Cross-Fit Champion Mathew E. Fraser Wins Priority Contest Over HARD WORKS PAYS OFF Mark for Clothing

Retired Cross-Fit Champion Mathew E. Fraser outmuscled Respondents Jackson and Watts in this proceeding to cancel a registration of the mark shown below, for "Clothing namely, shirts, pants, jackets, hats, t-shirts, jerseys, shorts, tracksuits, socks, underwear, hoodies." Fraser claimed likely confusion with his common law mark HWPO for "Athletic footwear; athletic footwear for fitness training; Athletic shoes." Respondents did not contest the likelihood of confusion but challenged (unsuccessfully) Fraser's claim of priority. Mathew E. Fraser v. Maurice Jackson, III and Enos Watts, Cancellation No. 92081235 (September 11, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Opposer Fraser is "widely considered to be the most dominant ever male athlete in the sport of CrossFit." Respondent Watts is a performing artist in the rap music genre. Both Mr. Watts and Respondent Jackson promote their HARD WORK PAYS OFF brand and sell apparel displaying the mark at their musical events.

Common law rights in a mark can be established through actual use (technical trademark use), trade name use, or through use analogous to trademark use (non-technical use such as use in advertising which creates a public awareness of the designation as a trademark identifying the party as a source). The common law mark must be distinctive, inherently or by acquired distinctiveness, and in use, before the earliest priority date of Respondents.

Respondents sought to rely on a priority date earlier than that stated in their underlying application filing date (constructive use date) and their alleged first use date stated in the registration. The Board noted that "[a] party may seek to rely in a proceeding on first use dates earlier than the first use dates stated in its registration, but must prove those earlier first use dates by clear and convincing evidence."

Respondents established, by clear and convincing evidence, a January 25, 2018 priority date for t-shirts bearing the registered mark. But it was downhill from there.

The Board found Fraser's HWPO mark to be distinctive, "since there is an absence of evidence or argument showing otherwise."

Fraser stated that his first use and first use in commerce of the HWPO mark was “at least as early as June 5, 2018,” but his testimony and evidence also indicated use of the HWPO mark on athletic shoes in 2016 through his contract with Nike and "sales figures [for the shoes] reaching back to at least one year prior to the Respondents’ alleged date of first use."

Although Respondents criticize Mr. Fraser’s testimony as vague, it is corroborated by the confidential financial documents as well as documentary exhibits (social media and internet articles), reflective of the relevant time periods Mr. Fraser stated the HWPO Mat Fraser/Nike Metcon shoes were offered and sold by Nike under their agreement, and promoted by Mr. Fraser, adding weight to his testimony.

Respondents chose neither to cross-examine Fraser regarding his testimony declaration, nor question him about the accompanying exhibits.

Considering the testimony and corroborating evidence as a whole, we find that Petitioner’s use in commerce date for HWPO on athletic shoes is at least as early as November 1, 2016 which is prior to Respondents’ January 25, 2018 priority date for t-shirts. Petitioner has proven its priority by a preponderance of the evidence.

And so, the Board granted the petition for cancellation.

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TTABlogger comment: It's difficult to overcome a priority claim unless you cross-examine the witness to poke holes in his or her testimony. 

Text Copyright John L. Welch 2025.