IP Law Daily TTAB properly sustained opposition to stylized ‘H’ mark for athletic apparel
Thursday, August 1, 2019

TTAB properly sustained opposition to stylized ‘H’ mark for athletic apparel

By Cheryl Beise, J.D.

Applicant Hylete LLC waived its right to object to the finding that there was a likelihood of confusion with opposer Hybrid Athletics’ composite common law mark.

The U.S. Court of Appeals for the Federal Circuit has affirmed the Trademark Trial and Appeal Board’s decision sustaining an application by Hylete LLC to register its stylized letter "H" mark for various items of athletic apparel in International Class 25. The court agreed with the Board that there was a likelihood of confusion with opposer Hybrid Athletics, LLC’s common law stylized "H" used for athletic apparel since 2008. Hylete’s only argument on appeal—based on the Board’s alleged failure to credit distinctions between Hylete’s applied-for mark and Hybrid’s "composite common law mark"—were raised for the first time on appeal and were therefore waived (Hylete LLC v. Hybrid Athletics, LLC, August 1, 2018, Reyna, J.).

In January 2013, Hylete applied to register a design mark for a stylized letter "H" in International Class 25 for "[a]thletic apparel, namely, shirts, pants, shorts, jackets, footwear, hats and caps." On October 16, 2013, Hybrid Athletics, LLC filed a Notice of Opposition on the grounds of likelihood of confusion with its mark under Section 2(d) of the Lanham Act. Hybrid pleaded ownership in Application No. 86/000,809 (the ’809 application) for a design mark of its stylized "H" used "in connection with conducting fitness classes; health club services, namely, providing instruction and equipment in the field of physical exercise; personal fitness training services and consultancy; physical fitness instruction" in International Class 41. Hybrid also pleaded common law rights arising from use of the same mark on "athletic apparel, including shirts, hats, shorts and socks" since August 1, 2008. The Board sustained the opposition based on likelihood of confusion with Hybrid’s common law mark. The Board also found that Hybrid failed to establish ownership of the ’809 application. Hylete appealed.

On appeal, Hylete argued that the Board erred in its analysis by failing to compare Hylete’s stylized "H" mark with Hybrid’s "composite common law mark," referring to Hybrid’s stylized "H" design appearing above the phrase "Hybrid Athletics" and several dots. In sum, on appeal Hylete only objected to the Board’s analysis of Hybrid’s "composite common law mark."

Hybrid responded that Hylete’s "composite common law mark" arguments were never raised below and were therefore waived. The Federal Circuit agreed with Hybrid that Hylete waived these arguments. Before the Board Hylete never contended that Hybrid’s common law rights implicated a "composite common law mark" that differed from the stylized "H" design mark identified in the ’809 application, the court noted.

In an effort to circumvent waiver, Hylete contended that the Board "sua sponte" raised the issue of Hybrid’s common law rights in the final decision and used an incorrect legal standard in comparing the two marks. However, even if the Board raised the issue of Hybrid’s common law rights for the first time in its final decision, Hylete never raised the issue in its request for reconsideration, the court observed.

The court further noted that Hybrid pleaded and put Hylete on notice of its claim to common law trademark rights from the initial filing of the Notice of Opposition and submitted evidence of its use of its mark on athletic apparel. Therefore, Hylete could have raised the issue of Hybrid’s "composite common law mark" in the opposition proceedings or in the request for reconsideration but did not do so," the court said. According to the Federal Circuit, none of the exceptional circumstances that would warrant consideration of arguments made for the first time on appeal were present in this case and Hylete suffered no injustice from the court’s refusal to consider Hylete’s waived arguments. Concluding that Hylete’s arguments based on Hybrid’s "composite common law mark" were waived, the court affirmed the Board’s decision.

The case is No. 2017-2057.

Attorneys: Pattric Rawlins (Hargreaves & Savitch LLP) for Hylete LLC. Michael Joseph Kosma (Whitmyer IP Group LLC) for Hybrid Athletics, LLC.

Companies: Hylete LLC; Hybrid Athletics, LLC

MainStory: TopStory Trademark FedCirNews

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