Notice of Oppositionttabvue.uspto.gov/ttabvue/ttabvue-91251098-OPP-1.pdf · 11. On April 30, 2019,...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1003748

Filing date: 09/22/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Notice of Opposition

Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information

Name Poison Spider Bicycles, Inc.

Granted to Dateof previous ex-tension

09/21/2019

Address 497 NORTH MAIN STREETMOAB, UT 84532UNITED STATES

Attorney informa-tion

KEVIN P DWYER150 S. STATE ST. SUITE 100-41SALT LAKE CITY, UT 84111UNITED [email protected](801) 647-0797

Applicant Information

Application No 87812400 Publication date 07/23/2019

Opposition FilingDate

09/22/2019 Opposition Peri-od Ends

09/21/2019

Applicant TAP Worldwide, LLC2100 Highway 55Medina, MN 55340UNITED STATES

Goods/Services Affected by Opposition

Class 025. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Clothing, namely, hats, shirts and jacketsfor promotion of recreational vehicles accessories business

Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d)

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

5552967 Application Date 01/08/2017

Registration Date 09/04/2018 Foreign PriorityDate

NONE

Word Mark POISON SPIDER BICYCLES

http://estta.uspto.gov

Design Mark

Description ofMark

NONE

Goods/Services Class 025. First use: First Use: 1992/01/01 First Use In Commerce: 1992/01/01

Hats; Headbands; Jackets; Leg-warmers; One-piece garments for children;Short-sleeved or long-sleeved t-shirts; Socks; T-shirts; Underwear; Athletic jack-ets; Baseball caps and hats; Bicycle gloves; Clothing, namely, arm warmers;Cycling shorts; Cycling bib shorts; Cyclists' jerseys; Hooded sweatshirts; Light-reflecting jackets; Rain jackets; Rainproof jackets; Short-sleeved or long-sleevedt-shirts; Sports caps and hats; Wind resistantjackets

U.S. RegistrationNo.

2092770 Application Date 04/15/1996

Registration Date 09/02/1997 Foreign PriorityDate

NONE

Word Mark POISON SPIDER BICYCLES

Design Mark

Description ofMark

NONE

Goods/Services Class 042. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00

retail store services featuring bicycles and bicycle accessories, namely, water-bottles, locks, fanny packs, T-shirt, shorts and caps

Related Proceed-ings

Cs. No. 2 16-cv-00148, US Court for the Third District-Utah

Attachments 87292891#TMSN.png( bytes )PSB Opposition to Serial Number 87812400 Registration 092119.pdf(197598bytes )Exhibit A-Order Cs. No. 2 16-cv-00148.pdf(195517 bytes )Exhibit D- Disclaimed Terms.pdf(336683 bytes )Exhibit B -PS Use.pdf(248014 bytes )Exhibit C-Poison Spider Mark.pdf(208042 bytes )Exhibit F-Ebay Sellers.pdf(872539 bytes )Exhibit G-Spyder.pdf(917315 bytes )Exhibit I-Reverse Confusion.pdf(1470307 bytes )Exhibit J- Like goods.pdf(340731 bytes )Exhibit K- Affidavit In Support of Electronic Exhibits 092119.pdf(51671 bytes )Exhibit E-TripAdvisor.pdf(173612 bytes )Exhibit H-T shirt search.pdf(143699 bytes )

Signature /Kevin Dwyer/

Name KEVIN P DWYER

Date 09/22/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE

TRADEMARK TRIAL AND APPEAL BOARD

Opposition To Registration Of Application Serial Number 87812400 On The Principal Register For

The United States Patent And Trademark Office

Plaintiff, Poison Spider Bicycles, Inc., a Utah Corporation

v.

Applicant Ser. No.87812400, TAP Worldwide, LLC.

Notice of Opposition

Plaintiff, Poison Spider Bicycles, Inc., a Utah Corporation, located at 497 N. Main St., Moab, UT

84532 complains that Defendant and Applicant, TAP Worldwide, LLC, a Delaware Limited Liability

Company, located at 2100 Highway 55 Medina, MN 55340 by and through the registration of the intent to

use (Section 1(b)) trademark application Ser. No. 87812400 (“‘400 mark”) would infringe on Plaintiff’s

marks. Thus, pursuant to 37 C.F.R. § 2.101(b), Plaintiff believes that it would be damaged by the

registration of a mark on the Principal Register and exercises its right to file an opposition to the

Trademark Trial and Appeal Board. Plaintiff is the owner of U.S. Registration No. 5552967 and 2092770

marks (“‘967 mark” and “‘770 mark”, respectively), POISON SPIDER BICYCLES, registered against a

variety of clothing items in International Classifications 025 and 042 (“IC 025” and “IC 042”,

respectively) and the unregistered POISON SPIDER mark, also used on a variety of clothing items. The

‘400 mark, when used on or in connection with Applicant’s clothing goods, so resembles Plaintiff’s

marks, that the ‘400 mark is likely to cause confusion, to cause mistake, or to deceive under Section 2(d),

15 U.S.C. § 1052(d), of the Trademark Act. Plaintiff believes that its sales of clothing goods is being

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harmed by Applicant’s use of the confusingly similar ‘400 mark and that registration would further

embolden defendant in its efforts to sell similar IC 025 goods. Plaintiff respectfully requests the Director

of Trademark Trial and Appeals Board refuse registration for the ‘400 mark application.

Undisputed facts

1. Plaintiff is the owner of POISON SPIDER BICYCLES mark which identifies mountain bike

retail entity with an online store and a brick and mortar store established in Moab, UT in 1992

that now has retail sales to more than 25,000 world-wide customers, annually.

2. On April 15, 1996, Plaintiff filed application for the mark POISON SPIDER BICYCLES for use

with “retail store services featuring bicycles and bicycle accessories, namely, water bottles, locks,

fanny packs, T-shirt, shorts and caps” and was granted U.S. Registration No. 2092770 (“‘770

mark”), IC 042,with a first use in commerce in 1992 and registration date September 2, 1997.

3. Defendant is the owner of POISON SPYDER CUSTOMS mark, which identifies an off road

motor vehicle and Jeep online retail and wholesale entity established in 2003.

4. On July 12, 2013, Defendant filed application for the mark POISON SPYDER CUSTOMS for

use with, “Automobiles and automobile parts, namely, custom-made all-terrain on-road and

off-road vehicles, chassis, bumpers, fenders, fender flares” and was granted Registration No.

20134690654 (“‘654 mark”), International Class 012 (“IC 012”), with a first use in commerce in

2003 and a registration date of February 24, 2015.

5. On June 8, 2015, Defendant filed application for the mark POISON SPYDER for use with,

“Automobile and truck parts and accessories, namely, structural parts for automobiles, sidebars,

fender flares, bumpers, bumper caps, roll bars, cab cages, skid plates, step pads, tailgates, signal

mounting brackets as structural parts of vehicles” and was granted Registration No. 5266468

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(“‘468 mark”), IC 012, with a first use in commerce in 2003 and registration date of August 15,

2017.

6. On February 23, 2016, Plaintiff filed suit in Third District-Utah Federal Court, Cs. No.

2:16-cv-00148, alleging that Defendant’s use of the ‘654 and ‘468 marks on hats, T-shirts, socks

and other items was infringinging on Plaintiff’s rights from ‘770 registration.

7. On January 8, 2017, Plaintiff applied for the mark for POISON SPIDER BICYCLES, for use

with IC 025 clothing goods, “Hats; Headbands; Jackets; Leg-warmers; One-piece garments for

children; Short-sleeved or long-sleeved t-shirts; Socks; T-shirts; Underwear; Athletic jackets;

Baseball caps and hats; Bicycle gloves; Clothing, namely, arm warmers; Cycling shorts; Cycling

bib shorts; Cyclists' jerseys; Hooded sweatshirts; Light-reflecting jackets; Rain jackets; Rainproof

jackets; Sports caps and hats; Wind resistant jackets”, and was granted Registration No. 5552967

(“‘967 mark”), with a first use in commerce in 1992 and registration date of September 4, 2018.

8. On February 12, 2018, the Court in Cs. No. 2:16-cv-00148 dismissed the case and granted

Defendant’s motion for summary judgment, dismissing Plaintiff’s claim that Defendant’s use of

its mark on clothing was likely to cause confusion with the ‘770 mark as there is “generally no

overlap between the parties’ products and services” and that Defendant’s branded apparel sales

were de minimis,”a minor subset....of PCS’s (sic) product line.” (Exhibit A, p. 11, 12).

9. On February 27, 2018, Defendant filed an application Ser. No. 87812400 for the mark, POISON

SPYDER, IC 025, for use with, “ Clothing, namely, hats, shirts and jackets for promotion of

recreational vehicles accessories business.”

10. In an Office Action December 27, 2018, the USPTO examiner found that the ‘400 application

was likely to be confused with the ‘967 mark, resulting in a Section 2(d) refusal.

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11. On April 30, 2019, Applicant responded to the Office Action arguing that Cs 2:16-cv-00148 had

determined that there was no likelihood of confusion between Applicant’s application and

Plaintiff’s marks.

12. On July 23, 2019 application Ser. No. 87812400 was published for opposition.

13. On August 18, 2019, Plaintiff sought and was granted a 30 day extension to file opposition to

application Ser. No. 87812400.

Standing

Plaintiff, owner of the U.S. Registration Nos. 2092770 and 5552967 marks, believes it is or will

be damaged by registration of the ‘400 mark. Plaintiff, through its use of the POISON SPIDER

BICYCLES and POISON SPIDER marks, has a real interest in the proceeding, and through its sale of

clothing items featuring these marks, has a reasonable basis to believe that it would suffer damage to its

sales of these items if the confusingly similar ‘400 mark is registered.

Grounds For Complaint

Pursuant to the Trademark Act § 2(d), 15 U.S.C. § 1052(d), Apllicant’s mark against certain

clothing items so resembles a Plaintiff’s ‘967, ‘700 marks and its POISON SPIDER mark used

throughout the United States, as to be likely, when used on or in connection with the clothing goods of

Applicant, to cause confusion, or to cause mistake, or to deceive.

Priority

Plaintiff claims ownership and priority of use of the POISON SPIDER BICYCLES marks, Reg.

Nos. 2092770 and 5552967, first use 1992. Plaintiff has used the common law POISON SPIDER

trademark in advertising as early as April, 2002 (Exhibit B). Since at least March 1, 2009, Registrant has

marketed goods with the POISON SPIDER mark, including hats, socks and cycling shirts/jerseys (Exhibit

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C ). The ‘400 mark has been applied for under Section 1(b) of the Trademark Act and does not have a

date of first use on the goods applied for.

OBJECTION

I. THE APPLICANT’S MARK IS LIKELY TO CAUSE CONFUSION WITH PLAINTIFF’S U.S. TRADEMARK REGISTRATION NOS. 5552967 AND 2092770, UTAH STATE AND COMMON LAW TRADEMARK RIGHTS.

Applicant’s ‘400 mark, POISON SPYDER so resembles Plaintiff’s Reg. Nos. 5552967 and

2092770 marks, POISON SPIDER BICYCLES and Plaintiff’s common law trademark POISON SPIDER

that, when used with IC 025-Clothing goods, it is likely to cause confusion, mistake, or to deceive. In an

Office Action December 27, 2018 the USPTO examiner found that the ‘400 application was likely to be

confused with the ‘967 mark, registered against IC 025-clothing goods. Plaintiff claims that the similarity

in marks and goods between the ‘400 application and Plaintiff’s marks warrant a refusal of registration

there is a likelihood for confusion.

Plaintiff claims that Applicant’s ‘400 mark is likely to cause confusion with the ‘967 and ‘770

marks and common law mark and asserts that: (1) there are similarities in appearance, sound, and

commercial impression of the marks; (2) There is evidence of actual consumer confusion in the

marketplace; (3) the Applicant and Registrant’s brand identities and target consumers are similar; (4) the

use and the manner of marketing between the goods marketed by Applicant and Registrant are similar;

and, (5) Applicant’s and Registrant’s IC 025 goods are low-cost, impulse consumer purchases, such that

Applicant’s mark is likely to cause confusion, mistake, or to deceive under Section 2(d) of the Trademark

Act.

Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in

In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called

the “du Pont factors”). Only those factors that are “relevant and of record” need be considered. M2

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Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006)

(citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004));

see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018. Marks are compared in their

entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion

Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir.

2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d

1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one

of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,

126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014));

TMEP §1207.01(b)McGraw-Edison Co. v. Walt Disney Productions , 787 F.2d 1163, 1167 (7th Cir.

1986). Although not all du Pont factors may be relevant, there are generally two key considerations in any

likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness

of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting

Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir.

2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29

(C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of

differences in the essential characteristics of the goods and differences in the marks.”); TMEP §1207.01.

The relevant factors in analyzing the likelihood of confusion are as follows:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. 2. The similarity or dissimilarity, and nature, of the goods or services as described in an application or registration or in connection with which a prior mark is in use. 3. The similarity or dissimilarity of established, likely to continue trade channels. 4. The conditions under which, and buyers to whom, sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. 5. The fame of the prior mark (sales, advertising, length of use). 6. The number and nature of similar marks in use on similar goods. 7. The nature and extent of any actual confusion.

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8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. 9. The variety of goods on which the mark is or is not used (house mark, “family” mark, product mark). 10. The market interface between applicant and the owner of a prior mark. 11. The extent to which applicant has a right to exclude others from use of its mark on its goods. 12. The extent of potential confusion. 13. Any other established fact probative of the effect of use.

In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).

Six of these factors can be said to be, essential, though non-exhaustive factors in making a

determination of likely to confuse: (1) the degree of similarity between the competing marks; (2) evidence

of actual confusion; (3) the similarity of the parties’ products and the manner in which they market them;

(4) the degree of care that consumers are likely to exercise in purchasing the parties’ products; (5) the

strength of the contesting mark; and, (6) the intent of the alleged infringer in adopting the contested mark.

Vail Assocs., Inc. v. Vend–Tel–Co., Ltd., 516 F.3d 853, 863 (10th Cir. 2008).

A. There is a likelihood of confusion between Applicant's POISON SPYDER mark and Plaintiff’s POISON SPIDER BICYCLES marks.

Plaintiff points to: (1) the degree of similarity between the competing marks; (2) evidence of

actual confusion; (3) the similarity of the parties’ products and the manner in which they market them; (4)

the degree of care that consumers are likely to exercise in purchasing the parties’ products as factors

which show a likelihood for confusion.

1. The marks are virtually identical with respect to their meaning appearance, sound, connotation and commercial impression.

a. The ‘770 and ‘967 POISON SPIDER BICYCLES marks are similar and likely to be

confused with the ‘400 mark.

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Applicant’s mark, POISON SPYDER, and Registrant’s mark, POISON SPIDER BICYCLES, are

similar in overall appearance, sound, connotation and commercial impression because the marks contain

the same term – POISON SPYDER/SPIDER. In other registrations, USPTO Reg. No. 5256826 and

5266536, Applicant enhances the connotation and commercial impression similarity through use of a

stylized spider logo in combination with the POISON SPYDER word mark, compounding the confusion

by emphasizing the similarity in connotation of the marks. Applicant acknowledges in the registration

design code for the ‘826 and ‘536 marks featuring this logo includes designs that are “03.23.12 - Spider

webs; Spiders; Tarantulas.” The Applicant does not dispute that its and Plaintiff’s mark POISON

SPYDER/POISON SPIDER sound identical and would therefore be confused in conversation.

Furthermore, the mark POISON SPYDER, especially when used in stylized fonts, creates a confusingly

similar visual impression to Registrant’s mark, resulting in the marks being likely confused. Thus, within

the context of a type of goods or services, the distinctive elements of the Applicant’s mark or so similar

that they are likely to be confused with Plaintiff’s ‘770 and ‘967 marks.

Plaintiff’s registered marks include the disclaimed term “BICYCLES” in its mark, however the

more dominant feature of the mark are the terms “POISON SPIDER.” Although marks are compared in

their entireties, one feature of a mark may be more significant or dominant in creating a commercial

impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re

Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii),

(c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant

or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 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)); TMEP §1207.01(b)(viii), (c)(ii). In this instance, the Plaintiff has disclaimed

the term “BICYCLES” due to its descriptive nature in relation to its identified goods. As a result,

“POISON SPIDER” is more likely to be impressed upon the memory of the consumer and is accorded

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greater weight, making the common law mark and distinctive elements of the registered mark virtually

identical. Plaintiff, with its POISON SPIDER BICYCLES mark and Applicant, through use of its ‘654

POISON SPYDER CUSTOMS mark, frequently emphasize the dominant terms of their marks, utilizing

different, often smaller fonts for their disclaimed terms, “BICYCLES” and “CUSTOMS,” respectively

(Exhibit D-Disclaimed Terms ). Thus, it is clear that the “POISON SPIDER” and “POISON SPYDER”

elements of the mark are dominant, being promoted to consumers as the source of goods and nearly

identical as to spelling and identical in sound, connotation and commercial impression.

b. There is a likelihood for confusion between Plaintiff’s POISON SPIDER mark and

Applicant’s virtually identical POISON SPYDER mark.

Plaintiff repeats and incorporates its claims about the similarity in the marks alleged above and

claims that its common law POISON SPIDER mark is so similar to Applicant’s mark as to be virtually

identical. The dominant elements of the mark, POISON SPIDER, have become so well known that

Plaintiff uses that common law mark on T-shirts, socks, cycling jerseys and hats. Both Plaintiff and third

parties use the common law POISON SPIDER mark (absent “BICYCLES”) in identifying Plaintiff and its

goods and services (Exhibit E- Trip Advisor). Third party online resellers of Plaintiff POISON SPIDER

BICYCLES and POISON SPIDER marked IC 025 goods regularly refer to them as POISON SPIDER

goods (Exhibit F- Ebay sellers). The pronunciation, connotation and commercial impression of the

Applicant mark and the POISON SPIDER mark are identical, differing only in spelling, by a single letter,

a difference not obvious when communicated orally or via certain fonts. Thus, the use of the virtually

identical common law POISON SPIDER mark by Plaintiff, and third parties when referring to Plaintiff,

creates a further likelihood for confusion with Applicant’s ‘400 mark.

2. There is ample evidence of actual consumer confusion, in both forward and reverse

directions, between Applicant’s and Plaintiff’s marks.

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“[A]ctual confusion in the marketplace is often considered the best evidence of likelihood of

confusion.” King of the Mountain Sports, Inc. at 1092 (internal quotation marks omitted). Even though

the parties presently, generally, have different goods and services, evidence of actual confusion between

Plaintiff’s marks and Applicant’s marks is ample, documented and, unfortunately for Plaintiff, is being

repeated via the internet. While the Court in Cs. No. 2:16-cv-00148 noted seven instances of confusion

(Exhibit A at p.10 ), the confusion both persists and has grown with the internet’s long shelf-life and

Plaintiff’s growing sales and reputation. Like many tourist oriented businesses, Plaintiff depends on print

media, Yelp, Trip Advisor, Google and other online consumer product and service review outlets to

attract customers to its website and, often subsequently, to its Moab, Utah retail outlet or webstore, where

Plaintiff marked clothing items are sold. As is well documented, these internet outlets feature stories and

reviews, clearly and unmistakably about Poison Spider Bicycles, Inc., in which the journalist or reviewer

spells the name of Plaintiff as “Poison Spyder.” (Exhibit G-Spyder). Furthermore, it is clear that internet

search engines are confused, as searches for “poison spider t shirt” return top results for Applicant’s

website and apparel images (Exhibit H- tshirt). This confusion is clear, demonstrates that pronunciation

actual confusion is likely and, due to its enduring internet nature, has the effect of promoting actual

confusion of the infringing brand. Likely arising from the pronunciation and conventional spelling actual

confusion, there is evidence of reverse confusion, where Defendants’ mark and name are confused in

online forums and reviews with Plaintiff’s; wherein writers mistakenly identify PSC by spelling “spyder”

with an “i”. (Exhibit I-Reverse Confusion). Thus, actual confusion, both forward and reverse, are a

constant presence on the internet, misdirecting consumers seeking clothing goods.

3. Plaintiff’s trademarked goods are identical to Applicant’s goods and both parties sell their goods through webstores and brick and mortar outlets .

a. Applicant’s ‘440 marked goods are identical to Plaintiff’s trademarked goods.

In an effort to protect its extensive investment in logos and the marketing of marked goods,

Plaintiff sought and was granted ‘967 mark registration for POISON SPIDER BICYCLES, for use with

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IC 025 clothing goods, “Hats ; Headbands; Jackets ; Leg-warmers; One-piece garments for children;

Short-sleeved or long-sleeved t-shirts ; Socks; T-shirts ; Underwear; Athletic jackets; Baseball caps and

hats ; Bicycle gloves; Clothing, namely, arm warmers; Cycling shorts; Cycling bib shorts; Cyclists'

jerseys; Hooded sweatshirts; Light-reflecting jackets ; Rain jackets ; Rainproof jackets ; Sports caps and

hats ; Wind resistant jackets ” (Emphasis added). The ‘967 mark is the foundation for Plaintiff’s ‘770

mark, POISON SPIDER BICYCLES, for use with IC 042 “retail store services featuring bicycles and

bicycle accessories, namely, water bottles, locks, fanny packs, T-shirt, shorts and caps ” (Emphasis

added). Plaintiff has a common law mark POISON SPIDER which has been featured on T-shirts , cycling

jerseys, hats and other clothing items. Thus, Plaintiff’s historic and more recent mark use and

registrations specifically identify clothing in the form of hats , jackets and shirts as trademarked goods.

Application Ser. No. 87812400 for the mark, POISON SPYDER, IC 025, is for use with,

“Clothing, namely, hats, shirts and jackets for promotion of recreational vehicles accessories business”

(Emphasis added). The overlap between Plaintiff’s goods and Applicant goods and International

Classification (025) is complete as to the ‘967 mark and though without the same Classification,

substantial (shirts and hats) for the ‘770 mark goods and goods which have also been identified with the

POISON SPIDER mark. While Applicant may argue that it attempts to limit the nature of the goods to

“for promotion of recreational vehicles accessories business”, that phrase in no way limits type of goods

or presentation of the mark. Furthermore, Applicant’s current online sales of trademarked jacket, hat and

shirt goods contain designs absent any reference to “recreational vehicles accessories” and the goods are

of a similar nature, quality, price and style to Plaintiff’s trademarked goods (Exhibit J-Like goods ). As

distinct from Cs. No. 2:16-cv-00148, where neither party had marks for IC 025 goods, this opposition is

to registration of the ‘400 mark for IC 025 goods “Clothing, namely, hats, shirts and jackets” which

overlap identically with Plaintiff’s trademarked and registered goods.

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b. Plaintiff and Applicant both use webstores and brick and mortar outlets, as trade channels,

to distribute their products.

Plaintiff’s trademarked clothing goods are distributed via its webstore and at its brick and mortar

retail outlet in Moab, UT (Exhibit A at p. 3 ; Exhibits D, J). Applicant distributes its products through

brick and mortar retail in Utah and a webstore where clothing goods with its marks are sold (Exhibit A at

p. 2; Exhibits D, J ).

(4) Applicant’s and Plaintiff’s IC 025 goods are low-cost, impulse consumer purchases showing a

low degree of consumer care

If consumers are likely to exercise a high degree of care in purchasing a certain product, the

likelihood of confusion is reduced. See, Water Pik, Inc. v. Med-Systems, Inc., 848 F.Supp.2d 1262

(D.Colo. 2012) at 1160; cf University of Kansas v. Sinks , 565 F.Supp.2d 1216 (D. Kan. 2008), finding no

special exercise of care when purchasing T-shirts . Plaintiff and Applicant market goods at similar prices

to end consumers in the general marketplace. While the price of the goods is not determinative of

consumer care, the goods which Plaintiff and Applicant presently market are of low cost (Exhibits D, J),

limiting the amount of time and energy consumers are willing to spend to ensure authenticity. The degree

of consumer care exercised at the time of purchase is better ascertained by inquiring as to whether the

goods are purchased on impulse. See, Sally Beauty, 304 F.3d at 975. Such purchases are impulsive,

immediate and often accomplished with little research due to the temporary and commemorative nature of

vacations and events. Goods of this nature are often purchased based on fit, style and/or color, with

provenance, authenticity and quality, often not researched in advance. The limited opportunity associated

with event and souvenir purchases suggests that consumer care, as to provenance, is low. Therefore,

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consumer care for a purchase of ordinary, low-cost goods, sometimes associated with an event or travel, is

very low.

Parties’ customers, end consumers, regularly engage the mass market and tourist trade. The

parties admit that their target markets off road mountain bike and Jeep enthusiasts have no special

training, licensure, skill, expense or permitting required in their or operation of a Jeep® or mountain bike,

in fact they are often rented. The associated clothing goods marketed by Parties lack RFID, serial

numbers, watermarks, security tags, specification sheets, independent testing or other detail and

provenance associated with sophisticated purchases. End consumers in a mass market purchasing low

cost goods, sometimes impulsively as souvenirs, as is the case for the clothing goods of Parties, are

amongst the least discerning customers in the market. As such, the minimal degree of consumer care

exercised shows that there is a likelihood that POISON SPYDER marked goods will be confused with

those featuring the Plaintiff’s mark.

B. Applicant’s claim that the likelihood for confusion with Plaintiff’s marks was settled in Cs. No.

2:16-cv-00148 is incorrect.

In its response to the USPTO office action December 27, 2018, ‘400 Applicant claims that this

likelihood of confusion issue has already been decided by the U.S. District Court for the Central District

of Utah in Cs. No. 2:16-cv-00148. Since that adjudication, Plaintiff has been granted the ‘967 mark

against jackets, hats, shirts and other clothing. In fact, that Court, did not address the ‘967 mark

registration and rather determined that, when used on certain clothing goods, no likelihood of confusion

exists between Applicant’s Registration No. 4690654 POISON SPYDER CUSTOMS mark (IC 012) and

Registrant’s ‘700 mark, POISON SPIDER BICYCLES, registered against inter alia, “T-shirt, shorts and

caps,” (IC 042). See Exhibit A (the “Summary Judgment Order”). That case did not address the

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likelihood of confusion between Plaintiff’s marks and the POISON SPYDER ‘400 mark, as the ‘967 mark

had not yet been registered, nor had the ‘400 mark been applied for when the case was adjudicated.

Therefore the likelihood for confusion between Plaintiff’s marks and the ‘400 mark is a matter of first

impression, as the’770 mark, registered September 2, 1997, and the ‘967 mark, registered September 4,

2018, exist as a prior registrations to Applicant’s ‘400 mark and Plaintiff claims common law rights to

POISON SPIDER mark, used in commerce at least as early as 2002. All of these marks pertain to

clothing, facts of which the court in Cs. No. 2:16-cv-00148, decided in February of 2018, could not

address for a likelihood for confusion.

Applicant, in its pleadings in Cs. No. 2:16-cv-00148 claimed that its trademarked clothing sales

were de minimis, accounting for less than two percent of sales and the Court found there was generally no

overlap in goods or services between Parties (Exhibit A at p. 11; 12). However, with Applicant’s ‘400

mark application, the issue of likelihood for confusion is clearly novel, as the goods it applies to are now

the same and overlap Plaintiff’s recently granted ‘967 goods and its ‘770 goods and those used with the

common law POISON SPIDER mark. Thus, Cs. No. 2:16-cv-00148 was instructive to parties as to their

rights at the time and their need to enhance them (vis a vis the ‘967 mark, for instance) but does not have

bearing on the likelihood for confusion in the present circumstance and for IC 025 clothing goods.

Subsequent to Cs. No. 2:16-cv-00148, Plaintiff has secured the ‘967 registration and expanded its use of

the POISON SPIDER mark while, more recently, Applicant has filed a 1(b) application for its mark on

goods which it previously claimed were ancillary to its business. Thus, the priority rights of Plaintiff’s

trademarks against clothing goods are valid grounds for opposition to the ‘440 mark, facts not examined

by the Court in Cs. No. 2:16-cv-00148 .

II. CONCLUSION

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Under Trademark Act § 2(d), 15 U.S.C. § 1052(d) Plaintiff claims its marks so resembles

Applicant’s mark as to be likely, when applied to the goods and/or services of the Plaintiff, to cause

confusion, then the registration sought by Applicant should be refused because Plaintiff has priority of

use. While previous litigation between the Parties over their marks involved the marks against goods in

different International Classifications, this opposition should be sustained because of Plaintiff’s priority in

registration and common law use of its trademarks which would likely be confused with Applicant’s mark

on the clothing goods applied for in IC 025. Thus, pursuant to 15 U.S.C. § 1068 [Trademark Act § 18], as

remedy, Plaintiff requests that the Director refuse to register the Applicant’s mark.

Respectfully submitted September 21, 2019.

/Kevin Dwyer/ Kevin Dwyer, attorney for plaintiff, Poison Spider Bicycles, Inc. Affadavit an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached, and must be identified and introduced in evidence as an exhibit during the period for the taking of testimony.

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF UTAH, CENTRAL DIVISION

POISON SPIDER BICYCLES, INC., a Utah

corporation,

Plaintiff,

v.

TAP MANUFACTURING, LLC, a Delaware

limited liability company; POISON SPYDER

CUSTOMS, INC., a California corporation;

LAWRENCE ROBERT McRAE, an individual

residing in California; and JOHN DOES 1- 20,

Defendants.

MEMORANDUM DECISION AND

ORDER GRANTING DEFENDANTS’

MOTION FOR SUMMARY

JUDGMENT

Judge Clark Waddoups

Case No.: 2:16-cv-00148

This dispute is between a bicycle shop and an off-road vehicle company with similar

names inspired by a local public trail. Defendants TAP Manufacturing, LLP (TAP), Poison

Spyder Customs, Inc. (PSC), and Lawrence Robert McRae (McRae) (collectively, Defendants),

seek summary judgment on plaintiff’s first, second, fifth, seventh, and ninth claims of trademark

infringement and unfair competition under federal, state, and common law. Defendants also seek

summary judgment on plaintiff’s third, fourth, and eighth claims of trademark dilution under

federal, state, and common law, as well as plaintiff’s sixth claim under the Utah Consumer Sales

Practices Act. The court held a hearing on this motion on January 10, 2018. Having found that

plaintiff failed to show excusable neglect to warrant modifying its prior order denying plaintiff’s

motion for extension of time to file its opposition to Defendants’ motion for summary judgment,

the court allowed plaintiff to argue the legal merits of Defendants’ motion in the context of the

undisputed facts in Defendants’ motion for summary judgment. (ECF No. 52.) After considering

Case 2:16-cv-00148-CW Document 53 Filed 02/12/18 Page 1 of 17

2

the parties’ memoranda, the record, relevant legal authority, and hearing oral argument, the court

GRANTS Defendants’ motion for summary judgment in its entirety. (ECF No. 27.)

BACKGROUND

A. The Origin of Poison Spyder Customs

Clifton Slay formed PSC in 2002 to produce heavily customized off-road vehicles based

loosely on the Jeep Wrangler platform. (ECF No. 27 at 2.) The vehicles are capable of “rock

crawling,” or literal scaling of boulder-strewn off-road trails. The company’s name was inspired

by the Poison Spider Mesa public trail located outside of Moab, Utah, which is popular with

cyclists and off-road enthusiasts. Mr. McRae purchased the company in 2008 and operated it

until January 2015, when its assets were purchased by TAP. TAP is a large nationwide

manufacturer, distributor, and retailer of off-road parts and accessors for trucks and SUV’s.

Under the PSC brand, TAP markets and sells hundreds of unique parts and accessories ranging

from bumpers and roll cages to off-road lighting and customized hood louvers. TAP sells the

PSC products in its nationwide chain of retail stores (4 Wheel Parts Performance Centers), on its

Internet websites, and through many third-party distributors and retailers of off-road automotive

products and services. (Id. at 3-4.)

B. The PSC Brand

The PSC brand is designed to appeal to the off-road Jeep enthusiast market. Many of

TAP’s products have the stylized PCS spider logo cut by laser into the product itself, such that

every vehicle with a PSC product installed becomes a mobile advertisement. The PSC

trademarks are also utilized online and in print magazines and advertisements. (Id. at 4.) PCS

trademarks and brands are also promoted through in-person promotional activities, such as at

nationwide rock-crawling events including the Easter Jeep Safari in Moab, Utah; the Bantam


3

Jeep Heritage Festival in Butler, Pennsylvania; and the Pickens Sheriff’s Jeep Fest in Jaspar,

Georgia. TAP also promotes the PCS brand via a line of “swag” merchandise featuring the PSC

logo and usually its name on items such as T-shirts, hats, and the like. (Id. at 5.) Such “swag”

makes up around two percent of PCS’s annual sales. (Id. at 7.) TAP has never sold bicycle

products, has not marketed to the cycling industry or consumer, and does not intend to enter the

cycling market. (Id. at 12.)

C. The PSC Marks

The words “Poison Spyder Customs” or “Poison Spyder” and a fanciful representation of

a spider comprise PCS’s trademarks, which have been in use continually since the company

began operating in 2003. PCS originally obtained a United States Trademark Registration for

“Poison Spyder Customs” in 2006, which was renewed in 2013, for “automobiles and

automobile parts, namely custom-made all-terrain off-road vehicles, chassis and bumpers.” (Id.

at 6.)

TAP’s applications for registration of these marks for apparel have either been rejected or are

suspended pending review following resolution of this lawsuit. (Id.)

D. Poison Spider Bicycles

Plaintiff Poison Spider Bicycles is a bicycle shop located in Moab, Utah whose name was

similarly derived from the local public Poison Spider Mesa trail. (ECF No. 27 at 7.) Its primary

focus is its brick and mortar business, although it does sell via the Internet as well. (Id. at 13-14.)


4

In September 1997, plaintiff registered a trademark for “Poison Spider Bicycles” for “retail store

services featuring bicycles and bicycle accessories, namely, water bottles, locks, fanny packs, T-

shirt, shorts and caps.” (Id. at 7.) Plaintiff believes its customers purchase its branded apparel

items primarily to identify with the Poison Spider Bicycles brand. (Id. at 13.) Plaintiff does not

sell off-road parts and accessories nor service off-road vehicles, and has no intention to expand

its brand into this market. (Id.) Plaintiff’s marks and logos have been presented differently over

the years:

Website, 2000 (ECF No. 27 at 22.) T-shirt designs, 2002 (ECF No. 27 at 23.)

Apparel, 2004 (ECF No. 27 at 24.) Website, 2007 (ECF No. 27 at 24.)

Website, 2011 (ECF No. 27 at 24.) Website, 2013 (ECF No. 27 at 24.)


5

Plaintiff’s trademark registration application for its Poison Spider Bicycles mark in the apparel

class was suspended indefinitely due to TAP’s prior apparel class application. (ECF No. 27 at 7.)

SUMMARY JUDGMENT STANDARD

“The court shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter of law.”

Fed.R.Civ.P. 56(a). When applying this standard, the court must “review the evidence and draw

reasonable inferences therefrom in a light most favorable to the nonmoving party.” Commercial

Union Ins. Co. v. Sea Harvest Seafood Co., 251 F.3d 1294, 1298 (10th Cir. 2001). The moving

party bears the initial burden of demonstrating the absence of a genuine issue of material fact.

Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the movant has met this initial burden,

the burden shifts to the nonmoving party to “‘set forth specific facts showing that there is a

genuine issue for trial.’” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986) (quoting

First Nat’l Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 288 (1968)). In doing so, the

nonmoving party “must do more than simply show that there is some metaphysical doubt as to

the material facts.” Matsushita Elec. Indust. Co. v. Zenith Radio Corp., 475 U.S. 574, 586

(1986). Instead, the nonmoving party is required to “go beyond the pleadings” and identify

specific facts that support each element of its case. See McKnight v. Kimberly Clark Corp., 149

F.3d 1125, 1128 (10th Cir. 1998) (quoting Celotex, 477 U.S. at 322). “The plain language of

Rule 56(c) mandates the entry of summary judgment . . . against a party who fails to make a

showing sufficient to establish the existence of an element essential to that party’s case, and on

which that party will bear the burden of proof at trial.” Celotex, 477 U.S. at 322.


6

ANALYSIS

I. Trademark Infringement and Unfair Competition Claims

Analysis of trademark infringement and unfair competition claims hinge on the

likelihood of confusion between similar marks. See 15 U.S.C. § 1114(a); 15 U.S.C.

§ 1125(a)(1)(A); Utah Code Ann. §70-3a-402(1)(a)(ii). “Although ‘likelihood of confusion is

frequently a fairly disputed issue of fact on which reasonable minds may differ, the issue is

amenable to summary judgment in appropriate cases.’” King of the Mt. Sports, Inc. v. Chrysler

Corp., 185 F.3d 1084, 1089 (quoting Universal Money Ctrs., Inc. v. AT&T, 22 F.3d 1527, 1530

n.2 (10th Cir. 1994).) The Tenth Circuit has identified a list of non-exhaustive, interrelated

factors for a court to consider when determining whether a likelihood of confusion exists

between two marks, none of which alone is dispositive:

(a) the degree of similarity between the marks;

(b) the intent of the alleged infringer in adopting its mark;

(c) evidence of actual confusion;

(d) the relation in use and the manner of marketing between the goods or services

marketed by the competing parties;

(e) the degree of care likely to be exercised by purchasers; and

(f) the strength or weakness of the marks.

King of the Mtn. Sports, 185 F.3d at 1089–90. The court considers each factor below.

A. The degree of similarity between the marks.

The degree of similarity between marks is tested on “three levels: sight, sound, and

meaning.” Id. at 1090. The marks are not compared side-by-side; instead, “‘the court must

determine whether the alleged infringing mark will be confusing to the public when singly

presented.’” Id.(quoting Universal Money Ctrs., 22 F.3d at 1531. “[E]vidence of actual confusion

in the marketplace may be the best indication of likelihood of confusion.” Sally Beauty Co., Inc.

v. Beautyco, Inc., 304 F.3d 964, 974 (10th Cir. 2002). “Such evidence may be introduced


7

through surveys, although their evidentiary value depends on the methodology and questions

asked.” Id. Here, the plaintiff conducted no survey(s) and designated no expert witness. This

factor weighs in favor of Defendants solely on the basis that plaintiff failed to adequately present

evidence of actual confusion.

The court is also not persuaded that the parties’ use of the same or similar words

demonstrates a likelihood of actual confusion. See Big Dog Motorcycles, LLC v. Big Dog

Holdings, Inc., 402 F. Supp.2d 1312, 1325 (D. Kan. 2005). This is especially true where

plaintiff’s mark has been inconsistently used. See Sally Beauty Co., 304 F.3d at 973

(differentiating between marks consisting of words alone and those involving pictorial designs

with clearly dominant visual elements). In Big Dog Motorcycles, two marks using “Big Dog” in

their titles had different graphics and fonts whereby one mark conveyed a “fun, sassy meaning”

while the other, which contained “skulls, flames, spades [and] Maltese crosses . . .” conveyed a

measure of superiority vis a vis other motorcycle brands. 402 F. Supp.2d at 1327–28.

Additionally, where two marks utilize different additional terms or logos––even if the

additional terms are disclaimed––the court is less likely to find evidence of confusion. For

example, in Universal Money Ctrs., Inc., supra, 22 F.3d at 1531, both parties used the term

“universal,” although each party’s mark used additional terms or logos in conjunction with

“universal” that were quite different from each other. Thus, in comparing the marks as a whole,

there was little risk of likelihood of confusion.

Applying that reasoning here, plaintiff’s registration of the phrase “Poison Spider

Bicycles” is primarily similar to Defendants’ “Poison Spyder Customs” in that the first two

words of the mark sound the same. Otherwise, the respective marks are very different. To begin

with, each mark has a different word at the end: “Bicycles” for the plaintiff’s mark, and


8

“Customs” for Defendants’ mark. These additional terms carry different meaning. Plaintiff’s

“Poison Spider Bicycles” mark began as a somewhat kitchy, fun mark that has grown somewhat

more serious in recent years, but in any event promotes cycling, family fun, and respect for the

environment consistent with their website. The PSC marks convey a very different message,

namely promoting heavily customized machines designed to conquer nature in large off-road

vehicles that can surmount car-sized boulders, appealing to a more extreme, less environmentally

protective clientele. Second, the word “spider” is spelled differently in the two marks, with

TAP’s PSC mark using a “y” in “spyder.” Third, beyond the fact that both logos invoke spiders,

there is little similarity between TAP’s spider logo––which is a graphical, stylized representation

of a spider that is not intended to be realistic––and plaintiff’s various spider logos, which have

both varied over the years and are generally representative of an actual spider.

Accordingly, while a portion of the parties’ respective marks sound the same or similar,

they are in other respects quite different and convey very different messages by design. In

addition to plaintiff having failed to provide tangible evidence of actual confusion in the

marketplace, these differences weigh heavily against finding a likelihood of confusion between

the two marks.

B. The intent of the alleged infringer in adopting its mark.

This factor focuses on “‘whether defendant had the intent to derive benefit from the

reputation or goodwill of plaintiff.’” King of the Mtn. Sports, 185 F.3d at 1091 (quoting

Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir. 1987). The undisputed

evidence is that both parties derived the inspiration for their names and marks from a well-

known geographical location, Poison Spider Mesa Trail, in Moab, Utah. For plaintiff’s purposes,

the location is well known, at least locally, as a scenic mountain biking trail. For TAP and its


9

predecessors, Moab, Utah is well known for the annual and long-running Easter Jeep Safari

event; the Poison Spider Mesa Trail in particular is well known nationally to Jeep enthusiasts as

one of the most difficult and scenic Jeep trails nationwide. The court has no facts before it that

support an inference that Defendants adopted the “poison spyder” portion of their mark with the

intent to derive benefit from plaintiff’s mark, as opposed to the intent to benefit from name

recognition of the public trail itself. Thus, this factor weighs heavily against a finding of

likelihood of confusion.

C. Evidence of actual confusion.

“De minimis evidence of actual confusion does not establish the existence of a genuine

issue of material fact regarding the likelihood of confusion.” Universal Money Ctrs., 222 F.3d at

1535; see also 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition

§ 23:02[2][b], at 29 (3d ed. 1992) (“Evidence of actual confusion of a very limited scope may be

dismissed as de minimis: ‘Probable confusion cannot be shown by pointing out that at some

place, at some time, someone made a false identification.’” (quoting McGraw-Hill Pub. Co. v.

American Aviation Assocs., Inc., 117 F.2d 293, 295 (D.C. Cir. 1940)).

Plaintiff has produced documents and/or testimony referencing only two instances of

alleged actual confusion. Specifically, in the deposition of Scott Newton, President and owner of

Poison Spider Bicycles, he named two individuals/customers who allege they saw Defendants’

Jeeps and thought they may be affiliated with the bicycle shop. (See ECF No. 30-23.) “Because

we must view the evidence in the light most favorable to [plaintiff] . . . we assume [this

testimony] constitute[s] some evidence of actual confusion, though this is a generous

interpretation of the record.” Universal Money Ctrs., Inc., 22 F.3d at 1535. “Nevertheless,

evidence of some actual confusion does not dictate a finding of likelihood of confusion.” Id. See


10

also King of the Mtn. Sports, 185 F.3d at 1092 (“After carefully reviewing the record, we have

found that plaintiff has put into evidence, at most, only seven examples of actual confusion. This

handful of anecdotal evidence is de minimis and does not support a finding of a genuine issue of

material fact as to the likelihood of confusion, especially in light of the complete lack of

similarity between the defendants’ uses and plaintiff’s mark.”) Accordingly, this factor also

weighs in favor of Defendants.

D. The relation in use and the manner of marketing between the goods or

services marketed by the competing parties.

“Typically, ‘the greater the similarity between the products and services, the greater the

likelihood of confusion.’” King of the Mt. Sports, 185 F.3d at 1092 (quoting Universal Money

Ctrs., 22 F.3d at 1532). In Big Dog Motorcycles, as plaintiff has done here, the party alleging

infringement attempted to cast the case as a dispute between two sellers of apparel, when in fact

one of the party’s core product offerings was new motorcycles. As the court noted, “the

similarity of products would appear at first blush to weigh strongly in favor of a likelihood of

confusion with respect to Motorcycles’ apparel and collectibles because the two product lines are

so similar.” 402 F. Supp.2d at 1329. It was undisputed, however, that “Motorcycles’ apparel and

collectible sales comprise less than one percent of its total sales. Thus, ‘there is generally no

overlap, except when considering a limited subset of products.’” Id. at 1330 (quoting Autozone,

Inc. v. Tandy Corp., 373 F.3d 786, 798 (6th Cir. 2004). As a result, “although the parties’

products lines are similar with respect to apparel and collectibles, the significance of that

similarity is diminished by the fact that the two companies generally occupy two separate and

distinct market niches.” Id. Furthermore, the court determined that the parties’ marketing

channels were similarly divergent, with Motorcycles’ marketing focused in licensed motorcycle


11

dealerships and its showroom, and defendant’s marketing through its own retail stores, catalogs,

and the Internet. Id.

Plaintiff is a bicycle shop primarily focused on products and services related to bicycles

in Moab, Utah, including new and used bicycles, bicycle rentals, bicycle service, bicycle tours,

etc. Its registered mark includes bicycles and bicycle accessories, including water bottles, fanny

packs, caps and T-shirts. Plaintiff does not compete in the off-road vehicle accessory market,

does not sell off-road parts and accessories or service off-road vehicles, and has no plans to do

so. Plaintiff admits, however, that their apparel sales are a marketing tool:

Q. You’re selling T-shirts to customers as a means of further advertising your brand, your

bicycle brand, and permitting customers to further identify with that brand, correct?

A. Yes.

(ECF No. 30-23 at 14.) Thus, customers purchase plaintiff’s branded apparel to further identify

with the brand they like––admittedly a full service bike shop––not because they are confused.

TAP’s primary products and services are related to the customization of Jeep SUVs for

hardcore off-road use. Services are focused on nationwide Jeep owners who want to upgrade the

look and/or off-road capability of their vehicles. TAP does not sell or service bicycles or bicycle

accessories. TAP’s sale of its branded apparel or clothing is only marginally related to the

Defendants’ off-road events; in fact, Defendants’ undisputed evidence is that sale of their

branded apparel amounts to only two percent of their revenue. Like plaintiff’s customers,

Defendants’ customers purchase its branded apparel to further identify with the PSC brand they

like, not because they are confused. The undisputed affidavit of TAP’s General Manager Rick

Hartwick states that TAP’s products are marketed to off-road enthusiasts looking to upgrade

their Jeep and who “can afford to purchase premium quality parts and accessories.” (ECF No. 29


12

¶ 6.) There is generally no overlap between the parties’ products and services, except when

considering a minor subset (branded apparel) of PCS’s product line. As a result, this factor also

weighs heavily against a finding of likelihood of confusion.

E. The degree of care likely to be exercised by purchasers.

“A consumer exercising a high degree of care in selecting a product reduces the

likelihood of confusing similar trade claims.” King of the Mtn. Sports, 185 F.3d at 1091.

“‘The relevant inquiry focuses on the consumer’s degree of care exercised at the time of

purchase.’” Big Dog Motorcycles, 402 F.Supp.2d at 1335 (quoting Sally Beauty Co., 304 F.3d at

975). Here, the target demographic of the parties’ respective products are niche markets, bicycle

or Jeep enthusiasts who are in all likelihood purchasing one of the parties’ branded apparel items

to further identify with that brand. The parties presented little evidence either way about actual

customer degree of care. Given the totality of circumstances here, “even if plaintiff’s current and

potential customers exercise a high degree of care, it would have little impact on our

determination regarding likelihood of confusion in this case.” King of the Mtn. Sports, 185 F.3d

at 1092.

F. The strength or weakness of the marks.

“‘A strong trademark is one that is rarely used by parties other than the owner of the

trademark, while a weak trademark is one that is often used by other parties.’” King of the

Mountain, 185 F.3d at 1093 (quoting First Sav. Bank, 101 F.3d at 653). “‘The greater the number

of identical or more or less similar trademarks already in use on different kinds of goods, the less

is the likelihood of confusion’ between any two specific goods incorporating the weak mark.”

Universal Money Ctrs., 22 F.3d at 1533 (quoting Restatement of Torts § 729, comment

q (1938)). Defendants submitted a list of thirty third parties who have registered trademarks


13

using the word “spider.” (See ECF No. 30-21.) Given that the term is used by a significant

number of entities, it cannot be said to represent a strong mark. Vail Assocs. v. Vend-Tel-Co.,

Ltd., 516 F.3d 853, 867 (10th Cir. 2008) (“the term is used by a significant number of entities

and is thus a relatively weak mark.”).

The Tenth Circuit requires consideration of two factors regarding the relative strength of

a mark: “(1) Conceptual Strength: the placement of the mark on the [distinctiveness or fanciful-

suggestive-descriptive] spectrum; and (2) Commercial Strength: the marketplace recognition

value of the mark.” King of the Mtn. Sports, 185 F.3d at 1093 (internal quotations omitted).

“Under the conceptual strength prong, the categories. in descending order of strength, are:

fanciful, arbitrary; suggestive; descriptive; and generic.” Id. Here, both parties acquired the first

two words of their marks from a geographic location––the Poison Spider Mesa Trail––and thus

represent descriptive marks not high on the conceptual strength prong. Furthermore, a

geographically-descriptive mark like the one here does not easily acquire strong secondary

meaning. See Tony’s Taps, LLC v. PS Enters., No. 08-cv-01119-MSK-KLM, 2012 U.S. Dist.

LEXIS 43293, *29-30 n.14 (D. Colo. March 29, 2012) (“For a geographically-descriptive mark

to acquire secondary meaning, the public must cease to view the geographic portion of the mark

as denoting a place, and instead come to understand the geographic term as identifying an

entity.” (citing OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 340 (4th Cir. 2009) (giving

examples of “KENTUCKY fried chicken” and “AMERICAN airlines” [as] “geographically

descriptive marks that have established secondary meanings in consumer’s minds, causing

consumers to recognize a brand or source or fried chicken or air travel, rather than the places,

Kentucky and America.”)


14

As for the commercial strength of plaintiff’s mark, while plaintiff may have held its

trademark for years, “incontestable status should not dictate the conclusion that the mark is

strong with no further analysis.” Vail Assocs., 516 F.3d at 867. While plaintiff has undoubtedly

established a following in the cycling community in Southern Utah, which is viewed in the light

most favorably to plaintiff, this does not itself establish a mark of any particular strength and

does not alone establish a genuine issue of fact suggesting a likelihood of confusion between the

two marks.

For all of the foregoing reasons, the court finds that there is no likelihood of confusion

between the two marks and GRANTS summary judgment in favor of Defendants as to claims

one, two, seven, and nine.

II. Trademark Dilution Claims

To establish a federal or Utah state claim for trademark dilution, plaintiff must establish

that it owns a famous mark and that Defendants’ use has or will cause dilution. See 15 U.S.C.

§ 1125; U.C.A. § 70-3a-403. A dilution claim can only be maintained if plaintiff’s mark was

famous before Defendants began their use of their logo. See id. A mark is “famous” if “it is

widely recognized by the general consuming public.” 15 U.S.C. § 1125(c)(2)(A). Additionally,

the court considers the “duration, extent and geographic reach of advertising and publicity of the

mark”; the “amount, volume, and geographic extent of sales”; “extent of actual recognition of the

mark”; and “whether the mark was registered.” Id. Although plaintiff claims its mark is famous,

it failed to proffer any admissible evidence to support the claim, including any of the four factors


15

cited by statute.1 On the contrary, during his deposition Scott Newton admitted the fame of

Poison Spider is “not up there with Kleenex.” (Newton Dep. at 110:1-13, ECF No. 29-23.)

Certainly there is no evidence that plaintiff’s mark was “famous” as of 2003, the year in which

TAP’s predecessor in interest began using the PSC marks in commerce. The limited information

available regarding plaintiff’s annual sales and advertising/promotional expenses also do not

support a widespread market or wide recognition of plaintiff’s mark among the general

consuming public.

Even viewing the record in the light most favorable to plaintiff, and assuming plaintiff is

“famous” in the local Moab bicycling community or throughout Southern Utah, the 2006

amendments to § 1225(c)(2)(A) require more than “niche market fame” to support that its mark

was “famous” within the meaning of the trademark dilution statutes. See also King of the Mtn.

Sports, 968 F. Supp. at 578 (ruling that fame within the narrow market of hunting apparel is

insufficient for purposes of trademark dilution); Water Pik, Inc. v. Med-Sys., Inc., 848 F.Supp.2d

1262, 1282–83 (D. Colo. 2012) (ruling that fame within the niche sinus irrigation market fails to

establish fame for purposes of trademark dilution); Hodgon Power Co. v. Alliant Techsystems,

Inc., 497 F. Supp.2d 1221, 1231 (granting summary judgment on grounds that “plaintiff has

presented no evidence demonstrating the level of public recognition of its mark or that it is

famous outside the narrow gunpowder market”). In sum, plaintiff has not established that its

mark has become a household name in Utah, much less in the United States as a whole. At best,

plaintiff has created a following for its mark in the cycling enthusiast community in and around

Moab, Utah. This is wholly insufficient for purposes of establishing fame within the meaning of

1 Defendants reference plaintiff’s mark as having been registered, but plaintiff did not provide

evidence of its actual trademark registration. For purposes of this opinion, the court assumes that

plaintiff’s mark is properly registered as represented.


16

federal and state dilution statutes. Therefore, the court grants Defendants summary judgment on

claims three, four, and eight of the Complaint.

III. Utah Unfair Competition Act Claim

A claim for violation of the Utah Unfair Competition Act requires “an intentional business

act or practice that: (i)(A) is unlawful, unfair, or fraudulent; and (B) leads to a material

diminution in value of intellectual property; and (ii) is one of the following: . . . (B) infringement

of a patent, trademark, or trade name.” Utah Code Ann. § 13-5a-102. Courts interpreting this Act

have found that the complaint must allege something “beyond simple trademark infringement” to

satisfy the requirements; stated differently, plaintiff must prove “infringement-plus.” Eleutian

Tech., Inc. v. Ellucian Co., L.P., No. 2:15-CV-00649, 2017 U.S. Dist. LEXIS 25589, *10-11,

*22 (D. Utah Feb. 21, 2017). In other words, in addition to trademark infringement, plaintiff

must prove the existence of a business practice that is “unlawful, unfair, or fraudulent.” Klein-

Becker USA, LLC v. Home Shopping Network, Inc., No. 2:05-CV-00200 PGC, 2005 WL

2265007, at *6 (D. Utah Aug. 31, 2005).

According to plaintiff’s complaint, “Defendants, through their Internet, advertising and

search engine marketing, have engaged in unfair competition by intentionally using Poison

Spider Bicycles, Inc.’s name, marks and location to trade on Poison Spider Bicycles, Inc.’s long-

standing and hard-earned goodwill in its name and marks….” (Compl. ¶ 83.) In plaintiff’s

opposition brief, this allegation expanded to “[t]he marketing of PSC marked Complained Goods

by Defendants and third parties [eBay and Amazon stores] has caused internet search results for

the terms ‘Poison Spider T-shirt’ to default to and show only Defendants’ goods on the first page

of results.” (Pl. Opp’n 21, ECF No. 38.) There is no evidence to support these allegations.

Plaintiff’s owner Scott Newton admitted at his deposition that no analysis had been conducted to


17

determine whether Defendants were, in fact, utilizing metadata on their website to improperly

influence search terms, saying only “I would say that’s something I suspect is happening.”

(Newton Dep. at 135:9-231, ECF No. 29-23.) Additionally, plaintiff’s search term result

screenshots are unauthenticated and inadmissible, even if the court had not stricken plaintiff’s

opposition briefing due to untimeliness. Thus, the court grants Defendants’ motion for summary

judgment on claim five.

IV. Utah Consumer Sales Practice Act Claim

The purpose of Utah Code Ann. § 13-11-2(2) is “to protect consumers from suppliers

who commit deceptive and unconscionable sales practices.” Specifically, “[a] deceptive act or

practice by a supplier in connection with a consumer transaction violates this chapter.”

U.C.A. § 13-11-4 (emphasis added). Plaintiff’s Complaint fails to allege, nor is there any

admissible evidence, that the parties engaged in a “consumer transaction” that gave rise to a

cognizable loss within the meaning of the Utah Consumer Sales Practice Act. Accordingly, the

court grants summary judgment to Defendants on claim six.

CONCLUSION

For the foregoing reasons, the court GRANTS summary judgment in favor of Defendants

on all claims and this action is dismissed.

DATED this 12th day of February, 2018.

BY THE COURT:

___________________________________

Honorable Clark Waddoups

United States District Judge


Exhibit D

Exhibit B-PS Use

Exhibit C-Poison Spider Mark

Exhibit F-Ebay Sellers

Exhibit G-Spyder

Exhibit I-Reverse Confusion

Exhibit J- Like goods

Exhibit K-Affidavit

Kevin Dwyer's Affidavit In Support of Electronic Business Statements Opposition to Ser. No. 87812400

1. I state that I, Kevin Dwyer, attorney at law, conducted research into Applicant and Plaintiff, Poison Spider Bicycles, Inc., Ser. No. 87812400.

2. From that research, I developed images and records used as exhibits in this matter.

3. Additionally, I prepared electronic images of goods for sale with the Poison Spider Bicycles and Poison Spyder marks.

4. I confirm that the contents of the images and documents are identical to the information accessed through the digital photographs and computer terminal operated by me.

5. Accordingly, I make this affidavit to certify that the documents that I have prepared are true, correct and what they purport to be.

/Kevin Dwyer/

Kevin Dwyer, attorney at law

Exhibit E-TripAdvisor

Exhibit H-T shirt search

Notice of Oppositionttabvue.uspto.gov/ttabvue/ttabvue-91251098-OPP-1.pdf · 11. On April 30, 2019,...

Documents

Transcript of Notice of Oppositionttabvue.uspto.gov/ttabvue/ttabvue-91251098-OPP-1.pdf · 11. On April 30, 2019,...