Wally Yachts N.V. and Wally Yachts S.A., Assigneev.Christopher J. Walworth

Trademark Trial and Appeal Board

Sep 27, 2010

No. 91183793 (T.T.A.B. Sep. 27, 2010)

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.

WINTER
Mailed: September 27, 2010

Opposition No. 91183793

Wally Yachts N.V. and
Wally Yachts S.A., Assignee,
joined as party plaintiff1

v.

Christopher J. Walworth

Before Bucher, Zervas, and Kuhlke,
Administrative Trademark Judges.

By the Board:

Christopher J. Walworth (hereafter “applicant”) seeks
to register the mark WALLYBOARD in standard characters for
“body boards.”2 Wally Yachts S.A. (assignee of Wally Yachts
N.V., hereafter “opposer”) opposes registration of the
applied-for mark on the grounds of priority and likelihood
of confusion under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), and fraud. In support of its claims, opposer

1 The Board notes the assignment of the entire interest in
opposer’s pleaded registration from Wally Yachts N.V. to Wally
Yachts S.A., recorded with the Office’s Assignment Division at
Reel/Frame 4052/0320. Because the assignment occurred after the
commencement of this proceeding, the assignee is hereby joined as
party plaintiff. See TBMP § 512.01 (2d ed. rev. 2004) and cases
cited therein.

2 Application Serial No. 77235549, filed July 22, 2007, based on
applicant’s alleged use in commerce, claiming May 30, 2006, as
his dates of first use in commerce and anywhere.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91183793
2
alleges ownership of U.S. trademark registration No. 3070046
for the mark shown below,

for various goods, including “apparatus for locomotion by
water, namely, sailing vessels, motorboats, ships, boats,
yachts” and “sailing shoes, water skis and sailboards.”
Opposer also alleges that the application which matured into
its pleaded registration has a priority filing date of May
29, 2002 (pursuant to Trademark Act Section 44(d)) and an
actual filing date of November 27, 2002, that its
registration issued on March 21, 2006, and that all three
dates are prior to the filing date of the involved
application (first amended notice of opp., ¶1). Attached to
its amended pleading are USPTO TARR, TESS and Assignment
database printouts showing current status and title
information on Reg. No. 3070046.
In its answer, applicant admits that opposer is “listed
by the United States Patent and Trademark Office as the
owner of record” of the pleaded registration (answer, ¶1)
and that the TARR, TESS and Assignment database printouts
appear to be true and correct copies thereof; however,
Opposition No. 91183793
3
applicant denies all other essential allegations set forth
in the first amended notice of opposition.3
This case now comes up on opposer’s fully briefed
motion (filed May 5, 2010) for summary judgment in its favor
on its claim of priority and likelihood of confusion.
Preliminary Matters
• Applicant’s Request for Discovery
We note that applicant asserts in his opposition brief
that opposer has failed to timely answer applicant’s
interrogatories “which are fundamental to the preparation of
Applicant’s case”4 and that he “has found no evidence of
Opposer’s mark being sold and shipped on products into or
within the United States for some classes of goods
pertaining to the Opposer’s mark.”5 Further, applicant
requests that the Board deny opposer’s motion for summary
judgment and grant applicant’s motion to compel, explaining
that “the Applicant seeks to uncover material facts which
the applicant will utilize to formulate a compelling

3 Applicant has also set forth seven affirmative defenses
comprising bald assertions of acquiescence, laches, waiver,
estoppel, unclean hands, res judicata and collateral estoppel.
Applicant has not made any reference to his affirmative defenses
in his responses to opposer’s motion for summary judgment.

4 “Applicant’s Motion to Suppress Opposer’s Motion to Suspend TTAB
Proceedings –and- Applicant’s Motion in opposition to Opposer’s
Motion for Summary Judgment” (filed May 7, 2010), unnumbered page
1.

5 Id.

Opposition No. 91183793
4
argument for the Board to consider in the future,”6 and “the
Applicant continues to seek and to obtain full and complete
responses to discovery as the Opposer has not provided this
information.”7 Applicant also asserts that the declaration
of opposer’s counsel attached to opposer’s motion for
summary judgment “do[es] not show that the Opposer sold or
offered for sale the same or similar products … .”8 To the
extent that applicant, by its arguments and “motion to
compel,” is seeking additional discovery under Fed. R. Civ.
P. 56(f), for the following reasons, applicant’s motion is
denied.9
A request for additional discovery under Rule 56(f)
must be supported by an affidavit showing that the nonmoving
party cannot, for reasons stated therein, present by
affidavit facts essential to justify its opposition to the

6 “Applicant’s Motion to deny Opposer’s motion for summary
judgment and Motion to compel” (filed May 13, 2010), p. 2.

7 Id.

8 Id., p. 1.

9 It is well settled that a party which believes that it cannot
effectively oppose a motion for summary judgment without first
taking discovery may file a request with the Board for time to
take the needed discovery. See, e.g., Sweat Fashions Inc. v.
Pannill Knitting Co., 83 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir.
1987). See also TBMP § 528.06 (2d ed. rev. 2004). We are also
mindful of the concern of the Court of Appeals for the Federal
Circuit, our primary reviewing court, with the “railroading” of
nonmovants by premature summary judgment motions or the improper
entry of summary judgment when the nonmoving party has not had an
adequate opportunity to exercise pretrial discovery. See
Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471 (Fed. Cir. 1992). Defendant here is pro se.

Opposition No. 91183793
5
motion. See Fed. R. Civ. P. 56(f). See also Opryland USA
Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992); and Keebler Co. v. Murray
Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir.
1989).
Applicant has not submitted an affidavit in support of
his request, nor has applicant identified specifically the
discovery he needs to respond to the motion for summary
judgment. Rather, applicant’s stated reason for seeking
additional discovery is to investigate whether opposer is
using its mark in connection with some of the goods
described in the pleaded registration, which, without a
counterclaim seeking cancellation of opposer’s mark, is not
relevant to opposer’s claim of likelihood of confusion that
is the subject of opposer’s summary judgment motion.
Further, applicant seeks “to uncover material facts … for
the Board to consider in the future.” However, “summary
judgment need not be denied merely to satisfy a litigant’s
speculative hope of finding some evidence [through
discovery] that might tend to support a complaint.” Sweat
Fashions Inc. v. Pannill Knitting Co., 83 F.2d 1560, 4
USPQ2d 1793, 1799 (Fed. Cir. 1987). Additionally, applicant
has responded substantively to the subject motion for
summary judgment, arguing, inter alia, that “opposer has
Opposition No. 91183793
6
failed to prove likelihood of confusion”10 and that opposer
“does not even manufacture nor sell into the United States,
… water products of a similar nature to that sold by the
Applicant … .”11 See Ron Cauldwell Jewelry Inc. v.
Clothestime Clothes Inc., 63 USPQ2d 2009, 2012 n.8 (TTAB
2002); and Dyneer Corp. v. Automotive Products, plc., 37
USPQ2d (TTAB 1995) (“A party able to fashion a response to a
motion for summary judgment does not need discovery to be
able to respond to the motion”). In view of the foregoing,
applicant’s request for time to obtain assertedly unanswered
discovery requests12 from opposer and to conduct additional
discovery is not supported by the record and is denied.
• Applicant’s Motion for Judgment and Fraud Claim
In “Applicant’s Motion for Judgment,” applicant
asserts, “since fraud is the hallmark of the Opposer’s
opposition, and fraud can not [sic] and has not be [sic]
proven by the Opposer, the Applicant moves that judgment be
rendered in favor of the Applicant.”13 We also note
opposer’s request that the Board defer briefing on and

10 “Applicant’s Motion for Judgment” (filed May 8, 2010), p. 1.

11 “Applicant’s Motion to deny Opposer’s motion for summary
judgment and Motion to compel” (filed May 13, 2010), p. 1.

12 To clarify, we have not considered or decided the merits of
applicant’s “motions to compel,” which were untimely filed. See
Trademark Rule 2.127(d).

13 “Applicant’s Motion for Judgment,” p. 1.

Opposition No. 91183793
7
consideration of said motion until after the Board’s
considers the subject motion for summary judgment (opposer’s
opposition to applicant’s motions to compel, p. 3).
Although the Board’s suspension order (mailed June 7,
2010) stated that applicant’s “motion for judgment” would
not be considered, on review, we have reconsidered the
nature of applicant’s motion and treat it as a cross-motion
for summary judgment on opposer’s claim of fraud. In view
thereof, in general, opposer would be allowed time to file a
responsive brief thereto. See Trademark Rule 2.127(e)(1).
However, additional briefing is unnecessary inasmuch as
applicant’s cross-motion is moot because opposer’s claim of
fraud is insufficient. See Asian and Western Classics B.V.
v. Lynne Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009), citing,
Intermed Communications, Inc. v. Chaney, 197 USPQ 501, 503
n.2 (TTAB 1977) (“if a claim has not been properly pleaded
one cannot obtain summary judgment thereon”). Specifically,
opposer’s fraud claim is based in part on an assertion that
applicant “knew or should have known that such
misrepresentations of fact were false and/or misleading”
(amended notice of opp., ¶23). “A pleading of fraud which
rests solely on allegations that the trademark applicant …
made material representations of fact in connection with its
application … which it “knew or should have known” to be
false or misleading is an insufficient pleading of fraud
Opposition No. 91183793
8
because it implies mere negligence and negligence is not
sufficient to infer fraud or dishonesty.” In re Bose Corp.,
580 F.3d 1240, 91 USPQ2d 1938, 1940 (Fed. Cir. 2009).
Accordingly, pursuant to Fed. R. Civ. P. 12(f), opposer’s
fraud claim is hereby considered stricken; and applicant’s
motion for judgment on opposer’s claim of fraud will be
given no further consideration.
Opposer’s Motion for Summary Judgment
• Parties’ Arguments
Opposer argues that summary judgment should be granted
in its favor on its pleaded claim of priority and likelihood
of confusion because there are no genuine issues of material
fact that it is the senior and prior user of the WALLY mark;
that the appearance of the parties’ marks is likely to cause
confusion when the marks are viewed in their entireties;
that the involved application describes goods that are
related to opposer’s goods; that the parties’ goods are
intended to be used in the same places by the same people;
and that there are no limitations to the channels of trade
in either opposer’s registration or the involved application
(motion, p. 11).
Specifically, in regard to opposer’s claim of priority,
opposer asserts that based on either the filing date of its
foreign application upon which its priority claim under
Trademark Act Section 44(d) and registration under Trademark
Opposition No. 91183793
9
Act Section 44(e) were based, i.e. May 29, 2002, and the
date its U.S. registration was issued, i.e. March 21, 2006,
there is no dispute that opposer has priority vis-à-vis
applicant who filed the involved application on July 22,
2007 (motion, p. 12).
As to the appearance of the parties’ marks, opposer
contends that the dominant portion of applicant’s WALLYBOARD
mark is WALLY, which is identical to the dominant portion of
opposer’s mark, i.e. WALLY; and that the descriptive term
“BOARD” in applicant’s mark does not function to distinguish
the parties’ marks. In view thereof, when reviewed in their
entireties, opposer argues that there is no dispute that the
marks are so sufficiently similar that there is a likelihood
of confusion (motion, pp. 15-16).
Opposer also contends that there is no dispute that the
parties’ goods are similar, commercially related or travel
in the same channels of trade. In support thereof, opposer
points to the parties’ respective descriptions of goods,
which do not include any restrictions or limitations
regarding consumers or channels of trade; and to applicant’s
statements that purchasers of applicant’s goods are “average
people, children and adults alike, who are interested in
surfing and/or the ocean,”14 and that applicant’s goods are

14 Motion, Exh. 4; applicant’s revised responses to opposer’s
first set of interrogatories, interrogatory no. 21.

Opposition No. 91183793
10
used in the water, on lakes and in the oceans.15 Opposer
also argues that the third-party registrations that it
submitted with its motion “support the conclusion that
applicant’s goods and Wally’s goods can and do emanate from
a single source” (motion, p. 14).
In support of its motion, opposer has submitted the
declaration of its counsel (Stacey R. Halpern) to which are
attached, inter alia, (i) a copy of opposer’s registration
certificate and recent printouts from the USPTO TARR, TESS
and Assignments databases on opposer’s pleaded registration;
(ii) copies of applicant’s revised responses to opposer’s
first set of interrogatories, requests for admissions, and
requests for production of documents and things; and (iii)
printouts from the TESS database of seventeen use-based
third-party registrations,16 which include descriptions of
goods comprising boats and/or canoes, sailboards and/or
water-skis (opposer’s goods) and body boards (applicant’s
goods) or surfboards, which applicant states are similar to
the WALLYBOARD body board.17

15 Motion, Exh. 4; applicant’s responses to opposer’s first set of
admissions, responses to admission request nos. 59, 60 and 61.

16 We have not considered the submitted registrations that were
issued under Section 44(e) of the Trademark Act, which have no
probative value in showing the relatedness of the goods. See In
re 1st USA Realty Professionals Inc., 84 USPQ2d 1582, 1583 (TTAB
2007).

17 Motion, Exh. 4; applicant’s responses to opposer’s first set of
admissions, response to admission request no. 53.

Opposition No. 91183793
11
In opposition, applicant asserts that opposer has
failed to prove likelihood of confusion, and argues
primarily that opposer cannot prove its fraud claim and that
he has a bona fide intention to use the WALLYBOARD mark.
Applicant also “categorically rejects” opposer’s claim that
there are no genuine issues of material fact in dispute,
asserting that he “has a bona fide intention to use his
mark, and has in fact utilized his mark in trade and
continues to do so” (applicant’s motion in opposition,
unnumbered p. 2). In support of his arguments, applicant
has submitted copies of shipping receipts for his WALLYBOARD
products.18
In reply, opposer essentially contends that applicant
has failed to provide any evidence showing a genuine issue
of material fact for trial.
• Board’s Analysis
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The purpose of
summary judgment is one of judicial economy, that is, to
save the time and expense of an unnecessary trial where no
genuine issue of material fact remains and more evidence
than is already available in connection with the summary

18 See footnotes 4 & 10, supra, Exh. 1 and 2 to each motion.
Opposition No. 91183793
12
judgment motion could not reasonably be expected to change
the result. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739
F.2d 624, 222 USPQ 741, 743 (Fed. Cir. 1984).
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(c); and Celotex Corp. v. Catrett,
477 U.S. 317, 106 S. Ct. 2548 (1986). Additionally, the
evidence must be viewed in a light favorable to the non-
movant, and all justifiable inferences are to be drawn in
the non-movant’s favor. See Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1993). The Board may not resolve issues of
material fact; it may only ascertain whether such issues are
present. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987
F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc.
v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Further, when a moving party’s motion for summary
judgment is supported by evidence sufficient to indicate
that there is no genuine issue of material fact and the
moving party is entitled to judgment, the burden shifts to
the nonmoving party to demonstrate the existence of at least
one genuine issue of material fact that requires resolution
Opposition No. 91183793
13
at trial. The nonmoving party, however, may not rest on the
mere allegations of its pleadings and assertions, but must
designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue
of material fact for trial. Consequently, factual
assertions, without evidentiary support, are insufficient to
defend against a motion for summary judgment. See
Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60
USPQ2d 1733, 1739 (TTAB 2001) (“applicant has produced no
evidence, or raised any expectation that at trial it could
produce evidence”); and S & L Acquisition Co. v. Helene
Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987).
Before we consider the merits of the motion for summary
judgment, we must first consider the question of whether
opposer has standing to bring this opposition proceeding.
Standing is a threshold issue that must be proven by a
plaintiff in every inter partes case. Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). The purpose of the standing
requirement, which is directed solely to the interest of the
plaintiff, is to prevent litigation when there is no real
controversy between the parties. Id. at 189.
We note that opposer attached to its amended notice of
opposition and to the declaration of Ms. Halpern current
Opposition No. 91183793
14
printouts of information from the USPTO TARR, TESS and
Assignment database records, which show the current status
and title of opposer’s pleaded registration for the mark
WALLY (and design). We find this evidence of opposer’s
registration sufficient to establish that opposer has a real
interest in the outcome of this proceeding; that is, opposer
has a direct and personal stake in preventing the
registration of applicant’s mark for the identified goods.
We also note that applicant has not disputed opposer’s
standing to oppose his application. Thus, there is no
genuine issue of material fact regarding opposer’s standing.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Jewelers Vigilance Committee Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir.
1987); and Lipton Industries, Inc. v. Ralston Purina Co.,
supra.
Turning to the merits of opposer’s motion for summary
judgment, having considered the evidence and arguments
submitted by the parties, and viewing the evidence in the
light most favorable to applicant, we find that opposer has
satisfied its burden of setting forth a prima facie showing
that there are no genuine issues of material fact remaining
for trial and that it is entitled to judgment as a matter of
law as to its claim of priority and likelihood of confusion.
First, because of the undisputed evidence of opposer’s
Opposition No. 91183793
15
registration discussed supra, priority is not an issue. See
Trademark Act Section 7(c), 15 U.S.C. § 1057(c); and King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).
With regard to the likelihood of confusion claim under
Trademark Section 2(d), 15 U.S.C. § 1052(d), our analysis is
based on the consideration of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
With respect to the similarity of the marks, we look to
the marks in their entireties as to appearance, sound,
connotation and commercial impression. The focus is on the
perception and recollection of the average purchaser, who
normally retains a general rather than specific impression
of trademarks. See Chemetron Corp. v. Morris Coupling &
Opposition No. 91183793
16
Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
There is no genuine issue that the marks WALLY (and
design) and WALLYBOARD are similar. It is well-settled that
one feature of a mark may be more significant than another,
and it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Further, when a mark comprises
both a word and a design, as with opposer’s mark, the word
is normally accorded greater weight because it would be used
by purchasers to request the goods -– and here, the design
in opposer’s mark, which comprises three irregular or curved
horizontal lines, is minimal and does not present a
sufficient impression to distinguish the parties’ marks.
See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987). The design certainly would not be articulated when
calling for the goods. In addition, the literal portion of
opposer’s mark is WALLY and applicant’s mark begins with the
term “WALLY.” See Presto Products Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). Inasmuch as
both marks comprise the same visually prominent and literal
feature, i.e., WALLY, we find that the marks are highly
Opposition No. 91183793
17
similar in appearance and pronunciation and that, when
viewed in their entireties, the similarities of the parties’
marks outweigh their differences. In view of the foregoing,
while there are differences in the marks, we find that they
are insufficient to raise a genuine issue of material fact
as to the similarity of the marks.
We turn next to the du Pont factor of the similarity of
the goods, which must be determined based on the goods
recited in an applicant’s application vis-à-vis the goods
recited in an opposer’s registration. See Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490,
1 USPQ2d 1813, 1816 (Fed. Cir. 1987). Here, opposer’s goods
as identified in its registration comprise, inter alia,
“sailing vessels, motorboats, ships, boats, yachts” and
“water skis and sailboards,” and applicant’s goods are “body
boards.” The third-party use-based registrations submitted
by opposer are probative to the extent they suggest that
certain of opposer’s goods, i.e., sailboards and/or water
skis, and body boards, are of a type which may emanate from
a single source under a single mark. See In re Mucky Duck
Mustard Co., 6 USPQ2d 1469, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988) (unpublished); and In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1983). In
view of this evidence, we find that certain of the parties’
goods, i.e., sailboards and/or water-skis and body boards,
Opposition No. 91183793
18
are related. Venture Out Properties LLC v. Wynn Resorts
Holdings, LLC, 81 USPQ2d 1887 (TTAB 2007). Further, the
fact that only two of the products listed in opposer’s
registration are related to applicant’s identified good is
not sufficient to raise an genuine issue of fact as to the
relatedness of the parties’ goods. See Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981) (likelihood of confusion must be found
if there is likely to be confusion with respect to any items
that come within the identification of goods in the
application or registration); and Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007), cited in,
Hewlett-Packard Development Co., L.P. V. Vudu, Inc.,
92 USPQ2d 1630, 1633 n.4 (TTAB 2009). In view of the
foregoing, because opposer has established a connection
between the goods identified in the application and certain
goods described in the registration, we find that there is
no genuine issue that those particular goods are related.
Thus, the du Pont factor of the similarity of the goods
favors a finding of likelihood of confusion.
In regard to the trade channels for the parties’ goods,
the identifications in the involved application and
opposer’s registration include no limitation with respect to
channels of trade or classes of purchasers. Thus, we must
presume that the parties’ goods move in all normal channels
Opposition No. 91183793
19
of trade for such goods and that they are available to all
potential customers. See Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (2002)
(“absent restrictions in the application and registration,
goods and services are presumed to travel in the same
channels of trade to the same class of purchasers”). In
addition, applicant has admitted19 that body boards,
sailboards and water-skis, which opposer has established are
related goods, are all used on lakes and in the oceans, and
that the goods sold in connection with the WALLYBOARD mark
are sold to “consumers interested in water sports.”20 We
take judicial notice21 that “water sports” are defined as “a
sport played or practiced on or in water, [such] as surfing”
or “sports, such as swimming, water-skiing, or windsurfing
that take place in or on the water.” Applicant also

19 Motion, Exh. 4; applicant’s responses to opposer’s first set of
admissions, admission request nos. 59, 60, 61, 90, 97, 107, 108,
117, 124 and 158.

20 See definitions of “water sports” from the following sources:
water sports. Dictionary.com. Dictionary.com Unabridged. Random
House, Inc. http://dictionary.reference.com/browse/water sports
(accessed: September 24, 2010); and water sports. Dictionary.com.
Collins English Dictionary - Complete & Unabridged 10th Edition.
HarperCollins Publishers.
http://dictionary.reference.com/browse/water sports (accessed:
September 24, 2010).

21 The Board may take judicial notice of online dictionary
definitions where the resource is also available in printed
format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
n.3 (TTAB 2002); see also University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (Board may take judicial
notice of use of a term in dictionaries).

Opposition No. 91183793
20
advertises the WALLYBOARD as a body board that is similar to
a surf board, that is used “on lakes and in the ocean, near
the shore to surf through water” and “when you want to
swim.”22 In view of the foregoing evidence, there is no
genuine issue that the body boards, sailboards and water-
skis travel in the same channels of trade and may be used by
the same consumers for similar purposes, that is, for
participating in water sports and having fun in lakes or in
the oceans. Consequently, the du Pont factor of the
similarity of the channels of trade favors a finding of
likelihood of confusion.
The du Pont factors regarding the marks, goods and
trade channels are the only factors discussed by opposer;
and applicant did not address any du Pont factors.
Therefore, we limit our consideration to those factors.
In summary, we find that there are no genuine issues of
material fact that opposer has standing to bring this
opposition; that opposer has priority in regard to
applicant’s mark; that the marks are similar; that opposer’s
water-skis and sailboards are related to applicant’s goods;
and that the parties’ trade channels and classes of
purchasers overlap. In view thereof, opposer has met its
burden of demonstrating, on motion for summary judgment,

22 Motion, Exh. 4; applicant’s response to opposer’s first set of
admissions, admission request no. 40.

Opposition No. 91183793
21
that it is entitled to judgment on its pleaded ground of
priority and likelihood of confusion. Conversely,
applicant, by submitting only argument and irrelevant
evidence, has failed to show that a genuine issue of
material of fact exists for trial on opposer’s claim of
priority and likelihood of confusion.
Accordingly, opposer’s motion for summary judgment on
its claim of priority and likelihood of confusion under
Section 2(d) is granted. Judgment is entered against
applicant, the opposition is sustained, and registration to
applicant is refused.
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