Danjaq, LLCv.Jason & Jean Products Inc.

Trademark Trial and Appeal Board

Aug 21, 2002

No. 91120980 (T.T.A.B. Aug. 21, 2002)

Mailed: August 21, 2002
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Danjaq, LLC
v.
Jason & Jean Products Inc.
_____
Opposition No. 120,980
against Application Serial No. 75/725,874,
filed June 11, 1999;
and Cancellation No. 31,532
against Registration No. 2,374,963,
issued August 8, 2000
_____
Christopher N. Bolinger of Brinks Hofer Gilson & Lione for
Danjaq, LLC.
Chin H. Kim pro se for Jason & Jean Products Inc.
______
Before Simms, Hohein and Holtzman, Administrative Trademark
Judges:
Opinion by Simms:
Danjaq, LLC (opposer), a Delaware limited liability
company, has opposed the application of Jason & Jean
Products Inc. (applicant), a New York corporation, to
THIS DISPOSITION IS NOT
CITABLE PRECEDENT OF
THE TTAB
Opp. No. 120,980 and Canc. No. 31,532
2
register the mark 007 HAIR WEAVING BOND (“HAIR WEAVING
BOND” disclaimed) for adhesives for attaching artificial
hair pieces.1 Opposer also filed a petition to cancel
applicant’s Registration No. 2,374,963, issued August 8,
2000, covering the mark 007 WEAVING BOND (“WEAVING BOND”
disclaimed) for the same goods. On August 3, 2001, these
proceedings were consolidated. We shall refer to the
parties as “opposer” and “applicant,” respectively.
Opposer has filed a motion for summary judgment,
arguing that there are no genuine issues of material fact
and that opposer is entitled to judgment on the issue of
likelihood of confusion. Applicant has opposed the motion
and also moved for summary judgment. Before discussing the
motions, we shall briefly discuss the pleadings.
In the pleadings in both cases, opposer has alleged
that applicant’s marks so resemble opposer’s previously
used and registered marks (shown below):

1 Application Serial No. 75/725,874, filed June 11, 1999, based upon
applicant’s allegations of use since March 6, 1998.
Opp. No. 120,980 and Canc. No. 31,532
3
for a broad range of goods and services including cosmetics
and colognes, as to be likely to cause confusion, to cause
mistake or to deceive.2 Opposer asserts that it and its
predecessors have used these marks since 1962; that these
marks have been extensively used and promoted and have
become famous throughout the world; and that applicant, by
adopting a slanted appearance of the number 007 in the mark
007 HAIR WEAVING BOND, has the clear intent of trading off
the goodwill of opposer’s marks. Opposer also pleaded that
applicant’s marks dilute the distinctive quality of
opposer’s famous marks under Section 43(c) of the Act, but
this ground is not the subject of opposer’s motion for
summary judgment. With its pleadings, opposer has
submitted status and title copies of its pleaded
registrations.
In its answers, applicant has, among other things,
denied the allegations of opposer’s pleadings. Applicant

2 Registration No. 1,739,332, issued December 15, 1992, partial Sections
8 and 15 affidavit accepted and acknowledged, respectively; and
Registration No. 1,737,876, issued December 8, 1992, partial Sections 8
and 15 affidavit accepted and acknowledged, respectively. Each of
these registrations originally issued for goods in 8 classes.
Opp. No. 120,980 and Canc. No. 31,532
4
has also listed various third-party registrations
containing words unrelated to the marks in these
proceedings, such AMERICAN, BEAUTY, NEW YORK, HOLIDAY,
CRAZY, WORLD and KING, apparently to show the existence on
the register of a number of marks all containing similar
terms.
While applicant seeks to register the mark shown in
one line-—007 HAIR WEAVING BOND-—the mark as actually used
appears as follows:
In its motion, opposer argues that confusion is likely
because of the similarities of the parties’ marks, the
strength and fame of its 007 marks, the similarity of
parties’ goods, the variety of goods on which opposer uses
its marks, and the bad faith of applicant evidenced by
applicant’s actual knowledge of opposer’s marks as well as
the prominent appearance in slanted format of the number
Opp. No. 120,980 and Canc. No. 31,532
5
007 in at least one of its marks.3 It is opposer’s position
that the use of opposer’s marks on a wide variety of
collateral products has conditioned the public to expect a
variety of seemingly unrelated products to come from the
same source.
With its motion opposer submitted a declaration of its
Chief Operating Officer, David S. Pope, stating that 19
films in the Bond/007 series have been produced since 1962
and that this series of films is one of the most successful
motion picture franchises in history. Mr. Pope further
states that since 1962 opposer and its predecessors have
used the 007 and JAMES BOND marks on a wide variety of
goods as part of an extensive licensing and merchandising
program associated with the marketing and distribution of
the Bond/007 series of films. Mr. Pope indicates that the
marks have been licensed and used in connection with such
goods as clothing, video games, posters, computer software,
cigarette lighters, coffee mugs, calendars, wristwatches,
colognes, perfumes, shampoo, soap, razors, jewelry,
stationary, sunglasses and other products. According to
Mr. Pope, since 1962 opposer, its predecessors, licensees
and distributors have achieved sales in the United States

3 In one of applicant’s discovery responses (No. 24), submitted by
opposer as an exhibit to its motion, applicant’s president admits
knowledge of the Bond series of motion pictures but states that the
“motion picture was not the reason for creating the trademark.”
Opp. No. 120,980 and Canc. No. 31,532
6
of goods and services under the marks of over $900 million
while spending over $200 million in advertising and
promotion. Mr. Pope states that consumers readily
recognize the 007 marks and identify them with goods and
services related to the Bond/007 films. Opposer has
submitted photographs of its marks on such goods as shampoo
(BOND 007 and design), cologne (JAMES BOND 007 and design),
bath soap (BOND 007 and design) and after shave (007).
In opposition to opposer’s motion and in support of
its own motion, applicant argues that the marks are
entirely different in “text and sound” and that they do not
so resemble each other as to be likely to cause confusion.4
Applicant has also referred to and attached several third-
party registrations which include the letters 007 for such
goods as laboratory equipment (007), electric fans (MODEL
007) and computer software (ID-007), apparently to show
“weakness” of opposer’s marks. Applicant has also referred
to and attached electronic copies of unrelated third-party
registrations all containing various words such as
ELIZABETH, PERFUME, AMERICA, NEW YORK, BEAUTY, and
HOLLYWOOD, apparently in an attempt to show that various

4 Opposer has moved to strike applicant’s brief on the basis that it was
not filed within 20 days of service of opposer’s motion. The motion is
denied. Trademark Rule 2.127(e)(1) provides for a 30-day period for
response to a motion for summary judgment. Applicant’s response was
timely filed.
Opp. No. 120,980 and Canc. No. 31,532
7
marks containing the same word co-exist on the register for
related goods.
Summary judgment is an appropriate method for
disposing of cases in which there are no genuine issues of
material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c).
The party moving for summary judgment has the initial
burden of demonstrating the absence of any genuine issue of
material fact. See Celotex Corp. v. Catrett, 477 U.S. 317
(1986); and Sweats Fashions Inc. v. Pannill Knitting Co.,
833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). A factual
dispute is genuine if a reasonable finder of fact could
resolve the matter on the evidence of record in favor of
the non-moving party. See Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992); and Olde Tyme Foods Inc. v. Roundy's
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
However, the evidence must be viewed in a light most
favorable to the non-movant, and all justifiable inferences
are to be drawn in the non-movant’s favor. See Lloyd's
Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993); and Opryland USA, supra.
After careful consideration of this record on summary
judgment and the arguments of the parties, we agree with
Opp. No. 120,980 and Canc. No. 31,532
8
opposer that there are no genuine issues of material fact
and that judgment should be entered in opposer’s favor.
First, priority is not an issue in this case in view
of opposer’s submission of status and title copies of its
pleaded registrations. See King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). In the opposition, these registrations eliminate
the issue of priority, and in the cancellation proceeding,
the registrations’ filing dates long precede the filing
date of the registration sought to be cancelled. In this
regard, we have held that, in the absence of testimony or
other evidence relating to the dates of first use of the
respective marks of the parties,5 priority lies with the
petitioner where the record reveals that the registration of
its pleaded mark shows not only that the registration is
subsisting and owned by the petitioner, but also that the
filing date of the application which matured into such
registration is earlier than the filing date of the
application which resulted in the respondent's involved
registration for its mark. See, e.g., Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423,
1428-29 (TTAB 1993) at n. 13; and American Standard Inc. v.
AQM Corp., 208 USPQ 840, 841-42 (TTAB 1980).

5 We note that opposer’s declaration does not indicate when opposer
started using its marks in connection with cosmetics such as hair
lotions and shampoos or, for that matter, any of the collateral goods
listed in the registrations.
Opp. No. 120,980 and Canc. No. 31,532
9
With respect to the marks, applicant’s marks 007
WEAVING BOND and 007 HAIR WEAVING BOND share obvious
similarities in sound, appearance and connotation with
opposer’s marks. In this regard, while it is well settled
that it is improper to dissect a mark (In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)), it
is also true that more or less weight may be given to a
particular feature of a mark for rational reasons. In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985)(“[T]here is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided [that]
the ultimate conclusion rests on consideration of the marks
in their entireties.”) Here, all wording has been
disclaimed in applicant’s marks and these descriptive or
generic words describe or name applicant’s product rather
than indicate source. Less weight to those words may be
given in the likelihood-of-confusion analysis. Applicant’s
marks and opposer’s marks, especially the 007 and design
mark, share the dominant portion 007. Since applicant’s
marks are in typed form, we must consider all reasonable
manners in which applicant could depict the 007 portion of
its marks, including the slanted format used by opposer.
Applicant could, and in fact does, display its marks (at
Opp. No. 120,980 and Canc. No. 31,532
10
least the mark 007 HAIR WEAVING BOND) in this format,
thereby further increasing the marks’ similarity. In
addition, as opposer has pointed out, applicant’s marks
also contain the word “BOND,” which, although descriptive
or generic in the context in which applicant uses this
word, is nevertheless a play on the name BOND in opposer’s
mark and tends to bolster an association with opposer.
There is no genuine issue that the respective marks are
similar.
Concerning the goods, applicant’s hair-piece
adhesives, while specifically different from opposer’s
products, are related to such products as hair lotions and
shampoos listed in opposer’s registration of the 007 and
design mark.6 These products are all used for the care of
or appearance of the hair and are sufficiently related such
that they would likely be attributed to the same source if
they bear very similar marks. Also, opposer’s cologne and
toilet water, listed in opposer’s registration for the mark
JAMES BOND 007 and design, are cosmetic products related to
applicant’s hair-piece adhesives. In this regard, we note

6 The Class 3 goods in opposer’s 007 and design registration include such
goods as “toilet, body, and facial soaps; perfumes, colognes, toilet
water, gel and foam shaving creams, shaving lotions and creams, body
and face powders, cosmetics; namely, lip creams, lipsticks, eye shadow,
mascara; nail polish, nail polish remover, body, face, hair lotions,
creams, and oils; sun creams and lotions, hair shampoo, personal
deodorants, bath oils, dentifrices.” In the JAMES BOND 007 and design
registration, all Class 3 goods but colognes and toilet water have been
deleted.
Opp. No. 120,980 and Canc. No. 31,532
11
that applicant indicates in its response (No. 2) to
opposer’s interrogatories, submitted as an exhibit by
opposer, that applicant also makes and distributes “hair
care products, fragrances, lip balms and hair sundries.”
These products, apparently offered under different marks,
are very similar to those on which opposer uses and has
registered its marks. This fact helps demonstrate that
fragrances, such as colognes and toilet water, as well as
hair-piece adhesives may, and in fact do, come from the
same source. Moreover, we note that applicant has offered
no evidence or argument on this factor. Applicant has,
therefore, not raised a genuine issue of fact concerning
the relatedness of the goods.
We also agree with opposer that its 007 marks have
achieved substantial recognition and fame. Applicant has
not submitted any evidence showing that there is a genuine
issue concerning the fame of opposer’s marks.7 As opposer
has argued, “fame of the prior mark… plays a dominant role
in cases featuring a famous or strong mark.” Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22

7 The copies of the third-party registrations do not create a factual
dispute. The registrations which contain the number 007 are for
completely unrelated goods, such as electric fans and laboratory
equipment, and do not show that there is no likelihood of confusion
involving opposer’s cosmetic products and applicant’s adhesives for
hair pieces. The third-party registrations for completely different
marks, such as ELIZABETH, AMERICA, and HOLLYWOOD, are also irrelevant.
Opp. No. 120,980 and Canc. No. 31,532
12
USPQ2d 1453, 1456 (Fed. Cir. 1992); and Recot, Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000).
Applicant had a duty to avoid using confusingly similar
marks.
Furthermore, the fact that opposer also sells a wide
variety of goods under its marks encourages potential
purchasers to believe that applicant’s goods may also come
from, or be licensed or sponsored by, opposer.
Finally, the fact that opposer’s hair care products
and applicant’s hair-piece adhesives are relatively
inexpensive items that would not likely be purchased with a
great deal of care is another factor in opposer’s favor.
Since other factors, including the fame of opposer’s
marks, clearly support a finding of likelihood of
confusion, even if there is a genuine issue as to
applicant’s bad faith, such is simply not material because,
if resolved in applicant’s favor, there still exists a
likelihood of confusion when applicant’s marks are used in
connection with its hair-piece adhesives.
Because applicant’s response has presented no evidence
creating a factual dispute but only conclusory assertions
of no likelihood of confusion, summary judgment in favor of
opposer is warranted. Applicant’s motion for summary
judgment is denied; opposer’s motion for summary judgment
Opp. No. 120,980 and Canc. No. 31,532
13
is granted; the opposition is sustained and registration to
applicant is refused; the petition for cancellation is
granted; and Registration No. 2,374,963 will be cancelled
in due course.