98477268•Columbia Insurance Company
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This Opinion is Not a Precedent of the TTAB Mailed: January 23, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Columbia Insurance Company _____ Serial No. 98477268 _____ David Chen and John Keller of IP Attorneys Group, LLC for Columbia Insurance Company. Cayla Keenan, Trademark Examining Attorney, Law Office 122, Kristin Dahling, Managing Attorney. _____ Before Larkin, English, and Thurmon, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: Columbia Insurance Company (“Applicant”) seeks registration on the Principal Register of the standard-character mark HYPERLYT for the following goods in International Class 25: Footwear; clothing, namely, belts, socks, bottoms, jeans, tops, skirts, hosiery, scarves, dresses, gloves, jackets, neckwear, nightwear, pants, suits, swimwear, underwear, headwear, uniforms, shirts, sweatshirts, sweatpants, shorts, sweaters, coats, wristbands, t-shirts, knit t-shirts,
Serial No. 98477268 - 2 - woven shirts, polo shirts, 1/4 zip tops, vests, hats, caps being headwear, and pullovers.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the marks HYPER LITE in standard characters for “wet suits, and sportswear; namely, T-shirts, hats, sweat shirts, volley shorts, and gloves” in International Class 25 and HYPERLITE in standard characters for “wet suits for above-the-water sports; wakeboard boots; sportswear, namely, jackets, shirts, t-shirts, sweatshirts, polo shirts, hats” in International Class 25,2 as to be likely, when used in connection with the goods identified in the application, to cause confusion.3 When the Examining Attorney made the refusal final, Applicant appealed and simultaneously requested reconsideration, which was denied. The case is fully briefed.4 We affirm the refusal to register. 1 Application Serial No. 98477268 was filed on April 1, 2024 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intention to use the mark in commerce. 2 The cited Registration No. 1987363 of HYPER LITE issued on July 16, 1996 and has been renewed and the cited Registration No. 3336282 of HYPERLITE issued on November 13, 2007 and has been renewed. The registrations have a common owner. 3 As discussed below, the Examining Attorney also issued a final refusal to register Applicant’s mark based on Registration No. 5273867 of the mark HYPERLITE in standard characters for “backpacks; duffel bags; tote bags; stuff sacks, namely, waterproof dry bags and sacks to carry gear for hiking, camping, and mountaineering” in International Class 18, but withdrew that refusal in the course of denying Applicant’s Request for Reconsideration of the final refusal. 4 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing system. The number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page(s) of the docket entry where the cited
Serial No. 98477268 - 3 - I. Prosecution History and Record on Appeal5 We briefly summarize below the prosecution history of the application because it provides useful background for our disposition of the appeal. Applicant originally applied to register its mark for goods identified simply as “footwear” and “clothing.”6 The Examining Attorney issued an Office Action refusing registration under Section 2(d) and requiring Applicant to amend its identification of goods to specify the types of “clothing” for which it sought registration.7 The Examining Attorney made of record USPTO electronic records regarding the three cited registrations,8 and USPTO electronic records regarding third-party registrations of marks for clothing, footwear, and sportswear.9 Applicant responded to the Office Action by amending its identification of goods to the one set forth above and arguing against the Section 2(d) refusal.10 The Examining Attorney then issued an Office Action accepting Applicant’s amendment to its identification of goods, and making final the Section 2(d) refusal as to all three cited registrations.11 The Examining Attorney made of record third-party webpages materials appear. Applicant’s appeal brief appears at 6 TTABVUE and its reply brief appears at 9 TTABVUE. The Examining Attorney’s brief appears at 8 TTABVUE. 5 Citations in this opinion to the application record are to pages in the downloadable .pdf version of the Trademark Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO” or “Office”). 6 April 1, 2024 Application at TSDR 1. 7 October 16, 2024 Office Action at TSDR 2-6. 8 Id. at TSDR 8-13. 9 Id. at TSDR 14-58. 10 January 3, 2025 Response to Office Action at TSDR 3, 5-14. 11 February 23, 2025 Final Office Action at TSDR 2-7.
Serial No. 98477268 - 4 - that she claimed showed that “clothing, footwear, and sportswear, including wetsuits, are of a kind that may emanate from a single source under a single mark.”12 Applicant appealed and simultaneously requested reconsideration. In its Request for Reconsideration, Applicant made of record plain copies of the certificates of registration of, and USPTO electronic records regarding, third-party marks that Applicant claimed showed that the “USPTO has established a clear precedent permitting the coexistence of trademarks containing the element ‘LYT’ and ‘LITE’ under different owners in Class 025 and Class 018,” as well as the coexistence on the Register of ELYT and ELITE marks.13 In response to Applicant’s Request for Reconsideration, the Examining Attorney withdrew the Section 2(d) refusal based on Registration No. 5273867 of HYPERLITE for various goods in Class 18,14 but maintained and continued the refusals based on Registration Nos. 1987363 and 3336282.15 The appeal was resumed, 5 TTABVUE, and is now ready for decision. 12 Id. at TSDR 5, 10-127. 13 April 22, 2025 Request for Reconsideration at TSDR 6-8, 13-31. 14 May 28, 2025 Denial of Request for Reconsideration at TSDR 1. On appeal, both Applicant and the Examining Attorney overlooked or disregarded the withdrawal of the refusal based on Registration No. 5273867, as they both discussed that registration. 6 TTABVUE 6, 14, 18- 20, 23; 8 TTABVUE 2-3; 9 TTABVUE 5, 9. Because the Examining Attorney withdrew the final refusal based on Registration No. 5273867, we have given that registration no consideration. 15 May 28, 2025 Denial of Request for Reconsideration at TSDR 1-2.
Serial No. 98477268 - 5 - II. Analysis of Likelihood of Confusion Refusal “The Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion [or] mistake, or to deceive.” In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023) (cleaned up). Our determination of the likelihood of confusion under Section 2(d) of the Trademark Act is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”). Charger Ventures, 64 F.4th at 1379. We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). “Two key factors in every Section 2(d) case are the first two factors regarding the similarity or dissimilarity of the marks and the goods or services, because the fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” DC Comics v. Cellular Nerd LLC, Opp. No. 91246950, 2022 WL 17832492, at *10 (TTAB 2022) (internal quotations and quotation marks omitted). Applicant discusses these two key factors in its appeal brief, 6 TTABVUE 11-14, 21-23, and also discusses the third DuPont factor, the “similarity or dissimilarity of established, likely-to-continue trade channels,” DuPont, 476 F.2d at 1361, 6 TTABVUE 14-17, the co-existence of the cited marks inter se, and the “Office’s treatment of similar trademarks,” which Applicant claims “has established a clear
Serial No. 98477268 - 6 - precedent permitting the coexistence of trademarks featuring the formative elements ‘LYT’ and ‘LITE’ under different owners in Classes 025 and 018.” Id. at 17-21.16 We will focus our Section 2(d) analysis on the HYPERLITE mark for “wet suits for above-the-water sports; wakeboard boots; sportswear, namely, jackets, shirts, t- shirts, sweatshirts, polo shirts, hats” shown in cited Registration No. 3336282 (the “’282 Registration”). If we find a likelihood of confusion as to that mark and the goods for which it is registered, we need not find it as to the cited HYPER LITE mark and the goods for which it is registered. In re Max Cap. Grp. Ltd., Ser. No. 77186166, 2010 WL 22358, at *2 (TTAB 2010). A. Similarity or Dissimilarity of the Goods, Channels of Trade, and Classes of Consumers We begin with the second and third DuPont factors. The second factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration . . . .” In re Detroit Athletic Co., 903 F.3d 1297, 1306 (Fed. Cir. 2018). “This factor considers whether ‘the consuming public may perceive [the goods or services] as related enough to cause confusion about the source or origin of the goods or services.’” In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) 16 Applicant states in its appeal brief that “[t]he evidence and arguments presented in Applicant’s previous Responses to the Office Actions issued in this Application are incorporated herein by reference.” 6 TTABVUE 10. The evidence presented by Applicant during prosecution is part of the record on appeal, but prior to the filing of Applicant’s brief, the Board held that “such incorporation-by-reference statements are inadequate to present on appeal whatever arguments an applicant may thereby be contemplating . . . .” In re Princeton Equity Grp. LLC, Ser. No. 97399712, 2025 WL 1638891, at *3 (TTAB 2025). “Parties whose briefs purport to incorporate by reference arguments made during prosecution will be held to have failed thereby to present whatever arguments the incorporation statement purports to cover to the Board and will be deemed to have forfeited them.” Id. We have considered only those arguments actually made in Applicant’s briefs.
Serial No. 98477268 - 7 - (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002)). “In analyzing the [goods or] services, the Board considers ‘[t]he similarity or dissimilarity and nature of the [goods or] services as described in an application or registration.’” In re OSF Healthcare Sys., Ser. No. 88706809, 2023 WL 6140427, at *4 (TTAB 2023) (quoting In re Embiid, Ser. No. 88202890, 2021 WL 2285576, at *10 (TTAB 2021)). The goods “‘need not be identical or even competitive to find a likelihood of confusion.’” Id. (quoting In re Country Oven, Inc., Ser. No. 87354443, 2019 WL 6170483, at *2 (TTAB 2019)).17 “They need only be ‘related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [they] emanate from the same source.” Id. (quoting Country Oven, 2019 WL 6170483, at *2 (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir 2012) (internal quotation omitted)). The relatedness of goods or services may be established based on (1) the language of the involved identifications of goods or services, which may show, on the face of the identifications, that the goods or services are literally or legally identical, or otherwise intrinsically related, and (2) evidence of third-party uses or registrations, which may show that the identified goods or services are commonly offered by the same entity under the same mark. See, e.g., OSF Healthcare, 2023 WL 6140427, at *4. 17 The “Examining Attorney need not prove, and we need not find, similarity as to each [good] listed in the description of [goods]” in Class 25 in the application. OSF Healthcare, 2023 WL 6140427, at *5 (citation omitted). “‘[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any [good] encompassed by the identification of [goods] within a particular class in the application.” Id. (citations omitted).
Serial No. 98477268 - 8 - Applicant argues that its “goods are neither identical nor overlapping with the Cited Marks’ goods.” 6 TTABVUE 13. According to Applicant, its “HYPERLYT trademark covers general clothing and footwear in Class 025, such as jeans, socks, and belts,” while the “HYPER LITE and HYPERLITE trademarks in Class 025 relate specifically to wet suits and sportswear for water-based and other high-intensity sports activities . . . .” Id. at 14. Applicant concludes that “[t]hese distinctions are significant because the consumers of Applicant’s goods would have little to no overlap with those seeking specialized sportswear or sports accessories, decreasing any likelihood for potential consumer confusion.” Id. The Examining Attorney responds that the goods identified in the application and in the cited registration are intrinsically related based on the language of the identifications, and are also related on the basis of evidence of third-party use of the same mark on the involved goods. 8 TTABVUE 5-6.18 The Examining Attorney argues that Applicant and the owner of the HYPER LITE and HYPERLITE registrations “provide identical goods, ‘t-shirts; hats; gloves; jackets; shirts; sweatshirts; polo shirts’.” Id. at 5 (emphasis in bold here in italics in the original). The Examining Attorney further argues that “the goods of the parties are not so limited to ‘water sports’ but rather include broadly defined clothing items such as footwear, jeans, and general swimwear as well as sportswear such as polo shirts,” and that “[n]either 18 The Examining Attorney also cites prior cases in which the Board “has found many different types of apparel to be related.” 8 TTABVUE 5. The Board has “not[ed] the limited utility of reliance, in lieu of supporting evidence, on past decisions in which the Board has or has not found various clothing items to be related,” Embiid, 2021 WL 2285576, at *12, but the Examining Attorney also provided supporting evidence, as well as arguments based on the language of the identifications.
Serial No. 98477268 - 9 - applicant nor registrants restrict their identifications to ‘water sports’ markets.” Id. at 7. In its reply brief, Applicant again argues that its “identification of goods is limited to everyday footwear and clothing items,” while the “Cited Marks cover specialized sportswear and sports accessories.” 9 TTABVUE 7. The ’282 Registration covers goods identified as “wet suits for above-the-water sports; wakeboard boots; sportswear, namely, jackets, shirts, t-shirts, sweatshirts, polo shirts, hats.” Applicant’s argument that these goods all “relate specifically to wet suits and sportswear for water-based and other high-intensity sports activities,” 6 TTABVUE 14, is meritless. The goods identified as “sportswear, namely, jackets, shirts, t-shirts, sweatshirts, polo shirts, hats” are distinct from the other goods identified as “wet suits for above-the-water sports” and “wakeboard boots” because the “sportswear” goods are separated from the other goods by a semicolon. See Monster Energy Co. v. Lo, Opp. No. 91225050, 2023 WL 417620, at *7 n.35 (TTAB 2023); TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1402.01(a) (Nov. 2025) (“Semicolons should generally be used to separate distinct categories of goods or services within a single class”); In re Midwest Gaming & Entm’t LLC, Ser. No. 85111552, 2013 WL 14422357, at *4 (TTAB 2013) (because a semicolon separated the two relevant clauses in the registrant’s identification of services, its “‘restaurant and bar services’ is a discrete category of services that stands alone and independently as a basis for likelihood-of-confusion analysis, and is not connected to nor dependent on the services set out on the other side of the semicolon.”). Because
Serial No. 98477268 - 10 - the goods identified after the preamble “sportswear, namely” are distinct goods from the water sports-related goods, the various items of “sportswear” provide an independent basis for the refusal to register. Id. Applicant’s application covers goods identified as “jackets,” “shirts,” “t-shirts,” “sweatshirts,” “polo shirts,” and “ hats.” These goods are identical to the “jackets, shirts, t-shirts, sweatshirts, polo shirts, hats” identified in the ’282 Registration. Applicant’s argument that its “identification of goods is limited to everyday footwear and clothing,” while the “Cited Marks cover specialized sportswear and sports accessories,” 9 TTABVUE 7, is also meritless. The Board may take judicial notice of dictionary definitions, including definitions from online dictionaries that exist in printed format or have fixed regular editions. See, e.g., In re Nursecon, LLC, Ser. No. 88052194, 2024 WL 5265079, at *10 n.64 (TTAB 2024) (citation omitted). We take judicial notice that the word “sportswear” in the identification of goods in the ’282 Registration means both “clothing designed for casual or informal wear” and “clothing designed to be worn for sports or fitness training.” MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on January 21, 2026). Accordingly, we must deem the items of “sportswear” identified in the ’282 Registration to encompass what Applicant calls “everyday” clothing. Sage Therapeutics, Inc. v. Sageforth Psych. Servs., LLC, Opp. No. 91270181, 2024 WL 1638376, at *7 (TTAB 2024) (“‘If an application or registration describes goods or services broadly, and there is no limitation as to their nature, it is presumed that the ‘registration encompasses all goods or services of the type described’”) (quoting
Serial No. 98477268 - 11 - Monster Energy, 2023 WL 417620, at *7 (quoting Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373 (Fed. Cir. 2012))). But even if the items of “sportswear” identified in the ’282 Registration were limited to what Applicant calls “specialized sportswear,” the corresponding goods identified in the application are not limited to what Applicant calls “ everyday” clothing, and they must be deemed to encompass “specialized sportswear.” Id. Because the goods identified in the application and the goods identified in the ’282 Registration are identical in part, the second DuPont factor strongly supports a conclusion that confusion is likely. OSF Healthcare, 2023 WL 6140427, at *9.19 The third DuPont factor considers the “similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 476 F.2d at 1361. The goods are identical in part, and there are no restrictions in the involved identifications regarding their channels of trade or classes of consumers, and “it is well established that, ‘absent restrictions in the application and registration, [identical] goods and services are presumed to travel in the same channels of trade to the same class of purchasers.’” In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (quoting Hewlett-Packard, 281 F.3d at 1268). We may “rely on this legal presumption in determining likelihood of confusion.” Id. The third DuPont factor also strongly supports a conclusion that confusion is likely. 19 Because the goods are identical in part, “there is no need for us to further consider the relatedness of the goods” based on the Examining Attorney’s evidence of third-party use of the same mark for the involved goods. In re FabFitFun, Inc., Ser. No. 86847381, 2018 WL 4043156, at *2 (TTAB 2018).
Serial No. 98477268 - 12 - B. Similarity or Dissimilarity of the Marks Under the first DuPont factor, “[w]e consider the marks in their entireties as to appearance, sound, connotation and commercial impression.” Sage Therapeutics, 2024 WL 1638376, at *5 (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005)). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Id. (quoting In re Inn at St. John’s LLC, Ser. No. 87075988, 2018 WL 2734893, at *5 (TTAB 2018) (citation omitted), aff’d per curiam, 777 F. App’x 516 (Fed. Cir. 2019)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Sage Therapeutics, 2024 WL 1638376, at *5 (quoting Coach Servs., 668 F.3d at 1368). “The focus is on the recollection of the average purchaser, who normally ‘retains a general rather than a specific impression of marks.’” Id. (quoting In re i.am.symbolic, llc, Ser. No. 85916778, 2018 WL 3993582, at *4 (TTAB 2018) (citations omitted)). Articles of clothing such as the “sweatshirts,” “shirts,” and “t-shirts” identified in the application “are purchased or used in some form by virtually everyone,” Embiid, 2021 WL 2285576, at *15, and the average consumer here is a member of the general public. Id. at *4.
Serial No. 98477268 - 13 - The marks here are HYPERLITE and HYPERLYT, both in standard characters. According to Applicant, “the Examining Attorney’s arguments rely largely on the incorrect assumption that the term ‘LYT’ is equivalent to the terms ‘LITE’ and ‘LIGHT,’ despite significant differences in appearance, sound, connotation, and commercial impression.” 6 TTABVUE 21. Applicant focuses primarily on claimed differences in sound and the purported differences in commercial impression that result from the claimed differences in sound. Id. at 21-23. Applicant argues that [t]he term “LYT” is not a commonly recognized English word, but rather a coined term. Therefore, English speakers instinctively rely on well-established pronunciation rules when encountering such unfamiliar words. English speakers often associate “YT” endings with a short “I” sound, akin to words like “CRYPT” or “MYTH.” Moreover, in this case, the ending “LYT” closely resembles the widely recognized phonetic pattern of “LIT” (meaning illuminated or the vernacular expression for exciting). In contrast, consumers are accustomed to encountering “LITE” in brand names (e.g., MILLER LITE, LITE-BRITE) and pronouncing the term as “LIGHT.” Applicant’s Mark, however, omits this conventional spelling, making it very unlikely that “LYT” would be pronounced as or associated with “LITE” without explicit guidance. Id. at 21-22. Applicant further argues that [t]he way a trademark is pronounced directly affects how consumers recall and associate it with products or services. In terms of commercial impression, the pronunciation of Applicant’s trademark HYPERLYT is sharper with a more abrupt ending, due to the short “I” sound, resulting in a punchy, modern feel. In contrast, the cited marks HYPER LITE and HYPERLITE have a softer, elongated ending due to the “IGHT” sound, resulting in a more traditional feel. Because Applicant’s trademark HYPERLYT is instinctively pronounced as “HYPERLIT,” it connotes a different meaning than the Cited Marks. Applicant’s Mark
Serial No. 98477268 - 14 - evokes ideas of being “LIT,” and feelings of excitement, which is amplified by the use of the initial term “HYPER.” Conversely, the term “LITE” appearing in the Cited Marks is typically understood as a variation of the term “LIGHT” referring to less weight or less substance. Since “LYT” is a coined term with no standard dictionary meaning, Applicant’s Mark does not inherently carry the descriptive meaning of “LIGHT” which the Cited Marks carry. These variations in connotation and commercial impression further differentiate the marks, making it unlikely that consumers would confuse Applicant’s Mark with the Cited Mark. Id. at 22. The Examining Attorney responds that the only differences between these marks are the substitution of an “I” for a “Y”, and the presence or absence of a space between syllables in the otherwise identical term “HYPERLYT”. These differences are insignificant; while they may slightly change the appearance of the marks, they do not change their sound or meaning at all. 8 TTABVUE 4. The Examining Attorney further argues that “all of the marks at issue begin with the term ‘HYPER’” and that the “dominant portion of all of these marks is identical, contributing to an increased likelihood of confusion;” that “the applied-for and registered marks are all phonetic equivalents and thus sound similar ;” that “the compared marks are identical except for a slight difference in spelling, and as a compound word with no space separating the words;” and that they “are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.” Id. The Examining Attorney rejects Applicant’s arguments that the marks are dissimilar in sound, arguing that “[t]here is no correct pronunciation of a mark; thus,
Serial No. 98477268 - 15 - consumers may pronounce a mark differently than intended by the mark owner,” and that “even if the marks were not exact phonetic equivalents, they are still sufficiently similar in order to cause confusion” because “the first element of the applied-for and registered marks, the term ‘HYPER’, is identical” and “[e]ven if pronounced slightly differently, the terms ‘LYT’ and ‘LITE’ may both indicate light.” Id. at 8. The Examining Attorney concludes that “the differences in these terms do not create a distinct commercial impression necessary to obviate a likelihood of confusion.” Id. In its reply brief, Applicant again focuses primarily on claimed phonetic dissimilarity: Applicant demonstrated that “LYT” is a coined term that English speakers will pronounce according to established rules for “YT” endings (e.g., “CRYPT” = “KRIPT”; “MYTH” = “MITH”). . . . Moreover, the omission of the final “E” causes “LYT” to resemble “LIT” rather than “LITE” both visually and phonetically as there is no “E” present, further reinforcing that consumers will perceive Applicant’s Mark as “LIT” and not as “LITE.” These differences in appearance and sound yield distinct meanings and commercial impressions – Applicant’s Mark is arbitrary, evoking the modern slang sense of being “lit,” signifying excitement and intensity, while the Cited Marks are descriptive, connoting goods that are “light” or “lightweight,” a functional quality of the Registrant’s specialized sportswear and sports accessories which consumers commonly seek out when purchasing such goods. 9 TTABVUE 6 (citation omitted). With respect to the Examining Attorney’s argument for phonetic similarity, Applicant claims in its reply brief that “there is no evidence consumers actually pronounce ‘LYT’ as ‘LITE.’ Indeed, Applicant identified numerous registrations where otherwise identical trademarks differ only by the use of ‘LYT’ versus ‘LITE,’
Serial No. 98477268 - 16 - yet coexist on the Principal Register — confirming that consumers can readily recognize and distinguish between the two.” Id. at 7. Applicant further argues that its mark “omits the terminal letter ‘E’, which appears in the Cited Marks. Accordingly, there is no ‘E’ sound present in Applicant’s Mark.” Id. Applicant concludes that “[d]espite any unsupported assumptions the Examining Attorney may have, the record shows that ‘LYT’ and ‘LITE’ carry different appearances, sounds, meanings, and commercial impressions.” Id. We begin with the similarity or dissimilarity of the marks in appearance. The compound word marks HYPERLITE and HYPERLYT “are visually similar, as both begin with the word” HYPER. Sage Therapeutics, 2024 WL 1638376, at *6 (finding the marks SAGE CENTRAL and SAGEFORTH to be similar). “We have noted in other decisions that consumers are more likely to notice and remember the first elements of a trademark,” id., and the HYPERLITE and HYPERLYT marks “share the same structure,” starting with the word HYPER and then “add[ing] a second word to create a [HYPER-]formative mark.” Id. “[I]n view of the marks’ structural similarity, the lead words are their dominant portion and are likely to make the greatest impression on consumers.” Detroit Athletic Co., 903 F.3d at 1303. “The second elements of the marks are different, and some consumers may notice and recall the difference,” but “the marks share the same structure,” which “results in marks that look like variations on a [HYPER] theme.” Sage Therapeutics, 2024 WL 1638376, at *6. We find that the marks are far more similar than dissimilar in appearance.
Serial No. 98477268 - 17 - With respect to sound, the means of comparison to which Applicant and the Examining Attorney devote most of their attention, the HYPERLITE and HYPERLYT marks “are also similar in sound, as the first and dominant [HYPER] element of each mark will sound identical.” Id. As discussed above, Applicant argues that the marks will sound different because the cited mark HYPERLITE will be pronounced and heard as “Hyper light” and Applicant’s mark HYPERLYT will be pronounced and heard as “Hyper lit,” while the Examining Attorney argues that Applicant’s mark could be pronounced and heard in a manner that would make it either phonetically identical to the cited mark, or sufficiently similar in sound to make confusion likely. “[T]here is no correct pronunciation of a trademark that is not a recognized word,” StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331-32 (Fed. Cir. 2014), and “[g]enerally, the principle that there is no correct pronunciation of a mark applies with greater force when one of the marks involved is a coined mark without a specific meaning.” In re Jimenez, Ser. No. 97551823, 2025 WL 3126703, at *5 (TTAB 2025). Here, neither of the marks is a recognized word with a specific meaning. Cf. id. at *6 (finding that “Gasper” was a recognized surname “that begins with the letter strings ‘G-a-s’ and ‘G-a-s-p,’ each of which forms the words ‘gas’ and ‘gasp’ that are recognized in U.S. English, and pronounced with a hard letter ‘g’ sound,” and that a “dictionary entry for ‘jasper’ further shows that it is pronounced as ‘ja-spər’ with the soft letter ‘j’ sound and not with the hard letter ‘g’ sound”).
Serial No. 98477268 - 18 - “‘[I]t is impossible to predict how the public will pronounce a particular mark ’” that is not a recognized word. Look Cycle Int’l v. Kunshan Qiyue Outdoor Sports Goods Co., Canc. No. 92079409, 2024 WL 3739358, at *10 (TTAB 2024) (quoting Edwards Lifesciences Corp. v. VigiLanz Corp., Opp. No. 91154210, 2010 WL 1514315, at *11 (TTAB 2010)). “Absent evidence to the contrary, we must consider all reasonable possibilities.” Id. (citing StonCor, 759 F.3d at 1332). The record contains no evidence showing that the suffix “-LYT” in Applicant’s mark HYPERLYT would only be pronounced as “LIT,” and “[a]ttorney argument is no substitute for evidence.” In re Ye Mystic Krewe of Gasparilla, Ser. No. 90522364, 2025 WL 2953731, at *6 n.15 (TTAB 2025) (citing Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018) (internal citation omitted)).20 Given that the letters “ly” can be pronounced as “lie,” as in the English words “lying,” “lye,” and “lyre,” and the phrase “lyme disease,” MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on January 21, 2026), we find that the pronunciation of Applicant’s mark HYPERLYT as “HYPER LIGHT” is at least a reasonable possibility and, in fact, the most likely possibility. That pronunciation would result in the marks being identical in sound. In any event, “the first and dominant [HYPER] element of each mark will sound identical.” Sage Therapeutics, 2024 WL 1638376, at *6. Even if Applicant’s mark were pronounced as “HYPER LIT,” that pronunciation would be more similar than 20 Applicant offers no evidence regarding the pronunciation of the letters “LY” per se, but focuses on what it calls words with “‘YT’ endings,” citing CRYPT (which does not have such an ending) and MYTH. 6 TTABVUE 21.
Serial No. 98477268 - 19 - dissimilar to the pronunciation of the cited mark because of the identical prefix and a suffix that begins with the letter “L” and contains the letter “T.” “The marks as a whole sound partially different, but the shared [“hyper’] element will have the same impact when spoken or heard as it does when seen.” Id. Finally, with respect to meaning, both compound marks begin with the word HYPER, which means, when used as a prefix, “above; beyond; super.” MERRIAM- WEBSTER DICTIONARY (merriam-webster.com, last accessed on January 21, 2026). Applicant’s argument that because its mark is “instinctively pronounced as ‘HYPERLIT,’ it connotes a different meaning than the Cited Marks” because it “evokes ideas of being ‘LIT,’ and feelings of excitement, which is amplified by the use of the initial term ‘HYPER’,” 6 TTABVUE 22, depends entirely on only one possible pronunciation of the mark, and, as noted above, the possible pronunciation of Applicant’s mark as “HYPER LIGHT” would imbue it with the identical meaning as the cited mark.21 In the context of the identical clothing items identified in the ’282 Registration and in the application, the meaning of both mark as connoting “super light” clothing seems far more plausible. We find that the marks are more similar than dissimilar in commercial impression. “Similarity is not a binary factor but is a matter of degree.” St. Helena Hosp., 774 F.3d at 752 (citation omitted). “[W]here, as here, the goods are identical in part, ‘the degree of similarity necessary to support a conclusion of likely confusion 21 We note in that regard that when one turns on a light, the scene is lit, and that “lit” is the past tense of the verb “light.”
Serial No. 98477268 - 20 - declines.’” Ye Mystic Krewe of Gasparilla, 2025 WL 2953731, at *4 (quoting Viterra, 671 F.3d at 1363 (internal citation omitted)). When considered in their entireties, the marks HYPERLITE and HYPERLYT are more similar than dissimilar in all means of comparison. The first DuPont factor supports a conclusion that confusion is likely. Naterra, Inc. v. Bensalem, 92 F.4th 1113, 1119 (Fed. Cir. 2024). C. Applicant’s Other Arguments Applicant argues that “the Cited Marks themselves include identical HYPERLITE trademarks registered to different owners – HO Sports Company, LLC and Hyperlite Mountain Gear Inc. – but have nonetheless coexisted for over seven years without incident, despite covering goods that are even more closely related to one another than Applicant’s goods are to either,” 6 TTABVUE 17, and that the “long-standing coexistence of the Cited Marks without confusion serves as strong precedent that such marks are distinguishable in the marketplace when other factors, such as function, purpose, design, target market, and trade channels, differ.” Id. at 18. Applicant concludes that “[c]onsistent with this treatment, Applicant’s Mark should be permitted registration. Otherwise, maintaining the refusal would contravene policy and lead to inconsistent determinations under the Lanham Act.” Id. As discussed above, the two cited Class 25 registrations have a common owner, and the goods identified in the ’282 Registration are identical in part to the goods identified in the application. The fact that the two cited registrations coexist on the Register with the cited Class 18 registration for non-identical goods does not persuade us that there is no likelihood of confusion with respect to Applicant’s mark
Serial No. 98477268 - 21 - HYPERLYT and the HYPERLITE mark shown in the ’282 Registration, which are used for identical goods. “It is axiomatic that the Board must assess each mark on its own facts and record.” In re Korn Ferry, Ser. No. 90890949, 2024 WL 3219482, at *5 (TTAB 2024) (quotation and quotation marks omitted); see also In re Nett Designs Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001). “[P]rior decisions and actions of other trademark examining attorneys in registering other marks are not binding upon the USPTO or the Board.” Korn Ferry, 2024 WL 3219482, at *5 (quoting In re Dolce Vita Footwear, Inc., Ser. No. 88554717, 2021 WL 2285577, at *2 n.6 (TTAB 2021) (citing In re USA Warriors Ice Hockey Program, Inc., Ser. No. 86489116, 2017 WL 2572815, at *4 n.10 (TTAB 2017))). “Each case is decided on its own facts, and each mark stands on its own merits.” Id. (quoting Dolce Vita Footwear, 2021 WL 2285577, at *2 n.6). Applicant also argues that “[a]n applicant, when making its determination whether a proposed trademark is registrable, is entitled to rely on the Office’s treatment of similar trademarks,” and that “[t]he Office has established a clear precedent permitting the coexistence of trademarks featuring the formative elements ‘LYT’ and ‘LITE’ under different owners in Classes 025 and 018.” 6 TTABVUE 18. Applicant cites the following “LYTE” and “LITE” marks in Class 25:
Serial No. 98477268 - 22 - Id. Applicant also cites some ELITE and ELYT marks in Class 25. Id. at 19. Applicant claims that [t]he acceptance of the[se] trademarks indicates that the Office has previously recognized that the elements “LYT” and “LITE” are distinguishable in the marketplace for Class 025 and Class 018 goods. The refusal to register Applicant’s trademark HYPERLYT based on the registrations for HYPER LITE and HYPERLITE contradicts this established precedent. Consistent with this treatment, Applicant’s Mark should be permitted registration. Otherwise, maintaining the refusal would contravene policy and lead to inconsistent determinations under the Lanham Act. Id. at 20-21. The coexistence on the Register of two LYTE and LITE marks for different goods in Class 25 again does not persuade us that there is no likelihood of confusion with respect to Applicant’s HYPERLYT mark and the HYPERLITE mark shown in the ’282 Registration, which are used for identical goods. As discussed above, we must decide this case “on its own facts and record,” Korn Ferry, 2024 WL 3219482, at *5 (quotation and quotation marks omitted), and although we see no inconsistency between the prior USPTO determinations to register LYTE and LITE for different
Serial No. 98477268 - 23 - items of clothing, the “Board has recognize[d] that consistency is highly desirable, [but] consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” Id. at *5 n.13 (quotation and quotation marks omitted). Finally, Applicant argues that “the Cited Marks merely describe lightweight, performance-enhancing features of the goods, and the refusal improperly seeks to extend exclusive rights over descriptive matter.” 6 TTABVUE 24. According to Applicant, the cited marks “function not as arbitrary or fanciful indicators of source, but as descriptive terms conveying product features that are integral to the consumer’s purchasing decision,” id. at 23, and its mark “stands apart from the Cited Marks in appearance, sound, and meaning, and does not encroach upon the limited scope of protection to which those marks are entitled.” Id. at 24. The ’282 Registration issued on the Principal Register without the requirement of a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. “Where, as here, the mark is registered without a Section 2(f) claim of acquired distinctiveness, the mark is presumed to be inherently distinctive.” Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129, 146 (Fed. Cir. 2021) (citation omitted); see also Tea Bd. of India v. Republic of Tea, Inc., Opp. No. 91118587, 2006 WL 2460188, at *21 (TTAB 2006) (“A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is
Serial No. 98477268 - 24 - distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.”). Applicant’s argument that the HYPERLITE mark shown in the ’282 Registration is merely descriptive is an improper collateral attack on the Registration’s validity, which we cannot entertain in this ex parte proceeding. Detroit Athletic Co., 903 F.3d at 1309; In re Dixie Rests., Inc., 105 F.3d 1405, 1408 (Fed. Cir. 1997).22 In the absence of significant evidence of third-party use and registration of marks containing the elements of the mark shown in the ’282 Registration, we must accord the HYPERLITE mark “the normal scope of protection to which inherently distinctive marks are entitled.’” Sage Therapeutics, 2024 WL 1638376, at *10 (quoting Bell’s Brewery, Inc. v. Innovation Brewing, Opp. No. 91215896, 2017 WL 6525233, at *9 (TTAB 2017)). D. Summary The key first two DuPont factors, and the third DuPont factor, support a conclusion that confusion is likely. The goods, channels of trade, and classes of consumers are identical, which reduces the degree of similarity between the marks required for confusion to be likely, and the HYPERLITE and HYPERLYT marks are sufficiently similar in appearance, sound, connotation, and commercial impression to make confusion likely when they are used on identical goods. We conclude that 22 Any such attack in a cancellation proceeding would be futile in any event because the ’282 Registration issued in 2007 and is long past the five-year period in which it could be challenged on the ground that the registered mark is merely descriptive of the goods. See Ye Mystic Krewe of Gasparilla, 2025 WL 2953731, at *10 n.22 (citing 15 U.S.C. § 1064(3));
Serial No. 98477268 - 25 - consumers with a general impression of the cited HYPERLITE mark for various clothing items who separately encounter the HYPERLYT mark for identical goods are likely to believe mistakenly that the goods have a common source. Decision: The refusal to register is affirmed.
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