Bodywaves, Inc.v.Stephen Malouf

Trademark Trial and Appeal Board

Sep 23, 1999

No. 91104381 (T.T.A.B. Sep. 23, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/23/99
TEH/cbg
Opposition No. 104,381
Bodywaves, Inc.
v.
Stephen Malouf
Before Simms, Cissel and Holtzman, Administrative Trademark
Judges.
By the Board.
Applicant has applied to register the mark MY
BOYFRIEND’S T for the following goods: “clothing, namely,
T-shirts, sleepshirts and skirts, pajamas, boxers, shirts.”
The application, Serial No. 75/022,478, was filed November
20, 1995, based on applicant’s assertion of a bona fide
intention to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. §1051(b). Applicant has disclaimed
the letter “T.”
Opposer filed a timely notice of opposition, alleging,
as the ground for opposition, priority of use and
likelihood of confusion under Trademark Act Section 2(d),
15 U.S.C. §1052(d). Specifically, opposer alleges that it
has been in the business of designing and manufacturing
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 104,371
2
clothing since 1986; that it continuously has used the mark
MY BOYFRIEND in interstate commerce in connection with
clothing articles since October 30, 1986; and that
confusion would be likely to result from applicant’s use of
MY BOYFRIEND’S T on the goods identified in his
application. Opposer also alleges that it filed an
application to register MY BOYFRIEND, which has been
suspended due to a potential likelihood of confusion with
MY BOYFRIEND’S T, the mark at issue herein.
Applicant has filed an answer in which he denies the
salient allegations of opposer’s notice of opposition. In
addition, applicant has affirmatively asserted that
“[o]pposer has not used the mark applied for, or any
similar mark in interstate commerce”; that “[o]pposer has
never used the name outside of local commerce”; that “[i]f
opposer has used any similar mark to the one applied for,
it has been abandoned”; that “opposer has not used [the]
mark applied for on a continuous basis”; and that “opposer
has failed to continuously use [the] mark in commerce.”
Opposition No. 104,371
3
This case now comes up on opposer’s motion for summary
judgment on its Section 2(d) claim. The parties have fully
briefed the motion. 1
In the motion for summary judgment, opposer argues
that there are no genuine issues of material fact with
respect to priority and likelihood of confusion. Opposer
maintains that it has priority by virtue of its use of the
mark dating to 1986. Opposer further contends that the
involved marks are similar in appearance, sound, and
meaning, and that the involved goods are identical and are
sold to the same class of purchasers. 2
As evidence in support of its motion, opposer
submitted portions of applicant’s responses to opposer’s
interrogatories and document requests, including examples
of applicant’s use of the mark MY BOYFRIEND’S T on the
identified goods, such as labels and hang tags, and the
declaration of Andy Su, opposer’s president, attesting to,
inter alia, the continuous use of MY BOYFRIEND since 1986.

1 We note that applicant’s response to the summary judgment
motion was not timely filed. However, in the interest of
justice, and since it is the policy of the law to decide cases on
their merits, we have considered applicant’s response in making
our decision.
2 Opposer also states that it owned a registration for the mark
MY BOYFRIEND (U.S. Registration No. 1,502,308) for blouses,
skirts, pants, shorts and dresses, which was cancelled for
failure to timely file an affidavit of continuing use.
Opposition No. 104,371
4
In opposition to this motion, applicant argues that he
has priority because he filed his application for MY
BOYFRIEND’S T on November 20, 1995, and began to use the
mark in commerce on December 2, 1996, while opposer filed
its application to register MY BOYFRIEND on April 8, 1996.
Applicant also argues that “[s]ince Applicant has gone
through the legal channels to obtain the mark MY
BOYFRIEND’S T, Opposer should not be granted a motion for
summary judgment.” Applicant further argues that there is
no likelihood of confusion because the goods are different,
that his goods consist of a “men’s inspired comfort and
leisure clothing collection for women who like to borrow
such items from their boyfriend’s wardrobe,” and that:
[s]uch product follows strong marketing strategies and do
[sic] not in any way or form follow unethical copying of
any other label or product line already bearing a similar
name. Stephen Malouf immediately sought to protect this
trade name, recognizing the strength of the product which
is now currently used in commerce. . . . Opposer does not
produce a similar product as claimed. We do not make
leggings, blouses, dresses; the average man does not wear
such an item. We manufacture clothing that is men’s
inspired; something you borrow from your boyfriend. There
is no confusion in the marketplace as claimed.
In support of his arguments, applicant submitted: a
copy of opposer’s responses to applicant’s interrogatories
and document requests; a copy of the filing receipt and
notice of publication for MY BOYFRIEND’S T; copies of
several invoices for sales of clothing items under the mark
Opposition No. 104,371
5
MY BOYFRIEND’S T, dating to December 1, 1996; a copy of a
portion of a computer search report that lists only
applicant’s mark and opposer’s mark; and a copy of
opposer’s application to re-register MY BOYFRIEND,
including a drawing page, a copy of a specimen, which
appears to be a label, and the Office Action suspending
opposer’s application.
Summary judgment is appropriate when the record shows
that there is no genuine issue of material fact and that
the moving party is entitled to judgment as a matter of
law. Rule 56(c). A dispute as to a material fact issue is
genuine only if a reasonable fact finder viewing the entire
record could resolve the dispute in favor of the nonmoving
party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). In deciding a
motion for summary judgment, the Board must view the
evidence in the light most favorable to the nonmovant and
must draw all reasonable inferences from underlying facts
in favor of the nonmovant. Id.
The party seeking summary judgment bears the initial
burden of informing the Board of the basis for its motion
and identifying those portions of the record which it
believes demonstrate the absence of a genuine issue of
material fact. See Celotex Corp. v. Catrett, 477 U.S. 317,
Opposition No. 104,371
6
106 S. Ct. 2548 (1986). When the moving party’s motion is
supported by evidence sufficient, if unopposed, to indicate
that there is no genuine issue of material fact, and that
the moving party is entitled to judgment, the burden shifts
to the nonmoving party to demonstrate the existence of
specific genuinely disputed facts which must be resolved at
trial. The nonmoving party may not rest on mere
allegations of its pleadings and assertions of counsel, but
must designate specific portions of the record, or produce
additional affidavit evidence showing the existence of a
genuine issue of material fact for trial. If the nonmoving
party does not so respond, summary judgment, if
appropriate, shall be entered in the moving party’s favor.
Rule 56(e).
In this case, we believe that opposer has carried its
burden of showing prima facie the absence of any genuine
issue of material fact, and its entitlement to judgment as
a matter of law. Applicant has not presented any affidavit
or other evidence showing the existence of a genuinely
disputed fact issue for trial, but rather has argued the
merits of the likelihood of confusion issue. We do not
find applicant’s arguments persuasive.
Opposition No. 104,371
7
First, there is no genuine issue of material fact as
to opposer’s priority. 3 For purposes of establishing
priority in this type of proceeding, an opposer will
prevail if it can establish use prior to the filing date of
the applicant’s intent-to-use application, or prior to the
earliest date of use on which the applicant is entitled to
rely. The fact that applicant filed his application before
opposer filed its application is not determinative where,
as here, opposer has shown earlier use.
In this case, Mr. Su avers in his declaration that
opposer first used the mark MY BOYFRIEND on October 30,
1986. In addition, the exhibits that Mr. Su introduced are
sufficient to establish opposer’s use of the mark MY
BOYFRIEND well before the date on which applicant filed his
intent-to-use application, and before applicant’s claimed
date of first use. Specifically, exhibit B to the Su

3 In this regard, we note that applicant has not asserted any of
his affirmative defenses in response to the summary judgment
motion, nor would such affirmative defenses have been sufficient
to raise genuine issues as to priority. Even if we were to
assume that opposer had abandoned the mark between 1988 and 1991,
opposer’s 1991 use date is still earlier than any date to which
applicant has attested, and opposer has provided uncontroverted
evidence of continued use. Moreover, it is irrelevant whether
opposer’s prior use was strictly intrastate in nature. While
interstate use is a prerequisite to obtaining a federal
registration, opposer may prevail in an opposition proceeding
upon a showing of priority of use in any geographic area of the
United States. See Corporate Document Services Inc. v. I.C.E.D.
Management Inc., 48 USPQ2d 1477 (TTAB 1998) .
Opposition No. 104,371
8
declaration includes numerous invoices that clearly show
opposer’s use of the mark MY BOYFRIEND for articles of
clothing in 1987, 1988, and 1991-1997. On the other hand,
in response to opposer’s interrogatory No. 7, applicant
avers that his first use of the mark MY BOYFRIEND’S T on
clothing was December 2, 1996. As the December 2, 1996
date is after applicant’s 1995 filing date, applicant is
entitled to rely on his earlier filing date for purposes of
priority, rather than this later actual use date. However,
opposer’s first use of its mark predates even applicant’s
1995 filing date. Accordingly, opposer has established its
prior right to use the mark MY BOYFRIEND as a matter of
law.
We find that opposer also has carried its burden of
establishing that no genuine issues of material fact remain
and that it is entitled to judgment as a matter of law on
the issue of likelihood of confusion. In reaching our
decision, we have carefully considered the relevant
likelihood of confusion factors enumerated in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See Sweats Fashions Inc. v. Pannill Knitting Co.
Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
First, there is no genuine issue of material fact as
to the similarity of the parties’ goods. We are not
Opposition No. 104,371
9
persuaded by applicant’s arguments that his goods are
distinguishable from opposer’s goods. As noted above,
applicant has identified his goods as: “clothing, namely,
T-shirts, sleep shirts and skirts, pajamas, boxers, [and]
shirts.” Opposer has identified its goods as: “clothing;
namely blouses, skirts, pants, shorts and dresses.” The
respective goods include an identical item (skirts) as well
as other highly related clothing items.
It is not even necessary that the goods be identical
in order to find a likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner that
consumers encountering them under their respective marks
are likely to assume that the goods originate from the same
source or that there is some association between the
sources. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel
Inc., 223 USPQ 830 (TTAB 1984). Further, the decisions in
this field have held many different types of apparel
related under Section 2(d). See, e.g., In re M. Serman &
Co., Inc., 223 USPQ 52 (TTAB 1984) (“CITY WOMAN” for
blouses vs. “CITY GIRL” for, inter alia, shirts, skirts,
and T-shirts); Varsity Pajamas, Inc. v. Schackne, 143 USPQ
428 (TTAB 1964) (“VARSITY HOUSE” for, inter alia, T-shirts
Opposition No. 104,371
10
vs. “VARSITY” for, inter alia, underwear, pajamas and
nightshirts); In re M. H. Raab-Meyerhoff Co., 171 USPQ 172
(TTAB 1971) (“RT” for shirts for men, women and boys vs.
“RT” for, inter alia, skirts, shorts and blouses for women
and girls); Tudor Square Sportswear, Inc. v. Pop-Op Corp.,
160 USPQ 50 (TTAB 1968)(“CHEETAH” and a fanciful
representation of a cheetah for belts, skirts, hats and
pants vs. “CHEETAHS” for ladies’ pants); Ex parte Julette
Originals, 69 USPQ 178 (Comm’r Pat. 1946)(“JULETTE” for
dresses vs. “JULIETTE” for sleeping garments for men, women
and children.)
Moreover, the nature and scope of an applicant’s goods
must be determined on the basis of the goods identified in
the application. See, e.g., Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).
Applicant’s identification of goods contains no limitations
as to the trade channels through which and the classes of
purchasers to whom applicant’s goods are offered.
Therefore, we must presume that applicant’s goods are
offered in all normal trade channels and to all classes of
purchasers, including those to whom opposer’s goods are
offered. See Canadian Imperial Bank of Commerce, supra.
Opposition No. 104,371
11
Second, applicant has failed to identify any genuine
dispute as to the similarity of the parties’ marks which
would require resolution at trial. In this vein, although
we recognize that the marks are to be viewed in their
entireties, one portion of a mark may be considered more
prominent in determining similarity. See Giant Food, Inc.
v. National Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Disclaimed matter typically is less
significant or less dominant. See In re National Data
Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985);
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
As noted above, applicant has disclaimed the letter
“T” apart from the mark as shown. Accordingly, and because
“T” is a descriptive or generic part of applicant’s mark,
the words MY BOYFRIEND’S comprise the dominant portion of
applicant’s mark. Viewing the marks in their entireties,
as we must, we find that the marks MY BOYFRIEND’S T and MY
BOYFRIEND create highly similar commercial impressions.
Further, neither party is limited to using their
respective marks in any particular form. In this regard,
the evidence of record shows that applicant and opposer do,
in fact, use their marks in a similar manner on labels and
hang tags. Opposer’s specimen of use, which seems to be a
Opposition No. 104,371
12
label, and examples of applicant’s hang tags and labels,
have been reproduced below.
Opposer’s specimen of use appears as follows:
Applicant’s hang tags and labels appear as follows:
(hang tag) (label)
Both parties place the word MY above and to the left
side of the word BOYFRIEND or BOYFRIEND’S, the words appear
in all capital letters, and the fonts are similar. In
addition, applicant uses a stylized design of a T-shirt to
represent the letter “T” in its mark. The T-shirt design
is placed below the words MY BOYFRIEND’S. Such placement
Opposition No. 104,371
13
and usage may create the impression that applicant’s mark
is MY BOYFRIEND’S, rather than MY BOYFRIEND’S T.
Accordingly, we find that there is no genuine issue of
material fact with respect to the similarity or
dissimilarity of the parties’ marks in their entireties in
terms of appearance, sound, connotation and commercial
impression.
Because there are no genuinely disputed factual issues
which require trial for their resolution, because the
undisputed facts of record establish, as a matter of law,
that opposer is entitled to judgment on its Section 2(d)
claim, and because applicant has not established a valid
defense to that claim, we grant opposer’s motion for
summary judgment. See Fed. R. Civ. P. 56(c).
Opposition No. 104,371
14
Judgment is hereby entered against applicant, the
opposition is sustained and registration to applicant is
refused.
R. L. Simms
R. F. Cissel
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board