Wai L. Wongv.Wudi Industrial (Shanghai) Co., Ltd.

Trademark Trial and Appeal Board

Jun 11, 2020

92067436 (T.T.A.B. Jun. 11, 2020)

Mailed: June 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Wai L. Wong
v.
Wudi Industrial (Shanghai) Co., Ltd.
_____

Cancellation No. 92067436
_____

Catherine Simmons-Gill of the Offices of Catherine Simmons-Gill LLC
for Wai L. Wong.

Tommy SF Wang of Wang IP Law Group, P.C.
for Wudi Industrial (Shanghai) Co., Ltd.
_____

Before Bergsman, Lykos and English, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Wai L. Wong (“Petitioner”) filed a Petition to Cancel the registration of the mark
GTRACING (stylized), reproduced below, for “Chairs; Cots; Desks; Furniture;
Furniture of metal; Office furniture; Seats; Serving trolleys; Sofas; Stools,” in
This Opinion Is Not a
Precedent of the TTAB
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International Class 20, owned by Wudi Industrial (Shanghai) Co., Ltd.
(“Respondent”).1

The description of the mark describes Respondent’s mark as “the stylized wording
‘GTRACING.’”
Petitioner filed the Petition for Cancellation under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Respondent’s mark is likely to cause
confusion with Petitioner’s Registration No. 5085131 for the mark GT OMEGA, in
standard character form, for, inter alia, “Furniture; office furniture; chairs; metallic
and non-metallic furniture including office furniture,” in International Class 20,2 and
common law use of the mark GT OMEGA RACING and GT OMEGA RACING and
design, reproduced below, both for furniture, office furniture, and chairs.

1 Registration No. 5170770, registered March 28, 2017, based on application Serial No.
87143933, filed August 19, 2016, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
2 Registered November 22, 2016, based on application Serial No. 86813688 filed November 9,
2015, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and Section 44(e) of the
Trademark, 15 U.S.C. § 1126(e). In its underlying application for registration, Respondent
claimed May 1, 2016 as its date of first use of its mark anywhere and in commerce.
Petitioner disclaimed the exclusive right to use the term “GT.”
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Petitioner has pending applications for GT OMEGA RACING, in standard
character form,3 and GT OMEGA RACING and design.4 Action on both applications
is suspended pending the termination of this proceeding.
Respondent, in its Amended Answer, denied the salient allegations in the Petition
for Cancellation.
The parties stipulated to Accelerated Case Resolution (ACR) on November 8, 2019
and amended their stipulation on December 18, 2019.5 The ACR stipulation provides
that any documents, including the documents the parties produced during discovery,
are admissible through a notice of reliance subject to objection on a basis other than
authenticity and that Petitioner has standing.6 In addition, the parties provided a
stipulation of facts that we discuss below in the “Record” section of this decision.7
We commend the parties for choosing to resolve this dispute under ACR and for
citing to TTABVUE, the Board’s online docketing system, to support their statements
of facts. Their use of TTABVUE citations facilitated the review of their arguments.

3 Serial No. 87639287, filed October 10, 2017, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), for, inter alia, “Furniture; office furniture; chairs; metallic and non-metallic
furniture including office furniture,” in International Class 20. Petitioner disclaimed the
exclusive right to use the terms “GT” and “Racing.”
4 Serial No. 87664359, filed October 30, 2017, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), for inter alia, “Furniture; office furniture; chairs; metallic and non-metallic
furniture including office furniture,” in International Class 20.Petitioner disclaimed the
exclusive right to use the terms “GT” and “Racing.”
5 26 TTABVUE and 29 TTABVUE respectively.
6 29 TTABVUE 4-5, 9 and 12.
7 29 TTABVUE 10-13.
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I. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Respondent’s registration file.8 As noted above, the parties filed a
stipulation of facts, including those listed below:
•Petitioner is the owner of Registration No. 5085131 for the mark GT OMEGA, in
standard character form, for, inter alia, “furniture; office furniture; chairs; metallic
and non-metallic furniture including office furniture” in International Class 20;9
•Petitioner is the owner of application Serial No. 87639287 for the mark GT
OMEGA RACING, in standard character form for, inter alia, “furniture; office
furniture; chairs; metallic and non-metallic furniture including office furniture” in
International Class 20. The USPTO has suspended action on this application pending
the termination of this proceeding;10 and
•Petitioner is the owner of application Serial No. 87664359 for the mark GT
OMEGA RACING and design for, inter alia, “furniture; office furniture; chairs;
metallic and non-metallic furniture including office furniture” in International Class
20. The USPTO has suspended action on this application pending the termination of
this proceeding.11
The parties introduced the testimony and evidence listed below:

8 Therefore, it was not necessary for Petitioner and Respondent to introduce copies of
Respondent’s registration file. (32 TTABVUE 327-351 and 38 TTABVUE 5-30).
9 Stipulation of Facts ¶¶3 and 4 (29 TTABVUE 10).
10 Stipulation of Facts ¶¶5, 6 and 22 (29 TTABVUE 10-11 and 13).
11 Stipulation of Facts ¶¶7-9 and 23 (29 TTABVUE 11 and 13).
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A. Petitioner’s testimony and evidence.
1. Testimony declaration of Petitioner, Wai L. Wong;12

2. Notice of reliance on a copy of the file for Registration No. 5469705 for
the mark GT and design, reproduced below, for “furniture; office
furniture; chairs; metallic and non-metallic furniture including office
furniture,” in International Class 20, owned by Petitioner;13

The description of the mark reads as follows: “Color is not claimed as a
feature of the mark. The mark consists of the Greek symbol for omega
with three wings spreading outward from both sides; within the center
of the omega symbol are the letters ‘GT’.”

3. Notice of reliance on a copy of the file for Petitioner’s pleaded
registration;14

4. Notice of reliance on a copy of Petitioner’s application for Serial No.
87639287 for the mark GT OMEGA RACING, in standard character
form;15

12 31 TTABVUE. The Board posted the portions of Petitioner’s declaration that Petitioner
designated confidential at 30 TTABVUE.
13 Registered May 15, 2018. (32 TTABVUE 5-30). Petitioner did not plead this registration as
part of its Section 2(d) claim.
14 32 TTABVUE 31-155. Because Petitioner introduced a copy of its registration file,
Respondent did not need to introduce a second copy of it. (38 TTABVUE 203-342). “When
evidence has been made of record by one party in accordance with these rules, it may be
referred to by any party for any purpose permitted by the Federal Rules of Evidence.”
Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a).
15 32 TTABVUE 157-241. The USPTO cited Respondent’s Registration No. 5170770 involved
as a Section 2(d) bar to the registration of Petitioner’s application. (32 TTABVUE 182).
Because Petitioner introduced a copy of its application file, Respondent did not need to
introduce a second copy of it. (38 TTABVUE 32-116). See Trademark Rule 2.122(a), 37 C.F.R.
§ 2.122(a).
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5. Notice of reliance on a copy of Petitioner’s application for Serial No.
87664359 for the mark GT OMEGA RACING and design;16

6. Notice of reliance on Respondent’s responses to Petitioner’s requests for
admission;17

7. Notice of reliance on Respondent’s responses to Petitioner’s
interrogatories;18

8. Notice of reliance on photograph’s of Respondent’s office chairs
Respondent produced in response to Petitioner’s request for production
of documents;19 and

9. Notice of reliance on copies of Respondent’s invoices Respondent
produced in response to Petitioner’s request for production of
documents.20

B. Respondent’s testimony and evidence.
1. Testimony declaration of Peng Wu, Respondent’s President;21 and

2. Testimony declaration of Tommy SF Wang, Respondent’s attorney.22

16 32 TTABVUE 243- 325. The USPTO cited Respondent’s Registration No. 5170770 involved
as a Section 2(d) bar to the registration of Petitioner’s application. (32 TTABVUE 268).
Because Petitioner introduced a copy of its application file, Respondent did not need to
introduce a second copy of it. (38 TTABVUE 118-201). See Trademark Rule 2.122(a), 37
C.F.R. § 2.122(a).
17 34 TTABVUE 5-20. A party may introduce only an admission to a request for admission
through a notice of reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). A denial
or statement that the responding party cannot respond to the request does not establish the
truth or falsity of the assertion, but rather leaves the matter for proof at trial. Life Zone Inc.
v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials to requests for
admission inadmissible because “unlike an admission (or a failure to respond which
constitutes an admission), the denial of a request for admission establishes neither the truth
nor the falsity of the assertion, but rather leaves the matter for proof at trial.”). As such, we
have considered only the admissions to the requests for admission.
18 34 TTABVUE 22-34.
19 34 TTABVUE 48-98.
20 33 TTABVUE 100-127 (Confidential).
21 37 TTABVUE 4-12.
22 37 TTABVUE 15-140.
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II. Standing
As noted above, the parties stipulated that Petitioner has standing.23
III. Priority
“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches
to” Respondent’s involved registration, and Petitioner, the alleged prior user, bears
the burden of proving its claim of priority by a preponderance of the evidence. Id.;
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
“To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion…. These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981).
In the absence of evidence establishing earlier use of its mark, a party may rely
for priority purposes on the filing date of the application that matured into its

23 29 TTABVUE 9.
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registration. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c). See also Brewski
Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard
Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980).
Respondent filed the underlying application for the registration at issue on
November 22, 2016, claiming May 1, 2016 as its date of first use of its mark anywhere
and in commerce. Peng Wu, Respondent’s President, testified, “[Respondent] has
used the GTRACING Mark on goods offered for sale and sold by [Respondent] in the
United States since at least as early as the dates set forth in the registration and
applications [sic].”24 However, in its brief Respondent takes the position that it has
been using the mark GTRACING and design since 2011, but does not cite to any
testimony or other evidence supporting that earlier date of first use.25 Rather, Peng
Wu testified that Respondent “has been in the gaming chair business since 2011” and
that its “Amazon storefront contains the following statement: ‘GTRACING has been
in business since 2011 as a professional manufacturer specializing in gaming chairs
and office chairs,’” citing Exhibit 1 (a copy of Respondent’s Amazon webpage).26
Respondent printed its Amazon webpage, designated Exhibit 1, on March 9, 2020;
however, it is not evidence that Respondent used the mark GTRACING and design
as a trademark to identify its chairs in 2011. In addition, Respondent’s earliest

24 Peng Wu Decl. ¶6 (37 TTABVUE 5). Petitioner elected not to cross examine Respondent’s
witness.
25 Respondent’s Brief, p. 6 (40 TTABVUE 7).
26 Peng Wu Decl. ¶5 and Exhibit 1 (37 TTABVUE 4-5 and 7).
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invoice supporting the sale of GTRACING and design chairs is December 10, 2016.27
Respondent, in its brief, did not explain the discrepancy, nor why the December 10,
2016 invoice is not evidence of Respondent’s first use of the mark in the United States.
Because Peng Wu’s testimony that Respondent used its mark since at least as
early as the dates set forth in its application and registration is clear, specific, and
has not been contradicted, we find that [May 1, 2016] is Respondent’s priority date.
Petitioner filed the underlying application for his pleaded registration on
November 9, 2015. Thus, Petitioner has priority for the mark in his pleaded
registration, GT OMEGA in standard character form.
In addition, Petitioner testified that he has used the mark GT OMEGA RACING,
the subject of application Serial No. 87639287, for chairs and the chair element of
cockpit simulators since August 15, 2010, and that he has used the mark GT OMEGA
RACING and design, the subject of application Serial No. 87664359 for chairs since
September 4, 2013.28 However, the earliest invoice that Petitioner introduced for the
sale of a chair to a customer in the United States features the mark GT OMEGA
RACING and design and is dated April 9, 2013.29 Accordingly, we find that Petitioner
first used its GT OMEGA RACING and design mark as of April 9, 2013.

27 33 TTABVUE 102 (Confidential). Petitioner’s request for production of documents No. 8
reads as follows: “All documents or communications that relate to refer to the first use date
of the Respondent’s Marks.” 34 TTABVUE 43.
28 Petitioner’s Decl. ¶¶8 and 9 (31 TTABVUE 5). Respondent elected not to cross examine
Petitioner.
29 Petitioner’s Decl. Exhibit 2 (30 TTABVUE 72) (Confidential). From this invoice support we
can infer that potential U.S. customers viewed Petitioner’s website advertising the sale of
chairs identified by the GT OMEGA RACING and design mark. See Petitioner’s Decl. Exhibit
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Petitioner has proven its priority for the mark in his pleaded registration and his
common law use for GT OMEGA RACING and design.
IV. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019), quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997), quoting DuPont,
177 USPQ at 567. “Not all of the DuPont factors are relevant to every case, and only
factors of significance to the particular mark need be considered.” Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), quoting In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). “Each case must be decided on

1 (31 TTABVUE 41-53) (dated October 7, 2013). As of this date, Petitioner’s website did not
identify a U.S. distributor or list its prices in U.S. dollars.
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its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v.
Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir.
2017) (“The likelihood of confusion analysis considers all DuPont factors for which
there is record evidence but ‘may focus … on dispositive factors, such as similarity of
the marks and relatedness of the goods.’”), quoting Herbko Int’l, 64 USPQ2d at 1380.
A. The similarity or dissimilarity and nature of the goods.
The description of goods in Respondent’s registration is “Chairs; Cots; Desks;
Furniture; Furniture of metal; Office furniture; Seats; Serving trolleys; Sofas; Stools.”
The description of goods in Petitioner’s pleaded registration for the mark GT
OMEGA, in standard character form, is, inter alia, “Furniture; office furniture;
chairs; metallic and non-metallic furniture including office furniture.” Because both
descriptions of goods include furniture, office furniture, and chairs, the goods are in
part identical.
Under this DuPont factor, Petitioner need not prove, and we need not find,
similarity as to each product listed in the descriptions of goods. It is sufficient for our
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likelihood of confusion analysis that we find any item encompassed by the description
of goods in a particular class in the registrations related. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA
Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v.
Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011),
judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014).
Petitioner’s common law rights in its GT OMEGA RACING and design mark are
limited to the actual goods on which its mark is used. As noted above, in the analysis
of priority, Petitioner testified that he has used through his company GT Omega
Racing Ltd. (GTOR Ltd) the common law mark GT OMEGA RACING to identify
chairs.30
8. Chairs and the chair element of cockpit simulators
bearing the GT OMEGA mark (Reg. No. ‘131) and the GT
OMEGA RACING [block letters] mark (Ser. No. ‘287) have
been offered for sale and sold by GTOR Ltd continuously in
the United States through the website of GTOR Ltd at
www.gtomegaracing.com from 8/15/2010 through the
present.
9. Chairs bearing the GT OMEGA RACING Design Mark
(Ser. No. ‘359) mark have been offered for sale and sold by
GTOR Ltd continuously in the United States through the
website of GTOR Ltd www.gtomegaracing.com from
9/4/2013 through the present.
We reproduce below a representative example of Petitioner’s chair:31

30 Petitioner’s Decl. ¶¶3, 8 and 9 (31 TTABVUE 4-5). Petitioner testified that he is the sole
shareholder of GTOR Ltd.
31 Petitioner Decl. Exhibit 1 (31 TTABVUE 23).
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Respondent contends that there are substantial differences between the goods of
the parties.
While Respondent and Petitioner both sell furniture, it is
clear that Petitioner sells a much wider variety of goods
than does Respondent. As such, the goods are not legally
identical. Moreover, given the fact that Petitioner has not
proven the strength or fame of Petitioner’s Marks, there
should be little, if any, weight given to this factor in a
likelihood of confusion analysis.32 [Internal citations
omitted].
Because the chairs identified in Respondent’s description of goods are not
restricted or limited in any way, the chairs listed in Respondent’s description of goods
are broad enough to encompass the more specific type of chair sold by Petitioner
under its common law mark. Cf. In re Solid State Design Inc., 125 USPQ2d 1409,

32 Respondent’s Brief, p. 12 (40 TTABVUE 13).
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1412-15 (TTAB 2018) (where the goods in an application or registration are broadly
described, they are deemed to encompass all the goods of the nature and type
described therein); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025
(TTAB 2015) (where the goods in an application or registration are broadly described,
they are deemed to encompass all the goods of the nature and type described therein);
Venture Out Props. LLC v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1893
(TTAB 2007). In fact, Respondent’s chairs are very similar to Petitioner’s chair. We
reproduce below an example of one of Respondent’s chairs:33

33 Wang Decl. Exhibit 3 (37 TTABVUE 30).
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We find that the goods are in part identical as to both Petitioner’s pleaded
registration and common law mark.
B. Established, likely-to-continue channels of trade and classes of
consumers.

Because the goods described in Respondent’s registration and Petitioner’s pleaded
registration are in part identical, we presume that the channels of trade and classes
of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of
trade to same class of purchasers) (cited in Cai, 127 USPQ2d at 1801 (“With respect
to similarity of the established trade channels through which the goods reach
customers, the TTAB properly followed our case law and ‘presume[d] that the
identical goods move in the same channels of trade and are available to the same
classes of customers for such goods….’”); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same); United
Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese
Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011).
The same presumptions do not apply when we are comparing Petitioner’s common
law use of the mark GT OMEGA RACING and design. In analyzing trade channels
and classes of consumers for Petitioner’s chairs and the products listed in
Respondent’s description of goods, where, as here, there are no limitations or
restrictions in Respondent’s description of goods, we must presume that Respondent’s
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goods move in all channels of trade that would be normal for such goods, and that
they would be purchased by all potential customers, including the channels of trade
and classes of consumers for Petitioner’s chairs. See Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Paula Payne Prods. Co.
v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Respondent contends that the channels of trade are distinct because Respondent
sells its products through its own website, Amazon.com, and eBay while Petitioner
sells its product exclusively through its own website.34 There are several problems
with Respondent’s contention. First, we must compare Respondent’s and Petitioner’s
respective goods as the parties identified them in their registrations. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Notwithstanding Respondent’s argument
and evidence regarding the actual scope of its own goods and Petitioner’s commercial
use of his mark, we may not limit, by resort to extrinsic evidence, the scope of goods
as identified in Respondent’s registration or Petitioner’s pleaded registration. E.g., In
re Dixie Rests. Inc., 41 USPQ2d at 1534; In re Fisher Scientific Co., 440 F.2d 43, 169
USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 SPQ2d 1645, 1646 (TTAB
2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).

34 Respondent’s Brief, pp. 12-13 (40 TTABVUE 13-14), citing Peng Wu Decl. ¶7 (37 TTABVUE
5) and Petitioner’s Decl. ¶¶8-9 (31 TTABVUE 5).
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Second, although the parties’ current business practices may be quite narrow,
they may change at any time from, for example, company website sales to trade show
sales or sales through brick and mortar stores. See CBS, Inc., 218 USPQ at 199, citing
San Fernando Elec. Mfg, Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ
1, 2 (CCPA 1977) (registrant’s rights are tied to its description of goods, not its
business practices); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ
435, 438 (CCPA 1965) (present sales methods of distribution are not conclusive
inasmuch as at some time in the future parties may wish to extend their business
practices).
Finally, assuming arguendo that the parties sell their products through different
methods of distribution, they sell their products to at least some of the same classes
of consumers (e.g., “individuals who play electronic games”).35
We find that the established, likely-to-continue channels of trade and classes of
consumers are similar.
C. Conditions under which the parties make sales.
Respondent contends that Petitioner sells a luxury product with a retail price of
$250 to $500,36 while, on the other hand, Respondent sells a low-cost racing chair that
retails in the $100 range.37 In addition, Respondent introduced five reviews of gaming

35 Petitioner’s Decl. ¶12 (31 TTABVUE 5); Peng Wu Decl. ¶5 (37 TTABVUE 5).
36 Respondent’s Brief, p. 13 (40 TTABVUE 14), citing Petitioner’s Decl. ¶12 (31 TTABVUE
5).
37 Id., citing 37 TTABVUE 29-140. However, Respondent’s Amazon.com webpage advertises
the sale of Respondent’s chairs at prices in the range of $129-$175. Peng Wu Decl. Exhibit 1
(37 TTABVUE 9-10). In addition, according to the Techguided.com website the “GTRacing
GTBEE series chair is a $160 chair,” (37 TTABVUE 34), and according to the Mashable.com
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chairs (i.e., techguided.com,38 ultimategamechair.com,39 topbestspec.com,40
mashable.com,41 and YouTube.com42) that Respondent asserts is evidence “that
gaming chair purchasers often do extensive research prior to investing in a particular
chair.”43
The problem with Respondent’s contention is that, as noted above, Respondent
relies on extrinsic evidence regarding the chairs the parties sell, rather than on the
description of goods in its registration or Petitioner’s pleaded registration. We cannot
resort to extrinsic evidence to read limitations into the identification of goods (i.e.,
restricting the products to gaming chairs and restricting the price of the chairs). In
re i.am.symbolic, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The Board, thus, improperly read limitations
into the registration”); In re Thor Tech, 90 USPQ2d 1634, 1638 (TTAB 2009) (“We
have no authority to read any restrictions or limitations into the registrant’s
description of goods.”). Therefore, we may not limit the price of Respondent’s chairs

website, the GTRacing Ergonomic Gaming Chair is priced at $160 on Amazon.com (37
TTABVUE 118).
38 37 TTABVUE 30-41.
39 37 TTABVUE 42-50.
40 37 TTABVUE 51-109.
41 37 TTABVUE 110-136.
42 37 TTABVUE 137-140.
43 Respondent’s Brief, p. 13 (40 TTABVUE 14).
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or assume that Respondent’s customers are discriminating purchasers given the
absence of any such restrictions, limitations, or explanations in the description of
goods. See Bercut-Vandervoort & Co., 229 USPQ at 764 (evidence that relevant goods
are expensive wines sold to discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or registration).
The conditions under which sales the parties make sales are a neutral DuPont
factor.
D. Instances of actual confusion
Petitioner contends that it has introduced “[a]t least sixteen instances of actual
consumer confusion as to the source of the goods,” including 14 instances of post-sale
confusion of customers who contacted Petitioner to inquire or complain about issues
or malfunctions of Respondent’s products.44 The excerpts from the emails reproduced
are representative:
•I have a chair (GTRacing Speed Series) that I ordered 3
months ago from Amazon.com. The chair is defective. The
part that seats the base with the rollers is getting pushed
so far through the hole that the hydraulic cylinder is
dragging on the floor and scratching it (As well as making
rolling around harder). Is there a way to get it
replaced/repaired?45
___
•Product

44 Petitioner’s Brief, p. 24 (36 TTABVUE 25) citing Petitioner’s Decl. ¶¶ 28-29 and Exhibit 8
(31 TTABVUE 10 and 110-135).
45 31 TTABVUE 110.
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GTracing Ergonomic Office Chair Racing Chair Backrest
and Seat Height Adjustment Computer Chair With Pillows
Recliner Swivel Rocker Tilt E-sports Chair (Black/Blue)
Purchase Date
January 15th, 2018
Issue:
Rip in the seam of the lumbar support cushion. Photograph
attached. Requesting replacement of the lumbar support
cushion.46
___
•I found out about this brand on amazon.com
They have listed the GTracing Ergonomic Office Racing
Chair for around $110 USD
I’m wondering why this chair is far cheaper than the chairs
listen (sic) on your website?
Are they older style chairs you no longer sell?47
Respondent dismisses Petitioner’s evidence of purported actual confusion as
reflecting the “inattentiveness of the consumer rather than any actual confusion.”
A consumer could accidentally misspell Respondent’s name
when searching for Respondent’s website and the query
could thus result in a list of websites that are unaffiliated
with Respondent, such as that of Petitioner’s.48
Respondent’s name is Wudi Industrial (Shanghai) Co., Ltd. and its website is
gtracingchair.com.49 Petitioner does business through his wholly owned corporation

46 31 TTABUVUE 111
47 31 TTABVUE 121.
48 Respondent’s Brief, p. 16 (40 TTABVUE 17).
49 Peng Wu Decl. ¶ 7 (37 TTABVUE 5).
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GT Omega Racing Limited aka GTOR Ltd. and his website is gtomegaracing.com.
The URLs for the parties’ websites are similar enough that consumers could confuse
them. Nevertheless, at the very least, Petitioner’s purported evidence of actual
confusion is illustrative of how consumers may perceive the marks of the parties and
is useful in our analysis of the similarity or dissimilarity of the marks.
E. Strength of Petitioner’s marks.
In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc., 622
F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured
both by its conceptual strength (distinctiveness) and its marketplace strength
(secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d
1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its
inherent strength and its commercial strength); Tea Bd. of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. 2020) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899.
In other words, it is similar to acquired distinctiveness.
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For purposes of analysis of likelihood of confusion, a mark’s renown may “var[y]
along a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v.
Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017)
(internal quotations omitted). The proper standard is the mark’s “renown within a
specific product market,” id., and “is determined from the viewpoint of consumers of
like products,” id. at 1735, and not from the viewpoint of the general public.
We turn first to the inherent or conceptual strength of Petitioner’s registered mark
GT OMEGA and his common law mark GT OMEGA RACING and design. We focus
our analysis on the word portion of Petitioner’s common law mark.
We evaluate the intrinsic nature of a mark by determining where it lies along the
generic-descriptive-suggestive-arbitrary-fanciful continuum of words. Word marks
that are arbitrary, fanciful, or suggestive are “held to be inherently distinctive.” Wal-
Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000).
See also, In re Chippendales USA, Inc., 96 USPQ2d at 1684 (“In general, trademarks
are assessed according to a scale formulated by Judge Friendly in Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759 (2d Cir. 1976), which
evaluates whether word marks are ‘arbitrary’ or ‘fanciful,’ ‘suggestive,’ ‘descriptive,’
or ‘generic.’”).
The RANDOM HOUSE UNABRIDGED DICTIONARY (2019) defines the term GT, inter
alia, as “grand touring car,” “an automobile in the style of a coupe, usually seating
two but occasionally four, and designed high-speed.”50

50 37 TTABVUE 18.
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The RANDOM HOUSE UNABRIDGED DICTIONARY defines the word “Omega” as “the
24th and last letter of the Greek alphabet” and “the last of any series; the end.”51
Finally, the RANDOM HOUSE UNABRIDGED DICTIONARY defines “Race” as, inter alia,
“a contest of speed, as in running, riding, driving or sailing.”52
During the prosecution of Petitioner’s applications for its common law marks, the
USPTO submitted evidence showing that Petitioner’s chairs – and Respondent’s
chairs – are racing-style chairs.53
In addition, Respondent introduced copies of three previously registered marks
including the letters GT or G and the word racing for products other than furniture.
We list the registrations below:
•Registration No. 3318575 for the mark G-T-R RACING GAME and design for
“downloadable software, specifically, computer programs,” in Class 9;54
•Registration No. 5075457 for the mark GT RACING, in standard character form,
for “automotive exhaust pipe,” in Class 7;55 and
•Registration No. 2829390 for the mark G-RACING, in typed drawing form, for
“parts for land vehicles, namely, wheels; vehicle body parts namely, bumpers,

51 37 TTABVUE 20.
52 37 TTABVUE 21.
53 32 TTABVUE 203-206, 280-281, 289-292, and 298-302.
54 37 TTABVUE 24.
55 37 TTABVUE 26.
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fenders, side panels and spoilers; vehicle interiors, namely automotive interior trim,
steering wheels, pedals,” in Class 12.56
The third-party registrations introduced by Respondent are of limited probative
value because they do not cover furniture. See In re Thor Tech Inc., 90 USPQ2d at
1639 (the third-party registrations are of limited probative value because the goods
identified in the registrations appear to be in fields which are far removed from the
goods at issue). See also Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc.,
937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (“None of the third party
marks and uses of ACE made of record are nearly as closely related to the activities
of the parties as the virtually identical uses of the parties are to each other.”); Key
Chems., Inc. v. Kelite Chems. Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972)
(“Nor is our conclusion altered by the presence in the record of about 40 third-party
registrations which embody the word “KEY”. The great majority of those registered
marks are for goods unrelated to those in issue, and there is no evidence that they
are in continued use. We, therefore, can give them but little weight in the
circumstances present here”); SBS Prods. Inc. v. Sterling Plastic & Rubber Prods.
Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988) (“[E]ven if evidence of such third-party
use were submitted, it would be of no aid to respondent herein where the third-party
usage was for goods unrelated to either petitioner’s skin care products or respondent’s
stuffing box sealant”).

56 37 TTABVUE 27.
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In addition, three third-party registrations without any evidence of use is well
short of the showing the Court of Appeals for the Federal Circuit found convincing in
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) and Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
We find that Petitioner’s marks GT OMEGA and GT OMEGA RACING are
suggestive and, therefore, inherently distinctive.
The evidence regarding the commercial strength of Petitioner’s GT OMEGA and
GT OMEGA RACING chairs is meager. There have been minimal sales.57 Petitioner
did not introduce any testimony or evidence regarding its advertising, marketing, or
promotional expenditures. Petitioner testified that he “both sold and submitted
without cost chairs and simulators with chair elements bearing various GT OMEGA
RACING Marks to various individuals in the United States who provided both
unsolicited (purchased product) and solicited (free product) media exposure of the GT
OMEGA RACING chairs and simulators in YouTube videos from 2010 through the
present.”58 The YouTube screen shots that Petitioner introduced as Exhibit 4 post the

57 Petitioner’s Decl. ¶24 (30 TTABVUE 9) (Confidential).
58 Petitioner’s Decl. ¶19 and Exhibit 4 (31 TTABVUE 6-8 and 57-84). In paragraph No. 19,
Petitioner provided links to YouTube videos. Internet links are not probative. See TV Azteca,
S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1789 n.15 (“The Board does not accept Internet
links as a substitute for submission of a copy of the resulting page.”). See also In re Olin Corp.,
124 USPQ2d 1327, 1331 n.15 (TTAB 2017); In re Powermat Inc., 105 USPQ2d 1789, 1791
(TTAB 2013). Parties are required to transfer exhibits consisting of YouTube videos to an
appropriate electronic form such as a DVD or CD for introduction into evidence. TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 703.01(i) (2019) (citing Hunter Indus.,
Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not override
Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and
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number of views for the videos ranging from 3,900-493,000 views.59 However, the
number of views is hearsay. See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031,
1040 (TTAB 2010) (internet documents are admissible only to show what has been
printed, not the truth of what has been printed). In any event, while the number of
views are substantial, there is no testimony or other evidence to put them into context
(e.g., Petitioner’s market share or the number of views compared to the views of
YouTube videos of competitors, if any).
The commercial strength of Petitioner’s GT OMEGA and GT OMEGA RACING
and design marks fall on the weaker end of the spectrum “from very strong to very
weak.”
F. The similarity or dissimilarity of the marks.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion.”) (citation omitted).

audio recordings of evidence such as commercials may be submitted on CD-ROM)), appeal
dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016).
59 Petitioner’s Decl. ¶ 20 (31 TTABVUE 8).
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In comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai, 127 USPQ2d at 1801 (quoting Coach Servs., 101 USPQ2d
at 1721). See also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A.,
685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co.
v. JFD Elec. Components Corp., 196 USPQ at 3; Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Because the goods at issue are chairs, including chairs for use
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in playing electronic games, the average purchaser is an ordinary consumer,
including consumers who play electronic games.
Respondent’s mark is GTRACING and design reproduced below:

The mark in Petitioner’s pleaded registration is GT OMEGA in standard character
form and Petitioner’s common law mark is GT OMEGA RACING and design
reproduced below:

While the marks are not identical, Respondent’s mark and
Petitioner’s marks GT OMEGA and are similar in appearance and
sound because they start with term “GT.” Respondent’s mark and Petitioner’s
common law mark also share the word “Racing.”
While Respondent’s and Petitioner’s common law mark
have different stylizations, because a side-by-side comparison is not
the test, the similarities of the word portions outweigh the differences. In this regard,
consumers perceive Respondent’s mark as GT RACING. For example, the misdirected
emails sent to Petitioner from Respondent’s customers refer to Respondent’s mark as
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GTRacing60 and GTracing.61 Respondent’s counsel introduced product reviews
referring to Respondent’s product as GTRacing62 and GT RACING.63 Finally,
Respondent referred to its trademark as GTracing on some of its invoices64 and
eBay.65
The mark in Petitioner’s pleaded registration GT OMEGA is in standard character
form. Petitioner may display his standard character form mark in any manner,
regardless of the font style, size, or color. Petitioner might, at any time in the future,
display it in a manner similar to Respondent’s mark. In re Viterra Inc., 101 USPQ2d
at 1909-11; Citigroup Inc. v. Capital City Bank Grp., Inc., 98 USPQ2d at 1259;
Squirtco v. Tomy Corp., 216 USPQ at 939 (rejecting argument that for purposes of
determining whether two marks are similar, a mark in a typed drawing (equivalent
to modern standard character format) is distinct from such mark in a logo format;
“[b]y presenting its mark in a typed drawing, a difference cannot legally be asserted
by that party” (emphasis in original)); In re RSI Sys., LLC, 88 USPQ2d 1445, 1448
(TTAB 2008).
The marks also have the same meaning and engender the same commercial
impression (i.e., a grand touring racing-style chair). In addition, because the word

60 30 TTABVUE 418, 420, 426, 430, 432 (confidential).
61 30 TTABVUE 419, 425, 429, 431, 433 (confidential).
62 37 TTABVUE 30, 112, 118.
63 37 TTABVUFE 42 and 137.
64 33 TTABVUE 102, 105-115, 118-122, and 126 (Confidential).
65 33 TTABVUE 103 (Confidential).
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“Omega” is defined as “the last of any series,” consumers are likely to perceive GT
OMEGA RACING and design as being the latest in the GT RACING line of chairs.66
We find that the marks are similar in their entireties in terms of appearance,
sound, connotation and commercial impression.
G. Conclusion
Despite the facts that Petitioner’s marks are suggestive and commercially weak,
because the marks are similar, the goods are identical, and the goods are offered in
the same channels of trade to the same classes of consumers, we find that
Respondent’s mark for “Chairs; Cots; Desks; Furniture; Furniture
of metal; Office furniture; Seats; Serving trolleys; Sofas; Stools” is likely to cause
confusion with Petitioner’s registered mark GT OMEGA, in standard character form,
for “Furniture; office furniture; chairs; metallic and non-metallic furniture including
office furniture,” and Petitioner’s common law mark for chairs,
specifically, racing-style chairs.
Decision: The Petition for Cancellation is granted.

66 Thus, we disagree with Respondent’s contention that the word “Omega” serves to
distinguish Respondent’s mark from Petitioner’s marks because they do not share any
meanings that would confuse consumers as to the source of the goods. Respondent’s Brief, p.
10 (40 TTABVUE 11).