Before Moore, Reyna, and Wallach. Appeal from the Trademark Trial and Appeal Board.

Summary: Absent exceptional circumstances, an argument raised for the first time on appeal is waived.

In October 2013, Hybrid Athletics, LLC filed a notice of opposition to Hylete, LLC’s stylized “H” design mark on the grounds of likelihood of confusion with its stylized “H” mark. Hybrid alleged its stylized “H” mark was used in connection with fitness classes and health club services. Hybrid also alleged that it had common law rights based on its use of the same mark on athletic apparel since August 1, 2008. Hybrid’s examples of its use of the stylized “H” mark on athletic apparel also included the words “Hybrid Athletics” and several dots.

During the opposition proceedings, Hylete focused on the differences in appearance between the two stylized “H” design and argued there was no likelihood of confusion between the designs. The Board sustained Hybrid’s opposition to Hylete’s registration determining that Hylete’s mark would likely cause confusion with Hybrid’s “previously used mark … on some of the same goods[.]” The Board’s decision was based solely on Hybrid’s prior common law rights relating to its use of the mark on athletic apparel. Hylete filed a request for reconsideration of the Board’s decision, but did not argue that the Board’s analysis should have compared its mark to anything other than Hybrid’s stylized “H” design mark. The Board denied the request for rehearing.

On appeal, Hylete argued that the Board should have characterized Hybrid’s mark as a composite common law mark, including Hybrid’s stylized “H” design as well as the words “Hybrid Athletics” and series of dots below the stylized “H”. Hybrid responded that this argument was not raised before the Board and are therefore waived. The Federal Circuit agreed that Hylete’s argument was waived and affirmed the Board’s decision.

The Federal Circuit noted that federal appellate courts do not consider new issues that were not presented to the lower tribunal absent exceptional circumstances. Specifically, the Federal Circuit noted that arguments made for the first time on appeal may be considered (1) when new, retroactive legislation is passed while an appeal is pending, (2) when there is a change is jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court, (3) when the issue is properly before the court but the parties did not argue the correct law, the court may nevertheless apply the correct law, and (4) where the party appeared pro se before the lower court, a court of appeals may be less stringent in requiring the issue to have been raised below. The Federal Circuit found that none of these circumstances applied to Hylete’s argument. Hylete also contended that its argument regarding the common law mark was not waived because the Board raised the issue of Hybrid’s common law rights, “sua sponte,” in its final decision. The Federal Circuit disagreed, finding that Hylete’s failure to raise this argument in its request for reconsideration negates its argument.