The Federal Circuit upheld a Trademark Trial and Appeal Board (“Board”) decision refusing registration of an athletic apparel company’s trademark, holding that the trademark applicant waived its key arguments by not raising them before the Board. Hylete LLC v. Hybrid Athletics, LLC (Fed. Cir. 2019)

BACKGROUND

Applicant/Appellant Hylete LLC applied to register its stylized H mark for “athletic apparel, namely, shirts, pants, shorts, jackets, footwear, hats and caps.”

Although the application was approved during the USPTO’s examination stage, it was later opposed by Hybrid Athletics, LLC, owner of cross-fit style gyms. Hybrid based its opposition on its prior-filed pending application for a stylized H for fitness classes and health club services (which the Board disregarded for technical reasons) and common law rights in that mark for apparel.

As evidence of use of its common law mark for apparel, Hybrid submitted several images:

In its briefing before the Board, Hylete focused on the differences in appearance between the parties’ respective stylized H marks. Hybrid, for its part, focused its briefing on the similarities of the two stylized H marks, the goods, channels of trade, etc.

The Board held for Hybrid, finding that Hylete’s mark likely would cause trademark confusion with Hybrid’s senior mark. Although the Board acknowledged that specific differences can be seen when the marks are compared side by side, ultimately the fact that both are stylized versions of the same letter outweighed those differences. The Board determined that the marks had similar commercial impressions and concluded that Hylete’s mark is likely to cause confusion with Hybrid’s previously used mark.

Hylete filed a Request for Reconsideration of the Board’s final decision. The Request for Reconsideration argued that the Board erred by giving undue weight to evidence of actual confusion, and cited specific objections about how certain testimony was handled. However, the Request for Reconsideration did not raise any objection on the Board’s comparison of the parties’ respective stylized H marks. Hylete did not argue that Hybrid’s common law mark was not simply the stylized H, but rather a composite of the stylized H and the wording “HYBRID ATHLETICS,” with a series of dots beneath it (“composite mark”).

THE FEDERAL CIRCUIT DECISION

On appeal, Hylete argued that the Board erred in its analysis by comparing the two stylized H marks, rather than analyzing the differences between Hylete’s stylized H and the composite mark.

Hybrid responded that Hylete never raised the question of likelihood of confusion with the composite mark until appeal, and that therefore, those arguments were waived. The Court agreed.

The Court noted the limited circumstances in which considering arguments for the first time on appeal is appropriate, such as when (i) new legislation is passed while an appeal is pending, (ii) there is a change of jurisprudence, or (iii) a party appeared pro se before the lower tribunal. None of those limited circumstances occurred in this case.

Hylete did not dispute that it did not present to the Board – but plainly could have presented – the question of whether Hylete’s mark was confusingly similar to the composite mark, even in the Request for Reconsideration. Because these arguments were raised for the first time on appeal, they were waived.

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This case emphasizes the need to pay careful attention to legal arguments presented before the Board and in district courts. Perhaps it goes without saying that a party needs to develop its arguments and/or theories of the case long before its final briefs before the Board or on motions in district courts. And, at the very least, raise any arguments held back (or overlooked) on a request for reconsideration. It simply is too late to raise such arguments on appeal.