Hybrid Athletics opposed an application to register the mark shown below left, for "athletic apparel, namely,shirts, pants, shorts, jackets, footwear,hats and caps," claiming a likelihood of confusion with its common law mark shown below right, for shirts, shorts, and jackets. The goods overlap, but are the marks similar? How do you think this came out? Hybrid Athletics, LLC v. Hylete LLC, Opposition No. 91213057 (December 15, 2016) [not precedential].

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Opposer, in its notice of opposition, pleaded ownership of a pending application for its mark, which application proceeded to registration in February 2014. However, opposer never introduced a copy of the issued registration. Nor did it introduce a copy of another registration that it claimed to own. It therefore had to rely on its common law rights.

The identify of the goods weighed heavily in favor of opposer. Opposer can claim only those channels of trade and classes of consumer which it established by way of evidence. However, since there were no restrictions no channels of trade in the subject application, the Board must presume that applicant's goods travel in all appropriate channels of trade for such goods, to the usual classes of consumers, "which necessarily includes Opposer’s actual channels of trade and classes of consumers for the identical goods." In any case, the evidence showed that the channels do indeed overlap: the parties have each attempted to market its fitness apparel to the same consumers at CrossFit events.

The parties acknowledged that each mark is a stylized version of the letter "H," and, the Board observed, "this plays a role in the overall commercial impressions engendered by the marks." [To me, the mark on the left looks more like a bat or a guitar pick than the letter "H" - ed.].

Upon viewing the marks once, consumers attempting to recall or verbalize either mark at a later date will find it easier to describe the marks, in general, as being fanciful representations of the letter H, rather than attempting to remember and relate the particular design features of the marks.

Turning to the marks, the Board found "at least one design similarity in the marks, namely, they each have a 'stretched wide' letter appearance; that is, the letter H bows out in the center top portions of both marks." However, the marks are usually not encountered side-by-side by consumers.The Board concluded that marks "are overall more similar than not," and that the differences between the marks "are outweighed by the fact that are both stylized versions of the same letter, H, and will thus have similar commercial impressions."

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Opposer asserted that there have been 14 instances of actual confusion in the three or four years that the parties' goods have been concurrently in the marketplace. Some were merely inquiries as to whether there was a relationship between the parties, but others involved individuals with experience in the fitness industry who were already familiar with opposer's mark and expressed source confusion upon encountering Applicant’s H design mark.

The Board deemed this actual confusion evidence to be "highly persuasive" on the Section 2(d) issue. "The fact that these individuals were actually confused certainly raises the stakes that less-informed consumers are likely to be confused." (Emphasis by the Board).

Balancing the relevant duPont factors, the Board found confusion likely, and it sustained the opposition.