Fashion Boom, Inc.v.Gap (Apparel) Inc.

Trademark Trial and Appeal Board

Apr 11, 2002

No. 91121820 (T.T.A.B. Apr. 11, 2002)

4/11/02

Cataldo

Opposition No. 121,820

Fashion Boom, Inc.

v.

Gap (Apparel) Inc.

Before Cissel, Hairston and Walters,
Administrative Trademark Judges.

By the Board:

Fashion Boom. Inc. has opposed the application of
GAP (Apparel) Inc. to register the mark shown below for
Anoraks, shortalls, jeans, khaki pants,
trousers, fleece tops, coats, rainwear, shawls,
lingerie, robes, sleepwear, pajamas and
nightgowns, brassieres, underwear, shapers,
undergarments, boxer shorts, sport bras, gym
shorts, camisoles, slips, bodysuits, tank tops,
sweatshirts, sweat pants, tankinis, bikinis,
bathing suits, swim trunks, leggings, slippers,
caps.1

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 121,820
2

In its notice of opposition, opposer asserts that it is
the
owner of the mark AMERICAN CONNECTION for
men's, women's and children's wearing apparel,
namely, pants, shirts, blouses, jackets, vests,
T-shirts, skirts, shorts, sweaters, scarves,
dresses, jumpsuits and rompers.2

Opposer further asserts that it is the owner of the mark
shown below for
Anoraks, shortalls, jeans, khaki pants,
trousers, fleece tops, coats, rainwear, shawls,
lingerie, robes, sleepwear, pajamas and
nightgowns, brassieres, underwear, shapers,
undergarments, boxer shorts, sport bras, gym
shorts, camisoles, slips, bodysuits, tank tops,
sweatshirts, sweat pants, tankinis, bikinis,
bathing suits, swim trunks, leggings, slippers,
caps.3

1 Application Serial No. 76/037,688 was filed on May 1, 2000,
reciting December 1988 as the date of first use of the mark
anywhere and in commerce.

2 Registration No. 2,012,040 was registered on October 29, 1996,
reciting June 10, 1995 as the date of first use of the mark
anywhere and in commerce.

3 Application Serial No. 78/041,974 was filed on January 6,
2001, reciting July 1997 as the date of first use of the mark
anywhere and in commerce.
Opposition No. 121,820
3
Opposer alleges that it has made use of the mark “AC in
the square” long prior to applicant’s first use; that its
mark “AC in the square” is highly similar in appearance
to applicant’s mark “GAP in the square”; that opposer
uses, licenses, and authorizes use of its mark “AC in the
square”
on goods that are identical in part to those identified
by
applicant’s mark; that, as a result, confusion, mistake,
and deception are likely among consumers as to the source
of those goods; that opposer’s “AC in the square” mark is
famous; and that registration of applicant’s mark “will
result in the dilution of the descriptive quality of
Opposer’s marks”.
In lieu of an answer, applicant filed a motion to
dismiss the proceeding under Fed. R. Civ. P. 12(b)(6),
for failure to state a claim upon which relief may be
granted. Opposer filed a brief in opposition to the
motion. In addition, applicant submitted a reply brief.
All of the papers filed by the parties in connection with
the motion to dismiss are supported by exhibits.
Accordingly, the Board issued an order (1) notifying the
parties that the Board would consider the exhibits
submitted by the parties in our determination of
Opposition No. 121,820
4
applicant’s motion to dismiss; (2) indicating that, as a
result, the motion to dismiss would be treated as a
motion for summary judgment; and (3) allowing the parties
time in which to submit additional materials made
pertinent to the motion for summary judgment by Fed. R.
Civ. P. 56. Consequently, applicant submitted additional
exhibits supported by the declaration of Julie Gruber,
its Vice President and Senior Corporate Counsel.
In support of its motion for summary judgment,
applicant argues that while opposer claims prior use of
its “AC in the square” mark, opposer’s application Serial
No. 78/041,974 recites July 1997 as the date of first use
of the mark in commerce; that applicant has made use of
its “GAP in the square” mark since December 1988; and
that, as a result, opposer cannot establish priority of
use for purposes of its claim under Section 2(d).
Applicant has submitted a printed copy of its search of
the U.S. Trademark Electronic Search System (TESS) for
opposer’s pleaded “AC in the square” mark.
In response, opposer essentially argues that it has
made use of its “AC in the square” mark since July 1997;
and that confusion is likely among consumers due to the
similarities between its “AC in the square” mark and
applicant’s “GAP in the square” mark. Opposer has
Opposition No. 121,820
5
submitted a printed copy of its search of the U.S.
Trademark Electronic Search System (TESS) for applicant’s
Registration No. 1,745,875 for the mark GAP and design.4
Applicant argues in reply that it never received a
filing receipt from this Office for its application
Serial No. 76/037,688, at issue herein; that when
application Serial No. 76/037,688 was published for
opposition in the
Official Gazette, applicant’s dates of first use anywhere
and in commerce were mistakenly listed as December 1998;
that applicant’s correct dates of first use anywhere and
in commerce, as indicated in its application, are
December 1988; and that it subsequently requested from
the Office an amended filing receipt indicating
applicant’s correct dates of first use. Applicant
submits a copy of its letter to
the Office requesting an amended filing receipt for its
application Serial No. 76/037,688; and a photocopy of
page 300 of the December 12, 2000 Official Gazette
displaying applicant’s application Serial No. 76/037,688.
As indicated above, applicant further supported its
motion with the declaration of Julie Gruber, attesting to

4 The Board notes that while applicant pleads ownership of
Registration No. 1,745,875 for the mark GAP and design in its
Opposition No. 121,820
6
the foregoing and including additional copies of the
above noted exhibits.
As has often been stated, summary judgment is an
appropriate method of 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). 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 nonmoving party may not rest on mere denials or
conclusory assertions, but rather must proffer countering
evidence, by affidavit or as otherwise provided in Fed.
R. Civ. P. 56, showing that there is a genuine factual
dispute for trial. See Fed. R. Civ. P. 56(e); Copelands'
Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d
1295 (Fed. Cir. 1991); and Octocom Systems Inc. v.

motion for summary judgment, said registration is not the
subject of any Board proceeding.
Opposition No. 121,820
7
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990).
Turning first to the issue of priority, we note as a
preliminary matter that Parmani, Ltd., a New York
corporation, is listed as the owner of opposer’s asserted
application Serial No. 78/041,974 for the mark “AC in the
square”. We further note that neither Office records nor
any papers filed in the instant proceeding clarify the
nature of the relationship between Parmani, Ltd. and
opposer.5 Thus, on the record before the Board, there is
nothing to indicate the basis for opposer’s claim of
ownership of application Serial No. 78/041,974.
Nonetheless, opposer asserts that it has made use of the
mark “AC in the square” since July 1997. We note that
opposer has not supported its assertion by evidence,
affidavit or declaration. However, applicant does not
dispute that opposer is entitled to claim July 1997 as
the date of first use of the “AC in the square” mark.
On the other hand, applicant has submitted the
declaration of Julie Gruber, its Vice President and
Corporate Counsel, asserting, inter alia, that it has
made use of its “GAP in the square” mark since December
Opposition No. 121,820
8
1988. Further, opposer neither alleges nor introduces
evidence that applicant is not entitled to rely upon its
asserted date of first use.
Accordingly, we find no genuine issue that applicant
has made use of its “GAP in the square” mark prior to
opposer’s use of its asserted “AC in the square” mark.
Therefore we find, as a matter of law, that opposer
cannot establish priority for purposes of its claim of
likelihood of confusion based upon its asserted use of
the mark “AC in the square”.
We note that applicant’s motion for summary judgment
is directed solely toward the issue of priority.
However, upon careful review of the record in this
proceeding, we find no genuine issue with regard to the
remaining issues of likelihood of confusion and dilution.
Therefore, in accordance with our inherent authority to
schedule the disposition of cases on our docket, the
Board will make a determination with regard to likelihood
of confusion and dilution at this time.
Turning now to likelihood of confusion, it is well
settled that the determination of whether a likelihood of
confusion exists is made by evaluating and balancing the

5 We note in addition that application Serial No. 78/041,974 was
abandoned on February 21, 2002 for failure to respond to an
Office action.
Opposition No. 121,820
9
pertinent du Pont evidentiary factors. See In re E. I.
du Pont de Nemours, 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In other words, not every factor is equally
important to the likelihood of confusion analysis in
every case. Indeed, our principal reviewing court and
this Board frequently has held, in appropriate cases,
that a single du Pont factor may be dispositive of the
likelihood of confusion analysis. See, e.g., Kellogg Co.
v. Pack ’Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990),
aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991)(dissimilarity of the marks under the first du Pont
factor held dispositive); Keebler Co. V. Murray Bakery
Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989)
(dissimilarity of the marks dispositive); and Sears
Mortgage Corp. v. Northeast Savings F.A., 24 USPQ2d 1227
(TTAB 1992)(dissimilarity between the marks dispositive).
After a careful review of the record in this case,
we believe that application of the first du Pont factor,
i.e., the similarity or dissimilarity of the marks in
their entireties, is dispositive of this proceeding.
There is no genuine issue as to the fact that opposer’s
pleaded mark is “AC” inside the design of a square, while
applicant’s mark is “GAP” inside the design of a square.
Opposition No. 121,820
10
The only similarity between the two is the square design
element. However, the word portions of the marks are
decidedly different. The wording “GAP” in applicant’s
mark and “AC” in that of opposer convey highly dissimilar
commercial impressions.
Furthermore, it is well settled that when a mark consists
of a word portion and a design portion, as do the marks
under consideration herein, the word portion is more
likely to be impressed upon a purchaser’s memory and to
be used in calling for the goods or services. See, for
example, Amoco Oil Co., v. Amerco, Inc. 192 USPQ 729
(TTAB 1976). We are, therefore, of the opinion that the
marks, when considered in their entireties, are not so
similar in appearance, sound, connotation or meaning that
their use by different parties will result in confusion.6
Moreover, opposer has not disclosed any evidence that it
could produce at trial which

6 We note that while opposer pleads ownership of Registration
No. 2,012,040 for the mark AMERICAN CONNECTION, it does not
appear from the notice of opposition that opposer is asserting
likelihood of confusion between the mark in its registration and
applicant’s “GAP in the square” mark. To the extent that the
notice of opposition may be construed to assert such a claim, we
find, in accordance with the above discussion, that the
dissimilarity between the marks AMERICAN CONNECTION and GAP
inside a square design element is so great that this du Pont
factor outweighs all others in mitigating against a finding of
likelihood of confusion.
Opposition No. 121,820
11
would reasonably be expected to cause us to reach a
different conclusion. The first du Pont factor simply
outweighs all of the others that might be relevant in
this case.
We turn finally to opposer’s claim of dilution. The
Board has recently held that in order to prevail in a
claim of dilution, an owner of an allegedly famous mark
must make a showing that (1) the other party's use is in
commerce; (2) the other party adopted its mark after the
plaintiff's mark became famous; (3) plaintiff’s mark is
famous; and (4) the other party diluted the mark. See
Section 43(c) of the Trademark Act; and The Toro Company
v. ToroHead, Inc., 61 USPQ2d 1164 (TTAB 2001).
In this case, as discussed above, we find no genuine
issue that applicant adopted its mark prior to opposer’s
adoption of its allegedly famous mark. Inasmuch as
applicant has made prior use of its mark, we find no
genuine issue that applicant adopted its mark before
opposer’s mark allegedly became famous. Accordingly, as
a matter of law, we find that opposer cannot prevail in
its dilution claim because opposer cannot make a showing
that applicant adopted its “GAP in the square” mark
subsequent to the time opposer’s “AC in the square” mark
allegedly became famous. See Id.
Opposition No. 121,820
12
In view of the foregoing, and as noted above, we
believe that applicant has met its burden of establishing
that there is no genuine issue of material fact as to
priority. Furthermore, we find no genuine issue of
material fact as to likelihood of confusion and dilution.
Accordingly, applicant is entitled to judgment on these
questions as a matter of law. See Fed. R. Civ. P. 56(c)
and (e). Applicant’s motion for summary judgment is
hereby granted and the opposition is dismissed with
prejudice. The application file shall be forwarded to
registration in due course.