Yupoong, Inc.v.Neo Sports Lab

Trademark Trial and Appeal Board

Mar 27, 2019

OPP (T.T.A.B. Mar. 27, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Yupoong, Inc.

v.

Neo Sports Lab
_____

Opposition No. 91234268
_____

Alexander Butterman and Hyung Gyu Sun of Dunlap, Bennett & Ludwig PLLC,
for Yupoong, Inc.
Neo Sports Lab, pro se.
_____

Before Cataldo, Wellington, and Lynch,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Neo Sports Lab (“Applicant”) seeks registration on the Principal Register of the
mark FLEXUFIT in standard characters for the following goods:1
Athletic sporting goods, namely, athletic wrist and joint supports, wrist
and forearm braces for athletic use, elbow supports for athletic use,
shoulder supports for athletic use, neck supports for athletic use, head
supports for athletic use, back supports for athletic use, knee supports for

1 Application Serial No. 87202637 was filed on October 13, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b) on the basis of an allegation of a bona fide intention to
use the mark in commerce.
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athletic use, ankle and foot supports for athletic use in International Class
28.

Yupoong, Inc. (“Opposer”) opposes registration of Applicant’s applied-for mark
under Section 2(d) of the Trademark Act (the “Act”), 15 U.S.C. § 1052(d), on the
ground that FLEXUFIT so resembles Opposer’s registered FLEXFIT (in standard
characters) and FLEXFIT-formative marks, when used on or in connection with the
goods identified in the application, to cause confusion, to cause mistake, or to deceive
consumers. From Opposer’s pleaded registrations, we find the following one to be the
most relevant for purposes of our analysis, infra, concerning any likelihood of
confusion:2
FLEXFIT for “hats and caps” in International Class 25.3

Applicant filed an answer, denying the likelihood of confusion claim.4
Only Opposer introduced evidence at trial and filed a brief on the merits of this
case. Nevertheless, we are mindful that Applicant is not required to submit evidence
or to file a trial brief. The burden rests on Opposer, as plaintiff in this proceeding, to
establish its standing and to prove the likelihood of confusion claim by a
preponderance of the evidence.

2 1 TTABVUE 13-64 (copies of all pleaded registrations attached). We focus on the identified
registration in light of the nature of the evidence of record and because Opposer’s arguments
in its brief primarily concern use of its mark on headwear, such as hats and caps.
3 Reg. No. 2379790 issued on August 22, 2000; renewed.
4 4 TTABVUE.
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I. Standing and Priority
A threshold issue in every inter partes case is the plaintiff’s standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). In this case, Opposer has established its standing
by properly making of record its pleaded registrations,5 forming the basis of a
likelihood of confusion claim that is not wholly without merit. Lipton Indus. Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Opposer
possesses a real interest in the proceeding beyond that of a mere intermeddler, and
has a reasonable basis for its belief of damage resulting from registration of the
subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999).
We further note that because Opposer is the owner of pleaded registrations that
have been made of record, priority is not an issue in this opposition as to the marks
and goods covered by the registrations vis-à-vis Applicant’s mark and goods. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7 (TTAB 2012).

5 Opposer made the pleaded registrations of record by attaching information regarding the
registrations from the Office’s TSDR electronic database, to the notice of opposition, pursuant
to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).
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II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all probative facts in evidence that are relevant to the factors set forth in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Zheng
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018)
(du Pont “articulated thirteen factors to consider when determining likelihood of
confusion”). Similarity of the marks and relatedness of the goods tend to be the two
key determinants of likelihood of confusion. 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.”).
A. Similarity of the Marks
The first du Pont factor is “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
Applicant’s FLEXUFIT mark is extremely similar to Opposer’s FLEXFIT mark,
differing by just the insertion of the letter U in Applicant’s mark. The Board has often
found that marks differing by only a single letter are confusingly similar. See Apple
Comput. v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (VTUNES.NET vs.
ITUNES); Interlego AG v. Abrams/Gentile Entm't Inc., 63 USPQ2d 1862, 1863
(TTAB 2002) (“Obviously, the marks LEGO and MEGO are extremely similar in that
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they differ simply by one letter.”); In re Total Quality Grp. Inc., 51 USPQ2d 1474,
1476 (TTAB 1999) (“Applicant’s mark STRATEGYN and registrant’s mark
STRATEGEN are phonetic equivalents and differ by only one letter.”). Here, the
letter U is positioned in the middle of Applicant’s mark and may go unnoticed by
consumers. The marks will also be verbalized very similarly given they both begin
with FLEX and end with FIT and will be difficult to distinguish aurally.
Finally, in terms of commercial impression or connotation and in the context of
both parties’ goods, we find the marks are each suggestive of an adjustable or
stretching (“flex”) quality for fitting purposes. In other words, FLEXUFIT may be
understood to suggest that Applicant’s athletic joint supports may adjust to get a good
fit for the wrist, shoulder, neck, etc. Likewise, Opposer’s use of FLEXFIT suggests
that its hats and headwear are also flexible and may adjust to the right fit for the
wearer’s head.
Accordingly, we find the parties’ marks are very similar in their overall
appearance, sound, connotation and commercial impression.
B. Similarity or Dissimilarity of the Goods
The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration.’” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting du
Pont, 177 USPQ at 567). Our analysis under this factor is based on the identifications
of goods in the application and registrations. Id.; Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014).
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“[L]ikelihood of confusion can be found ‘if the respective products are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
As far as evidence showing relatedness of goods or services, the
Board has long held that:
[U]se-based, third-party registrations, although not evidence that the marks
shown therein are in use or that the public is familiar with them, nonetheless
have probative value to the extent that they serve to suggest that the goods
listed therein are of a kind which may emanate from a single source under a
single mark.
Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1432 (TTAB 2013)
(finding that third-party registrations covering both wine and water were probative
of the relatedness of those beverages). See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988).
Opposer has submitted 50 third-party, use-based registrations showing that
various entities have registered their marks for goods identified as either hats,
headwear, or caps (like that described in Opposer’s registrations) AND athletic
supports, pads or guards “or the like which Applicant could consider similar to its
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own goods.”6 Applicant has admitted that “all goods … recited in a registration are
produced or offered by the owner of that registration.”7
The registrations serve to suggest that goods like Opposer’s headwear, caps and
hats, and goods like Applicant’s athletic supports, pads and guards may emanate
from the same source under the same mark. In re Davey Prods. Pty Ltd., 92 USPQ2d
1198, 1202-03 (TTAB 2009) (21 third-party registrations probative of relatedness of
subject goods); In re Anderson, 101 USPQ2d 1912, 1919-20 (TTAB 2012) (numerous
third-party registrations probative of relatedness); cf. In re C.H. Hanson Co., 116
USPQ2d 1351, 1356 (TTAB 2015) (although five third-party registrations were
“limited in number,” “they nonetheless ha[d] probative value to the extent they serve
to suggest that the identified goods are of a kind which are produced or marketed by
a single source under a single mark”); In re Davia, 110 USPQ2d 1810, 1817 n.15
(TTAB 2014) (two third-party registrations of marks for pepper sauce and natural
sweeteners were probative of relatedness of pepper sauce and agave sweeteners
because record showed that agave “is a natural sweetener”). Particularly given
Applicant’s admission, we find this evidence sufficient for purposes of showing at
least a viable relationship between the parties’ respective goods.

6 Copies of the third-party registrations were submitted by Opposer under a notice of reliance
(5 TTABVUE). Opposer also submitted Applicant’s admissions regarding these registrations,
including admissions regarding the significance of these registrations and the nature of the
goods covered by the registrations (6 TTABVUE).
7 6 TTABVUE 18 (Admission Nos. 63 and 65).
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C. Sophistication of Purchasers
The fourth du Pont factor is the “conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ v. ‘careful, sophisticated purchasing.” du Pont, 177 USPQ at
567. Precedent requires that we base our decision on the least sophisticated potential
purchasers. Stone Lion Capital Partners, LP, 110 USPQ2d 1163. The evidence shows
that Applicant’s FLEXUFIT wrist and knee supports can be purchased for
approximately $14-178 and hats or caps, as identified in the pleaded registrations,
can be purchased for less than $20.9 Even if these goods are not subject to impulse
buying, these are not high price points and, in the absence of evidence showing a
higher degree of purchasing care will be exercised, we find this du Pont factor to be
either neutral or slightly weighing in favor of finding a likelihood of confusion.
D. Conclusion and Summary of du Pont Factors
All of the relevant du Pont factors for which we have evidence either support a
finding of a likelihood of confusion, or are neutral.10 The marks are very similar in
nearly all respects, including their suggestive connotations, and the involved goods
are related. The goods may be purchased at relatively low price points by consumers
exercising a normal degree of care. Ultimately, we find on the basis of the record as a

8 9 TTABVUE 13 (Dowden affidavit Ex. A).
9 12 TTABVUE 9 (Lee declaration Ex. B).
10 In particular, we note Opposer’s argument regarding “Applicant’s intent to confuse” (16
TTABVUE 26-27); however, based on the record, we cannot make a finding as to any bad
faith intent on Applicant’s part in the adoption of its mark. Opposer also argued that the
parties’ goods “travel or will travel through identical trade channels.” Id. at 24-25. We did
not find the evidence regarding trade channels to be so persuasive and this factor remains
neutral or, at best, weighs only slightly in favor of finding a likelihood of confusion.
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whole that Opposer has proven by a preponderance of the evidence that consumers
familiar with its FLEXFIT mark for hats and caps who encounter Applicant’s
FLEXUFIT mark for athletic supports are likely to believe mistakenly that those
goods originate with, or are sponsored or authorized by the same source.
Decision: The opposition is sustained.