Ate My Heart, Inc.v.Ga Ga Jeans Limited

Trademark Trial and Appeal Board

Mar 30, 2016

No. 91205110 (T.T.A.B. Mar. 30, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Ate My Heart, Inc.
v.
Ga Ga Jeans Limited
_____

Opposition No. 91205110
to Application Serial No. 85456166
_____

Brad D. Rose, Ryan S. Klarberg, Dyan Finguerra-DuCharme, Nicole E. Kaplan, and
Muzamil Huq of Pryor Cashman LLP for Ate My Heart, Inc.

David C. Buxbaum of Anderson Anderson LLP for Ga Ga Jeans Limited.
_____
Before Quinn, Ritchie and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Ga Ga Jeans Limited (“Applicant”) seeks registration on the Principal Register of
the mark GAGA JEANS (in standard characters), with JEANS disclaimed, for
“Jeans” in International Class 25 (“Application”).1 Ate My Heart, Inc. (“Opposer”)

1 Application No. 85456166, filed on October 25, 2011, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
Opposition No. 91205110

- 2 -

opposes the application based on likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), and likelihood of dilution by blurring under
Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).2 Opposer is a company
established to handle certain aspects of business relating to Stefani Germanotta, the
performer known as “Lady Gaga.”3 In the notice of opposition, Opposer pleaded
ownership of the following registered marks:
LADY GAGA (in standard characters) for “Clothing for women, men and
children, namely, t-shirts, sweatshirts, pullovers, tank tops, vests, shorts and
dresses; fashion accessories, namely, hats, headbands, wristbands, scarves and
bandanas” in International Class 25.4

LADY GAGA (in standard characters) for “Entertainment services, namely,
performances and public appearances by a live musical artist and providing
non-downloadable prerecorded music online and information regarding a
musical artist online via a global computer network” in International Class
41.5

LADY GAGA (in standard characters) for “Series of musical sound recordings,
audio-visual recordings featuring music and musical-based entertainment;
downloadable musical sound recordings and audio-visual recordings featuring
music and musical-based entertainment; downloadable ringtones via a global
computer network and wireless devices; computer application software for
mobile phones, namely, for electronic storage of data and graphics, for
downloading and playing music and video clips, and for the receipt and

2 Opposer’s notice of opposition also included claims of deceptiveness and false suggestion of
a connection under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), but has not
pursued these claims or addressed them in its brief. Therefore, we deem them waived. See
Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1435 (TTAB 2013);
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005); TBMP
§ 801.01 (2015).
3 64 TTABVUE at 7-8 (Campbell testimony deposition).
4 Reg. No. 3695129, filed January 13, 2009, issued October 13, 2009, and claims June 30,
2008 as the date of first use in commerce; Section 8 affidavit accepted; Section 15 affidavit
acknowledged.
5 Reg. No. 3695038, filed November 13, 2008, issued October 13, 2009, claiming September
1, 2006 as the date of first use in commerce; Section 8 affidavit accepted; Section 15 affidavit
acknowledged.
Opposition No. 91205110

- 3 -

transmission of messages; vinyl covers specially adapted for cell phones, MP3
players, laptops, and gaming devices; headphones” in International Class 9;
“Printed materials, namely, posters, songbooks; pens” in International Class
16; “Clothing, namely, tank tops, t-shirts, jackets, hooded sweatshirts;
headwear” in International Class 25; “Issuing gift certificates which may then
be redeemed for goods and services” in International Class 35; “Providing on-
line chat rooms for transmission of messages among computer users
concerning a musical performer” in International Class 38; “Entertainment
services, namely, live musical performances; providing a website featuring
entertainment information on a recording artist and her tours, performances,
appearances, news, a biography, non-downloadable audio and audiovisual
recordings featuring music and musical-based entertainment, photographs,
and other entertainment information; online journals, namely, blogs featuring
information on a recording artist; fan clubs; entertainment services, namely,
providing webcasts featuring music and musical-based entertainment” in
International Class 41.6

Opposer also pleaded ownership of the following pending application:

LADY GAGA (in standard characters) for various goods and services in
International Classes 3, 9, 11, 14, 16, 18, 21, 24, 25, 26, 28, and 35, including
“Santa hats; masquerade costumes; masquerade costumes and masks sold
therewith; Halloween costumes; Halloween costumes and masks sold
therewith; clothing, namely, undergarments, board shorts, hot pants, crop
shirts, wrap around hoods; gloves” in International Class 25.7

In its answer, Applicant denies the salient allegations in the notice of opposition
and asserted various “affirmative defenses.”8 However, the “affirmative defenses” are
not properly characterized as such because they merely address factors or arguments
to be considered in connection with the likelihood of confusion and dilution

6 Reg. No. 3960468, filed February 1, 2010, issued May 17, 2011, claiming various dates of
first use in commerce, with June 30, 2008 claimed as the first use date for the clothing in
International Class 25.
7 Application Serial No. 85115004, was filed August 24, 2010 based on use in commerce under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming various dates of first use in
commerce, with October 2, 2008 claimed as the first use date for the clothing in International
Class 25.
8 4 TTABVUE.
Opposition No. 91205110

- 4 -

allegations. See Harry Winston, Inc., 111 USPQ2d at 1422 n.5. In addition, in its brief,
Applicant did not argue any affirmative defenses, and we therefore deem them
waived. Id.
I. Evidentiary Record

As a preliminary matter, one evidentiary objection must be resolved. Applicant
submitted a testimonial affidavit of its sole director, Asaf Josef Navon, 72 TTABVUE,
but Opposer objects that it did not agree to testimony by affidavit from this witness,
as required by Trademark Rule 2.123(b), 37 C.F.R. § 2.123(b), and moves to strike the
affidavit. The parties briefed this motion as part of their final briefs. The parties
stipulated to submit expert testimony by declarations or affidavits. 56 TTABVUE
(Stipulation of the Parties). They did not so stipulate for fact witnesses, however. Id.
In response, Applicant contends first that the affidavit should be admissible under a
provision of the parties’ stipulation addressing the authenticity of “documents and
things produced by the Parties in this opposition proceeding.” Second, Applicant
indicates that regardless of the limitation in the stipulation to expert witness
affidavit testimony, Applicant assumed that the stipulation allowed for testimony by
affidavit for any witness, and Applicant indicated in its pretrial disclosure an
intention to submit Mr. Navon’s testimony by affidavit, to which Opposer did not
object. Third, Applicant argues that Mr. Navon may be considered an expert witness
in “marketing and designing jeans in the garment field.” 79 TTABVUE at 47.
Opposer counters all three arguments, noting that Applicant’s first and second
points run contrary to the plain meaning of the Stipulation of the Parties, and that,
Opposition No. 91205110

- 5 -

with regard to the third point, Applicant attested repeatedly in interrogatory answers
that Mr. Navon is not an expert, instead identifying him as a “layman.”9
Trademark Rule 2.123(b) allows for witness testimony by affidavit only “[b]y
written agreement of the parties.” 37 C.F.R. § 2.123(b). No such agreement exists for
the testimony of Mr. Navon, as the parties’ written stipulation does not provide for
fact witness testimony by affidavit. 56 TTABVUE. Applicant clearly identified Mr.
Navon as a fact witness rather than as an expert, and we find that the parties’
stipulation regarding authenticity of produced documents does not constitute an
agreement to admit fact witness testimony by affidavit. The stipulation reflects an
agreement to testimony by affidavit only for experts, and Applicant’s assumption
otherwise is misplaced. Accordingly, Opposer’s objection to Mr. Navon’s affidavit is
sustained, and we exclude the affidavit.10
The record consists of:
• the pleadings;
• pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the
opposed Application Serial No. 85456166;
• the testimony declaration of Opposer’s expert, Dr. Gerald L. Ford, and exhibits
thereto, 58 TTABVUE;
• Exhibit B from Opposer’s Notice of Reliance, 60 TTABVUE at 35-54, consisting
of copies of the pleaded registrations showing status and title and a copy of an

9 61 TTABVUE at 5, 6, 7.
10 We note that consideration of the affidavit would not have changed the result.
Opposition No. 91205110

- 6 -

additional registration owned by Opposer for the mark GAGA for wine, 60
TTABVUE at 55-60;
• Exhibit C (confidential in part) from Opposer’s Notice of Reliance, 61
TTABVUE, consisting of certain of Applicant’s discovery responses;11
• Exhibit D from Opposer’s Notice of Reliance, 60 TTABVUE at 61-535,
consisting of 123 printed publications offered pursuant to Trademark Rule
2.122(e), 37 C.F.R. § 2.122(e);
• Exhibit D from Opposer’s Notice of Reliance, 60 TTABVUE at 536-538,
consisting of a State of California Secretary of State Business Entity Detail for
Opposer, offered as an official record;12 and
• the testimony deposition of Robert Campbell, manager for Lady Gaga, and
exhibits thereto (confidential in part) 64-69, 74 & 77 TTABVUE.
II. Standing and Priority
By Order dated March 10, 2015, the Board granted summary judgment as to
Opposer’s standing, indicating “there is no reason for the parties to submit further
evidence or argument on the issue of standing at trial.”13
Opposer’s pleaded registrations establish that Section 2(d) priority is not an issue
in this case as to the marks and the goods and services covered by these registrations.

11 The parties stipulated that “All documents and things produced by the Parties in this
opposition proceeding are authentic, complete and genuine and may be submitted as evidence
without the need for authentication by testimony.” 56 TTABVUE at 2.
12 Exhibit D also contains documents from the file of the opposed application, but as noted
above, by rule the opposed application file forms part of the record, and these documents need
not be separately introduced.
13 52 TTABVUE at 3 n.3.
Opposition No. 91205110

- 7 -

See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974); Miss Universe L.P. v. Cmty. Mktg. Inc., 82 USPQ2d 1562, 1566 (TTAB
2007). Applicant does not contest Opposer’s priority.
III. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A
likelihood of confusion analysis often focuses primarily on the similarities between
the marks and the similarities between the goods and services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
Opposer bears the burden of proving its claim of likelihood of confusion by a
preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1848 (Fed. Cir. 2000).
A. Opposer’s Consumer Survey
Opposer introduced a consumer survey conducted by its expert Dr. Gerald L. Ford
in support of its assertion that its mark qualifies as famous and to show likely
confusion. 14 This online likelihood of confusion survey included 401 participants.

14 Dr. Ford’s declaration includes a detailed description of the survey. 58 TTABVUE.
Opposition No. 91205110

- 8 -

The survey respondents consisted of males and females at least 13 years of age who
are likely within the next year to purchase jeans.15 Roughly half were in a test group
who were shown and asked about GAGA JEANS and the other half were in a control
group who were shown and asked about a fictitious control mark, ZAZA JEANS, and
all inquiries were in connection with the product description “jeans.” The survey
results indicated that when asked who makes or puts out the GAGA JEANS jeans,
approximately 66% of respondents identified Lady Gaga as the source or sponsor.16
Applicant criticizes Opposer’s consumer survey on numerous grounds and
contends that it lacks probative value.17 First, Applicant asserts a flaw in the survey
population because it did not target Applicant’s prospective customers, alleged to be
female “children and youngest teenagers,” ages 7 to 13 years old.18 However,
Applicant’s identification of “jeans” in its application provides no basis to so limit its
prospective customers. As noted above, where the identification is unrestricted, “we
must deem the goods to travel in all appropriate trade channels to all potential
purchasers of such goods.” Cunningham, 55 USPQ2d at 1846.
Second, Applicant argues that the sample size is too small, but again relies on its
incorrect premise about its narrow target customer base, alleging that only the small
subset of responses from very young females may be considered.19 Dr. Ford’s

15 Id. at 10.
16 Id. at 7, 19-24, 30.
17 79 TTABVUE at 16-21.
18 Id. at 18.
19 Id. at 19-20.
Opposition No. 91205110

- 9 -

declaration notes that the sample size and selection meet generally accepted
standards and procedures in the field of surveys, and that the survey design meets
the criteria set forth in the Manual for Complex Litigation.20 Surveys with
comparable sample sizes have been credited. See, e.g., Anheuser-Busch, LLC v.
Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1828 (TTAB 2015); Starbucks U.S.
Brands, LLC v. Ruben, 78 USPQ2d 1741, 1753 (TTAB 2006).
Next, Applicant alleges biased language in the survey questions about source
because of the use of “who” and “whoever” rather than something “more business
oriented” such as “which company” or “which manufacturer.”21 Applicant argues that
the use of these pronouns rendered it more likely that survey respondents would
think of Lady Gaga the performer, an individual, rather than a business entity.
Opposer responds that the use of “who” in this manner falls in line with accepted
survey formats and points to supporting case law as well as McCarthy on Trademarks
and Unfair Competition § 32:174 (4th ed. 2015).22 In addition, Opposer points out that
even with the use of “who” and “whoever,” a significant portion of control group
respondents responded by identifying the fictitious company “Zaza Jeans,” rather
than an individual, thereby disproving Applicant’s claim of bias. Our precedent
credits this so-called Ever-Ready survey format23 that uses these pronouns in the

20 58 TTABVUE at 8-9.
21 79 TTABVUE at 20.
22 80 TTABVUE at 11.
23 In Union Carbide Corp. v. Ever-Ready. Inc., 531 F.2d 366, 188 USPQ 623 (7th Cir. 1976),
cert. denied, 191 USPQ 416 (1976), the plaintiff conducted a survey to determine whether
there was a likelihood of confusion between defendant’s EVER-READY lamps and plaintiff
Union Carbide’s EVEREADY batteries, flashlights and bulbs. The survey asked: “Who do
Opposition No. 91205110

- 10 -

survey questions. See, e.g., Anheuser-Busch, 115 USPQ2d at 1828 (“The likelihood of
confusion part of the survey follows the familiar ‘Eveready’ [footnote omitted] model,
a widely used and well-accepted format for likelihood of confusion surveys”);
Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d at 1753 (“Rather, given the way
in which this survey format carefully follows the Ever-Ready likelihood of confusion
survey format, we find that it is reliable and therefore of probative value on the issue
of likelihood of confusion herein”); Carl Karcher Ent. Inc. v. Stars Rest. Corp., 35
USPQ2d 1125, 1132 (TTAB 1995) (“We do not find the survey questions to be biased
but, rather, to be in keeping with fairly standard survey formats”). We find no bias in
the formulation of the survey questions here.
Finally, Applicant maintains that the approximately 20% validation rate of
Opposer’s survey falls below the recommended level for litigation surveys. Applicant
cites to INTA Courts & Tribunals Subcommittee Report on Best Practices in
Conducting Surveys in Trademark Matters, available at
http://www.inta.org/PDF%20Library/INTA%20Report%20on%20Best%20Practices%
20in%20Conducting%20Surveys%20in%20Trademark%20Matters.pdf,24 which
notes at p.11 that validation helps ensure that a “survey instrument was
implemented in an unbiased fashion and according to instructions [to interviewers].”

you think puts out the lamp shown here? [showing a picture of defendant’s EVER-READY
lamp and mark],” and “What makes you think so?” Id. at 640.
24 Although Opposer maintains that the report should not be considered because Applicant
failed to introduce it via a notice of reliance, 80 TTABVUE at 9, Applicant’s reliance on the
report is more as a legal resource rather than as factual evidence that must be admitted
into the record.
Opposition No. 91205110

- 11 -

The report further notes that heightened standards for litigation surveys may include
validation of at least 50% of the interviews. Given that this survey was conducted
online with written questions asked in a uniform way, the decreased opportunity for
bias or failure by interviewer personnel to follow instructions regarding selection and
questioning decreases the degree of validation necessary. Moreover, Dr. Ford’s
declaration indicates that the validation level used here exceeds that recommended
by the Council of American Survey Research Organizations standards for online data
surveys.25 Accordingly, we find the survey interviews in this case sufficiently
validated to accomplish the intended purposes of validation.
Based on our review of the declaration of Dr. Ford, we are convinced that he
qualifies as a competent expert in the field of market research, including that done
for the express purpose of litigation involving likelihood of confusion issues. Applicant
does not dispute Dr. Ford’s qualification as an expert in this case. We agree with Dr.
Ford’s conclusion that the 66% result here weighs strongly in favor of likelihood of
confusion.26 See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889 (Fed. Cir. 1991) (Consumer survey in which 30% of the respondents
were confused supports a finding of likely confusion); Ava Enters., Inc. v. Audio Boss
USA, Inc., 77 USPQ2d 1783, 1787 (TTAB 2006) (57% survey result is “strongly
probative of a likelihood of confusion”).

25 58 TTABVUE at 9.
26 Id. at 7.
Opposition No. 91205110

- 12 -

B. Relatedness of the Goods
Among the goods and services identified in Opposer’s registrations, we find the
closest to the “jeans” in the Application to be Opposer’s “Clothing for women, men and
children, namely, t-shirts, sweatshirts, pullovers, tank tops, vests, shorts and
dresses; fashion accessories, namely, hats, headbands, wristbands, scarves and
bandanas.” Thus, we focus our analysis on these identified goods, and references
hereinafter to the “Registration” relate to Registration Number 3695129.
As to the goods, we must determine whether their degree of relatedness rises to
such a level that consumers would mistakenly believe the parties’ goods emanate
from the same source. The comparison must be assessed based on the goods identified
in the Application and Opposer’s registrations. See Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014);
Octocom Sys., Inc. v. Houston Computers Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
In comparing Opposer’s clothing items to Applicant’s jeans, we find them highly
related. Although the identified goods in the Registration do not include jeans, the
evidence clearly shows that the same entities provide jeans and the types of clothing
items identified in the Registration. Jeans are frequently sold under the same mark
as other clothing items. For example, third-party websites that offer for sale both
jeans and t-shirts, as well as other goods identified in Opposer’s registration under
the same mark include:
Opposition No. 91205110

- 13 -

• H&M website27 featuring jeans, t-shirts and tank tops under the H&M
mark;
• Macy’s website featuring jeans and shirts sold under the RALPH LAUREN
mark;28
• Macy’s website featuring jeans, t-shirts, and pullovers under the INC
INTERNATIONAL CONCEPTS mark;29
• Levi’s website featuring jeans and tank tops under the LEVI’S mark;30 and
True Religion website featuring t-shirts, sweatshirts, tank tops, pullovers,
dresses, and jeans under the same TRUE RELIGION mark.31

The record overall establishes that the sorts of clothing items identified in the
Registration, such as t-shirts, sweatshirts, pullovers, tank tops and dresses and jeans
tend to come from a single source. The evidence suggests that consumers are well
accustomed to encountering the same entities providing these items under the same
mark. Although Applicant argues a lack of similarity of the goods in light of Opposer’s
actual clothing allegedly being “unusual for the relevant public,” we reject this
argument and reiterate that limitations not reflected in the identifications of goods
in the Application and Registration may not be considered. Octocom, 16 USPQ2d at
1787 (identifications are controlling). Accordingly, we find Applicant’s goods highly
related to the clothing in Opposer’s pleaded Registration. See Jockey Int’l, Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233, 1236-37 (TTAB 1992) (finding underwear
and neckties “clearly related”); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99

27 60 TTABVUE at 360-; www.hm.com/us.
28 60 TTABVUE at 402, 405, 412; macys.com.
29 Id. at 409-10, 412; macys.com.
30 Id. at 418-437; http://us.levi.com.
31 Id. at 485-501; truereligion.com.
Opposition No. 91205110

- 14 -

(TTAB 1982) (finding hosiery related to trousers); Esquire Sportswear Mfg. Co. v.
Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (finding girdles related to men’s
slacks).
C. Trade Channels and Classes of Purchasers

We presume that because Opposer’s and Applicant’s identifications contain no trade
channel restrictions, their goods travel through all usual channels of trade for these
goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
In addition to clothing stores and department stores, the evidence indicates that the
relevant trade channels comprise consumer retail clothing websites, such that the
purchasers include members of the general public. The websites discussed above and
other evidence also show that jeans and other types of clothing often are sold together
through a single retail website. Examples of other evidence supporting this finding
include the JOESJEANS.COM website that offers jeans, tops, pullovers, dresses, and
shorts,32 and the US.BURBERRY.COM website that offers jeans and t-shirts.33 The
evidence clearly indicates that goods such as those identified by Applicant and
Opposer move in the identical trade channels, and therefore it can be assumed that
the same class of consumers shops for these goods.
Applicant concedes that the Application “does not limit the channels of trade.”34
However, Applicant nonetheless argues that the trade channels differ because

32 Id. at 437-84.
33 Id. at 502-10.
34 79 TTABVUE at 37.
Opposition No. 91205110

- 15 -

Opposer’s Class 25 goods allegedly travel in an out-of-the-ordinary trade channel in
that they are sold at Lady Gaga’s concerts. Applicant acknowledges, however, that
Opposer’s clothing also is sold online and through retail stores.35 Again, given the
unrestricted identifications, which control the analysis, Applicant’s assertions about
alleged actual trade channels that find no basis in the Registration’s identification
lack merit.
Similarly, Applicant’s claims about differences in the classes of purchasers of its
goods versus Opposer’s fail because they involve disregarding the identifications of
goods. For example, Applicant’s argument about its own goods relies on considering
not the identified “jeans,” but rather its contention that it actually makes do-it-
yourself jeans kits for a targeted customer base of girls, ages 7 to 13 years old, who
consider them “jeans as a plaything or a toy.”36 Applicant then contends that Opposer
did not prove that its “products are in fact intended for and sold to this same group.”37
Because the identifications of the clothing goods in the Application and Registration
reflect no restrictions as to classes of purchasers, Octocom, 16 USPQ2d at 1787
(identifications are controlling), and because this type of clothing is sold to the general
public, we find that the classes of purchasers of Applicant’s and Registrant’s goods
are identical, and that these members of the general consuming public would not be
considered sophisticated purchasers. See NASDAQ Stock Market, Inc. v. Antarctica

35 79 TTABVUE at 37-38.
36 Id. at 40.
37 Id. at 41.
Opposition No. 91205110

- 16 -

S.r.l., 69 USPQ2d 1718, 1732 (TTAB 2003) (“[T]he channels of trade are not limited,
so our analysis of likelihood of confusion must assume that the goods will be marketed
to all possible consumers”).
D. Strength of Opposer’s LADY GAGA Mark
Opposer argues that its mark qualifies for fame for purposes of this du Pont factor,
while Applicant contends that the LADY GAGA marks is weak. “In determining the
strength of a mark we consider both its inherent strength based on the nature of the
mark itself and its market strength.” Tea Bd. of India v. Republic of Tea, Inc., 80
USPQ2d 1881, 1898-99 (TTAB 2006).
According to Applicant, “[t]he components of the mark individually are generic
and descriptive and an aspect of the … goods of Opposer” because they refer to and
describe the performer Lady Gaga.38 We grant Applicant’s request that we take
judicial notice of definitions of “lady” and “gaga” from the online American Heritage
Dictionary.39 Applicant contends that “[t]he mark, bearing lady and gaga together, is
meant to describe Ms. Stefani Germanotta on stage and in the media, whose persona
is portrayed to be a completely fascinated and crazy lady.”40 Applicant further argues
that because some of Opposer’s goods feature a photo or the name of the performer
Lady Gaga, the mark is descriptive of such goods and should be considered weak.

38 79 TTABVUE at 23-24.
39 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
40 79 TTABVUE at 23-24.
Opposition No. 91205110

- 17 -

As an initial matter, we note that Registration Number 3695129 is on the
Principal Register with no disclaimer or claim of acquired distinctiveness, and is
entitled to the statutory presumptions under Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b). Moreover, any consideration of the descriptiveness of LADY GAGA
must be in relation to the identified clothing items. Applicant acknowledges that the
mark likely would be understood by consumers as a reference to the performer Lady
Gaga rather than a mere combination of the component words “LADY” and “GAGA”,
and Applicant points to no evidence that this term would be descriptive of the
identified clothing. To the extent the mark for clothing may bring to mind LADY
GAGA in connection with entertainment services, as evidenced by Registration
Number 3695038, the mark may identify the source of the clothing, as it identifies
the source of the services, without being considered descriptive. See In re WNBA
Enters., LLC, 70 USPQ2d 1153, 1156 (TTAB 2003) (holding that ORLANDO
MIRACLE cannot be considered descriptive of publications about the women’s
basketball team that uses the same mark for its entertainment services, and that it
“is the mark by which applicant identifies the source of the publications, in the same
manner that it is the mark under which applicant renders its services”). Thus, we do
not find LADY GAGA descriptive of clothing or otherwise inherently weak.
We next consider Opposer’s assertion that its LADY GAGA mark merits famous
mark status. A famous mark, reflecting extensive public recognition and renown,
enjoys a broad scope of protection. Bose Corp. v. QSC Audio Prod. Inc., 293 F.3d 1367,
1371, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
Opposition No. 91205110

- 18 -

1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). Because of this wide latitude of
legal protection and the important role fame may play in the likelihood of confusion
analysis, a party asserting fame must clearly prove it. Harry Winston, 111 USPQ2d
at 1437-38; Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1904 (TTAB 2007). Fame for likelihood of confusion purposes exists when a
“significant portion of the relevant consuming public ... recognizes the mark as a
source indicator.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). Fame may be
measured indirectly by the volume of sales and advertising expenditures of the goods
sold under the mark, and other factors such as length of time of use of the mark;
widespread critical assessments; notice by independent sources of the products
identified by the marks; and the general reputation of the products and services. See
Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014);
see also Bose Corp., 63 USPQ2d at 1308.
In support of its assertion that its mark should be considered famous, Opposer
points to the inherent distinctiveness of its mark, the fame of Lady Gaga as a
performer, her “influence in the world of fashion” and related activities,41 the results
of the consumer survey previously discussed, length of use of its LADY GAGA mark
(in connection with clothing since 2008), sales figures arising from the sale of Class
25 goods under its mark,42 marketing and promotion expenditures, and unsolicited

41 75 TTABUVE at 14-18.
42 Opposer designated the precise figures confidential. Discussion of the sales and marketing
of the clothing goods is found in the testimony of Robert Campbell, 64 TTABVUE at 19-21.
Opposition No. 91205110

- 19 -

media attention devoted to the style and fashion sense of Lady Gaga the performer.
The record contains considerable evidence regarding Lady Gaga’s success in the
music business, including substantial musical recording and concert ticket sales,
social media presence, and industry awards and other media recognition.43
While Lady Gaga the performer undeniably qualifies as famous,44 we find the
necessary clear evidence lacking on this record to accord LADY GAGA the status of
a famous source indicator for clothing goods. While the fame of Lady Gaga as a
performer factors into the analysis here, it does not translate directly to fame of
Opposer’s mark for clothing. Opposer’s survey data, specifically the individual
responses, are enlightening as to the distinction between the fame of the performer
and the fame as a mark for clothing goods.45 Although a high percentage of survey
respondents identified Lady Gaga the performer as the person who “makes or puts
out jeans” under the mark, in explaining why, many responses reflected assumptions
or guesses as to the source stemming from name recognition of the performer, rather
than brand recognition of the mark for clothing. Representative examples of
responses included:
• “The use of ‘Gaga’ automatically made me think of the celebrity.”46

43 60 TTABVUE at 61-358; 64-69, 74 & 77 TTABVUE (Campbell testimony deposition and
exhibits).
44 The testimony of Robert Campbell includes detailed information regarding the fame of
Lady Gaga the performer. 64-69, 74 & 77 TTABVUE (Campbell testimony deposition and
exhibits).
45 58 TTABVUE at 32-42.
46 Id. at 32.
Opposition No. 91205110

- 20 -

• “Because, it is ‘Gaga Jeans’ but I’m not even sure she has a clothing line.”47
• “I’m just guessing because of the name.”48
• “Because it is the same name and celebrities are famous for putting their
names on clothing,”49
• “Sounds like her name. Could be her clothing line.”50
• “The artist name is Lady Gaga and artist [sic] these days love their own
clothing lines.”51
• “I think she’s wanting to start her own clothing line.”52
• “Because she is the only entertainer out there with that name and she is very
popular.”53
Opposer’s sales figures and advertising expenditures with respect to clothing are not
extraordinary, and in some respects the advertising evidence provided is so general
that we lack the necessary detail to ascertain whether it relates to the LADY GAGA
mark for clothing rather than to Lady Gaga the performer or, as her manager
describes it “a lifestyle to people of her brand.”54 Also, Opposer did not introduce
evidence to show how its revenue and marketing figures compare to competitors in
the industry. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB
2014) (“Evidence of fame might be bolstered if opposer also offered evidence that

47 Id. at 33.
48 Id. at 34.
49 Id.
50 Id. at 35.
51 Id. at 36.
52 Id. at 37.
53 Id.
54 64 TTABVUE at 20.
Opposition No. 91205110

- 21 -

would provide additional context to the data, such as data concerning competitors’
performance as to the criteria at issue”).
Overall, Opposer’s LADY GAGA mark appears to have achieved a degree of
recognition such that it can be considered a commercially strong mark. However, the
evidence in the record does not rise to the level needed to show that LADY GAGA has
achieved true fame among consumers as a source indicator for clothing goods. See,
e.g., Blue Man Prods. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005) (“From the
probative evidence, we conclude that BLUE MAN GROUP has achieved a degree of
recognition as a mark for entertainment services” but cannot be deemed famous).
E. Similarity of the Marks
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports, 73
USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). The proper comparison
inquires “not whether the marks can be distinguished when subjected to a side-by-
side comparison, but whether they are sufficiently similar in their overall commercial
impression.” Midwestern Pet Foods, Inc. v. Societe des Produits Nesle S.A., 685 F.3d
1046, 1053 (Fed. Cir. 2012).
LADY GAGA and GAGA JEANS both consist of two words, and they share the
identical word GAGA. The disclaimed generic word JEANS in Applicant’s mark
carries less significance in the mark because consumers are unlikely to rely on the
generic portion of a mark as source-indicating. See In re Dixie Rests., Inc., 105 F.3d
1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Thus, GAGA dominates
Opposition No. 91205110

- 22 -

Applicant’s mark. The parties agree that Opposer’s LADY GAGA mark derives its
commercial impression by reference to the famous performer Lady Gaga. The record
also reflects that she and Opposer sometimes refer to her and her associated goods
and services using GAGA without LADY, such as the “Gaga’s Workshop” at Barney’s
Department Store in New York and “Eau de Gaga” perfume.55 Moreover, “the users
of language have a universal habit of shortening full names -- from haste or laziness
or just economy of words,” In re Abcor Dev. Corp., 588 F.2d 811, 815, 200 USPQ 215,
219 (CCPA 1978) (J. Rich, concurring), such that consumers also may be inclined to
use GAGA as a short form. Thus, for consumers familiar with the performer Lady
Gaga, GAGA dominates the mark. For consumers unfamiliar with the performer, the
LADY portion of the mark could be perceived as referring to women’s clothing, and
therefore GAGA again dominates the mark. Accordingly, given the identical
dominant word GAGA and considering the nature of the other elements of each mark,
the two marks in their entireties look and sound similar. They also share a very
similar commercial impression. As reflected in Opposer’s survey results, consumers
perceive the marks as quite alike.
F. The Number and Nature of Similar Marks in Use on Similar Goods
Although Applicant argued this du Pont factor by asserting in its brief that a
number of third-party registrations for goods and services in various International

55 64 TTABVUE at 15-16 (Gaga’s Workshop), 20 (Eau de Gaga); 77 TTABVUE at 6-11
(Gaga’s Workshop).
Opposition No. 91205110

- 23 -

Classes consist of or contain the term GAGA,56 Applicant failed to introduce any
supporting evidence. Merely listing third-party marks with the International Class
noted fails to comply with Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e). “To make a
third-party registration of record, a copy of the registration, either a copy of the paper
USPTO record, or a copy taken from the electronic records of the Office, should be
submitted. [citations omitted].” In re Jump Designs, 80 USPQ2d 1370, 1372 (TTAB
2006) (also noting that lists that do not show the goods/services of the registrations
have “extremely limited probative value” regardless). Thus, the marks listed in
Applicant’s brief have not been considered, but we note that even had they been
considered, with only one possible exception, they do not appear to be for clothing
goods, and therefore lack persuasive force to show any weakness of marks containing
GAGA for clothing.
IV. Conclusion
Given the strength of Opposer’s LADY GAGA mark for the clothing items
identified in Registration Number 3128335, the similarity of the marks at issue, and
the highly related goods that travel in the same trade channels to the same classes of
consumers, along with compelling consumer survey results, we conclude that
confusion is likely.
In view of our holding of likely confusion, we need not reach the merits of
Opposer’s dilution claim. See Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d at

56 Opposer notes in its brief that 5 of the 16 marks are not registered, one of the registered
marks is owned by Opposer, and none of the third-party registrations covers goods in
International Class 25. 80 TTABVUE at 15.
Opposition No. 91205110

- 24 -

1755; American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036, 2039-
2040 (TTAB 1989), aff’d in op. not for pub., 17 USPQ2d 1726 (Fed. Cir. 1990).
Decision: The opposition is sustained.