World Triathlon Corp.v.Traditional Medicinals, Inc.

Trademark Trial and Appeal Board

Nov 3, 2008

No. 91110391 (T.T.A.B. Nov. 3, 2008)

Hearing: July 29, 2008 Mailed: November 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

World Triathlon Corp.
v.
Traditional Medicinals, Inc.
_____

Opposition No. 91110391
to application Serial No. 75249885
_____

Frank R. Jakes and Joseph J. Weissman of Johnson, Pope,
Bokor, Ruppel & Burns, LLP for World Triathlon Corp.

Jay H. Geller of Jay H. Geller, PC for Traditional
Medicinals, Inc.
______

Before Holtzman, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On March 3, 1997 applicant, Traditional Medicinals,
Inc., filed an application to register on the Principal
Register the mark IRON WOMAN (in typed or standard
characters with IRON disclaimed) based upon its assertion of
a bona fide intent to use the mark in commerce in connection
with “dietary and nutritional supplements” in International
Class 5 and “herb teas” in International Class 30.
Registration has been opposed by World Triathlon Corp.
(“opposer”). As grounds for opposition, opposer asserts in
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91110391
2
its second amended notice of opposition that it is the owner
of numerous IRON-formative marks, including the following,
previously used and registered on the Principal Register by
opposer and its predecessors in interest, for the following
goods and services:

for “entertainment services-namely, presentation of athletic
contests featuring running, swimming and biking” in
International Class 41;1

for “watches and chronometers sold in association with
contests consisting of running, biking and swimming” in
International Class 14;2

with a disclaimer of “NUTRITION” for “food and vitamin
supplements” in Class 5;3
IRONMAN TRIATHLON (typed or standard characters)
for “non-carbonated soft drinks, namely bottled water” in

1 Registration No. 1353313 issued on August 6, 1985. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
2 Registration No. 2350149 issued on May 16, 2000. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
3 Registration No. 2325508 issued on March 7, 2000. Section 8
affidavit accepted; Section 15 affidavit acknowledged.

Opposition No. 91110391
3
International Class 32;4
IRONWOMAN (standard characters)
for “t-shirts, sweatshirts, denim shirts and hats, marketed
in association with contests consisting of running, biking
and swimming” in International Class 25;5 and
IRON GIRL (typed or standard characters)
with a disclaimer of “GIRL” for “clothing and physical
fitness apparel for the general female consumer market,
namely, sport tops, tanktops, t-shirts, sweatshirts,
jackets, warm-up suits, sweatpants, pants, shorts, leotards,
leggings, tights, bodysuits, sweatbands, headbands, hats,
gloves, and socks” in International Class 25.6
Opposer argues that it has made use of its IRON-
formative marks in connection with numerous goods and
services since prior to any date of first use upon which
applicant may rely; that its IRONMAN and IRONMAN TRIATHLON
marks have achieved fame and notoriety in the United States
prior to the filing of the involved application; and that
applicant’s mark, when used in connection with applicant’s
goods, so resembles opposer’s IRON-formative marks for its
recited goods and services as to be likely to cause
confusion, to cause mistake, and to deceive. In addition,

4 Registration No. 2571690 issued on May 21, 2002.
5 Registration No. 2450736 issued on May 15, 2001. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
6 Registration No. 2787785 issued on December 2, 2003.

Opposition No. 91110391
4
opposer asserted a claim of dilution under Section 43(c) of
the Trademark Act.
Applicant’s answer consists of a general denial of the
allegations in the second amended notice of opposition.
Pleadings and Evidentiary Matters
In its second amended notice of opposition, opposer
pleaded ownership of 12 registrations, as well as 10 pending
applications, all for IRON-formative marks. During its
testimony period, opposer introduced by notice of reliance
copies of 29 of its registrations showing status and title
thereof, including 3 registrations that subsequently issued
from its pleaded applications, to show that such
registrations are valid and subsisting. In addition,
opposer introduced 19 of the same registrations as Exhibit E
during the first testimony deposition of its executive vice
president of marketing and licensing, Mr. Ken Strominger.
We note that applicant did not object to the introduction of
these registrations during the deposition of Mr. Strominger,
but rather stipulated that they are true and accurate
copies, and are owned by opposer.7 We further note that
applicant did not object in its brief to opposer’s

7 Strominger Testimony 1, p. 49-50.
Opposition No. 91110391
5
introduction by notice of reliance or testimony of its
registrations, but discussed such registrations in relation
to the issues of priority and likelihood of confusion.
We find, therefore, that the parties have tried by
implied consent the issues arising from the unpleaded
registrations that were introduced by opposer during its
testimony period. See, for example, Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1652 n.2 (TTAB
2002). See also TBMP §507.03(b). Nonetheless, we further
find that inasmuch as 9 of the above registrations
subsequently have been cancelled, opposer may only rely upon
the 20 live registrations properly made of record during its
testimony period.
The Record
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case consists of the pleadings and the
file of the involved application. In addition, during its
original testimony period, opposer took the testimony
deposition, with exhibits, of its vice president of
marketing and licensing, Mr. Ken Strominger. During its
reset testimony period, opposer took a second testimony
deposition of Mr. Strominger. In addition, opposer
submitted three notices of reliance. During its assigned
testimony period, applicant took the testimony depositions
of its chief executive officer, Mr. Drake Sadler and its
Opposition No. 91110391
6
vice president of research and development, Mr. Josef
Brickman. In addition, applicant submitted two notices of
reliance. During its assigned rebuttal testimony period,
opposer submitted the testimony deposition of its president,
Mr. Benjamin Fertic.
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief. In addition, counsel for
both parties presented arguments at an oral hearing held
before the Board on July 29, 2008.
Opposer’s Standing and Priority of Use
Because opposer has properly made 20 of its
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Moreover, because 20 of opposer’s registrations are of
record, Section 2(d) priority is not an issue in this case
as to the IRON-formative marks therefor and goods and
services recited in those registrations. See King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Opposition No. 91110391
7
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Fame of Opposer’s IRONMAN and IRONMAN TRIATHLON Marks
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s IRONMAN and IRONMAN TRIATHLON marks
and to give great weight to such evidence if it exists. See
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d
1322, 54 F.2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
Opposition No. 91110391
8
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Upon careful review of the record in this case, we are
not persuaded that opposer’s IRONMAN and IRONMAN TRIATHLON
marks are famous. It is the duty of a plaintiff asserting
that its mark is famous to clearly prove it.
Opposer has testified and introduced evidence that it
has used its IRONMAN and IRONMAN TRIATHLON marks
continuously since 1979 in connection with its athletic
events. In 1980, ABC began broadcasting opposer’s athletic
event annually on its Wide World of Sports program. NBC
began coverage of the event in 1991. By 2003, coverage of
opposer’s championship event on NBC won nine Sports Emmy
Awards. Articles concerning opposer and its athletic events
have appeared numerous publications including The New York
Times, USA Today, Street & Smith’s, The Wall Street Journal,
The Washington Post, and Sports Illustrated. Opposer
subsequently has used its IRON-formative marks in connection
with a variety of goods and services. In addition,
opposer’s Timex IRONMAN watch, introduced in 1986, currently
is the best-selling sports watch in the world.
Opposition No. 91110391
9
Opposer’s evidence supports a finding that its IRONMAN
and IRONMAN TRIATHLON marks have achieved a level of media
exposure and recognition at least with regard to its
athletic events. On the other hand, we have little, if any,
evidence to show the level of brand awareness that has
resulted from opposer’s media exposure and recognition. For
instance, we do not have figures regarding household
penetration or brand awareness that would tend to establish
that opposer provides products and services of lasting
value. For comparison, we note the evidence of record in
the Kenner Parker and Recot cases:
In the two- to seven-year-old age group, one in
every two children currently owns a PLAY-DOH
product. A survey showed that 60% of mothers
named PLAY-DOH for modeling compound without any
prompting. One witness characterized PLAY-DOH as
a “piece of gold” which has lasted over thirty
years as a successful toy — a very unusual
occurrence in the toy business.

Kenner Parker, 963 F.2d at 351, 22 USPQ2d at 1455.

Recot … has manufactured and sold a wide variety
of snack food under its mark, FRITO-LAY, for over
thirty years. Recot now sells products nationwide
in supermarkets, grocery stores, mass
merchandisers, and wholesale clubs, convenience
stores, food services, and vending machines… . In
any given year, up to 90 percent of American
households purchase at least one FRITO-LAY brand
snack.

Recot, 214 F.3d at 1326, 54 USPQ2d at 1896.
We do not have a similar record in this case.
Opposer’s testimony and evidence fall far short of
demonstrating the extent to which its length of use of its
Opposition No. 91110391
10
marks, media exposure, or marketing efforts translate into
widespread recognition of the IRONMAN and IRONMAN TRIATHLON
marks among the general public. That is to say, the
testimony and evidence do not establish that opposer’s
IRONMAN and IRONMAN TRIATHLON marks are widely recognized
outside the field of triathlons. Indeed, it is unclear to
what extent, if any, opposer’s goods and services are
recognized among the general public.
Accordingly, we find on this record that the evidence
fails to establish that opposer’s IRONMAN and IRONMAN
TRIATHLON marks are famous for purposes of our likelihood of
confusion determination. Nevertheless, we find that the
evidence is sufficient to show that opposer’s marks have
achieved at least some degree of recognition and strength in
the sports market.
Family of Marks
Next, we turn to opposer’s contention that it owns a
family of “IRON-gender/age formative marks” for a variety of
products and services. We find that the requisite showing
of a family of marks has not been made. The fact that
opposer has used and registered several marks incorporating
the prefix IRON, is not in itself sufficient to establish
the existence of a family of marks. See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991). As stated by the Court “There must be a
Opposition No. 91110391
11
recognition among the purchasing public that the common
characteristic is indicative of a common origin of the
goods.” J & J Snack Foods, supra at 1891. Accordingly,
opposer must demonstrate that the marks asserted to comprise
the family, or a number of them, have been used and
advertised in promotional material or in everyday sales
activities in such a manner as to create common exposure and
thereafter recognition of common ownership based upon a
feature common to each mark. See Truescents LLC v. Ride
Skin Care LLC, 81 USPQ2d 1334 (TTAB 2006) citing American
Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457, 461
(TTAB 1978).
In this case, opposer has introduced very little
evidence to support its allegations that its marketing
efforts have created common exposure to its IRON-formative
marks such that the purchasing public recognizes the common
origin of its goods and services provided thereunder.
Opposer’s testimony and evidence establishes that it has
marketed a wide variety of products under its IRON-formative
marks.8 Opposer has introduced a small number of
advertisements suggesting its attempts to market its goods
under its IRON-formative marks together and also to market

8 Strominger Testimony 1, p. 54, Exhibit K; Strominger Testimony
2, p. 66-76, 133-4 Exhibits Z, BB, CC.

Opposition No. 91110391
12
such goods at its athletic events.9 However, such evidence
is insufficient to establish public exposure to opposer’s
marks in such a manner that demonstrates recognition of
common ownership thereof based upon the IRON feature common
to each mark. Cf. Sports Authority Michigan Inc. v. PC
Authority Inc., 63 USPQ2d 1782, 1801 (TTAB 2002).
Opposer further asserts that its “family of marks has
been established through these similar presentations along
with the millions of dollars in advertising on and sales of
products containing the marks” (brief, p. 23). However,
opposer has not introduced evidence of its sales and
advertising expenditures to support such allegations, but
merely relied upon statements in its testimony depositions
and assertions in its brief to support its claims. In
short, there is insufficient evidence that opposer has used
and advertised in promotional material or in everyday sales
activities its IRON-formative marks in such a manner as to
create a family of marks.
Therefore, we will determine the issue of likelihood
of confusion based on the individual marks that are the
subject of opposer’s pleaded registrations. In our
analysis, we will concentrate our discussion of the issue of
likelihood of confusion on those of opposer’s registrations

9 Id.
Opposition No. 91110391
13
which recite goods most similar to those of applicant,
namely, Registration No. 2325508 for the mark

“food and vitamin supplements” in Class 5; and Registration
No. 2571690 for the mark IRONMAN TRIATHLON in typed or
standard characters for “non-carbonated soft drinks, namely
bottled water” in International Class 32.10
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s IRONMAN TRIATHLON NUTRITION
and IRONMAN TRIATHLON marks are similar or dissimilar when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot, supra. The test, under the
first 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

10 We note, in that regard, that while opposer has made of record
a copy of its above-noted Registration No. 2450736 for the mark
IRONWOMAN, which is virtually is identical to the mark in the
involved application, there is no evidence of record that the
various items of clothing identified as goods therein are related
to the goods recited in applicant’s application.

Opposition No. 91110391
14
as to the source of the goods offered under the respective
marks is likely to result.
In this case, we find that applicant’s mark, IRON
WOMAN, is similar to opposer’s marks, IRONMAN TRIATHLON
NUTRITION in stylized form and IRONMAN TRIATHLON. In
comparing the marks, we find that IRONMAN is the dominant
element of opposer’s marks, and accordingly it is entitled
to more weight in our analysis. It is a well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The mark in opposer’s Registration No. 2325508 consists
of the word IRONMAN in large, bold letters with the letter M
stylized in the form of a man, and the words TRIATHLON
NUTRTION beneath in smaller letters. In addition to being
displayed in smaller type than IRONMAN, the descriptive word
NUTRITION is disclaimed, and thus appears to serve
relatively little source-identifying function. As a result,
TRIATHLON NUTRITION is less visually significant than
Opposition No. 91110391
15
IRONMAN and NUTRITION is less distinctive in the mark in
opposer’s Registration No. 2325508.
Further, with regard both to opposer’s IRONMAN
TRIATHLON NUTRITION mark in stylized form and its IRONMAN
TRIATHLON mark in its Registration No. 2571690, we note that
IRONMAN is also the first word in both the marks. Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988)(“…[it is] a matter of some importance since
it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered.”).
See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of
this strong distinctive term as the first word in both
parties’ marks renders the marks similar, especially in
light of the largely laudatory (and hence non-source
identifying) significance of ROYALE.”). Thus, the word
IRONMAN, being the first word in both of opposer’s marks, is
most likely to make a strong impression upon consumers and
to be remembered thereby.
Applicant’s mark, IRON WOMAN, is highly similar in
appearance and sound to the dominant IRONMAN portion of
opposer’s IRONMAN TRIATHLON NUTRITION and IRONMAN TRIATHLON
marks. Both applicant’s mark and those of opposer
convey the sense of persons possessed of strong body, will,
and resolve, i.e., men and women of iron. The mere
Opposition No. 91110391
16
difference in gender between the parties’ marks is
insufficient to create significantly different commercial
impressions given the overall similarities in the marks.
The marks respectively suggest men and women with wills and
bodies of iron, and thus are similar in connotation and
convey highly similar overall commercial impressions. As a
result, we find that, when viewed as a whole, the
similarities between applicant’s IRON WOMAN mark and
opposer’s IRONMAN TRIATHLON NUTRITION mark in stylized form
and IRONMAN TRIATHLON mark outweigh the dissimilarities.
In view thereof, this du Pont factor favors opposer.
The Goods
We turn now to the second du Pont factor, i.e., the
similarity or dissimilarity of the goods identified in the
involved application and opposer’s Registration Nos. 2325508
and 2571690. With respect to the goods, it is well
established that the goods or services of the parties need
not be similar or competitive, or even offered through the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods or
services of the parties are related in some manner, and/or
that the conditions and activities surrounding the marketing
of the goods or services are such that they would or could
be encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
Opposition No. 91110391
17
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
The goods identified in opposer’s Registration No.
2325508 for its IRONMAN TRIATHLON NUTRITION mark are “food
and vitamin supplements” in International Class 5. The
goods identified in opposer’s Registration No. 2571690 for
its IRONMAN TRIATHLON mark are “non-carbonated soft drinks,
namely bottled water” in International Class 32.
Applicant’s goods under its mark are identified as “dietary
and nutritional supplements” in International Class 5 and
“herb teas” in International Class 30.
We note that, as identified, the parties’ Class 5 goods
are closely related, if not virtually identical, products
inasmuch as both identify food or dietary supplements. In
that regard, we hereby take judicial notice of the following
definition of “dietary supplement:” “the wide assortment of
minerals, vitamins, and sundry herbs that are taken as
nutritional supplements to regular food.”11 As defined,

11 The American Heritage New Dictionary of Cultural Literacy, 3rd
Ed., 2005. The Board may take judicial notice of dictionary
definitions, including online dictionaries which exist in printed
format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
n.3 (TTAB 2002). See also University 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).
Opposition No. 91110391
18
opposer’s food and vitamin supplements as well as
applicant’s dietary and nutritional supplements both are
used to provide extra nutrition beyond a consumer’s regular
food diet. Thus, on the face of the identification of
goods, the Class 5 supplements identified in opposer’s
Registration No. 2325508 are related to the supplements
identified in Class 5 of the involved application. As a
result, we find that these goods are highly similar as
identified in the involved application and pleaded
registration.
However, opposer’s “non-carbonated soft drinks, namely
bottled water” identified in its Registration No. 2571690
are not so closely related to applicant’s “herb teas.” Both
obviously may be ingested as beverages, but beyond that
commonality, there is nothing on the face of the respective
identifications of goods to support a finding these goods
are similar for our likelihood of confusion analysis. We
further note that opposer has introduced no evidence to
support its contention that these goods are related, or that
they typically emanate from a common source. The mere
opinion of its witness, Mr. Strominger, is insufficient to
establish a relationship between these goods, and opposer
merely relies upon such conclusory assertions as
“[a]pplicant’s applied-for ‘herb teas’ goods description is
also too close to [opposer’s] established areas of trade for
Opposition No. 91110391
19
its IRON-gender/age formative marks” (brief, p. 27).
Inasmuch as we have found above that opposer has failed to
demonstrate that it owns a family of IRON-formative marks,
and further because opposer has introduced no evidence that
its bottled water is related to applicant’s herb teas, there
is nothing in the record to support a finding that these
goods are related.12
In view thereof, this du Pont factor favors opposer as
to the goods identified in Class 5 of the application but
favors applicant as to the goods identified in Class 30 of
the application.
Channels of Trade
Because we have found that the parties’ Class 5 goods
are closely related, and because there are no recited
restrictions as to their channels of trade or classes of
purchasers, we must assume that opposer’s food and vitamin
supplements on the one hand and applicant’s dietary and
nutritional supplements on the other are available in all
the normal channels of trade to all the usual consumers of
such goods, and that the channels of trade and the
purchasers for the parties’ Class 5 goods would overlap.
See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d

12 Nor do we find that opposer has introduced any evidence to
establish that applicant’s herb teas are related to any of the
goods for which opposer asserts common law use of its IRON-
formative marks.

Opposition No. 91110391
20
1910 (TTAB 2000). See also Octocom Systems, Inc. v. Houston
Computers Services Inc., supra (“The authority is legion
that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods
set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of
purchasers to which the sales of goods are directed.”) See
also Paula Payne Products v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”)
We find that, as a result of the foregoing, this du
Pont factor also favors opposer as to the goods identified
in Class 5.
Conditions of Sale
The next du Pont factor discussed by the parties is
that of the conditions of sale. Applicant asserts that
because it “carefully targets and nurtures its consumer
base, the evidence establishes that its customers are
careful, sophisticated purchasers and not impulse
purchasers” (brief, p. 39). However, as identified, neither
opposer’s nor applicant’s goods are so highly specialized as
to exclude casual purchase. Nor is there any evidence that
Opposition No. 91110391
21
applicant’s goods are of a type that would be limited by
expense or marketing channels in such a manner as to
restrict their availability solely to exclusive,
sophisticated purchasers. As such, we must presume that
both parties’ goods are available to all types of purchaser,
including casual, impulse buyers. Moreover, it is settled
that even sophisticated purchasers are not necessarily
knowledgeable in the field of trademarks or immune from
source confusion. See In re Decombe, 9 USPQ2d 1812, 1814-
1815 (TTAB 1988).
Thus, this du Pont factor also favors opposer.
Registration of Similar Marks
In its brief, applicant refers to a number of third-
party IRON-formative marks registered in connection with
various goods and services. We note, however, that most of
these third-party registrations are for goods and services
that are far removed from the goods at issue herein. As a
result, we cannot say that these registrations demonstrate
that opposer’s IRONMAN TRIATHLON NUTRITION and IRONMAN
TRIATHLON marks are so weak or entitled to such a limited
scope of protection as to allow registration of a
confusingly similar mark, especially for goods that are
nearly identical. Because of the differences primarily in
the goods and services identified in the submitted third-
party registrations, we find that, consistent with our above
Opposition No. 91110391
22
discussion of the fame of opposer’s marks, that its marks at
issue herein are entitled to more than a narrow scope of
protection that would be afforded a weaker or less
distinctive mark.13
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion. Applicant asserts
that the absence of actual confusion for more than eight
years suggests no likelihood of confusion. However, it is
not necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). Moreover, on the record before us there is no
evidence as to whether there has been any opportunity for
confusion to occur. Thus, this du Pont factor is neutral.
Summary
We have carefully considered all of the evidence
pertaining to priority of use and the relevant du Pont
factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.

13 We also point out that third-party registrations are not
evidence that the marks shown therein are in use. See Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462
(CCPA 1973).

Opposition No. 91110391
23
We conclude that opposer has established its standing
to bring this proceeding as well as its priority of use.
We further conclude that consumers familiar with
opposer’s “food and vitamin supplements” under its IRONMAN
TRIATHLON NUTRITION mark in its Registration No. 2325508
would be likely to believe, upon encountering applicant’s
involved mark for its nearly identical “dietary and
nutritional supplements,” that the parties’ goods originate
with or are associated with or sponsored by the same entity.
The du Pont factors of the similarity between the marks and
the nearly identical nature of the goods weigh strongly in
opposer’s favor.
However, we also conclude that because opposer failed
to introduce any evidence that its “non-carbonated soft
drinks, namely bottled water” under its IRONMAN TRIATHLON
mark in its Registration No. 2571690 or, for that matter,
that any of its goods or services recited under any of its
20 marks of record, are related to applicant’s “herb teas,”
consumers encountering the parties’ marks for these goods
are unlikely to believe that they originate from the same
entity.

Opposition No. 91110391
24
Dilution
Given our determination that there is a likelihood of
confusion herein, we decline to reach a determination on the
question of dilution in this proceeding.14
DECISION: The opposition is sustained as to “dietary
and nutritional supplements” recited in International Class
5, and registration to applicant is refused on the ground of
priority and likelihood of confusion as to those goods. The
opposition is dismissed as to “herb teas” recited in
International Class 30, and application Serial No. 75249885
will proceed to issuance of a Notice of Allowance as to
those goods.

14 We note in addition that while opposer presented arguments in
its brief with regard to its claim of dilution, counsel for
opposer indicated at oral argument that it was opposer’s
intention to withdraw its dilution claim.