American Sporting Goods Corp.v.Glory Shoes Co., Inc.

Trademark Trial and Appeal Board

Sep 22, 2004

No. 92031180 (T.T.A.B. Sep. 22, 2004)

Oral Hearing held: Decision mailed:
April 14, 2004 September 22, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
American Sporting Goods Corp.
v.
Glory Shoes Co., Inc.
_____
Opposition No. 91120905 to application Serial No. 75384563
filed on November 4, 1997
Cancellation No. 92031180
_____
Michael A. Painter of Isaacson, Kaufman & Painter for American
Sporting Goods Corp.
Ronald M. St. Marie of Chan Law Group LC for Glory Shoes Co.,
Inc.
______
Before Seeherman, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Glory Shoes Co., Inc. ("Glory") has filed an
application to register the mark "AVA II" and design, as
reproduced below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91120905 and
Cancellation No. 92031180
2
for "bags, namely, shoe bags for travel, travel bags, all purpose
athletic bags, gym bags, leather shopping bags, textile shopping
bags, shoulder bags, and school bags" in International Class 18
and "footwear" in International Class 25."1 Glory is also the
owner of a registration for the mark "AVA" for "footwear" in
International Class 25.2
American Sporting Goods Corp. ("ASG") has respectively
opposed registration of and petitioned to cancel the registration
for the above marks3 on the ground that it "is engaged in the
business of designing, manufacturing and selling footwear and all
purpose sport bags, duffel bags, tote bags, waist packs, shoulder
bags and book bags"; that, in connection therewith, it "has used,
continues to use and owns the following registered trademarks":4
(1) the mark "AVIA," which is registered
for:
1 Ser. No. 75384563, filed on November 4, 1997, which is based on an
allegation of a bona fide intention to use the mark in commerce.
2 Reg. No. 2,237,432, issued on April 6, 1999 from an application filed
on March 7, 1997, which sets forth a date of first use anywhere and in
commerce of October 30, 1997.
3 The Board, in its order instituting these proceedings, indicated that
in view of the combined notice of opposition and petition to cancel
filed by ASG, such proceedings would be treated as having been
consolidated.
4 It is noted that ASG also pleads that it has used, continues to use
and owns Reg. No. 1,880,956, issued on February 28, 1995, for the mark
"AVIA" for "organizing and conducting off road foot races and
competitions" and Reg. No. 1,202,828, issued on July 27, 1982, for the
mark "AVIA" and design for "athletic shoes." However, as to the
former, no evidence was made of record with respect thereto and, as to
the latter, while a certified copy thereof was made of record which
shows that the registration is subsisting and owned by ASG, it is
further noted from the records of the U.S. Patent & Trademark Office
that such registration has since expired for failure to be renewed.
See TBMP §704.03(b)(1)(A) (2d ed. rev. 2004). In view thereof, no
further consideration will be given to either of such registrations.
Opposition No. 91120905 and
Cancellation No. 92031180
3
(a) "athletic shoes" in
International Class 25;5
(b) "t-shirts, sweatsuits, shorts
and polo shorts" in International Class
25;6
(c) "toys and sporting goods;
namely, flying discs, balloons, exercise
devices for exercising hands and wrists
and ankle weights for exercising" in
International Class 28;7 and
(d) "all purpose sport bags, duffel
bags, tote bags, waist packs, shoulder
bags and book bags" in International
Class 18;8 and
(2) the mark "AVIA" and design, which is
registered as reproduced below
for "athletic shoes, t-shirts, sweatsuits,
shorts and polo shirts" in International
Class 25;9
5 Reg. No. 1,202,827, issued on July 27, 1982 from an application filed
on April 15, 1981, which sets forth a date of first use anywhere and
in commerce of February 26, 1981; renewed.
6 Reg. No. 1,348,151, issued on July 9, 1985 from an application filed
on October 29, 1984, which sets forth a date of first use anywhere of
December 1982 and a date of first use in commerce of June 1983;
combined affidavit §§8 and 15.
7 Reg. No. 1,720,437, issued on September 29, 1992 from an application
filed on July 3, 1990, which sets forth a date of first use anywhere
and in commerce of March 1, 1987; renewed.
8 Reg. No. 1,731,119, issued on November 10, 1992 from an application
filed on February 3, 1992, which sets forth a date of first use
anywhere and in commerce of July 1989; renewed.
9 Reg. No. 1,349,604, issued on July 16, 1985 from an application filed
on October 16, 1984, which sets forth a date of first use anywhere of
December 1982 and a date of first use in commerce of June 1983;
combined affidavit §§8 and 15.
Opposition No. 91120905 and
Cancellation No. 92031180
4
that the registrations for the above marks are valid and
subsisting; that since at least as early as February 26, 1981 and
long prior to any use by Glory of its "AVA" marks, ASG, "by and
through its predecessors-in-interest, has extensively and
continuously used in interstate commerce" its "AVIA" marks in
connection with its goods; and that, due to the similarity
between Glory's "AVA" marks and ASG's "AVIA" marks, and the
"related nature" of their respective goods, Glory's "AVA" marks
so resemble ASG's "AVIA" marks as to be likely to cause
confusion, or to cause mistake, or to deceive.
Glory, in its answer, has denied the salient
allegations set forth in the combined pleading.10
The record includes the pleadings, the file of the
opposed application and the file of the involved registration.
As its case-in-chief, ASG has submitted (1) the testimony, with
exhibits, of (a) Edward (a/k/a Ed) L. Goldman, its vice president
of marketing (taken on August 21, 2001),11 and (b) James Ho,
10 Although Glory also alleged, as a putative affirmative defense, that
the relief sought by ASG "is barred by the doctrine of laches," no
evidence with respect thereto was offered at trial. Accordingly, no
further consideration will be given to such defense.
11 Glory, in its brief, states that it "objects to ASG's summary [in
its brief of such] ... evidence on the grounds that it misrepresents
the testimony taken and ... is based on testimony and Exhibits to
which objection was timely made." As to the former, since TBMP
§801.01 (2d ed. rev. 2004) provides, inter alia, that "the facts and
arguments presented in the brief must be based on the evidence offered
at trial," suffice it to say that we have considered only those facts
and arguments referred to by opposer which have support in the record.
With respect to the latter, applicant has reiterated in its brief a
host of objections which one of its attorneys interjected during Mr.
Goldman's August 21, 2001 deposition. While such objections to the
witness' testimony and the exhibits introduced in connection therewith
were wide-ranging and extensive (we note, as an aside, that it is only
a modest exaggeration to say, as ASG's counsel remarked in a colloquy
with an attorney for applicant, that "the only thing you haven't
Opposition No. 91120905 and
Cancellation No. 92031180
5
Glory's president (taken on August 24, 2001); and (2) notices of
reliance on (a) certified copies of the pleaded registrations
noted above, showing that each of such registrations is
subsisting and owned by ASG, and (b) Glory's responses to ASG's
interrogatories. Glory, as its case-in-chief, likewise has
submitted (1) the testimony, with an exhibit or exhibits
(respectively), of (a) Ed Goldman (taken on April 10, 2003) and
(b) James Ho (taken on June 2, 2003);12 and (2) a notice of
objected to is his name" (Goldman 8/21/01 dep. at 77-78)), the bulk of
the objections were on grounds of lack of relevance, lack of first-
hand personal knowledge by the witness and/or, as to documentary
exhibits, hearsay and/or lack of authentication. Rather than burden
this opinion, however, with a lengthy discussion of each of Glory's
numerous objections, suffice it to say that, although the testimony
and exhibits pertaining to the use of ASG's "AVIA" marks abroad is
obviously irrelevant (since the issue herein involves likelihood of
confusion in the United States) and has therefore not been given any
consideration, none of Glory's remaining objections is considered to
be well taken for the reasons explained by ASG in its reply brief.
Accordingly, the testimony and exhibits objected to by Glory have not
been excluded as inadmissible and, instead, have been considered for
whatever probative value such may have.
12 Like its previously noted objection with respect to ASG's deposition
of Mr. Goldman, Glory objects in its brief to the characterization and
admissibility of certain portions of Glory's deposition of Mr. Ho. In
particular, although Glory cites to portions of ASG's deposition of
Mr. Ho on August 24, 2001, ASG in its reply brief correctly points out
that such references actually pertain to the June 2, 2003 deposition
of Mr. Ho, which includes objections raised by an attorney for Glory
during ASG's cross-examination of the witness. As indicated
previously, we have considered, with respect to ASG's characterization
of the evidence, only those facts and arguments which have support in
the record. Moreover, as to the objections reiterated by Glory in its
brief, we concur with ASG that, for the reasons explained in its reply
brief, "the objections are without merit and should be denied."
Specifically, while Glory's objections were based on the ground that
the testimony, including that relating to an exhibit, was beyond the
scope of the direct examination of Mr. Ho, we agree with ASG that its
cross-examination "was appropriate since it was either within the
scope of the direct examination which took place on June 2, 2003 or
was for the purpose of impeachment of the witness" in that the attack
on Mr. Ho's credibility was based upon earlier "statements he had made
during his testimonial deposition" on August 24, 2001. Accordingly,
because the testimony objected to by Glory is admissible, it has been
considered for whatever probative value it may have.
Opposition No. 91120905 and
Cancellation No. 92031180
6
reliance on various official records13 and printed publications.14
Briefs have been filed and an oral hearing, attended by counsel
for the parties, was held.
13 Noting, inter alia, that Glory relies upon both certified copies of
its Registration Nos. 2,237,432 (its involved registration) and
2,352,232 for, respectively, the marks "AVA" and "AVA" and design as
well as copies of its applications for restriction, in each instance,
of the goods set forth therein from "footwear" to "work boots and
safety boots," ASG has objected in its initial brief to consideration
of Reg. No. 2,352,232 and the applications for restriction of the
registrations. Specifically, ASG contends that such are "irrelevant"
to this proceeding and "should either be stricken from the record or
should be given no consideration whatsoever." As grounds therefor,
ASG asserts that Registration No. 2,352,232 "is the subject of a
collateral cancellation proceeding commenced by ASG and designated as
Cancellation No. 92/042,265"; that "applications for restriction of
goods are neither printed publications nor official records" under
Trademark Rule 2.122(e); and thus that such registration is irrelevant
herein and the applications for restriction of goods are not proper
subject matter for introduction by means of a notice of reliance. In
addition, as to the implicit request to amend the registration
involved herein in accordance with the application for restriction of
the goods therein, ASG points out that, under Trademark Rule 2.133(a),
"a registration which is involved in an inter partes proceeding may
not be amended except with the consent of the other party ... and the
approval of the Board"; that "[a]s is evident from the document
attached to the Notice of Reliance, Glory neither sought the consent
of ASG nor was consent given" to the application for restriction; and
that "[m]ost importantly, ... the purported restriction of the goods
is specious since it is in open conflict with the testimony of Glory's
President, James Ho," who stated that Glory offers "urban footwear"
(i.e., shoes which look like a "kind of a work boot type of shoes but"
which are "without the safety functions"). (Ho 8/24/01 dep. at 8.)
Glory, in its brief, has failed to respond to ASG's objections.
Tellingly, its notice of reliance contains no statement of the general
relevance of its applications for restriction as required by Trademark
Rule 2.122(e) and the claimed relevance of its registrations is merely
that they "show Applicants [sic] original registration of the
mark[s]." Furthermore, in accordance with TBMP §704.03(b)(1)(A) (2d
ed. rev. 2004), not only has Reg. No. 2,352,232 now been canceled due
to the default judgment entered in Cancellation No. 92042265, but
pursuant to TBMP §514.03 (2d ed. rev. 2004), Glory's implicit request
to amend its involved registration to restrict the goods set forth
therein is denied since such request is considered to be untimely and,
in any event, Glory has failed to show that the entry of the proposed
restriction would serve to avoid a likelihood of confusion.
Accordingly, no further consideration will be given either to the copy
of Reg. No. 2,352,232 or to the copies of the applications for
restriction.
14 ASG, in its initial brief, has also objected to Glory's reliance on
a copy of a brochure of its products and a sheet depicting a hang tag
Opposition No. 91120905 and
Cancellation No. 92031180
7
Priority is not in issue in the opposition proceeding
and lies in favor of ASG in the cancellation proceeding. In
particular, because ASG has proven, by the certified copies
thereof, that its pleaded registrations for its above-noted
"AVIA" marks are subsisting and owned by ASG, priority is not in
issue with respect to its opposition to Glory's "AVIA II" and
design mark. See King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Moreover, because
the certified copies of such registrations additionally show that
the filing dates of the applications which matured into those
registrations are earlier than the filing date of the application
which resulted in Glory's involved registration for its "AVA"
mark, ASG has therefore established priority vis-à-vis such marks
for purposes of the petition to cancel. See, e.g., Hilson
Research Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, 1428-29 (TTAB 1993) at n. 13; and American Standard Inc. v.
AQM Corp., 208 USPQ 840, 841-42 (TTAB 1980). Furthermore, the
record demonstrates that in any event ASG's "AVIA" marks have
and posters, contending that such "business records do not constitute
printed publications" within the meaning of Trademark Rule 2.122(e)
and thus are not proper subject matter for a notice of reliance. ASG
also asserts that such business records "have no probative value in
this proceeding" and "should be stricken from the record or given no
consideration whatsoever." Although Glory's brief is silent with
respect thereto, we note that, while ASG is technically correct that a
party's brochures, hang tags and posters are not proper subject matter
for introduction by means of a notice of reliance, such evidence
otherwise forms part of the record herein, and will not be heard to be
lacking in probative value, since the brochure previously was
introduced by ASG as Exhibit 34 to its August 21, 2001 deposition of
Mr. Goldman and the hang tag and posters were previously offered by
ASG as Exhibit 38 to its August 24, 2001 deposition of Mr. Ho. In
consequence thereof, the copies of such evidence submitted by Glory
are considered surplusage and need not be stricken or otherwise denied
consideration.
Opposition No. 91120905 and
Cancellation No. 92031180
8
been in continuous use since on or before both the November 4,
1997 filing date of Glory's intent-to-use application for its
"AVA II" and design mark and the March 7, 1997 filing date of
Glory's underlying application for its registration for its "AVA"
mark (which is earlier than its proven date of first use of
October 30, 1997 for such mark). Accordingly, the focus of our
determination is on the issue of whether Glory's "AVA" and "AVA
II" and design marks, when respectively used in connection with
the goods set forth in its involved registration and application,
so resemble one or both of opposer's "AVIA" marks for any or all
of its various goods as to be likely to cause confusion, mistake
or deception as to source or sponsorship.
According to the record, ASG's vice president of
marketing, Mr. Goldman, has been employed by ASG since August
1996 and his duties in his current position are "[t]o manage all
facets of the consumer marketing arena for the AVIA brand."
(Goldman 8/21/01 dep. at 7.) Recounting his admittedly acquired
knowledge of the history or origins of such brand, Mr. Goldman
testified that ASG purchased the "AVIA" brand, including various
associated registrations, from AVIA Group International, Inc., an
entity affiliated with athletic shoe manufacturer Reebok
Worldwide, in May 1996. Such entity, in turn, had obtained the
"AVIA" brand by purchase thereof from Pensa, Inc., which had
founded the brand in the early 1980s and by no later than 1981.
The "AVIA" marks, which as indicated earlier, are the subjects of
ASG's subsisting registrations therefor, are in use and have been
Opposition No. 91120905 and
Cancellation No. 92031180
9
in continuous use since at least the date of their acquisition by
ASG. In particular, the "AVIA" and design mark is used on "[a]ll
packaging for ... AVIA products." (Id. at 13.) The proper
pronunciation of the term "AVIA," Mr. Goldman confirmed, is as
follows:
Q Avia. So that is "ah" as in
abandon, and then V as in the letter V, and
"ah" as in abandon. Avia.
A That is correct.
Q And the emphasis is on the second
syllable, Avia?
A That's correct.
(Goldman 4/10/03 dep. at 6.)
ASG promotes the sale of its "AVIA" brand products
"[p]rimarily through coop advertising with retail partners; [and]
through national advertising campaigns, in print media, at point
of sale, and through regional promotions around the country."
(Goldman 8/21/01 dep. at 19-20.) In particular, for the five
years since 1996, ASG has advertised its "AVIA" brand shoes in
Footwear News, a weekly magazine for footwear buyers which Mr.
Goldman regards as the leading publication in the footwear field,
and has done other trade advertising. ASG has also done consumer
advertising through print media, broadcasting, promotions and
point-of-sale displays. Specifically, as to print ads, ASG
spends up to $7,000,000 annually to advertise in over 20
magazines, including Shape, Fitness, Maxim, The Source, Vibe,
Spin, Running Times, Honey and Nylon. ASG has also advertised in
such magazines as Gear, Mademoiselle, Self, Glamour, GQ, Bride's,
Opposition No. 91120905 and
Cancellation No. 92031180
10
Vogue, Gourmet, Bon Appetite, Allure and Vanity Fair. As of
August 2001, ASG had over 15 different print ads running
concurrently, and it changes its print ad campaign every three
months to represent different categories of "AVIA" footwear.
ASG also promotes the sale of its "AVIA" brand products
by publishing catalogs, which "are distributed exclusively to the
... trade-buying public, [i.e.,] the retailers." (Id. at 20.)
In addition, since 1996, it has annually displayed its "AVIA"
brand footwear (or a combination of such footwear and its
apparel) at several trade shows, including attendance at "The
Super Show, World Shoe Association, Action Sports Retailer, The
Men's Apparel Guild, [and] The Footwear Association of New York."
(Id. at 56.) ASG has also participated in the National Sporting
Goods Association and Personal Trainer trade shows.
The "AVIA" brand products which ASG sells include, in
addition to a collection of what it calls "athletic performance"
or "white-base footwear," "a hiking [footwear] collection, a
lifestyle footwear collection, an apparel collection, a sport bag
collection, a hat collection, [and a] T-shirt collection." (Id.
at 21.) In particular, as to the footwear which it offers under
its "AVIA" marks, Mr. Goldman noted that "[t]he categories of
shoes run the gamut" from "[r]unning, walking, aerobics, cross
training, hiking, or rugged footwear," including over 20 models
of hiking shoes, to "water sports, and casual or lifestyle"
shoes. (Id. at 22.) Furthermore, Mr. Goldman stated that
"[h]iking shoes and boots are synonymous, are one and the same,"
Opposition No. 91120905 and
Cancellation No. 92031180
11
and are also considered in the footwear industry as a kind of
"[c]asual footwear." (Goldman 4/10/03 dep. at 10.)
ASG's customers "range from sporting goods chains,
[and] family shoe stores, to athletic specialty retailers."
(Goldman 8/21/01 dep. at 28.) Such customers include, for
example, The Sports Authority, Big 5 Sporting Goods, Gart's
Sports, Foot Locker, Lady Foot Locker, Finish Line, Venator Group
and Sport Chalet. ASG's "AVIA" footwear is also sold directly to
consumers over the Internet and is available in department
stores, such as Macy's and Nordstrom, and through specialty
retailers, such as REI. In all, because ASG basically will
market its "AVIA" brand products to any retailers who desire to
sell them, such goods are available at over 10,000 retail outlets
in all 50 states and all major cities.
ASG's annual gross sales of and advertising expenses
for its "AVIA" brand products during the roughly five-year period
since the brand was acquired were indicated to be as follows:
Year Gross Sales Advertising Expenses
1996 $39,318,000 $850,000
1997 $79,291,000 $6,500,000
1998 $81,112,000 $7,500,000
1999 $93,500,000 $8,000,000
2000 $93,300,000 $7,000,000
(Id. at Exhibit 31.) While no sales figures were provided for
any period of 2001, the advertising budget for such year was
$10,000,000, of which in excess of $7,000,000 had been spent as
of Mr. Goldman's deposition on August 21, 2001. Based upon
certain research reports on market share to which it subscribes
and relies upon, Mr. Goldman testified to his belief that ASG's
Opposition No. 91120905 and
Cancellation No. 92031180
12
"AVIA" brand of footwear "represents one of the top ten
manufacturers of footwear in all categories." (Id. at 80.) He
also noted that, at the retail level, prices for ASG's "AVIA"
footwear range from $30 or $40 at the low end to $90 or $100 per
pair at the high end. ASG regards its competitors to its "AVIA"
brand as "anyone who sells footwear" of "any kind." (Goldman
4/10/03 dep. at 22-23.)
On cross-examination by an attorney for Glory, Mr.
Goldman stated that he did not know if the term "AVIA" has any
meaning other than as a mark for ASG's various products. With
respect to ASG's use of its "AVIA" marks in connection with
hiking boots, which are a type of footwear which is identical in
legal contemplation to a product which Glory markets under its
"AVA" mark, Mr. Goldman testified that, from his review of
catalogs and corporate records, the first use of "AVIA" as a mark
in connection with the sale of hiking boots was "prior to 1990";
that the term "'hiking boots' is a broad classification of
athletic footwear"; that ASG "probably sell[s] in excess of a
hundred thousand pair of outdoor classified footwear" annually;
and that by "outdoor classified footwear" he is referring to
"[f]ootwear intended for hiking outside," which includes "trail
running" footwear. (Goldman 8/21/01 dep. at 93.) Furthermore,
Mr. Goldman noted that ASG's "AVIA" hiking boots were displayed
at "probably all" of the trade shows that ASG has attended
inasmuch as he was present and saw such products there. (Id. at
106.)
Opposition No. 91120905 and
Cancellation No. 92031180
13
As to the use of its "AVIA" marks in connection with
work boots, which are another kind of footwear which is legally
identical to a product which Glory actually markets under its
"AVA" mark, Mr. Goldman testified on cross-examination as
follows:
Q. Has AVIA ever used its brand name
in connection with the sale of work boots?
A. Yes, it has. Work boots are --
again, the classification ... is very
undefined here, so ... -- to a wholesale
consumer, [that] includes everything from ...
what you might be considering [as] rugged
footwear to work boots to any other footwear
used for outdoor purposes, so ... it's an
undefined category.
....
Q. Does AVIA target any of its
advertising, with respect to its shoes, to
people who might use the shoes as work boots,
as opposed to for use outdoors?
A. Again, ... you'd have to clarify
what is a work boot intended for.
Q. Well to my mind, a work boot would
be something that somebody would wear to
work, as opposed to something that's intended
for hiking.
A. Yes. We manufacture ... tens of
thousands of pairs of shoes intended for
work-related functions. Yes.
Q. What sorts of work-related
functions are you referring to?
A. Restaurant staffing, a variety of
... casual work, dress work, and ...
performance work, ... "performance" meaning
the need for grip, traction, those types of
things. Yes.
Q. How long has AVIA used its market
[sic] in connection with the sale of the
shoes you just described?
Opposition No. 91120905 and
Cancellation No. 92031180
14
A. I'd have to check the records.
....
Q. Do you think AVIA has been doing so
for the last three years?
A. Yes.
(Id. at 94-97.) Moreover, according to Mr. Goldman, "AVIA" brand
shoes which could broadly be considered work shoes were displayed
at the trade shows which ASG has attended.
Additionally, upon cross-examination by an attorney for
Glory, Mr. Goldman admitted that he did not know whether ASG has
received any customer complaints regarding Glory's "AVA" shoes,
as opposed to shoes bearing ASG's "AVIA" brand name, because
"[t]hat would be a customer service function" and "[t]hey
wouldn't call me." (Id. at 101.) Mr. Goldman also stated that
he did not know of anyone else using the "AVIA" marks on footwear
other than ASG and that he did not know of anyone else besides
Glory which is using a mark which he regards as confusingly
similar mark to ASG's "AVIA" marks. He conceded, however, that
he is not aware of any instances in which consumers have confused
"AVIA" shoes with any other brand of footwear, including Glory's
"AVA" shoes.
Glory is a wholesaler of footwear and has been engaged
in such business since around September 1993. With respect, in
particular, to its "AVA" and "AVA II" and design marks, such
marks were chosen, at the suggestion of Glory's president, James,
Ho, because they were short for two of its other marks, "Z
AVALANCHE!" and "AVALANCHE." Moreover, according to Mr. Ho, when
Opposition No. 91120905 and
Cancellation No. 92031180
15
he decided to shorten such marks to "AVA," he was not aware of
ASG's "AVIA" marks. The term "AVA," according to Mr. Ho, is
correctly pronounced "as in the actress Ava Gardner," rather than
as the separate letters "A-V-A" or with an "A" sound as in the
word "abandon," and has two syllables. (Ho 6/2/03 dep. at 6.)
Glory's "AVA" and "AVA II" and design marks were first
used in connection with work boots and such marks have also been
used in connection with hiking boots, with continuous use in
commerce of the "AVA" mark having begun on October 30, 1997. The
use of its "AVA II" and design mark, however, has been
"abandoned."15 (Responses to Interrogatory Nos. 3 and 4.)
Specifically, the "AVA" mark has been used on or in connection
with work boots and hiking boots, which Glory sells wholesale to
individual, privately owned retailers in the states of
California, Michigan, Massachusetts and Nevada.
However, according to Mr. Ho's testimony depositions,
Glory markets "all kind of shoes," although its "major, main
footwear are work boots, and ... safety footwear in terms of
steel toe, fireproof, waterproof type[s] of shoes." (Ho 8/24/01
dep. at 6.) Nonetheless, Glory "also do[es] footwear for casual
15 It is nonetheless noted that despite Glory's unequivocal statements
that its use of the "AVA II" and design mark has been abandoned, ASG
never moved for leave under Fed. R. Civ. P. 15(a) to amend its
pleading to assert such abandonment as an additional ground for
opposition, nor is it the case that the pleadings can be deemed to be
amended pursuant to Fed. R. Civ. P 15(b) because such issue plainly
was never tried by either the express or implied consent of Glory.
Nevertheless, since it is clear that Glory has abandoned its "AVA II"
and design mark, the parties are advised that if Glory ultimately
prevails herein, its involved application will be remanded to the
Examining Attorney pursuant to Trademark Rule 2.131 for reexamination
with respect to the issue of abandonment.
Opposition No. 91120905 and
Cancellation No. 92031180
16
purpose[s]" which is "kind of [a] criss-cross between work and
casual" in that such can be worn "to work and also after work."
(Id. at 7.) Glory uses the mark "ROAD MATE" mainly to designate
its work boots; it uses the mark "BIG BEAR" primarily to identify
its hiking boots; it uses the mark "HEAVY UNIT" to designate
lower-priced industrial purpose footwear; and it uses the marks
"AVALANCHE" and "AVA" in connection with "urban footwear," which
it characterizes as "footwear ... for young people such [as are]
in high school and college." (Id. at 8.) Such footwear consists
of "white shoes, such as sneakers, and brown shoes," which are a
"kind of working type of boots for young people" but do not
provide "the protective function" of working boots. (Id.) As
indicated earlier, Mr. Ho derived the "AVA" mark, which was first
used by Glory in the United States in connection with footwear on
October 30, 1997, from his "AVALANCHE" mark, which was first used
by Glory around 1993. A "full search" as to the availability of
"AVA" as a trademark was done for Glory by its counsel's firm
herein prior to the commencement of its use of such mark. (Id.
at 14.)
According to its president, Glory does not manufacture
any athletic shoes which bear the mark "AVA" nor does it sell
under such mark what Mr. Ho refers to as "sports shoes." (Ho
6/2/03 dep. at 23.) Similarly, it does not manufacture, sell or
promote T-shirts, sweatsuits, shorts, polo shirts, toys, sporting
goods, all purpose sport bags, duffel bags, tote bags, waist
packs, shoulder bags and book bags using the "AVA" mark.
Opposition No. 91120905 and
Cancellation No. 92031180
17
Glory does "very little" advertising of its footwear in
the United States because such is "very costly." (Ho 8/24/01
dep. at 23.) Although it has promoted its "ROAD MATE" collection
in Footwear News, it has not done so for its "AVA" collection.
Instead, the advertising which it does is principally cooperative
advertising, by which it advertises in its customers' circulars.
However, Glory also advertises in its own flyers and posters,
which it gives to its customers to "fix in the store[s]," as well
as advertising in its own catalogs, which it likewise distributes
to retailers. (Id. at 24.) Such promotional material includes
advertising of its "AVA" mark. Glory does not advertise in the
consumer magazines in which ASG regularly advertises. However,
like ASG, Glory attends the World Shoe Association trade show,
where it has displayed its catalogs, footwear and hosiery
products.
While Glory attempts to market its "AVA" footwear in
all states, with the exception of Alaska, it actually sells such
products only in the states, as mentioned above, of California,
Michigan, Massachusetts and Nevada. In those states in which it
actually sells its goods, its products are sold in "any kind of
footwear store" and, in the case of one of its customers, such
goods are sold in a sporting goods store. (Id. at 31.)
Glory, like ASG, is unaware of any instances of actual
confusion between its marks and ASG's "AVIA" marks. Nonetheless,
Glory admits that, unlike ASG's sales of its "AVIA" footwear, it
does not sell its "AVA" footwear through such sporting goods and
department store retailers as Big 5 Sporting Goods, The Sports
Opposition No. 91120905 and
Cancellation No. 92031180
18
Authority, Sport Chalet and Nordstrom. According to its
president, Glory does not consider ASG to be a competitor because
"[w]e are in a different market which sells ... [a] different
category of product." (Ho 6/2/03 dep. at 27.) Specifically, Mr.
Ho elaborated as follows:
Q How would you describe your market?
A ... we have work boots and we have
safety boots ... for people who use either at
work or at their leisure.
Q And how would you describe the ...
Avia line, as far as you know?
A To me, it's ... running shoes, it's
sports shoes that I will wear for track.
(Id.) As to the discrepancy between his indication in an earlier
answer to an interrogatory that Glory uses its "AVA" mark on work
boots and hiking boots, Mr. Ho replied that he "considered a kind
of hiking boot as safety boots." (Id. at 35.) Mr. Ho conceded,
on cross-examination, that technical differences in footwear,
such as details in manner of construction and materials, would
not be recognized by the ultimate consumer, although he insisted
that "the consumer would be able to know the purpose" (e.g.,
hiking boots) of different types of footwear. (Id. at 52.)
We find upon consideration of the pertinent factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), for determining whether there is a
likelihood of confusion that, because each of such factors either
favors ASG or is neutral, at a minimum confusion is likely from
the contemporaneous use of the parties' marks in connection with
such legally identical goods as their respective bags and
Opposition No. 91120905 and
Cancellation No. 92031180
19
footwear.16 Specifically, as to the du Pont factor concerning
the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial
impression, it must be kept in mind that, as pointed out in
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied, 506
U.S. 1034 (1994), "[w]hen marks would appear on virtually
identical goods ..., the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion declines."
Here, while there are some minor differences between the
respective marks as noted by Glory in its brief, overall its
"AVA" and "AVA II" and design marks are substantially similar in
sound, appearance and commercial impression to ASG's "AVIA" and
"AVIA" and design marks, given that the term "AVA" differs from
the term "AVIA" only by the presence of the letter "I" in the
latter.
In view thereof, and since it is well settled that
there is no correct pronunciation of a mark, see, e.g., Gio.
Budon & C. S.p.A. v. Buitoni Foods Corp., 205 USPQ 477, 482 (TTAB
1979); Yamaha International Corp. v. Stevenson, 196 USPQ 701, 703
(TTAB 1977); and Sterling Drug Inc. v. Sankyo Co., Ltd., 139 USPQ
16 Where there is a likelihood of confusion as between any of the goods
listed in the plaintiff's registration(s) and those set forth in the
defendant's involved application(s) and/or registration(s), such is
sufficient to support a finding of likelihood of confusion as to the
entire class of goods in the defendant's application(s) and/or
registration(s). See, e.g., Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Shunk
Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA
1963) ["the board properly held that where there is likelihood of
confusion as to any of the goods listed in the application, it is not
necessary to rule on other goods listed therein"].
Opposition No. 91120905 and
Cancellation No. 92031180
20
395, 396 (TTAB 1963), the term "AVA" in Glory's marks is readily
susceptible to the first syllable thereof being pronounced, like
the first syllable of the term "AVIA," in the same manner as the
initial syllable of the word "abandon," especially since the last
syllable of both terms is likewise spoken the same as the initial
portion of the word "abandon." On the other hand, the first
syllable of the term "AVIA" is just as capable of being
pronounced with a long "A," like that of the first syllable of
the given name of movie actress Ava Gardner, that is, in the same
manner as applicant contends that its "AVA" marks would be
pronounced. Moreover, and in any event, even if actual and
prospective consumers were to pronounce the terms "AVA" and
"AVIA" as Glory and ASG respectively maintain is the proper
pronunciation, the marks still sound substantially alike.
Similarly, the absence or presence of the letter "I" in
the terms "AVA" and "AVIA" fails sufficiently to distinguish the
marks at issue visually. Among other things, it should be noted
that because Glory's "AVA" mark is registered in the form of a
typed drawing, the depiction thereof is not limited to a
particular manner of display. See, e.g., Phillips Petroleum Co.
v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971).
Such registration consequently covers the use of the "AVA" mark
by Glory in any reasonable style of lettering, including the bold
and slanted manner in which ASG depicts its "AVIA" and design
mark. Furthermore, while Glory's "AVA II" and design mark
contains several design features, the dominant literal element
thereof, which customers would utilize when asking about or
Opposition No. 91120905 and
Cancellation No. 92031180
21
calling for Glory's various bags and footwear, is the term "AVA,"
given its prominent manner of display in contrast to the
subordinate depiction of the designation "II." It thus is the
case that visually, the marks "AVA" and "AVA II" and design are
substantially similar to the marks "AVIA" and "AVIA" and design.
As to any similarity or dissimilarity in connotation,
the respective marks are basically arbitrary terms which are
devoid of any ordinary dictionary or other meaning with the
exception of their trademark significance. While Glory contends,
in its brief, that "AVIA connotes the verb 'To Fly'" whereas,
"[b]y contrast, AVA is short for avalanche, connoting the
mountains and danger," the record fails to support either
proposition. In particular, the evidence simply does not show
that, to retailers and/or the ultimate customers for the parties'
goods, the mark "AVIA" signifies or suggests flying,17 or that
the mark "AVA" is regarded as a shortened version of Glory's "Z
17 The sole evidence with respect thereto consists of the following
testimony by Mr. Goldman:
Q Do you know if the word Avia has any meaning
other than to connote your product? Identify your product.
A I believe it has a dramatic meaning to fly or --
there is a -- some definition of Avia, however, it's
meaningless with respect to the marketing and the brand of
Avia.
Q Okay. You don't use a flying theme or anything
similar to that --
A No.
Q -- in your marketing?
A That's correct.
(Goldman 4/10/03 dep. at 64-65.)
Opposition No. 91120905 and
Cancellation No. 92031180
22
AVALANCHE!" or "AVALANCHE" marks, from which Mr. Ho claims to
have derived the "AVA" mark. Furthermore, while we recognize
that "AVA" is a feminine name, there is nothing in the record
which even suggests that buyers would attribute such connotation
to applicant's mark. Accordingly, and in view of the substantial
similarities between the respective marks, as discussed above, in
terms of sound and appearance, the overall commercial impressions
conveyed thereby are substantially similar as well. Such
similarities are thus a du Pont factor which favors ASG.
With respect to the du Pont factors which pertain to
the similarity or dissimilarity of the goods and the similarity
or dissimilarity of established, likely to continue trade
channels, such factors clearly favor ASG. In this regard, it is
well settled that the registrability of a defendant's involved
mark(s) must be evaluated on the basis of the identification(s)
of its goods as set forth in its subject application(s) and/or
registration(s) for its mark(s) and the identification(s) of the
goods as recited in the pleaded registration(s) made of record by
a plaintiff for its mark(s), regardless of what the record may
reveal as to the particular nature of the respective goods, their
actual channels of trade, or the classes of purchasers to which
they are in fact directed and sold. See, e.g., Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815-16 (Fed. Cir. 1987). It is also well established that,
absent any specific limitations or restrictions in the
Opposition No. 91120905 and
Cancellation No. 92031180
23
identification(s) of goods as listed in a defendant's subject
application(s) and/or registration(s) and in the
identification(s) of goods as set forth in a plaintiff's pleaded
registration(s), the issue of likelihood of confusion must be
determined in light of a consideration of all normal and usual
channels of trade and methods of distribution for the respective
goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne Products Co.
v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973).
Here, as broadly identified in the subject application
and registration and as set forth in the pertinent pleaded
registrations, Glory seeks to register its "AVA II" and design
mark for, on the one hand, "bags, namely, shoe bags for travel,
travel bags, all purpose athletic bags, gym bags, leather
shopping bags, textile shopping bags, shoulder bags, and school
bags," and "footwear," on the other hand. In addition, Glory
owns a registration for its "AVA" mark for "footwear." Likewise,
ASG owns a registration for its "AVIA" mark which lists "all
purpose sport bags, duffel bags, tote bags, waist packs, shoulder
bags and book bags," and it owns registrations for its "AVIA" and
"AVIA" and design marks for, inter alia, "athletic shoes."
Plainly, on their face, Glory's various "bags" are legally
identical in part and otherwise closely related to those of ASG,
while Glory's "footwear" encompasses ASG's "athletic shoes."
Moreover, as identified, neither parties' goods contain any
Opposition No. 91120905 and
Cancellation No. 92031180
24
express limitation or restriction as to types of purchasers or
channels of distribution. Thus, and as the record discloses, the
parties' bags and footwear would be sold to the same classes of
purchasers, including footwear retailers as well as ultimate
consumers such as fashion-conscious young adults, and would be
distributed through the identical channels of trade, including
specialty footwear retailers, sporting goods outlets and
department stores. Furthermore, and in any event, the record
discloses that even if Glory's "footwear" were to be considered
as limited to the kinds of work boots and hiking boots on which
it has actually used and continues to use its "AVA" mark, such
goods include shoes which, like ASG's "AVIA" brand athletic
shoes, are used as casual or "urban" footwear by young adults and
that ASG also markets shoes under its "AVIA" marks for use as
work shoes and hiking shoes. Consequently, when such identical
or otherwise closely related goods are sold under the
substantially similar marks at issue herein, confusion as to the
origin or affiliation of the respective goods is likely to
result.18
As to the du Pont factor which concerns the conditions
under which and buyers to whom sales are made, it is notable that
Glory, despite its assertion that such factor is indeed relevant,
18 Suffice it also to say that, even if we had sustained all of the
numerous evidentiary objections reiterated by Glory in its brief, we
would still find a likelihood of confusion herein based solely on the
substantial similarities in the respective marks and the identical in
part and otherwise closely related nature of the parties' goods as set
forth in Glory's subject application and registration and ASG's
pertinent registrations.
Opposition No. 91120905 and
Cancellation No. 92031180
25
does not otherwise discuss the matter in its brief and ASG
likewise fails to address it in its briefs. Suffice it to say,
however, that while the retailers who buy the parties' goods are
obviously sophisticated purchasers, the ultimate consumers of
such goods are ordinary, reasonably prudent customers who
constitute members of the general public. Given, for example,
the relatively modest price points (in the range of between,
roughly $30 or $40 to $90 or $100 per pair) at which footwear is
available to the ordinary consumer, the purchasers thereof would
not be expected to exercise a great deal of deliberation or care
in the selection of such goods or that they would be likely to
note the presence or absence of the letter "I" within the
respective marks. Moreover, even in the case of footwear
retailers, the fact that such dealers may be considered to be
sophisticated, highly discriminating buyers "does not necessarily
preclude their mistaking one trademark for another" or establish
that they otherwise are entirely immune from confusion as to
source or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re Decombe, 9
USPQ2d 1812, 1814-15 (TTAB 1988); and In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). Thus, the conditions under
which and buyers to whom sales are made is a du Pont factor which
further favors ASG.
With respect to the du Pont factor of the fame of the
prior mark in terms of sales, advertising and length of use, ASG
contends in its initial brief that its "AVIA mark should be
considered as a strong, well-known mark in the field of athletic
Opposition No. 91120905 and
Cancellation No. 92031180
26
footwear which is therefore entitled to a broad scope of
protection." While the evidence properly of record is
insufficient to establish that ASG's "AVIA" marks are famous, we
nevertheless concur with ASG that its gross sales and advertising
figures, its promotional materials, its many years of continuous
use of such marks, its position as one of the top ten
manufacturers of footwear in all categories, and the absence of
any third-party uses of similar marks suffice to collectively
demonstrate that ASG's "AVIA" marks are indeed well known and
hence strong marks in the athletic footwear field. Thus, the
demonstrated strength of ASG's "AVIA" marks for athletic footwear
is an additional factor which favors ASG.
As to the du Pont factor of the length of time during
and conditions under which there has been "concurrent use"
without evidence of actual confusion, the record is clear that
neither ASG nor Glory is aware of any instances of actual
confusion with respect to the marks at issue during a period of
nearly six years of contemporaneous use. Glory essentially
contends in its brief that such fact is persuasive evidence that
there is no likelihood of confusion and that, in particular, "the
instant cancellation proceeding is nothing more of [sic] an
academic assault on the AVA trademark."
Although the absence of any instances of actual
confusion over a significant period of time is indeed a du Pont
factor which is indicative of no likelihood of confusion, it is a
meaningful factor only where the record demonstrates appreciable
and continuous use by the defendant of its mark in the same
Opposition No. 91120905 and
Cancellation No. 92031180
27
markets as those served by the plaintiff under its mark. See,
e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992); and Chemetron Corp. v. Morris Coupling & Clamp Co.,
203 USPQ 537, 541 (TTAB 1979). Specifically, there must be
evidence showing that there has been an opportunity for incidents
of actual confusion to occur. See, e.g., Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000).
In this case, the absence of any instances of actual
confusion is not considered to be a mitigating factor favoring
Glory inasmuch as, in the period spanning the approximately six
years since October 30, 1997 during which the parties have
contemporaneously used their respective "AVA" and "AVIA" marks,
Glory's sales of its footwear have been limited to the states of
California, Michigan, Massachusetts and Nevada rather than the
entire United States, as is the case with ASG's sales of its
athletic shoes. More importantly, there is no indication as to
the level or extent of Glory's sales and it admits that, unlike
ASG's sales of its "AVIA" footwear, Glory does not sell its "AVA"
footwear through such sporting goods and department store
retailers as Big 5 Sporting Goods, The Sports Authority, Sport
Chalet and Nordstrom. Furthermore, as to promotion of its "AVA"
footwear, Glory concedes that what little advertising it has done
has not been in the same consumer magazines as those in which ASG
regularly advertises. In the case of trade advertising, Glory
admits that it has not promoted its "AVA" mark in the leading
industry trade journal, Footwear News, where ASG regularly
advertises its "AVIA" shoes. In fact, the sole common trade
Opposition No. 91120905 and
Cancellation No. 92031180
28
channel which the parties have shared is their attendance at the
World Shoe Association trade show. Glory maintains, moreover,
that it and ASG are actually in different markets because the
parties sell different categories of products. Specifically,
Glory insists that because it principally sells work boots and
safety boots (including hiking boots) rather than what it views
as athletic or sports shoes like those sold by ASG, it does not
even consider ASG to be a competitor. Circumstances, therefore,
have not been such that the absence of any incidents of actual
confusion can be said to be probative of a lack of a likelihood
of confusion.
Finally, we agree with Glory that the record does not
support the assertion by ASG that Glory adopted its "AVA" and
"AVA II" and design marks in bad faith. The sole argument
advanced by ASG, as set forth in its initial brief in support of
its contention, is that while Glory admitted that the search
report which it had its counsel prepare disclosed ASG's "AVIA"
marks, Glory's failure to produce a copy of such report, which
ASG asserts is clearly relevant evidence within the control of
Glory, in response to ASG's discovery requests therefor "gives
rise to an adverse inference that the evidence is unfavorable to
it." ASG further maintains, in view thereof, that because Glory,
as the newcomer, had the duty "to avoid confusion with the well-
known marks of others," "Glory's appropriation of ASG's
registered AVIA trademark should be given significant weight in
determining the issue of likelihood of customer confusion."
However, as Glory, quoting from what is currently 3 J. McCarthy,
Opposition No. 91120905 and
Cancellation No. 92031180
29
McCarthy on Trademarks & Unfair Competition (4th ed. 2004)
§23:115, points out in its brief, "the junior user's mere
knowledge or awareness of the senior user's mark is not the same
as an intent to confuse customers" and, as Mr. Ho testified,
Glory derived its "AVA" mark as a shortened form of its "Z
AVALANCHE!" and "AVALANCHE" marks. Consequently, and since Mr.
Ho admitted that the search report which he had commissioned for
Glory included ASG's registered "AVIA" marks, we find it too
speculative to conclude that Glory's failure to produce such
report mandates a finding of bad faith adoption by Glory of its
marks. Nonetheless, the absence of bad faith is simply not
outweighed by the numerous other du Pont factors, all of which,
as noted above, either favor ASG and a finding of a likelihood of
confusion or are neutral.
We accordingly conclude, in light of the above, that
contemporaneous use by Glory of the mark "AVA" in connection with
various bags and footwear and the mark "AVIA II" and design for
footwear is likely to cause confusion with ASG's use of the mark
"AVIA" in connection with its identical in part and otherwise
closely related bags and athletic shoes and its use of the mark
"AVIA" and design for athletic shoes.
Decision: The opposition is sustained and registration
to applicant is refused; however, in the event that applicant
ultimately prevails in the opposition, its involved application
will be remanded to the Examining Attorney pursuant to Trademark
Rule 2.131 for reexamination with respect to the issue of
Opposition No. 91120905 and
Cancellation No. 92031180
30
abandonment of the subject mark. The petition to cancel is
granted and Reg. No. 2,237,432 will be canceled in due course.