No Fear, Inc.v.Steven Matthew Day

Trademark Trial and Appeal Board

Aug 31, 1999

No. 91102129 (T.T.A.B. Aug. 31, 1999)

Paper No. 19
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 31, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
No Fear, Inc.
v.
Steven Matthew Day
_______
Opposition No. 102,129
to Application No.74/714,827
filed on August 14, 1995
_______
Kit M. Stetina, William J. Brucker and Darren S. Rimer of
Stetina, Brunda, Garred & Brucker for opposer.
Steven Matthew Day, pro se.
_______
Before Cissel, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
No Fear, Inc. filed its opposition to the application
of Steven Matthew Day to register the mark NO SPILLS, NO
THRILLS for “clothing, namely, T-shirts and sweatshirts,
footwear and head wear” in International Class 25.1

1 Application Serial No. 74/714,827, filed August 14, 1995, based upon
an allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
Opposition No. 102,129
2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered NO FEAR
marks noted below as to be likely to cause confusion,
deception or mistake under Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d).
Registration No. 1,855,0312 for the mark NO FEAR
for various jewelry, clothing and footwear items,
including T-shirts, sweatshirts, visors, sandals
and shoes.
Registration No. 1,737,4203 for the mark shown
below for various items of wearing apparel,
including, T-shirts, sweat shirts, hats and
visors; and for surfboards, skateboards and
various items used in connection therewith.

2 Registered September 20, 1994, in International Classes 14 and 25.
3 Registered December 1, 1992, in International Classes 16, 25 and 28.
Affidavit under Section 8 accepted.
Opposition No. 102,129
3
Registration No. 1,842,4024 for the mark shown
below for footwear.
Registration No. 1,856,7525 for the mark shown
below for decals and for various items of wearing
apparel, including T-shirts, sweatshirts, visors,
shoes and caps.

4 Registered June 28, 1994, in International Class 25.
5 Registered October 4, 1994, in International Classes 16 and 25.
Opposition No. 102,129
4
Opposer also alleges prior use of “a plurality of
variations of the NO FEAR trademark, all conveying an
‘absence of fear’ for wearing apparel.”
Applicant, in his answer, denied the salient
allegations of opposer’s claim. Also in his answer,
applicant admits that opposer markets a variety of wearing
apparel; that opposer has used the mark NO FEAR and
variations of the NO FEAR mark, “all conveying ‘an absence
of fear,’” in connection with wearing apparel; that opposer
owns the four pleaded registrations; and that the channels
of trade for opposer’s and applicant’s goods would be the
same. Applicant asserts that his proposed mark, NO SPILLS,
NO THRILLS, is not similar to opposer’s NO FEAR mark and
does not, and is not intended to, convey “an absence of
fear”; and that his mark “conveys the message that it is
okay to be awkward and fall down, in fact, it can be
thrilling.”
The Record
The record consists of the pleadings; the file of the
involved application; excerpts from printed publications
made of record by opposer’s notice of reliance; by
stipulation of the parties, the discovery deposition by
opposer of applicant, Steven Matthew Day, with accompanying
Opposition No. 102,129
5
exhibits; and the testimony deposition by opposer of Marty
Moates, opposer’s vice president of trademark security,
with accompanying exhibits. Applicant filed no evidence
and took no testimony. Both parties filed briefs on the
case, but a hearing was not requested.
The Parties
Opposer, through its vice president for trademark
security, Marty Moates, testified that it has used the NO
FEAR mark on a variety of goods, principally wearing
apparel, since 1990; that 35% of opposer’s sales are
imprinted T-shirts; that opposer’s annual sales for the
years 1993 to the present are over $100 million6; and that
opposer spends about $12 million annually on promotion.
Mr. Moates stated his opinion that opposer’s NO FEAR mark
is famous.
Opposer promotes its products through brand imaging,
i.e., its advertising promotes a certain image, rather than
showcasing the product or NO FEAR trademark. In this
regard, opposer sponsors athletes in a variety of different
sports, for example, surfing, motor sports, soccer, and
golf; and produces a number of different types of

6 It is not clear from the record whether this figure includes sales
outside the United States, nor is it clear whether such sales are for
goods bearing only the NO FEAR mark, or whether they include sales of
products under all of opposer’s marks.
Opposition No. 102,129
6
promotional materials, including, for example, a book of
photographs and text entitled “Don’t Let your Fears Stand
in the Way of Your Dreams.” The promotional materials in
the record, rather than including opposer’s marks, showcase
the sponsored athletes and their sports, and include themes
such as “Focus,” “Face your Fears,” “Live your Dreams,”
“Victory,” and “Crash and Burn.”
Mr. Moates testified that opposer has approximately 36
“NO” derivative marks, characterizing them as a “family” of
marks. He testified that opposer uses these derivative
marks to a lesser extent than its NO FEAR mark, and that
these marks include NO RISK, NO TEARS, NO CLUE, NO WHERE,
NO DOUBT, KNOW, K-N-O-W, FEAR, NO WAY, NO CLOTHING, NO
RAGE, FEAR NO BEER, NO LIMITS, FEAR NO FISH, NO BULL, NO
FAIR, NO LIMITS, NO NAME, and NO VIOLENCE.
Applicant testified that he has not produced or sold
any goods under the mark he seeks to register, nor has he
made any formal business plans to do so. Applicant
testified that, at the time he filed his trademark
application, he had no knowledge of opposer’s company or
products.
Opposition No. 102,129
7
Analysis
Inasmuch as opposer’s registrations have been made of
record through the testimony of opposer’s witness and,
further, that applicant admits opposer’s ownership of the
four originally pleaded registrations, there is no issue
with respect to opposer’s priority. King Candy Co., Inc.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In
re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). Key considerations in this case are the
similarities between the marks, the similarities between
the goods and services, and the channels of trade.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the goods of the parties, we observe
that there is a substantial overlap in the goods identified
in the application and in the pleaded registration. Thus,
we conclude that the goods of the parties are, in part,
identical.
Opposition No. 102,129
8
Further, not only are both opposer’s and applicant’s
identifications of goods broadly worded, without any
limitations as to channels of trade or classes of
purchasers, but applicant has admitted that the channels of
trade for the parties’ goods are likely to be the same. We
must presume that the goods of applicant and opposer will
be sold in all of the normal channels of trade to all of
the usual purchasers for goods of the type identified. See
Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). We therefore conclude that
the channels of trade and class of purchasers of the
parties’ goods will be the same.
Turning to the marks, the proper test for determining
the issue of likelihood of confusion is whether the
commercial impressions engendered by the marks are similar.
Due to the consuming public’s fallibility of memory, the
emphasis is on the likely recollection of the average
customer, who normally retains a general, rather than a
specific, impression of trademarks or service marks.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992);
and In re Steury Corporation, 189 USPQ 353 (TTAB 1975).
Further, while we must base our determination on a
comparison of the marks in their entireties, we are guided,
Opposition No. 102,129
9
equally, by the well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of confusion, “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 consideration of the marks in their
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Opposer contends that the message conveyed by its
marks is “that a person must push himself or herself to the
edge to be all he or she can be,” whereas the message
conveyed by applicant’s mark is that “‘if you’re not going
to fall[,] you’re not going to have a thrill[,] you have to
push yourself.’” Noting that “there are obvious
differences in the sight and sound” of the parties’ marks,
opposer contends that the messages are essentially the same
and, therefore, that their connotations and commercial
impressions are the same. Opposer also contends that it
owns a family of “NO” marks, and that its NO FEAR mark is
famous.
Applicant contends, on the other hand, that neither
the connotations nor commercial impressions of the parties’
marks are similar. He states “that none of Opposer’s marks
… uses the word ‘No’ twice and that all but two of the
Opposition No. 102,129
10
marks contain only two words (Fear No Beer and Fear No Fish
being the exceptions”; that “[a]pplicant’s mark contains
four words, and is in fact a far more complex construct of
English than any of the No Fear family of marks”; that
“while each of Opposer’s marks can be construed as a
command, or at the very least a statement about the way one
should be (Fear is for losers), Applicant’s mark is an
observation about the way things are.”
Regarding opposer’s contention that its NO FEAR mark
is famous, notwithstanding applicant’s remarks in his
brief, opposer’s witness’ mere conclusory statement that
its mark is famous, along with raw sales and advertising
figures, is simply not sufficient in this case to establish
that the mark NO FEAR is famous and, thus, entitled to “a
wide latitude of legal protection.” Kenner Parker Toys
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992), cert. denied, 113 S.Ct. 181
(1992). See, General Mills Inc. v. Health Valley Foods,
24 USPQ2d 1270, 1277 (TTAB 1992). However, based on the
evidence of record and applicant’s remarks, we can conclude
that opposer’s NO FEAR mark is highly promoted and likely
to be well known at least among certain sports-conscious
portions of the general consuming public.
Opposition No. 102,129
11
Similarly, the evidence of record does not support
opposer’s assertion that it owns a family of marks.
Although opposer does present some evidence that it uses
various marks beginning with the word “NO,” it is well-
settled that the mere ownership of a number of marks
sharing a common feature is insufficient to establish
ownership of a family of marks characterized by the feature
in the absence of evidence that the various marks said to
constitute the family are used and promoted together in
such a manner as to create among purchasers an association
of common ownership based upon the family characteristic.
See, Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d
1646 (TTAB 1987). Mr. Moates’ testimony and the
promotional materials and copies of registrations submitted
by opposer are insufficient to demonstrate that the general
public would regard the initial word NO in applicant’s mark
as indicating that the mark is a member of a family of
marks owned by opposer. See, e.g., Hester Industries Inc.
v. Tyson Foods Inc., supra; Consolidated Foods Corp. v.
Sherwood Medical Industries Inc., 177 USPQ 279, 282 (TTAB
1973); Polaroid Corp. v. American Screen Process Equipment
Co., 166 USPQ 151 (TTAB 1970); and Polaroid Corp. v.
Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421 (CCPA
Opposition No. 102,129
12
1965). Cf., J&J Snack Foods, Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991).
Further, the mere fact that NO appears as the initial
word in applicant’s and opposer’s marks is not, of itself,
a sufficient basis on which to find likelihood of
confusion. See, Cutter Laboratories, Inc. v. Air Products
and Chemicals, Inc., 189 USPQ 108 (TTAB 1975). As opposer
acknowledges, there are obvious sight and sound differences
between the marks. Thus, we are left to consider the
connotations and overall commercial impressions of
opposer’s NO FEAR mark and applicant’s NO SPILLS, NO
THRILLS mark. Both the evidence of record and the plain
meaning of opposer’s mark, NO FEAR, establish its
connotation either as a statement that one is without fear,
or as an admonition to approach an activity, or life in
general, without fear. Both connotations imply the further
admonition to engage oneself, or to “live” one’s life, to
the fullest extent possible, or the statement that one is
doing so.
The plain meaning of applicant’s mark, NO SPILLS, NO
THRILLS, is that if one does not take any spills, i.e.,
falls, one will not experience any thrills. This statement
includes the further implication that one must make
mistakes to experience excitement.
Opposition No. 102,129
13
We find these connotations of the parties’ marks to be
distinctly different. While both opposer’s mark and
applicant’s mark are statements or admonitions applicable
to either a specific activity or life in general, this
similarity is insufficient to warrant a conclusion that
their respective connotations are the same, or even
substantially similar.
We find that when opposer’s and applicant’s marks are
considered in their entireties, they engender distinctly
different overall commercial impressions. The differences
between the marks clearly outweigh the similarities
highlighted by opposer, as discussed herein.7 Cf., In re
Kopy Kat, Inc., 498 F.2d 1379, 182 USPQ 372 (CCPA 1974)
[while parties’ marks have similar theme, registrant’s
development of theme differs from appellant’s development
of theme; registrant does not has exclusive rights with
respect to every development of theme or every use of the
words], and Roush Bakery Products Co. v. Ridlen, 203 USPQ
1086 (TTAB 1979 [petitioner not entitled to protection

7 Even if we were to conclude, which we do not, that applicant’s mark
might bring to mind opposer’s mark, this does not necessarily mean that
consumers would be confused into believing that the two marks indicate
the same source of origin. See, Jacobs v. International Multifoods
Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) [the fact that one
mark may bring another to mind does not in itself establish likelihood
of confusion as to source]. See also, Original Appalachian Artworks
Inc. v. Streeter, 3 USPQ2d 1717 (TTAB 1987).
Opposition No. 102,129
14
against the registration of any and all marks having
similar theme or motif for any or all food products or
related services].
We conclude that opposer has not met its burden of
proof with respect to its claim of likelihood of confusion.
Having considered the relevant duPont factors, we conclude
that the differences between the parties’ marks, despite
the identity and related nature of the goods and the
channels of trade, are sufficient that purchasers are not
likely to be confused. The likelihood of confusion claimed
by opposer amounts to only a speculative, theoretical
possibility. As stated by our primary reviewing court:
We are not concerned with mere theoretical
possibilities of confusion, deception or mistake
or with de minimis situations but with the
practicalities of the commercial world, with
which the trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g
153 USPQ 412 (TTAB 1967). Simply put, a consumer familiar
with opposer’s NO FEAR mark on T-shits is not likely to
believe, upon encountering applicant’s NO SPILLS, NO
THRILLS mark on T-shirts, that the goods originate or are
associated with the same entity.
Opposition No. 102,129
15
Decision: The opposition is dismissed.
R. F. Cissel
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board