Eyal Ballev.Children’s Apparel Network, Ltd.

Trademark Trial and Appeal Board

Dec 11, 2012

No. 92054165 (T.T.A.B. Dec. 11, 2012)

KIM

Mailed: December 11, 2012

Cancellation No. 92054165

Eyal Balle

v.

Children's Apparel Network, Ltd.

Before Bucher, Taylor and Mermelstein,
Administrative Trademark Judges

By the Board:

This matter comes up on petitioner’s motion for summary
judgment filed on March 28, 2012. By his motion, petitioner
seeks summary judgment on his claim of priority and likelihood
of confusion. The motion is fully briefed.
Background
Petitioner seeks to cancel Registration No. 3811758 for
the mark BABY REBELS in standard character form for
clothing and accessories for infants, namely,
caps, cardigans, creepers, denim jackets, hats,
jackets, jeans, jerseys, overalls, pants,
pullovers, shirts, shortalls, shorts, socks, sweat
pants, sweat shirts, sweaters, t-shirts, tank-
tops, vests; jacket sets comprised of jackets,
pants and shirts; overall sets comprised of
overalls and shirts; shirt sets comprised of
shirts and pants; sweater sets comprised of
sweaters, pants and shirts

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92054165
2

in International Class 25, with the term BABY disclaimed. The
involved registration is based on an underlying application
filed on February 20, 2009, and wherein May 2009 is asserted
as the date of first use anywhere and in commerce.1
In his petition for cancellation, petitioner claims
priority and likelihood of confusion and pleads application
Serial No. 77783154 for the mark REBELS in standard character
form for “footwear” as well as common-law rights in the term
REBELS also for footwear. The application was filed on July
16, 2009, and was refused registration by the USPTO on
December 15, 2010, under Section 2(d) of the Trademark Act
based, in part, on the involved registration.
The Parties’ Arguments
Petitioner claims continuous use of REBELS for footwear
since 1993, Balle Declaration, ¶ 2, and argues that the
involved registration asserts a first use date of May 2009,
and that even if respondent could prove first use since 1995,
it is of no event since petitioner’s use predates respondent’s
use and respondent has admitted in discovery responses that it
did not use BABY REBELS prior to 1995.2 Petitioner further

1 We note that respondent has asserted in its answer to the
petition that the dates of first use claimed in its registration
are incorrect and that the correct dates of first use should be
March 1995. As discussed below, petitioner has established a
priority date of 1993, so we need not reach the question of the
propriety or effect of such a statement in respondent’s answer.

2 Request for Admission No. 5: Admit that REGISTRANT did not
use its BABY REBELS mark prior to 1995.

Cancellation No. 92054165
3

notes that respondent has admitted to the similarity of the
marks and relatedness of the goods in its answer3 and in
response to discovery.4
For its part, respondent argues that petitioner has not
met his burden in proving likelihood of confusion, has not
presented any evidence of use to establish a date of priority
earlier than the filing date of his application, and that, in
any event, it has priority over petitioner based on its
earlier use since 1987 of another mark, i.e., LITTLE REBELS
and design5 (as reproduced below), which use respondent seeks
to tack on to its use of BABY REBELS:

Response to Admission No. 5: Admit, but affirmatively state
that Registrant has used its LITTLE REBELS mark since
1987, and LITTLE REBELS and BABY REBELS are, in essence,
the same mark ….

3 7. Registrant admits that the BABY REBELS and REBELS marks
are similar in sound, appearance and meaning; are
confusingly similar; and that the goods in the Registrant’s
Registration are also related to the goods in Petitioner’s
Application.

4 Request for Admission No. 2: Admit that REGISTRANT’s BABY
REBELS mark and PETITIONER’s REBELS mark are similar in
sound, appearance and meaning and are confusingly
similar.

Response to Admission No. 2: Admit.

Request for Admission No. 3: Admit that the goods in the
REGISTRANT’s Registration are also related to the goods
in PETITIONER’s application.

Response to Admission No. 3: Admit.

5 Registration No. 1523581 for “boys' and girls' tank tops,
sport shirts, shorts, top and short sets, top and bathing suit
sets; boys' baseball suits; girls' top and leggings sets,
rompers, and top and pants sets” in International Class 25 based
on an underlying application filed on December 28, 1987.
Cancellation No. 92054165
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Petitioner contends otherwise, arguing that he has met
his burden on likelihood of confusion through respondent’s own
admissions, has established priority through his “sworn,
signed and undisputed declaration,” and that respondent’s BABY
REBELS and LITTLE REBELS marks are not legal equivalents and
are “materially different from each other” so as to preclude
tacking. Reply, p. 3, 5-7.
Decision
A motion for summary judgment is a pretrial device
intended to save the time and expense of a full trial when the
moving party is able to demonstrate, prior to trial, that
there is no genuine dispute of material fact, and that it is
entitled to judgment as a matter of law. See Fed. R. Civ. P.
56(a); Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Opryland
USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992); and Sweats Fashions Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). The evidence must be viewed in a light most
favorable to the non-moving party, and all reasonable
inferences are to be drawn in the non-movant's favor. Lloyd’s
Cancellation No. 92054165
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Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d
2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
Likelihood of Confusion
Petitioner seeks summary judgment on his claim of
priority and likelihood of confusion. In Application of E.I.
du Pont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973), the U.S. Court of Customs and Patent Appeals listed
thirteen factors that are relevant in a likelihood of
confusion analysis. However, “[n]ot all of the du Pont
factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” In
re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010).
Contrary to respondent’s assertions, petitioner has
presented evidence probative of the similarity or
dissimilarity of the marks and the similarity or dissimilarity
of the goods in the nature of admissions made by respondent in
its pleading and discovery responses. Respondent has admitted
that the marks are similar in sound, appearance and meaning,6
and that the goods are related. Accordingly, there is no

6 Respondent also admitted that the marks “are confusingly
similar,” Answer ¶ 7, although it is not entirely clear whether
respondent was thereby admitting that there is a likelihood of
confusion (i.e., in consideration of all the relevant du Pont
factors) or whether applicant was merely admitting that the marks
themselves are similar in appearance, sound, and meaning. See
Myrurgia, S.A. v. Comptoir De La Parfumerie S.A. Ancienne Maison
Tschanz, 441 F.2d 673, 169 USPQ 587, 588 (CCPA 1971) (noting that
“confusingly similar” is not the correct standard under Trademark
Act § 2(d)).
Cancellation No. 92054165
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genuine dispute as to these du Pont factors. As to the
remaining du Pont factors, they are not at issue as neither
party has raised them nor submitted any evidence in relation
thereto. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
946, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000) (“the obligation to
consider a factor does not arise in a vacuum and only arises
if there is evidence of record relating to that factor”). In
view thereof, there is no genuine dispute of material fact
that the marks are likely to cause confusion as to the source
of the goods.
Priority
Turning then to the question of priority, petitioner has
submitted a sworn declaration, which has not been challenged
by respondent, establishing petitioner’s use of the mark on
footwear since 1993. Since respondent does not allege use of
its BABY REBELS mark prior to 1995, respondent seeks to
establish priority by tacking its earlier use of its LITTLE
REBELS mark onto its later use of BABY REBELS.
In order for a party to tack its use of an earlier mark
onto that of a later mark, “[t]he previously used mark must be
the legal equivalent of the mark in question or
indistinguishable therefrom, and the consumer should consider
both as the same mark.” Van Dyne-Crotty, Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir.

Cancellation No. 92054165
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1991) (citing Compania Insular Tabacalera v. Camacho Cigars,
Inc., 167 USPQ 299, 303-04 (TTAB 1970)). Furthermore, tacking
will be permitted only where the goods or services of the two
marks are the same or substantially identical. Super Valu
Stores Inc. v. Exxon Corp., 11 USPQ2d 1539, 1542 (TTAB 1989).
Whether one mark is the legal equivalent of the other for
tacking purposes is a legal determination rather than a
factual one. See Van Dyne-Crotty, 17 USPQ2d at 1868. In this
case, the facts upon which we base this legal determination
are not in dispute.
The standard for tacking is strict and tacking is
generally permitted only in “rare instances.” See Wet Seal,
Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1635 (TTAB 2007)
(citing Van Dyne-Crotty, 17 USPQ2d at 1869).
Respondent has failed to make the LITTLE REBELS
registration of record, but in any event, we do not find the
LITTLE REBELS and BABY REBELS marks to be legal equivalents as
there are clear aural and visual differences between the
marks, as well as differences in meaning. Although the marks
share the term REBELS, they are clearly different by virtue of
the additional terms “BABY” and “LITTLE” such that the marks,
when taken as a whole, convey different commercial
impressions, i.e., one conveys the notion of rebellious
infants while the other conveys that of rebels that are small
in size. Although it might be argued that the marks are
Cancellation No. 92054165
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similar in connotation, the standard required for tacking
requires more. As the marks fail to “create the same
continuing commercial impression,” Ilco Corp. v. Ideal Sec.
Hardware Corp., 527 F.2d 1221, 1224, 188 USPQ 485, 487 (CCPA
1976), we find that the marks BABY REBELS and LITTLE REBELS
are not legally equivalent so as to allow respondent to tack
its earlier use of LITTLE REBELS onto its later use of BABY
REBELS.
In view thereof and based on the record before us, we do
not find any genuine dispute as to petitioner’s claim of
priority and likelihood of confusion between the parties’
marks. Therefore, petitioner’s motion for summary judgment is
hereby GRANTED. Accordingly, judgment is hereby entered
against respondent, the petition to cancel is granted, and
Registration No. 3811758 will be cancelled in due course.7
* * *

7 As to respondent’s request that the Board deem petitioner
judicially estopped from asserting inconsistent positions with
respect to respondent’s LITTLE REBELS and BABY REBELS marks, the
request is denied as it is premature and inappropriate to
prospectively apply the doctrine to a proceeding that has yet to
be instituted and to arguments that have yet to be made.