Rhythm Holding Limited v. Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 12, 2018

U NITED STATES P ATENT A ND T RADEMARK O FFICE

Trademark Trial and Appeal Board
————
Rhythm Holding Limited

v.

Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N’ Ballin
_____

Opposition No. 91231106

_____

John L. Welch and William E. Maguire of Wolf Greenfield & Sacks PC,
for Rhythm Holding Limited.

Kevin J. Keener of Keener & Associates PC,
for Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N’
Ballin
————
Before Bergsman, Heasley, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:

Frank W. Ivey and Christian Patrick Richards Jr., both d/b/a Rhythm N’ Ballin,

(“Applicants”) jointly seek registration on the Principal Register of the mark

RHYTHM N’ BALLIN (in standard characters) for the following goods:

Shorts for football, basketball, golf, baseball, tennis and hockey; hooded
shirts, t-shirts, caps, polo shirts, leotards; padded elbow compression
sleeves sold as an integral component of athletic uniforms; socks; team
Opposition No. 91231106

wear, namely, athletic uniforms and jerseys; Sliding shorts; Sports
shirts with short sleeves; Sweat shorts; T-shirts; Triathlon clothing,
namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon
shirts, triathlon suits; Walking shorts, in International Class 25; and

Footballs, baseballs, golf balls basketball balls, tennis balls, and soccer
balls, in International Class 28. 1

Rhythm Holding Limited (“Opposer”) opposes the registration of Applicants’

mark on the ground of likelihood of confusion under Section 2(d) of the Trademark

Act, 15 U.S.C. § 1052(d). In support of its Section 2(d) claim, Opposer pleaded

ownership of the following registrations:

1. Registration No. 3610417 for the mark RHYTHM (in standard
characters) for “backpacks, day packs” in International Class 18, and
“clothing, namely, shirts, t-shirts, shorts; headgear, namely, hats, caps”
in International Class 25;2

2. Registration No. 3884199 for the mark RHYTHM (in standard
characters) for “Clothing, namely, footwear, casual footwear, sandals;
bathing suits and trunks, beachwear, swimwear, beach and bathing
coverups, bermuda shorts, pants, polo shirts, slacks, sweatshirts, tank
tops, tops, trousers, knit shirts, caps; sleepwear, namely, undershirts”
in International Class 25;3

3. Registration No. 3890579 for the mark RHYTHM LIVIN (in standard
characters) for “clothing, namely, bathing suits and trunks, beachwear,
swimwear, T-shirts, shorts” in International Class 25;4 and

4. Registration No. 4280130 for the mark RHYTHM (in standard
characters) for “snowboards” in International Class 28.5

1Application Serial No. 86687500, filed on July 8, 2015, based on an allegation of a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
2 Issued on April 21, 2009; renewed.
3 Issued November 30, 2010; renewed.
4 Issued December 14, 2010; renewed.
5 Issued January 22, 2013.

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Opposition No. 91231106

Additionally, Opposer pleaded prior common law use of the marks RHYTHM and

RHYTHM LIVIN, both for clothing and snowboards.6

In their answer, Applicants denied the salient allegations in Opposer’s pleading.

At trial, Opposer did not pursue its likelihood of confusion claim against

Applicants’ identified International Class 28 goods. Accordingly, Opposer’s Section

2(d) claim, as it pertains to Applicants’ International Class 28 goods, is deemed

waived.7 See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d

1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014).

I. Record

The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37

C.F.R. § 2.122(b), Applicants’ application file. The record also comprises the evidence

summarized below.

A. Opposer’s Evidence

1. Testimony Declaration of Josh Barrett, Opposer’s Global General
Manager, and accompanying exhibits;8

2. Notice of reliance on status and title copies of Opposer’s pleaded
Registration Nos. 3610417, 3884199, and 3890579;9 and

6 Notice of Opposition ¶ 1; 1 TTABVUE 4.
7 In its trial brief, Opposer states that it is not pursuing the opposition to registration of
Applicants’ mark for the goods identified in International Class 28. See Opposer’s Trial Brief,
p. 7 n.1; 21 TTABVUE 8.
8 13 and 14 TTABVUE.
9 15 TTABVUE.

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Opposition No. 91231106

3. Rebuttal notice of reliance on (1) the dictionary definitions of the
terms “LIVIN” and “RHYTHM,” and (2) a printout from the
USPTO electronic database showing that Registration No.
1861637 for the mark RHYTHM TRIBE, submitted by Applicant
to demonstrate the purported weakness of Opposer’s pleaded
marks, has been cancelled.10

B. Applicants’ Evidence

1. Testimony Declaration of joint Applicant Christian P. Richards,
Jr.;11

2. Testimony Declaration of joint Applicant Frank Ivey and
accompanying exhibits;12 and

3. Notice of Reliance on (1) various Internet materials, including
excerpts from third-party websites and blogs; (2) dictionary
definitions; and (3) copies of third-party registrations for RHTYHM
formative marks obtained from the USPTO electronic database
records.13 Additionally, Applicants submitted documents under
seal as confidential via their notice of reliance.14

As noted, some of the evidence proffered by Applicants has been designated

confidential and filed under seal. We have discussed only in general terms the

relevant evidence submitted under seal, if necessary. However, to the extent the

Applicants have improperly designated testimony and evidence as confidential, the

Board will disregard the confidential designation when appropriate. Trademark Rule

2.116(g), 37 C.F.R. § 2.116(g) (“[t]he Board may treat as not confidential that material

which cannot reasonably be considered confidential, notwithstanding a designation

as such by a party.”); see also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC,

10 20 TTABVUE.
11 16 TTABVUE.
12 19 TTABUVE.
13 17 TTABVUE.
14 18 TTABVUE (confidential).

4
Opposition No. 91231106

110 USPQ2d 1458, 1461 (TTAB 2014).

II. Standing

Standing is a threshold issue that must be proven by the plaintiff 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). Our primary reviewing court, the U.S. Court of

Appeals for the Federal Circuit, has enunciated a liberal threshold for determining

standing, namely that a plaintiff must demonstrate that it possesses a “real interest”

in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his

belief of damage.” Id. at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d

1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in

the outcome of the proceeding. Ritchie, 50 USPQ2d at 1026.

Opposer has demonstrated through the USPTO database printouts made of

record that it is the owner of its pleaded Registration Nos. 3610417, 3884199, and

3890579 and that these registrations are valid and subsisting. Because these

registrations are of record, Opposer has established its standing. See Cunningham v.

Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind.,

Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).

III. Section 2(d) Claim

Section 2(d) of the Trademark Act prohibits the registration of a mark that

“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent

and Trademark Office, or a mark or trade name previously used in the United States

by another and not abandoned, as to be likely, when used on or in connection with

the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15

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Opposition No. 91231106

U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a

preponderance of the evidence, that it has priority in the use of its marks and that

use of Applicants’ mark is likely to cause confusion, mistake, or deception as to the

source or sponsorship of Applicants’ goods. Cunningham, 55 USPQ2d at 1848.

A. Priority

Because Opposer’s pleaded Registration Nos. 3610417, 3884199, and 3890579 are

of record, priority is not an issue with respect to the goods identified in these pleaded

registrations. See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB

1998) (citing King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182

USPQ 108, 110 (CCPA 1974)).

B. Likelihood of Confusion

We base our determination under Section 2(d) on an analysis of all of the probative

evidence of record 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) (“du Pont”); see also

In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).

“Not all of the DuPont factors are relevant to every case, and only factors of

significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601

F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus

… on dispositive factors, such as similarity of the marks and relatedness of the goods.”

Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.

Cir. 2002) (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d

1557, 1559 (Fed. Cir. 2001)). These factors, and the other relevant du Pont factors are

6
Opposition No. 91231106

discussed below.

1. Similarity of the Goods

We begin our analysis with the comparison of the goods identified in Applicants’

application vis-à-vis the goods identified in the Opposer’s registrations of record, i.e.,

Registration Nos. 3610417, 3884199, and 3890579, under the second du Pont factor.

Applicants’ identified goods include, inter alia, “t-shirts,” “caps,” “polo shirts,”

“walking shorts,” and “sports shirts with short sleeves.” Opposer’s Registration No.

3610417 includes identical goods: “t-shirts” and “caps.” Similarly, Opposer’s

Registration No. 3884199 identifies the identical goods “polo shirts” and “caps.”

Opposer’s Registration No. Registration No. 3890579 also includes the identical goods

“t-shirts.” Moreover, Opposer’s broadly-worded “shorts” in Registration No. 3890579

encompasses Applicants’ “shorts for football, basketball, golf, baseball, tennis and

hockey,” “sliding shorts,” “triathlon shorts,” “sweat shorts,” and “walking shorts.”

Similarly, Opposer’s broadly-worded “shirts” in Registration No. 3610417 includes

Applicants’ “sport shirts with short sleeves.” Accordingly, the goods at issue are

identical or legally identical in part.

Registration must be refused if Applicants’ mark for any of their identified goods

is likely to cause confusion with Opposer’s marks for any of its identified goods. See

Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988

(CCPA 1981).

The second du Pont factor therefore strongly favors a finding of likelihood of

confusion.

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Opposition No. 91231106

2. Similarity of Trade Channels and Classes of Purchasers

Next we consider established, likely-to-continue channels of trade, the third du

Pont factor. Because the identifications of Applicants’ goods and Opposer’s goods are

identical or legally identical in part and have no restrictions as to channels of trade

or classes of customers, it is presumed that the trade channels and classes of

purchasers are the same for the identical goods. See In re Viterra Inc., 671 F.3d 1358,

101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (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 Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1158 (TTAB 2018).

Applicants argue that their goods are marketed toward urban African-American

youth, while Opposer’s goods are marketed to consumers interested in beach and surf

lifestyle.15 Applicants may not rely on mere argument or extrinsic evidence to restrict

the classes of customers or the channels of trade; since the identification of goods do

not restrict either, we cannot consider the asserted differences in our determination.

In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La

Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoot & Co.,

229 USPQ 763, 764 (TTAB 1986) (extrinsic evidence and argument suggesting trade-

channel restrictions not specified in application rejected). For these reasons, we reject

Applicants’ arguments.

15 Applicant’s Trial Brief, p. 6; 22 TTABVUE 11.

8
Opposition No. 91231106

Thus, the third du Pont factor also weighs in favor of finding a likelihood of

confusion.

3. Strength/Weakness of Opposer’s RHYTHM and RHYTHM LIVIN
marks

The fifth du Pont factor, the fame of the prior mark, and the sixth du Pont factor,

the number and nature of similar marks in use for similar goods, du Pont, 177 USPQ

at 567, are considered in tandem to determine the strength of Opposer’s RHYTHM

and RHYTHM LIVIN marks and the scope of protection to which they are entitled.

Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017).16

“In determining strength of a mark, we consider both inherent strength, based on the

nature of the mark itself, and commercial strength or recognition.” Id. at 1345 (citing

Couch/Braunsdorf v. 12 Interactive, 110 USPQ2d at 1476); see also In re

Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A

mark’s strength is measured both by its conceptual strength (distinctiveness) and its

marketplace strength (secondary meaning).”).

We first address the sixth du Pont factor, the number and nature of similar marks

in use on similar goods. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,

LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Applicants contend that Opposer’s

RHYTHM and RHYTHM LIVIN marks comprise such weak, commonly used

16 The Federal Circuit recently reiterated that “‘[w]hile dilution fame is an either/or
proposition—fame either does or does not exist—likelihood of confusion fame varies along a
spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed Cir. 2005) (internal quotation omitted)).

9
Opposition No. 91231106

elements that consumers will look to the other features in Applicants’ mark to

differentiate the marks in appearance, sound, meaning and commercial impression.17

Specifically, Applicants maintain that the designation RHYTHM is diluted when

used in associated with clothing items like those identified in Opposer’s

registrations.18 To demonstrate this weakness, Applicants submitted nine active, use-

based third-party registrations for marks containing the term RHYTHM, as used in

connection with goods purportedly similar to those identified in Opposer’s

registrations.19 The third-party registrations are summarized in the chart below:

Registration No. Mark Relevant Goods

3195339 GOT RHYTTHM? clothing namely long and
(in standard characters) short sleeve t-shirts and
sweatshirts
4498477 Women’s clothing, namely,
designer and fashion
apparel comprising of jacket;
t-shirts, and underwear,
marketed exclusively online
at a proprietary website and
at independent retail
clothing boutiques

17 Applicant’s Trial Brief, pp. 10-12; 22 TTABVUE 15-17.
18 Id. at pp. 10-11; 22 TTABVUE 15-16.
19Applicants’ Notice of Reliance, Exhs. M-R and T-U; 17 TTABVUE 117-153, and 159-173.
Applicants also submitted a status and title copy of Registration No. 1861637 for the mark
RHYTHM TRIBE (in standard characters) for, among other things, “clothing; namely, T-
shirts, sweat shirts, sweat pants and shorts, jackets, gloves, bandanas, socks, pants.” Id. at
Exh. S, 17 TTABVUE 154-158. This registration, however, has been cancelled. A cancelled
registration is generally evidence only of the fact that that registration issued. See Bond v.
Taylor, 119 USPQ2d 1049, 1054-55 (TTAB 2016); In re Kysela Pere et Fils Ltd., 98 USPQ2d
1261, 1264 (TTAB 2011) (“‘dead’ or cancelled registrations have no probative value at all”);
In re Brown Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006). Thus, we accord the
cancelled registration submitted by Applicants no probative value.

10
Opposition No. 91231106

Registration No. Mark Relevant Goods

4491807 Clothing, namely, shirts, t-
shirts, pants, jackets, lab
coats and hats.

(HEART RHYTHM
disclaimed)
4573172 RHYTHMATHOLOGY Headgear, namely, hats,
caps and visors; shirts;
(standard characters) short-sleeved or long-sleeved
T-shirts; sweaters
exclusively marketed in
connection with applicant’s
services, namely, instruction
in the field of music.
4972140 Hats; Jackets; Pants;
Shorts; Sweat jackets; Sweat
pants; Sweat shirts; Sweat
suits; T-shirts, all of which
are sold and offered only in
connection with the services
in the nature of organizing,
arranging and conducting
western heritage, poetry
reading and concert events,
the proceeds of which are
donated to charity
5182981 RHYTHM CITY CASINO Clothing, namely, t-shirts,
RESORT polo shirts, wind shirts,
(standard characters; vests, jackets, sweaters,
CASINO RESORT sweatshirts, hats and caps.
disclaimed)
2859768 RHYTHM & CULTURE Clothing, namely shirts,
pants, shorts, jackets,
(standard characters) pullovers, sweatshirts,
sweaters, coats, gloves,
stockings, socks, underwear,
T-shirts, hats, footwear; and
headwear.
3752631 STRICTLY RHYTHM T-shirts, jackets,
sweatshirts
(standard characters)

11
Opposition No. 91231106

Registration No. Mark Relevant Goods

3372540 Short-sleeved or long-
sleeved t-shirts; Tops; Caps.

Third-party registrations and use of similar marks can bear on the strength or

weakness of a registrant’s mark in two ways: commercially and conceptually. First,

if a mark, or an element of a mark, is used extensively in commerce by a number of

third parties, that could undermine its commercial strength, as the consuming public

may have become familiar with a multiplicity of the same or similar marks, and can

distinguish them based on minor differences. Juice Generation, Inc. v. GS Enters.

LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). “Evidence of third-

party use of similar marks on similar goods is relevant to show that a mark is

relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imports,

73 USPQ2d at 1693, quoted in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.

KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136

(Fed. Cir. 2015). “The weaker [a registrant’s] mark, the closer an applicant’s mark

can come without causing a likelihood of confusion and thereby invading what

amounts to its comparatively narrower range of protection.” Juice Generation, 115

USPQ2d at 1674.

12
Opposition No. 91231106

Second, if there is evidence that a mark, or an element of a mark, is commonly

adopted by many different registrants, that may indicate that the common element

has some non-source identifying significance that undermines its conceptual strength

as an indicator of a single source. Jack Wolfskin, 116 USPQ2d at 1136 (“[E]vidence of

third-party registrations is relevant to ‘show the sense in which a mark is used in

ordinary parlance,’ … that is, some segment that is common to both parties’ marks

may have ‘a normally understood and well-recognized descriptive or suggestive

meaning, leading to the conclusion that that segment is relatively weak’”) (quoting

Juice Generation, 115 USPQ2d at 1674).

In this case, with respect to commercial strength, Applicants have not submitted

any evidence of third-party usage of the marks shown in the third-party registrations,

or any other pertinent marks demonstrating use in commerce. What is missing is

evidence of the extent of use or recognition of such marks in the marketplace:

“existence of [third-party] registrations is not evidence of what happens in the market

place or that customers are familiar with them….” AMF Inc. v. Am. Leisure Prods.,

Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) quoted in In re Inn at St. John’s,

LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). That differentiates this case from cases

such as Jack Wolfskin and Juice Generation, in which evidence of commercial use was

submitted. See Jack Wolfskin, 116 USPQ2d at 1136 (noting that third-party

registrations were accompanied by evidence of the marks in use in Internet

commerce: “Jack Wolfskin presented extensive evidence of third-party registrations

depicting paw prints and evidence of these marks being used in internet commerce

13
Opposition No. 91231106

for clothing”); Juice Generation, 115 USPQ2d at 1674 (acknowledging testimony of

applicant’s founder concerning third-party use of similar marks). Accordingly,

Applicants’ third-party registration evidence does not demonstrate that Opposer’s

RHYTHM and RHYTHM LIVIN marks are commercially weak or diluted. Thus, the

sixth du Pont factor is neutral.

However, as previously noted, third-party registrations may be used to show the

conceptual weakness of a term. Juice Generation, 115 USPQ2d at 1675 (“Third party

registrations are relevant to prove that some segment of the composite marks which

both contesting parties use has a normally understood and well recognized

descriptive or suggestive meaning, leading to the conclusion that that segment is

relatively weak.”) (quoting 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND

UNFAIR COMPETITION § 11:90 (4th ed. 2015)); see also In re i.am.symbolic, 866 F.3d

1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (active third-party registrations may

be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or

so commonly used that the public will look to other elements to distinguish the source

of the goods or services); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ

693, 694 (CCPA 1976) (although third-party registrations are entitled to little weight

on the question of likelihood of confusion where there is no evidence of actual use,

they may be given some weight to show the meaning of a mark in the same way as

dictionaries). Here, Applicants submitted nine active registrations that incorporate

the term RHYTHM in the mark for goods in International Class 25.

We initially note that none of the third-party registered marks are identical to

14
Opposition No. 91231106

Opposer’s RHYTHM and RHYTHM LIVIN marks. Moreover, many of the third-party

registered marks submitted by Applicants are visually different and convey different

commercial impressions than Opposer’s marks. That being said, each of the third-

party registered marks include the term RHYTYM for goods identical or highly

similar to those identified Opposer’s pleaded registrations of record. Although nine

third-party registrations do not constitute “powerful evidence” of conceptual

weakness, see Juice Generation, 115 USPQP2d at 1674-75 (at least twenty-six

relevant third-party registrations of record) and Jack Wolfskin, 116 USPQ2d at 1135-

36 (at least fourteen relevant third-party registrations of record), these third-party

registrations nonetheless imply that the term RHYTYM has a somewhat suggestive

meaning when used in connection with clothing items.

Based on the foregoing, we find that the term RHYTHM possesses a slight degree

of conceptual weakness due to its suggestive connotation. As a result, the scope of

protection accorded to Opposer’s marks is not as wide as that of an arbitrary or coined

mark. That being said, even conceptually weak marks are entitled to protection, and

likely confusion may still be found where the marks are very similar and the goods

are identical in part, as is the case here. See In re FabFitFun, Inc., 127 USPQ2d 1670,

1676 (TTAB 2018) (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83

USPQ2d 1123, 1125 (Fed. Cir. 2007)).

We next determine the alleged fame of Opposer’s marks under the fifth du Pont

factor.20 In determining the commercial strength of Opposer’s RHYTHM and

20 Opposer’s Trial Brief, pp. 20-21; 21 TTABVUE 21-22.

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Opposition No. 91231106

RHYTHM LIVIN marks under this factor, such strength “may be measured indirectly

by the volume of sales and advertising expenditures in connection with the [goods]

sold under the mark, and other factors such as length of time of use of the mark;

widespread critical assessments; notice by independent sources of the [goods]

identified by the mark []; and the general reputation of the [goods].” Tao Licensing,

LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017).

To demonstrate the commercial strength of its RHYTHM and RHYTHM LIVIN

marks, Opposer maintains that it has used its RHYTHM and RHYTHM LIVIN marks

in U.S. commerce since 2008 and 2009, respectively, and that it has filed its

declarations under Section 15 of the Trademark Act for its registrations of record.21

However, statutory presumptions do not affect the likelihood of confusion analysis.

Byk-Gulden, Inc. v. Trimen Laboratories, Inc., 211 USPQ 364, 368 (TTAB 1981),

quoting Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639,

641 (TTAB 1977):

The statutory presumptions, however, do not answer the
question of whether applicant’s mark, for the goods
identified in the application, so resemble either of opposer’s
marks as to be likely to cause confusion, mistake or
deception. The registrations alone are incompetent to
establish any facts with regard to the nature or extent of
opposer’s use and advertising of its trademarks or any
reputation they enjoy or what purchasers’ reactions to
them may be.

See also Martha White, Inc. v. American Bakeries Co., 157 USPQ 215, 217 (TTAB

1968) (opposer’s registration is not evidence of the nature and extent of opposer’s use

21 Id.; 21 TTABVUE 21-22.

16
Opposition No. 91231106

and advertising of its mark and, thus, is not probative of consumer reaction to the

mark, no matter how long it has been registered). Accordingly, the fact that Opposer’s

federally-registered trademarks have achieved incontestable status means that they

are conclusively considered to be valid, but it does not dictate that the marks are

“strong” for purposes of determining likelihood of confusion. See Safer Inc. v. OMS

Investments Inc., 94 USPQ2d 1031, 1036 (TTAB 2010) cited in In re Fat Boys Water

Sports LLC, 118 USPQ2d 1511, 1518 n. 25 (TTAB 2016).

“In view of the extreme deference that is accorded to a famous mark in terms of

the wide latitude of legal protection it receives, and the dominant role fame plays in

the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting

that its mark is famous to clearly prove it.” Blue Man Prods. Inc. v. Tarmann, 75

USPQ2d 1811, 1819 (TTAB 2005). In light of the limitations in Opposer’s evidence

noted above, Opposer has failed to meet its burden of proof regarding the commercial

success Opposer’s RHYTHM and RHYTHM LIVIN marks have achieved as used in

connection with its identified goods. Evidence regarding the length of time Opposer

has used its marks in U.S. commerce or the incontestable status of Opposer’s

registrations of record, standing alone, is insufficient evidence for the Board to make

a proper evaluation of the commercial strength of Opposer’s marks under the fifth du

Pont factor. See Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1635 (TTAB 2007);

compare Nina Ricci, S.A.R.L. v. ETF Enters., Inc., 203 USPQ 947, 951 (TTAB 1979)

(“Not only has opposer enjoyed long use of its ‘RICCI’ marks, but the record shows

the fame, prestige and reputation which the name ‘NINA RICCI’ has brought to

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Opposition No. 91231106

opposer as evidenced by the numerous newspaper articles and reports of opposer’s

activities in the ladies’ apparel fields, previously referred to.”).

Moreover, as noted above, the conceptual strength of Opposer’s RHYTHM and

RHYTHM LIVIN marks is somewhat limited. Accordingly, Opposer has failed to

demonstrate that its RHYTHM and RHYTHM LIVIN marks are very strong and,

therefore, the marks would not be entitled to a broader scope of protection under the

fifth du Pont factor.

4. Similarity of the Marks

We now consider the first du Pont likelihood of confusion factor, which involves

an analysis of the similarity or dissimilarity of the marks in their entireties as to

appearance, sound, connotation and commercial impression. See Palm Bay Imports,

73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). “The proper test is not a

side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently

similar in terms of their commercial impression’ such that persons who encounter the

marks would be likely to assume a connection between the parties.” Coach Servs. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)

(internal citation omitted). The focus is on the recollection of the average purchaser,

who normally retains a general rather than a specific impression of trademarks. In

re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co.,

190 USPQ 106, 108 (TTAB 1975). Because the goods at issue are clothing, with no

restrictions as to price or quality, the average purchaser is an ordinary consumer.

Further, because the involved goods are identical in part, a lesser degree of similarity

between the marks is necessary to support a finding of likelihood of confusion. See

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Opposition No. 91231106

Century 21 v. Century Life, 23 USPQ2d at 1700; In re Bay State Brewing Co., 117

USPQ2d 1958, 1960 (TTAB 2016).

Lastly, our analysis cannot be predicated on dissection of the involved marks. See

Stone Lion Capital, 110 USPQ2d at 1161. Rather, we are obliged to consider the

marks in their entireties. Id.; see also Franklin Mint Corp. v. Master Mfg. Co., 667

F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not

be dissected and considered piecemeal; rather, it must be considered as a whole in

determining likelihood of confusion.”). Nonetheless, there is nothing improper in

stating that, for rational reasons, more or less weight has been given to a particular

feature of a mark, provided the ultimate conclusion rests on a consideration of the

marks in their entireties. Stone Lion, 110 USPQ2d at 1161.

Opposer’s marks are RHYTHM and RHYTHM LIVIN and Applicants’ mark is

RHYTHM N’ BALLIN. Initially, we compare Opposer’s RHYTHM mark and

Applicants’ RHYTHM N’ BALLIN mark. Here, Applicants have incorporated

Opposer’s entire RHYTHM mark as a significant feature of their own mark. While

there is no explicit rule that likelihood of confusion automatically applies where a

junior user’s mark contains the whole senior user’s mark, the fact that Opposer’s

RHYTHM mark is subsumed by Applicants’ mark increases the similarity between

the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.

Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES);

The Wella Corp. v. Val. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA

1997); (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray,

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Opposition No. 91231106

conditioner and shampoo is likely to cause confusion with the mark CONCEPT for

cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis,

Tenn., Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA

1975); (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger

ale is likely to cause confusion with BENGAL for gin); Lilly Pulitzer, Inc. v. Lilli Ann

Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for

women’s dresses is likely to be confused with LILLI ANN for women’s apparel

including dresses); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB

2014) (applicant’s PRECISION DISTRIBUTION CONTROL mark found confusingly

similar to opposer’s PRECISION mark).

Visually and aurally, the only difference between Opposer’s RHYTHM mark and

Applicants’ RHYTHM N’ BALLIN mark is the inclusion of the wording “N BALLIN”

in Applicants’ mark. We find that this difference is insufficient to distinguish the

marks, particularly since Applicants’ mark begins with the term RHYTHM which

comprises the entirety of Opposer’s RHYTHM mark and because the term RHYTHM

conveys the same connotation and engenders the same commercial impression in

each of the party’s respective marks.22 See Palm Bay Imps., 73 USPQ2d at 1692

(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”

22 Opposer submitted the dictionary definition of the term RHYTHM which is defined, inter
alia, as “1. Movement of variation characterized by the regular recurrence or alteration of
different quantities or conditions: the rhythm of the tides; 2. The patterned recurring
alternations of contrasting elements of sound or speech; and 3. Music a. the patterning of
musical sound, as by differences in the timing, duration, or stress of consecutive notes.”
Opposer’s Rebuttal Notice of Reliance, Exh. 6, 20 TTABVUE 18-21. The definition of the term
RHYTHM submitted by Applicants, see 17 TTABVUE Exh. A, defines the term as “one of the
most important things in music” is consistent with the third definition submitted by Opposer.

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Opposition No. 91231106

is the first word in the mark and the first word to appear on the label); Century 21

Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.

Cir. 1992) (upon encountering the marks, consumers will first notice the identical

lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting

that the dominance of BARR in the mark BARR GROUP is reinforced by its location

as the first word in the mark); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d

1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to

be impressed upon the mind of a purchaser and remembered”).

Accordingly, when viewing these two marks in their entirety, and keeping in mind

that the word “rhythm” has a somewhat suggestive significance, we find that

Opposer’s RHYTHM mark and Applicants’ RHYTHM N’ BALLIN marks are more

similar than different in sound, appearance, connotation and commercial impression.

We next compare Opposer’s RHYTHM LIVIN mark and Applicant’s RHYTHM N’

BALLIN mark. For the same reasons explained above, we find that Applicants’ mark

is similar to Opposer’s RHYTHM LIVIN mark in sound, appearance, connotation,

and commercial impression. Both marks begin with the identical term RHYTHM. As

noted above, the Board has often recognized that the first word in a mark plays a

dominant role in the Section 2(d) analysis because it is likely to be the part noticed

and remembered by consumers. Moreover, the ordinary consumer will recognize the

standard meaning of RHYTHM in Opposer’s RHYTHM LIVIN mark, and will

recognize that same meaning in the first word of Applicants’ mark. Additionally, in

both Opposer’s RHYTHM LIVIN mark and Applicant’s RHYTHM N’ BALLIN mark,

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Opposition No. 91231106

the letter “G” is dropped at the end of the last word in each mark giving the two marks

a similar look and construction. Further, the inclusion of the term LIVIN to

RHYTHM in Opposer’s mark results in a phrase that suggests the addition of

“rhythm” to one’s lifestyle. Similarly, the addition of “N’ BALLIN” to RHYTHM in

Applicants’ mark produces a similar phrase that suggests the addition of “rhythm” to

one’s wealthy lifestyle.23 Finally, consumers familiar with Opposer’s marks

RHYTHM and RHYTHM LIVIN used in connection with clothing items would be

likely to believe that RHYTHM N’ BALLIN is another variation in Opposer’s lines of

clothing. See In re Southern Belle Frozen Foods Inc., 48 USPQ2d 1849, 1851 (TTAB

1998) (observing that consumers familiar with registrant’s SHRIMP ROYALE

packaged shrimp meal may conclude that applicant’s SEAFOOD ROYALE frozen

crab product is a new line of seafood from the maker of the SHRIMP ROYALE

product); NutraSweet Co. v. K & S Foods, Inc., 4 USPQ2d 1964, 1968 (TTAB 1987)

(purchasers familiar with NUTRASWEET product, upon viewing NUTRA SALT,

would be likely to believe it was a new product line put out by the NUTRASWEET

producer or that the product was somehow associated with or sponsored by the people

producing the NUTRASWEET product); Nina Ricci S.A.R.L. v. Haymaker Sports Inc.,

134 USPQ26, 28 (TTAB 1962) (persons familiar with NINA RICCI or RICCI for

women’s apparel would logically assume that women’s clothing bearing RICCI OF

HAYMAKER emanates from same source or is connected in some way).

23Applicants submitted a dictionary definition of the term “ballin” from Wiktionary which
defines the term as “1 (African American vernacular, slang) Having an ostentatiously
wealthy lifestyle.” See Applicants’ Notice of Reliance, Exh. A; 17 TTABVUE 9-10.

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Opposition No. 91231106

In view of the foregoing, we find that Opposer’s RHYTHM LIVIN mark and

Applicant’s RHYTHM N’ BALLIN mark, when viewed in their entirety, are, at a

minimum, similar in appearance, connotation and commercial impression,

notwithstanding how a consumer may pronounce the parties’ respective marks. In re

White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (similarity in either sight,

sound or connotation is sufficient to support likely confusion).

Thus, the first du Pont factor also favors a finding of likelihood of confusion.

5. Market Interface

The tenth du Pont factor requires us to consider the “market interface” between

the parties, including evidence of any past dealings between the parties that might

indicate a lack of confusion in the present case. Opposer argues that since the goods

at issue are identical in part, the parties’ trade channels must be presumed to be

identical. In contrast, Applicant argues that Opposer’s goods are directed to

consumers who enjoy a relaxed beach-hipster lifestyle, while Applicants’ goods are

marketed toward urban, African-American youth. The tenth du Pont factor, however,

does not concern the trade channels in which the goods of the parties travel or the

classes of purchasers who purchase the goods. Instead, this factor concerns matters

“such as (1) consent to register or use; (2) contractual provisions designed to preclude

confusion; (3) assignment; and (4) laches and estoppel attributable to the challenger

that would indicate lack of confusion.” Cunningham, 55 USPQ2d at 1847; du Pont,

177 USPQ at 567. In this case, Applicants assert none of these matters. We therefore

deem this du Pont factor neutral.

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Opposition No. 91231106

6. Conditions of Sale

Next we consider the conditions under which the goods are likely to be purchased,

e.g., whether on impulse or after careful consideration, as well as the degree, if any,

of sophistication of the consumers. Purchaser sophistication or degree of care may

tend to minimize likelihood of confusion. Conversely, impulse purchases of

inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at

1695.

The identifications in the application and registrations consist of apparel items at

no specified price point. We cannot assume that these items are rendered to different

classes of buyers in different marketing contexts at different prices. See Bercut-

Vandervoort, 229 USPQ at 764 (evidence that relevant goods are expensive wines sold

to discriminating purchasers must be disregarded given the absence of any such

restrictions in the application or registration). Rather, we must assume that the types

of buyers vary from the sophisticated fashionista to the ordinary bargain hunter.

Ordinary consumers are likely to exercise only ordinary care, and given the lack of

price restrictions in the identifications, may even buy inexpensive clothing items on

impulse. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed.

Cir. 2000) (“When products are relatively low-priced and subject to impulse buying,

the risk of likelihood of confusion is increased because purchasers of such products

are held to a lesser standard of purchasing care.”). Accordingly, this factor weighs in

favor of finding a likelihood of confusion.

7. Applicants’ Right to Exclude Others from Using Their Mark

The eleventh du Pont evidentiary factor is “the extent to which applicant has a

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Opposition No. 91231106

right to exclude others from use of its mark on its goods.” There is no such evidence

with respect to Applicants’ intent-to-use application, so this factor is neutral.

8. Actual Confusion and Contemporaneous Use

We now turn to the seventh du Pont factor (nature and extent of any actual

confusion) and the related eighth du Pont factor (extent of the opportunity for actual

confusion) as argued by Opposer.24

As Opposer correctly observes, the current filing basis for the involved application

is intent-to-use, and we have no evidence that Applicants have used their applied-for

mark in commerce. Actual confusion cannot yet occur and evidence of actual

confusion cannot yet exist. Accordingly, these du Pont factors are neutral.

9. Extent of Potential Confusion

Last, we consider the extent of potential confusion, i.e., whether de minimis or

substantial. Opposer maintains that since the marks at issue are similar and the

involved goods are identical in part, there is a substantial likelihood of confusion as

to the source of the involved goods.25 We agree. Because we have found that the goods

at issue are identical in part and are offered under similar marks and are of the type

that would be marketed to and purchased by significant numbers of purchasers, the

potential for confusion cannot be deemed de minimis. Accordingly, this du Pont factor

favors Opposer.

24 Opposer’s Trial Brief pp. 22-23; 21 TTABUVE 23-24.
25 Opposer’s Trial Brief p. 23; 21 TTABVUE 24.

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Opposition No. 91231106

IV. Conclusion

We have considered all of the parties’ arguments and evidence of record, including

those not specifically discussed herein, and all relevant du Pont factors. Because we

have found that the marks at issue are similar; that Applicants’ identified

International Class 25 goods are identical in part to Opposer’s goods; that they would

move in the same or overlapping trade channels; and that they are offered to the same

or overlapping classes of purchasers, we conclude that Applicants’ RHYTHM &

BALLIN mark so resembles Opposer’s RHYTHM and RHYTHM LIVIN marks as to

be likely to cause confusion or mistake, or to deceive under Section 2(d) of the

Trademark Act. Accordingly, Opposer has proven its likelihood of confusion claim by

a preponderance of the evidence. We arrive at this ultimate conclusion even though

the common term RHYTHM is somewhat conceptually weak. A slight narrowing of

the scope of protection for Opposer’s RHYTHM and RHYTHM LIVIN marks based on

the evidence of record, however, does not make confusion unlikely, as even weak

marks are entitled to protection against registration of similar marks for goods that

are identical in part. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,

1401 182 USPQ 108, 109 (CCPA 1974); see also In re i.am.symbolic, 127 USPQ2d

1627, 1636 n.13 (TTAB 2018). The remaining du Pont factors discussed either favor

a finding of likelihood of confusion or are neutral.

Decision: The opposition is sustained with regard to the Section 2(d) claim but

only in connection with the goods identified in International Class 25 in Applicants’

application. Applicants’ application, however, will proceed to issuance of a notice of

allowance solely with respect to the goods identified in International Class 28.

26