Battling Brands: The Fight For Trademark Territory

Kohrman Jackson & Krantz LLP


In a David vs. Goliath-esque legal saga, Rogue Fitness (ROGUE), a well-known workout products company, finds itself embroiled in a trademark dispute against Rogue Ridge LLC (Rogue Ridge), a mountain bike seller. At the heart of the matter lies the use of the term “Rogue” in branding, a word laden with commercial significance for both companies.

ROGUE has taken the battle to the courtroom, urging an Ohio federal judge to intervene. This federal appeal follows the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board’s (TTAB) refusal to cancel Rogue Ridge’s registration for the “ROGUE RIDGE” wordmark (Reg. No. 6,059,112) and sustaining ROGUE’s opposition to Rogue Ridge’s pending composite mark:

The Contested Decision

The decision to cancel the wordmark, according to ROGUE, is a glaring misstep that warrants correction.

Central to ROGUE’s argument is the claim that Rogue Ridge’s trademark registration stands on shaky ground, built upon erroneous determinations by the TTAB. ROGUE contends that the board failed to recognize the precedence of its own established marks, dismissing crucial evidence presented in the petition for cancellation.

Similarity of Products and Target Consumers

One of the key assertions made by ROGUE is the similarity in products and target consumers between the two companies. While ROGUE specializes in workout equipment, including stationary bikes, Rogue Ridge’s offerings include mountain bikes and electric mountain bikes. Contrary to the TTAB’s ruling, ROGUE argues that these products directly compete in the market, heightening the risk of consumer confusion.

Concerns Over Visual Resemblance

Moreover, ROGUE raises concerns about the visual resemblance between Rogue Ridge’s mark and its own registered “ROGUE” marks, exacerbating the potential for consumer confusion. The inclusion of the “Rogue” component in Rogue Ridge’s branding further blurs the lines between the two companies, according to ROGUE.

Scope of Infringement

The scope of infringement extends beyond the realm of fitness equipment, as ROGUE also alleges that Rogue Ridge’s foray into apparel, utilizing the disputed marks, compounds the trademark violations. This multi-faceted approach to branding encroaches upon ROGUE’s established trademark territory, fostering confusion among consumers and diluting the distinctiveness of its marks.

DuPont factors

The TTAB saw it differently. Relying on and analyzing the “likelihood of confusion” factors set forth in In re E.I. du Pont de Nemours & Co., the TTAB denied ROGUE’s request for cancellation.

The DuPont factors include:

  • Similarity or dissimilarity of marks
  • Nature of the goods and services
  • Trade channels used
  • Purchasing conditions
  • Fame of the existing mark
  • Similar marks with similar goods
  • Actual confusion between the marks
  • Length and conditions of concurrent use without confusion
  • Variety of goods and services associated with the marks
  • Market interface
  • Applicant’s right to exclude others
  • Extent of potential confusion
  • Other established facts

There are, however, three primary DuPont factors: 1) Similarity of the marks, 2) Similarity of goods/services, and 3) Similarity of trade channels. In rendering its decision, the TTAB held that the ROGUE and the Rogue Ridge composite mark are similar “and may be sold through similar channels of trade to the same purchasers,” and possessed sufficient priority to sustain ROGUE’s opposition. In contrast, the TTAB held that ROGUE “has not demonstrated prior use of goods that are sufficiently related to Rogue Ridge’s goods, or that such goods are sold through the same channels of trade to the same purchasers . . . [t]herefore, we find confusion unlikely” therein failing to establish priority. Because of this, the TTAB denied the cancellation of Rogue Ridge’s wordmark.

Seeking Judicial Review

In light of what it feels is an erroneous ruling, ROGUE seeks judicial review to rectify the TTAB’s decision, advocating for the cancellation of Rogue Ridge’s wordmark and additional claims of redress for trademark infringement and deceptive trade practices. ROGUE aims to not only cancel the Rogue Ridge wordmark but also to secure control over the domain “,” asserting its rights over the online platform where the allegedly infringing products are marketed.

Implications of the Case

The outcome of this case holds wide implications for the protection of intellectual property rights and the maintenance of brand integrity in a competitive marketplace. As the battle between ROGUE and Rogue Ridge unfolds, it highlights the importance of diligent safeguarding trademarks and the pursuit of legal recourse in the face of infringement.