Duke Universityv.Haggar Clothing Co.

Trademark Trial and Appeal Board

Aug 21, 2003

No. 91108304 (T.T.A.B. Aug. 21, 2003)

Hearing: Paper No. 97
May 29, 2003
Mailed: 8/21/03
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Duke University
v.
Haggar Clothing Co.
_____
Opposition No. 108,304
to application Serial No. 75/113,735
filed on June 4, 1996
_____
Susan Freya Olive of Olive & Olive, P.A. for Duke
University.
Priscilla L. Dunckel of Baker Botts LLP for Haggar Clothing
Co.
______
Before Cissel, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 4, 1996, applicant filed the above-referenced
application to register the mark “DUKE AMERICA” on the
Principal Register for “wearing apparel, namely, men’s and
boys (sic) pants, jeans, shorts, belts, shirts, suits,
jackets, coats, vests, sweaters, neckties, swimwear, socks,
underwear and hats,” in Class 25. The stated basis for
filing the application was applicant’s assertion that it
possessed a bona fide intention to use the mark in commerce
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 108,304
2
in connection with the goods listed in the application. The
application was examined and the mark was passed to
publication with a disclaimer of the geographically
descriptive word “AMERICA.”
A timely Notice of Opposition was filed by Duke
University on November 7, 1997. As grounds for opposition,
opposer alleged that “DUKE AMERICA” so resembles opposer’s
famous “DUKE” marks, which have been used in connection with
identical goods, that if it were used in connection with the
clothing items listed in the application, confusion or
mistake would be likely. In its answer, applicant denied
the essential allegations set forth in the Notice of
Opposition.
A trial was conducted in accordance with the Trademark
Rules of Practice. Much of the results of the discovery
conducted by the parties was made of record, either by
notices of reliance or as exhibits to testimonial
depositions. In addition to documentary and written
discovery, each party took the deposition of a designated
representative of the other. During the trial, Duke deposed
fourteen individuals and filed a Notice of Reliance on
eighty items, including the discovery deposition, with
exhibits, of Alan Burks, applicant’s Vice President. During
its own testimony period, applicant also took the testimony
of Mr. Burks, as well as the testimony of employees of three
Opposition No. 108,304
3
third parties, Royal Textile Mills, Inc., Haband Company and
the James Madison University Foundation, Inc..
On the last day of applicant’s testimony period,
applicant filed a notice of reliance on thirty-seven
additional items, including the affidavit, with exhibits, of
a paralegal employee of counsel for applicant. Opposer
objected to the Board’s consideration of this affidavit and
the exhibits to it. Although applicant subsequently asked
opposer to consent to the introduction of this testimony and
exhibits, opposer did not consent. In view of this fact, we
have not considered it. See Trademark Rule 2.123(b).
Accordingly, opposer’s objection to the affidavit and its
exhibits is sustained.
The other matter that requires explanation prior to our
discussion of the determination of this opposition on its
merits is applicant’s objection to our consideration of the
testimony of opposer’s expert witness, Mr. McBride, and to
the survey he conducted. Opposer presented this testimony
and evidence (as well as two other depositions to which
applicant has not objected) as rebuttal, i.e., after opposer
had presented its case in chief during its testimony period,
and after applicant had responded to opposer’s claims and
evidence during applicant’s testimony period. Resolution of
applicant’s timely made objection was properly deferred
until final decision, as the parties were advised at the
Opposition No. 108,304
4
time applicant first objected to Mr. McBride’s testimony and
the survey upon which it is based, and applicant and opposer
both argued this issue in their respective briefs and at the
oral hearing.
The issue is whether opposer’s survey and the testimony
that explains it were proper rebuttal as responsive to
applicant’s asserted defenses, or, as applicant asserts,
this testimony and these exhibits could only have been
presented as part of opposer’s case in chief.
The survey was designed to determine whether the third-
party uses shown by applicant during its testimony period
have diluted the fame of opposer’s “DUKE” mark for clothing,
and whether, as applicant argues its testimony and evidence
shows, such third-party uses of similar marks have created a
marketplace in which confusion between opposer’s mark and
the mark applicant seeks to register would not be likely.
The survey employed standard mall intercept
methodology. It was conducted at locations outside North
Carolina, where opposer’s main campus is located, and away
from other schools in opposer’s athletic league. One of the
sites was in applicant’s home state of Texas. Others were
spread across the country, from Florida to California,
including locations in Arizona, Massachusetts, Ohio and
Minnesota.
Opposition No. 108,304
5
Qualified respondents were shown an ordinary t-shirt of
the type actually sold by Duke University, bearing either
the mark “DUKE” or the mark “DUKE AMERICA.” Respondents
were asked questions about the shirt they were shown. First
they were asked what came to mind when they saw the name on
the shirt. Then they were asked whether they thought it was
likely that the shirt was endorsed by or associated with the
entity that they had identified responsive to the first
question. Additionally, the surveyor asked the respondents
why they had answered the way they did.
Opposer contends that the survey disproves applicant’s
contention that the strength of opposer’s mark has been
diluted by third-party uses of similar marks. Almost three
quarters of the qualified respondents associated opposer
with the shirt bearing the “DUKE” mark, and 84 percent of
those people believed the university either endorsed or was
associated with these shirts. Significantly, almost two-
thirds of the respondents associated opposer with the shirts
bearing the “DUKE AMERICA” mark, and 71 percent of those
people thought the university had endorsed or was associated
with them. Based on the results of this survey, opposer
contends that in spite of the purported diluting effects of
the third-party uses demonstrated by applicant, opposer’s
“DUKE” mark is strongly associated with opposer, and a large
portion of the potential purchasers of applicant’s shirts
Opposition No. 108,304
6
would assume that the mark applicant seeks to register,
“DUKE AMERICA,” would indicate that the shirts were endorsed
by or associated with opposer. Significantly, none of the
businesses shown by applicant to be using marks consisting
of or including “DUKE” were identified by participants in
connection with either the “DUKE” or the “DUKE AMERICA”
branded shirts. Other than opposer, no entity achieved
statistically significant recognition in this regard.
There is no question that Mr. McBride’s testimony and
the survey he conducted would have been appropriate to
present as part of opposer’s case in chief. Neither party
contests this fact. Applicant argues that once opposer
failed to conduct and introduce the survey during its
testimony period, however, opposer could not thereafter
introduce it. Applicant argues that because the survey goes
directly to the issue of whether applicant’s mark is likely
to cause confusion with opposer’s mark, the only appropriate
time for the survey to be introduced was during opposer’s
testimony period, and that if opposer is allowed to get the
survey and accompanying testimony into the record after
applicant had responded to opposer’s claims and supporting
testimony and evidence, applicant would effectively be
precluded from responding to the survey with evidence and
testimony from its own expert. In this regard, applicant
contends that it was not even given enough notice and
Opposition No. 108,304
7
information about the survey to prepare properly for Mr.
McBride’s deposition.
After careful consideration of the arguments of both
parties, we have decided to consider this testimony and
evidence because it is proper rebuttal under the
circumstances presented by this case. During its initial
testimony period, opposer had the burden of establishing its
standing; of establishing its ownership of the marks with
which it contends applicant’s mark would be likely to cause
confusion; of establishing use of these marks before
applicant filed the application to register the mark it
seeks to register; and of establishing a prima facie case of
likelihood of confusion based on the similarity of the marks
and the relationship between opposer’s goods and the goods
with which applicant intends to use the mark it seeks to
register.
As discussed below, opposer met this burden of proof,
but, as opposer points out, opposer was not required to
anticipate or guess what grounds of defense might be raised
by applicant, or to counter those grounds of defense prior
to their assertion. Dilution was not raised by applicant as
a defense in its answer to the Notice of Opposition. When
applicant presented testimony concerning the alleged
dilution of opposer’s marks, opposer properly rebutted the
dilution defense asserted by applicant with three
Opposition No. 108,304
8
depositions, one of which is the deposition of Mr. McBride
to which applicant objects. Under these circumstances, his
testimony and the exhibits to it are admissible as rebuttal
testimony.
Applicant’s assertion that it was denied the
opportunity to cross-examine the witness effectively is also
not well taken. As the record shows, opposer fully complied
with applicant’s discovery requests, as well as with the
agreement between applicant and opposer that opposer would
not introduce at Mr. McBride’s deposition any documents
containing new information beyond that contained in
documents provided by opposer to applicant prior to the
deposition. This record shows that applicant had fair
notice of and adequate time to prepare for Mr. McBride’s
deposition, and that applicant was given in advance the
information it needed to cross-examine the witness
effectively.
Applicant’s substantive criticisms of the survey
evidence presented by opposer are not well taken either.
For example, applicant argues that the survey was unfair
because the shirts on which the marks were shown to the
survey respondents were identical to shirts on which
opposer’s mark is actually used. Applicant expressed
outrage at this fact and concluded that it should come as no
surprise that respondents were confused when applicant’s
Opposition No. 108,304
9
mark was used on opposer’s goods. This argument
conveniently overlooks the fact that as identified in the
application, applicant’s goods encompass the goods on which
opposer has used its mark. Applicant’s other objections to
the survey and to Mr. McBride’s status as an unbiased expert
witness are similarly without merit. Because applicant
shows its mark in typed format in the application, applicant
would be free to adopt any style of lettering it chooses, so
the fact that the shirts used in the survey present the
marks in block letters does not invalidate the results of
the survey. Similarly, in view of the absence in the
application of restrictions or limitations as to the types
of shirts, for example, the channels of trade through which
they will move, and the purchasers applicant plans to target
with its advertising for its goods, opposer was under no
obligation to use only high-end items of apparel or to
choose only well off, sophisticated consumers for its
survey.
In any event, because opposer had already met its
burden of establishing that confusion would be likely if
applicant were to use the mark it seeks to register in
connection with the goods listed in the application, and
because applicant’s testimony and evidence do not overcome
the prima facie case established by opposer, even if we did
not consider Mr. McBride’s testimony and the exhibits to it,
Opposition No. 108,304
10
we would still reach the same conclusion on the merits of
this proceeding.
Both applicant and opposer agree that the case of In re
E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), establishes the test for determining whether
confusion would be likely. In that case, the Court listed
the principal factors to be considered in resolving this
issue. Chief among these factors are the similarity of the
marks as to appearance, pronunciation, meaning and
commercial impression and the similarity of the goods.
The record shows that opposer is a famous private
university, which provides a top-notch education to
undergraduate students as well as to post-graduate students
in many fields, including medicine, business and law.
Duke’s intercollegiate basketball program is at least as
well known as the university’s academic prowess. Since
1925, the university has used the mark “DUKE” in connection
with its activities, including the sale of men’s and boys’
pants, belts, shirts, jackets, sweaters, neckties and socks.
Opposer owns a half dozen registrations for marks which
include the name “DUKE,” but opposer’s rights in “DUKE”
alone for these clothing items are common law rights based
on opposer’s use of the mark in commerce in connection with
these products. Although opposer has not used the precise
mark applicant seeks to register, opposer did sell a shirt
Opposition No. 108,304
11
bearing both the word “DUKE” and the letters “U.S.A.” prior
to the filing date of the opposed application.
Applicant, Haggar Clothing Co., is a manufacturer of
apparel. Its headquarters are in Dallas, Texas. Applicant
intends to use the mark “DUKE AMERICA” on a line of high-
end, relatively expensive clothing which is to include
pants, jeans, shorts, belts, shirts, suits, jackets, coats,
vests, sweaters, neckties, swimwear, socks, underwear and
hats, all for men and boys. Applicant asserts that it
selected “DUKE AMERICA” to identify a fictitious person who
represents a particular lifestyle that consumers will want
to emulate. Applicant’s promotional plan is based around
this freewheeling character, a photographer who roams the
country taking pictures of interesting things.
The evidence and argument presented by applicant in
this regard, however, is immaterial. Potential purchasers
of applicant’s goods bearing the mark sought to be
registered would not necessarily be aware that the mark is
supposed to be the name of this fictitious character or of
the reasons applicant selected its mark, and the application
does not limit or restrict the goods with regard to their
cost, the channels of trade through which they will move, or
the sophistication or knowledge of the purchasers of such
goods. Under these circumstances, therefore, we must
consider the items of clothing identified in the application
Opposition No. 108,304
12
to include all types of such products, and, as opposer
points out, because opposer has used its mark on “shirts,”
“hats” and other items of apparel, we must consider the
goods with which applicant intends to use its mark to be
identical to those on which opposer has used its mark.
“When marks would appear on virtually identical goods
or services, the degree of similarity between the marks
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ 6098, 1700 (Fed. Cir. 1982).
Opposer has established that Duke is a famous school
and that people expect schools to endorse t-shirts, which
are encompassed within Haggar’s identification of goods.
Opposer does in fact license the use of its mark in
connection with such use and also in connection with other
clothing goods. The evidence of sales and promotion of
apparel items under opposer’s mark supports opposer’s claim
that its mark is famous. There is no question that if
applicant were to use “DUKE” on such products, confusion
would be likely.
The issue thus becomes whether the addition of the
geographically descriptive, disclaimed word “AMERICA” is
sufficient to avoid the likelihood of confusion. We hold
that it is not. This record does not establish any basis
for concluding that prospective purchasers of these clothing
Opposition No. 108,304
13
items would assume that “DUKE AMERICA” is anyone’s name,
much less that they would necessarily be familiar with the
fictitious character which will be featured in the
advertising campaign that applicant plans to use in
promoting its new line of clothing. To the contrary, in
view of the renown of opposer’s “DUKE” mark, it is likely
that the addition of the word “AMERICA” would be viewed
either as an indication of where the university is or as an
attempt to link the university with patriotism. In either
event, the primary indicator of the secondary source of t-
shirts bearing the mark “DUKE AMERICA” would be the name
“DUKE,” which opposer has used and promoted for more than
three quarters of a century.
The fame of opposer’s mark has been clearly
established, and it plays a significant role in our analysis
of the likelihood of confusion. See: Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.
Cir. 2002); Recot, Inc. v. M. C. Becton, 214 F.3d 1322, 54
USPQ2d 1894 (Fed. Cir. 2000); Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992). Especially in view of the fame of opposer’s mark,
the use of the mark applicant seeks to register would be
likely to cause confusion.
Opposition No. 108,304
14
As noted above, applicant argues that third-party use
of opposer’s mark has resulted in a marketplace which is so
crowded with “DUKE” marks that purchasers readily
distinguish among them. In support of its claim that the
source-identifying significance of opposer’s mark is
diluted, during its testimony period applicant made of
record evidence of the use of a number of marks consisting
of or incorporating the name “DUKE” for a variety of goods
and services. Although some of this evidence is irrelevant
because the marks in their entireties are dissimilar or the
marks consist of or incorporate “DUKES,” rather than
“DUKE,”1 the evidence submitted by applicant does establish
that two entities, Royal Textiles, Inc. and Haband Company,
Inc., have used “DUKE” marks in connection with particular
items of clothing for some time, apparently without causing
any confusion. Royal Textiles has used and registered
“DUKE,” “LADY DUKE” and “DUKE” and a design, and has
established through use rights in the mark “DUKE ATHLETIC
PRODUCTS.” Haband has also used the mark “DUKE” in
connection with clothing items for years, apparently without
causing any actual confusion.
A closer look at the goods and the channels of trade
through which Royal Textiles’ products have moved undercuts
applicant’s argument that these third-party uses of similar
1 e.g., “Duluth-Superior Dukes,” “DUKE BOYD,” “DUKE KAHANAMOKU,”
Opposition No. 108,304
15
marks on related goods have resulted in the dilution of
opposer’s famous mark. Royal Textiles, for example, does
sell t-shirts, but this activity is conducted within the
same channels of trade that the corporation uses for its
athletic supporters and other sports equipment. All but a
small percentage of such shirts are sold to athletic teams
in bulk, with the team names to be printed on them by
whoever purchases them. It is not surprising that the
sports organizations which purchase their equipment and
clothing from Royal Textiles do not view the tag bearing
either the name “DUKE” or the name “DUKE ATHLETIC PRODUCTS”
as an indication that Duke University has sponsored were
endorsed these goods.
While applicant has established that Haband has used
and promoted “DUKE” as a mark on its items of apparel for a
number of years, such use by a single entity does not
mandate that we must conclude that the source-identifying
significance of opposer’s famous mark has become diluted.
In summary, opposer has met its burden of establishing
prior use of its mark; that its mark is famous, and that the
mark applicant seeks to register so resembles opposer’s mark
that if it were to be used in connection with the goods
specified in the application, which are identical to goods
on which opposer has previously used its famous mark,
“THE DUKES OF HAZARD,” and the James Madison University “DUKES.”
Opposition No. 108,304
16
confusion would be likely. Applicant’s evidence of lack of
distinctiveness falls short of establishing that prospective
purchasers of apparel are so familiar with third-party uses
of “DUKE” in connection with these goods that they would not
mistakenly assume that the mark “DUKE AMERICA” is an
indication that the clothing bearing it is endorsed by, or
associated with, Duke University.
At the conclusion of applicant’s brief, applicant
quoted from Trademark Rule 2.133(b), which was promulgated
to implement the amendment to Section 18 of the Act allowing
a party to amend its application to reflect the realities of
the commercial activity being conducted under a particular
mark. Applicant cites this rule in support of its request
that if the Board determines that applicant’s mark is not
entitled to registration in the absence of trade channel
restrictions and/or limitations with respect to the
customers for the goods, applicant should be allowed to make
such amendments to the identification-of-goods clause in the
application.
As opposer points out, applicant has not yet used the
mark it seeks to register, so it has established no channels
of trade and no customer base for its goods. This case was
tried by the parties based on the application as filed,
without any such limitations or restrictions, so the
proposed amendment to the application is plainly untimely at
Opposition No. 108,304
17
this juncture. See TMBP Section 311. See also Eurostar,
Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, Spezialfabrik
Fur Reitbekleidung, 43 USPQ2d 1266 (TTAB 1994) and Pegasus
Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040 (TTAB
1985). Opposer correctly took the position that the
evidence offered by applicant during the trial of the market
channels it intends to use and the customers it plans to
target was irrelevant because the application was not
limited as to channels of trade or customers. Applicant’s
request to amend is neither timely nor specific enough to
have afforded opposer fair notice of the proposed
restriction. Opposer has not consented, either explicitly
or by implication, to any such amendment. Moreover, even if
such an amendment were appropriate, the evidence does not
support a finding that applicant’s planned “DUKE AMERICA”
clothing, no matter how it could be described and no matter
how the clothing trade channels through which it will move
could be identified, could avoid the likelihood of causing
confusion with opposer’s clothing bearing its famous “DUKE”
mark. Accordingly, applicant’s request to be allowed to
amend the application is denied.
DECISION: The opposition is sustained and registration to
applicant is refused.