Trans World International, Inc.v.American Strongman Corporation

Trademark Trial and Appeal Board

May 8, 2012

No. 92050860 (T.T.A.B. May. 8, 2012)

Mailed: May 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

Trans World International, Inc.
v.
American Strongman Corporation
___________

Cancellation No. 92050860
___________

Stephen A. Hill of Rankin, Hill & Clark LLP

Sepehr Daghighian of the Law Offices of Sepehr Daghighian PC
____________

Before Zervas, Cataldo, and Shaw, Administrative Trademark
Judges.

Opinion by Shaw, Administrative Trademark Judge:
Petitioner, Trans World International, Inc., filed a
petition to cancel a registration owned by respondent, American
Strongman Corporation, for the mark AMERICA'S STRONGEST MAN on
the Supplemental Register for "entertainment in the nature of
competitions in the field of strength athletics and strength
entertainment" in International Class 41.1

1 Registration No. 3522878; issued October 21, 2008 from an
application filed on February 4, 2008.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92050860
2
As its ground for cancellation, petitioner asserts
likelihood of confusion under Section 2(d) of the Trademark Act.
15 U.S.C. § 1052(d). Petitioner alleges that respondent's mark
when used in connection with respondent’s services so resembles
petitioner's previously used and registered mark, WORLD’S
STRONGEST MAN, as to be likely to cause confusion. Petitioner
has pleaded ownership of Registration No. 2484106 registered on
the Principal Register under Trademark Act Section 2(f), for the
services of “entertainment in the nature of on-going television
programs in the field of sports competitions,” in International
Class 41.2
Applicant, in its answer, denied the salient allegations in
the petition. The case is fully briefed.
The Record
The evidence of record consists of the pleadings and the
file of the involved registration. The only evidence introduced
by Petitioner is the status and title copy of the pleaded
registration submitted with the petition for cancellation. See
Trademark Rule 2.122(d)(1). No other evidence was submitted by
either party.

2 Issued September 4, 2001; renewed.
Cancellation No. 92050860
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Standing
Petitioner has shown through the TESS printouts made of
record that petitioner is the owner of its pleaded registration
and that the registration is valid and subsisting. Because
petitioner’s registration is of record, petitioner has
established its standing. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
In a cancellation proceeding, where both parties own
registrations, petitioner must prove priority of use. See
Brewski Beer Co. v. Brewski Bros., Inc., 47 USPQ2d 1281 (TTAB
1998) and cases cited therein. Because petitioner's
registration is of record, petitioner may rely on the
registration as proof that the mark was in use as of the filing
date of the underlying applications. See J. C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA
1965).
Petitioner’s registration issued September 4, 2001 from an
application filed on October 22, 1997. This is long prior to
the February 4, 2008 filing date of respondent's underlying
application, which is the earliest date on which respondent is
Cancellation No. 92050860
4
entitled to rely given the absence of any evidence of earlier
use. Thus, petitioner has established its priority.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Moreover, petitioner has the burden to establish that
there is a likelihood of confusion by a preponderance of the
evidence.
In any likelihood of confusion analysis, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”).
Inasmuch as the only evidence of record in this case is the
pleaded registration and the file of the involved registration,
our inquiry will focus primarily on these two factors. We turn
first to the similarity of the services.
Cancellation No. 92050860
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A. Similarity or dissimilarity of the services

Respondent’s mark is registered for "entertainment in the
nature of competitions in the field of strength athletics and
strength entertainment." Petitioner’s pleaded registration is
for “entertainment in the nature of on-going television programs
in the field of sports competitions.” The services provided by
both parties are closely related, if not overlapping. Both
parties are providing entertainment in the nature of
competitions featuring sports in petitioner’s case, or the more
specifically recited sporting events of “strength athletics and
strength entertainment” in respondent’s case. The only
significant difference between the identified services appears
to be that petitioner has limited its registration to the medium
of television while respondent has no such limitation.
Respondent argues that its services do not overlap with
petitioner’s services because “strength athletics and
competitions [are] not a sport.” Respondent’s Br. at 6. This
argument is not well taken. The specimens of use submitted with
respondent’s application clearly indicate that the mark is used
in connection with activities that most would consider to be a
sport. Respondent’s specimens show that it conducts a strongest
man (and woman) “contest” featuring “the best athletes in the
strength and fitness world” and that there has been an AMERICA’S
STRONGEST MAN “championship” every year since 1997. Respondents
Cancellation No. 92050860
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Response to Office Action, dated September 4, 2008. Further,
the definition of “sport” precisely encompasses respondent’s
activities: “an athletic activity requiring skill or physical
prowess and often of a competitive nature, as racing, baseball,
tennis, golf, bowling, wrestling, boxing, hunting, fishing,
etc.”3
This du Pont factor weighs in favor of finding a likelihood
of confusion.
B. Similarity of the marks
We next consider the similarity of the marks as to
appearance, sound, connotation and commercial impression. Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The
test, under this du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the
source of the services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a

3 http://dictionary.reference.com/browse/sport, Collins English
Dictionary - Complete & Unabridged 10th Edition (2012). The
Board may take judicial notice of dictionary definitions. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See
also Univ. 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).
Cancellation No. 92050860
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specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). While we must
consider the marks in their entireties, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark. See In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
We keep in mind, however, that when a mark, or a portion of
a mark, is inherently weak, it is entitled to a narrow scope of
protection. In other words, when a business adopts a mark
incorporating a descriptive term, it assumes the risk that
competitors may also use that descriptive term. Milwaukee Nut
Co. v. Brewster Food Serv., 277 F.2d 190, 125 USPQ 399, 401
(CCPA 1960) (opposer acted at its peril in choosing a highly
suggestive mark). See also Sure-Fit Prods. Co. v. Saltzon
Drapery Co., 254 F.2d 158, 117 USPQ 295, 296 (CCPA 1958) (“Where
a party uses a weak mark, his competitors may come closer to his
mark than would be the case with a strong mark without violating
his rights.”).
We begin by noting that both marks are comprised of
descriptive terms and that during examination both marks were
held to be descriptive by the USPTO. Petitioner’s mark
registered under Section 2(f) of the Trademark Act, a concession
Cancellation No. 92050860
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that the mark was merely descriptive of the identified services,
at least at the time of application. 15 U.S.C. § 1052(f);
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988). Similarly, respondent’s mark is
registered on the Supplemental Register which also is a
concession that the mark was merely descriptive of the
identified services. Quaker State Oil Ref. Corp. v. Quaker Oil
Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972); In re Cent.
Soya Co., Inc., 220 USPQ 914, 916 (TTAB 1984).
Petitioner’s mark is WORLD’S STRONGEST MAN and respondent’s
mark is AMERICA’S STRONGEST MAN. We find that the parties’
marks, unlike their contestants, are weak. Both marks consist
in part of the laudatory wording “strongest man” which is
presumed to be the title given to the winner of the respective
competitions. Moreover, the wording “America’s” and “world’s”
in the marks merely describes the geographic scope of these
contests of strength. When these terms are combined,
respectively, the result is two weak marks which merely tell
prospective consumers that the competitions will seek out the
strongest man in two different geographic regions.
Petitioner argues that “strongest man” is the dominant
portion and that prospective consumers “would not place any
distinguishing weight or importance on the difference between
the words “WORLD’S” and “AMERICA’S” to presume that the services
Cancellation No. 92050860
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originated from different sources, because these words are
merely generic geographic identifiers.” Petitioner’s Br. at 15.
We disagree. Given that “strongest man” is descriptive of the
nature of the competition and given the different geographic
scope of the competitions, we see no reason why prospective
consumers would not be able to distinguish between the
competitions using the first terms in each mark. Purchasers in
general are inclined to focus on the first word or portion in a
trademark. Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of
a mark which is likely to be impressed upon the mind of a
purchaser and remembered”); See Palm Bay, 73 USPQ2d at 1692.
While these marks both include geographic terms, we find they
nevertheless have different connotations. Petitioner has not
submitted any evidence to suggest otherwise. The mere fact that
both marks include the descriptive wording “strongest man” is
not enough to find a likelihood of confusion. See Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA
1976) (“[T]he mere presence of a common, highly suggestive
portion [of a mark] is usually insufficient to support a finding
of likelihood of confusion.”); Alpha Indus., Inc. v. Alpha
Microsystems, 227 USPQ 67, 71 (TTAB 1983) (“Since the testimony
and other evidence establishes to our satisfaction that the term
“micro” has descriptive or highly suggestive significance in the
Cancellation No. 92050860
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computer field, this part of applicant's mark is entitled to
less significance since potential purchasers are likely to look
to the remainder of the mark for origin-indicating
significance.”). Accordingly, we find that these marks have
different connotations or commercial impressions and the
dissimilarities outweigh the similarities.
In conclusion, based on this very sparse record, we find
that petitioner has not carried its burden of proof and
respondent’s mark is sufficiently dissimilar to petitioner’s
mark so as to make confusion unlikely. This du Pont factor
alone is dispositive. Kellogg Co. v. Pack’em Enter. Inc., 951
F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no
reason why, in a particular case, a single du Pont factor may
not be dispositive”).
Decision: Cancellation No. 92050860 is dismissed.