Board of Trustees of The University of Alabama and Paul W. Bryant, Jr.v.Richard Diaz

Trademark Trial and Appeal Board

Aug 2, 2017

No. 92057550 (T.T.A.B. Aug. 2, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Board of Trustees of The University of Alabama
and
Paul W. Bryant, Jr.
v.
Richard Diaz
_____
Cancellation No. 92057550
_____
Alicia Grahn Jones, Harris W. Henderson, and Crystal C. Gentleman of Kilpatrick
Townsend & Stockton LLP for Board of Trustees of The University of Alabama and
Paul W. Bryant, Jr.

Michael J. Douglas of Leak, Douglas & Morano, PC for Richard Diaz.
_____

Before Quinn, Wolfson, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Richard Diaz (“Respondent”), an individual, owns U.S. Reg. No. 39935201 (the
“Registration”) for the mark shown below:

1 Issued July 12, 2011, based upon an application filed December 10, 2010; Section 8
declaration filed.
Cancellation No. 92057550
2

The mark is registered on the Principal Register for “Bib shorts; Caps; Cloth bibs;
Dresses; Gloves; Headbands; Infant and toddler one piece clothing; Infant diaper
covers; Jackets; Nightshirts; Pants; Rain jackets; Scarves; Shirts; Shorts;
Sweatshirts; T-shirts; Ties; Toboggan hats, pants and caps,” in International Class
25.
Board of Trustees of The University of Alabama (the “University”) and Paul W.
Bryant, Jr. (“Bryant”) filed a petition to cancel the Registration. (In this decision, we
refer to the University and Bryant collectively as “Petitioners” and to each of them
separately as a “Petitioner.”) The grounds for the petition to cancel are likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); false
suggestion of a connection under Trademark Act Section 2(a), 15 U.S.C. § 1052(a);
abandonment, as defined in Section 45, 15 U.S.C. § 1127; and non-use of the mark at
the time Respondent filed his use-based application underlying the Registration.2

2 Fourth amended petition for cancellation, 30 TTABVUE.
Cancellation No. 92057550
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The University has pleaded that it owns six subsisting U.S. registrations. The
following marks are registered for “shirts,” among other goods:3

Reg. No. 2706104 Reg. No. 3730292
Filed February 20, 2001 Filed February 20, 2001

Reg. No. 2745882 Reg. No. 49295154
Filed February 20, 2001 Filed December 3, 2007

3 For the convenience of our later discussion, we also set forth the filing dates of the
applications underlying the registrations.
4 In the University’s fourth amended petition to cancel, the University pleaded ownership of
the application underlying the HOUNDSTOOTH MAFIA mark, shown above; the
registration issued subsequently. See TBMP § 704.03(b)(1)(A) (June 2017).
Cancellation No. 92057550
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Reg. No. 3730291
Filed February 20, 2001

The following mark is registered only for key chains, pens and decals:

Reg. No. 1322955
Filed September 30, 1982

The University pleaded ownership of Reg. No. 1351302, but that registration has been
cancelled. The University also pleaded ownership of common law rights in an
elephant mascot that it uses in connection with football games, one representation of
which is shown below:5

5 Petitioner’s notice of reliance, 46 TTABVUE 93.
Cancellation No. 92057550
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Petitioners also allege that they have a symbolic association with the textile pattern
known as “houndstooth.” They allege that their association with the houndstooth
pattern derives from the fact that Petitioner Bryant is the son of Paul W. “Bear”
Bryant, a past coach of the University’s football team and a celebrity who was known
for wearing a houndstooth fedora while coaching.6 Petitioners pleaded as follows:
As a result of Petitioners’ longstanding and extensive use,
the Houndstooth Pattern is symbolic of the extensive
goodwill and consumer recognition established by the
University and Coach Bryant. The Houndstooth Pattern
has come to identify Coach Bryant, the University, its
athletic teams, and other goods and services.7
The University pleaded that it owns the mark shown below for museum services and
apparel and asserts that it is registered in the State of Alabama:

6 Fourth amended petition to cancel ¶¶ 27-30, 30 TTABVUE 14-16.
7 Id. ¶ 34, 30 TTABVUE 19.
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Respondent in his answer denied the salient allegations of the petition. However,
Respondent admitted that the University owns the pleaded U.S. registrations, but
did not admit that they are subsisting. Respondent asserted as affirmative defenses
lack of standing; laches, estoppel, waiver, acquiescence and unclean hands.8
The parties stipulated that the testimony of any witness may be offered in the
form of an affidavit;9 that certain documents delivered during discovery are authentic
and may be received in evidence under a notice of reliance;10 and to the admissibility
of certain discovery deposition transcripts.11 The case is fully briefed.
I. The record.
The record includes the pleadings and, by operation of Trademark Rule 2.122,
37 C.F.R. § 2.122, the file history of the Registration and underlying application. In
addition, the parties have made of record the following testimony and evidence:
A. Filed by Petitioner:
- Affidavit of Finus Gaston, Petitioner’s Senior Associate Athletic Director (and
exhibits), 44 TTABVUE.

- Affidavit of Cole Price, Petitioner’s Director of Trademark Licensing (and
exhibits), 45 TTABVUE.

- Petitioner’s notice of reliance on:

Portions of the discovery deposition of Respondent (46 TTABVUE
141-184).

8 With the exception of the defense of lack of standing, Respondent has not addressed the
affirmative defenses in his brief; those defenses are therefore waived. Harry Winston, Inc. v.
Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422 (TTAB 2014).
9 25 TTABVUE.
10 34 TTABVUE.
11 47 TTABVUE, 52 TTABVUE.
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Portions of the discovery deposition of Richard P. Diaz, II (46
TTABVUE 186-201) (submitted by stipulation).
Respondent’s answers to interrogatories (46 TTABVUE 223-232,
as amended).
Respondent’s answers to first set of document requests (46
TTABVUE 244-259 and 262-263).
Respondent’s answers to second set of document requests (46
TTABVUE 272-274).

- Petitioner’s rebuttal notice of reliance (54 TTABVUE) on:

Internet materials.
Office records of USPTO.
Federal Court order dismissing action of Respondent against
Glen Plaid LLC.

- Rebuttal affidavit of Lindsay Victor, Associate Counsel for Collegiate Licensing
Company LLC (and exhibits) (55 TTABVUE).

- Rebuttal affidavit of Cole Price (and exhibits) (56 TTABVUE, confidential
materials at 57 TTABVUE).

B. Filed by Respondent:
- Respondent’s notice of reliance12 (51 TTABVUE) on:

Office records.
Internet materials.
Discovery documents.
Excerpts of discovery deposition of Paul W. Bryant (51 TTABVUE
40-60).
Excerpts of discovery deposition of Finus Gaston (51 TTABVUE
62-86).
Excerpts of discovery deposition of Respondent (51 TTABVUE 88-
90).
University’s responses to interrogatories and document requests
(51 TTABVUE 116-131).
Bryant’s responses to interrogatories and document requests
(51TTABVUE 133-148).
University’s responses to document requests accompanying Rule
30(b)(6) notice of deposition (51 TTABVUE 150-156).

12 On Petitioners’ motion, Exhibits 16 through 27 of Respondent’s notice of reliance were
stricken by the Board’s order of January 30, 2017. 58 TTABVUE.
Cancellation No. 92057550
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Bryant’s responses to document requests accompanying notice of
deposition (51 TTABVUE 158-162).

II. Standing.
Standing is a threshold issue that must be proven by a plaintiff in every inter partes
case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff must
show that it has a real interest in the proceeding beyond that of a mere intermeddler,
and that it has a reasonable basis for its belief of damage resulting from registration
of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999).
The record shows that both Respondent and the University (through its licensees)
have offered shirts marked with various designs that depict elephants; and that
Respondent, at his points of sale, has offered his goods alongside such goods of the
University.13 Thus, the goods of the University and Respondent are in direct
competition. In addition, the University has made of record its pleaded U.S.
registrations of marks that depict elephants and a houndstooth pattern.14 The
University has sufficiently shown that it has a real interest in the outcome of this
proceeding and has established its standing to seek cancellation of the Registration.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000) (ownership of relevant registrations sufficient to prove standing); Honda Motor

13 Diaz disc. dep. 32:5-6, 33:5-9 (Respondent sells merchandise officially licensed by
University; some of such merchandise depicts elephants); 35:17 (Respondent sells such goods
alongside his own), 46 TTABVUE 152-3 and 155.
14 46 TTABVUE 14-54.
Cancellation No. 92057550
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Co. v. Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009) (competitor has standing);
Plyboo Am. Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999) (same).
The record shows that Bryant has a business arrangement with the University
whereby the University seeks Bryant’s approval before making use of a houndstooth
pattern on the University’s merchandise:
The Bryant estate is involved in the approval of any
products that include the houndstooth design. When we
receive a request, I forward that to Mr. Bryant on behalf of
the Bryant estate to see if he would approve its licensure.15
I did that because we didn’t want any products out there
the Bryant family had not approved …”16
The University perceives Bryant’s authority to grant or withhold approval as deriving
from the fact that he is the son of Paul W. “Bear” Bryant, a past coach of the
University’s football team and a celebrity who was known for wearing a houndstooth
fedora while coaching.17 Respondent argues that Bryant lacks standing because he
has not proven the existence of rights in the houndstooth pattern originating with
Coach Bear Bryant nor has he proven any chain of title whereby those rights
descended to Bryant, whether through the estate of Coach Bear Bryant, by
assignment, or otherwise.18 We agree that Petitioners have not proven such a
provenance of rights in the houndstooth pattern alone. However, a party need not
prove the elements of his claim in order to prove his standing. Section 14 of the

15 Gaston dep. 42:11-17, 51 TTABVUE 70.
16 Id. at 48:17-19, 51 TTABVUE 71.
17 See, e.g., Petitioners’ brief at 8, 59 TTABVUE 16.
18 Respondent’s brief at 17-18, 60 TTABVUE 24-25.
Cancellation No. 92057550
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Trademark Act requires only that a plaintiff demonstrate a belief, having a
reasonable basis in fact, that he is or will be damaged by the registration of the mark.
15 U.S.C § 1064; Ritchie v. Simpson, 50 USPQ2d at 1027-8. We find that Bryant’s
business dealings with the University with respect to the houndstooth pattern are
sufficient to demonstrate that he has a real interest in the outcome of this proceeding,
because trademark rights may arise by use and control of a device, even if such rights
did not exist prior to the initiation of use.
For the reasons stated, we find that both Petitioners have demonstrated their
standing to bring this action.
III. Current status of Respondent’s Registration.
On June 28, 2017, after this case had been tried and briefed, Respondent filed an
affidavit under Section 8, 15 U.S.C. § 1058, for the purpose of maintaining the
Registration. The Section 8 affidavit expressly deleted from the Registration the
following goods:
bib shorts; cloth bibs; dresses; gloves; headbands; infant
diaper covers; jackets; nightshirts; pants; rain jackets;
scarves; shorts; ties; toboggan hats, pants and caps.
Respondent’s Section 8 affidavit had the effect of a partial cancellation of the
Registration. Trademark Rule 2.134(b), 37 C.F.R. § 2.134(b), authorizes the Board to
treat such a cancellation as “the equivalent of a cancellation by request of respondent
without the consent of the adverse party,” resulting in entry of judgment against the
respondent with respect to the deleted goods. Rule 2.134(b) provides that the Board
may, in its discretion, issue an order allowing the respondent to show cause why the
cancellation should not be so deemed. However, as the Board observed in Orange
Cancellation No. 92057550
11

Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1110 (TTAB 2015), “At this
point, with briefing having been completed, there would be no point in issuing an
order to show cause; it is clear that the deletion of the involved goods from the Section
8 declarations was deliberate, and not the result of mistake or inadvertence …” We
therefore GRANT IN PART the petition to cancel the Registration, insofar as the
goods that Respondent deleted from his Registration are concerned. Our decision
herein is a final judgment as to Petitioners’ pleaded claims with respect to those
goods. We therefore turn to consider Petitioners’ claims with respect to the
Registration as effectively amended by Respondent’s Section 8 affidavit.
IV. Petitioners’ claim under Section 2(d).
Petitioners seek to cancel the Registration under Trademark Act § 2(d), on the
ground that Respondent’s mark “so resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name previously used in the United States by
[Petitioners] and not abandoned, as to be likely, when used on or in connection with
the goods of [Respondent], to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). As Respondent’s mark is registered on the Principal Register, both
the mark and the Registration are presumed to be valid. 15 U.S.C. § 1057(b). “[O]ne
seeking cancellation of such a registration must rebut this presumption by a
preponderance of the evidence …” Martahus v. Video Duplication Services Inc., 3 F.3d
417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
Cancellation No. 92057550
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A. Priority.
In a cancellation proceeding in which both plaintiff and defendant own
registrations, priority is in issue and the plaintiff has the burden of proving its
priority. Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB 1998).
Under Section 7 of the Trademark Act, each party is entitled to rely upon the filing
date of the application underlying its registration for purposes of establishing a date
of first use of its registered mark. 15 U.S.C. § 1057(c); Cent. Garden & Pet Co. v.
Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Larami Corp. v. Talk To Me
Programs Inc., 36 USPQ2d 1840 (TTAB 1995).
1. Elephants.
The application underlying Respondent’s Registration was filed on December 10,
2010. The applications underlying the University’s six pleaded registrations were
filed in 1982, 2001 and 2007, prior to Respondent’s filing date. Respondent is entitled
to prove that he used his mark earlier than his filing date. However, his testimony is
that he first used the mark on November 11, 2010, later than the University’s filing
dates.19 Accordingly, the University has demonstrated its priority of use with respect
to the marks in its six pleaded registrations and the goods and services set forth
therein.

19 Respondent’s answer to Interrogatory No. 9, 46 TTABVUE 225; see also Diaz dep. 56:1, 51
TTABVUE 89.
Cancellation No. 92057550
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During trial the University proved its ownership and current active status of Reg.
No. 4625053 for the mark shown below for “Headwear, t-shirts, shirts, sweatshirts,
and jackets”:

This registration was not pleaded in the petition for cancellation. However,
Respondent has not objected to the admission of the registration, has not moved to
strike it, and discussed the mark and the application to register it in his brief.20
Accordingly, the registration is of record and we deem Petitioners’ pleading to be
amended under Fed. R. Civ. P. 15(b) to assert the University’s ownership of Reg. No.
4625053. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1583 n.3
(TTAB 2008) (“The notice of reliance also includes status and title copies of several
registrations which were not pleaded in the notice of opposition. Because applicant
has not objected to opposer’s reliance on the unpleaded registrations, and moreover
has, in effect, treated them as of record in his brief, we deem opposer’s pleading
amended to assert the registrations under Fed. R. Civ. P. 15(b).”). We also deem the
subsistence of Reg. No. 4625053 and the University’s ownership of it to have been

20 Applicant’s brief at 29-30, 60 TTABVUE 36-37.
Cancellation No. 92057550
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tried by implied consent. Time Warner Entertainment v. Jones, 65 USPQ2d 1650,
1653 n.2 (TTAB 2002).
The filing date of the application underlying Reg. No. 4625053 is April 24, 2014,
later than Respondent’s filing date. Accordingly, the University must prove that its
silhouette elephant mark is “previously used.” To do so, Petitioners have submitted
the 2016 affidavit testimony of Finus Gaston, the University’s Senior Associate
Athletic Director, stating that “The University has used the Silhouetted Elephant
Design in connection with apparel since October 31, 2007.”21 Mr. Gaston identified
three photographs showing two shirts and several shelves of baseball caps and visors
bearing the design. He also identified several pages of artwork showing drawings of
products incorporating the mark.22 Although Petitioners’ evidence of use of this mark
is sparse, Respondent has not sought to rebut it. Accordingly, we find that the
University has demonstrated its priority of use with respect to this registered mark.
The University also claims ownership of the mark shown below; Mr. Gaston
testified that the University has “licensed” its use “[s]ince December 2010.”23

21 Gaston aff. ¶¶ 9-10, 44 TTABVUE 8.
22 Id. ¶ 10, 44 TTABVUE 8-9, and Exhibit B, 44 TTABVUE 43-57.
23 Id. ¶¶ 14-15, 44 TTABVUE 9-10. Mr. Gaston also averred that the University acquired an
Alabama trademark registration of the mark on February 24, 2015, but the documentary
evidence relating to the transfer appears to relate to a mark consisting only of the words
ORIGINAL HOUNDSTOOTH. If any elephant design was covered by this registration, it is
not depicted in the assignment document filed with the Board. 44 TTABVUE 89-92.
Cancellation No. 92057550
15

However, during his discovery deposition, Mr. Gaston identified an e-mail message
dated December 12, 2010 which demonstrated that as of that date the license of the
mark had not yet issued:
This is an e-mail … on behalf of Glen Plaid who had applied
for a license with the University for their products that
were produced with an elephant and houndstooth design.
And the process had not been completed. It had gone to the
licensing company so he had asked me – sent to me and
asked for an update on the progress and when it might be
licensed.
Gaston dep. 71:5-15, 51 TTABVUE 77. This testimony demonstrates that the
University’s use of the mark through this licensee did not commence until after
December 12, 2010, later than Respondent’s December 10, 2010 filing date and
Respondent’s November 11, 2010 actual use date. There is no evidence of record of
any earlier use of this mark by the University. We find that the University has failed
to demonstrate priority with respect to this mark.
With respect to the University’s elephant mascot, Mr. Gaston testified that the
University “adopted an elephant mascot, which the student body selected as the
University’s official mascot in 1979.” The Gaston affidavit includes no image of this
1979 mascot. Rather, Mr. Gaston testified that “today” the costumed mascot Big Al
(shown above in the discussion of the pleadings) “is central to the University’s athletic
Cancellation No. 92057550
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identity and present at most athletic events.” This testimony is insufficient to
demonstrate that the costumed mascot was in use prior to 2010. We note, however,
that the costumed mascot has much in common, in its appearance, with the mark in
Reg. No. 2706104, as to which the University has demonstrated priority.
2. Houndstooth pattern.
We turn next to the question of priority with respect to the houndstooth pattern.
“Houndstooth” is a well-known textile pattern of broken or notched checks, an
example of which is shown below:24

As we have noted above, the University enjoys priority of use with respect to the
design mark HOUNDSTOOTH MAFIA by virtue of the U.S. registration of that
mark, which was based on an application filed in 2007.
The University has also shown, through the testimony of its witness, that it has
used the PAUL W. BRYANT MUSEUM mark, which includes an element of
houndstooth pattern, since 1988 in connection with museum services and certain
forms of merchandise.25 Petitioners thus have demonstrated priority of use with
respect to this mark.

24 Respondent’s notice of reliance, 51 TTABVUE 20.
25 Gaston aff. ¶¶ 35-50 and Exs. M through W, 44 TTABVUE 16-19, 153-217.
Cancellation No. 92057550
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Finally, as we discuss further in Part IV(B)(6) below, Petitioners have shown prior
ornamental use of the houndstooth pattern on hats sold by licensees.
Notably, the houndstooth pattern is not a discrete device to which Petitioners assert
a trademark claim in this proceeding. Petitioners state in their brief:
For purposes of clarity, Petitioners do not claim rights in
the Houndstooth Pattern alone. Their trademark claims in
the Houndstooth Pattern are limited to those instances in
which the Houndstooth Pattern appears in connection with
additional indicia, whether wording or design elements,
that refer to the University and/or Coach Bryant. Here,
Petitioners use the Houndstooth Pattern Mark in
connection with the University’s well-known elephant
mascot.
Petitioners’ brief at 12, n.53, 59 TTABVUE 20. This disclaimer was repeatedly
affirmed by the University’s witness at trial:
The houndstooth pattern itself alone does not draw an
association with the University unless our marks are
associated with that.26
*****
The University has not tried to license any products with
the houndstooth pattern without our indicia associated
with it.27
*****
The University does not -- we do not feel like we had the
right to contain -- to control anything that doesn't contain
our indicia that represents the University, …28
*****

26 Gaston dep. 30:10-13, 51 TTABVUE 67.
27 Id. 50:18-21, 51 TTABVUE 72.
28 Id. 52:4-7, 51 TTABVUE 72.
Cancellation No. 92057550
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Is your question do we have the right to use it by itself? …
No.29
*****
Q. …you said you would not go out and try to police or
prevent other people from using … the houndstooth
pattern?
A. We’ve not done that to my knowledge.30
In light of this disclaimer, we need not determine, in this proceeding, whether the
houndstooth pattern itself is a mark of Petitioners.31
3. Elephants and houndstooth pattern.
The University claims that it has used the houndstooth pattern in combination with
elephant designs. The ORIGINAL HOUNDSTOOTH design, discussed above, is one
such design, but, as we have found above, Petitioners have failed to demonstrate
priority of use with respect to that design. Petitioners’ witness stated that the
University “has used the Silhouetted Elephant Design in combination with the
Houndstooth Pattern in connection with apparel since July 30, 2010.”32 The record
contains no photographic evidence of such goods, but only artwork apparently

29 Id. 35:18-21, 51 TTABVUE 68.
30 Id. 79:15-20, 51 TTABVUE 79.
31 To do so would entail applying the test of Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568
F.2d 1342, 196 USPQ 289 (CCPA 1977), in order to determine whether the pattern is
inherently distinctive, or determining whether the pattern has acquired distinctiveness as a
source indicator of Petitioners. See In re Fantasia Distribution, Inc., 120 USPQ2d 1137
(TTAB 2016), in which the Board performed such analyses with respect to a repeating
pattern.
32 Gaston aff. ¶ 11, 44 TTABVUE 9.
Cancellation No. 92057550
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prepared by Collegiate Licensing Company (“CLC”), examples of which are shown
below:33

The artwork is accompanied by nine “Artwork Summar[ies],” which carry
handwritten dates. Eight of the dates are later than 2010 (three from 2011, four from
2012, and one from 2013), too late for proof of priority. One summary, accompanying
artwork showing a baseball cap with elephant and houndstooth, is dated “Approved
7/30/10.” The cap and the Artwork Summary are shown below:34

33 Id., Ex. C, 44 TTABVUE 64, 66.
34 44 TTABVUE 59-60.
Cancellation No. 92057550
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The Artwork Summary indicates a licensee named “Top Of The World (11871),”
indicates a product identified as “Men’s/Unisex Adjustable Wool Blend Headwear”
and “Logo Application: Embroidered.” It also indicates “Order Pending: No” and
“Retailer: No.” There is no explanation in the Gaston affidavit as to what these two
negative indications may mean. We find that this small amount of evidence leaves
unanswered the question of whether the caps depicted in the artwork were ever
actually produced, marketed or sold, and whether such production, marketing or
sales, if any, occurred prior to December 10, 2010.
Petitioners have also submitted a copy of a sign, shown below; but it is not dated.
The University’s witness merely states, with respect to this exhibit, that “the
University has been using the Houndstooth Pattern mark in combination with other
University indicia in connection with educational and athletic services, such as on
signs, …”35

35 Gaston aff. ¶ 31 and Ex. J, 44 TTABVUE 13, 124.
Cancellation No. 92057550
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With respect to the University’s use of elephants combined with houndstooth designs,
there is no testimony or other evidence to show the extent of such use, relevant
marketing details, or even evidence to show that any manufacturer actually produced
apparel bearing the artwork shown on the CLC pages. It is curious that on such a
critical point of evidence, Petitioners have presented such reticent and vague
testimony and such incomplete documentation. On such a slender evidentiary record,
we cannot find that Petitioners have shown that they have prior rights in an
elephant/houndstooth mark.
We note Petitioners’ argument that the houndstooth pattern is a graphic element
that, when combined with indicia of the University (such as the design of an
elephant), increases the likelihood that the mark will be perceived as indicating the
University as a source of goods because of the historic and cultural association that
the public perceives between the pattern and the University, its football team, and
Coach Bear Bryant. This aspect of the houndstooth pattern will be considered in our
analysis of likelihood of confusion.
Cancellation No. 92057550
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To summarize, Petitioners have demonstrated priority of use with respect to the
University’s elephant marks in its pleaded registrations, the elephant silhouette
mark in Reg. No. 4625053, the registered HOUNDSTOOTH MAFIA design mark, the
PAUL W. BRYANT MUSEUM and design mark, and the houndstooth pattern as
ornamentation on hats.
B. Likelihood of confusion.
Our determination of likelihood of confusion is based on an analysis of all of the
probative facts in evidence that are relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
1. The goods.
We turn first to the similarity or dissimilarity of the goods at issue, as identified
in Respondent’s Registration and the University’s registrations. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed.
Cir. 2014); Octocom Syst. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Respondent’s Registration covers, among other
goods, “shirts” and “T-shirts.” Five of the University’s pleaded registrations cover
“shirts,” and Reg. No. 4625053 covers” shirts” and “t-shirts.” To this extent, the
parties’ goods are identical. We need not consider whether each of Respondent’s
identified goods is related to the University’s goods; for purposes of a du Pont
analysis, it is sufficient if likelihood of confusion is found with respect to any of the
goods identified in his Registration. See Tuxedo Monopoly, Inc. v. General Mills Fun
Cancellation No. 92057550
23

Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
The University’s Reg. No. 1322955 is registered for key chains, pens, and decals. At
trial there was no effort on the part of Petitioners to demonstrate that Respondent’s
identified goods and key chains, pens, and decals “are related in some manner and/or
[that] the circumstances surrounding their marketing are such that they could give
rise to the mistaken belief that they emanate from the same source.” Coach Servs.
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012). Nor was there any argument along these lines in Petitioners’ briefs. In view of
the University’s other registrations for goods identical to those of Respondent, we
need not focus on the more disparate goods identified in this registration.
In sum, with respect to six of Petitioners’ pleaded registrations, the goods are
identical and this du Pont factor weighs heavily in favor of a finding of likelihood of
confusion.
2. Channels of trade; Customers.
To the extent that the parties’ goods are identical, we must presume that they
move through the same channels of trade and are sold to the same classes of
purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012). As there are no limitations as to channels of trade in the identifications of
goods in the two registrations, we presume that the parties’ goods move in all
channels of trade that are normal for such goods. See Octocom, 16 USPQ2d at 1787;
Cancellation No. 92057550
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Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76
(CCPA 1973); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In the case before us, there is one particular trade channel that clearly brings the
parties’ goods into direct competition. Respondent sells his goods “at University of
Alabama football games in a space licensed from the City of Tuscaloosa, Alabama.”36
Moreover, Respondent admits to carrying the goods of both parties and offering them
side-by-side.37 Petitioners contend that this particular trade channel, within which
the goods are offered to fans of the University’s football team, exacerbates the
likelihood of confusion:
If it is being used to mark the products that are marketed
to what we feel like are our University’s fans or students or
alumni being sold at our events in trying to sell the same
mode of commerce that our licensed product are, we would
claim a right to them.38
…
Q. Do you believe that Mr. Diaz has misled the public to
believe he has an association with the University of
Alabama?
A. I believe the way he has designed his mark, the way
he’s tried to sell it to our fans through the same types of
commerce that we’d normally sell ours, selling at our
athletic events, yes, I’d say so.39

The du Pont factors of trade channels and customers to whom sales are made weigh
in favor of a finding of likelihood of confusion.

36 Respondent’s answer to Interrogatory No 10, 46 TTABVUE 226.
37 Diaz disc. dep. 32:5-6, 33:5-9 (Respondent sells merchandise officially licensed by
University); 35:17 (Respondent sells such goods alongside his own), 46 TTABVUE 152-3 and
155.
38 Gaston dep. 37:4-10, 51 TTABVUE 69.
39 Id. 38:12-20, 51 TTABVUE 69.
Cancellation No. 92057550
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3. Conditions under which sales are made.
The parties’ goods at issue, shirts and T-shirts, are common consumer items that
may be offered at relatively low cost. Accordingly, we assume that customers might
purchase such goods on impulse.
While we assume that the goods might be offered under all circumstances that are
normal for these goods, Petitioners point out that Respondent’s goods are sometimes
sold under street-fair conditions prior to football games. See Price aff. ¶ 4, stating
that the witness observed Respondent’s tent when “prior to a University football
game, I monitored the activities of various retailers along University Boulevard,
Bryant Drive, and several other side streets and parking lots around the stadium
…”40 Thus, the goods are sometimes offered under relatively informal, temporary
retail conditions, not within typical brick-and-mortar stores.
Overall, in our analysis of likelihood of confusion, we bear in mind that the low
cost of the goods and the informal, temporary retail conditions might lead to
impulsive selection of the goods by customers. “When products are relatively low-
priced and subject to impulse buying, the risk of likelihood of confusion is increased
because purchasers of such products are held to a lesser standard of purchasing care.”
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000);
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1282 (Fed. Cir. 1984). Thus, the du Pont factor of the conditions of sale weighs in
favor of a finding of a likelihood of confusion.

40 45 TTABVUE 6.
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26

4. Actual confusion.
Petitioners contend that actual confusion has arisen with respect to the source of
Respondent’s goods. Cole Price, the University’s Director of Trademark Licensing,
stated that on September 13, 2014, prior to a football game, he saw a booth of
Respondent on a street near the stadium, “selling unlicensed and infringing products
bearing the University’s trademarks and indicia, including apparel bearing the
Houndstooth Elephant Design…”41 Mr. Price prepared an “enforcement report”
relating to the incident, in which he reports that he asked certain people “if they were
under the impression that the items being sold were Alabama products”; and that a
person named Todd Price replied, “I stopped with my wife at the tent, and we did
think that the product being sold was University of Alabama product.”42 Mr. Price’s
affidavit also states, “I spoke with three other individuals who also stated that they
believed Mr. Diaz’s products referred to the University.”43
As further evidence of actual confusion, Petitioners point to Respondent’s
deposition testimony:
Well, at the football games, a number of people over the
couple of two, three years that we’ve been selling, have
asked, is this an original houndstooth shirt? And we would
say no, it’s not.
Q. How many times do you think people have asked you
that over the past three years?

41 Price aff. ¶ 4, 45 TTABVUE 6.
42 45 TTABVUE 15.
43 Price aff. ¶ 7, 45 TTABVUE 7.
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A. Well, just myself – because there’s also my wife and my
son … But just myself, probably about maybe 20 times – 10
to 20, just myself.44
We are not persuaded by Petitioners’ attempt to show actual confusion in this
case. The statements of Todd Price and of certain unnamed others, relayed through
Mr. Cole Price, are hearsay and therefore inherently unreliable. They are not
admissible. Fed. R. Evid. 802. As for the inquiries reported by Respondent, such
inquiries are not reliable evidence of actual confusion, as they often indicate that the
prospective customer had a reason to suspect that there are two different companies.
See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1479
(TTAB 2014); Marshall Field & Co. v. Mrs. Field’s Cookies, 25 USPQ2d at 1334; Elec.
Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984); Toys
“R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983). We note, moreover,
that we do not have the actual words of the inquirers before us, only a report that the
inquiries occurred; consequently, we have no way of knowing what the actual inquiry
was or of trying to interpret the mental state demonstrated by the inquiry. On the

44 Diaz dep. 77:3-13, 46 TTABVUE 169. The reference to “original houndstooth” appears to
be a reference to the University’s licensee, named Glen Plaid, LLC but doing business as
Original Houndstooth, which the University authorized to use the right-facing houndstooth
elephant with the words ORIGINAL HOUNDSTOOTH. As we have noted above, the evidence
does not support a finding that Petitioners used this design prior to Respondent’s use of his
registered mark. As Petitioners have shown, prior to this proceeding Respondent had sued
Glen Plaid, LLC, alleging that Glen Plaid’s use of the right-facing houndstooth elephant
infringed Respondent’s rights. 54 TTABVUE 117-134 (Memorandum Opinion, Richard Diaz
and Gamedawg, LLC v. Glen Plaid, LLC, d/b/a Original Houndstooth, Case No. 7:13-cv-853-
TMP, U.S. District Court for the Northern District of Alabama, Western Division).
This lawsuit is discussed more fully infra.
Cancellation No. 92057550
28

important issue of actual confusion, we would require better evidence. This du Pont
factor is neutral.
5. Market interface of the parties.
Petitioners have demonstrated that in 2013, Respondent brought suit against a
licensee of the University, asserting rights in his registered mark in his Registration
and alleging that the houndstooth elephant in the Original Houndstooth mark
infringed Respondent’s trademark rights. Richard Diaz and Gamedawg, LLC v. Glen
Plaid, LLC, d/b/a Original Houndstooth, Case No. 7:13-cv-853-TMP in the U.S.
District Court for the Northern District of Alabama, Western Division. On the
defendant’s motion, the Court dismissed the action without prejudice for failure to
join an indispensable party, i.e., the University (the defendant’s licensor).45 The Court
noted that the Eleventh Amendment of the U.S. Constitution bars suit directly
against the University, and found that “While the court could go through the process
of ordering the University to be joined by amendment to the complaint, it seems
apparent that such would be futile and short-lived, as the University would invoke
its immunity immediately, requiring its dismissal and leaving the court and the
remaining parties exactly where they are today. In the absence of something to
suggest that the University might consent to being sued in this case, the court is not
required to undertake a useless and futile act.”46 The Court also noted:
[E]ven if the case is dismissed, plaintiffs retain an
adequate forum for addressing the controversy over its
ownership rights. Plaintiffs acknowledge that the

45 Memorandum Opinion, 54 TTABVUE 117-134.
46 Id. at 15, fn.8, 54 TTABVUE 131.
Cancellation No. 92057550
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University has elected to file a trademark challenge to the
plaintiffs’ mark in the USPTO, seeking to cancel the mark.
Although it is true that the cancellation proceeding does
not directly address the alleged infringement by Glen
Plaid, it may ultimately resolve the conflicting claims of
ownership between plaintiffs and the University, Glen
Plaid’s licensor. Thus, plaintiffs are not left entirely
without a remedy. If they succeed in defending their
ownership of the mark, they are in a much stronger
position to pursue an infringement action thereafter,
notwithstanding the absence of the University from such
litigation.47
6. Historic and cultural associations evoked by the houndstooth pattern.
The thirteenth du Pont factor provides for review of “any other established fact
probative of the effect of use.” Before we consider the marks at issue, we will consider,
under this factor, the special symbolic significance of the houndstooth pattern, as
asserted by Petitioners. In our comparison of the marks, this significance would have
an impact on the marks’ meaning and connotation and the overall commercial
impressions created by the marks.
The record demonstrates that a celebrated former coach of the University’s
football team, Coach “Bear” Bryant, frequently wore a houndstooth-patterned fedora
while coaching. Petitioners have made of record news items that acknowledge this
fact, making reference to “Bear Bryant’s houndstooth hat,” 44 TTABVUE 127; “he
[Bear Bryant] did it while wearing a houndstooth hat,” id. at 132; “the houndstooth
hat that Bryant wore as a talisman,” id.; “the houndstooth hat that was the symbol
of … Paul ‘Bear’ Bryant,” id. at 140; and “Bear Bryant’s houndstooth hat” id. at 146.

47 Id. at 12-13, 54 TTABVUE 128-129.
Cancellation No. 92057550
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Other news items note the enthusiasm for houndstooth shown by fans of the
University’s football team, with references to “Houndstooth Nation,” id. at 129; “the
place where houndstooth never goes out of style” (i.e., Alabama), id. at 136; and
“women wear houndstooth scarves to match their purses,” id. at 142. An association
between houndstooth and the University’s football team is shown in the following
ESPN promotional image, which combines an elephant’s trunk with a houndstooth
hat and was “use[d] … to promote its coverage of the University’s sports teams”:48

The record also includes numerous third-party craft items from the craft website
, in which various artisans have combined a houndstooth pattern with
various symbols of the sport of football, of the state of Alabama, and of the University

48 Price rebuttal aff. ¶ 3, 56 TTABVUE 3.
Cancellation No. 92057550
31

(including various trademarks of the University, such as its stylized A and the slogan
ROLL TIDE). We note the following:49

Petitioners have shown that for one game in 2006, the University’s football team
wore “commemorative” jerseys with houndstooth trim around the collar; that for the
2009 Sugar Bowl they wore gloves having a houndstooth pattern; and that at some
time “during the year of Coach Bryant’s death” they wore a houndstooth hat sticker
on their helmets.50
Petitioners’ witness Finus Gaston testified that, in 2008, Petitioners launched a
licensing program “focusing on the licensing of the Houndstooth Pattern in

49 Respondent’s notice of reliance, 51 TTABVUE 25, 27, 29.
50 Gaston aff. ¶ 30 and Exs. H and I, 44 TTABVUE 13, 116-117, 119-120.
Cancellation No. 92057550
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conjunction with University indicia.”51 The evidence includes a few photographs of
products, but mostly artwork, showing apparel bearing various combinations of
houndstooth pattern with University indicia such as the stylized A, CRIMSON TIDE,
and ROLL TIDE.52 An example is shown below:53

Mr. Gaston’s testimony regarding the houndstooth licensing program is sufficiently
detailed to persuade us that Petitioners have marketed merchandise on which such

51 Id., ¶ 53, 44 TTABVUE 19-20.
52 Gaston aff. Ex. X, 44 TTABVUE 219-228.
53 Id., 44 TTABVUE 220.
Cancellation No. 92057550
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indicia of the University are combined with a houndstooth pattern from a time prior
to Respondent’s earliest use of his mark.
Mr. Gaston stated that “The University’s fans routinely wear Houndstooth
Pattern apparel (“Houndstooth Apparel”) at games to show support for Coach Bryant,
the University, and the University’s athletic teams.”54 The witness’s affidavit does
not suggest that such apparel originates with Petitioners, and the examples provided
(a black, white and red bow tie; a sleeveless, high-collar blouse, and a woman’s
“newsy” cap)55 appear to be fashion items of types that are available from many
purveyors of clothing. We understand the witness’s statement and the evidence to
indicate that the act of wearing houndstooth to “show support” is the expressive act
of the fans, and not of Petitioners.
The record shows that in the minds of a segment of the public, there is an
association between the houndstooth pattern and Coach Bear Bryant, and that to
some extent the houndstooth pattern has come to be associated with the sport of
football, the University’s football team, the University itself, fans’ enthusiasm for the
University’s football team, and local pride in the State of Alabama.
As we have noted above, “Petitioners do not claim rights in the Houndstooth
Pattern alone.” Petitioners’ brief at 12, fn.53, 59 TTABVUE 20. Accordingly, for
purposes of our analysis we do not treat a houndstooth pattern as constituting, in
itself, a source-indicating trademark of Petitioners. (We bear in mind, however, that

54 Id. ¶ 29, 44 TTABVUE 13.
55 Gaston aff. Ex. G, 44 TTABVUE 114.
Cancellation No. 92057550
34

the University has shown prior use of the HOUNDSTOOTH MAFIA mark by virtue
of its pleaded registration; and has shown use of the PAUL W. BRYANT MUSEUM
mark, which includes an element of houndstooth pattern, since 1988 in connection
with museum services and certain forms of merchandise.)56
7. The marks.
Finally, having set forth the context in which the parties’ goods compete, we turn
to a consideration of the marks at issue, to determine whether Respondent’s mark so
resembles Petitioners’ earlier-used marks as to be likely to cause confusion, mistake,
or deception as to the source of the goods. Petitioners’ earlier-used marks are those
shown in the University’s six pleaded registrations plus Reg. No. 4625053 and the
PAUL W. BRYANT MUSEUM mark. As discussed above, we have found that
Petitioners have failed to demonstrate priority with respect to the Original
Houndstooth elephant design mark and the costumed elephant mascot.
We will initially confine our analysis to the issue of likelihood of confusion between
Respondent’s mark and the mark in Reg. No. 4625053, the elephant silhouette. This
mark is substantially more similar to Respondent’s mark than the others. If
likelihood of confusion is found with respect to these two marks, it will be unnecessary
to address the likelihood of confusion with respect to the other marks; and if we do
not find likelihood of confusion with respect to these two marks, we would not find it
with respect to Petitioners’ other marks. See In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).

56 Gaston aff. ¶¶ 35-50 and Exs. M through W.
Cancellation No. 92057550
35

We consider the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks,
but instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721 (internal quotation marks omitted). The appropriate emphasis is on
the recollection of the average customer, who normally retains a general rather than
a specific impression of trademarks or service marks. Spoons Restaurants, Inc. v.
Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991) (citations omitted), aff'd., No. 92-
1086 (Fed. Cir. June 5, 1992). See Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1740 (TTAB 2014).
In appearance, the marks are similar to the extent that each represents a side view
of an elephant, facing to the left. In each case, the elephant is depicted in flat
silhouette format, with no other realistic details or modelling to create the graphic
illusion of three dimensions. In each case, the tusks are represented (although in
Respondent’s mark only a single tusk is apparent). In each case, the elephant’s trunk
hangs downward, although in Respondent’s mark the end of the trunk is curled
inward and in the University’s mark, the end of the trunk curls outward and upward.
Each elephant has a drooping tail. The outline portions of the two marks are highly
Cancellation No. 92057550
36

similar in appearance, and their differences are so minor that customers might easily
overlook them or not remember them, especially when encountered on relatively
inexpensive goods. The primary difference in appearance between the two marks is
the houndstooth pattern that fills in Respondent’s silhouette and is absent from the
University’s mark. This is a striking distinction in the appearance of the marks.
Neither mark has any phonetic component. In meaning, both marks convey the idea
of an elephant, although the houndstooth pattern in Respondent’s mark injects an
anomalous element that is incongruous with the idea of an elephant. Obviously, no
such elephant actually exists.
In assessing the overall commercial impression created by the marks, we consider
the commercial context in which the parties’ goods are commonly offered (i.e., in the
vicinity of collegiate football games). In that context, the houndstooth pattern, which
is the primary distinguishing component of Respondent’s mark, may be perceived as
an evocation of Coach Bear Bryant, the University of Alabama football team, the
University, or the State of Alabama. In this regard, the houndstooth pattern does not
distinguish the marks, but increases the similarity of their commercial impressions:
both marks would be perceived as elephants associated in some way with the
University, its football team, and the football team’s legendary coach. We therefore
find that the two marks create strongly similar commercial impressions. We find the
first du Pont factor favors a finding of likelihood of confusion.
Cancellation No. 92057550
37

8. Balancing the factors.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The goods of the
parties (shirts and T-shirts) are legally identical and would be offered to the same
customers through the same channels of trade. They are goods that may be relatively
inexpensive and therefore subject to impulse purchasing decisions. There is evidence
showing that the parties’ goods have been offered side-by-side by the same vendors,
and that they have been sold in street fair environments under temporary retail
conditions. Respondent’s mark and the mark in the University’s Reg. No. 4625053
create strongly similar commercial impressions. On this record, we conclude that
Respondent’s mark so resembles the mark in Reg. No. 4625053 as to be likely, when
used on Respondent’s goods, to cause confusion, mistake or deception. Accordingly,
we GRANT the petition to cancel Reg. No. 3993520 on grounds of likelihood of
confusion.
Although we have determined that Respondent’s registration should be cancelled,
for the sake of completeness we will consider Petitioners’ other claims.
V. Petitioners’ claims of non-use and non-use in regulable commerce.
Petitioners allege that Respondent’s Registration should be cancelled because he
has never used his mark with respect to certain goods identified in the Registration;
and because he was not using the mark on any of the identified goods in interstate
commerce at the time he filed his application for registration.
Cancellation No. 92057550
38

A. Non-use as to certain goods.
Petitioners claim that the application underlying Respondent’s Registration was
void ab initio because he has never used his mark anywhere in connection with the
majority of his identified goods. The following interrogatory response is of record:57
8. Identify all goods or services offered for sale or intended
to be offered for sale under Registrant’s mark.
RESPONSE: [objection omitted] T-shirts and sweatshirts.
This is the only evidence cited by Petitioners in their brief,58 and the issue of use of
the mark at the time of Respondent’s application does not appear to have been
otherwise explored at trial.
Absent a finding of fraud, a use-based application is not void in its entirety for
failure of the applicant to have used its mark on all of its identified goods as of the
filing of the application, provided that the mark had been used on some of the
identified goods. Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d
1696, 1697 (TTAB 2006). Therefore, the question raised by Petitioners’ allegation is
whether we should partially cancel Respondent’s Registration by deleting all items
from the identification of goods other than “T-shirts and sweatshirts.” See Trademark
Act Section 18, 15 U.S.C. § 1068.
We find Respondent’s frank acknowledgment that he has used his mark only on T-
shirts and sweatshirts to be sufficient to establish that he was not using the mark on

57 Respondent’s supplemental and corrected responses to first set of interrogatories, 46
TTABVUE 225.
58 Petitioners’ brief at 39-41, 59 TTABVUE 47-49.
Cancellation No. 92057550
39

the other goods identified in his Registration at the time he filed his application. If
the facts were otherwise, it was incumbent upon Respondent to rebut Petitioners’
showing of non-use with respect to those goods. Because Respondent was not using
his mark on goods other than T-shirts and sweatshirts, his Registration must be
cancelled in part, by deletion from the identification of goods all goods other than T-
shirts and sweatshirts. This claim of Petitioners is GRANTED IN PART.
B. Lack of use on any goods in interstate commerce.
Petitioners also claim that Respondent’s application was void ab initio because it
did not meet the requirement of Section 1(a) that the mark be in use in commerce
that is regulable by the U.S. Congress. See 15 U.S.C. § 1051(a) and definition of
“commerce” at 15 U.S.C. § 1127. Petitioners point to two pieces of evidence. One is
the following exchange, during a March 24, 2014 discovery deposition of Respondent:
Q. Have you ever sold any of your products in Georgia?
A. Once I went to Georgia.
Q. And where was that?
A. It was not far from Dothan. … That’s been probably four
or five years ago. …59
The other evidence is the fact that “when Petitioners requested that Registrant
produce ‘[a]ll documents demonstrating Registrant’s sales of Registrant’s Goods
bearing Registrant’s Mark outside of Alabama,’ Registrant produced only one
document …, namely an entry form for an event held on January 29, 2011 in

59 Diaz dep. 97:20-98:2, 46 TTABVUE 180-181.
Cancellation No. 92057550
40

Whigham, Georgia.”60 Based upon this evidence, Petitioners argue “Registrant … has
failed to introduce any evidence showing that he used Registrant’s Mark in any state
other than Alabama before the December 10, 2010 filing date of his application. …
Registrant has produced no evidence corroborating his testimony and has failed to
identify any meaningful evidence establishing use of Registrant’s Mark in interstate
commerce at the time Registrant filed his application.”61
Petitioners’ argument seeks to shift, inappropriately, the burden of proof to
Respondent. Petitioners elicited testimony from Respondent indicating that he had
operated in Georgia four years prior to March 24, 2014, or even earlier. This
testimony is consistent with use prior to Respondent’s December 10, 2010 filing date,
and therefore constitutes no evidence of a failure to engage in interstate commerce.
This evidence therefore does not establish, prima facie, a lack of interstate commerce
by Respondent as of the relevant date. Respondent was under no burden to prove use
of his mark in interstate commerce until Petitioners established a prima facie case.
Petitioners’ claim that Respondent’s application was void ab initio in its entirety is
DISMISSED.
VI. Petitioners’ claim of abandonment.
Petitioners claim that Respondent has abandoned his mark by failing to use it in
interstate commerce. There is no disagreement that Respondent continued to make
some use of his mark at or near the time of trial, because Petitioners’ investigator

60 Petitioners’ brief at 37, 59 TTABVUE 45. See Petitioners’ notice of reliance for produced
documents relating to shows, 46 TTABVUE 272-286.
61 Petitioners’ brief at 36-37, 59 TTABVUE 44-45.
Cancellation No. 92057550
41

reported on the availability of Respondent’s marked goods in his enforcement reports
of September 15 2014 and October 30, 2015.62 However, Petitioners argue that
Respondent has admitted to a failure to sell his goods outside of the state of Alabama,
and that this lack of activity in interstate commerce constitutes abandonment.
Petitioners state, “[A] prima facie showing of abandonment is established where a
party has not used its registered mark in interstate commerce for a three-year period
…”63 Petitioners cite no authority for the proposition that lack of use in interstate
commerce constitutes abandonment even though use may be ongoing in intrastate
commerce, and we find that it is not supported by the text of the relevant statute.
A mark is considered abandoned when “its use has been discontinued with intent
not to resume such use”; and “nonuse for 3 consecutive years shall be prima facie
evidence of abandonment.” Trademark Act Section 45, 15 U.S.C. § 1127. This
definition of “abandonment” includes its own definition of “use”: “‘Use’ of a mark
means the bona fide use of such mark made in the ordinary course of trade, and not
made merely to reserve a right in a mark.” Id. The definition of “abandonment” does
not use the term “use in commerce,” but only “use,” and the latter term is defined in
the very next sentence.64 Even if this statutory language were not clear, the fact that
a registrant continues to use its mark in intrastate commerce is powerful evidence of
a lack of intent not to resume use. See also Christian Faith Fellowship Church v.

62 Price aff., Exs. A and B, 45 TTABVUE 11-16.
63 Petitioners’ brief at 38, 59 TTABVUE 46.
64 It is true that, with respect to the process of applying for registration of a mark under
Section 1 of the Trademark Act and maintaining a registration under Sections 8 and 9, the
statute requires “use in commerce,” a term that is also defined in Section 45.
Cancellation No. 92057550
42

adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016) (finding a particular
intrastate sale to an out-of-state resident to constitute “use in commerce” under the
Trademark Act). We find that Petitioners have failed to demonstrate that Respondent
has abandoned his mark. Petitioners’ abandonment claim is DISMISSED, except as
noted above in Part III.
VII. Petitioners’ claim of false suggestion of a connection.
We next turn to Petitioners’ claim under Trademark Act Section 2(a) on the ground
that Respondent’s mark “falsely suggests a connection with … Petitioners and Coach
Bryant …”65
Section 2(a) of the Trademark Act authorizes the Patent and Trademark Office to
deny registration to a trademark or service mark that “Consists of or comprises …
matter which may … falsely suggest a connection with persons, living or dead….” 15
U.S.C. § 1052(a). Following the guidance set forth in University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 508 (Fed. Cir.
1983), the Board requires that a plaintiff asserting a claim of a false suggestion of a
connection demonstrate:
(1) that the defendant’s mark is the same as or a close
approximation of a plaintiff’s previously used name or
identity;
(2) that the mark would be recognized as such, in that it
points uniquely and unmistakably to the plaintiff;
(3) that the plaintiff is not connected with the activities
performed by the defendant under the mark; and

65 Fourth Amended Petition to Cancel ¶40, 30 TTABVUE 20.
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43

(4) that the plaintiff’s name or identity is of sufficient fame
or reputation that when the defendant’s mark is used on
its goods or services, a connection with the plaintiff would
be presumed.
In re Jackson International Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012);
Hornby v. TJX Companies Inc., 87 USPQ2d 1411, 1424 (TTAB 2008); Buffett v. Chi-
Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).
We note a fundamental problem in the nature of Petitioners’ claim and the way it
is argued. Petitioners contend that the mark as a whole “points uniquely” to each of
two distinct persons, the University and Coach Bear Bryant.66 This approach is
logically untenable.
It may be that Petitioners wish to argue that a single mark may “comprise …
matter” constituting the names or identities of several persons, such that each person
may have a claim under Section 2(a). If that is Petitioners’ theory, their argument
appears to be that the elephant portion of Respondent’s mark is a close approximation
of the University’s name or identity, and the houndstooth pattern portion of the mark
is a close approximation of Coach Bryant’s name or identity:
Registrant’s Mark is similar to Petitioners’ Marks. As
previously discussed, Registrant’s Mark incorporates an
elephant design, referencing the University, combined
with Petitioners’ Houndstooth Pattern Mark, which is a
direct reference to the University and Coach Bryant.67

66 See, e.g., Petitioners’ brief at 33 (“Registrant’s Mark points uniquely and unmistakably to
the University and Coach Bryant.”) and 34 (“Registrant Mark thus points … unambiguously
and uniquely to the University and Coach Bryant.”) 59 TTABVUE 41, 42.
67 Id. at 33, 59 TTABVUE 41.
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(Even in this formulation, Petitioners’ argument suggests that the houndstooth
pattern refers to both the University and Coach Bryant, which runs afoul of the
requirement that it point uniquely to someone.)
According to either construction of Petitioners’ claim, on the present record we find
that the claim must fail. When we consider Respondent’s mark as a whole, it has too
many points of difference from the University’s marks to constitute a “close
approximation.” If we consider only the elephant outline portion of Respondent’s
mark, it is substantially different from the University’s pleaded elephants and is not
a “close approximation” of any of them. It is possible that the outline of Respondent’s
mark is a “close approximation” of the mark in Reg. No. 4625053; however, the
evidence of the University’s use of that mark is so sparse that it is impossible to find
that it is the University’s “name or identity.” Moreover, it is impossible to find, on
this record, that the design of an elephant points uniquely to the University. There is
too much evidence of third parties that identify themselves with symbols in the form
of an elephant. See, e.g., Tufts University’s elephant mascot named Jumbo; the
mascot of the Titans of California State University Fullerton; the Fort Wayne
Mastodons; the Oakland Athletics and their predecessor the Philadelphia Athletics;
and Republican National Committee.68 To the extent that Petitioners may claim that
the peculiar combination of an elephant with a houndstooth pattern is the name or
identity of the University, we note that Petitioners have not shown that any such

68 Petitioners’ second notice of reliance, 54 TTABVUE 8-15, 21, 34, 36-55, 65-75.
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combination was used by the University earlier than Respondent’s filing date. See In
re Nuclear Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990).
Similarly, on the present record we are not persuaded that the houndstooth pattern
portion of Respondent’s mark can be characterized as a close approximation of the
name or identity of Coach Bear Bryant, which would be recognized as pointing
uniquely and unmistakably to him. There is too much evidence suggesting that the
houndstooth pattern may have other meanings. The University itself claims that the
pattern is “a direct reference to the University …”69 Much of the evidence suggests
that, after the departure of Coach Bryant, fans may associate the pattern with the
football team; and much evidence suggests that fans consider houndstooth an
expression of their own fandom or an expression of pride in the State of Alabama.
Petitioners have failed to demonstrate that the houndstooth portion of Respondent’s
mark points uniquely to Coach Bear Bryant.
The evidence of record does not indicate that Respondent’s mark, or any portion of
it, is the previously used name or identity of either Petitioner that points uniquely to
either of them. Without such a showing, Petitioners’ claim that the Registrant’s
registered mark falsely suggests a connection with them cannot succeed. Petitioners’
claim under Section 2(a) is DISMISSED, except as noted above in Part III.

69 Petitioners’ brief at 33, 59 TTABVUE 41.
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Decision:
Petitioners’ claims are GRANTED IN PART, specifically as to the goods that
Respondent has deleted from his Registration, to wit, “bib shorts; cloth bibs; dresses;
gloves; headbands; infant diaper covers; jackets; nightshirts; pants; rain jackets;
scarves; shorts; ties; toboggan hats, pants and caps.”
Otherwise, Petitioners’ claims of abandonment, false suggestion of a connection,
and nonuse of the mark in regulable commerce are DISMISSED.
Petitioners’ claim under Section 2(d) is GRANTED. Respondent’s registration will
be cancelled in due course.
Petitioners’ claim of nonuse of Respondent’s mark with respect to certain goods at
the time of application is GRANTED IN PART. In the event our determination of
Petitioners’ Section 2(d) claim is reversed on any appeal, Respondent’s Registration
will be cancelled in part by deletion of the following goods70 from the identification of
goods:
Bib shorts; Caps; Cloth bibs; Dresses; Gloves; Headbands;
Infant and toddler one piece clothing; Infant diaper covers;
Jackets; Nightshirts; Pants; Rain jackets; Scarves; Shirts;
Shorts; Ties; Toboggan hats, pants and caps.

70 The list of goods to be deleted by virtue of our partial grant of Petitioners’ claim of nonuse
is somewhat broader than the list of goods deleted by Respondent’s Section 8 affidavit.