Hylete LLC v. Hybrid Athletics, LLC , 931 F.3d 1170 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
HYLETE LLC,
Appellant
v.
HYBRID ATHLETICS, LLC,
Appellee
______________________
2017-2057
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91213057.
______________________
Decided: August 1, 2019
______________________
PATTRIC RAWLINS, Procopio, Cory, Hargreaves & Sa-
vitch LLP, San Diego, CA, argued for appellant. Also rep-
resented by DAVE DEONARINE.
MICHAEL JOSEPH KOSMA, Whitmyer IP Group LLC,
Stamford, CT, argued for appellee. Also represented by
BENJAMIN N. LUEHRS.
______________________
Before MOORE, REYNA, and WALLACH, Circuit Judges.
2 HYLETE LLC v. HYBRID ATHLETICS, LLC
REYNA, Circuit Judge.
Hylete LLC appeals from a decision of the Trademark
Trial and Appeal Board sustaining Hybrid Athletics, LLC’s
opposition to Hylete’s trademark registration application.
We conclude that Hylete waived the arguments on which
its appeal relies because it raises new issues that could
have been raised and were not considered below. We af-
firm.
BACKGROUND
In January 2013, Hylete applied to register a design
mark for a stylized letter “H” in International Class 25 for
“[a]thletic apparel, namely, shirts, pants, shorts, jackets,
footwear, hats and caps.” J.A. 76–92. After finding no reg-
istrations that would bar registration of the Hylete mark,
the Examining Attorney approved the application, and the
Trademark Office published the Hylete mark for opposition
in the Trademark Official Gazette on June 18, 2013.
On October 16, 2013, Hybrid Athletics, LLC filed a No-
tice of Opposition on the grounds of likelihood of confusion
with its mark under Section 2(d) of the Lanham Act, 15
U.S.C. § 1052(d). Hybrid’s mark is also a stylized letter
“H.” The two marks are shown in the chart below:
Hylete’s Mark Hybrid’s Mark
HYLETE LLC v. HYBRID ATHLETICS, LLC 3
Hybrid’s Notice of Opposition pleaded ownership in Ap-
plication No. 86/000,809 (“the ’809 application”) for a de-
sign mark of its stylized “H” used “in connection with
conducting fitness classes; health club services, namely,
providing instruction and equipment in the field of physical
exercise; personal fitness training services and consul-
tancy; physical fitness instruction” in International
Class 41. J.A. 3, 98–99. Hybrid also pleaded common law
rights from its use of the same mark on “athletic apparel,
including shirts, hats, shorts and socks” since August 1,
2008. Id.
During opposition proceedings before the Trademark
Trial and Appeal Board (“Board”), Hybrid submitted as an
exhibit several images depicting the use of its mark on ath-
letic apparel, including shirts, shorts, and jackets. The im-
ages showed Hybrid’s stylized “H” design appearing on the
apparel above the phrase “Hybrid Athletics” and several
dots:
J.A. 12.
4 HYLETE LLC v. HYBRID ATHLETICS, LLC
In its briefing before the Board, Hylete focused on the
differences in appearance between the two stylized “H” de-
signs. It argued that its mark was a “highly stylized design
logo” that “is substantially dissimilar from [Hybrid’s] letter
‘H’ design logo” and “the lettering style of each mark is sub-
stantially dissimilar in appearance and each mark exudes
its own distinct commercial expression.” J.A. 405–07
(heading capitalization removed). Hylete further argued
that “the stylization of [Hybrid’s] mark[] emphasizes its
representation as an ‘H,’ whereas [Hylete’s] mark is a
highly stylized design.” J.A. 407 (graphics removed).
On December 15, 2016, the Board issued its final deci-
sion sustaining Hybrid’s opposition to Hylete’s registra-
tion. J.A. 2–23. Balancing the relevant factors as set forth
in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357
(CCPA 1973), the Board determined that Hylete’s mark
would likely cause confusion with Hybrid’s “previously-
used mark . . . on some of the same goods, namely jackets,
shorts, and shirts.” J.A. 22–23. The Board also found that
Hybrid failed to establish ownership of the ’809 application
and based its conclusions only on Hybrid’s prior common
law rights. J.A. 6.
As to the similarity of the marks, the Board recognized
that both marks are stylized versions of the letter “H,” that
both parties’ names begin with the letter “H,” and that even
if consumers attribute no specific meaning to the letter “H,”
they may nonetheless view the marks in the same man-
ner—as an arbitrary use of the stylized letter “H” for ath-
letic clothing. J.A. 15–18. According to the Board, the
average consumer would retain a general rather than spe-
cific impression of the marks. J.A. 16 (citing Grandpa
Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587
(CCPA 1973) (noting that the marks in question had “a dif-
ference not likely to be recalled by purchasers seeing the
marks at spaced intervals”)).
HYLETE LLC v. HYBRID ATHLETICS, LLC 5
The Board considered various design similarities and
differences between the two marks. It acknowledged that
specific differences can be seen when the marks are com-
pared side by side, but determined the fact that both are
stylized versions of the same letter outweighed those dif-
ferences. The Board determined that the marks have sim-
ilar commercial impressions and concluded that Hylete’s
mark is likely to cause confusion with Hybrid’s previously
used mark.
Hylete filed a request for reconsideration of the Board’s
final decision. Hylete asserted that the Board erred in
three respects, including the Board’s purported “misappre-
hension of the commercial impression of [Hylete’s] mark.”
J.A. 25. Hylete argued “[t]here was no record evidence
demonstrating that consumers would view [Hylete’s] mark
as a stylized H.” J.A. 32. Hylete focused on its own mark
and did not argue that the Board’s analysis should have
compared its mark to anything other than Hybrid’s stylized
letter “H” design mark.
The Board addressed Hylete’s commercial-impression
argument by noting its “stark contrast” with Hylete’s own
characterization of its mark as a stylized letter “H” in its
briefing:
When the Board performs its analysis, it will find
two distinct letter “H” marks that already co-exist
with one hundred and thirty five (135) other “H”
marks registered to International Class 25, thirty-
three (33) of which are specifically used in connec-
tion with athletic-related clothing.
J.A. 32–33 (quoting Hylete’s trial brief). The Board also
noted that Hylete’s arguments based on how the marks
would be perceived relied on testimony from its CEO, stat-
ing that he did not “see how anyone looking at these two
logos would think they look alike” but admitting “they both
are H’s [sic].” J.A. 33 (emphases added). The Board
6 HYLETE LLC v. HYBRID ATHLETICS, LLC
therefore rejected Hylete’s commercial-impression argu-
ments and denied the request for rehearing. Id.
Hylete appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B) and 15 U.S.C. § 1071(a)(1).
DISCUSSION
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. In re
I.AM.Symbolic, LLC, 866 F.3d 1315, 1322 (Fed. Cir. 2017).
Likelihood of confusion is a question of law based on under-
lying findings of facts. In re Chatam Int’l Inc., 380 F.3d
1340, 1342 (Fed. Cir. 2004). The Board’s underlying find-
ings of fact as to each DuPont factor are reviewed for sub-
stantial evidence. Id. Substantial evidence is “such
relevant evidence [that] a reasonable mind would accept as
adequate to support a conclusion.” I.AM.Symbolic, 866
F.3d at 1322 (internal quotations omitted).
On appeal, Hylete argues that the Board erred in its
analysis by failing to compare Hylete’s stylized “H” mark
with what it now characterizes as Hybrid’s “composite com-
mon law mark,” referring to Hybrid’s stylized “H” design
appearing above the phrase “Hybrid Athletics” and several
dots, as shown below:
Appellant Br. 6. According to Hylete, the issues in “this
appeal may be summarized into a single question: is
Hylete’s mark sufficiently similar to [Hybrid’s] composite
common law mark to be likely to cause confusion on the
HYLETE LLC v. HYBRID ATHLETICS, LLC 7
part of the ordinary consumer as to the source of the cloth-
ing items sold under those marks?” Id. As such, Hylete
raises on appeal arguments related only to Hybrid’s “com-
posite common law mark.”
Hybrid responds that Hylete’s “composite common law
mark” arguments were never raised before the Board and
are therefore waived. Appellee Br. 20–22. We therefore
first review whether Hylete waived its arguments by not
raising them during the proceedings below. We conclude
that those arguments are waived.
Generally, federal appellate courts do not consider is-
sues “not passed upon below” or entertain arguments not
presented to the lower tribunal. Golden Bridge Tech., Inc.
v. Nokia, Inc., 527 F.3d 1318, 1322 (Fed. Cir. 2008).
“[A]bsent exceptional circumstances, a party cannot raise
on appeal legal issues not raised and considered in the trial
forum.” Finch v. Hughes Aircraft Co., 926 F.2d 1574, 1576
(Fed. Cir. 1991); see also Sw. Software, Inc. v. Harlequin
Inc., 226 F.3d 1280, 1289 n.7 (Fed. Cir. 2000).
We have articulated limited circumstances in which
considering arguments made for the first time on appeal is
appropriate: (1) “[w]hen new legislation is passed while an
appeal is pending, courts have an obligation to apply the
new law if Congress intended retroactive application even
though the issue was not decided or raised below”; (2)
“when there is a change in the jurisprudence of the review-
ing court or the Supreme Court after consideration of the
case by the lower court”; (3) “appellate courts may apply
the correct law even if the parties did not argue it below
and the court below did not decide it, but only if an issue is
properly before the court”; and (4) “where a party appeared
pro se before the lower court, a court of appeals may appro-
priately be less stringent in requiring that the issue have
been raised explicitly below.” Golden Bridge, 527 F.3d at
1322–23 (quoting Forshey v. Principi, 284 F.3d 1335, 1353–
57 (Fed. Cir. 2002)).
8 HYLETE LLC v. HYBRID ATHLETICS, LLC
Hylete does not dispute that it did not present to the
Board the question of whether Hylete’s mark is sufficiently
similar to Hybrid’s “composite common law mark” to cause
a likelihood of confusion. Hybrid pleaded common law
rights to its mark based on use of the mark on athletic ap-
parel and submitted an exhibit showing its use of the so-
called “composite common law mark” on athletic apparel.
Yet Hylete’s arguments in both its briefing to the Board
and its request for reconsideration remained focused on the
differences between the two stylized “H” design marks.
Hylete never contended that Hybrid’s common law rights
implicated a “composite common law mark” that differed
from the stylized “H” design mark identified in the ’809 ap-
plication.
Hylete now attempts to avoid waiver by contending
that the Board “sua sponte” raised the issue of Hybrid’s
common law rights in the final decision and used an incor-
rect legal standard in comparing the two marks. Appellant
Reply Br. 4. Hylete’s failure to raise that argument in the
request for reconsideration negates its contention. Even
after the Board purportedly raised the issue of Hybrid’s
common law rights in its final decision, Hylete did not ar-
gue in its request for reconsideration that the Board erred
by comparing the wrong marks. Hylete’s request for recon-
sideration instead focused on purported differences be-
tween its mark and Hybrid’s stylized “H” design mark, and
not on Hybrid’s “composite common law mark.” 1
1 Hylete in fact made contradictory arguments fo-
cused on the stylized “H” design mark. It first admitted
that its own mark was a letter “H” before the Board’s final
decision. J.A. 32–33. And in the request for reconsidera-
tion, Hylete took the position that the Board misappre-
hended the commercial impression of Hylete’s mark and
“there was no record evidence demonstrating that
HYLETE LLC v. HYBRID ATHLETICS, LLC 9
Hybrid pleaded and put Hylete on notice of its claim to
common law trademark rights from the initial filing of the
Notice of Opposition and submitted evidence of its use of
its mark on athletic apparel. Hylete could have raised the
issue of Hybrid’s “composite common law mark” in the op-
position proceedings or in the request for reconsideration
but did not do so. Thus, none of the exceptional circum-
stances in which it is appropriate to consider arguments
made for the first time on appeal are present here, and de-
clining to consider Hylete’s new arguments does not result
in injustice. See Golden Bridge, 527 F.3d at 1323. We hold
that Hylete’s arguments based on Hybrid’s “composite com-
mon law mark” are raised for the first time on appeal and
are therefore waived.
CONCLUSION
Hylete waived its argument that Hylete’s mark is suf-
ficiently different from Hybrid’s “composite common law
mark” to avoid a likelihood of confusion as to the source of
the athletic apparel sold bearing those marks. We do not
address the Board’s analysis of the DuPont factors relating
to Hybrid’s mark; the only issues Hylete raises on appeal
concern Hybrid’s “composite common law mark.” Accord-
ingly, we affirm.
AFFIRMED
COSTS
No costs.
consumers would view [Hylete’s] mark as a stylized H.”
J.A. 25, 32.