The Sports Authority Michigan, Inc.v.The PC Authority, Inc.

Trademark Trial and Appeal Board

Apr 16, 2002

No. 91113785 (T.T.A.B. Apr. 16, 2002)

4/16/02

Hearing: Paper No. 21
June 6, 2001 GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Sports Authority Michigan, Inc.

v.

The PC Authority, Inc.
_____

Opposition No. 113,785
to application Serial Nos. 75/289,273, filed May 9, 1997,
and 75/313,524, filed June 23, 1997
_____

R. Terrance Rader, Glenn E. Forbis and Kristin L. Murphy
of Rader, Fishman & Grauer PLLC for The Sports Authority
Michigan, Inc.

Thomas J. Donovan, Sarah B. Knowlton and Mark A. Wright
of McLane, Graf, Raulerson & Middleton, P.A. for The PC
Authority.
______

Before Simms, Wendel and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Applicant The PC Authority, Inc. [PCA] has applied
to register the mark THE PERSONAL COMPUTER AUTHORITY and
the mark set forth below, each for services identified as
“retail stores featuring computer hardware and software,
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Opposition No. 113,785
2
computer accessories, computer networking products and
peripheral devices,” in International Class 35, and
“consultation and design for others in the field of
computer hardware and software, computer accessories,
computer networking products and peripheral devices,” in
International Class 42. Each application is based on an
allegation of use of the applied-for mark in commerce,
with June 30, 1995 asserted as the date of first use and
first use in commerce. The applications include,
respectively, disclaimers of “Personal Computer” and
“PC.”

THE PLEADINGS

Registration of these marks has been opposed by The
Sports Authority Michigan, Inc. [TSAM], under Section
2(d) of the Lanham Act, 15 U.S.C. §1052(d). Opposer
alleges there is a likelihood of confusion or mistake
among consumers, or that they would be deceived, in view
of opposer’s (1) ownership of four incontestable
registrations for AUTHORITY, THE SPORTS AUTHORITY, THE
SPORTS AUTHORITY & design, and THE SKI AUTHORITY; (2)
Opposition No. 113,785
3
opposer’s “prior adoption, use and registration of use
[sic]” of THE SPORTS AUTHORITY as a trade name; (3)
opposer’s “prior adoption and use of a family of marks
dominated by the word ‘AUTHORITY’”; and (4) opposer’s
“numerous” registrations for marks “dominated by the word
‘AUTHORITY’,” 35 of which are set forth by mark,
registration number and class of goods or services in a
chart in the notice of opposition.1 Opposer asserts that

1 The registrations listed in the notice of opposition include
the following, which we have listed by registration number,
issue date, mark and goods or services with international
classification. (We have listed here only those registrations
pleaded in the notice of opposition, by issue date from the
oldest to the most recent, and corrected errors in opposer’s
chart.)

1,245,417 July 12,
1983
AUTHORITY Apparel, namely, rainwear,
jackets, coats, suits,
slacks and vests (Cl. 25)
1,527,526 February
28, 1989
THE SPORTS
AUTHORITY
Retail store services
featuring sporting
equipment and clothing (Cl.
42)
1,529,035 March 7,
1989
THE SPORTS
AUTHORITY &
Design
Retail store services
featuring sporting
equipment and clothing (Cl.
42)
1,688,221 May 19,
1992
THE SKI
AUTHORITY
Retail store services
featuring ski equipment and
clothing (Cl. 42)
1,821,430 February
15, 1994
THE SPORTS
AUTHORITY
Ladies apparel; namely
shirts, and men’s apparel;
namely hats, visors, pants,
shirts, shorts and swim
trunks (Cl. 25)
1,937,000 November
21, 1995
THE LOW
PRICE
AUTHORITY
Retail store services
comprising the sale of
sporting goods and
equipment, footwear and
clothing (Cl. 42)
Opposition No. 113,785
4

1,938,392 November
28, 1995
THE BAG
AUTHORITY
Athletic bags, drawstring
bags used for sleeping bags
and floor mats, duffle bags
and soft luggage (Cl. 18)
1,963,911 March 26,
1996
THE KNIFE
AUTHORITY
Retail store services
featuring sporting goods
and equipment, footwear and
clothing (Cl. 42)
1,999,520 September
10, 1996
THE CLUB
AUTHORITY
Management of recreation
and fitness clubs of
others; and business
consulting services
relating to health,
recreation and fitness
clubs (Cl. 35)
2,003,381 September
24, 1996
THE BICYCLE
AUTHORITY
Repairs and maintenance of
bicycles (Cl. 37). Retail
store services in the field
of bicycles and related
accessories (Cl. 42)
Opposition No. 113,785
5

2,071,449 June 17,
1997
THE SPORTS
AUTHORITY
Scorebooks, instruction
guides and books in the
fields of sports, exercise,
fitness and recreation;
clip boards; printed forms;
printed matter, namely art
pictures, art prints, bags
for merchandise packaging,
calendars, gift
certificates,
illustrations, price tags,
and magazines in the fields
of sports, exercise,
fitness and recreation;
score cards; stationery
(Cl. 16). Bags for travel
and sports (Cl. 18).
Towels (Cl. 24).
Clothing, namely shirts,
tops, pants and shorts;
headwear; hosiery; sweat
bands (Cl. 25). Shoe laces
(Cl. 26). Advertising for
others; import-export
agency; marketing research;
purchasing agents; sales
promotion for others; and
promoting sports teams,
competitions and events for
others (Cl. 35).
Sponsoring sports teams,
competitions and events for
others (Cl. 36).
2,074,352 June 24,
1997
SHOE &
APPAREL
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,074,353 June 24,
1997
IN-LINE
SKATE
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
Opposition No. 113,785
6

2,074,354 June 24,
1997
AUTHORITY Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,074,355 June 24,
1997
TEAM SPORTS
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,074,356 June 24,
1997
FISHING
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,074,357 June 24,
1997
HUNTING
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,074,358 June 24,
1997
BASKETBALL
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,074,359 June 24,
1997
GOLF
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,074,782 July 1,
1997

SPORTS
AUTHORITY
FOOD,
SPIRITS AND
SPORTS &
Design
Restaurant services (Cl.
42)
2,076,213 July 1,
1997
OUTERWEAR
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
Opposition No. 113,785
7

2,076,214 July 1,
1997
TENNIS
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,079,864 July 15,
1997
FITNESS
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,079,866 July 15,
1997
HOCKEY
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,079,867 July 15,
1997
MARINE
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,082,095 July 22,
1997
EXERCISE
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,082,096 July 22,
1997
FOOTWEAR
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,082,097 July 22,
1997
RUNNING
AUTHORITY
Retail store services in
the field of sporting goods
and equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,096,403 September
16, 1997
THE FITNESS
AUTHORITY
THE LAST
WORD IN
FITNESS &
Design
Services rendered by health
clubs (Cl. 41)
Opposition No. 113,785
8
TSAM licenses its parent company, The Sports Authority,
Inc. to use TSAM’s marks and registrations on or in
connection with approximately 200 retail sporting goods
stores spread among 32 states. Opposer also asserts that

2,098,608 September
23, 1997
THE FITNESS
AUTHORITY
THE LAST
WORD IN
FITNESS &
Design
Fitness apparel, namely
sweatshirts, t-shirts and
tank tops (Cl. 25)
2,101,178 September
30, 1997
THE
AUTHORITY
ON SPORTING
GOODS
Rental of sporting goods,
including protective
clothing and equipment (Cl.
41). Retail store services
in the fields of fitness,
sporting goods and
equipment, apparel,
footwear, headgear and
related goods (Cl. 42).
2,102,208 September
30, 1997
THE SPORTS
AUTHORITY
Computer services, namely
interactive on-line
publications in the fields
of sporting goods and
equipment, apparel,
footwear, headgear and
related goods and services
(Cl. 42)
2,108,004 October
21, 1997
THE SPORTS
AUTHORITY
LTD.
Retail store services in
the fields of fitness,
sporting goods and
equipment, apparel,
footwear, headgear and
related goods (Cl. 35).
Rental of sporting goods,
including protective
clothing and equipment (Cl.
41).
2,141,699 March 10,
1998
AQUARIUM
AUTHORITY
Retail store services
featuring pet fish and
aquatic supplies (Cl. 42)
2,145,645 March 24,
1998
AQUARIUM
AUTHORITY &
Design
Retail store services
featuring pet fish and
aquatic supplies (Cl. 42)

Opposition No. 113,785
9
it is the largest full-line sporting goods retailer in
the United States, marketing “hardline” items, “softline”
items, and various services, both at retail and on a
wholesale basis for use or resale by other enterprises.
The goods and services, according to the notice of
opposition, “have met with great commercial success and
widespread consumer recognition”; and the marks and trade
name used on or in connection with these have been used
continuously since adoption. Opposer asserts that its
marks have been advertised and promoted in such a manner
as to establish the marks as a family of marks; and that
its registrations for individual marks are valid and
subsisting.2
Applicant has admitted opposer’s allegations that
applicant “is engaged in the customized retail and
wholesale of personal computers and in computer

2 In paragraph 6 of the notice of opposition, opposer asserts
that its registrations have been issued by the United States
Patent and Trademark Office “[i]n recognition of the valuable
rights in and to Opposer’s Marks, both individually and as a
family of AUTHORITY Marks.” While an issued registration
carries certain evidentiary presumptions, there is no legal
basis for opposer’s suggestion that the Office has engaged in
any valuation of the extent of opposer’s rights in its
registered marks or for the proposition that, in issuing
registrations, the Office somehow has determined that opposer’s
marks constitute a family. We have accorded the registrations
properly made of record the evidentiary weight to which they are
entitled under the statute and have evaluated opposer’s claim of
the existence of a family of marks based on the evidence of
record.
Opposition No. 113,785
10
training”; that applicant’s applications include
disclaimers; and that opposer’s registrations “issued.”
Applicant otherwise denies the salient allegations of the
notice of opposition. In addition, applicant has
asserted that the “use of the term ‘AUTHORITY’ cannot be
distinctive or exclusive to the Opposer” in view of the
number of registered marks including that term; that
opposer “did not or could not oppose certain of these
AUTHORITY-containing registrations/applications” and is
“therefore barred by laches, acquiescence and estoppel”
from contesting applicant’s application; and that the
respective customers of opposer and applicant “differ
markedly” so that confusion is not likely.3

THE RECORD

The record consists of the pleadings; the files of
the opposed applications; and a notice of reliance filed
by each party.4 Opposer’s notice of reliance introduced

3 Of these assertions, only applicant’s assertion that the
opposition is barred by laches, acquiescence and estoppel sets
out the only true affirmative defenses. Applicant did not,
however, submit evidence or argument in support of these
defenses and we have not given them further consideration.

4 Each party utilized its notice of reliance to, among other
things, indicate its reliance on testimony it took during its
main testimony period. Moreover, the parties stipulated that
each could file its notice of reliance during its testimony
period but could submit the exhibits introduced thereby after
Opposition No. 113,785
11
the Fed. R. Civ. P. 30(b)(6) discovery deposition and
exhibits of Paul M. LaRochelle, applicant’s president;
certified copies of 36 registrations for various marks of
opposer, each of which includes the term “Authority”;
applicant’s responses to opposer’s first set of requests
for admissions; the trial testimony deposition of Michael
A. Lisi, senior vice president of opposer TSAM, and
exhibits; and the trial testimony deposition, with
exhibits, of Robert Meyers, the manager of THE SPORTS

the close of its testimony period. It appears that one reason
they may have so stipulated was to allow each party additional
time to prepare the testimony transcripts and associated
exhibits therefor, prior to filing.
The parties are reminded that trial testimony depositions are
noticed and taken during the party’s assigned testimony period
but are not filed via notice of reliance. Rather, the
transcript of a party’s testimony deposition and associated
exhibits are served on the adverse party within 30 days of the
taking of the testimony and, following correction of any errors,
a certified transcript is filed with the Board, under cover of a
notice of filing, with proof of service thereof. See Trademark
Rule 2.125, 37 C.F.R. §2.125. For a discussion of the
requirement for serving an adversary with a transcript within 30
days, see TBMP §713.13. For a discussion of filing with the
Board, see TBMP §§713.11 and 713.12. In essence, so long as the
party’s adversary is provided with its service copy within 30
days of the date of the testimony deposition, filing with the
Board may be made thereafter, without need for the parties to
enter into a stipulation to provide for filing outside the
testimony period.
In contrast to the provisions of the rules that allow for
filing of parties’ testimony deposition transcripts after their
respective testimony periods, notices of reliance must be filed
and served no later than the closing date of a party’s testimony
period. Notices of reliance -- a party is not limited to one --
are utilized to introduce a variety of non-testimonial evidence
and may be prepared whenever feasible prior to or during a
party’s testimony period, but must be filed and served as noted.
Opposition No. 113,785
12
AUTHORITY store in Manchester, New Hampshire, where
applicant is located. Opposer also introduced, during
rebuttal, additional testimony of Mr. Lisi, with one
exhibit.
Applicant’s notice of reliance introduced the
discovery depositions of Michael Lisi and Robert Meyers;
copies of 41 third-party registrations retrieved from the
Office’s electronic records, each of which includes the
term “Authority”; opposer’s response to applicant’s first
set of interrogatories; the trial testimony deposition of
Paul LaRochelle, and exhibits; and the trial testimony
deposition of Clifford Sewing, and exhibits.
Certain comments are in order in regard to the
record, even before consideration of the parties’
objections to particular items of evidence.
First, each party has submitted discovery deposition
transcripts in toto, i.e., has made no apparent effort to
identify and introduce only those portions that are
relevant to our determination of the pleaded claims.
While not improper, it is more effective to file only
those portions that are relevant and explain their
relevancy in the notice of reliance. See Wear-Guard
Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1805 n.1

See Trademark Rules 2.120(j), 2.122(d)(2), and 2.122(e), 37
Opposition No. 113,785
13
(TTAB 1990) (petitioner introduced selected portions of
discovery depositions of registrant’s witnesses), and
Marion Laboratories Inc. v. Biochemical/Diagnostics Inc.,
6 USPQ2d 1215, 1217 n.9 (TTAB 1988) (opposer introduced
only portions of discovery deposition of applicant’s
president); see also, 37 C.F.R. §2.120(j)(4) in regard to
adverse party offering additional portions necessary to
ensure fairness.
Second, not one of the deposition transcripts,
including those from discovery and testimony, has been
signed by the witness, yet only some of the transcripts
include references to signature requirements having been
waived by agreement of the parties. There having been no
objections, however, in this regard, to any of the
transcripts, they all have been considered.
Third, the parties have not been precise in the
handling and submission of apparently confidential
testimony and documents. For example, whole transcripts
of testimony depositions have been labeled as
confidential when it is clear from reading the
transcripts that only portions thereof were intended to
be shielded from public view. Also, each party has
failed, in some respect, to submit under seal material it

C.F.R. §§2.120(j), 2.122(d)(2), and 2.122(e).
Opposition No. 113,785
14
obtained during discovery and which was marked as
confidential at the time of production.5 The parties are
reminded that material should be designated as
confidential, and as requiring handling as such, only
when absolutely necessary. A stipulated protective
agreement may not be used as a means of circumventing
relevant provisions of 37 C.F.R. §2.27, which provide, in
essence, that trademark application and registration
files, and related TTAB proceeding files, generally
should be available for public inspection.6

OBJECTIONS TO EVIDENCE, BY OPPOSER:

5 It is the parties’ duty, under paragraph 12 of their
stipulated protective agreement, to redact or segregate
confidential information and submit it under seal. Though the
parties provided in paragraph 18 of their agreement that the
Board “shall enforce the provisions” of the agreement, the Board
does not actively monitor the efforts of parties to comply with
such an agreement. The agreement is for the benefit of the
parties and it is the parties who are expected to abide by its
terms.
Also, notwithstanding the provision to the contrary in
paragraph one of the parties’ protective agreement, the Board’s
jurisdiction over the parties ends when this proceeding does and
the Board will not be involved in enforcing provisions of the
agreement after conclusion of the opposition.

6 Any exhibits to the parties’ notices of reliance, including
exhibits to discovery and testimony depositions, which have been
clearly stamped “confidential,” shall be segregated by the Board
from the publicly available proceeding file. The parties are
allowed until 30 days from the date of this decision to submit a
substitute for any filed deposition transcript which includes
confidential testimony, replacing the pages containing the
confidential material with blank numbered pages and placing the
pages with confidential material in separate envelopes.

Opposition No. 113,785
15
Opposer argues in its brief that “[d]espite TSAM’s
discovery requests related to third-party uses and the
evidence that Applicant anticipated introducing at trial,
Applicant failed to timely produce the documents in
LaRochelle exhibits 17-19.”7 (TSAM brief p.35) Opposer
has acknowledged that applicant did produce these
documents, but only two weeks before the LaRochelle
testimony deposition (LaRochelle test. p.70), and asserts
that counsel for PCA “waited until after the discovery
period closed to instruct” the witness to search for the
documents and “waited until just before the testimony
deposition” to produce them. (TSAM brief p.35)
PCA asserts that the production made before the
deposition was not in response to discovery requests,
because the documents did not exist during discovery and
“were created in preparation for trial, and therefore,
are covered by the work product doctrine.” (PCA brief
p.36) PCA also argues that the produced documents are
publicly available web sites and opposer could have
gotten them on its own. (PCA brief pp.36-37) Finally,

7 We have not been provided with a copy of any discovery request
by opposer that relates to third-party uses or evidence PCA
planned to submit at trial. In its reply brief, however, TSAM
quotes its interrogatory no. 13. That interrogatory requested
PCA to identify third parties known to be using the term
“Authority” in a mark or trade name.

Opposition No. 113,785
16
PCA asserts TSAM “relied” on the disputed material at
pages 6-7 and 17-23 of the Lisi rebuttal testimony
deposition. The former two pages of testimony clearly
relate to applicant’s introduction of third-party
registrations not web page evidence; but pages 17-23 do
involve discussion of the probative value of the web
material, insofar as the witness explains which purported
uses he believes require opposer’s intervention, which do
not, and which present the term “Authority” in a
different sense from the way in which it is used by TSAM.
We note that TSAM’s real complaint appears to be
that PCA did not indicate, when they were produced, that
the documents “would be used at trial.” (LaRochelle test.
p.73) It is well settled, however, that in a Board
proceeding a party need not specify, prior to trial, the
evidence or witnesses it intends to present. See
authorities collected at TBMP §419(7). Moreover, even if
a party could be expected to make such specification in
response to a discovery request, TSAM has not provided
any proof that it served a discovery request seeking
such.
Insofar as the produced documents would be
considered responsive to TSAM’s interrogatory no. 13,
TSAM’s only complaint can be that there was a delay in
Opposition No. 113,785
17
production of the web material found by LaRochelle, for
it is clear that PCA was under no obligation to search
for third-party uses that would be responsive to the
interrogatory. See authorities collected at TBMP
§419(9). We see no evidence of undue delay. The record
reveals that discovery closed November 30, 1999;
LaRochelle was instructed by counsel, by memo dated
December 27, 1999, to search the web for uses of the term
“Authority”; LaRochelle did some searching in January
2000; the web pages were printed out in March and April
2000 with the printed documents promptly produced to
TSAM; and the deposition was held on May 3, 2000. There
is no evidence to support TSAM’s contention that printing
of the documents was intentionally delayed, so as to
delay production.
TSAM’s motion to strike LaRochelle exhibits 17-19 is
denied. We note, however, that our denial of the motion
only means that the material is part of the evidentiary
record. The probative value of the material is a
separate matter.
Opposer also objects to the entire testimony of
Clifford Sewing as an “expert” who was not identified,
i.e., an expert on the operation of BIG YELLOW, which is
alleged to be an Internet search engine and “Bell
Opposition No. 113,785
18
Atlantic’s Yellow Pages on the internet.” (LaRochelle
test. p.101) TSAM has not, however, provided a copy of
any interrogatory or other discovery request that called
for PCA to identify experts it would depose at trial.
While it is clear that the identity of an expert witness
to be called at trial is discoverable, there is no
automatic disclosure requirement in Board proceedings.
Thus, in the absence of proof that TSAM requested PCA to
identify its expert witnesses, we cannot say that PCA
failed to do so. TSAM’s argument that Sewing should have
been identified in response to a discovery request
calling for identification of “witnesses having knowledge
relating to the opposition” (TSAM brief p. 36) fails for
the same reason, i.e., we have not been provided with
evidence of any such discovery request.
Finally, TSAM argues that the Sewing testimony is
not relevant, since it does not cover issues related to
likelihood of confusion and is limited to operation of
BIG YELLOW. In this regard, PCA argues that the Sewing
testimony is relevant because it authenticates and
provides foundation for LaRochelle exhibits 18 and 19.
(PCA brief p.38) PCA reasons that because the LaRochelle
exhibits are relevant, so is the Sewing testimony
“establishing the reliability of the [BIG YELLOW]
Opposition No. 113,785
19
listings.” (PCA Brief p.39) We find the Sewing testimony
relevant to the working of the search engine that was
used by LaRochelle to produce LaRochelle exhibits 18 and
19, and deny TSAM’s motion to strike the testimony.

OBJECTIONS TO EVIDENCE, BY APPLICANT:

Opposer pleaded ownership of 35 federal
registrations, but attempted to introduce 36 into the
record by its notice of reliance, and referenced 38 in
its brief. Applicant, in its brief, objects to one of
the pleaded 35 (Reg. No. 2,071,449) as not having been
properly proved by the TSAM notice of reliance, and
objects to one of the three unpleaded registrations (Reg.
No. 2,274,172) referenced in the brief as not properly
proved. (PCA brief p.35)
Applicant’s objection to TSAM’s reliance, in its
brief, on Reg. No. 2,274,172 is sustained, since the
registration was not pleaded and its status and title
have not been proved. No consideration shall be given to
that registration or to Reg. No. 2,282,414 which,
likewise, was not pleaded or properly proved.
We also have disregarded Reg. No. 2,141,699 which,
though pleaded, was not properly proved insofar as TSAM’s
notice of reliance includes only a plain copy thereof.
Opposition No. 113,785
20
In contrast, we have considered Reg. No. 2,249,780 which
was not pleaded but which was properly proved by
submission of a certified copy showing status and title
and to which PCA has made no objection.
As to the objection to Reg. No. 2,071,449, we note
that this registration is, as illustrated by the charts
in TSAM’s pleading and brief, for the mark THE SPORTS
AUTHORITY. Attached to TSAM’s notice of reliance, in an
attempt to prove status and title of the registration, is
a certification sheet from the Office that certifies that
the registration is subsisting and owned by opposer.
However, attached to the certification sheet is a
photocopy not of Reg. No. 2,071,449 for THE SPORTS
AUTHORITY, but a photocopy of Reg. No. 2,071,499 for the
mark QUAKER MAID. TSAM, with its reply brief, submitted
a substitute certified copy with the appropriate
photocopy, and explained that the Office had attached the
wrong photocopy to the certification sheet submitted with
TSAM’s notice of reliance. We overrule applicant’s
objection to the proof of Reg. No. 2,071,449, and have
considered it.8

8 We note, too, that TSAM’s witness Lisi testified to status and
title of this and other registrations insofar as he identified
and authenticated both a list of TSAM’s “issued registrations”
and photocopies of the listed registrations as members of the
purported family of marks owned by opposer. Proof of the status
Opposition No. 113,785
21
Applicant also objects to testimony of TSAM witness
Lisi on state registrations, for which the only
supporting evidence is a list introduced as Lisi exh. 32.
PCA also argues that TSAM did not indicate its intent to
rely on these registrations in its notice of reliance
and, therefore, they are not properly of record. We
overrule the objection to Lisi’s testimony, and the
accompanying exhibit. That official records, such as
those which would prove the status and title of state
registrations, may be made of record by notice of
reliance does not render the Lisi testimony improper,
though it has little, if any, probative value, especially
since the exhibit is merely a list of these purported
state registrations and we have not been provided with
any copies of the individual registrations.
Applicant also objects to opposer’s introduction in
its brief of a “chart of its policing efforts,” arguing
that the exhibit cited as the source thereof does not
exist and that the chart is different from both the chart
produced in response to PCA’s discovery requests and the
chart discussed by TSAM witness Lisi. (PCA brief p.36)

and title of a registration may be made by direct testimony, as
well as by submission, with a notice of reliance, of a copy
prepared by the office showing status and title. See Trademark
Rule 2.122(d)(2), 37 CFR §2.122(d)(2).

Opposition No. 113,785
22
Opposer asserts that the chart in the brief is nothing
more than a combination of (1) a chart produced to PCA
during discovery and introduced into the record by PCA’s
notice of reliance on the Lisi discovery deposition, and
(2) a chart discussed by Lisi during his testimony
deposition. While we do not approve of opposer’s
methods9, we overrule the objection insofar as we discern
no prejudice to applicant by the reproduction in the
brief of a chart combining other items properly made of
record. To the extent the brief chart includes
references to enforcement activities not reported in
either of the other charts, such references have not been
considered.

THE PARTIES AND THEIR ACTIVITIES

The record shows that opposer10 was formed in 1987
and has expanded rapidly, especially during the mid-

9 Applicant, aware of a prior, unrelated Board proceeding in
which the Board criticized TSAM for relying in its brief on
facts not in the record, cannot be faulted for its concern about
the brief chart. To make clear that it was not attempting to
introduce evidence of enforcement activity not in the record
created at trial, opposer ought to have referenced the Lisi
discovery deposition chart and Lisi testimony charts in a
different manner. For example, opposer could have referenced
one in its entirety and excerpts from the other, to paint a
complete picture.

10 Except as otherwise indicated, the term “opposer,” as used in
our discussion of what the record reveals about the parties,
refers to TSAM, its parent The Sports Authority, Inc., and the
Opposition No. 113,785
23
1990s. It has a chain of approximately 200 large retail
stores spread throughout 32 states, offers goods via
catalogue, and has a web site which originally was only a
source of information on opposer’s stores and goods, but
now is an additional sales outlet. One of opposer’s
stores is located in Manchester, New Hampshire, where
applicant’s store is located, and another of opposer’s
stores is in Nashua, New Hampshire. These stores opened,
respectively, on November 11, 1993 and August 12, 1994.
Each of opposer’s stores features up to 40,000 or
more goods, including footwear, clothing (both for
athletic and casual wear), “hardline” sporting goods
(such as bicycles, golf, tennis, and hockey equipment),
outdoor goods such as camping and fishing gear, and
electronic items used in outdoor activities (such as two-
way radios, global positioning systems, depth/fish
finders) and indoors (such as computer games and heart-
rate monitors). In short, the testimony of TSAM witness
Lisi, and exhibits thereto, demonstrate that opposer
actually offers for sale the wide variety of items listed
in the registrations referenced earlier in this decision.
Opposer advertises its stores in magazines and
newspapers, on radio and television, on billboards, on

various The Sports Authority stores run by TSAM, its parent or
Opposition No. 113,785
24
other signs (such as on buses or at bus stops), via signs
and sponsorship arrangements at numerous sporting events
and venues where such events are held, and through cross-
promotional advertising on various web sites other than
opposer’s own web site. Most of its advertising dollars
are spent on print ads in the locations in which opposer
operates stores. In its stores, opposer’s core marks --
THE SPORTS AUTHORITY and THE SPORTS AUTHORITY logo -- are
used in many ways, including on store signs, hang tags or
stickers listing prices of merchandise, bags and boxes,
business forms and receipts, and on employee apparel.
Other marks in opposer’s purported family, registered or
unregistered, are used in varying degrees.11 In addition,
the record reveals regular and widespread use of
“www.thesportsauthority.com” to direct prospective
customers to its web site.
Opposer is the largest sporting goods retailer in
the United States and one of the top 50-100 retailers of
all types. Between 1987 and 1998, opposer’s sales
totaled more than $7.7 billion, with annual sales over a
billion dollars a year from 1995 on. Its advertising
expenditures between 1988 and 1998 totaled nearly $335

by other licensees in Florida and Hawaii.
11 These marks are referenced in our discussion, infra,
regarding opposer’s claim that it has a family of marks.
Opposition No. 113,785
25
million; and expenditures in 1998 alone were nearly $70
million. Opposer’s sales were, however, down in the
first three quarters of its 1999 fiscal year and it
closed some under-performing stores.
Applicant is a small business with one store located
in Manchester, New Hampshire. Applicant adopted its
marks and opened its store in June 1995, and has used its
marks in the operation of the store since that time.
Applicant is the successor to a sole proprietorship begun
by Paul LaRochelle under the name Soft-Co. Soft-Co
originally was a business run out of LaRochelle’s home in
Manchester and, for a time, an office in Bedford, New
Hampshire. LaRochelle set out to find a new name in
1995, to coincide with a planned move of the business to
the Manchester retail store.
Applicant is a “value-added” retailer involved in
the sale and servicing of desktop computers, components,
software and related peripherals; and offers training
classes. Eighty percent of applicant’s business is
providing sales, service and training to other
businesses, generally smaller businesses. Applicant does
not sell off-the-shelf computers and builds computers and
networks to meet the specifications and needs of its

Opposition No. 113,785
26
customers. Walk-in business is a very small part of
applicant’s operation.
Applicant attends trade shows throughout the New
England states, and considers the territory in which it
does business to include New England, New York,
Pennsylvania and sometimes other states. Its primary
mechanisms for generating sales are the trade shows and
direct sales efforts of its sales staff. Applicant
sporadically places print advertising in a few newspapers
in New Hampshire, primarily weeklies, but has placed ads
in a daily also utilized by opposer, The Union Leader of
Manchester, New Hampshire. At one point, applicant tried
some cable television advertising. Bulk mailings are
regularly used, employing lists developed by the sales
staff or procured from elsewhere. At trade shows,
applicant has given away promotional items, including
coffee mugs, shirts, private-label root beer and certain
computer accessories, such as mouse pads, all with the
store’s PC AUTHORITY & design mark on them. Once,
applicant gave away a computer, printer and Internet
service through a contest promoted on radio. Applicant
also purchases display space in various Yellow Pages
books. Its ad expenses for 1995 totaled approximately
$20,000 and by 1999 its ad budget had grown to $75,000.
Opposition No. 113,785
27
Applicant registered the mark THE PERSONAL COMPUTER
AUTHORITY with the Secretary of State’s Office in New
Hampshire on June 1, 1995, but almost immediately
employees, or at least LaRochelle, shortened the name and
began answering the phone as “PC Authority,” which
applicant considers an abbreviated version of the mark
registered with the Secretary of State. Applicant’s
first trademark clearance searches for the two involved
marks were conducted by counsel prior to filing of the
involved applications. Applicant uses its marks on store
signage, both inside and out, banners displayed at trade
shows, on a delivery truck, on bags used to package
purchases in applicant’s store, in its advertising and on
its web site. Whenever possible the marks are used
together, but sometimes on hardware items, the only mark
will be a one-inch-square sticker of the PC AUTHORITY
logo.

Opposition No. 113,785
28
TSAM’s CORE MARKS

As we have noted, opposer’s claim under Section 2(d)
of the Lanham Act alleges there is a likelihood of
confusion or mistake among consumers, or that they would
be deceived, in view of opposer’s (1) ownership of four
incontestable registrations for AUTHORITY, THE SPORTS
AUTHORITY, THE SPORTS AUTHORITY & design [hereinafter,
the TSA logo], and THE SKI AUTHORITY; (2) opposer’s
“prior adoption, use and registration of use [sic]” of
THE SPORTS AUTHORITY as a trade name; (3) opposer’s
“prior adoption and use of a family of marks dominated by
the word ‘AUTHORITY’”; and (4) opposer’s “numerous”
registrations for marks “dominated by the word
‘AUTHORITY’.”
The record developed by TSAM, the arguments in its
briefs, and the arguments presented at the oral hearing
all have focused on TSAM’s THE SPORTS AUTHORITY mark and
the TSA logo, and its claim that it has a strong, growing
family of marks.12 (TSAM notice of opposition ¶9)
Moreover, putting aside for the moment the family of
marks argument, it is clear from the record that TSAM’s

12 TSAM’s fourth asserted basis for its Section 2(d) claim – its
ownership of 35 registrations – has not been presented at trial
as one which requires an analysis of the duPont factors with
regard to each mark but, rather, as further evidence of TSAM’s
asserted family of marks.
Opposition No. 113,785
29
strongest bases for its Section 2(d) claim are its prior
use of THE SPORTS AUTHORITY as a trade name and its
registration of both THE SPORTS AUTHORITY and of the TSA
logo. Accordingly, we focus our initial analysis on
these and consider the family of marks argument
separately.
Priority

The record clearly establishes opposer’s prior use
of THE SPORTS AUTHORITY as a trade name. More
importantly, since THE SPORTS AUTHORITY and the TSA logo
have been registered as marks, and copies of these
registrations showing status and title were submitted
with TSAM’s notice of reliance, priority is not an issue
here. See King Candy Co. v. Eunice King's Kitchen, 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion

The Court of Customs and Patent Appeals, the
predecessor court of the Court of Appeals for the Federal
Circuit, set out a non-exclusive list of thirteen factors
to be considered when determining whether one mark is
likely to cause confusion with another mark. In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
563, 567 (CCPA 1973). While opposer asserts only six of
Opposition No. 113,785
30
these factors are relevant in this case (TSAM brief
p.25), we consider all 13.
(1) The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

Opposer has a registration for THE SPORTS AUTHORITY
in typed form, so there is no restriction as to its
method of display as, for example, in a particular font
or color. It also has a registration for a logo, set
forth below, and it is clear from the record that this is
its most widely utilized form of presenting the words THE
SPORTS AUTHORITY.

Applicant’s mark THE PERSONAL COMPUTER AUTHORITY,
like each of opposer’s marks, begins with “The” and ends
with “Authority.” Applicant’s PC AUTHORITY logo does not
use the term “The.” Each of opposer’s registrations
includes a disclaimer of the word “Sports”; applicant’s
respective applications include disclaimers of “Personal
Computer” and “PC.”
It is well settled that it is improper to dissect a
mark, and that marks must be viewed in their entireties.
Opposition No. 113,785
31
In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687,
1688 (Fed. Cir. 1993). However, more or less weight may
be given to a particular feature of a mark for rational
reasons. In re National Data Corp., 753 F.2d 1056, 1058,
224 USPQ 749, 751 (Fed. Cir. 1985). Opposer, because the
involved registrations and applications all include
disclaimers, focuses on the presence of “Authority” in
each mark and argues that that is the dominant term in
each mark. To be sure, in terms of the capacity of each
mark to indicate source, “Authority” must be considered
the dominant element. It need not automatically follow,
however, that, merely because marks have the same
dominant element, they are pronounced the same, look the
same or present the same overall commercial impression.
Considered in their entireties, the involved marks
would not be pronounced the same and do not look the
same. The connotations of the respective marks are
similar only insofar as each conveys the sense that
opposer and applicant are “authorities” in their
respective fields; but the respective marks, particularly
the respective logos, present “Authority” in smaller type
and emphasize the field within which each party considers
Opposition No. 113,785
32
itself an authority.13 In addition, opposer’s goods and
services, and its myriad sponsorship arrangements and
advertisements at public arenas are inextricably
associated with sporting activities, while applicant’s
goods and advertising are inextricably associated with
personal computing and the Internet. Thus, the specific
commercial impressions created by the parties’ respective
marks are very different. Opposer is the authority in
sports; applicant is the authority in personal computing.
In sum, though the marks share a significant
element, they look different, sound different and create
different specific commercial impressions.
This factor favors applicant.
(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.

In considering this factor in the analysis of
likelihood of confusion, we must compare the goods and
services as described in the involved applications and
registrations. Canadian Imperial Bank v. Wells Fargo

13 As noted, opposer’s logo is, as shown by the record, its most
prominently featured mark in print advertising, on its website,
on billboards and signs, etc. Likewise, though applicant
usually uses its two marks together, its logo is sometimes used
alone, e.g., on its plastic shopping bag and on decals placed on
computers; and when the marks are used together, e.g., on its
store sign, the logo is the most visually prominent of the
marks.
Opposition No. 113,785
33
Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987).
Opposer’s two core marks are registered for “retail
store services featuring sporting equipment and
clothing.” THE SPORTS AUTHORITY is also registered for
various items of apparel, for both men and women, for
“computer services, namely interactive on-line
publications in the fields of sporting goods and
equipment, apparel, footwear, headgear and related goods
and services” and for the following:
Scorebooks, instruction guides and books in
the fields of sports, exercise, fitness and
recreation; clip boards; printed forms;
printed matter, namely art pictures, art
prints, bags for merchandise packaging,
calendars, gift certificates,
illustrations, price tags, and magazines in
the fields of sports, exercise, fitness and
recreation; score cards; stationery (Cl.
16). Bags for travel and sports (Cl. 18).
Towels (Cl. 24). Clothing, namely shirts,
tops, pants and shorts; headwear; hosiery;
sweat bands (Cl. 25). Shoe laces (Cl. 26).
Advertising for others; import-export
agency; marketing research; purchasing
agents; sales promotion for others;
promoting sports teams, competitions and
events for others (Cl. 35). Sponsoring
sports teams, competitions and events for
others (Cl. 36).

Applicant seeks registration of its marks for
“retail stores featuring computer hardware and software,
computer accessories, computer networking products and
Opposition No. 113,785
34
peripheral devices,” and “consultation and design for
others in the field of computer hardware and software,
computer accessories, computer networking products and
peripheral devices.”
There is no similarity or relatedness whatsoever
between applicant’s services and the various classes of
goods for which THE SPORTS AUTHORITY has been registered.
Nor is there any similarity between applicant’s services
and opposer’s various class 35 and class 36 services. As
for opposer’s “computer services,” these are restricted
to “on-line publications” focusing on the types of goods
opposer sells and services it provides; and neither the
on-line publications nor the goods or services discussed
therein are anything like the computer hardware,
software, peripherals and accessories that applicant
sells at its store and over the Internet, or anything
like the business consultation services applicant
provides in the computer field. There is certainly no
rule that all computer products and services are related.
See In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985)
(“[W]e think that a per se rule relating to source
confusion vis-à-vis computer hardware and software is
simply too rigid and restrictive an approach and fails to
consider the realities of the marketplace”). See also
Opposition No. 113,785
35
Electronic Design and Sales Inc. v. Electronic Data
Systems, 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992)
(No confusion between battery chargers and power supplies
and computer services).
Opposer presses its argument that its retail store
services involve selling computer games and some items of
sporting equipment that include computer chips or may be
used in conjunction with computers, such as a global
positioning system that can be used by hunters, hikers
and others engaged in outdoor activities and that can
exchange information with a computer. There is no
evidence in the record, however, to establish that such
goods typically emanate from entities that retail
computer hardware and software and provide computer
consulting services. See Hasbro Inc. v. Clue Computing
Inc., 66 F. Supp.2d 117, 122, 52 USPQ2d 1402, 1406
(D.Mass. 1999), aff'd, 232 F.3d 1, 56 USPQ2d 1766 (1st
Cir. 2000), wherein the court held that it would be “an
extraordinary stretch to assert that Hasbro's technical
support to game users is similar in any meaningful way to
the ‘computer consulting services’ provided by Clue
Computing.” See also, Falk Corp. v. Toro Manufacturing
Corp., 493 F.2d 1372, 1378, 181 USPQ 462, 467 (CCPA 1974)
(Court reversed Board decision sustaining opposition,
Opposition No. 113,785
36
explaining that the opposer could not prevail merely on
the ground that applicant’s ‘rubber element shaft
couplings’ might be contained in some of opposer’s
machines). Here, opposer cannot prevail merely because
applicant sells computer parts and some computer parts
may be contained in some of the electronic sporting goods
and equipment sold by opposer.
In sum, we find no similarity or relatedness between
the parties’ respective goods and services. To the
extent that they both are engaged in retail activities
and may employ similar channels of trade and have some
overlap in customers, these issues are considered under
other duPont factors, not under the factor focusing on
the similarity or relatedness of the goods and services.
This factor favors applicant.
(3) The similarity or dissimilarity of established,
likely-to-continue trade channels.

Opposer argues, in essence, that the parties utilize
the same trade channels, insofar as each runs retail
stores, each uses the Internet, and they both use direct
mail and other similar forms of print advertising.
Opposer also relies on the fact that both parties sell
goods at retail to general consumers. (TSAM brief p.32)
Opposition No. 113,785
37
On this latter point, i.e., the retailing of goods
to general consumers, this, of course, is not an issue in
relation to applicant’s business consultation services.
In regard to applicant’s retail store services, however,
opposer is correct in arguing that both parties make
their store services available to the same class of
consumers, i.e., any potential consumer of their
respective goods and services. Applicant’s witness
LaRochelle testified at length about the vast majority of
its sales being made to business customers and that its
walk-in business is minimal. (LaRochelle disc. dep.
pp.52-53 and 57-59; La Rochelle test. pp.25-27, 42 and
48) Nonetheless, we must consider channels of trade and
classes of consumers based on the identifications in the
involved applications and registrations. Octocom Systems
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990). Applicant’s identification
of its retail store services is not limited to retailing
to other businesses and must be read to encompass
retailing to the home user of personal computers as well
as the business user.
For related goods typically sold at retail to
general consumers, the absence of restrictions, in
particular identifications, on channels of trade or
Opposition No. 113,785
38
classes of consumers, often leads to the conclusion that
the goods can move in the same channels of trade, i.e.,
through the same types of stores or resellers, to the
same ultimate consumers. However, as for the respective
retail store services in this case, the mere fact that
opposer and applicant provide such services is not
sufficient reason to conclude the services may be offered
together. Each provides these services through its own
stores and web sites. There is nothing in applicant’s
identification that suggests that its retail store
services focusing on computer hardware and software and
peripherals would be rendered through a retail store
focusing on sporting goods and equipment, apparel and
footwear, or vice versa. In sum, merely because both
parties provide retail store services and use similar
methods of advertising does not mean that their
respective services will be offered to consumers under
circumstances and through channels of trade which would
create a likelihood of confusion.14

14 Of course, there are instances in which different types of
services are rendered through retail establishments, as a
retailer might contract with any number of businesses to
provide, for example, delivery, installation, repair or
maintenance services related to the goods it sells in its retail
stores. We do not mean to suggest that goods can move through
the same channels of trade but services cannot. Rather, we make
the specific point that retail store services from different
Opposition No. 113,785
39
Likewise, while opposer has many different types of
goods listed in at least one of its registrations for THE
SPORTS AUTHORITY (Reg. No. 2,071,449), and there are no
restrictions on channels of trade for those goods, there
is nothing in the record to suggest that such goods would
move through a retail store focusing on computer
hardware, software and peripherals. Nor would they be
distributed through or by an entity providing business
consultation services in the computer field.
We find little likelihood for confusion attributable
to channels of trade employed by the parties,
notwithstanding that there are no restrictions on the
involved identifications. In regard to classes of
consumers, the mere fact that both opposer and applicant
are presumed to market to general consumers, including
businesses and individuals, does not dictate a conclusion
that confusion is likely to arise. There is nothing in
the record to establish the overlap in purchasing habits
of consumers of computer goods and services and consumers
of sporting goods, equipment, apparel and footwear. We
think it a fit subject for judicial notice that
purchasers of computer hardware and software also would
be purchasers of, at least, footwear and apparel, and

retailers are, almost by definition, provided through different
Opposition No. 113,785
40
perhaps sporting goods and equipment. There is nothing
in the record, however, to suggest that merely because
the same consumer may purchase these items, such consumer
would consider the goods as likely to emanate from the
same source or have the same sponsorship.
This factor favors applicant.
(4) The conditions under which and buyers to whom sales
are made, i.e. “impulse” vs. careful, sophisticated
purchasers.

Both opposer and applicant run retail stores.
Opposer also acts as a sort of wholesaler insofar as it
sells goods to businesses that will resell them; and
applicant, too, sells some of its goods to smaller
resellers. Of course, merely because a significant
portion of each party’s business is with ultimate
consumers, rather than resellers, it does not
automatically follow that such consumers are impulsive
rather than careful. The record reveals that the goods
retailed in opposer’s stores and via its web site include
a great variety of items in myriad price ranges.
Likewise, applicant’s customers for its computer
retailing business may purchase anything from an
expensive package of computer hardware and software to a
relatively inexpensive accessory item. Neither party can

stores.
Opposition No. 113,785
41
be said to deal with only one type of consumer. Rather,
it is clear that each markets some goods that might be
bought on impulse and others that would require a good
deal of deliberation.
The other services each party provides, e.g.,
applicant’s consultation and design services relating to
computers and opposer’s various services such as
advertising, marketing, importing and exporting,
promoting sports teams, and sponsoring teams and
competitions, would more uniformly require some degree of
deliberation before purchase.
This factor favors neither party.
(5) The fame of the prior mark.

With this factor, we look at what fame a mark has
achieved in the marketplace. “Thus, a mark with extensive
public recognition and renown deserves and receives more
legal protection than an obscure or weak mark.” Kenner
Parker Toys v. Rose Art Industries, 963 F.2d 350, 353, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992). See also, Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897
(“The fifth DuPont factor, fame of the prior mark, when
present, plays a ‘dominant’ role in the process of
balancing the DuPont factors.”)
Opposition No. 113,785
42
Opposer has spent a good deal more of its effort on
trying to establish that its family of marks is famous
than it has spent trying to establish that its two core
marks have attained some degree of fame. At this point
in our decision, however, we consider the record for its
evidence of fame of THE SPORTS AUTHORITY and the TSA
logo.
“Achieving fame for a mark in a marketplace where
countless symbols clamor for public attention often
requires a very distinct mark, enormous advertising
investments, and a product of lasting value.” Kenner
Parker, 963 F.2d at 352, 22 USPQ2d at 1456. In this
case, opposer’s core marks were possessed of at least a
high degree of suggestiveness when conceived, but have
acquired sufficient distinctiveness to become strong
marks. See The Sports Authority, Inc. v. Prime
Hospitality Corp., 89 F.3d 955, 39 USPQ2d 1511 (2d Cir.
1996) (In decision vacating grant of summary judgment on
other grounds, appeals court noted that the trial court
had found THE SPORTS AUTHORITY to be descriptive but
possessed of acquired distinctiveness).15 In addition,

15 By way of contrast with the Prime trial court’s finding, we
note that the Office has registered THE SPORTS AUTHORITY on the
Principal Register without requiring a showing of acquired
distinctiveness.

Opposition No. 113,785
43
from the record we know that opposer’s investment in
advertising grew from $1.2 million in 1988 to nearly $70
million in 1998, the last year for which we have figures.
Not included in these totals are the amounts opposer
spends when it opens a new store. During the early and
mid-1990s, opposer was opening stores regularly and
expanding geographically, so that it now has 200 stores
in 32 states and is the largest sporting goods retailer
in the country. Opposer’s sales of sports related goods
and services and apparel escalated from $3 million in
1987 to nearly $1.6 billion dollars in 1998.
These figures are unquestionably impressive. Cf.
TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d
88, 96, 57 USPQ2d 1971, 1975 (2d Cir. 2001) (footnote
omitted) ("Some of the holders of these inherently weak
marks are huge companies; as a function of their
commercial dominance their marks have become famous.”)
On the other hand, we have little, if any, evidence
to show the level of brand awareness that has resulted
from opposer’s expansion and promotional efforts. There
is no survey evidence and we do not have figures
regarding household penetration or brand awareness that
would tend to establish that opposer provides products
and services of lasting value. For comparison, we note
Opposition No. 113,785
44
the evidence of record in the Kenner Parker and Recot
cases:
In the two- to seven-year-old age group,
one in every two children currently owns a
PLAY-DOH product. A survey showed that 60%
of mothers named PLAY-DOH for modeling
compound without any prompting. One
witness characterized PLAY-DOH as a “piece
of gold” which has lasted over thirty years
as a successful toy -- a very unusual
occurrence in the toy business.

Kenner Parker, 963 F.2d at 351, 22 USPQ2d at 1455.

Recot … has manufactured and sold a wide
variety of snack food under its mark,
FRITO-LAY, for over thirty years. Recot
now sells FRITO-LAY products nationwide in
supermarkets, grocery stores, mass
merchandisers, and wholesale clubs,
convenience stores, food services, and
vending machines. … In any given year, up
to 90 percent of American households
purchase at least one FRITO-LAY brand
snack.

Recot, 214 F.3d at 1326, 54 USPQ2d at 1896.

We do not have a similar record in this case.
TSAM’s witness Lisi, discussing TSAM’s core marks,
testified that he had “commissioned two separate US
valuations by outside valuation expert [sic] and looked
at and worked with them and gone through all of the same
factors, consumer recognition, you know, who are our
competitors, what is their market share, what is our
market share, those sorts of things.” (Lisi test. p.92)
Opposition No. 113,785
45
Yet we have no testimony or reports from the outside
valuation expert or experts; not even a statement from
Lisi as to the conclusions reached on consumer
recognition and market share. Further, Lisi, opposer’s
chief witness, was equivocal on whether the outside
valuations are evidence that TSAM’s core marks are
famous: “And from that information [i.e., the outside
valuations], my personal impression is that the mark The
Sports Authority, the mark Sports Authority and design
and the family of Authority marks are extremely strong,
if not famous.” (Lisi test. pp.92-93)
While opposer has introduced a number of its annual
reports (Lisi test. exh. 25), and hundreds of pages of
financial analyses of opposer by financial analysts (Lisi
test. exh. 23), there is no testimony or argument
asserting that these materials contain any information on
household penetration, brand awareness or brand value.
Lisi also identified and introduced an affidavit and
accompanying exhibit (Lisi test. exh. 22) intended to
establish the number of viewer impressions created by
opposer’s television advertising over a three-year
period; but without testimony from the individual who
prepared the exhibit, the Lisi testimony is probative of
nothing more than that he received the affidavit and
Opposition No. 113,785
46
report from an officer of opposer’s ad agency. Likewise,
Lisi introduced a “master list” of what are reported to
number over 10,000 incidents of “unsolicited” press
coverage of opposer and/or its stores. (Lisi test. exh.
24) However, no individual articles have been produced
as a sample and we have no idea whether the articles are
positive or negative; we know only that Lisi testified to
their collection.
These failures are significant. Because “the fame
factor is based on underlying factfinding … relevant
evidence must be submitted in support of a request for
treatment under the fame factor. This responsibility to
create a factual record is heightened under the more
deferential standard that [the Federal Circuit] must
apply when reviewing PTO factfinding.” Packard Press
Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1360, 56
USPQ2d 1351, 1356 (Fed. Cir. 2000)(citations omitted).
Opposer has not created a record on which we could find
that its marks have attained the same level of fame as
PLAY-DOH or FRITO-LAY.
As the largest sports retailer in the country and
given the significant sums spent on advertising, almost
all of which involves at least opposer’s core THE SPORTS
AUTHORITY mark and TSA logo, we conclude that there is
Opposition No. 113,785
47
some degree of fame that attaches to these marks. Fame
is relative, however, not absolute, and we do not put
opposer’s marks on a par with the marks in Kenner Parker
and Recot.
Nonetheless, the fame factor favors opposer.
(6) The number and nature of similar marks in use on
similar goods.

With its notice of reliance, applicant introduced
evidence of 41 third-party registrations that include the
word “Authority” in a mark or slogan. We immediately
discount 15 of these as having little, if any, probative
value, for they cover marks where “Authority” is the
entire mark, or appears in a slogan not in the same form
as the marks of applicant and opposer, or they relate to
“authorities” in the nature of public agencies.
Of the 26 remaining registrations, 23 are for words
alone and in the “_________ Authority” form, some with a
leading “The,” others without it. Even the three
registered marks with design elements include wording
that would be read in the “_________ Authority” form.
These 26 registrations include the following: ABC
AUTHORITY for a web site providing information about
“activity-based business management”; HIRE AUTHORITY for
“employment agency services”; THE UNDERWATER AUTHORITY
Opposition No. 113,785
48
(“underwater” disclaimed), registered as a service mark
in three classes for a wide variety of services provided
in or under water, including construction, salvage,
inspection, and engineering, among others; AUDIO
AUTHORITY (and stylized AA design) (“audio” disclaimed)
for items of audio visual equipment and display units and
for custom design of display units and audio visual
fixtures; LCI AUTHORITY for telecommunications and
computer network-related services; COMPUTER SYSTEMS
AUTHORITY (“computer systems” disclaimed) for various
computer consulting and technical support services; PORT
AUTHORITY for “microprocessor and electronic switching
control devices”; POWER AUTHORITY for “surge protectors”;
ROUTE AUTHORITY for hand-held, microprocessor-based
devices for collecting and transferring data to personal
computers; two registrations for THE AEC AUTHORITY (one
in design form; both with “aec” disclaimed) for computer
software for use in computer-aided design and
engineering; THE DIAMOND AUTHORITY (“diamond” disclaimed)
for retail jewelry store services; THE CLEANING AUTHORITY
(“cleaning” disclaimed) for residential and building
cleaning services; AMERICA’S TRAVEL AUTHORITY for
computer software for retrieval and display of
geographic, routing and travel information; DIRECT
Opposition No. 113,785
49
AUTHORITY for credit card services; THE HOME IMPROVEMENT
AUTHORITY (“home improvement” disclaimed) for a monthly
magazine on home improvement and repair; THE CODE
AUTHORITY (“code” disclaimed) for publications in the
field of product safety testing and certification,
building codes, and commercial and residential
construction; THE CRUISE AUTHORITY (“cruise” disclaimed)
for a travel agency specializing in cruises; THE ULTIMATE
AUTHORITY for magazines for collectors of stuffed toy
animals and dolls; THE AIR AUTHORITY (“air” disclaimed)
for environmental consulting; NATIONAL AUTO AUTHORITY and
design, with smaller slogan “Pre-Purchase Inspection
Services” (“NATIONAL AUTO” and slogan disclaimed) for
used car inspection services; MONITOR AUTHORITY
(“monitor” disclaimed) for electronic home entertainment
systems and components; two registrations for THE
INTERNET PERFORMANCE AUTHORITY (“Internet performance”
disclaimed in each) for “computer software for measuring,
monitoring, and improving” quality of service of the
Internet and other networks, and for services related
thereto; PARTS AUTHORITY (“parts” disclaimed) for retail
store services and distributorship services dealing in
automobile parts, supplies and accessories; and THE
LIGHTING AUTHORITY (“lighting” disclaimed) for
Opposition No. 113,785
50
“association services, namely promoting the art and
science of illuminating engineering.”16
Applicant has also introduced, via the LaRochelle
testimony deposition, reprints of numerous web pages that
feature various marks including the term “Authority.”
Many of these web pages appear to be web sites posted by
the owners of certain registrations referenced above,
e.g., THE UNDERWATER AUTHORITY, THE ABC AUTHORITY, THE
CODE AUTHORITY, AUDIO AUTHORITY, PARTS AUTHORITY, LCI
AUTHORITY, COMPUTER SYSTEMS AUTHORITY. Some other web
pages include identical, or nearly identical, marks as
some of those in the registrations referenced above, but
appear to have been posted by entities other than the
owners of the corresponding registrations, e.g., CRUISE
AUTHORITY, THE DIAMOND AUTHORITY, HIRE AUTHORITY, AIR
AUTHORITY INCORPORATED, and THE CLEANING AUTHORITY.
Finally, there are web pages featuring “________
AUTHORITY” marks unlike any of the registrations
referenced above, e.g., THE JEANS AUTHORITY, THE COLOR
AUTHORITY, THE PAYMENTS AUTHORITY, THE AUTO AUTHORITY,
THE TRAVEL AUTHORITY, THE LEARNING AUTHORITY, SALES
AUTHORITY, HEATING AUTHORITY, THE WINE AUTHORITY, MOBILE

16 Each of the third-party registrations issued based on use of
the mark in commerce, and some have been maintained through the
filing of affidavits of use under Section 8 of the Lanham Act.
Opposition No. 113,785
51
AUTHORITY, FLEET AUTHORITY, THE INSURANCE AUTHORITY, THE
HEALTH AUTHORITY, and THE STORAGE AUTHORITY.
The last block of evidence intended by applicant to
demonstrate widespread use and adoption of “_______
AUTHORITY” marks consists of the LaRochelle search of BIG
YELLOW, an on-line yellow pages directory. By this last
block of evidence, applicant attempts to establish that
there are numerous -- thousands, even -- businesses
listed in BIG YELLOW which have “Authority” in their
names. By the testimony of Clifford Sewing, we know that
BIG YELLOW has been available over the Internet since
1996 and its listings are compiled from approximately
4500 yellow page directories from across the country.
Sewing also testified that 13 million searches of the
data base are conducted each month and 10-20 percent of
these are searches seeking listings for businesses with
particular names or terms, rather than all listings
within a whole category or information corresponding to a
particular phone number. In regard to the search
conducted by LaRochelle, Sewing testified, “It appears
that the search is giving matching categories -- the
database found 14,161 business listings and 781
categories with the name authority in it. So there’s
Opposition No. 113,785
52
14,000 plus businesses with the name authority across the
country.”
Most of the BIG YELLOW listings are not relevant,
because they are for “authorities” in the nature of
public agencies, such as the “Holmes County Economic
Development Authority” or the “Grand Rapids Area Transit
Authority.” Many others, however, follow the “_______
Authority” pattern and appear to be businesses attempting
to present themselves as “authorities” in their fields,
e.g., “The Entertainment Authority,” “Sports Car
Authority,” “Auto Lease Authority,” “Hair Authority,”
“Boat Authority,” “CD Authority,” “Hire Authority,”
“Nanny Authority,” “Glass Authority,” “Coupon Authority,”
“Design Authority,” “Gem Authority,” “Landscaping
Authority,” “Fence Authority,” “Kickboxing Authority,”
“Moving Authority,” “Pet Authority,” “Plumbing
Authority,” “Vinyl Authority,” “Chicago Bagels
Authority,” “Pizza Transit Authority,” “Roof Authority,”
“Storage Authority,” “Cruise Authority,” “Travel
Authority,” “The Wine Authority,” “Tuxedo Authority,”
“Wedding Authority,” “Resume Authority,” and “The Office
Authority.”
Opposition No. 113,785
53
Opposer discounts much of the evidence of third-
party registrations, web sites, and BIG YELLOW trade name
listings.
In regard to the third-party registrations,
opposer’s witness Lisi, in his rebuttal testimony, argues
that TSAM has actually taken assignments of one or two of
the registered marks; that it has investigated the actual
use of some of the registered marks and entered into co-
existence agreements with the registrants; that it
monitors other uses; and that opposer takes enforcement
actions ranging from issuing cease and desist letters to
filing civil lawsuits for uses to which it objects. The
Lisi testimony also reveals that opposer does not have
co-existence agreements with all users of “_________
Authority” marks, cannot afford to challenge all uses,
and must “prioritize who we pursue or what we pursue and
often that’s determined by the severity of the problem
and what’s already being handled at a given time. …we do
the best we can with the resources we have.” (Lisi
rebuttal test. pp.4-11) Similarly, in regard to web
sites on which applicant relies, the Lisi rebuttal
testimony makes clear that opposer has been in contact
with some of the entities behind the web sites. (Lisi
rebuttal test. pp.12-23)
Opposition No. 113,785
54
Opposer argues that neither the third-party
registrations nor the Internet web sites are evidence of
use of the marks shown therein. Yet the Lisi rebuttal
testimony confirms that many of the registered marks and
web sites have been put to some use, because opposer
investigated the uses, in some instances, consented to
particular uses, and in others monitors ongoing use.
It is well settled that third-party registrations
are not evidence of use of the marks shown therein, or
that consumers have been exposed to them. AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 1406, 177
USPQ 268, 269 (CCPA 1973). Likewise, the Internet web
sites and BIG YELLOW listings are of limited probative
value. Cf. AMF Inc., 474 F.2d at 1406, 177 USPQ at 270
(“We think the listing of trademarks … in various trade
magazines should be treated in a similar manner as are
third-party registrations. They give no indication as to
actual sales, when the mark was adopted, customer
familiarity with the marks, etc.”) citing Gravel Cologne,
Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 176 USPQ
123 (CCPA 1972). Nonetheless, we find the numerous
registrations and web site uses probative evidence that
marks using a descriptive or suggestive term followed by
the term “Authority” are attractive to many businesses,
Opposition No. 113,785
55
are adopted to convey the very suggestive connotation
that the adopting entity is an expert or authority in the
particular field in which it is engaged, and that such
marks often co-exist17 and are distinguished because of
the other terms used in conjunction with “Authority.”
See Henry Siegel Co. v. M & R Mfg. Co., 4 USPQ2d 1154,
1161 n. 11 (TTAB 1987) and Bost Bakery, Inc. v. Roland
Industries, Inc., 216 USPQ 799, 801 n. 6 (TTAB 1982).
This factor favors applicant.
(7) The nature and extent of any actual confusion.

There is no evidence of actual confusion in this
case. TSAM’s witness Meyers testified that one customer
in opposer’s Manchester, New Hampshire store asked
whether a computer shown in a display with a global
positioning system could be purchased. This does not
evidence confusion between the party’s respective
businesses. The absence of actual confusion is a factor
that favors applicant.
(8) The length of time during and conditions under which
there has been concurrent use without evidence of actual
confusion.

Opposer has had one of its retail stores located in
Manchester, New Hampshire since prior to applicant’s

17 In regard to the ability of at least some of such businesses
to co-exist, we note again that TSAM’s witness Lisi has
Opposition No. 113,785
56
adoption of its marks. By the time of trial, the parties
had concurrently operated in the same geographic market
for approximately five years without any evidence of
actual confusion. This factor favors applicant.
(9) The variety of goods on which a mark is or is not
used (house mark, “family” mark, product mark).

Applicant uses THE PERSONAL COMPUTER AUTHORITY as a
trade name and uses THE PERSONAL COMPUTER AUTHORITY and
the PC AUTHORITY logo as house marks for its retail store
services and business consultation services focusing on
computers. Opposer has obtained 4 registrations for the
words THE SPORTS AUTHORITY, one registration for the TSA
logo and another for THE SPORTS AUTHORITY LTD. THE
SPORTS AUTHORITY is utilized as opposer’s trade name and
both THE SPORTS AUTHORITY and the TSA logo are utilized
as house marks for various goods and services relating to
sports and apparel.
Because the respective marks are utilized as the
parties’ respective house marks, this factor slightly
favors opposer, notwithstanding that the parties’ goods
and services are very different.
(10) The market interface between applicant and the owner
of a prior mark:
(a) a mere “consent” to register or use.

testified on this point.

Opposition No. 113,785
57
(b) agreement provisions designed to preclude
confusion, i.e. limitations on continued use of
the marks by each party.
(c) assignment of mark, application,
registration and good will of the related
business.
(d) laches and estoppel attributable to owner of
prior mark and indicative of lack of confusion.

This factor is not an issue in this case.

(11) The extent to which applicant has a right to exclude
others from use of its mark on its goods.

There is no evidence on this factor.

(12) The extent of potential confusion, i.e., whether de
minimis or substantial.

Opposer argues that the risk of potential confusion
is great. Yet the parties’ respective marks convey
different specific commercial impressions, the parties
have operated their retail establishments within miles of
each other for approximately five years, the parties
provide their respective consumers with very different
goods and services, and there have been no known
instances of actual confusion. While opposer’s witness
Lisi testified about possible expansion into marketing of
more hand-held type electronic devices with embedded
computer chips, we find the testimony vague and
insufficient to evidence any genuine intent of opposer to
bridge the gap between the parties. We conclude the
extent of potential confusion is de minimis.
Opposition No. 113,785
58
This factor favors applicant.
(13) Any other established fact probative of the effect
of use.

Opposer notes that it has been quite aggressive in
investigating and, often, challenging other uses of
“Authority” marks. Despite applicant’s request that we
disregard the table of enforcement actions presented in
opposer’s brief, even without resort to that table, the
record clearly supports the conclusion that opposer has
regularly ridden into battle against other “Authority”
marks. While opposer has had many successes, these do
not appear to have diminished the attractiveness of such
marks to others. Further, TSAM witness Lisi admitted
that it does not maintain a chart of uses of “Authority”
marks that it does not find objectionable and has not
challenged. Thus, the record does not allow us to
accurately assess the percentage of potential conflicts
opposer has risen to challenge.
This factor favors neither party.
Balancing of the DuPont Factors

By balancing the duPont factors, we conclude that
there is no likelihood of confusion in this case.
Likelihood of confusion is decided upon the facts of
each case. In re Dixie Restaurants, Inc. 105 F.3d 1405,
Opposition No. 113,785
59
1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Shell Oil,
992 F.2d at 1206, 26 USPQ at 1688 (Fed. Cir. 1993). The
various factors may play more or less weighty roles in
any particular determination of likelihood of confusion.
duPont, 476 F.2d at 1361, 177 USPQ at 567.
We note that the balance must initially tip in
opposer’s favor, because the Federal Circuit “has
acknowledged that fame of the prior mark … ‘plays a
dominant role in cases featuring a famous or strong
mark.’” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed.
Cir. 1992), quoting, Kenner Parker, 963 F.2d at 352, 22
USPQ2d at 1456. In addition, the Federal Circuit has
held that in a particular case, a single duPont factor
may be dispositive. Kellogg Co. v. Pack'em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir.
1991).
We do not find this case an appropriate one in which
to rule that the presumptive fame of opposer’s mark alone
can be a dispositive factor. That fame is presumed to
attach to opposer’s core marks solely because of sales
and advertising figures. The record is, however,
insufficient to establish that opposer’s core marks are
in the same class of marks as are PLAY-DOH and FRITO-LAY,
Opposition No. 113,785
60
which were the marks in, respectively, the Kenner Parker
and Recot decisions. Even in those cases, where the
record supporting the fame factor was greater, there were
other duPont factors favoring the opposers. In this
case, the only other duPont factor that favors opposer is
the ninth, and that only slightly.
On the other side of the balance, the first, second,
third, sixth, seventh, eighth and twelfth duPont factors
favor applicant.18 The first and second are often key
considerations. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, Kellogg, supra, wherein the first factor alone was
determinative.
In this case, though the balance initially tips in
favor of opposer because of the fame factor, the many
other factors that weigh in the balance in favor of
applicant are sufficient to overcome the fame factor.
Moreover, opposer has produced no evidence that the
relevant public, i.e., consumers of diverse retail store
services, has become accustomed to seeing the same or
similar marks in connection with the operation of retail
stores in fields as diverse as sports and apparel, on the

18 The fourth, tenth and eleventh factors favor neither party.
Opposition No. 113,785
61
one hand, and computer hardware, software and accessories
on the other.
We find no likelihood of confusion among consumers
when comparing opposer’s marks THE SPORTS AUTHORITY and
the TSA logo with applicant’s marks THE PERSONAL COMPUTER
AUTHORITY and the PC AUTHORITY logo. We note also, that
comparison of applicant’s marks with opposer’s other
registered marks does not yield any greater basis on
which to find a likelihood of confusion. None of those
marks benefits from the fame of opposer’s core marks and
they are no more similar to applicant’s marks than
opposer’s core marks.

TSAM’s FAMILY OF MARKS CLAIM

As noted, the record is clear that opposer makes
consistent and widespread use of its core marks, THE
SPORTS AUTHORITY and the TSA logo. Also, as discussed
above, priority of use is not an issue in this case,
insofar as these and other registered marks of opposer
are concerned. See King Candy, supra. In regard,
however, to opposer’s claim that it has a family of
marks, opposer cannot show merely that it has a number of
registrations with a common term, but must show that use
of marks sharing “a recognizable common characteristic”
Opposition No. 113,785
62
predates applicant’s first use of its marks and is made
in such a way as to create “recognition among the
purchasing public that the common characteristic is
indicative of a common origin of the goods.” J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991).
Opposer has denied “any use of the term Authority
that any entity may come up with … would infringe upon
[TSAM’s] family of marks.” (Lisi disc. dep. pp.40-41)
Thus, it is clear that opposer does not claim rights in
gross to the term “Authority.” Opposer has described its
asserted family as “all formed by the dominant surname
AUTHORITY and most of which begin with a highly
suggestive prefix…” (TSAM Brief p.2) TSAM’s witness
Lisi, in his discovery deposition, stated that “the core
mark, father or mother mark is the mark Authority.” (Lisi
discovery dep. p.40) In its reply brief, however, TSAM
echoes the main brief and asserts that its family is
“anchored by its centerpiece trade name THE SPORTS
AUTHORITY” and most members of the family include “a
descriptive or suggestive word preceding the AUTHORITY
family surname.” (TSAM reply brief p.1) Though
opposer’s oldest registration is for the mark AUTHORITY
alone -- for apparel -- this was registered prior to
Opposition No. 113,785
63
opposer’s formation and obtained by assignment. We find
the description of TSAM’s family in its brief more apt
than the Lisi statement.
The progenitors of opposer’s family clearly are its
mark THE SPORTS AUTHORITY and THE SPORTS AUTHORITY logo.
The “recognizable common characteristic” of marks used
and/or registered by opposer, and which are, therefore,
members of its family, is a mark format wherein one or
more words, e.g., “Golf,” “Tennis,” “Golf & Tennis,”
“Fishing,” “Marine,” “Basketball,” “Footwear,” “Outdoor,”
“Bag,” “Shoe & Apparel,” and “Back to School,” are used
in conjunction with, and as adjectives modifying, the
term “Authority.” The testimony of TSAM’s witness Lisi,
and exhibits 3 and 37 thereto, which are samples of print
advertisements for opposer’s stores in which the core
marks and other marks sharing the family characteristic
are presented, demonstrate the formation of the family
prior to applicant’s first use of its marks.19
Many of the ads in Lisi exhibit 3 also feature use
of slogans such as “We’re the Authority on In-Line Skates
and Apparel” or “We’re the Authority on Great Athletic
Footwear!” Slogans such as these, however, are in ads

19 Occasionally, the ads show family members in a “THE _______
AUTHORITY” format. We do not view the presence or absence of
“the” as a critical family characteristic.
Opposition No. 113,785
64
dated after applicant’s first use of its mark, and do not
share the same “recognizable common characteristic” as
the family established prior to applicant’s first use.
We do not consider these slogans to be part of the family
established prior to applicant’s first use. To the
extent these slogans may evidence opposer’s attempt to
create a new and different family other than the one we
have recognized, they do not aid opposer in this case.
Nor do we consider opposer’s registered mark
AUTHORITY or marks such as AUTHORITY PRICE or the slogan
“Come to the Authority on holiday savings” to be part of
the family. The evidence of record of use of such marks
is scant compared to the evidence of use of the “_______
AUTHORITY” marks.20

20 Opposer asserts in its brief, more specifically, in its
description of the record, that its “advertising efforts have
been very successful in creating hundreds of billions of
consumer impressions and establishing links in the minds of
consumers between” opposer’s goods and services and its family
of marks. (TSAM brief pp.8-9) There is, however, no support in
the record for such an assertion. (cont.)
TSAM’s witness Lisi testified that opposer’s web site “had
over a billion click throughs from Yahoo alone in the [1999]
Christmas selling season….” (Lisi test. p.67) He also testified
“that there are billions and billions of new impressions being
created for the Authority marks through the Internet venue….”
(Lisi test. p.70) Yet there is no independent support for these
statements and, in any event, the only exhibits that correspond
to this testimony show use of only TSAM’s two core marks, of THE
AUCTION AUTHORITY, and of a slogan that reads “The Ultimate
Authority for Selection, Quality, and Value.” In short there is
no evidence that TSAM’s web site has created either the number
of advertising impressions trumpeted in opposer’s brief or of an
Opposition No. 113,785
65
While we find that opposer has promoted its “______
Authority” marks as a family, we acknowledge applicant’s
argument that the family surname is weak and non-
distinctive. (PCA brief p.12) Likewise, we acknowledge
applicant’s contention that opposer has presented no
evidence, such as a survey, demonstrating public
recognition of the family. (PCA brief p.15) Finally, we
acknowledge applicant’s contention that the
advertisements in Lisi testimony exhibits 3 and 37
include none dated, respectively, after August 1997 and
May 1995, and applicant’s charge that opposer’s
advertising of its family of marks “has long since
expired.” (PCA brief p.16)21 Thus, this is not a case
quite the same as Han Beauty Inc. v. Alberto-Culver Co.,

association between opposer’s goods and services and the various
family members shown in the print advertisements introduced by
the Lisi deposition.
The Lisi testimony deposition also was used to introduce, as
exhibit 22, two affidavits. One is from an officer of TSAM’s
advertising agency and is intended to establish that from 1990-
92, there were approximately one and a quarter billion viewer
impressions of opposer’s television advertising. We have
already noted, in our discussion of the fame of opposer’s core
marks, that this affidavit and its exhibit are not probative
evidence. Moreover, even if we had found the affidavit and
exhibit to be probative evidence, the affidavit and its exhibit
do not establish either the level of viewer impressions
described in opposer’s brief or that such impressions related to
promotion of opposer’s family, as opposed to its core marks.

21 Applicant has also contended that the number of marks in
opposer’s family can number no more than five, because only five
of its marks were registered prior to applicant’s first use.
Applicant is legally incorrect on this point.
Opposition No. 113,785
66
236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001). In that
case, the defendant stipulated before the Board that
plaintiff had a family of marks without “temporal or
other limitation.” Id. 236 F.3d at 1336, 57 USPQ2d at
1559. Here, defendant clearly contests recognition and
distinctiveness of plaintiff’s family characteristic.
Applicant is correct in arguing that distinctiveness
of the family characteristic is a factor to be
considered. J & J Snack Foods, supra, 932 F.2d at 1463,
18 USPQ2d at 1891-92 (“It is thus necessary to consider
the use, advertisement, and distinctiveness of the marks,
including assessment of the contribution of the common
feature to the recognition of the marks as of common
origin.”)
In this regard, opposer contends that many of the
members of its family are registered, on the Principal
Register, without resort to Section 2(f) of the Lanham
Act, and some have attained incontestable status.
Opposer also relies on its extensive advertising and an
“incredible volume of unsolicited articles written about
TSAM by the press” to establish the strength of its
family. Thus, opposer considers its family not merely

Opposition No. 113,785
67
presumptively strong but also famous. (TSAM brief pp.26-
28)
We believe the record indicates that the strength of
TSAM’s family of marks is rather limited. We begin our
consideration of the family’s strength with the
observation that the marks in the family are highly
suggestive. TSAM has admitted that each mark in the
family utilizes a suggestive or descriptive term as a
modifier of the term “Authority.” The term “Authority,”
too, is highly suggestive when used as part of a series
of marks for retail store services, in that the term
readily suggests that TSAM can provide customers
“authoritative” assistance. Thus, the family
characteristic readily suggests that the stores owned and
operated by TSAM and those stores licensed to use its
marks, are staffed by authorities in selecting the types
of goods, or preparing consumers for the types of
activities, that are referenced in the marks in its
family.
We also note that, in the record, the family members
play feature roles only in Lisi testimony deposition
exhibits 3 and 37 and, even then, there is no evidence of
promotion of the family in print ads after August 1997.22

22 The Lisi testimony deposition was taken March 9, 2000.
Opposition No. 113,785
68
The family members do not appear at all in the
transcripts of radio advertising (Lisi test. exh. 19); or
in the photographs and exhibits which demonstrate use of
TSAM’s two core marks at athletic arenas and public
displays at sports events (Lisi test. exhs. 9 & 10); or
in the web pages from TSAM’s web site (Lisi test. exh.
18); or in the catalogues, flyers and other print
material submitted as Lisi testimony exhibits 20, 21, 34
and 35. In addition, PCA’s testimony witness LaRochelle
authenticated and introduced five of TSAM’s flyers
(LaRochelle test. exhs. 12-16) he received at his home,
and none of these includes any members of the family
other than TSAM’s two core marks. Finally, TSAM’s
witnesses, Lisi and Meyers, could testify to use in the
Manchester, New Hampshire THE SPORTS AUTHORITY store of
only two other members of the family, besides the two
core marks, specifically KNIFE AUTHORITY and SKI
AUTHORITY; even then, the Meyers testimony is vague, as
he only recalled the use of SKI AUTHORITY during re-
direct testimony.
Moreover, while opposer has made an unsupported
assertion that the record shows there have been “hundreds
of billions” of consumer impressions of its family
because of advertising, all the record reveals is a round
Opposition No. 113,785
69
figure spent on advertising, on an annual basis, and does
not in any way show that such expenditures were for ads
featuring family members, as opposed to TSAM’s two core
marks. The sales and advertising figures, to be sure,
are impressive. Yet there is no evidence they have
translated into recognition of TSAM’s family of marks.
In short, we find that the record shows that TSAM’s
family of marks was formed prior to applicant’s first
use, but its members are not now seen together in public
very often and, therefore, the family possesses very
limited strength. Certainly, we do not find support for
opposer’s argument that its family of marks, as opposed
to its core marks, is famous. Moreover, any strength
attaching to TSAM’s family of “_______ AUTHORITY” marks
is further limited to the retailing of sporting goods and
equipment, footwear, apparel and the like. There is
nothing in the record to support a conclusion that the
family would be recognized as extending beyond such goods
and services. Cf. Han Beauty, 236 F.3d 1333, 57 USPQ2d
1557 (Fed. Cir. 2001) (Applicant’s mark for hair care
products would be perceived as indicating applicant’s
goods have common origin with opposer’s hair care
products marketed under family of similar marks); J & J
Snack Foods, 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
Opposition No. 113,785
70
1991) (Applicant’s marks for frozen soft pretzels would
be perceived as indicating applicant’s goods have common
origin with opposer’s wide variety of food products
marketed under family of similar marks); and Motorola,
Inc. v. Griffiths Electronics, Inc., 317 F.2d 397, 137
USPQ 551 (CCPA 1963) (Applicant’s mark for electron gun
used in television tubes and other electronic devices
“would appear to many to be a member of opposer’s family”
of similar marks, where parties “obviously in the same
general field.”).
In terms of likelihood of confusion, we find that
the duPont factors are balanced almost exactly the same
when we compare TSAM’s family and applicant’s marks, as
they were when we compared TSAM’s core marks and
applicant’s mark; except that the fifth duPont factor,
fame, does not favor opposer. Thus, under the
circumstances presented by this case, we find no
likelihood of confusion between TSAM’s family of
“________ AUTHORITY” marks and applicant’s marks THE
PERSONAL COMPUTER AUTHORITY and the PC AUTHORITY logo.

DECISION

The opposition is dismissed as to each of
applicant’s involved applications.