Joi Holding LLC v. Klimaire Products, Inc.

OCR transcription for search; preserved printed pages are authoritative

This Opinion is Not a
Precedent of the TTAB

Mailed: February 13, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

Joi Holding LLC
v.

Klimatre Products, Inc.

Opposition No. 91274307

S. Chase Talbot and Ryan D. Levy of Patterson Intellectual Property Law, P.C., and
Julie Tennyson of Marcum Tennyson PLLC, for Joi Holding LLC.!

Albert Bordas of Albert Bordas, P.A., for Klimaire Products, Inc.

Before Thurmon, Stanley, and Brock,
Administrative Trademark Judges.

Opinion by Stanley, Administrative Trademark Judge:

Applicant/Counterclaim Petitioner Klimaire Products, Inc. (“Applicant”) seeks
registration on the Principal Register of the standard-character mark KLIMAIRE

DIY (with “DIY” disclaimed) for “HVAC units,” in International Class 11.?

1 The appearance of counsel for Opposer, filed July 14, 2025, is noted, and the Board’s records
have been updated accordingly.

2 Application Serial No. 90511281 was filed on February 4, 2021 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), alleging “March 2012” as the date of first use anywhere and
date of first use in commerce.

Opposition No. 91274307
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On February 2, 2022, Opposer/Counterclaim Respondent Joi Holding LLC
(“Opposer”) filed a Notice of Opposition against registration of Applicant’s mark,
asserting claims of likelihood of confusion and dilution by blurring under Trademark
Act Sections 2(d) and 43(c), 15 U.S.C. §§ 1052(d) and 1125(c). In its Notice of
Opposition, Opposer claimed ownership of Registration No. 5667649 for the standard-
character mark DIY on the Supplemental Register (“the ’649 Supplemental
Registration”) and Application Serial No. 90440403 seeking registration of the
standard-character mark DIYPRO on the Principal Register, each covering “HVAC
units” in International Class 11.3 Opposer also alleged common‑law rights in DIY and
DIYPRO for the same goods.4
On March 14, 2022, Applicant filed its Answer and Counterclaim, denying the
salient allegations of the Notice of Opposition, purporting to plead seven affirmative
defenses, and seeking cancellation of the ’649 Supplemental Registration on the
grounds of likelihood of confusion, dilution by blurring, failure to function, and lack
of acquired distinctiveness.5
3 1 TTABVUE 4, ¶¶ 1-2. The ’649 Supplemental Registration issued on January 29, 2019
from an application filed on August 27, 2018. Application Serial No. 90440403 was filed on
December 31, 2020, based on a claim of use in commerce under Trademark Act Section 1(a),
15 U.S.C. § 1051(a), alleging December 31, 2020 as the date of first use anywhere and July
1, 2024 as the date of first use in commerce. In the Notice of Opposition, Opposer asserted
that “[t]he application [for the DIYPRO mark] was allowed on October 21, 2021.” Id. at 4, ¶ 2.
4 Id. at 4, ¶¶ 3-4.
5 Answer and Counterclaim, 4 TTABVUE. In addition to requesting cancellation of the ’649
Supplemental Registration, Applicant requested that the application for the DIYPRO mark
“be withdrawn, rejected, or reexamined, with judgment entered in its favor and against
Opposer[.]” Id. at 9.

Opposition No. 91274307
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On April 4, 2022, Opposer filed an Amended Notice of Opposition, asserting the
same claims and relying on the same marks as in its original Notice of Opposition.6
On April 14, 2022, the Board issued an order accepting the Amended Notice of
Opposition as a matter of course under Fed. R. Civ. P. 15(a)(1) and addressing the
sufficiency of the pleadings.7
The Board found that “Opposer has set forth no specific allegations in its original
or amended pleading to support the references to claims of dilution[,]” and therefore
the Board struck Opposer’s dilution claim, leaving only the Section 2(d) claim.8 In
reviewing Applicant’s Answer and Counterclaim, the Board struck Applicant’s first
defense (failure to state a claim) as not a true affirmative defense, Applicant’s sixth
and seventh defenses (estoppel, acquiescence, waiver, and laches) as insufficiently
pleaded, and its reservation of rights defense as improper.9 The Board treated
Applicant’s challenges to Opposer’s priority (second and third defenses) and to the
distinctiveness of Opposer’s pleaded marks (fourth and fifth defenses) as permissible
amplifications of its denials to Opposer’s claims.10 The Board further dismissed
without prejudice Applicant’s counterclaims for dilution and failure to function as
insufficiently pleaded and its counterclaim for lack of acquired distinctiveness as
unavailable against a registration on the Supplemental Register, leaving only its
6 Amended Notice of Opposition, 6 TTABVUE.
7 7 TTABVUE.
8 Id. at 3.
9 Id. at 5-8.
10 Id. at 6-7.

Opposition No. 91274307
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Section 2(d) counterclaim.11 Lastly, the Board struck references in the counterclaim
that challenged Opposer’s then-pending DIYPRO application because the Board had
no jurisdiction over Opposer’s pleaded application. The Board, however, noted:
“Should Opposer’s pleaded application mature to registration, Applicant may petition
to cancel the registration and move to consolidate the proceedings. Fed. R. Civ. P.
42(a).”12 Both parties were granted leave to amend their pleadings,13 but neither did
so.14
On February 27, 2023, the Board issued an order resetting the deadline for
Opposer to answer Applicant’s Counterclaim.15 On March 29, 2023, Opposer filed its
Answer to Applicant’s Counterclaim, admitting that Opposer’s DIY mark and
11 Id. at 8-10.
12 Id. at 4 and n.9.
13 Id. at 10.
14 Applicant never filed an answer to the Amended Notice of Opposition. However, because
the Board did not set a time for filing such an answer (but rather only set the time to answer
a potential second amended notice of opposition, which never materialized), and because
Applicant’s subsequent actions reflect its defense in this matter, we treat the Amended Notice
of Opposition as having been denied. Pan Am Life Ins. Co. v. Federated Mut. Ins. Co., 1985
WL 72089, at *1 n.2 (TTAB 1985) (proceeding number not available) (“[Defendant] did not
contest the motion to amend; nor did it file an answer to the amended notice. However, since
we failed inadvertently to set a time for answer, and since [Defendant’s] subsequent actions
indicate its clear intention was to deny the further allegation, we construe the pleading as
having been denied.”); Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 1984 WL 63089, at
*1 n.3 (TTAB 1984) (proceeding number not available) (“The record fails to show that
applicant ever filed such an answer, and it appears that the Board in turn inadvertently
failed to notice that the answer had not been filed. However, if it clear from the record and
briefs in this case that applicant denies the additional allegations contained in the amended
notice of opposition.”).
15 13 TTABVUE.

Opposition No. 91274307
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Applicant’s KLIMAIRE DIY mark are “highly similar in appearance, sound and
commercial impression”16 and otherwise denying the salient allegations.17
The case is fully briefed.18 For the reasons explained below, we grant Applicant’s
Section 2(d) counterclaim and cancel the ’649 Supplemental Registration, and we
dismiss Opposer’s Section 2(d) and dilution claims.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of Applicant’s opposed application and the files of the
’649 Supplemental Registration, the subject of Applicant’s Counterclaim. In addition,
during its trial period, Opposer submitted:
16 Answer to Counterclaim, 14 TTABVUE 3-4, ¶¶ 13, 16.
17 Answer to Counterclaim, 14 TTABVUE. Opposer also pleaded seven “affirmative defenses”
in its Answer to Counterclaim Id. at 4-5. Opposer’s first defense (failure to state a claim) is
not a true affirmative defense and will be given no consideration because it relates to an
assertion of the insufficiency of the pleading rather than a statement of a defense to the
merits of a claim. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., No. 91110043,
2001 WL 1512024, at *6 n.7 (TTAB 2001). Opposer’s defenses of priority and likelihood of
confusion (second, third, and fifth defenses) are amplifications of its denials to the
counterclaims and duplicative of its own claims. Opposer did not pursue its defenses of
nonuse, estoppel, acquiescence, waiver, and laches (fourth, sixth, and seventh defenses) at
trial or address them in its brief, thereby forfeiting or impliedly waiving them. See Alcatraz
Media, Inc. v. Chesapeake Marine Tours, Inc., No. 92050879, 2013 WL 5407315, at *2 n.6
(TTAB 2013), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Keystone Consol. Indus. v.
Franklin Inv. Corp., No. 92066927, 2024 WL 3771168, at *2 n.10 (TTAB 2024) (“Affirmative
defenses that were asserted in an answer but then not pursued at trial may be deemed
impliedly waived, while affirmative defenses that were never asserted may be deemed
forfeited.”).
18 Opposer’s brief is at 55 TTABVUE (confidential version) and 56 TTABVUE (public version).
Applicant’s brief is at 57 TTABVUE. Opposer’s reply brief is at 58 TTABVUE. Applicant’s
reply brief is at 59 TTABVUE. For information in the briefs and evidence filed under seal as
confidential, we discuss the confidential information only in general terms.

Opposition No. 91274307
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• Testimony Declaration of Jason Ingram, managing member of Opposer,
with exhibits (“Ingram Declaration”).19
During its trial period, Applicant submitted:
• Applicant’s Notice of Reliance (“Applicant’s NOR”): Trademark records
for Applicant’s KLIMAIRE marks; Internet materials; third-party
trademark registrations for DIY-formative marks; and official records;20
and
• Testimony Declaration of Iltekin Korkmaz, president of Applicant, with
exhibits (“Korkmaz Declaration”).21
During its rebuttal period, Opposer submitted:
• Opposer’s Notice of Reliance (“Opposer’s NOR”): Trademark records for
Opposer’s DIY and DIYPRO marks and third-party trademark
registrations for DIY-formative marks;22 and
• Rebuttal Testimony Declaration of Jason Ingram with exhibits
(“Rebuttal Ingram Declaration”).23
During the rebuttal period for its counterclaim, Applicant submitted:
• Applicant’s Rebuttal Notice of Reliance (“Applicant’s Rebuttal NOR”):
Trademark registration files for unpleaded marks owned by Opposer;
utility patents and design patents owned by Opposer; and Internet
materials.24
19 43 TTABVUE (confidential version); 44 TTABVUE (public version).
20 45 and 46 TTABVUE.
21 47-49 TTABVUE.
22 50 TTABVUE.
23 51 TTABVUE (public version); 52 TTABVUE (confidential version).
24 53 TTABVUE.

Opposition No. 91274307
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II. Preliminary Matters
A. Grounds for Relief That Were Tried
In its brief, Opposer argues likelihood of confusion between its DIY designation
and DIYPRO mark and Applicant’s KLIMAIRE DIY mark, and also advances a
dilution theory notwithstanding that the dilution claim was previously stricken.25 In
its brief, Applicant argues priority over Opposer’s DIY designation and contends that
Opposer’s DIY designation fails to function as a trademark, notwithstanding that the
failure‑to‑function counterclaim was previously stricken.26
We first address the status of Opposer’s pleaded application for the DIYPRO
mark. Where a pleaded application matures into a registration prior to trial,
amendment of the notice of opposition is not required, as pleading the application
provides sufficient notice to the applicant. UMG Recordings Inc. v. O’Rourke, No.
91178937, 2009 WL 2723596, at *4 n.12 (TTAB 2009). However, the opposer must
make the subsequently issued registration of record at trial for it to be considered.
Id.
Here, Opposer pleaded its application to register the DIYPRO mark, and when it
filed its trial evidence on November 25, 2024, it included a copy of the certificate of
registration, Registration No. 7502666, on the Principal Register, which issued from
the pleaded application on September 10, 2024 (“the ’666 Registration”). Because the
application for the ’666 Registration was pleaded and a substantially
25 Opposer’s Br., 56 TTABVUE 14-35.
26 Applicant’s Br., 57 TTABVUE 18-26.

Opposition No. 91274307
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contemporaneous copy of the registration certificate was timely submitted during
Opposer’s trial period, see Shenzhen IVPS Tech. Co. Ltd. v. Fancy Pants Prods., LLC,
No. 91263919, 2022 WL 16646840, at *4 (TTAB 2022), Opposer may rely on the ’666
Registration to support its Section 2(d) claim.
We next address whether Opposer’s previously stricken dilution claim and
Applicant’s previously dismissed failure‑to‑function counterclaim are properly before
us. Federal Rule of Civil Procedure 15(b) provides that when issues not raised by the
pleadings are tried by the parties’ express or implied consent, they are treated as if
raised in the pleadings. Implied consent exists only where the non‑offering party
(1) raises no objection to the introduction of evidence directed to the unpleaded issue,
and (2) is fairly apprised that the evidence is offered in support of that issue. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 507.03(b)
(2025). See also Fed. R. Civ. P. 15(b)(2); DowntownDC Bus. Improvement Dist. v.
Clarke, No. 91275100, 2024 WL 4449409, at *9 (TTAB 2024) (finding implied license
defense tried by implied consent because “the parties were aware the defense was
bring tried and provided testimony and argument on the issue”); Boise Cascade Corp.
v. Cascade Coach Co., 1970 WL 10002, at *2 (TTAB 1970) (proceeding number not
available) (“Generally speaking, there is an implied consent to contest an issue if
there is no objection to the introduction of evidence on the unpleaded issue, as long
as the adverse party was fairly informed that the evidence went to the unpleaded
issue”). The question of whether an issue was tried by consent is basically one of
fairness; the non-moving party must be aware that the issue is being tried. Morgan

Opposition No. 91274307
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Creek Prods. Inc. v. Foria Int’l Inc., No. 91173806, 2009 WL 1719597, at *5 (TTAB
2009).
Here, Opposer’s dilution claim was previously stricken without prejudice, and
Applicant’s failure-to-function counterclaim was previously dismissed without
prejudice. Although Opposer did not file a second amended notice of opposition when
it was given leave to do so, and Applicant did not file an amended answer and
counterclaim when it was also given leave to do so, Applicant was on notice that
Opposer’s dilution theory was being tried, and Opposer was on notice that Applicant’s
failure‑to‑function theory was being tried: both parties introduced evidence on these
issues during their testimony periods and argued the issues in their briefs, all without
objection. We therefore deem both issues tried by implied consent. See Mitchell Miller,
P.C. v. Miller, No. 91184841, 2013 WL 2329829, at *9 n.17 (TTAB 2013) (unpleaded
claim raised at trial and argued in the briefs deemed tried by implied consent).
B. Hyperlinks
Opposer submitted with the Ingram Declaration screenshots of certain videos
from Facebook and YouTube, with hyperlinks to the videos,27 and Applicant
embedded in its reply brief a link to the specimen in the TSDR file for the ’649
Supplemental Registration.28 While we have considered the screenshots from
Facebook and YouTube for what they show on their face, see, e.g., Chutter, Inc. v.
27 Ex. 4 to Ingram Decl., 43 TTABVUE 117-21.
28 Applicant’s Reply Br., 59 TTABVUE 6. As noted supra at page 5, the prosecution record for
the ’649 Supplemental Registration is automatically of record under Trademark Rule
2.20(b)(1).

Opposition No. 91274307
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Great Mgmt. Grp., LLC, No. 91223018, 2021 WL 4494251, at *16 n.69 (TTAB 2021)
(Screenshots of YouTube video admissible “only to show what has been printed, not
the truth of what has been printed”), rev’d on other grounds, 84 F.4th 1014 (Fed. Cir.
2023), modified and superseded, 90 F.4th 1333 (Fed. Cir. 2024), we have not accessed
the hyperlinks and give them no further consideration. See In re ADCO Indus. -
Techs., L.P., No. 87545258, 2020 WL 730361, at *2 (TTAB 2020) (web addresses or
hyperlinks are insufficient to make the underlying webpages of record); TV Azteca,
S.A.B. de C.V. v. Martin, No. 92068042, 2018 WL 6504575, at *4 n.15 (TTAB 2018)
(“The Board does not accept Internet links as a substitute for submission of a copy of
the resulting page.”).
III. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is an element of the plaintiff’s case in
every inter partes proceeding. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303
(Fed. Cir. 2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1274
(Fed. Cir. 2014). A party in the position of plaintiff may oppose registration of a mark
when such opposition is within the zone of interests protected by the statute, and the
plaintiff has a reasonable belief in damage that is proximately caused by registration
of the mark. JNF LLC v. Harwood Int’l Inc., No. 92070634, 2022 WL 4379238, at *1
(TTAB 2022) (citing Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1070 (Fed.
Cir. 2022)).
Neither party disputes the other’s statutory entitlement. In any event, the file for
the ’649 Supplemental Registration is automatically of record pursuant to Trademark

Opposition No. 91274307
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Rule 2.122(b), and as noted above, Opposer properly made of record a substantially
contemporaneous copy of the registration certificate for the ’666 Registration.29
Because Opposer’s pleaded registrations are of record, Opposer has established its
statutory entitlement to bring a Section 2(d) claim that is not wholly without merit.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000); Primrose Ret.
Cmtys., LLC v. Edward Rose Senior Living, LLC, No. 91217095, 2016 WL 7655551,
at *2 (TTAB 2016) (entitlement established based on pleaded registration made of
record). Once entitlement is established for one claim, it is established for all claims,
including Opposer’s dilution claim. Enbridge, Inc. v. Excelerate Energy LP, No.
91170364, 2009 WL 3541047, at *7 n.10 (TTAB 2009).
Applicant’s entitlement to assert its counterclaims is inherent as the defendant in
the opposition. Carefirst of Md., Inc. v. FirstHealth of the Carolinas Inc., No.
91116355, 2005 WL 2451671, at *10 (TTAB 2005) (“Applicant, by virtue of its position
as defendant in the opposition, has standing to seek cancellation of the pleaded
registrations.”) (citation omitted).
IV. Section 2(d): Priority and Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
29 Opposer also submitted TSDR records for both the ’649 Supplemental Registration and
’666 Registration with its rebuttal trial evidence. Opposer’s NOR, 50 TTABVUE 16-69 (the
’649 Supplemental Registration), 71-193 (the ’666 Registration).

Opposition No. 91274307
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the goods of the applicant, to cause confusion, or to cause mistake, or to deceive[.]” 15
U.S.C. § 1052(d). Opposer and Applicant have asserted Section 2(d) claims against
one another.
A. Opposer’s DIY Designation and Applicant’s KLIMAIRE DIY
Mark
We begin with Opposer’s Section 2(d) claim against Applicant’s application for
KLIMAIRE DIY, based on an alleged likelihood of confusion with Opposer’s DIY
designation (the subject of the ’649 Supplemental Registration), and Applicant’s
Section 2(d) counterclaim to cancel the ’649 Supplemental Registration based on an
alleged likelihood of confusion with Applicant’s asserted common-law rights in
KLIMAIRE DIY.
There appears to be no dispute that Opposer’s DIY designation and Applicant’s
KLIMAIRE DIY mark, both for identical goods − “HVAC units” − are likely to be
confused. Opposer so alleges in its operative Amended Notice of Opposition,30 and
30 Amended Notice of Opposition, 6 TTABVUE 4-5, ¶¶ 10-13:
10. Applicant's KLIMAIRE DIY mark is highly similar in appearance,
sound and commercial impression to Opposer’s registered DIY Mark ….
11. The goods intended to be offered by Applicant under the KLIMAIRE
DIY Mark are identical to the goods offered by Opposer under DIY Mark
… and they would cover the same channel of trade.
12. Due to the DIY Mark registration …, Applicant knew about Opposer
and intended to create an association between the goods offered by
Applicant and those offered by Opposer’s licensees.
13. Applicant’s use and registration of KLIMAIRE DIY is likely to cause
confusion, mistake or deception as to the source and origin of
Applicant’s services in that consumers and others are likely to believe
that Applicant’s services are provided by, sponsored by, approved by,
licensed by, affiliated with, or in some other way authorized by Opposer.

Opposition No. 91274307
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Applicant alleges the same in its operative Counterclaim.31 In briefing, only Opposer
substantively addresses likelihood of confusion.32 Applicant states that it “has
sufficiently pleaded … a claim for priority and likelihood of confusion under Section
2(d) of the Trademark Act by alleging prior use of its KLIMAIRE DIY mark and that
Applicant’s mark is confusingly similar to Opposer’s Mark,” and then focuses on
priority.33 Given the parties’ apparent agreement on likelihood of confusion, the
principal issue is priority as between the DIY designation and the KLIMAIRE DIY
mark. See Major League Baseball Players Ass’n v. Chisena, No. 91242556, 2023 WL
2986321, at *22 (TTAB 2023) (“Applicant does not address the DuPont factors in his
brief, apparently conceding likelihood of confusion, should Opposers prevail on
priority.”) (citing In re Morinaga Nyugyo K.K., No. 86338392, 2016 WL 5219811, at
*2 (TTAB 2016)).
31 Answer and Counterclaim, 4 TTABVUE 7, ¶¶ 13-15:
13. Opposer’s registered DIY mark … are highly similar in appearance,
sound and commercial impression to Applicant having the KLIMAIRE
DIY mark.
14. The goods intended to be offered by Opposer’s registered DIY mark …
are identical to the goods offered by Applicant under the KLIMAIRE
DIY mark and they would cover the same channel of trade.
15. Opposer’s use and registration of the DIY mark … is likely to cause
confusion, mistake or deception as to the source and origin of Opposer’s
services in that consumers and others are likely to believe that
Opposer’s goods/services are provided by, sponsored by, approved by,
licensed by, affiliated with, or in some other way authorized by
Applicant.
32 Opposer’s Br., 56 TTABVUE 20-33.
33 Applicant’s Br., 57 TTABVUE 18-25.

Opposition No. 91274307
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1. Priority
Priority is at issue for both Opposer’s Section 2(d) claim and Applicant’s Section
2(d) counterclaim because, although the ’649 Supplemental Registration is of record,
Applicant has counterclaimed to cancel it. See Massey Junior Coll., Inc. v. Fashion
Inst. of Tech., 492 F.2d 1399, 1403 n.6 (CCPA 1974) (“[P]rior use need not be shown
by an opposer relying on a registered mark unless the applicant counterclaims for
cancellation.”). Accordingly, each party bears the burden to establish priority for its
Section 2(d) claim.
To prove priority under Section 2(d), a party must show by a preponderance of the
evidence that, vis‑à‑vis the other party, it owns proprietary rights in “a mark or trade
name previously used in the United States … and not abandoned ….” 15 U.S.C.
§ 1052(d). “In order to establish priority of use, opposer must prove that it acquired
trademark rights prior to the applicant’s first use. Thus, opposer must prove that its
trademark is inherently distinctive, or acquired distinctiveness before the date on
which applicant can establish its rights.” Threshold.TV, Inc. v. Metronome Enters.,
Inc., No. 91152662, 2010 WL 3164750, at *5 (TTAB 2010) (citing Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 1321-22 (CCPA 1981)). “[P]roprietary rights
may arise from a prior registration, prior trademark or service mark use, prior use
as a trade name, prior use analogous to trademark or service mark use, or any other
use sufficient to establish proprietary rights.” Herbko Int’l Inc. v. Kappa Books Inc.,
308 F.3d 1156, 1162 (Fed. Cir. 2002).

Opposition No. 91274307
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We next determine each party’s earliest priority date, if any, for the DIY
designation and the KLIMAIRE DIY mark.
a) Priority Date for Applicant’s KLIMAIRE DIY Mark
Applicant’s Section 2(d) counterclaim rests on asserted prior common‑law rights
in the mark KLIMAIRE DIY for “HVAC units.” Because Applicant did not plead
analogous use, it must prove by a preponderance of the evidence that, before
Opposer’s earliest priority date, it used KLIMAIRE DIY in commerce on or in
connection with the identified goods, and that the designation functioned as a
distinctive mark (inherently or through acquired distinctiveness) for those goods. See
Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 339 (Fed. Cir. 1997)
(“A petitioner seeking cancellation on [the ground of likelihood of confusion] bears the
burden of proving the alleged prior use by a preponderance of the evidence.”); see also
Towers v. Advent Software, Inc., 913 F.2d 942, 945-46 (Fed. Cir. 1990) (discussing
Otto Roth, 640 F.2d at 1322).
Although Applicant disclaimed “DIY,” the parties do not dispute − and we agree −
that the mark KLIMAIRE DIY, as a whole, is inherently distinctive, as KLIMAIRE
is at least suggestive, if not fanciful, for the goods. The question, therefore, is: when
did Applicant first use KLIMAIRE DIY as a trademark in connection with HVAC
units?
Iltekin Korkmaz, Applicant’s president, testifies that Applicant first used
KLIMAIRE DIY as a trademark in commerce in March 2012.34 In support, he relies
34 Korkmaz Decl. at ¶ 14, 47 TTABVUE 8.

Opposition No. 91274307
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on materials including invoices, an Installation and Service Manual, product
brochures, and a product‑packaging design.35 Opposer challenges this showing on the
ground that certain contemporaneous marketing materials for the same products do
not display KLIMAIRE DIY, and thus characterizes Applicant’s evidence as “at best,
highly irregular.”36
We acknowledge that the record reflects some inconsistency in the appearance of
“DIY” by Applicant and that not all documents use the composite mark “KLIMAIRE
DIY.”37 Nonetheless, the record includes clear instances of KLIMAIRE DIY used as a
source identifier for HVAC units in 2012. For example, Mr. Korkmaz relies on an
Installation and Service Manual for a “SPLIT-TYPE KLIMAIRE DIY Room Air
Conditioner” bearing a copyright date of March 2012,38 and invoices dated June 21,
2012, and July 3, 2012, listing “KLIMAIRE DIY QUICK CONNECT”:39
35 Id. at 8-9, ¶¶14-16 Exs. 28-29 to Korkmaz Decl., id. at 298-315; Exs. 30-36 to Korkmaz
Decl., 49 TTABVUE 2-23
36 Opposer’s Br., 56 TTABVUE 15.
37 See, e.g., Ex. 29 to Korkmaz Decl., 47 TTABVUE 315 (showing use of “KSWM DIY SERIES,”
not use of “KLIMAIRE DIY” on product brochure); Ex. 30 to Korkmaz Decl., 49 TTABVUE 3
(showing use of “DIY SERIES,” not use of “KLIMAIRE DIY” on product brochure); Ex. 33 to
Korkmaz Decl., id. at 9-10 (showing use of “KSWM DIY SERIES” and “DIY SERIES,” not use
of “KLIMAIRE DIY” on product brochure).
38 Korkmaz Decl. at ¶ 16, 47 TTABVUE 9; Ex. 28 to Korkmaz Decl., id. at 298-313. Opposer
compares the use of KLIMAIRE DIY on this document to an “Owner’s Manual” for the same
model air conditioner, which lacks the KLIMAIRE DIY mark. Opposer’s Br., 56 TTABVUE
16 (citing Ex. 42 to Ingram Decl., 51 TTABVUE 328-40). These are different manuals, and
the “Owner’s Manual” lacks a copyright date. Although that “Owner’s Manual” may be
accessible online, it is unclear when the manual was published.
39 Ex. 36 to Korkmaz Decl., 49 TTABVUE 22

Opposition No. 91274307

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Installation work must be performed in accdrdance
with the national wiring Standards by authorised
personnel only.
Contact an authorised service technician for
repair, maintenance or installation of this unit.

0011

-17-

Opposition No. 91274307
Universal Enviromental Products, Inc. 2190 NW 89th Place Doral, Florida 33172
Invoice
Date
Invoice #
7/3/2012
748761
Phone# 305-594-9164 Fax # 305-499-4378
PAID
Bill To
Ship To
DIANNA MCLEMORE PO Box 954 Stuart, VA 24171 276-694-7217
DIANNA MCLEMORE 1291 Russell Creek Rd Stuart, VA 24171 276-694-7217
P.O. No.
Terms
Rep
748761
HẠC
Item
Qty
Description
Rate
Amount
KSWM009-H113Q
1
9,000 Btu Mini split system wall mounted fan coil KLIMAIRE DIY QUICK CONNECT - 13 SEER, 110V
489.00
489.00
KSWM012-H113Q
1 |12,000 Btu Mini split system wall mounted fan coil KLIMAIRE DIY
530.00
530.00
QPK1412-25 QPK1438-25
Quick connect tubing kit 1/4"x1/2"-8m for 12k M series 1 |Quick connect tubing kit 1/4"x3/8"-8m for 9k M series
100.00
118.00 100.00
SHIPPING & HANDLING
1 SHIPPING & HANDLING
280.00
280.00
FEDEX # 2718287751
PLEASE INSPECT THE MERCHANDISE BEFORE SIGNING THE DELIVERY RECEIPT.
Total
$1,517.00
Balance Due
$0.00
0041
- 18 -
QUICK CONNECT - 13 SEER 110V
118.00
07/03/2012

Opposition No. 91274307
- 19 -
While Opposer questions the regularity of some of Applicant’s documents, it did
not cross-examine Mr. Korkmaz, and we have no reason to doubt the accuracy of these
three documents. On this record, we find that Applicant used the KLIMAIRE DIY
mark in commerce in connection with HVAC units by at least March 31, 2012.40
40 Even if Applicant’s earliest use of the KLIMAIRE DIY mark is shown by the invoices rather
than the installation manual, the difference between a June 21, 2012 date and a March 31,
2012 date is immaterial to our analysis and does not affect the outcome.

Opposition No. 91274307
- 20 -
b) Priority Date for Opposer’s DIY Designation
We turn now to Opposer’s priority date, if any, for the DIY designation, the subject
of the ’649 Supplemental Registration. Because Opposer’s DIY designation is
registered on the Supplemental Register, it is not entitled to any of the presumptions
afforded to Principal Register registrations under Section 7(b) of the Trademark Act,
15 U.S.C. § 1057(b), and ownership of a Supplemental Register registration is
incompetent as evidence of first use or constructive first use. 15 U.S.C. §§ 1057(b),
1094; see Nazon v. Ghiorse, No. 91216729, 2016 WL 3876810, at *2 (TTAB 2016); In
re Bush Bros. & Co., 884 F.2d 569, 570 n.2 (Fed. Cir. 1989) (Supplemental Register
registration “is not evidence of ownership, validity, or the exclusive right to use….”).
“Registration on the Supplemental Register is [also] an admission by the registrant
that the term was merely descriptive of its [goods], at least at the time of
registration.” Citigroup Inc. v. Capital City Bank Grp., Inc., No. 91177415, 2010 WL
595586, at *20 n.84 (TTAB 2010 (citations omitted).
Opposer focuses on when it first used the DIY designation.41 But because DIY is
registered on the Supplemental Register, the relevant inquiry for Opposer’s Section
2(d) claim is not when Opposer first used DIY; it is when DIY acquired distinctiveness
as a source identifier for Opposer’s goods. In other words, Opposer must prove that
its DIY designation acquired distinctiveness as a trademark prior to the earliest date
upon which Applicant can rely, that is, before March 31, 2012. See Otto Roth, 640
41 Opposer’s Br., 56 TTABVUE 10-11, 15, 19.

Opposition No. 91274307
- 21 -
F.2d at 1320; DowntownDC Bus. Improvement Dist., 2024 WL 4449409, at * 11 (citing
Araujo v. Framboise Holdings Inc., 99 F.4th 1377, 1380 (Fed. Cir. 2024)).
We therefore consider whether Opposer has established that the DIY designation
acquired distinctiveness, and, if so, the date by which that occurred.
Acquired distinctiveness, or “secondary meaning,” “occurs when, in the minds of
the public, the primary significance of a mark is to identify the source of the product
rather than the product itself.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d
965, 972 (Fed. Cir. 2018) (citing Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.
205, 211 (2000)). While the Board may accept as prima facie evidence proof of
substantially exclusive and continuous use for a period of five years before the date
on which the claim of distinctiveness is made, see 15 U.S.C. § 1052(f), “the language
of the statute is permissive, and the weight to be accorded this kind of evidence
depends on the facts and circumstances of the particular case.” In re Ennco Display
Sys., Inc., No. 74439206, 2000 WL 1160458, at *6 (TTAB 2000).
A determination of the degree of descriptiveness is an integral part of the
evaluation of a claim of acquired descriptiveness. The burden of demonstrating
acquired distinctiveness increases with the level of descriptiveness; more descriptive
terms require stronger evidence of acquired distinctiveness. Real Foods, 906 F.3d at
972 (citing In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005)). Therefore,
we first “must make an express finding regarding the degree of the mark’s
descriptiveness on the scale ranging from generic to merely descriptive, and [we]

Opposition No. 91274307
- 22 -
must explain how its assessment of the evidentiary record reflects that finding.”
Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1369 (Fed. Cir. 2018).
“A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In
re Bayer AG, 488 F.3d 960, 963 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216,
1217 (Fed. Cir. 1987)). Here, “DIY” is commonly defined as an acronym for
“do‑it‑yourself.”42 Opposer acknowledges that the DIY designation is used in
connection with “HVAC systems that homeowners can install themselves” (i.e., do-it-
yourself installation).43 Opposer’s marketing also uses “DIY” in a descriptive,
non‑source‑identifying manner. For example:
44
45
42 Ex. 8 to Applicant’s NOR, 46 TTABVUE 161-62 (screenshot of the definition of DIY from
the CAMBRIDGE DICTIONARY); Ex. 56 to Applicant’s Supplemental NOR, 53 TTABVUE 138-
40 (screenshot of the definition of DIY from Merriam-Webster.com); see also Ex. 11 to
Applicant’s NOR, 46 TTABVUE 191 (screenshot of the meaning of DIY from
allacronyms.com)
43 Ingram Decl. at ¶ 11, 44 TTABVUE 6.
44 Ex. 5 to Ingram Decl., 44 TTABVUE 131 (screenshot of Opposer’s website).
45 Id. at 134.

Opposition No. 91274307
- 23 -
46
And the packaging for at least some of Opposer’s “DIY” HVAC units include the
words “Do-It-Yourself”, in close proximity to the DIY designation:
47
46 Id.
47 Ex. 56 to Applicant’s Supplemental NOR, 53 TTABVUE 37 (image of Opposer’s specimen
of use for its MRCOOL DIY SERIES and Design mark).

Opposition No. 91274307
- 24 -
We have no doubt that consumers encountering “DIY” in connection with HVAC
units advertised for self-installation would immediately perceive “DIY” as
“do‑it‑yourself,” consistent with its ordinary meaning. Evaluated in relation to the
identified goods and the relevant purchasers, and in view of record evidence
describing Opposer’s products as “Do‑It‑Yourself” HVAC units, we find that DIY is
highly descriptive, if not generic, for a key feature of Opposer’s goods. See, e.g.,
Capital Project Mgmt. Inc. v. IMDISI Inc., No. 91121819, 2003 WL 21779687, at *9,
13 (TTAB 2003) (“An abbreviation or initialism of a generic name which still conveys
to the relevant public the original generic connotation of the abbreviated name is still
generic”; “TIA” substantially synonymous with generic term “time impact analysis”
and thus generic for type of construction project schedule analysis services).
Given the highly descriptive nature of the DIY designation, Opposer may not rely
on a statutory presumption of acquired distinctiveness based on substantially
exclusive use for five years. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-
37 (Fed. Cir. 2015) (Board was within its discretion not to accept applicant’s
allegation of five years’ use given the highly descriptive nature of the mark). It is
Opposer’s burden to establish acquired distinctiveness, see Yamaha Intern. Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 1578-79 (Fed. Cir. 1988), and as a highly
descriptive mark, Opposer’s burden of establishing acquired distinctiveness for its
DIY designation mark is commensurately high.48 See Steelbuilding.com, 415 F.3d at
48 Opposer argues that Applicant has conceded the issue of acquired distinctiveness by “not
disput[ing] Opposer’s … evidence demonstrating that Opposer’s DIY Mark have acquired
distinctiveness[.]” Applicant’s Reply Br., 58 TTABVUE 8. We disagree. Applicant spends a
significant portion of its main brief arguing that Opposer’s DIY designation has no source

Opposition No. 91274307
- 25 -
1301 (“The proposed mark is highly descriptive. Therefore, applicant had the burden
to show a concomitantly high level of secondary meaning.”).
Acquired distinctiveness may be proven through both direct and circumstantial
evidence. Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 424 (Fed. Cir. 2018).
“Direct evidence includes actual testimony, declarations or surveys of consumers as
to their state of mind.” Kohler Co. v. Honda Giken Kogyo K.K., No. 91200146, 2017
WL 6547628, at *41 (TTAB 2017). “Circumstantial evidence is evidence from which
consumer association may be inferred, such as years of use, extensive amount of sales
and advertising, and any similar evidence showing wide exposure of the mark to
consumers.” Id. More specifically, we consider: (1) the association of the mark with a
particular source by actual purchasers (typically measured by customer surveys);
(2) the length, degree, and exclusivity of use; (3) the amount and manner of
advertising; (4) the amount of sales and number of customers; (5) intentional copying;
and (6) unsolicited media coverage. Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d
1110, 1120 (Fed. Cir. 2018); In re SnoWizard, Inc., No. 87134847, 2018 WL 6923620,
at *4-5 & n.8 (TTAB 2018) (holding Converse applicable to Board proceedings); see
also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1379 (Fed. Cir.
2012) (citing Steelbuilding.com, 415 F.3d at 1300). No single factor is determinative,
and each factor need not be considered. Steelbuilding.com, 415 F.3d at 1300. “Rather,
identifying significance (Applicant’s Br., 57 TTABVUE 21-24), and in is reply brief, Applicant
specifically responds to Opposer’s assertion that it concedes the issue by stating: “Applicant
disputes that the DIY mark has acquired secondary meaning as a trademark.” Applicant’s
Reply Br., 59 TTABVUE 2.

Opposition No. 91274307
- 26 -
the determination examines all of the circumstances involving the use of the mark.”
Id. (citing omitted).
Opposer submitted no consumer surveys or studies addressing public perception
of the DIY designation, and instead relies on the testimony of Jason Ingram, a
managing member of Opposer.49 Mr. Ingram testifies that Opposer’s rights in DIY
date back to January 2011, when Ingram’s Water and Air LLC used “GEOCOOL DIY
KIT” in connection with HVAC units.50 It is not clear from this record when Opposer
itself first used the DIY designation. When Opposer filed the application that
matured into the ’649 Supplemental Registration on August 27, 2018 − before
Ingram’s Water and Air assigned its rights in DIY − Opposer alleged a first use in
commerce date of February 28, 2014. In any event, Opposer asserts rights in DIY
based on continuous use of the DIY designation by itself or through its
predecessor‑in‑interest from at least January 2011 to the present.51 Mr. Ingram
identifies substantial sales and advertising expenditures from 2011 to the present,52
and testifies that Opposer’s goods are sold through thousands of dealers − including
49 Ingram Decl., 43 TTABVUE (confidential version) and 44 TTABVUE (public version);
Ingram Rebuttal Decl., 51 TTABVUE (public version) and 52 TTABVUE (confidential
version).
50 Ingram Decl. at ¶ 9, 44 TTABVUE 5; see also Ex. 1 to Ingram Decl., id. at 13-103 (marketing
materials for “GeoCool DIY Kit” and emails to/from eBay customers dated between December
21, 2010 and March 12, 2011 regarding the GeoCool DIY Kit). Ingrams Water and Air
assigned its rights in DIY to Opposer on August 16, 2019. The assignment was recorded in
the USPTO the same day at Reel/Frame 6723/0562.
51 Ingram Decl. at ¶¶ 9-13, 44 TTABVUE 5-6.
52 Ingram Decl. at ¶¶ 17-19, id. at 7-8 (public version), 43 TTABVUE 7-8 (confidential
version). The specific sales figures are designated confidential and therefore we have not
identified them specifically. However, Mr. Ingram’s testimony confirms that Opposer’s sales
are substantial in the relevant HVAC industry. Ingram Decl. at ¶ 17, 44 TTABVUE 7.

Opposition No. 91274307
- 27 -
large retailers such as Amazon.com, Home Depot, Lowe’s, Ace Hardware, Costco, and
Menards − and that Opposer’s website and social media accounts have garnered
millions of visits and views.53 By any calculation, Opposer has proven that it has been
successful in marketing and selling HVAC units under its DIY designation.
Two problems undermine Opposer’s showing of acquired distinctiveness. First,
Opposer has not proven that DIY, standing alone, has acquired distinctiveness.
Although Mr. Ingram so testifies,54 self‑interested declarations − such as those from
a managing member of an LLC − are entitled to limited weight on secondary meaning
absent corroborating evidence demonstrating consumer perception. See In re Chem.
Dynamics Inc., 839 F.2d 1569, 1571 (Fed. Cir. 1988) (finding conclusionary
declaration from applicant’s vice-president insufficient without the factual basis for
the declarant’s belief that the design had become distinctive). Moreover, the record
shows that the first use of DIY in 2011 was in connection with the “GEOCOOL DIY
KIT,”55 and that Opposer’s subsequent use consistently pairs DIY with the mark
MRCOOL (e.g., “MRCOOL DIY”).56 The record contains no evidence quantifying the
extent to which consumers perceive DIY, by itself, as a source identifier separate from
the GEOCOOL DIY KIT or MRCOOL DIY marks. On this record, Opposer has not
established that DIY alone has acquired distinctiveness.
53 Ingram Decl. at ¶¶ 15, 20-21, id. at 7-8.
54 Ingram Decl. at ¶¶ 22-23, id. at 8-9.
55 Ingram Decl. at ¶ 9, id. at 5; see also Ex. 1 to Ingram Decl., id. at 13-19 (marketing materials
for “GeoCool DIY Kit”).
56 See, e.g., Exs. 3, 5 to Ingram Decl., id. at 110-15, 122-36 (product pages for MRCOOL DIY
and MRCOOL DIYPRO products); see also Ex. 2 to Ingram Decl., id. at 105-09 (identifying
“MRCOOL DIY” as winner of awards)

Opposition No. 91274307
- 28 -
Second, even assuming Opposer’s aggregate evidence shows that DIY has
acquired distinctiveness, the record does not establish when secondary meaning was
achieved. Opposer offers summary sales totals spanning periods both before and after
Applicant’s first‑use date and constructive‑use date, but Opposer does not provide
year‑by‑year figures or other breakdowns tied to the relevant time frames. Thus,
although the total sales are substantial, the record does not show what portion
occurred before March 31, 2012. The same is true of advertising: Opposer does not
supply advertising expenditures for the periods preceding Applicant’s first‑use or
constructive‑use dates, so we cannot assess the impact of any advertising on
consumer recognition of DIY at those times. Moreover, the evidence shows that
Opposer’s MRCOOL mark consistently appears with DIY on units, packaging, and
marketing materials, making it at least as likely that advertising reinforced
MRCOOL rather than DIY as a standalone source identifier. Finally, while Opposer
states that its HVAC units are sold through “over 2,000” dealers, it provides no dealer
counts tied to the relevant periods and no evidence linking dealer footprint to
consumer perception of DIY.
Considering the record as a whole, Opposer has not proven by a preponderance of
the evidence that relevant consumers primarily perceive DIY as a source identifier
for HVAC units − that is, that the DIY designation has acquired distinctiveness. We
do not discount Opposer’s use of DIY since 2011, but long use alone is insufficient to
establish secondary meaning, particularly given the circumstances we reviewed
above. See Alcatraz Media, 2013 WL 5407315, at *19 (19 years use insufficient to

Opposition No. 91274307
- 29 -
prove acquired distinctiveness); In re Packaging Specialists, Inc., No. 250697, 1984
WL 63099, at *3 (TTAB 1984) (16 years “is a substantial period but not necessarily
conclusive or persuasive” on acquired distinctiveness); In re Interstate Folding Box
Co., 1970 WL 9583, at *4 (TTAB 1970) (proceeding number not available) (30 years
use insufficient to prove acquired distinctiveness).
c) Priority Analysis
A user of an inherently distinctive mark acquires rights upon first use, whereas
rights in a merely descriptive mark arise only after the mark has acquired
distinctiveness. B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142 (2015)
(“One who first uses a distinct mark in commerce thus acquires rights to that mark.”)
(citation omitted); J. McCarthy, 2 TRADEMARKS AND UNFAIR COMPETITION § 15:1 (5th
Ed. Dec. 2025 Update) (“If a designation used as a mark is classified as not being
‘inherently distinctive,’ then to achieve trademark status, that designation must be
proven to have acquired distinctiveness as a mark in buyers’ minds.”). Thus, where a
plaintiff’s mark is inherently distinctive and the defendant’s mark is descriptive (e.g.,
where a plaintiff seeks to cancel a registration on the Supplemental Register),
priority turns on who first acquired trademark rights − not simply who first used a
term in any capacity. See Threshold.TV, 2010 WL 3164750, at *5 (citing Otto Roth,
640 F.2d at 1321-22).
Here, the evidence shows that Applicant acquired rights in KLIMAIRE DIY by at
least March 31, 2012. Opposer, by contrast, has not shown that relevant consumers
had come to perceive DIY, standing alone, as a source identifier for Opposer’s HVAC

Opposition No. 91274307
- 30 -
units before Applicant’s earliest proven use (at least March 31, 2012) or even before
Applicant’s constructive‑use date (February 4, 2021). Because Applicant used its
inherently distinctive KLIMAIRE DIY mark before Opposer established acquired
distinctiveness in the DIY designation, Applicant prevails on priority as between
KLIMAIRE DIY and DIY.
2. Likelihood of Confusion
Likelihood of confusion is analyzed under the factors set out in In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”). Although we
consider each DuPont factor for which there is evidence and argument, In re Guild
Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019), two key considerations are the
similarities between the marks and the similarities between the goods. In re
i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017) (quoting Herbko Int’l, 308
F.3d at 1164-65).
Here, as discussed above, both parties allege a likelihood of confusion between
their respective DIY designation and KLIMAIRE DIY mark. In view thereof, we
provide only a brief explanation for why there is a likelihood of confusion under the
DuPont factors between Opposer’s DIY designation and Applicant’s KLIMAIRE DIY
mark.
The second DuPont factor considers the “similarity or dissimilarity and nature of
the goods … as described in an application or registration,” and the third DuPont
factor considers “[t]he similarity or dissimilarity of established, likely-to-continue
trade channels.” DuPont, 476 F.2d at 1361. The parties’ respective goods (HVAC

Opposition No. 91274307
- 31 -
units) are identical, and we must presume that the channels of trade and classes of
purchasers are the same for such identical goods. See In re Viterra Inc., 671 F.3d
1358, 1362 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same
channels of trade to same class of purchasers). As such, the second and third DuPont
factors favor a likelihood of confusion.
The first DuPont factor involves an analysis of the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation, and commercial
impression. Palm Bay Imps. 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.” In re Inn at St. John’s, LLC, No.
87075988, 2018 WL 2734893, at *5 (TTAB 2018) (quoting In re Davia, No. 85497617,
2014 WL 2531200, at *2 (TTAB 2014)), aff’d mem., 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).
Here, the parties agree that the first DuPont factor favors a likelihood of
confusion. Opposer alleges that “Applicant’s KLIMAIRE DIY mark is highly similar
in appearance, sound and commercial impression to Opposer’s registered DIY
Mark,”57 and Applicant alleges that “Opposer’s registered DIY mark [is] highly
similar in appearance, sound and commercial impression to Applicant having the
57 Amended Notice of Opposition, 6 TTABVUE 4, ¶ 10.

Opposition No. 91274307
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KLIMAIRE DIY mark.”58 Neither of these allegations were stricken or withdrawn,
and we recognize that the parties are best positioned to know if consumer confusion
is likely in the marketplace. Cf. Bongrain Int’l (Am.) Corp. v. Delice de France, Inc.,
811 F.2d 1479, 1484-85 (Fed. Cir. 1987) (“We have often said, in trademark cases
involving agreements reflecting parties’ views on the likelihood of confusion in the
marketplace, that they are in a much better position to know the real life situation
than bureaucrats or judges and therefore such agreements may, depending on the
circumstances, carry great weight, as was held in DuPont.”).
The only other factor discussed by the parties is Applicant’s alleged bad faith
intent in adopting the KLIMAIRE DIY mark.59 A party’s bad faith in adopting a mark
is relevant to the thirteenth DuPont factor, which includes “any other established fact
probative of the effect of use.” QuickTrip W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031,
1036 (Fed. Cir. 2021). Establishing bad faith requires a showing that the applicant
intentionally sought to trade on the opposer’s good will or reputation. See Big Blue
Prods. Inc. v. Int’l Business Machines Corp., No. 91081697, 1991 WL 326549, at *4
(TTAB 1991). “[A]n inference of ‘bad faith’ requires something more than mere
knowledge of a prior similar mark.” Sweats Fashions, Inc. v. Pannill Knitting Co., 833
F.2d 1560, 1565 (Fed. Cir. 1987). Specifically, a finding of bad faith must be supported
by evidence of an intent to confuse, rather than mere knowledge of another’s mark or
even an intent to copy. See, e.g., Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588
58 Answer and Counterclaim, 4 TTABVUE 7, ¶ 13.
59 Opposer’s Br., 56 TTABVUE 31-33; Applicant’s Br., 57 TTABVUE 26; Opposer’s Reply Br.,
58 TTABVUE 40-43; Applicant’s Reply Br., 59 TTABVUE 22.

Opposition No. 91274307
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F.3d 97, 117 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is
a considerable difference between an intent to copy and an intent to deceive.’”)
(quoting J. Thomas McCarthy, 4 MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 23.113). Opposer has not provided any evidence of Applicant’s intent
to confuse consumers, and therefore we find the thirteenth DuPont factor to be
neutral.60
The final step in analyzing likelihood of confusion is to weigh the DuPont factors
for which there is evidence and argument, “explain the results of that weighing,” and
address “the weight [we] assigned to the relevant factors.” In re Charger Ventures
LLC, 64 F.4th 1375, 1384 (Fed. Cir. 2023). “No mechanical rule determines likelihood
of confusion, and each case requires weighing of the facts and circumstances of the
particular mark.” In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010); see
also Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1116-17 (Fed. Cir. 2024) (“Only
the DuPont factors of significance to the particular mark need be considered in the
likelihood of confusion analysis.”).
Here, the goods are identical, the trade channels are presumed to be the same,
and the parties agree that the marks are similar in sound, appearance, and
commercial impression. With the first three DuPont factors favoring a likelihood of
confusion, and none weighing against a likelihood of confusion we conclude that
confusion is likely between Applicant’s KLIMAIRE DIY mark for “HVAC units” and
Opposer’s DIY designation for the same goods.
60 Even if there was evidence of bad faith, this consideration would result in confusion being
more likely, not less likely.

Opposition No. 91274307
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In sum, Applicant has established, by a preponderance of the evidence, prior
common‑law rights in KLIMAIRE DIY for HVAC units and a likelihood of confusion
between KLIMAIRE DIY and Opposer’s DIY designation exists. This showing
satisfies the requirements of Trademark Act Section 2(d). Accordingly, Applicant’s
counterclaim to cancel the ’649 Supplemental Registration is granted.61
B. Opposer’s DIYPRO Mark and Applicant’s KLIMAIRE DIY Mark
Although we grant Applicant’s counterclaim and cancel Opposer’s ’649
Supplemental Registration, that does not end the case. Opposer also asserts a Section
2(d) claim against Applicant’s KLIMAIRE DIY mark based on its DIYPRO mark, the
subject of the ’666 Registration.
Turning to the merits of that claim, we again start with priority. The priority
analysis differs from the one discussed above. The ’666 Registration has been made
of record, and − despite notice that Applicant could seek cancellation if the
registration issued during this proceeding − Applicant did not do so. Accordingly,
Opposer’s priority is not at issue and is established for the goods identified in the ’666
Registration. Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 WL
2188890, at *10 (TTAB 2021) (citing King Candy Co. Eunice King's Kitchen, Inc., 496
F.2d 1400, 1402 (CCPA 1974)) (“Because Opposer relies on its asserted MADE IN
NATURE registrations that have been made of record, and Applicant has not
61 Because we have granted Applicant’s counterclaim to cancel the ’649 Supplemental
Registration, we do not need to decide Applicant’s failure-to-function counterclaim. See
Yazhong Inv. Ltd. v. Multi-Media Tech Ventures, Ltd., No. 92056548, 2018 WL 2113778, at
*13 n.52 (TTAB 2018) (citing Multisorb Techs., Inc. v. Pactiv Corp., No. 92054730, 2013 WL
6979641, at *3 (TTAB 2013)).

Opposition No. 91274307
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challenged these registrations by way of any cancellation counterclaim(s), Opposer’s
priority therefore is not at issue with respect to the goods identified in its
registrations.”).
Turning to likelihood of confusion, the parties had alleged a likelihood of confusion
against each other: Opposer alleged that “Applicant’s KLIMAIRE DIY mark is highly
similar in appearance, sound and commercial impression to Opposer’s … DIYPRO
application,”62 and Applicant alleged that “Opposer’s … DIYPRO application [is]
highly similar in appearance, sound and commercial impression to Applicant having
the KLIMAIRE DIY mark.”63 However, unlike the pleadings concerning the DIY
designation, the Board struck Opposer’s allegations relating to the DIYPRO
application.64 Consequently, there are no judicial admissions by Applicant in the
operative pleadings regarding likelihood of confusion between DIYPRO and
KLIMAIRE DIY, and we do not treat Applicant as having conceded that issue.
Opposer correctly notes that Applicant did not address the DuPont factors in its brief,
but Applicant did not discuss the DIYPRO mark at all. Ultimately, it remains
Opposer’s burden to prove its Section 2(d) claim. We therefore consider whether
Opposer has established, by a preponderance of the evidence, that the relevant
DuPont factors collectively support a finding of likelihood of confusion.
62 Amended Notice of Opposition, 6 TTABVUE 4, ¶ 10.
63 Answer and Counterclaim, 4 TTABVUE 7, ¶ 13.
64 See supra at page 4.

Opposition No. 91274307
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Consistent with our earlier analysis, the goods are identical and the trade
channels are presumed to be the same, and therefore the second and third DuPont
factors favor a likelihood of confusion. The comparison of the marks under the first
DuPont factor, however, is different than our earlier analysis, as there are no
concessions regarding this issue and Opposer’s DIYPRO mark includes the additional
element “PRO.”
We still consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation, and commercial impression. Palm Bay Imps., 396
F.3d at 1371. Furthermore, “[s]imilarity is not a binary factor but is a matter of
degree.” In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (quoting In re Coors
Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003)). “The proper test regarding
similarity ‘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.’” Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021 WL 6072822, at
*14 (TTAB 2021) (quoting Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir.
2018) (internal quotation omitted)). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of the
marks. In re Bay State Brewing Co., Inc., No. 85826258, 2016 WL 1045677, at *2
(TTAB 2016) (citation omitted).
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, our finding must be based on the entire marks, not just part of

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the marks. In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985). See also
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). “No element
of a mark is ignored simply because it is less dominant, or would not have trademark
significance if used alone.” In re Electrolyte Labs. Inc., 929 F.2d 645, 647 (Fed. Cir.
1990) (citing Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293 (CCPA
1974)). Nonetheless, “in articulating reasons for reaching a conclusion on the issue of
confusion, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties.” In re Detroit
Athletic Co., 903 F.3d 1297, 1305 (Fed. Cir. 2018) (quoting Nat’l Data, 753 F.2d at
1058).
With these principles in mind, we compare Opposer’s DIYPRO mark and
Applicant’s KLIMAIRE DIY mark. These marks share the common element “DIY,”
but as already discussed, “DIY” in the context of HVAC units is not just merely
descriptive; it is highly descriptive of those goods. The marks also each contain other
elements – “PRO” and “KLIMAIRE”, respectively.
The dominant portion of Applicant’s mark is “KLIMAIRE,” as the “KLIMAIRE”
element is at least suggestive, if not fanciful, in connection with HVAC units,
KLIMAIRE is the first word in Applicant’s mark, and the “DIY” element is descriptive
and has been disclaimed. See, e.g., Palm Bay Imps., 396 F.3d at 1372 (“VEUVE,” as

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first word in mark, is dominant element); In re Dixie Rests., Inc., 105 F.3d 1405, 1407
(Fed. Cir. 1997) (disclaimed and generic word less dominant); In re Code Consultants,
Inc., No. 75645560, 2001 WL 1149619, at *4 (TTAB 2001) (disclaimed matter, “while
not ignored in the analysis,” is often “less significant in creating the mark’s
commercial impression”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., No. 91074797,
1988 WL 252340, at *3 (TTAB 1998) (first part of a mark “is most likely to be
impressed upon the mind of a purchaser and remembered”).
The “PRO” element in Opposer’s mark and the “KLIMAIRE” element in
Applicant’s mark are not similar in sound, appearance, or connotation, whether
considered separately or in combination with “DIY.” In re Bed & Breakfast Registry,
791 F.2d 157, 159 (Fed. Cir. 1986) (“The words ‘registry’ and ‘international’ do not
have the same meaning, either alone or in combination with the term ‘bed and
breakfast.’”). Indeed, in the context of Applicant’s goods, the KLIMAIRE DIY mark
gives the commercial impression of a do-it-yourself version of a KLIMAIRE HVAC
unit. Opposer’s DIYPRO mark, on the other hand does not give a similar connotation
or commercial impression. It incorporates the element “PRO,” which has a number of
definitions, including “Professional.”65 Mr. Ingram testifies that the DIY designation
was selected because its HVAC systems bearing the DIY designation can be installed
65 Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/pro (accessed
February 9, 2026); Collins English Dictionary, https://www.collinsdictionary.com/us
/dictionary/english/pro (accessed February 9, 2026). The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., No.
91061847, 1982 WL 52012, at *3 (TTAB 1982), aff’d, 703 F.2d 1372 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, No. 75788830, 2006 WL 936983, at *3 (TTAB 2006).

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by homeowners themselves, “without the need of a licensed HVAC professional,”66
which is consistent with the meaning of “DIY” or “Do-It-Yourself.”67 As such, the
combination of “DIY” and “PRO” is incongruous and gives the impression of a
professional do-it-yourself HVAC unit, a meaning entirely absent from the
KLIMAIRE DIY mark.68 There is also no evidence to suggest that consumers would
associate or connect KLIMAIRE DIY-branded HVAC units with DIYPRO-branded
HVAC units.
“Additions … to marks may be sufficient to avoid a likelihood of confusion if:
(1) the marks in their entireties convey significantly different commercial
impressions; or (2) the matter common to the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely descriptive or diluted.”
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01(b)(iii) (Nov. 2025).
Given the visual and phonetic differences between the marks, the highly descriptive
nature of their shared “DIY” element, and their differing commercial impressions, we
find Opposer’s DIYPRO mark and Applicant’s KLIMAIRE DIY mark sufficiently
66 Ingram Rebuttal Decl., 51 TTABVUE 10, ¶ 18. See also id. at 17, ¶ 52 (“Opposer’s DIY-
branded HVAC units were developed, marketed, and sold from the outset as systems that
could be installed without professional licensure.”).
67 See, e.g., Ex. 7 to Applicant’s NOR, 46 TTABVUE 149 (Wikipedia page for “Do it yourself”)
(“‘Do it yourself’ (‘DIY’) is the method of building, modifying, or repairing things by oneself
without the direct aid of professionals or certified experts.”); Ex. 11 to Applicant’s NOR, id.
at 191 (screenshot of the meaning of DIY from allacronyms.com) (“The abbreviation DIY
stands for Do-It-Yourself, referring to the practice of creating, building, or repairing things
on one’s own without professional assistance.”).
68 Other definitions of “pro” include “an argument or evidence in affirmation” (e.g., pros and
cons), “in favor of,” and “earlier than.” Merriam-Webster Dictionary, https://www.merriam-
webster.com/dictionary/pro (accessed February 9, 2026). Even if Opposer did not intend for
the “PRO” element in “DIYPRO to refer to “professional,” none of the other definitions of “pro”
give a similar connotation or commercial impression as KLIMAIRE DIY.

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dissimilar. Accordingly, the first DuPont factor weighs against a finding of a
likelihood of confusion.
As noted above, the final step in analyzing likelihood of confusion is to weigh
the DuPont factors for which there is evidence and argument, “explain the results of
that weighing,” and address “the weight [we] assigned to the relevant factors.”
Charger Ventures, 64 F.4th at 1384. Having considered the record and the relevant
DuPont factors, we find that the dissimilarity of the marks in sound, appearance, and
commercial impression − together with the highly descriptive nature of the marks’
only shared element (“DIY”) − outweighs the other factors. See Oakville Hills Cellar,
Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 1381-82 (Fed. Cir. 2016) (“a single
du Pont factor may be dispositive in a likelihood of confusion analysis, especially
when that single factor is the dissimilarity of the marks”); Odom’s Tenn. Pride
Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 1347 (Fed. Cir. 2010) (“[E]ven if
all other relevant DuPont factors were considered in [opposer’s] favor, as the board
stated, the dissimilarity of the marks was a sufficient basis to conclude that no
confusion was likely.”); Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 333 (Fed.
Cir. 1991) (“[W]e know of no reason why, in a particular case, a single du Pont factor
may not be dispositive.”).
Therefore, we conclude, on this record, that Applicant’s KLIMAIRE DIY mark,
when used in connection with HVAC units, is not likely to cause confusion with
Opposer’s DIYPRO mark for HVAC units.

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V. Section 43(c): Dilution by Blurring
Dilution by blurring is an “association arising from the similarity between a mark
or trade name and a famous mark that impairs the distinctiveness of the famous
mark.” 15 U.S.C. § 1125(c)(2)(B). The Federal Circuit has set forth the following four
elements a plaintiff must prove in a Board proceeding in order to prevail on a claim
of dilution by blurring:
(1) [the plaintiff] owns a famous mark that is
distinctive;
(2) the defendant is using a mark in commerce that
allegedly dilutes the plaintiff’s famous mark;
(3) the defendant’s use of its mark began after the
plaintiff’s mark became famous; and
(4) the defendant’s use of its mark is likely to cause
dilution by blurring or by tarnishment.
Coach Servs., 668 F.3d at 1372.
Although Opposer’s dilution-by-blurring claim was previously stricken, Opposer
reasserted it in its brief, and − as discussed above − we deem the issue tried by
implied consent.69 Opposer argues that Applicant’s KLIMAIRE DIY mark dilutes
Opposer’s rights in both DIY and DIYPRO.70 As found above, Applicant first used
KLIMAIRE DIY in commerce no later than March 31, 2012. Opposer offers no
69 See supra at 7-9.
70 Opposer’s Br., 56 TTABVUE 33-35. Although we have canceled Opposer’s ’649
Supplemental Registration, Opposer alleges common-law rights in DIY, and therefore we will
consider whether Opposer can prevail on its dilution claim for both its DIY and DIYPRO
marks.

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evidence that DIY or DIYPRO was famous before that date.71 Because Applicant
began using KLIMAIRE DIY years before any credible claim that Opposer achieved
the requisite fame in DIY or DIYPRO, Opposer cannot satisfy the requirement that
“the defendant’s use of its mark began after the plaintiff’s mark became famous.”
See Coach Servs., 668 F.3d at 1372 (emphasis added). Accordingly, Opposer’s dilution
claim fails as a matter of law.
Decision: Opposer’s opposition to registration of Application Serial No. 90511281
based on likelihood of confusion under Trademark Act Section 2(d) and dilution by
blurring under Trademark Act Section 43(c) is dismissed.
Applicant’s counterclaim for cancellation of Supplemental Registration No.
5667649 based on a likelihood of confusion under Trademark Act Section 2(d) is
granted.72
71 We note that the application underlying the ’666 Registration for the DIYPRO mark was
filed on December 31, 2020 on an intent to use basis, and the registration reflects a first use
date of December 31, 2020 and first use in commerce date of July 1, 2024.
72 Because we have granted Applicant’s counterclaim to cancel the ’649 Supplemental
Registration under Trademark Act Section 2(d), we need not reach Applicant’s failure-to-
function counterclaim. See supra at n.61.