Specialized Bicycle Components, Inc.v.Specialize Fitness, Inc.

Trademark Trial and Appeal Board

Apr 30, 2010

No. 92048314 (T.T.A.B. Apr. 30, 2010)

Hearing: Mailed:
March 18, 2010 April 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Specialized Bicycle Components, Inc.

v.

Specialize Fitness, Inc.
_____

Cancellation No. 92048314
_____

Lorri Meddings of Michael Best & Friedrich LLP for
Specialized Bicycle Components, Inc.

Leon Fable, pro se.
_____

Before Seeherman, Walsh and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On October 24, 2007, Specialized Bicycle Components,
Inc. filed a petition to cancel Registration No. 3099811 for
the mark SPECIALIZE FITNESS in the stylized form shown
below, with FITNESS disclaimed, for “clothing, namely,
t-shirts and baseball caps.” The registration issued to
Leon Fable, an individual, on June 6, 2006, from an
application that was filed on April 26, 2005 claiming first
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92048314
2
use on October 18, 2004 and first use in commerce on
December 18, 2004.

As grounds for cancellation, petitioner has alleged
that its own application for SPECIALIZED for “bicyclists’
shoes and clothing, namely, shorts, socks and jerseys,” was
refused registration on the basis of respondent’s
registration; that petitioner has been using the mark
SPECIALIZED on shoes and clothing, and the trade name
Specialized Bicycle Components, Inc. since long prior to
respondent’s claimed dates of first use; that petitioner
owns registrations for SPECIALZED for, inter alia, bicycle
components and accessories and protective helmets for
bicyclists; that respondent’s use of his mark is likely to
cause confusion with petitioner’s mark because the marks are
similar and the goods overlap or are related, and could be
sold in the same channels of trade.
Respondent has essentially denied the salient
allegations in the petition to cancel.
The record includes the pleadings; the file of the
registration sought to be cancelled, and the testimony, with
exhibits, of petitioner’s witness Kim Arca and of
Cancellation No. 92048314
3
respondent, which were submitted in affidavit form pursuant
to stipulation. Petitioner has also submitted, under notice
of reliance, respondent’s responses to petitioner’s requests
for admission; petitioner’s pleaded registrations for
SPECIALIZED,1 its application that has been refused on the
basis of respondent’s registration, and a now-cancelled
registration that was owned by petitioner; and articles or
excerpts from various printed publications.2
Only petitioner filed a brief. However, both
petitioner and respondent appeared at an oral hearing before
the Board, and we therefore had the benefit of hearing
respondent’s position in this matter.
With its brief petitioner submitted an appendix
containing several objections to the evidence submitted by
respondent. At the oral hearing petitioner’s counsel stated
that petitioner was withdrawing its objections, except the

1 Registration No. 3293615, issued September 18, 2007 for
“bicycles, bicycle pumps, inner tubes, saddles, grips, handlebar
pads, handlebar tape, brake levers, seat posts and water bottle
cages”; Registration No. 1529532, issued March 14, 1989, for
“protective helmets for bicyclists,” Section 8 & 15 affidavits
accepted and acknowledged, renewed; and Registration No. 1378009,
issued January 14, 1986 for “bicycle components and accessories,
namely tires, cables, tubes, cable housings, handle bars, stems,
frames, stayguards and sandle [sic] bag hoops,” Section 8 & 15
affidavits accepted and acknowledged, renewed.
2 Petitioner also submitted under notice of reliance
respondent’s responses to petitioner’s document production
requests. Documents produced in response to a document
production request cannot be made of record by notice of
reliance, see Trademark Rule 2.120(j)(3)(ii). However, we have
considered respondent’s response that he had no documents to
respond to certain requests because they had been destroyed.
Cancellation No. 92048314
4
objection that respondent’s testimony affidavit was not
signed. With respect to this objection, we note that the
affidavit was served by mail on petitioner on April 8, 2009
and filed with the Board on April 10, 2009. However,
petitioner did not object to the unsigned affidavit until
August 3, 2009. Because the deficiency in the affidavit
could have been cured if petitioner had timely raised it,
the objection is overruled.
Standing
Petitioner has submitted a copy of its pending
application, Serial No. 77070775, for SPECIALIZED for
bicyclists’ shoes and clothing, namely, shorts, socks and
jerseys. The examining attorney has refused registration of
this mark on the ground that it is likely to cause confusion
with respondent’s registration. This is sufficient to
demonstrate petitioner’s standing to bring this proceeding.
DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d
1086 (TTAB 2010).
Priority
Because this is a cancellation proceeding, despite the
fact that petitioner owns registrations for the mark
SPECIALIZED, priority is still in issue. See Brewski Beer
Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB

Petitioner also submitted a copy of the file of the subject
registration. This was unnecessary, as the registration file is
automatically of record. See Trademark Rule 2.122(b).
Cancellation No. 92048314
5
1998); compare King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Further,
because petitioner’s registrations are for bicycles and for
bicycle parts and accessories, petitioner is also relying on
its common law rights acquired through its use of the mark
SPECIALIZED on clothing. 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 mark must be
distinctive, inherently or otherwise, and plaintiff must
show priority of use. Giersch v. Scripps Networks Inc., 90
USPQ2d 1020, 1023 (TTAB 2009); Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). This
presents an interesting issue for us, because respondent has
not asserted, as an affirmative defense, that petitioner’s
mark is not inherently distinctive, and consequently has
failed to put petitioner on notice that it must prove either
that the mark is inherently distinctive or that it acquired
distinctiveness prior to respondent’s use of his mark. See
Giersch v. Scripps Networks Inc., supra; Wet Seal Inc. v. FD
Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent
argument or evidence from applicant, opposer's mark deemed
distinctive).3 On the other hand, petitioner claimed in

3 Petitioner’s registrations for bicycles and bicycle
accessories issued pursuant to Section 2(f), so they are prima
facie evidence that the mark has acquired distinctiveness for
those goods, while its registration for bicycle helmets issued
Cancellation No. 92048314
6
connection with its pending application Serial No. 77070775
for clothing that its mark has acquired distinctiveness.
This claim of acquired distinctiveness acts as an admission
by petitioner that its mark is not inherently distinctive
for the clothing items. Therefore, even though respondent
did not raise the distinctiveness of petitioner’s mark as an
affirmative defense, by its own admission that its mark is
not inherently distinctive, petitioner was on notice that it
had to prove that the mark acquired distinctiveness prior to
respondent’s acquisition of trademark rights in his mark.
Although there is some lack of clarity over the date
that respondent first used his mark on clothing, there is no
question that respondent did not commence use of his mark
prior to October 18, 2004. Thus, the question we must
decide is whether petitioner’s mark acquired distinctiveness
as a mark for clothing prior to that date. We find that it
did. Specifically, Ms. Arca testified that petitioner has
“used the mark in connection with clothing items continually
since 1983” (first Arca aff. ¶ 9,), and used its mark in
connection with t-shirts and caps at least as early as 1983.
Petitioner has submitted copies of its catalogs showing that
petitioner was offering clothing under the mark SPECIALIZED,
including the 1982 catalog (t-shirts and caps), the 1998

without such a claim, and therefore is prima facie evidence that
the mark is inherently distinctive.

Cancellation No. 92048314
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catalog (jerseys, shorts, jackets, gloves, windbreakers),
the 1999 catalog (t-shirts, jerseys), the 2000 catalog
(t-shirts, caps, jerseys), the 2002 catalog (shorts,
jerseys, jackets, caps, socks), the 2003 catalog (t-shirts,
caps, jerseys, shorts, socks), and the 2004 catalog
(jerseys). The latter catalog states:
Jerseys, shorts, bibs, tights, vests,
t’s, beanies, windshells, baggies,
casual wear, arm and leg warmers, socks,
hats …you name it, we make it.

Ms. Arca testified that in the years 1999 to 2005,
approximately 300,000 catalogs were distributed each year.
She also testified as to petitioner's annual sales figures
for clothing items from 1997 to 2008. This information was
provided under seal, but we can say that the sales from 1997
through 2004, when respondent began using his mark, were not
insignificant. Accordingly, we find that petitioner has
established that SPECIALIZED acquired distinctiveness as a
mark for its clothing items prior to respondent’s first use
of his mark, and therefore that petitioner has established
its priority.
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). As petitioner has pointed out, not
Cancellation No. 92048314
8
all of the du Pont factors may be relevant or of equal
weight in a given case, and any of the factors may control.
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). Petitioner has identified as
the most relevant factors in this case the similarity of the
marks, goods, channels or trade and consumers, and the
strength and fame of petitioner’s SPECIALIZED mark, and has
also discussed in its brief the care taken in the purchasing
decision and lack of actual confusion. In addition,
although respondent has not submitted a brief, he has
testified as to his good faith adoption of his mark. We
will discuss these points in particular in our likelihood of
confusion analysis; we treat as neutral any du Pont factors
that we do not discuss.
With respect to the factor of the similarity of the
goods, petitioner has shown common law use of its mark
SPECIALIZED for a variety of clothing items, including
t-shirts and caps, the same items that are identified in
respondent’s registration. Moreover, respondent has stated
that he is “always looking to improve and expand our
clothing line, which includes tank tops, compression t-
shirts, scoop neck and baseball t-shirts, sleeveless
t-shirts for guys and baseball caps….” Fable aff., ¶ 3.
Because petitioner’s and respondent’s goods are in part the
Cancellation No. 92048314
9
same and otherwise closely related, this du Pont factor
favors a finding of likelihood of confusion.
Ms. Arca testified that petitioner’s bicycles are sold
through approximately 1200 dealers, with about 800 dealers
selling SPECIALIZED brand clothing. First Arca aff. ¶ 2.
Because petitioner is relying on its common law rights, its
channels of trade are limited to dealers that sell
bicycles.4 Respondent’s identification is not so limited,
so we must consider that his t-shirts and baseball caps can
be sold in all channels of trade that are appropriate for
such goods. The record does not show whether sales by
bicycle dealers is a normal channel of trade for t-shirts
and baseball caps; although petitioner sells its goods
through this channel, that may be a special situation due to
the fact that petitioner is selling its bicycles, which are
its primary product, through such outlets. Because the
evidence is not clear as to whether t-shirts and caps would
or would not normally be sold by bicycle dealers, we cannot
say that the goods are sold in the same channels of trade.

4 Petitioner states in its brief that “because there is no
restriction on the channels of trade in the Registration or in
Petitioner’s application, one can presume there is overlap in the
channels of trade and customers for the parties’ goods.” Brief,
p. 2. See also, p. 31. However, petitioner cannot rely on its
application, in the same manner as a registration, for the
Section 7(b) presumption that it has the exclusive right to use
the mark for the goods as identified in the certificate of
registration, which is the basis for the presumption that the
goods are sold in all appropriate channels of trade for such
goods.

Cancellation No. 92048314
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However, it is clear that the general public would be the
consumers of both petitioner’s and respondent’s goods.
Petitioner’s customers are likely to be bicycling
enthusiasts, but they would also comprise the consuming
public for respondent’s goods, as there is no limitation in
respondent’s identification as to the consumers who would
purchase his goods.5 Accordingly, although we treat as
neutral whether the goods are sold in the same retail
outlets, the same classes of consumers may encounter the
goods. To this extent, this du Pont factor favors a finding
of likelihood of confusion.
There is no specific testimony regarding the conditions
of purchase, but by their very nature respondent’s goods,
t-shirts and caps, are items sold to the general public, who
would not be considered discriminating purchasers, and these
goods can be inexpensive and purchased on impulse. Thus,
this du Pont factor favors a finding of likelihood of
confusion.
This brings us to the du Pont factor of the similarity
of the marks. Although respondent has characterized the
parties’ respective marks as SPECIALIZED BICYCLE COMPONENTS

5 We are aware from respondent’s testimony that he has a fitness
facility and has sponsored events such as basketball tournaments
and weightlifting competitions, and that he has sold his clothing
at these venues. However, because his identification of goods is
not limited to offering them through his fitness facility and
events he sponsors, we must treat the goods as being offered
Cancellation No. 92048314
11
INC. and SPECIALIZE FITNESS INC., Fable aff. ¶ 5,
respondent’s mark which is the subject of his registration
is SPECIALIZE FITNESS in the stylized form shown at the
beginning of this opinion.6 Petitioner’s mark, as shown in
its various catalogs and advertisements is SPECIALIZED in
slightly stylized form, i.e., all capital letters in what is
almost an italic type font. Although both marks use
slightly stylized lettering, this stylization does not serve
to distinguish the marks. Because under actual marketing
conditions consumers do not necessarily have the luxury of
making side-by-side comparisons between marks, and must rely
upon their imperfect recollections, the slight differences
in the typestyles of the marks are not likely to be
remembered. See Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). Moreover, even if
consumers were to notice the difference in typestyles, they

through all appropriate channels of trade to all normal customers
for such goods.
6 We note that in the original application Mr. Fable indicated
that he was applying for the mark in standard character format,
and that the particular form in which the mark registered is the
same as his handwritten listing of the mark in the application,
which he filled out by hand. However, whether or not the Office
made a mistake in inserting his handwritten version of the mark
on the registration certificate, rather than depicting the mark
in standard character format, is not before us. In determining
the issue of likelihood of confusion we must consider the mark as
it appears on the certificate of registration although, even if
the mark were registered in standard character format, it would
have no effect on our decision, since a registration for the mark
in that format would encompass the stylized lettering of
petitioner’s mark.
Cancellation No. 92048314
12
are likely to view these as mere variations of each other.7
For the same reason, the fact that petitioner’s mark differs
from the first word of respondent’s mark because it has a
“D” at the end—SPECIALIZED/SPECIALIZE—does not distinguish
the marks. The presence or absence of this “D” is not
likely to be noticed or remembered.
Respondent’s mark also includes the word FITNESS, an
element that does not appear at all in petitioner’s mark.
However, again, we find that the inclusion of this word is
not sufficient to distinguish the marks. Respondent
disclaimed exclusive rights to use the word FITNESS in
response to the examining attorney’s statement that this
term is merely descriptive of fitness clothing. Descriptive
wording generally is given less weight in a comparison of
marks. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (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

7 We note, in connection with this, that respondent uses the
mark SPECIALIZE FITNESS in both all capital block letters and in
upper and lower case letters, “Specialize Fitness.” See exhibits
to Fable aff. Further, the substitute specimens submitted by
respondent in the prosecution of his application that matured
into the subject registration show the mark in all capital block
lettering, as SPECIALIZE FITNESS INC. (The original specimen, a
business card, was found unacceptable to show use of the mark for
goods.)

Cancellation No. 92048314
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conclusion rests on a consideration of the marks in their
entireties). In the present case, comparing the marks in
their entireties, we find that respondent’s mark SPECIALIZE
FITNESS is similar in appearance, pronunciation, connotation
and commercial impression to petitioner’s mark SPECIALIZED
in view of the nearly identical word SPECIALIZE/SPECIALIZED
in both marks, and because the descriptive word FITNESS does
not distinguish the marks. Put another way, consumers who
are familiar with petitioner’s mark SPECIALIZED for items of
clothing are likely to assume, upon viewing respondent’s
mark SPECIALIZE FITNESS on t-shirts and baseball caps, that
SPECIALIZE FITNESS is a variation of the mark SPECIALIZED,
and that the t-shirts and baseball caps emanate from the
same source.
Respondent has stated, in his discovery responses, that
at the time he adopted his mark he “had never heard of the
Petitioner’s mark, their company, or anything regarding
them.” Response to Request for Admission 3. However,
although an intent to trade on the goodwill of another’s
trademark may be evidence of likelihood of confusion, good
faith adoption cannot serve as a basis for finding that
confusion is not likely.
Respondent also stated that he is unaware of any
instances of actual confusion. Because it appears that
respondent’s activities are rather limited (he describes his
Cancellation No. 92048314
14
company as “small fish,” Fable aff. ¶ 7,), and his sales
appear to be primarily out of respondent’s fitness facility
and at basketball tournaments and weightlifting events that
he sponsors, as well as through his website, we cannot
conclude that there has been an opportunity for confusion to
occur. We also recognize that it is extremely difficult to
find evidence of actual confusion. Therefore, we treat this
du Pont factor as neutral.
As for the du Pont factor of the fame or strength of
petitioner’s mark, at the oral hearing petitioner’s counsel
stated that she was not claiming that the mark is famous for
clothing items. And it would be the fame of the mark for
clothing that must be shown for petitioner to also rely on
the identical nature of its clothing with respondent’s
clothing. That is, any fame of the mark for bicycles would
have to be considered in connection with whether petitioner
had shown that bicycles and clothing are related goods.
However, we need not reach the questions of whether
respondent’s mark is famous for bicycles and whether
bicycles and clothing are related because we find that
confusion is likely between petitioner’s mark SPECIALIZED
for clothing and respondent’s mark SPECIALIZE FITNESS for
t-shirts and baseball caps.
Respondent’s primary argument, as set forth in his
papers and at the oral hearing, is that he went through the
Cancellation No. 92048314
15
appropriate steps to secure his registration for SPECIALIZE
FITNESS for t-shirts and caps, while petitioner, which had a
registration for SPECIALIZED for t-shirts and jerseys, lost
it for failure to file a Section 8 affidavit of use.
Respondent apparently believes that a company must go
through the appropriate processes to register a trademark in
order to have exclusive ownership of names and logos, and
that “a company cannot simply circumvent these procedures
and claim that a mark is theirs because they’ve been using
it for a long period of time.” Fable aff., ¶ 7. However,
this is not a correct statement of the law. Trademark
rights in the United States arise from use, not from
registration, and a party may cancel a registration that is
less than five years old based on the ground of likelihood
of confusion with its previously used mark, whether or not
that mark is or was registered.
Accordingly, based on the evidence of petitioner’s
prior use and common law rights in the mark SPECIALIZED for
clothing, the similarity of the marks, the identical in part
and otherwise closely related nature of the goods, and the
fact that the goods are general consumer items that are
purchased without great care, we find that use of
respondent’s mark for his identified goods is likely to
Cancellation No. 92048314
16
cause confusion with petitioner’s mark for its clothing
items.8
We sympathize with respondent’s position, as it is
obvious that he tried to comply with the trademark laws and
to follow the procedures to obtain a trademark registration.
We reiterate what we said to respondent at the oral
argument: a decision by the Board to cancel a registration
does not prevent the former registrant from using his mark.
Moreover, a finding of likelihood of confusion by the Board,
which must assume nationwide usage of the mark for the goods
identified in the registration, may not be the same finding
by a federal or state court in a trademark in an
infringement action, in which the court can take into
consideration the specific manner in which the mark appears
on the goods, and the specific circumstances under which the
goods are sold.
Decision: The petition to cancel the registration is
granted.

8 Petitioner has also asserted, in the alternative, that
respondent’s mark is likely to dilute its famous mark. Aside
from the fact that petitioner did not properly plead the ground
of dilution (it did not assert that its mark became famous prior
to respondent’s first use of his mark), petitioner made clear
that this claim was in the alternative, “should the Board deny
“Petitioner’s Section 2(d) claim.” Brief, p. 36.