Addict, Ltd.v.GS & G, Inc. USADownload PDFTrademark Trial and Appeal BoardMar 16, 2009No. 92046699re (T.T.A.B. Mar. 16, 2009) Copy Citation Mailed: March 16, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Addict, Ltd. v. GS & G, Inc. USA _____ Cancellation No. 92046699 _____ Request for Reconsideration _____ John R. Sommer, Esq. for Addict, Ltd. Richard S. Ross, Esq. for GS & G, Inc. USA. ______ Before Zervas, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On January 2, 2009, we granted the petition to cancel filed by Addict, Ltd. (“petitioner”) against the continued registration of Registration No. 3039758 for the mark ADDICT (in standard character form) for “retail store services featuring clothing” in International Class 35, issued to GS & G, Inc. USA (“respondent”). We found respondent’s mark confusingly similar under Section 2(d) of the Trademark Act, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92046699 2 15 U.S.C. § 1052(d), to petitioner’s Registration No. 2310612 for the mark ADDICTWEAR (in standard character form) for “sportswear clothing, namely, shirts, shorts, hats, pants, jackets and socks” in International Class 25. In view of our finding of likelihood of confusion based on Registration No. 2310612, we did not reach the issue as to whether there was a likelihood of confusion between petitioner's common law ADDICT mark for various clothing items and respondent’s mark. We did not have the benefit of respondent’s arguments in arriving at our decision because respondent did not file a main brief. On January 28, 2009, respondent filed a request for reconsideration of our decision. The essence of respondent’s motion is that we erred in finding that respondent impliedly consented to the trial of petitioner's unpleaded likelihood of confusion claim with respect to petitioner's ADDICTWEAR registration, and that respondent only consented to the trial of the unpleaded likelihood of confusion claim based on petitioner's common law ADDICT mark. We have given no consideration to the exhibits submitted with respondent’s request (dated January 22, 2009) because a request for reconsideration may not be used to introduce additional evidence; it should normally be limited to a demonstration that based on the evidence properly of record and the applicable law, the Board’s ruling is in Cancellation No. 92046699 3 error and requires appropriate change. TBMP § 543 (2d ed. rev. 2004). The Board may treat issues in a cancellation proceeding tried by the implied consent of the parties that have not been raised by the pleadings as if they had been raised in the pleadings. Implied consent to the trial of an unpleaded issue can be found where the non-offering party (i) raised no objection to the introduction of evidence on the issue, and (ii) was fairly apprised that the evidence was being offered in support of the issue. See Fed. R. Civ. P. 15(b); and TBMP § 507.03 and cases cited therein. Although petitioner did not plead likelihood of confusion at all in its petition to cancel, we find it difficult to accept respondent’s contention that it was “never given fair, or any notice, that the petition sought as a ground for cancellation likelihood of confusion based upon ADDICTWEAR.” Request, p. 4. Petitioner pleaded its ownership of, and based its claim of priority in part on, its ADDICTWEAR registration,1 thus respondent was advised at the beginning of this case that petitioner was asserting rights in its ADDICTWEAR registration. The complaint stated in relevant part: 3. Since long before Defendant’s claimed date of first use, Addict has been and is now engaged in 1 Despite this omission, and despite the fact that there was no claim pleaded in the petition to cancel, respondent never filed a motion under Fed. R. Civ. P. 12(b)(6). Cancellation No. 92046699 4 the business of manufacturing, promoting, distributing, and selling its high-quality clothing and related products worldwide and in the United States under the ADDICT and ADDICTWEAR marks. * * * 5. Addict is the owner of U.S. Trademark Registration No. 2,310,612 for ADDICTWEAR for “sportswear clothing, namely shirts, shorts, hats, pants, jackets and socks,” registered January 25, 2000 (hereinafter the “‘612 Registration”). The ‘612 Registration is valid, subsisting, and exclusively owned by Addict. The ‘612 Registration is incontestable within the meaning of Section 15 of the Lanham Act. * * * 7. … Addict is further damaged by Defendant’s registration in that it calls into question Addict’s right to continue to sell ADDICT and ADDICTWEAR clothing in the United States even though Addict has been doing so prior to Defendant’s earliest priority date. 8. In the event there is any conflict between … Addict’s rights and marks and Defendant’s right and marks, Addict clearly has priority over Defendant as to clothing under the ADDICT and ADDICTWEAR marks and as to retail store services under the ADDICT mark. Thus, this is not a case where a plaintiff has not pleaded a registration at all and first raised it at trial. Rather, this is a case where the initial pleading has placed petitioner's registration in issue at least with respect to allegations of damage and priority. There was no allegation of likelihood of confusion at all, yet the case moved forward to trial, presumably on some ground related to the allegations in the complaint. Because priority is a Cancellation No. 92046699 5 predicate for establishing likelihood of confusion, it should have been apparent to respondent, as it was to us, that petitioner intended to assert a likelihood of confusion based on its ADDICTWEAR registration. See Trademark Act Section 2(d), 15 U.S.C. § 2(d). In view of the numerous allegations regarding the ADDICTWEAR mark in the complaint, the threshold for establishing that respondent was fairly apprised that the evidence was being offered in support of the issue of likelihood of confusion regarding the ADDICTWEAR mark is low. We now consider the evidence of record regarding the ADDICTWEAR mark submitted with petitioner's single notice of reliance and the trial testimony of one of petitioner's witnesses. Specifically, petitioner filed the following with its notice of reliance: A. A certified copy of its ADDICTWEAR registration establishing the status and title of the registration; B. A copy of the file wrapper for the ADDICTWEAR registration; C. Respondent’s responses to the following requests for admissions: a. Request for Admission No. 3: Admit that there is a likelihood of confusion between ADDICTWEAR brand clothing and a retail store featuring clothing named ADDICT. b. Request for Admission No. 4: Cancellation No. 92046699 6 Admit that there is no likelihood of confusion between ADDICTWEAR brand clothing and a retail store featuring clothing named ADDICT. c. Request for Admission No. 16: Admit that Reg. 2310612 for ADDICTWEAR is owned by Plaintiff. d. Request for Admission No. 17: Admit that Reg. 2310612 for ADDICTWEAR is valid and enforceable. Respondent did not object to the admission of any of this evidence, including the status and title copy of the ADDICTWEAR registration and respondent’s responses to Requests for Admission Nos. 3 and 4 which are specifically directed to the question of likelihood of confusion between ADDICTWEAR and respondent’s mark.2 Petitioner also elicited testimony without objection regarding the ADDICTWEAR mark in the testimonial deposition of petitioner's trial witness, Piers Kannangara (petitioner's Managing Director). Specifically, at p. 47 of Mr. Kannangara’s testimonial deposition, petitioner's attorney asked about use of ADDICTWEAR;3 and at pp. 79 and 2 Respondent is wrong to the extent that it argues at p. 3 of its reply brief that because its responses to the request for admissions are discovery, they cannot be relied upon in determining whether it has consented to trial of likelihood of confusion based on the ADDICTWEAR mark. Petitioner made the responses part of the trial record through a notice of reliance during its testimony period. As such, the responses are proper trial evidence. 3 Respondent contends that we incorrectly found that petitioner uses its ADDICTWEAR mark in the United States based on Mr. Kannangara’s testimony because he did “not affirmatively state whatsoever that Petitioner used ADDICTWEAR” in the United States. Cancellation No. 92046699 7 81, he asked about any consideration given to using ADDICTWEAR as a store name. In addition, through Mr. Kannangara’s deposition, petitioner entered a second copy of the ADDICTWEAR registration into the record. See Kannangara dep. ex. 41. Respondent’s attorney made no objection. Further, as we noted in our decision, respondent’s attorney, during the testimonial deposition of David Jefferies, petitioner’s Director of Sales, stated that his “client is willing to stipulate to the issue of confusion.” Jefferies dep. p. 71.4 Mr. Kannangara did testify that petitioner uses the mark, and did not state that such use was only outside of the United States. Also, respondent does not point to any conflicting evidence in the record and did not contest petitioner characterization of that testimony as pertaining to use within the United States. See main brief, p. 21. Thus, to the extent that respondent maintains that our decision is in error because we stated that Mr. Kannangara testified that petitioner used ADDICTWEAR on clothing in the United States, we disagree. However, even if his testimony only pertains to use outside the United States, the result in this case does not change; petitioner has prevailed through its reliance on the ADDICTWEAR registration and need not show continuous use of ADDICTWEAR in the United States. 4 Respondent challenges our reliance on its attorney’s offer to stipulate to confusion, maintaining that because Mr. Jefferies affirmed late in his deposition that his testimony only involved the ADDICT mark, it may be interpreted as directed to only the ADDICT mark. The problem with respondent’s logic is that it was respondent’s attorney that made the offer, the offer was not restricted to any particular mark and followed questioning on a variety of topics not necessarily related to any of petitioner’s marks, e.g., petitioner's participation in trade shows. The offer arose when petitioner's attorney was questioning Mr. Jefferies about his familiarity with respondent’s Miami store. Thus, even in view of Mr. Jefferies’ affirmance about testimony provided earlier in his deposition, we do not view a fair construction of respondent’s attorney’s unrestricted offer as being limited to the ADDICT mark, especially in light of the contents of the petition to cancel. Cancellation No. 92046699 8 Respondent’s attorney did not object to any portion of petitioner's notice of reliance, including the evidence regarding a likelihood of confusion between respondent’s mark and ADDICTWEAR, and did not object to petitioner eliciting testimony from petitioner's witness regarding the ADDICTWEAR mark. It is within our discretion to determine whether an issue was tried by implied consent. 6A A. Wright, A. Miller and M. Kane, Federal Practice & Procedure § 1493 (2008) (“The decision whether the issue has been tried by express or implied consent is a matter of the trial court's discretion and will not be reversed except upon a showing of abuse.”) Thus, we do not find any error in our January 2, 2009 decision that respondent was fairly apprised that petitioner's evidence regarding the ADDICTWEAR mark was being offered in support of the unpleaded claim of likelihood of confusion based on the ADDICTWEAR registration, and that likelihood of confusion, including the issue of likelihood of confusion based on the ADDICTWEAR registration, was tried by the consent of the parties.5 See 5 Respondent argues that it “defies reason” to impute consent in view of a stipulation the parties entered into providing that the respondent has made continuous use of its mark in interstate commerce since at least as early as August 12, 2004, a date subsequent to the filing date of petitioner's registration. Had respondent intended this stipulation to be limited to a claim based on ADDICT and not ADDICTWEAR, it should have made that clear in its stipulation, especially in view of the contents of the complaint, which contained numerous allegations regarding priority based on the ADDICTWEAR registration. As filed, the stipulation was not limited to the ADDICT mark. Cancellation No. 92046699 9 Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (“Applicant has raised no objection to opposer's submission of and reliance upon these unpleaded registrations. In view of applicant's lack of objection, we find that the parties have tried, by implied consent, any issues which arise from those additional seven registrations ….) We also address one additional issue raised by respondent, i.e., its contention that petitioner did not argue likelihood of confusion based on the ADDICTWEAR mark in its trial brief, and it is “clear error” for us to “advocate a position of likelihood of confusion on behalf of Petitioner concerning ADDICTWEAR, when Petitioner did not raise the argument itself.” Request at p. 6. We disagree that it is “clear error” for us to have considered the ADDICTWEAR likelihood of confusion claim in view of the contents of petitioner's brief. Petitioner explained in its brief that “[t]he primary issue in this proceeding is priority of use since damage and confusion are not seriously disputed.” Brief at p. 6. Because “confusion [was] not seriously disputed,” a point which respondent did not contest, there was little reason to provide much discussion regarding likelihood of confusion in petitioner's brief. Also, petitioner did discuss the ADDICTWEAR mark in its brief. It stated: Cancellation No. 92046699 10 C. ADDICTWEAR. Addict also owns a U.S. Trademark Registration No. 2,310,612 issued January 25, 2000, for the mark ADDICTWEAR for “Sportswear Clothing, namely, shirts, shorts, hats, pants, jackets and socks” with a filing date of April 15, 1998 and a first use date of March 1996. Exhibit 31, Notice of Reliance Exhibit 1. Addict continues to use the ADDICTWEAR mark on clothing in the United States. Kannangara 47:6-18. Addict’s ADDICTWEAR mark, with a first use date of 1996, has priority over GS&G’s ADDICT mark, with its first use date of August 2004. Brief, pp. 20 – 21. Petitioner's brief stated enough regarding the ADDICTWEAR mark to allow us to consider the issue of likelihood of confusion based on the ADDICTWEAR registration. Decision: Respondent's request for reconsideration is denied. Copy with citationCopy as parenthetical citation