live at a level greater than you
ever thought possible.”
“voxxsports.com” website which states “We have
studied over 45 years research and developed a
performance mouth guard to address what
scientists already know … You get increased
performance ….”

“We don’t make ‘mouthguards.’ We make
‘performance mouthguards.’”
Opposer’s NOR No. 4 Exs. 23-25
“dentalblogs.com” article entitled “Athletic
Performance Mouthguards: Hype or Fact?” which
begins “Performance-enhancing athletic
mouthguards, like the popular Pure Power
Mouthguard and Under Armour Performance
Mouthwear, seem to be a miracle of modern
medicine.”
Opposer’s NOR No. 4 Ex. 26
“drjoshi.com” website presenting the following
questions and answers about Under Armour
Performance Mouthwear:

“What is Under Armour Performance
Mouthwear?
Performance Mouthwear is a completely new
category of performance gear designed for all
athletes looking to get better in their chosen
sport.

…

Who should use Performance Mouthwear?
Hundreds of professional athletes are currently
relying on the superior performance and
protection benefits of Performance Mouthwear.
But it isn’t just for pros. Performance Mouthwear
is for all athletes who want to excel in their sport
or activity.”
Opposer’s NOR No. 4 Ex. 28
“sweatscience.com” website article entitled
“Jockology: good (and bad) research into
performance mouthpieces,” in response to which
Shaan Sharma stated “As a longtime employee of
[applicant], I’ve seen the evolution of the science
behind, and the new product category called,
Opposer’s NOR No. 4 Ex. 29
Opposition No. 91195412

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performance mouthwear … We’ve been
developing and testing performance enhancing
oral appliances since 1995 ….”
“woodcreekdental.com” website article entitled
“Performance-Enhancing Mouthwear from Under
Armour” which states that the product is
“designed to enhance athletic performance”
Opposer’s NOR No. 4 Ex. 30
“experiencelifemag.com” website stating “Athletes
will do almost anything to get an edge, and lately,
performance mouthguards from companies such
as Makkar and UnderArmour have become
become (sic) a topic of conversation around the
Gatorade cooler.”
Opposer’s NOR No. 4 Ex. 32
“jillwillrun.com” website article entitled
“Performance Mouthwear, huh?” which references
both Under Armour’s and Makkar’s products
Opposer’s NOR No. 4 Ex. 34
“vikings.com” website article entitled
“Performance Mouthwear is Latest Gear for
Vikings” which states “… last fall [applicant]
partnered with Under Armour to introduce UA
Performance Mouthwear with Armour Bite, a
custom-fit line of performance mouthwear for
athletes in any sport” and “The company has
developed innovative technologies to create
performance mouthwear that allow athletes to
achieve their true potential and provide enhanced
protection for those athletes whose sport
demands it.”
Opposer’s NOR No. 4 Ex. 36
a P3 Mouthwear advertisement which states “P3
Mouthwear re-aligns your jaw to naturally
improve your body’s entire postural alignment
resulting in better balance and stability …;”
Opposer’s NOR No. 3
Printout from “p3mouthwear.com” website with
heading “The New Generation of
PERFORMANCE MOUTHWEAR” and promoting
P3 Mouthwear
Molhoek Tr. Ex. 33

Standing
Opposer has established that it produces mouthguards, and intends to
produce mouthpieces with “non-protective application,” and therefore that it and
Opposition No. 91195412

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applicant are competitors. Turkbas Tr. at 6, 15-16. This establishes opposer’s
standing. Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301,
1302 (Fed. Cir. 1987); Kistner Concrete Products, Inc. v. Contech Arch Technologies,
Inc., 97 USPQ2d 1912, 1918 (TTAB 2011); Stuart Spector Designs, Ltd. V. Fender
Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009); Saint-Gobain
Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007); Plyboo America Inc. v. Smith
& Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999).
Furthermore, opposer’s application for registration of S SHOCK DOCTOR
PERFORMANCE MOUTHGUARDS & Design has been suspended, with the
examining attorney stating that “if and when” applicant’s involved application
registers, it may be cited against opposer’s application under Section 2(d) of the Act.
Opposer’s NOR No. 6 Ex. 38. This too establishes opposer’s standing to oppose
applicant’s involved application. Tri-Star Marketing, LLC v. Nino Franco Spumanti
S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (“petitioner has standing to bring the
petition for cancellation based on the fact that its application to register [its mark]
was refused registration by the office under Section 2(d) based on a likelihood of
confusion with respondent’s previously registered mark”).
Applicant’s argument that opposer is attempting to “manufacture” standing
and that there are no “objective facts” to support opposer’s standing is not well-
taken. In fact, opposer may in the future wish to use “performance mouthwear” in
connection with its products having “a non-protective application.” Turkbas Tr. at
15-16. This also establishes opposer’s standing. Nature’s Way Products Inc. v.
Opposition No. 91195412

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Nature’s Herbs Inc., 9 USPQ2d 2077, 2080 (TTAB 1989) (standing established
where petitioner “is in a position to use the designation sought to be cancelled in a
descriptive manner”). And, applicant’s contention notwithstanding, there is no
requirement for an opposer to have already used an allegedly descriptive or generic
term in order to establish its standing; prospective use is sufficient. Cummins
Engine Company, Inc. v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559,
561 (CCPA 1966); Plyboo, 51 USPQ2d at 1634 n. 5.
Genericness
“Generic terms are common names that the relevant purchasing public
understands primarily as describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular source of the goods or services.”
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2011) (citations omitted). The ultimate test for determining whether a term is
generic is the primary significance of the term to the relevant public. See Section
14(3) of the Act. See also, In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991). Opposer bears the burden of proving, by a
preponderance of the evidence, that applicant’s mark is generic. Magic Wand, 940
F.2d 638, 19 USPQ2d at 1554; Tea Board of India v. Republic of Tea, Inc., 80
USPQ2d 1881, 1887 (TTAB 2006).
We must make a two-step inquiry to determine whether PERFORMANCE
MOUTHWEAR is generic: First, what is the genus (category or class) of goods or
Opposition No. 91195412

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services at issue? Second, is the term sought to be registered understood by the
relevant public primarily to refer to that genus of goods or services? H. Marvin
Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986).
Here, the parties disagree about the appropriate genus. Applicant argues,
based on Magic Wand, that “[a] proper genericness inquiry focuses on the
description of goods or services set forth in the application,” in this case “mouth
guards for athletic use.” Applicant’s Trial Brief at 10. Opposer argues, based on In
re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005), that in this case, the Board
should not “turn a blind eye to the reality of what is actually being offered,” and
that the appropriate genus is “mouthwear designed to enhance athletic
performance.” Opposer’s Trial Brief at 11. We find, as in In re Reed Elsevier
Properties Inc., 77 USPQ2d 1649, 1653 (TTAB 2005), aff’d, 482 F.3d 1376, 82
USPQ2d 1378 (Fed. Cir. 2007), that “[n]either [party] is quite right.”
While a defendant’s identification of goods or services is often found to be the
appropriate genus, and provides at least a starting point for the analysis, Magic
Wand does not require that the genus be coextensive with an applicant’s
identification of goods. To the contrary, as made clear in Reed Elsevier and DNI
Holdings, the genus must be rooted in “the reality of use.” Id. at 1654 and DNI
Holdings, 77 USPQ2d at 1437-38; see also, In re Steelbuilding.com, 415 F.3d 1293,
75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re A La Vieille Russie Inc., 60 USPQ2d
1895, 1897 & n. 3 (TTAB 2001) (“The evidence shows that ‘Russian art’ is a distinct
Opposition No. 91195412

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genre or type of art for which there is a defined commercial market, and that
applicant, and others, are known and referred to generically as dealers in Russian
art. Therefore, we find that the genus of services involved in this case is ‘art
dealership services in the field of Russian art,’ rather than merely ‘art dealership
services’ or, as applicant has argued, merely ‘dealership services.’”).
Here, the record makes clear that in “reality,” applicant and Under Armour
use PERFORMANCE MOUTHWEAR in connection with products which are not
merely for “athletic use,” but more specifically are designed to enhance athletic
capabilities. Indeed, applicant admits as much. Applicant’s Int. Resp. No. 4
(applicant’s products “are designed to provide performance benefits for every athlete
…”); Applicant’s RFA Resp. Nos. 13, 19, 23, 27, 29, 31, 43; Molhoek Tr. at 30, 71-76
(“performance” is an “outcome” of applicant’s products) and Exs. 3, 4, 7, 8, 12, 15,
27-29; Applicant’s Trial Brief at 2 (applicant’s goods “allow athletes to achieve their
true potential”). Applicant also admits that it does not offer only mouth guards
under the mark PERFORMANCE MOUTHWEAR, but that it offers other types of
oral devices as well. Applicant’s Int. Resp. No. 12 (“MOUTHWEAR is a term coined
by the Applicant to be used for the sale of its mouthpieces for athletic use, including
oral appliances for use in non-contact sports and mouthguards for use in contact
sports. Mouthpieces are products that function in or near the mouth.”); Applicant’s
RFA Resp. Nos. 33, 36, 38; Molhoek Tr. at 27 (“generic” meaning of “mouthwear” is
“a collection of products that you put in your mouth,” including mouth guards and
mouthpieces); Molhoek Tr. at 36-37, 46 and Exs. 8, 28 (UNDER ARMOUR
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19

PERFORMANCE MOUTHWEAR encompasses the ArmourBite Mouthpiece, the
UA mouth guard and the ArmourBite Mouthguard). Therefore, we agree with
opposer that the appropriate genus includes products for athletic use which are
intended to enhance athletic capabilities.
However, it is self-serving, and in some respects begs the question, for
opposer to contend that the appropriate genus should be “mouthwear designed to
enhance athletic performance.” Rather than putting the cart before the horse in
this manner, we believe that applicant’s term “mouthpieces” is more appropriate
than “mouthwear.” Applicant’s Int. Resp. No. 12 (“MOUTHWEAR is a term coined
by the Applicant to be used for the sale of its mouthpieces for athletic use, including
oral appliances for use in non-contact sports and mouthguards for use in contact
sports. Mouthpieces are products that function in or near the mouth.”). And under
the circumstances, products intended to improve athletic “capabilities” is preferable
to products intended to improve athletic “performance.”
Accordingly, we find that the appropriate genus in this case is “mouthpieces
intended to enhance athletic capabilities.” We hasten to add, however, that even if
we were to accept applicant’s identification of goods as the appropriate genus, that
identification, “mouth guards for athletic use,” encompasses mouthpieces intended
to enhance athletic capabilities, and, thus, applicant’s proposed genus would not
change the result on the issue of genericness. See, In re DNI Holdings, 77 USPQ2d
at 1438 (“even if for purposes of this inquiry, we were to ignore applicant’s clear
offering on its website of ‘sports betting services,’ we nonetheless find that the class
Opposition No. 91195412

20

or category of services described in the application still clearly includes that of
providing information regarding sports and betting”).
Turning to how PERFORMANCE MOUTHWEAR is understood by the
“relevant public,” we find that the “relevant public” is athletes. Indeed, when asked
“who is the target consumer for Bite Tech’s Performance Mouthwear products?,” Mr.
Molhoek testified “Anybody from a yoga mom, to a eight-year-old athlete, to
triathletes, tennis players, runners, football players, hockey players.” Molhoek Tr.
at 45.
Evidence of this relevant public’s understanding of the term may be obtained
from any competent source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). Furthermore, “evidence of
competitors’ use of particular words as the name of their goods or services is, of
course, persuasive evidence that those words would be perceived by purchasers as a
generic designation for the goods and services.” Continental Airlines, Inc. v. United
Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
Applicant’s alleged mark is a phrase, and accordingly, we recognize that we
may not “simply cite definitions and generic uses of the constituent terms” of the
alleged mark “in lieu of conducting an inquiry into the meaning of the disputed
phrase as a whole.” In re American Fertility, 188 F.3d at 1341, 51 USPQ2d at 1836.
Nevertheless, because the definitions and uses of the alleged mark’s constituent
terms provide context to the phrase as a whole, we start there.
Opposition No. 91195412

21

We take judicial notice that the Merriam-Webster Online Dictionary defines
“performance” as, inter alia, “the execution of an action” and “the ability to
perform.”6 This is consistent with how applicant uses and defines the term. For
example, applicant states that its products “are designed to provide performance
benefits” and Under Armour claims that the products “enhance performance” and
touts them as providing “jaw dropping performance” and “performance benefits.”
Applicant’s Int. Resp. No. 4; Applicant’s RFA Resp. Nos. 13, 23, 27. Moreover, Mr.
Molhoek testified that “performance” is an “outcome” of applicant’s products.
Molhoek Tr. at 71-76; see also, Applicant’s Trial Brief at 16 (“‘performance …
correctly refers to a desired outcome for the athlete”). Importantly, general and
specialized media and third parties use “performance” in the same way when
discussing mouthpieces intended to enhance athletic capabilities or mouth guards
for athletic use. For example, media uses include:
• “Athletes favor new high-end mouth guards which
many say improve their performance through better
breathing.…One of the newest tools in a performance-
enhancement arsenal, these mouthpieces are light,
flexible pieces of molded plastic ….” Opposer’s NOR No. 1
(Sarah Bowen Shea, A Device to De-Stress your Workout,
N.Y. Times, Dec. 17, 2009, at E16);

• “As a latest must-have sports accessory,
‘performance mouthpieces’ are certainly odd … Touted
benefits include less teeth clenching, improved flexibility
and better breathing.” Id. (Stephen Regenold, Fitness on
the Fringe, Star Tribune (Minneapolis-St. Paul), March 1,
2010 at E01);

6 http://www.merriam-webster.com/dictionary/performance

Opposition No. 91195412

22

• “With several peer-reviewed studies being
conducted and published, claims of improved bodily
performance are being validated in regard to performance
mouthwear.” Id. (Susan Corpuz, Give Your Practice an
Edge, Dental Economics, Vol. 100, Issue 9, Sept. 1, 2010);
and

• “… Under Armour’s new performance-enhancing
mouthpiece. A mouthpiece? That enhances athletic
performance?” Id. (Joe Medley, Athletes Finding New
Mouthwear Can Actually Enhance Performance, The
Anniston Star, Oct. 8, 2009).

And third-party uses include:

• “But what if a mouth guard could also enhance
performance?” Opposer’s NOR No. 4 Ex. 16
(“westlakedentalarts.com”);

• “The potential to improve athletic performance by
using a properly designed mouthguard is not a new
idea.” Opposer’s NOR No. 4 Ex. 17 (“agilityguard.com”)
(emphasis in original);

• “For every sport at any level of competition, PX3
Custom Mouthwear™ improves your performance and
protects you in ways you have never imagined.”
Opposer’s NOR No. 4 Exs. 19-22, 31
(“px3mouthwear.com”);

• “We don’t make ‘mouthguards.’ We make
‘performance mouthguards.’” Opposer’s NOR No. 4 Exs.
23-25 (“voxxsports.com”);

• “Performance-enhancing athletic mouthguards …”
Opposer’s NOR No. 4 Ex. 26 (“dentalblogs.com”);

• “Performance Mouthwear is a completely new
category of performance gear designed for all athletes
looking to get better in their chosen sport.” Opposer’s
NOR No. 4 Ex. 28 (“drjoshi.com”);

Opposition No. 91195412

23

• “I’ve seen the evolution of the science behind, and
the new product category called, performance mouthwear
….” Opposer’s NOR No. 4 Ex. 29 (“sweatscience.com”).

While there is no evidence that the term “mouthwear” is defined in any
dictionaries, the record nevertheless makes clear what the term means. According
to applicant itself, “mouthwear” denotes oral devices or mouthpieces:
“MOUTHWEAR is a term coined by the Applicant to be used for the sale of its
mouthpieces for athletic use, including oral appliances for use in non-contact sports
and mouthguards for use in contact sports.” Applicant’s Int. Resp. No. 12. And
according to Mr. Molhoek, “if you were to just use the term generically, I would
think about it as a collection of products that you put in your mouth,” including
mouth guards and mouthpieces. Molhoek Tr. at 27. Similarly, applicant’s partner
claims that “Under Armour Performance Mouthwear™ is an entirely new category
of performance mouthpieces and mouthguards ….” Molhoek Tr. Ex. 8. Applicant’s
promotional materials state: “Performance Mouthwear which includes mouthpieces
and mouthguards with patented technology from Bite Tech.” Molhoek Tr. Ex. 28.
These uses are of course consistent with many other commonly understood terms in
which a modifier is combined with the word “wear” to convey something worn or
used on or for a part of the body such as “footwear,” “headwear,” “eyewear,” etc.
See, In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (“The term
‘mens wear’ or ‘men’s wear’ has a commonly understood meaning -- clothing for
men. Since applicant’s service relates to clothing for men, it is apparent that the
Opposition No. 91195412

24

term ‘menswear’ is merely descriptive of the applicant’s services …”). Applicant’s
disclaimer of MOUTHWEAR also establishes that it has an understood meaning.7
In any event, it is not just the constituent terms of PERFORMANCE
MOUTHWEAR which have readily-understood meanings in the context of
mouthpieces intended to improve athletic capabilities, but the composite itself has a
readily understood meaning. Through use by applicant and Under Armour,
various third parties and media, it is clear that PERFORMANCE MOUTHWEAR is
the common name that athletes understand as describing mouthpieces intended to
improve athletic capabilities.
In fact, applicant and its partner Under Armour essentially concede the
point. For example, Under Armour refers to the “line” of goods bearing
PERFORMANCE MOUTHWEAR as the “UA Mouthwear Collection,” i.e.,
PERFORMANCE MOUTHWEAR is the common name for a category of goods,
specifically mouthpieces intended to improve athletic capabilities. Applicant’s RFA
Resp. No. 33 (emphasis supplied); Molhoek Tr. at 36-37, 46 (PERFORMANCE
MOUTHWEAR encompasses the ArmourBite Mouthpiece, the UA mouth guard and
the ArmourBite Mouthguard). In fact, Under Armour proclaims that “Under

7 Applicant’s disclaimer constitutes a concession that MOUTHWEAR is at best merely
descriptive. Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ
361, 363 (CCPA 1972); Bass Pro Trademarks, LLC v. Sportsman’s Warehouse, Inc., 89
USPQ2d 1844, 1851 (TTAB 2008); In re DNI Holdings, 77 USPQ2d at 1442. However, even
if we were to accept applicant’s argument that in this case its disclaimer of MOUTHWEAR
should not be construed as a concession that MOUTHWEAR is merely descriptive, that
would not change the ultimate result here.

Opposition No. 91195412

25

Armour Performance Mouthwear™ is an entirely new category of performance
mouthpieces and mouthguards.” Molhoek Tr. Ex. 8 (emphasis supplied). And
according to an e-mail from Mr. Molhoek, “The NFL said the Edge could become the
official performance mouthwear of the NFL ….” Molhoek Tr. at 151-157 and Ex. 24.
Applicant claims that it hired a professional hockey player “to introduce its
innovative new line of performance mouthwear to the Canadian hockey
community.” Molhoek Tr. Ex. 27 (emphasis supplied). One of applicant’s former
employees stated in response to an article on the “sweatscience.com” website that
“I’ve seen the evolution of the science behind, and the new product category called,
performance mouthwear ….” Opposer’s NOR No. 3 Ex. 29 (emphasis supplied).
Furthermore, third parties use “performance mouthwear” to describe the
products in the “new category” of mouthpieces intended to enhance athletic
capabilities. For example, the “drjoshi.com” website, in describing Under Armour’s
PERFORMANCE MOUTHWEAR products, states “Performance Mouthwear is a
completely new category of performance gear designed for all athletes ….”
Opposer’s NOR No. 4 Ex. 28 (emphasis supplied). An article on the “jillwillrun.com”
website entitled “Performance Mouthwear, huh?” references both Under Armour’s
and Makkar’s products. Opposer’s NOR No. 3 Ex. 34. Opposer’s product catalogue
states “Performance mouthguards, mouthpieces and mouthwear that advertise
increased strength and performance are typically called MORA (Mandibular Oral
Repositioning Appliance) mouthguards.” Turkbas Tr. Ex. 34. And the
“p3mouthwear.com” website, in promoting third party P3’s own products, includes
Opposition No. 91195412

26

the heading “The New Generation of PERFORMANCE MOUTHWEAR.” Molhoek
Tr. Ex. 33.
Finally, the media and third parties also use “performance mouthguards” or
“performance mouthpieces” to refer to mouthpieces intended to improve athletic
capabilities. Opposer’s NOR No. 1; Opposer’s NOR No. 4 Exs. 16, 23-26, 32. As
applicant essentially concedes, and the record establishes, the terms “mouthguards”
and “mouthpieces” are often used interchangeably with “mouthwear,” which further
supports a finding of genericness.
Based on all of the evidence of record, we find that PERFORMANCE
MOUTHWEAR is understood by the relevant public to refer to mouthpieces
intended to improve athletic capabilities, a subset of mouth guards for athletic use.
Therefore, PERFORMANCE MOUTHWEAR is incapable of functioning as a mark.
Applicant’s arguments to the contrary are unavailing. Even if applicant was
the first to adopt and only user of “performance mouthwear,” that would not mean
that the term has source-identifying significance. See In re Merrill Lynch, Pierce,
Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); In re
Active Ankle Systems, Inc., 83 USPQ2d 1532, 1538 (TTAB 2007) (“Even if applicant
was the first and/or sole user of a generic term or phrase … that does not entitle
applicant to register such a term or phrase as a mark.”); In re Central Sprinkler Co.,
49 USPQ2d 1194, 1199 (TTAB 1998).
Applicant claims that “[a] term applied to a new product category can be
generic only if ‘no commonly used alternative effectively communicates the same
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27

functional information …,” relying on Genessee Brewing Co. v. Stroh Brewing Co.,
124 F.3d 137, 145, 43 USPQ2d 1734 (2d Cir. 1997), which is not controlling and
which does not stand for the proposition stated by applicant. Under controlling
authority, even if there are other ways to describe applicant’s goods, that does not
mean that the alleged mark is not generic. See Roselux Chemical Co. v. Parsons
Ammonia Co., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962); see also, Stromgren
Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100, 1107 (TTAB 1997) (finding
COMPRESSION generic for “a type or category of sports medicine products,
including compression shorts,” and stating “a product may have more than one
generic designation”).
Even if it were true that applicant and Under Armour “have consistently
used PERFORMANCE MOUTHWEAR as a trademark,” a claim which is belied by
the record, that would not give the generic term source-identifying significance.
While it is always distressing to contemplate a situation
in which money has been invested in a promotion in the
mistaken belief that trademark rights of value are being
created, merchants act at their peril in attempting, by
advertising, to convert common descriptive names, which
belong to the public, to their own exclusive use. Even
though they succeed in the creation of de facto secondary
meaning, due to lack of competition or other
happenstance, the law respecting registration will not
give it any effect.

Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411,
414 (CCPA 1961); see also In re Half Price Books, Records, Magazines, Inc., 225
USPQ 219, 222 (TTAB 1984).
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28

Finally, while there is no evidence that “performance mouthwear” appears in
any dictionary, that is not controlling. In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987); In re Orleans Wines, Ltd., 196 USPQ 516, 517
(TTAB 1977).
Mere Descriptiveness
Our finding that “performance mouthwear” is generic subsumes a finding
that the term is merely descriptive. Indeed, “[t]he generic name of a thing is in fact
the ultimate in descriptiveness.” H. Marvin Ginn, 782 F.2d at 987, 228 USPQ at
530. Nevertheless, for the sake of completeness, we consider whether the term is
merely descriptive of applicant’s goods.
A term is deemed to be merely descriptive within the meaning of Trademark
Act Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use of the goods. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the applicant’s goods in order to
be considered merely descriptive; it is enough that the term describes one
significant attribute, function or property of the goods. See In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in the abstract, but
in relation to the goods for which registration is sought, the context in which it is
being used in connection with those goods, and the possible significance that the
Opposition No. 91195412

29

term would have to the average purchaser of the goods because of the manner of its
use; that a term may have other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is settled that “the question
is not whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods
or services are will understand the mark to convey information about them.” In re
Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Here, the evidence of record leaves us no doubt that “performance
mouthwear” is merely descriptive of “Mouth guards for athletic use.” As discussed
in connection with our genericness finding, it is not merely “performance” and
“mouthwear” which individually have readily-understood meanings in the context of
mouth guards for athletic use. Rather, through use by applicant and Under
Armour, various third parties and media, it is clear that the composite term
“performance mouthwear” is the common name that athletes understand as
describing applicant’s goods. Applicant and others even refer to “performance
mouthwear” as a product “category,” applicant has disclaimed “mouthwear” and
applicant states that “performance … correctly refers to a desired outcome for the
athlete.” Applicant’s Trial Brief at 16; Molhoek Tr. at 71.
Applicant has not presented evidence or argued that “performance
mouthwear” has acquired distinctiveness. Therefore, there is no basis upon which
to find that the mark has acquired distinctiveness. See Stromgren Supports, 43
USPQ2d at 1109-10 n. 13.
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30

Conclusion
Opposer has met its burden of proof that “performance mouthwear” is generic
(and merely descriptive). Accordingly, the opposition is sustained.
***