Elan Line, tovarna sportnih izdelkov, d.o.o. et. al.v.Equipment De Sport, U.S.A.

Trademark Trial and Appeal Board

Feb 6, 2001

No. 91108409 (T.T.A.B. Feb. 6, 2001)

2/6/01
Paper No. 33
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Elan Line, tovarna sportnih izdelkov, d.o.o., by change of
name from Elan Ski, podjetje za proizvodnjo smuci, d.o.o.,
and Elan, podjetje za ustanavljanje, financiranje in
upravljanje z drugimi podjetji, d.d.
v.
Equipment De Sport, U.S.A.
_____
Opposition No. 108,409
to application Serial No. 75/175,608
filed on October 3, 1996
_____
Marsha G. Gentner and Brian B. Darville of Jacobson, Price,
Holman & Stern, Pllc for Elan Line, tovarna sportnih
izdelkov, d.o.o., by change of name from Elan Ski, podjetje
za proizvodnjo smuci, d.o.o., and Elan, podjetje za
ustanavljanje, financiranje in upravljanje z drugimi
podjetji, d.d.
Stuart C. Burr and Equipment De Sport, U.S.A. Inc., pro se.
______
Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Elan Line, tovarna sportnih izdelkov, d.o.o., by change
of name from Elan Ski, podjetje za proizvodnjo smuci,
d.o.o., and Elan, podjetje za ustanavljanje, financiranje in
upravljanje z drugimi podjetji, d.d., (hereafter,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,409
2
respectively, Elan Line and Elan, or opposers) have opposed
the application of Equipment De Sport, U.S.A. to register
ELAN BLANC as a trademark for “clothing, outerwear and
accessories for men, women, children and infants; namely,
caps, cowls, ear-muffs, ear warmers, gloves, hats, headbands
and other headwear, ski masks, neck warmers, scarves and
suspenders.”1 The application claims first use and first
use in commerce as of November 11, 1982; ELAN BLANC is
translated as “white elk.”
Opposers have brought their opposition on the ground of
likelihood of confusion, alleging, essentially, that they
are related corporations; that they own registrations and
are prior users in the United States of the mark and trade
name ELAN for ski sports and athletic equipment and
accessories.
Applicant denied all the salient allegations in the
notice of opposition, and asserted four “affirmative
defenses” which are, in fact, merely further explanations of
its denial of the allegation of likelihood of confusion, to
wit: the marks are dissimilar; the goods are dissimilar;
opposers’ mark is weak; and the parties’ marks have been
concurrently used without any evidence of actual confusion.
The record includes the pleadings, and the file of the
opposed application. Although applicant did not submit any
1 Application Serial No. 75/176,608, filed October 3, 1996.
Opposition No. 108,409
3
evidence, opposers submitted the testimony, with exhibits,
of Robert G. Orbacz, the President and CEO of Monark
Sporting Goods, Inc., a wholly-owned subsidiary of Elan.2
Opposers also made of record applicant’s answers to certain
of opposers' interrogatories, requests for admission, and
requests for production of documents3; the discovery
depositions, with exhibits, of Stuart Burr and Sheri Burr;
copies of pages from certain printed publications (most of
which were also submitted as exhibits to the Orbacz
testimony deposition); and status and title copies of
opposers’ pleaded registrations, showing that Elan is the
owner of the following marks for the identified goods:
for “winter and water skis; ski poles; hockey sticks; indoor
clubs; ball targets, sleds of the non-motorized type;
boards; hoops and mats; volleyball nets and net stands;
gymnastic apparatus—namely, horizontal bars, rings, parallel
bars, balancing forms, benches, horses, spring boards, mats,
wall bars, ladders, poles, ropes, wands, hoops, apparatus
for the performance of hand stands and slalom exercises,
2 It is noted that opposers submitted under seal Orbacz exhibit
3, a customer list, but did not mark as confidential nor
segregate from Mr. Orbacz’s testimony deposition his testimony
concerning specific customers of Monark.
3 Although documents produced pursuant to FRCP 34 cannot be made
of record under a notice of reliance, see Trademark Rule
2.120(j)(3)(ii), in this case opposers have submitted the
responses to show that applicant has no such documents.
Accordingly, we have considered the responses to be in the nature
of responses to interrogatories.
Opposition No. 108,409
4
weights, rubber expanders, utilized for the exercise of
muscles by drawing against tension”4; and
for “gymnastic, athletic, sporting and playground equipment—
namely, horizontal, parallel and fixed-wall bars, vaulting
boxes and horses, footstools, springboards, balance beams;
gymnastic/exercise bench, skip ropes, climbing ropes, rubber
ropes, leather balls, medicine balls, ball targets, ball
cases; flat boards, inclined boards, abdominal boards;
exercise equipment in the nature of rubber expander; body
and leg weight belts; slalom training poles; snow skis,
water skis, ski poles, hockey sticks, and sleds; athletic
ladders, including gym, lattice, and rope ladders; climbing
and vaulting poles; rings; volleyball equipment—namely,
standard net; basketball equipment—namely, hoops, wall
support and backboard; table tennis equipment—namely, table
and net; handball equipment—namely, goal and net; tennis
net; weightlifting equipment---namely, weights, bars, weight
stands, plinth and dumbbells; outdoor playground equipment—
namely, swings, climbing rings and ladders, merry-go-round,
simulated train engine, bridge, seesaw, slide, sandbox, and
tent; jumping and lattice hurdles; and gymnastic equipment—
namely, cylinders, cubes and prisms, all of the above in
Class 28.”5
The registration for this mark indicates that “elan” may be
translated from French to mean “ardour, impetus and dash.”
Applicant did not submit any evidence, although the
discovery materials opposers made of record have provided
substantial information about applicant’s activities.
4 Registration No. 949,235, issued December 26, 1972; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
5 Registration No. 1,265,092, issued January 24, 1984; Section 8
affidavit accepted; Section 15 affidavit received.
Opposition No. 108,409
5
The parties have fully briefed the case,6 but an oral
hearing was not requested.
In its brief applicant has argued affirmative defenses
based on various theories of estoppel. As opposers point
out, such defenses were never raised by applicant in its
pleading nor, since applicant took no testimony, can we
treat the defenses as having been tried and therefore deem
the pleadings to have been amended pursuant to Fed.R.Civ.P.
15(b). Accordingly, these defenses have been given no
consideration.7
Opposers’ ground for this opposition is the claim of
priority and likelihood of confusion. The record shows that
opposers are Slovenian companies which sell skis and
6 Applicant submitted, in addition to its trial brief, an
amended brief which is, in effect, a second brief which contains
argument on points not advanced in the initial brief. Although
the trademark rules do not provide for such a second brief,
because both briefs were timely filed, the amended brief being
filed just 7 days after the initial brief, and because the two
briefs, combined, do not exceed the page limit for a trial brief,
both of applicant’s briefs have been considered. Applicant
attached to its amended brief two “exhibits,” to which opposers
objected. Exhibit 2 was made of record by opposers as part of
the discovery deposition of Stuart Burr. However, Exhibit 1 was
not properly made of record during applicant’s testimony period,
and therefore it has not been considered.
Opposers, in their reply brief, state that many of the “facts”
asserted in applicant’s brief are not supported by the record.
We note that much of the information discussed by applicant was
put into evidence by opposers through the discovery depositions
of Mr. and Ms. Burr. However, we agree that there are statements
in the brief which are not supported by any evidentiary
submissions, for example, that “within the ski and sporting goods
industry, there are a multitude of names that relate to ski,
sport, snow, mountains, elk, deer, etc.” Such unsupported
assertions have not been considered.
7 Even if the defenses had been considered, the evidence of
record does not support applicant’s claims.
Opposition No. 108,409
6
snowboards and related accessories in the United States
through their wholly-owned subsidiary and exclusive
wholesale distributor, Monark Sporting Goods, Inc.
(hereafter Monark). Monark distributes opposers’ products
to sporting goods stores, ski stores, ski rental shops, ski
resorts, and skateboard and surf shops, which in turn sell
or rent the products to the general public. Skis bearing
the ELAN trademark have been sold in the United States since
1977, and snowboards bearing the mark have been sold since
1994. Each year Monark imports between 70,000 and 130,000
pairs of ELAN skis, and between 2,000 and 6,000 snowboards.
Monark provided sales figures from 1989 to 1999 for ELAN
skis, ski poles and related “soft goods” (apparel items such
as hats and sweatshirts); more than 90% of the figures
represent its sales of skis. Sales during this period
amounted to $111.5 million, ranging from $7.3 to $15.5
million per year. Sales of ELAN snowboards since their
introduction in the United States in 1994 have amounted to
$5.6 million. ELAN skis have the third-highest market share
for ski sales in the United States, and the largest market
share for ski rentals.
Monark promotes the ELAN products in a number of ways.
It advertises ELAN skis and snowboards in magazines such as
“Ski,” “Skiing,” “Powder” and “Freeze”. The annual
Opposition No. 108,409
7
placement costs for this advertising were in excess of
$1 million in the 10-year period from 1989 to 1999. Monark
also provides advertising materials so that retailers can
place advertisements in local papers. Monark exhibits in
the national SIA trade show, and buying group shows, and its
manufacturers’ reps participate in regional trade shows.
Monark also distributes 5,000 dealer brochures and 100,000
consumer brochures each year, and provides point of purchase
displays, banners and posters.
Opposers sponsor various champion skiers, and
typically, when they win a race, they are photographed
holding their skis so that the ELAN mark appears near their
faces. Magazines and television will carry these images.
In addition to these promotional efforts, the ELAN mark
has achieved a great deal of publicity because opposers were
the first to sell a parabolic or shaped ski in 1994.
Articles reporting on this development, and featuring the
ELAN skis, have appeared in various newspapers and
magazines, including “The Wall Street Journal” and
“Newsweek,” as well as on segments on the television
programs “The Today Show” and “Good Morning America.” This
ELAN ski has also been adopted by many ski schools.
Applicant began using the mark ELAN BLANC, through a
predecessor-in-interest who is a co-owner of the present
applicant, in 1979. The mark was first used on hats, and
Opposition No. 108,409
8
then expanded to other fashion accessories such as
headbands, earmuffs and scarves. The goods are sold
throughout the United States in, inter alia, ski stores,
sporting goods stores, outdoor stores and hotel gift shops.
The primary target for applicant’s goods is the ski retailer
that carries fashion apparel and accessories.
Sales of ELAN BLANC products rose from $15,000 or
20,000 in 1979, to a high of $1 million in 1990, and by 1998
(when the depositions of applicant’s co-owners were taken)
had fallen to $500,000. The average retail price for the
items in $30. Applicant does not do any advertising of its
goods, although it does exhibit at the annual SIA trade show
(the same show at which Monark exhibits). The products have
also received some publicity through articles and editorials
regarding fashion in magazines such as “Ski” and “Snow
Country.”
Applicant’s witnesses explained that they chose the
mark ELAN BLANC because a French name was considered
fashionable; they wanted to use an antler design; and
perusing a French-English dictionary they found that “elan”
was the French word for “elk,” and that an elk is a winter
animal.
Priority is not in issue in view of opposers’ pleaded
registrations. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). The
Opposition No. 108,409
9
evidence also shows that opposers have been using the mark
ELAN for skis in the United States since prior to
applicant’s first use of the mark.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Turning first to the goods, obviously skis such as
opposers sell are different from the hats and other
accessories identified in applicant’s application. However,
it is well-established that the goods of the parties need
not be similar or competitive in order to support a holding
of likelihood of confusion. It is sufficient that the
respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph
Corp., 175 USPQ 910 (TTAB 1978).
The evidence in this case clearly establishes the
related nature of opposers’ skis and applicant’s apparel
accessories. The goods are complementary, in that skiers
could wear applicant’s identified hats, masks and gloves
Opposition No. 108,409
10
while skiing, or after skiing. In fact, applicant’s catalog
has a category of goods called “Apres Ski.” Obviously, the
class of purchasers for the parties’ goods—skiers—is the
same. The record also shows that opposers’ skis and
applicant’s apparel accessories are sold or offered in the
same retail outlets, such as ski shops and ski rental
stores. In addition, applicant’s goods are sold in stores
in skiing resorts, and gift shops in resort hotels, which
would also be frequented by skiers.
Opposers’ witness, Robert Orbacz, testified that
companies that make skis also sell clothing under the same
mark as used on their skis. Mr. Orbacz also testified that
opposers’ ELAN mark is used on hats, T-shirts, sweatshirts,
gloves and sweatpants. We note that opposers did not
provide any information as to when sales of clothing began,
nor the amount of such sales, nor do any of the extensive
advertising materials and catalogs submitted by opposers
show use of the mark on clothing. In view thereof, we
assume that opposers’ use of the ELAN mark on clothing has
not been extensive. However, there is documentary evidence
to support that opposers do use the mark on clothing (see
1997 SIA directory, Orbacz exhibit 2, listing the brand ELAN
and “fleece apparel”).
For the foregoing reasons, consumers are likely to
believe that both skis and apparel accessories such as hats,
Opposition No. 108,409
11
gloves and masks emanate from the same source if they were
sold under confusingly similar marks.
We begin our consideration of the parties’ marks by
noting that opposers’ mark ELAN is a strong mark. The years
of use, the amount of sales and advertising, the publicity
resulting from their development of the parabolic ski, the
use of the ELAN parabolic ski in many ski schools, and
opposers' number one position for ELAN skis in the rental
market persuade us that most experienced skiers, and even
many novice skiers, would be exposed to the mark and would
recognize it.8
In reaching this conclusion, we have considered
applicant’s witnesses’ testimony regarding four asserted
third-party uses of ELAN. This testimony is, to say the
least, sketchy. Mr. Burr stated that he was aware of a car
model called ELAN, although it is not clear whether this
mark is still in use. Ms. Burr testified that while in
Greece she saw a boat with the trademark ELAN; there is no
evidence of this use of the mark in the United States. Ms.
Burr also testified about a resort clothing manufacturer
called Elan which appeared at the Surf Expo, while Mr. Burr
said that he was aware of a swimsuit manufacturer called
Elan U.S.A. because it was listed in a catalog for the
Orlando Surf Show trade show. It is not clear whether the
Opposition No. 108,409
12
witnesses were referring to the same company or two
different companies. In any event, there is no information
of record as to the amount of sales of any of these
companies from which we could conclude that consumers would
be aware of their usage of the mark ELAN. Moreover, there
is a closer relationship between skis and winter apparel
accessories than there is between these goods and the third-
party uses.
Opposers’ registered marks ELAN and applicant’s mark
are very similar. Although marks must be compared in their
entireties, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). In this case,
the word ELAN is clearly the dominant portion of opposers’
marks, since it is by this word that consumers would call
for or refer to opposers’ skis. In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). Thus, the fact that
opposers’ registered marks include design elements, and
applicant’s mark does not, is not sufficient to distinguish
the marks. Applicant also asserts that the marks are
different in appearance because its mark is in lower case,
with an accent mark over the “e”, while opposers’ is in
upper case with no accent mark. However, applicant has
8 We do not, however, conclude from the evidence of record that
Opposition No. 108,409
13
applied for its mark as a typed drawing, ELAN BLANC (without
an accent mark), and therefore the protection of the mark,
if it were to be registered, would not be limited to lower
case, but would extend to a depiction in upper case, or in
the slightly slanted letters shown in one of opposers’
registrations. Nor are the slanted letters a distinguishing
feature, because it is unlikely that consumers would note or
remember them, or remember that the “A” in ELAN is shown at
an angle to the other letters. Under actual marketing
conditions consumers do not have the luxury to make side-by-
side comparisons between marks, and instead they must rely
on hazy past recollections. Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255 (TTAB 1980).
The word ELAN, the only word in opposers’ marks and the
first word in applicant’s mark, are identical in appearance
and pronunciation. The real question is whether the
addition of the word BLANC in applicant’s mark is sufficient
to distinguish ELAN BLANC from opposers' ELAN marks.
Likelihood of confusion has frequently been found when the
marks used on related products involve one mark which
consists of a single word and another which is comprised of
that same word followed by a second term. See, Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram and Sons, Inc., 188 USPQ 105 (CCPA 1975) (BENGAL and
ELAN is a famous mark.
Opposition No. 108,409
14
BENGAL LANCER); Johnson Publishing Company, Inc. v.
International Development Ltd., Inc., 221 USPQ 155 (TTAB
1982) (EBONY DRUM and EBONE); Helga, Inc. v. Helga Howie,
Inc., 182 USPQ 629 (TTAB 1974) ( HELGA and HELGA HOWIE).
There is a general rule that a subsequent user may not
appropriate another’s entire mark and avoid likelihood of
confusion therewith by merely adding descriptive or
otherwise subordinate matter to it. Bellbrook Dairies, Inc.
v. Hawthorn-Mellody Farms Dairy, Inc., 253 F.2d 431, 117
USPQ 213 (CCPA 1958).
Although BLANC is a French word, as applicant’s witness
Ms. Burr has acknowledged, most consumers would know that it
means “white.” The color white, of course, is suggestive of
snow and is thus suggestive of winter apparel accessories
such as the earmuffs, gloves, scarves, etc. identified in
applicant’s application. Accordingly, the word BLANC in
applicant’s mark, ELAN BLANC, must be considered subordinate
to the word ELAN.
Applicant argues that the meanings of the parties’
marks are different, asserting that ELAN is an English word
which means “dash” or “style,” while ELAN BRANC is French
and means “white elk” or “white deer.” The dictionary
definitions submitted as exhibits to Mr. Burr’s deposition
shows that “elan” is listed in an English dictionary as
meaning “dash; impetuous ardor,” and is listed in a French-
Opposition No. 108,409
15
English dictionary as meaning, besides “elk, moose”,
“vigour, spirit, elan.” As a result, those consumers
fluent in French may well understand ELAN to mean “elk,” and
ELAN BLANC to mean “white elk,” so that the marks would have
virtually identical connotations to them. Consumers who are
not familiar with the French meaning of ELAN as “elk” will
still see the word ELAN in both marks as meaning the same
thing, i.e., “dash,” and, because of the suggestiveness of
BLANC, as discussed above, the addition of this word does
not change the basic connotation of the marks. Thus,
whether we consider the marks from the standpoint of fluent
French speakers, or the public at large, the meanings are
very similar.
It must also be remembered that applicant’s goods are
relatively inexpensive, and would be purchased without a
great deal of care by ordinary consumers. Such consumers
are not likely to devote a great deal of thought or analysis
to the marks in order to determine whether the addition of
the word BLANC to ELAN indicates a different source for the
accessories than the source for the skis. Rather, given the
recognition of opposers’ mark ELAN in the sport of skiing,
such consumers are likely to simply assume that ELAN BLANC
is a trademark of opposers', a variation on their ELAN mark.
Accordingly, we find that all of the duPont factors on
which evidence has been submitted favor opposers, and that
Opposition No. 108,409
16
they have met their burden of proving likelihood of
confusion. In reaching this conclusion, we have given no
weight to the asserted evidence of actual confusion.
Although there was testimony as to a few instances of
misdirected mail, it is not clear that this occurred because
the sender was confused as to the source of the goods. It
could as easily be explained as resulting from the sender’s
eye slipping to the next listing in a trade directory.
Decision: The opposition is sustained.