Addict, Ltd.v.GS & G, Inc. USA

Trademark Trial and Appeal Board

Mar 16, 2009

No. 92046699re (T.T.A.B. Mar. 16, 2009)

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
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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
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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.