October 20, 2025
Hello Reader,
Problem (real story, simple lesson):
Two sides fought over clothing brands that sounded connected. One side used the full phrase HARD WORK PAYS OFF on apparel. The other side—CrossFit champion Mathew Fraser—used the shorter mark HWPO (same words, just the first letters) on athletic shoes through a Nike collab. The trademark board had to decide: who gets to keep rights? The board said the marks were likely to be confused, and the real fight came down to priority—who could show earlier use in commerce. In the end, the board cancelled the HARD WORK PAYS OFF registration, because Fraser proved earlier use of HWPO on shoes (starting in 2016), while the registrants only proved t-shirt sales in January 2018.
Why the board ruled that way (in plain English)
- Confusion was basically conceded. The registrants did not fight the “likelihood of confusion” part in their trial brief. That left priority as the key issue.
- Earlier use wins. The board looked for dated, real-world proof that each side used its mark on the claimed goods. Fraser showed shoes bearing HWPO tied to a Nike launch and promotions that started before the registrants’ proof of t-shirt sales. That earlier date carried the day.
- Evidence matters more than talk. The board liked clear, simple proof: photos of the product and box, social media posts tied to the dates, articles, and sales records—enough to back up the story without guessing.
- Unpled “tacking” didn’t help. The registrants hinted they’d used different versions earlier and wanted to “tack” that use onto the registered mark. But they didn’t properly plead tacking, so the board did not consider it.
- A second claim wasn’t needed. Fraser also raised a “failure-to-function” argument (ornamental use), but once he won on likelihood of confusion and priority, the board didn’t need to decide that part.
What this means for you (problem → solution)
1) Keep proof from day one.
If you ever need to say “we used it first,” you must show dated proof for the right goods. Save product photos, launch emails, web pages with dates/URLs, social posts, invoices, and press mentions. Don’t wait; make a “brand file” now.
2) Match the mark to the goods.
Use your mark on the thing you sell (tags, boxes, labels, product pages). If your registration or application says “clothing,” show the mark on clothing—not only on flyers or in a playlist thumbnail.
3) Don’t rely on memory—rely on documents.
Courts and the board trust records over memories. A clean set of simple documents can beat pages of unclear testimony.
4) Plead the right defenses.
If your plan includes a special legal theory (like “tacking”), say it in your pleadings so the board can consider it. If you don’t raise it the right way, it can be ignored—even if you talk about it later.
5) Know that conceding one point shifts the fight.
Here, the other side basically gave up on the “confusion” issue. That put all the weight on priority. In your case, be careful what you concede; you might move the spotlight to your weakest spot.
A simple checklist you can use this week
- Dated use: Do we have photos, webpages (with URLs/dates), or posts that show the mark on the product before any competitor’s key date?
- Sales proof: Do we have basic sales records (even summaries) that match the dates and the goods?
- Same goods: Is our proof tied to the same goods listed in our application or registration?
- Housekeeping: Are our file names clear and easy to understand (year-month-day + short note)?
- Pleadings plan: If we go to the TTAB, did we include every claim or defense we might need (e.g., priority, tacking, failure-to-function)?
Bottom line
Having a strong name is great. Proving you used it first—on the right goods, at the right time—is what wins. In this case, the board cancelled the other party’s clothing registration because Fraser showed HWPO on shoes years earlier, and the other side didn’t properly keep or frame their earlier-use arguments. Good records and clean pleadings turned a tough fight into a clear win.
Keep Your Brand Safe and Protected,
J.J. Lee and the Trademark Lawyer Law Firm Team!
P.S. If you’re launching, enforcing, or defending a mark—and you want a calm, step-by-step plan—contact us. We’ll review your proof, fix gaps (dates, goods, pages, invoices), and outline a strategy that puts your strongest evidence first so you don’t lose a good case on a missing document.