Bergsman*
Coggins
Dunn
This Opinion Is Not a
Precedent of the TTAB
Mailed: August 9, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Eric J. Figueroa
v.
Suzanne Evans Coaching of SC, LLC
Opposition No. 91216695
_____
Eric J. Figueroa
v.
Suzanne Evans Coaching of South Carolina, LLC1
Cancellation No. 92060070
_____
Suzanne Evans Coaching of South Carolina, LLC
v.
Eric J. Figueroa
Cancellation No. 92063341
_____
Wendy Peterson of Not Just Patents LLC for Eric J. Figueroa.
Thomas L. Moses of Southeast IP Group, LLC,
for Suzanne Evans Coaching of SC, LLC.
_____
1 We presume that Suzanne Evans Coaching of SC, LLC and Suzanne Evans Coaching of
South Carolina, LLC are the same entity, which is identified as Suzanne Evans Coaching of
SC, LLC or Applicant in this order. Applicant should file in TEAS the appropriate request
to correct its clerical error in the appropriate application or registration file whichever is
incorrect.
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Before Bergsman, Coggins and Dunn, Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
Suzanne Evans Coaching of SC, LLC (Applicant) filed an application on the
Principal Register for the mark the mark HELL YEAH (in standard characters) for
the services listed below:
Advertising and marketing; Promoting the goods and
services of others by arranging for businesses to affiliate
their goods and services with the goods and services of
third parties by means of sponsorship relationships, in
Class 35; and
Educational and entertainment services, namely,
providing motivational and educational speakers in the
field of self- and personal improvement, in Class 41.2
Applicant is also the owner of the registered mark HELL YEAH STUDIOS (in
standard characters) for the services listed below:
Film and video production of business marketing videos
excluding the field of music; Production of webinars and
business marketing videos for business or commercial
purposes for others; Film and video production consulting
services relating to business marketing videos; Film
editing of business marketing videos; Film studios for
producing business marketing videos; Photography
services relating to business marketing, in Class 41.3
Applicant disclaimed the exclusive right to use the word Studios.
2 Application Serial No. 85768262, filed October 31, 2012, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicants claim of first use anywhere and
first use in commerce as of March 2011 for both classes.
3Registration No. 4593280, registered August 26, 2014, based on an application filed
February 9, 2012.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Eric J. Figueroa (Opposer) filed a Notice of Opposition against the registration of
Applicants mark HELL YEAH and a Petition to Cancel the registration for
Applicants mark HELL YEAH STUDIOS under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d). Opposer claimed ownership of the registered marks listed below:4
1. Registration No. 4193922 for the mark YEAH BABY (in standard characters)
for advertising agencies; advertising and marketing; advertising and publicity
services, namely, promoting the goods, services, brand identity and commercial
information and news of third parties through print, audio, video, digital and
on-line medium, in Class 35;5
2. Registration No. 4180641 for the mark YEAH (in standard characters) for
advertising and marketing; advertising and publicity services, namely,
promoting the goods, services, brand identity and commercial information and
news of third parties through print, audio, video, digital and on-line medium,
in Class 35;6
3. Registration No. 4165146 for the mark YEAH BABY (in standard characters)
for advertising and marketing services, namely, promoting the goods and
services of third parties through print, audio, video, digital and on-line medium
in the agricultural, aircraft, airline, apparel, appliance, automobile, banking,
book, business, computer, construction, cosmetic, educational, electrical,
electronics, energy, engineering, environmental, financial, food, hardware,
health, insurance, internet, investment, legal, machinery, management,
manufacturing, media, medical, news, office, pharmaceutical, real estate,
retail, shipping, software, technology, telecommunications, textile,
transportation and travel fields, not including any baby products or services,
in Class 35;7 and
4 In addition, Opposer claimed ownership of Registration No. 4083983. However, that
registration was cancelled August 17, 2018 for failure to file a Section 8 declaration of use.
This registration will be given no further consideration.
5Registered August 21, 2012; Section 8 declaration accepted. This registration is based on an
application filed December 23, 2011.
6Registered July 24, 2012; Section 8 declaration accepted. This registration is based on an
application filed June 5, 2011.
7Registered June 26, 2012; Section 8 declaration accepted. This registration is based on an
application filed August 22, 2010.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
4. Registration No. 4513265 for the mark YEAH BABY (in standard characters)
for audio broadcasting; video broadcasting, in Class 38.8
Applicant, in its Answers, denied the salient allegations in the Notice of
Opposition and Petition to Cancel and filed in the opposition proceeding a
Counterclaim to cancel Opposers pleaded registrations on the ground of fraud
because Opposer purportedly did not use his marks on all of the services listed in the
underlying applications for registration.9 Subsequently, Applicant filed an Amended
Counterclaim to cancel Opposers pleaded registrations on the grounds of
abandonment and nonuse.10
8 Registered April 15, 2014. This registration is based on an application filed April 4, 2012.
When the Notice of Opposition was filed, August 21, 2013, Opposer claimed ownership of the
underlying application for this registration (Serial No. 85589533). A plaintiff which pleads
ownership of an application in its complaint does not have to amend its pleading to assert
the resultant registration, so long as it issues before the plaintiffs testimony period closes,
as it did in this case. See Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012);
UMG Recordings Inc. v. ORourke, 92 USPQ2d 1042, 1045 (TTAB 2009). The pleading of an
application is viewed as providing sufficient notice to the defendant of the plaintiffs intention
to rely on any registration that issues from the pleaded application. See United Global Media
Grp.., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) (opposer that pleads ownership
of the underlying applications in the notice of opposition may make the registrations which
issue during the opposition of record without having to amend the notice of opposition to
assert reliance on the registrations ); UMG Recordings Inc. v. ORourke, 92 USPQ2d at 1045
n.12 (opposer that pleads ownership of application would have to make any subsequently
issued registration of record but would not have to amend notice of opposition prior to doing
so).
9The Board consolidated the opposition and cancellation proceedings in its February 11, 2015
Order (9 TTABVUE).
1023 TTABVUE. Applicant filed the Amended Counterclaim on March 14, 2016 and included
Registration No. 4513265. Nevertheless, on March 15, 2016, Applicant filed a separate
Petition to Cancel Registration No. 4513265 (Cancellation No. 92063341). That cancellation
was consolidated with Opposition No. 91216695 in the Boards April 21, 2016 Order.
26 TTABVUE.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Opposer, in his Answer, denied the salient allegations in the Amended
Counterclaim.11
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicants application file, Applicants registration file, and the
registration files of Opposers pleaded registrations which Applicant counterclaimed
to cancel. Only Opposer introduced any testimony and evidence, which is listed below:
A. Notice of reliance on Opposers pleaded registrations printed from the
USPTOs electronic database showing the current status of and title to
the registrations;12 and
B. Testimony declaration of Applicant.13
Similarly, only Opposer filed a brief.
II. Applicants Counterclaim in Opposition No. 91216695 and Petition in
Cancellation No. 92063341
A. Standing
Applicant, by virtue of its position as defendant in the opposition, has standing to
seek cancellation of the pleaded registrations. See Ohio State Univ. v. Ohio Univ.,
51 USPQ2d 1289, 1293 (TTAB 1999).
B. Findings of Fact
Applicant failed to introduce any testimony or evidence to prove the claims in its
Counterclaim and separate Petition to Cancel Opposers pleaded registrations and,
11 24 TTABVUE.
12 47 TTABVUE.
13 49 TTABVUE.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
therefore, failed to meet its burden of proof in proving abandonment or nonuse.
Accordingly, Applicants Counterclaim and separate Petition to Cancel Opposers
pleaded registrations is denied.
III. Opposers Likelihood of Confusion Claims in Opposition No. 91216695
and Cancellation No. 92060070
A. Standing
Standing is a threshold issue in every inter partes case. 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). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a real interest in the proceeding and a reasonable basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer has established his standing in both proceedings for his likelihood of
confusion claims by properly introducing into evidence his pleaded registrations.14
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000) (plaintiffs two prior registrations suffice to establish plaintiffs direct
commercial interest and its standing); N.Y. Yankees Pship v. IET Prods. & Servs.,
Inc., 114 USPQ2d 1497, 1501 (TTAB 2015).
14 53 TTABVUE 12-26, 182-196, 306-323 and 58 TTABVUE 3-20 and 145-157.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
B. Priority
Because Opposers pleaded registrations are of record, priority in the opposition
proceeding is not at issue with respect to the services identified therein. Mini Melts,
Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King
Candy Co. v. Eunice Kings Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974)).
With respect to Applicants registration, a presumption of validity attaches to
Applicants involved registration, and Opposer, the alleged prior user, bears the
burden of proving its claim of priority by a preponderance of the evidence. W. Florida
Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994);
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion . These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights. Herbko Intl, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981).
In the absence of evidence establishing earlier use of its mark, a party may rely
for priority purposes on the filing date of the application that matured into its
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
registration. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c); see also Brewski
Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard
Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980). Because Applicant did not
introduce any testimony or other evidence, the earliest date on which it may rely for
priority is February 9, 2012, the filing date for the application underlying the
registration at issue.
Opposer testified that he continuously used the marks, YEAH and YEAH BABY,
since the use in commerce dates.15 In Registration No. 4180641 and for the mark
YEAH, Opposer claimed first use anywhere as of January 24, 2012. In Registration
Nos. 4193922, 4165146, and 4513265 for the mark YEAH BABY, Opposer claimed
first use anywhere as of August 22, 2010. Opposers testimony is based on personal
knowledge and it is clear, convincing and it has not been contradicted. See Natl Bank
Book Co. v. Leather Crafted Prods., Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a partys mark when it is based
on personal knowledge, it is clear and convincing, and it has not be contradicted);
Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979)
(oral testimony may be sufficient to establish both prior use and continuous use when
the testimony is proffered by a witness with knowledge of the facts and the testimony
is clear, convincing, consistent, and sufficiently circumstantial to convince the Board
of its probative value); GAF Corp. v. Anatox Analytical Servs., Inc., 192 USPQ 576,
15 Applicants Testimony Decl. ¶2 (49 TTABVUE 5).
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Cancellation No. 92060070
Cancellation No. 92063341
577 (TTAB 1976) (oral testimony may establish prior use when the testimony is clear,
consistent, convincing, and uncontradicted). Further, Opposer corroborated his
testimony regarding priority by introducing archived webpages showing use of YEAH
BABY as of February 7, 2011.16
Opposer has proven priority of use for his registered marks with respect to both
Applicants pending application and registration.
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (DuPont) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each DuPont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commcns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.). [E]ach case must be
decided on its own facts and the differences are often subtle ones. Indus. Nucleonics
Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations
16 Applicants Testimony Decl. ¶2 and Exhibit A (49 TTABVUE 5 and 7).
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Opposition No. 91216695
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Cancellation No. 92063341
removed). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Intl Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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.); see also In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (The likelihood of confusion analysis
considers all DuPont factors for which there is record evidence but may focus on
dispositive factors, such as similarity of the marks and relatedness of the goods)
(quoting Herbko Intl, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
1. Applicants mark HELL YEAH for advertising and marketing; promoting the
goods and services of others by arranging for businesses to affiliate their goods
and services with the goods and services of third parties by means of
sponsorship relationships. (Application Serial No. 85768262, Class 35)
a. Similarity or dissimilarity and nature of the services.
Applicant is seeking to register the mark HELL YEAH for advertising and
marketing; promoting the goods and services of others by arranging for businesses to
affiliate their goods and services with the goods and services of third parties by means
of sponsorship relationships. Opposer is the owner of Registration No. 4193922 for
the mark YEAH BABY and Registration No. 4180641 for the mark YEAH both for,
inter alia, advertising and marketing. Thus, the services are in part identical.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Under this DuPont factor, the Opposer need not prove, and we need not find,
similarity as to each and every activity listed in the description of services. It is
sufficient for an opposition refusal based on likelihood of confusion that relatedness
is established for any activity encompassed by the description of services in a
particular class in the application or Opposers pleaded registration. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015); In re Aquamar,
Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (it is sufficient for finding a likelihood
of confusion if relatedness is established for any item encompassed by the
identification of goods within a particular class in the application.).
b. Established, likely-to-continue channels of trade and classes of consumers.
Because the services described in the application and Opposers registrations are
in part identical, we presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); In re Inn at St. Johns, LLC,
126 USPQ2d 1742, 1745 (TTAB 2018) (Because the services described in the
application and the cited registration are identical, we presume that the channels of
trade and classes of purchasers are the same.); United Glob. Media Grp., Inc. v.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
c. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Applicant is seeking to register the mark HELL YEAH and the marks in Opposers
pleaded registrations are YEAH and YEAH BABY. Yeah is defined as an informal
form of yes; yes is defined as a function word to express assent or agreement;
baby is defined as a noun and slang often used in address, and hell is defined
as a noun used as an intensive.17 The terms Yeah, Yeah Baby, and Hell Yeah
are all affirmances, with Yeah Baby indicating to whom the affirmance is
addressed, and Hell Yeah indicating a more intense degree of assent. Applicant has
added a term to Opposers mark which does not alter its commercial impression. The
marks YEAH, YEAH BABY and HELL YEAH share a common term, look alike,
sound alike, have the same meaning, and engender the same commercial impression.
The peripheral differences between Applicants HELL YEAH and Opposers YEAH
and YEAH BABY do not distinguish the marks.
We find that Applicants mark HELL YEAH is similar to Opposers marks YEAH
in terms of appearance, sound, meaning and commercial impression.
17 MERRIAM-WEBSTER ONLINE DICTIONARY (2019). The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), affd, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14
(TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
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Cancellation No. 92060070
Cancellation No. 92063341
d. Conclusion
Because the marks are similar, the services are in part identical and there is a
presumption that the services are offered in the same channels of trade to the same
classes of consumers, we find that Applicants mark HELL YEAH for advertising
and marketing; promoting the goods and services of others by arranging for
businesses to affiliate their goods and services with the goods and services of third
parties by means of sponsorship relationships is likely to cause confusion with
Opposers registered marks YEAH and YEAH BABY both for advertising and
marketing.
2. Applicants mark HELL YEAH for educational and entertainment services,
namely, providing motivational and educational speakers in the field of self-
and personal improvement. (Application Serial No. 85768262, Class 41)
a. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
For the reasons discussed above, we find that Applicants mark HELL YEAH is
similar to Opposers marks YEAH and YEAH BABY.
b. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register the mark HELL YEAH for educational and
entertainment services, namely, providing motivational and educational speakers in
the field of self- and personal improvement. Opposers closest pleaded registration is
Registration No. 4513265 for the mark YEAH BABY for audio broadcasting; video
broadcasting. Opposer did not introduce any testimony or evidence regarding the
relationship between these two activities, or any of Opposers other services. While it
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Cancellation No. 92060070
Cancellation No. 92063341
is theoretically possible that Opposers audio and video broadcast services encompass
or are otherwise related to Applicants providing motivational and educational
speakers in the field of self- and personal improvement, Opposer has the burden of
proving his likelihood of confusion claim by a preponderance of the evidence. Without
any evidence regarding the relationship between Applicants services and Opposers
services, we see Opposers likelihood of confusion claim as amounting to only a
speculative, theoretical possibility, notwithstanding that similar marks are involved.
Language from the Court of Appeals for the Federal Circuit is helpful in resolving
whether the services in this case are related:
We are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.
Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388,
1391 (Fed. Cir. 1992), citing Witco Chem. Co. v. Whitfield Chem. Co., Inc., 418 F.2d
1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), affg 153 USPQ 412 (TTAB 1967).
Because Opposer failed to introduce any testimony or evidence regarding the
similarity and nature of the services, Opposer failed to meet his burden of proof and,
we find that this DuPont factor weighs against finding that there is a likelihood of
confusion.
c. Established, likely-to-continue channels of trade and classes of consumers.
Opposer failed to introduce any testimony or evidence regarding the channels of
trade or classes of consumers and, therefore, Opposer failed to meet his burden of
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Cancellation No. 92060070
Cancellation No. 92063341
proof. Because there is no testimony or evidence regarding the channels of trade and
classes of consumers, we find that this DuPont factor weighs against finding that
there is a likelihood of confusion.
d. Conclusion
Despite the fact that the marks are similar, because there are no overlapping
services, and there is no testimony or evidence regarding the similarity and nature of
the services or channels of trade and classes of consumers, Opposer has failed to show
by a preponderance of the evidence that there is a likelihood of confusion between
Applicants mark HELL YEAH for educational and entertainment services, namely,
providing motivational and educational speakers in the field of self- and personal
improvement and Opposers registered mark YEAH and YEAH BABY for the listed
services.
3. Applicants mark HELL YEAH STUDIOS for film and video production of
business marketing videos excluding the field of music; production of webinars
and business marketing videos for business or commercial purposes for others;
film and video production consulting services relating to business marketing
videos; film editing of business marketing videos; film studios for producing
business marketing videos; photography services relating to business
marketing. (Registration No. 4593280, Class 41)
a. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register HELL YEAH STUDIOS for film and video
production of business marketing videos excluding the field of music; production of
webinars and business marketing videos for business or commercial purposes for
others; film and video production consulting services relating to business marketing
videos; film editing of business marketing videos; film studios for producing business
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
marketing videos; photography services relating to business marketing. Opposer has
registered YEAH and YEAH BABY both for, inter alia, advertising and publicity
services, namely, promoting the goods, services, brand identity and commercial
information and news of third parties through print, audio, video, digital and on-line
medium. While worded differently, on their face, Opposers and Applicants
registrations involve services which create video promotional materials. While
Opposer did not introduce any testimony or evidence regarding the similarity or
relatedness of the services, the registrations themselves provide the nexus between
Opposers services promoting the goods, services, brand identity of others through,
among other means, video media and Applicants video production services for
business marketing. In other words, promotional or marketing services inherently
are closely related to producing marketing materials. We find that the services of the
parties are related.
b. Established, likely-to-continue channels of trade and classes of consumers.
Likewise, because of the inherently close relationship of the services, and because
there is no limitation in Opposers registrations as to the channels of trade or classes
of consumers, it is logical that Opposer would offer hisadvertising and publicity
services, namely, promoting the goods, services, brand identity and commercial
information and news of third parties through print, audio, video, digital and on-line
medium in the same channels of trade and to the same classes of consumers as
Applicants film and video production of business marketing videos excluding the
field of music; production of webinars and business marketing videos for business or
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Cancellation No. 92060070
Cancellation No. 92063341
commercial purposes for others; film and video production consulting services
relating to business marketing videos.
c. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
The addition of the descriptive word studios to Applicants mark does not serve
to distinguish Applicants mark HELL YEAH STUDIOS from Opposers marks YEAH
and YEAH BABY. It is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See In re Detroit Athletic Co.,
903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc.,
105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (Regarding
descriptive terms, this court has noted that the descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion.)
(quoting In re Natl Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter
is often less significant in creating the marks commercial impression). There is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, such as a common dominant element, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. In re
Natl Data Corp., 224 USPQ at 751; see also In re Viterra Inc., 101 USPQ2d at 1908.
– 17 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
For the reasons discussed above, we find that Applicants mark HELL YEAH
STUDIOS is similar to Opposers marks YEAH and YEAH BABY in appearance,
sound, connotation and commercial impression.
d. Conclusion
Because the marks are similar, the services are related and the services are
offered in the same channels of trade to the same classes of consumers, we find that
Applicants mark HELL YEAH STUDIOS for film and video production of business
marketing videos excluding the field of music; production of webinars and business
marketing videos for business or commercial purposes for others; film and video
production consulting services relating to business marketing videos; film editing of
business marketing videos; film studios for producing business marketing videos;
photography services relating to business marketing is likely to cause confusion with
Opposers registered marks YEAH and YEAH BABY for, inter alia, advertising and
publicity services, namely, promoting the goods, services, brand identity and
commercial information and news of third parties through print, audio, video, digital
and on-line medium.
Decision: Applicants counterclaim to cancel Opposers pleaded registrations is
denied.
Applicants petition to cancel Opposers Registration No. 4513265 for the mark
YEAH BABY is denied.
– 18 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Opposers opposition to Applicants application (Serial No. 85768262) for the mark
HELL YEAH for the activities listed in Class 35 is sustained.
Opposers opposition to Applicants application (Serial No. 85768262) for the mark
HELL YEAH for the activities listed in Class 41 is dismissed.
Opposers petition to cancel Applicants registration for the mark HELL YEAH
STUDIOS is granted.
– 19 –
This Opinion Is Not a
Precedent of the TTAB
Mailed: August 9, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Eric J. Figueroa
v.
Suzanne Evans Coaching of SC, LLC
Opposition No. 91216695
_____
Eric J. Figueroa
v.
Suzanne Evans Coaching of South Carolina, LLC1
Cancellation No. 92060070
_____
Suzanne Evans Coaching of South Carolina, LLC
v.
Eric J. Figueroa
Cancellation No. 92063341
_____
Wendy Peterson of Not Just Patents LLC for Eric J. Figueroa.
Thomas L. Moses of Southeast IP Group, LLC,
for Suzanne Evans Coaching of SC, LLC.
_____
1 We presume that Suzanne Evans Coaching of SC, LLC and Suzanne Evans Coaching of
South Carolina, LLC are the same entity, which is identified as Suzanne Evans Coaching of
SC, LLC or Applicant in this order. Applicant should file in TEAS the appropriate request
to correct its clerical error in the appropriate application or registration file whichever is
incorrect.
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Before Bergsman, Coggins and Dunn, Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
Suzanne Evans Coaching of SC, LLC (Applicant) filed an application on the
Principal Register for the mark the mark HELL YEAH (in standard characters) for
the services listed below:
Advertising and marketing; Promoting the goods and
services of others by arranging for businesses to affiliate
their goods and services with the goods and services of
third parties by means of sponsorship relationships, in
Class 35; and
Educational and entertainment services, namely,
providing motivational and educational speakers in the
field of self- and personal improvement, in Class 41.2
Applicant is also the owner of the registered mark HELL YEAH STUDIOS (in
standard characters) for the services listed below:
Film and video production of business marketing videos
excluding the field of music; Production of webinars and
business marketing videos for business or commercial
purposes for others; Film and video production consulting
services relating to business marketing videos; Film
editing of business marketing videos; Film studios for
producing business marketing videos; Photography
services relating to business marketing, in Class 41.3
Applicant disclaimed the exclusive right to use the word Studios.
2 Application Serial No. 85768262, filed October 31, 2012, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicants claim of first use anywhere and
first use in commerce as of March 2011 for both classes.
3Registration No. 4593280, registered August 26, 2014, based on an application filed
February 9, 2012.
-2-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Eric J. Figueroa (Opposer) filed a Notice of Opposition against the registration of
Applicants mark HELL YEAH and a Petition to Cancel the registration for
Applicants mark HELL YEAH STUDIOS under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d). Opposer claimed ownership of the registered marks listed below:4
1. Registration No. 4193922 for the mark YEAH BABY (in standard characters)
for advertising agencies; advertising and marketing; advertising and publicity
services, namely, promoting the goods, services, brand identity and commercial
information and news of third parties through print, audio, video, digital and
on-line medium, in Class 35;5
2. Registration No. 4180641 for the mark YEAH (in standard characters) for
advertising and marketing; advertising and publicity services, namely,
promoting the goods, services, brand identity and commercial information and
news of third parties through print, audio, video, digital and on-line medium,
in Class 35;6
3. Registration No. 4165146 for the mark YEAH BABY (in standard characters)
for advertising and marketing services, namely, promoting the goods and
services of third parties through print, audio, video, digital and on-line medium
in the agricultural, aircraft, airline, apparel, appliance, automobile, banking,
book, business, computer, construction, cosmetic, educational, electrical,
electronics, energy, engineering, environmental, financial, food, hardware,
health, insurance, internet, investment, legal, machinery, management,
manufacturing, media, medical, news, office, pharmaceutical, real estate,
retail, shipping, software, technology, telecommunications, textile,
transportation and travel fields, not including any baby products or services,
in Class 35;7 and
4 In addition, Opposer claimed ownership of Registration No. 4083983. However, that
registration was cancelled August 17, 2018 for failure to file a Section 8 declaration of use.
This registration will be given no further consideration.
5Registered August 21, 2012; Section 8 declaration accepted. This registration is based on an
application filed December 23, 2011.
6Registered July 24, 2012; Section 8 declaration accepted. This registration is based on an
application filed June 5, 2011.
7Registered June 26, 2012; Section 8 declaration accepted. This registration is based on an
application filed August 22, 2010.
-3-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
4. Registration No. 4513265 for the mark YEAH BABY (in standard characters)
for audio broadcasting; video broadcasting, in Class 38.8
Applicant, in its Answers, denied the salient allegations in the Notice of
Opposition and Petition to Cancel and filed in the opposition proceeding a
Counterclaim to cancel Opposers pleaded registrations on the ground of fraud
because Opposer purportedly did not use his marks on all of the services listed in the
underlying applications for registration.9 Subsequently, Applicant filed an Amended
Counterclaim to cancel Opposers pleaded registrations on the grounds of
abandonment and nonuse.10
8 Registered April 15, 2014. This registration is based on an application filed April 4, 2012.
When the Notice of Opposition was filed, August 21, 2013, Opposer claimed ownership of the
underlying application for this registration (Serial No. 85589533). A plaintiff which pleads
ownership of an application in its complaint does not have to amend its pleading to assert
the resultant registration, so long as it issues before the plaintiffs testimony period closes,
as it did in this case. See Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012);
UMG Recordings Inc. v. ORourke, 92 USPQ2d 1042, 1045 (TTAB 2009). The pleading of an
application is viewed as providing sufficient notice to the defendant of the plaintiffs intention
to rely on any registration that issues from the pleaded application. See United Global Media
Grp.., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) (opposer that pleads ownership
of the underlying applications in the notice of opposition may make the registrations which
issue during the opposition of record without having to amend the notice of opposition to
assert reliance on the registrations ); UMG Recordings Inc. v. ORourke, 92 USPQ2d at 1045
n.12 (opposer that pleads ownership of application would have to make any subsequently
issued registration of record but would not have to amend notice of opposition prior to doing
so).
9The Board consolidated the opposition and cancellation proceedings in its February 11, 2015
Order (9 TTABVUE).
1023 TTABVUE. Applicant filed the Amended Counterclaim on March 14, 2016 and included
Registration No. 4513265. Nevertheless, on March 15, 2016, Applicant filed a separate
Petition to Cancel Registration No. 4513265 (Cancellation No. 92063341). That cancellation
was consolidated with Opposition No. 91216695 in the Boards April 21, 2016 Order.
26 TTABVUE.
-4-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Opposer, in his Answer, denied the salient allegations in the Amended
Counterclaim.11
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicants application file, Applicants registration file, and the
registration files of Opposers pleaded registrations which Applicant counterclaimed
to cancel. Only Opposer introduced any testimony and evidence, which is listed below:
A. Notice of reliance on Opposers pleaded registrations printed from the
USPTOs electronic database showing the current status of and title to
the registrations;12 and
B. Testimony declaration of Applicant.13
Similarly, only Opposer filed a brief.
II. Applicants Counterclaim in Opposition No. 91216695 and Petition in
Cancellation No. 92063341
A. Standing
Applicant, by virtue of its position as defendant in the opposition, has standing to
seek cancellation of the pleaded registrations. See Ohio State Univ. v. Ohio Univ.,
51 USPQ2d 1289, 1293 (TTAB 1999).
B. Findings of Fact
Applicant failed to introduce any testimony or evidence to prove the claims in its
Counterclaim and separate Petition to Cancel Opposers pleaded registrations and,
11 24 TTABVUE.
12 47 TTABVUE.
13 49 TTABVUE.
-5-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
therefore, failed to meet its burden of proof in proving abandonment or nonuse.
Accordingly, Applicants Counterclaim and separate Petition to Cancel Opposers
pleaded registrations is denied.
III. Opposers Likelihood of Confusion Claims in Opposition No. 91216695
and Cancellation No. 92060070
A. Standing
Standing is a threshold issue in every inter partes case. 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). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a real interest in the proceeding and a reasonable basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer has established his standing in both proceedings for his likelihood of
confusion claims by properly introducing into evidence his pleaded registrations.14
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000) (plaintiffs two prior registrations suffice to establish plaintiffs direct
commercial interest and its standing); N.Y. Yankees Pship v. IET Prods. & Servs.,
Inc., 114 USPQ2d 1497, 1501 (TTAB 2015).
14 53 TTABVUE 12-26, 182-196, 306-323 and 58 TTABVUE 3-20 and 145-157.
-6-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
B. Priority
Because Opposers pleaded registrations are of record, priority in the opposition
proceeding is not at issue with respect to the services identified therein. Mini Melts,
Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King
Candy Co. v. Eunice Kings Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974)).
With respect to Applicants registration, a presumption of validity attaches to
Applicants involved registration, and Opposer, the alleged prior user, bears the
burden of proving its claim of priority by a preponderance of the evidence. W. Florida
Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994);
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion . These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights. Herbko Intl, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981).
In the absence of evidence establishing earlier use of its mark, a party may rely
for priority purposes on the filing date of the application that matured into its
-7-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
registration. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c); see also Brewski
Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard
Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980). Because Applicant did not
introduce any testimony or other evidence, the earliest date on which it may rely for
priority is February 9, 2012, the filing date for the application underlying the
registration at issue.
Opposer testified that he continuously used the marks, YEAH and YEAH BABY,
since the use in commerce dates.15 In Registration No. 4180641 and for the mark
YEAH, Opposer claimed first use anywhere as of January 24, 2012. In Registration
Nos. 4193922, 4165146, and 4513265 for the mark YEAH BABY, Opposer claimed
first use anywhere as of August 22, 2010. Opposers testimony is based on personal
knowledge and it is clear, convincing and it has not been contradicted. See Natl Bank
Book Co. v. Leather Crafted Prods., Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a partys mark when it is based
on personal knowledge, it is clear and convincing, and it has not be contradicted);
Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979)
(oral testimony may be sufficient to establish both prior use and continuous use when
the testimony is proffered by a witness with knowledge of the facts and the testimony
is clear, convincing, consistent, and sufficiently circumstantial to convince the Board
of its probative value); GAF Corp. v. Anatox Analytical Servs., Inc., 192 USPQ 576,
15 Applicants Testimony Decl. ¶2 (49 TTABVUE 5).
-8-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
577 (TTAB 1976) (oral testimony may establish prior use when the testimony is clear,
consistent, convincing, and uncontradicted). Further, Opposer corroborated his
testimony regarding priority by introducing archived webpages showing use of YEAH
BABY as of February 7, 2011.16
Opposer has proven priority of use for his registered marks with respect to both
Applicants pending application and registration.
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (DuPont) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each DuPont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commcns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.). [E]ach case must be
decided on its own facts and the differences are often subtle ones. Indus. Nucleonics
Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations
16 Applicants Testimony Decl. ¶2 and Exhibit A (49 TTABVUE 5 and 7).
-9-
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
removed). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Intl Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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.); see also In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (The likelihood of confusion analysis
considers all DuPont factors for which there is record evidence but may focus on
dispositive factors, such as similarity of the marks and relatedness of the goods)
(quoting Herbko Intl, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
1. Applicants mark HELL YEAH for advertising and marketing; promoting the
goods and services of others by arranging for businesses to affiliate their goods
and services with the goods and services of third parties by means of
sponsorship relationships. (Application Serial No. 85768262, Class 35)
a. Similarity or dissimilarity and nature of the services.
Applicant is seeking to register the mark HELL YEAH for advertising and
marketing; promoting the goods and services of others by arranging for businesses to
affiliate their goods and services with the goods and services of third parties by means
of sponsorship relationships. Opposer is the owner of Registration No. 4193922 for
the mark YEAH BABY and Registration No. 4180641 for the mark YEAH both for,
inter alia, advertising and marketing. Thus, the services are in part identical.
– 10 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Under this DuPont factor, the Opposer need not prove, and we need not find,
similarity as to each and every activity listed in the description of services. It is
sufficient for an opposition refusal based on likelihood of confusion that relatedness
is established for any activity encompassed by the description of services in a
particular class in the application or Opposers pleaded registration. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015); In re Aquamar,
Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (it is sufficient for finding a likelihood
of confusion if relatedness is established for any item encompassed by the
identification of goods within a particular class in the application.).
b. Established, likely-to-continue channels of trade and classes of consumers.
Because the services described in the application and Opposers registrations are
in part identical, we presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); In re Inn at St. Johns, LLC,
126 USPQ2d 1742, 1745 (TTAB 2018) (Because the services described in the
application and the cited registration are identical, we presume that the channels of
trade and classes of purchasers are the same.); United Glob. Media Grp., Inc. v.
– 11 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
c. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Applicant is seeking to register the mark HELL YEAH and the marks in Opposers
pleaded registrations are YEAH and YEAH BABY. Yeah is defined as an informal
form of yes; yes is defined as a function word to express assent or agreement;
baby is defined as a noun and slang often used in address, and hell is defined
as a noun used as an intensive.17 The terms Yeah, Yeah Baby, and Hell Yeah
are all affirmances, with Yeah Baby indicating to whom the affirmance is
addressed, and Hell Yeah indicating a more intense degree of assent. Applicant has
added a term to Opposers mark which does not alter its commercial impression. The
marks YEAH, YEAH BABY and HELL YEAH share a common term, look alike,
sound alike, have the same meaning, and engender the same commercial impression.
The peripheral differences between Applicants HELL YEAH and Opposers YEAH
and YEAH BABY do not distinguish the marks.
We find that Applicants mark HELL YEAH is similar to Opposers marks YEAH
in terms of appearance, sound, meaning and commercial impression.
17 MERRIAM-WEBSTER ONLINE DICTIONARY (2019). The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), affd, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14
(TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
– 12 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
d. Conclusion
Because the marks are similar, the services are in part identical and there is a
presumption that the services are offered in the same channels of trade to the same
classes of consumers, we find that Applicants mark HELL YEAH for advertising
and marketing; promoting the goods and services of others by arranging for
businesses to affiliate their goods and services with the goods and services of third
parties by means of sponsorship relationships is likely to cause confusion with
Opposers registered marks YEAH and YEAH BABY both for advertising and
marketing.
2. Applicants mark HELL YEAH for educational and entertainment services,
namely, providing motivational and educational speakers in the field of self-
and personal improvement. (Application Serial No. 85768262, Class 41)
a. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
For the reasons discussed above, we find that Applicants mark HELL YEAH is
similar to Opposers marks YEAH and YEAH BABY.
b. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register the mark HELL YEAH for educational and
entertainment services, namely, providing motivational and educational speakers in
the field of self- and personal improvement. Opposers closest pleaded registration is
Registration No. 4513265 for the mark YEAH BABY for audio broadcasting; video
broadcasting. Opposer did not introduce any testimony or evidence regarding the
relationship between these two activities, or any of Opposers other services. While it
– 13 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
is theoretically possible that Opposers audio and video broadcast services encompass
or are otherwise related to Applicants providing motivational and educational
speakers in the field of self- and personal improvement, Opposer has the burden of
proving his likelihood of confusion claim by a preponderance of the evidence. Without
any evidence regarding the relationship between Applicants services and Opposers
services, we see Opposers likelihood of confusion claim as amounting to only a
speculative, theoretical possibility, notwithstanding that similar marks are involved.
Language from the Court of Appeals for the Federal Circuit is helpful in resolving
whether the services in this case are related:
We are not concerned with mere theoretical possibilities of
confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.
Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388,
1391 (Fed. Cir. 1992), citing Witco Chem. Co. v. Whitfield Chem. Co., Inc., 418 F.2d
1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), affg 153 USPQ 412 (TTAB 1967).
Because Opposer failed to introduce any testimony or evidence regarding the
similarity and nature of the services, Opposer failed to meet his burden of proof and,
we find that this DuPont factor weighs against finding that there is a likelihood of
confusion.
c. Established, likely-to-continue channels of trade and classes of consumers.
Opposer failed to introduce any testimony or evidence regarding the channels of
trade or classes of consumers and, therefore, Opposer failed to meet his burden of
– 14 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
proof. Because there is no testimony or evidence regarding the channels of trade and
classes of consumers, we find that this DuPont factor weighs against finding that
there is a likelihood of confusion.
d. Conclusion
Despite the fact that the marks are similar, because there are no overlapping
services, and there is no testimony or evidence regarding the similarity and nature of
the services or channels of trade and classes of consumers, Opposer has failed to show
by a preponderance of the evidence that there is a likelihood of confusion between
Applicants mark HELL YEAH for educational and entertainment services, namely,
providing motivational and educational speakers in the field of self- and personal
improvement and Opposers registered mark YEAH and YEAH BABY for the listed
services.
3. Applicants mark HELL YEAH STUDIOS for film and video production of
business marketing videos excluding the field of music; production of webinars
and business marketing videos for business or commercial purposes for others;
film and video production consulting services relating to business marketing
videos; film editing of business marketing videos; film studios for producing
business marketing videos; photography services relating to business
marketing. (Registration No. 4593280, Class 41)
a. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register HELL YEAH STUDIOS for film and video
production of business marketing videos excluding the field of music; production of
webinars and business marketing videos for business or commercial purposes for
others; film and video production consulting services relating to business marketing
videos; film editing of business marketing videos; film studios for producing business
– 15 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
marketing videos; photography services relating to business marketing. Opposer has
registered YEAH and YEAH BABY both for, inter alia, advertising and publicity
services, namely, promoting the goods, services, brand identity and commercial
information and news of third parties through print, audio, video, digital and on-line
medium. While worded differently, on their face, Opposers and Applicants
registrations involve services which create video promotional materials. While
Opposer did not introduce any testimony or evidence regarding the similarity or
relatedness of the services, the registrations themselves provide the nexus between
Opposers services promoting the goods, services, brand identity of others through,
among other means, video media and Applicants video production services for
business marketing. In other words, promotional or marketing services inherently
are closely related to producing marketing materials. We find that the services of the
parties are related.
b. Established, likely-to-continue channels of trade and classes of consumers.
Likewise, because of the inherently close relationship of the services, and because
there is no limitation in Opposers registrations as to the channels of trade or classes
of consumers, it is logical that Opposer would offer hisadvertising and publicity
services, namely, promoting the goods, services, brand identity and commercial
information and news of third parties through print, audio, video, digital and on-line
medium in the same channels of trade and to the same classes of consumers as
Applicants film and video production of business marketing videos excluding the
field of music; production of webinars and business marketing videos for business or
– 16 –
Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
commercial purposes for others; film and video production consulting services
relating to business marketing videos.
c. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
The addition of the descriptive word studios to Applicants mark does not serve
to distinguish Applicants mark HELL YEAH STUDIOS from Opposers marks YEAH
and YEAH BABY. It is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See In re Detroit Athletic Co.,
903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc.,
105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (Regarding
descriptive terms, this court has noted that the descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion.)
(quoting In re Natl Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter
is often less significant in creating the marks commercial impression). There is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, such as a common dominant element, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. In re
Natl Data Corp., 224 USPQ at 751; see also In re Viterra Inc., 101 USPQ2d at 1908.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
For the reasons discussed above, we find that Applicants mark HELL YEAH
STUDIOS is similar to Opposers marks YEAH and YEAH BABY in appearance,
sound, connotation and commercial impression.
d. Conclusion
Because the marks are similar, the services are related and the services are
offered in the same channels of trade to the same classes of consumers, we find that
Applicants mark HELL YEAH STUDIOS for film and video production of business
marketing videos excluding the field of music; production of webinars and business
marketing videos for business or commercial purposes for others; film and video
production consulting services relating to business marketing videos; film editing of
business marketing videos; film studios for producing business marketing videos;
photography services relating to business marketing is likely to cause confusion with
Opposers registered marks YEAH and YEAH BABY for, inter alia, advertising and
publicity services, namely, promoting the goods, services, brand identity and
commercial information and news of third parties through print, audio, video, digital
and on-line medium.
Decision: Applicants counterclaim to cancel Opposers pleaded registrations is
denied.
Applicants petition to cancel Opposers Registration No. 4513265 for the mark
YEAH BABY is denied.
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Opposition No. 91216695
Cancellation No. 92060070
Cancellation No. 92063341
Opposers opposition to Applicants application (Serial No. 85768262) for the mark
HELL YEAH for the activities listed in Class 35 is sustained.
Opposers opposition to Applicants application (Serial No. 85768262) for the mark
HELL YEAH for the activities listed in Class 41 is dismissed.
Opposers petition to cancel Applicants registration for the mark HELL YEAH
STUDIOS is granted.
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