PCH Successfully Opposes Registration of HAWK Trademark after a Trial Before the United States Patent and Trademark Office Trial and Appeal Board

Ortid, LLC v. Hawk Industries, Germany, GMBH, Opposition No. 91267979 (TTAB August 30, 2024)

Only about 2% of adversarial cases before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (the “TTAB”) ever reach a final decision.  Most cases either settle or are resolved by default.  This is one of the rare cases to have made it to final decision.

The case essentially involved a dispute over who had priority to the trademark HAWK for sporting goods.  While it appeared to be an open and shut case for Hawk Sports, a little investigative work by Ortid unmasked a sham.

Hawk Sports applied for registration of the following stylized version of the mark HAWK for various items of sporting goods:

Ortid opposed the application, claiming prior use of its own stylized version of the trademark HAWK for weightlifting belts:

Hawk Sports claimed that it began selling HAWK branded products as early as 2012.  Although Ortid did not begin selling its HAWK branded boxing gloves until February 2017, it disputed Hawk Sports’ claim of prior use.

In support of its prior use claim, Hawk Sports produced invoices dated between 2012 and 2018 to a customer named Voleyball1on1, claiming that these invoices demonstrated its prior use of the HAWK mark.

Suspicious of Hawk Sports’ invoices and claim, Ortid was able to locate the owner of Volleyball1on1, who testified unequivocally that Hawk Sports’ claim was not true: “’[T]he volleyballs sold to Volleyball1on1 between 2012 and 2018 did not bear the HAWK Marks.  Instead, they all bore custom-designed markings created by [Volleyball1on1] featuring the VOLLEYBALL1ON1 mark.” 

Hawk Sports had no come back.  And based on this testimony, the TTAB was readily able to find that Ortid established priority since it clearly demonstrated first sales of boxing gloves bearing the HAWK mark in February 2017.  Hawk Sports failed to produce any reliable evidence to establish use of the HAWK mark before that date.  Indeed, based on the testimony of Volleyball1on1’s owner, the TTAB expressly gave “no weight to the only evidence purporting to support [Hawk Sports’] claim of prior use.”

Ultimately, the TTAB found that “[t]he marks are quite similar, and the goods are closely related, complementary, and travel in the some of the same channels of trade to the same classes of consumers.  Thus, confusion is likely.”  Accordingly, Ortid’s opposition to Hawk Sports’ application was sustained.

PRACTICE POINTER: Things are not always as they seem; you sometimes need to peel back some layers to get to the truth.

Michael B. Chesal and Albert Alvarez of Peretz Chesal & Herrmann, P.L. for Ortid LLC.

Baruch S. Gottesman of Gottesman Legal PLLC for Hawk Sports Industries, Germany, GmbH.