Fox Umbrellas Limitedv.Activa Group, Inc.

Trademark Trial and Appeal BoardAug 4, 2021

92066166 (T.T.A.B. Aug. 4, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: August 4, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Fox Umbrellas Limited v. Activa Group, Inc. _____ Cancellation No. 92066166 _____ Sean K. Owens of Wood Herron & Evans LLP for Fox Umbrellas Limited. Andrew H. Simpson and Stacey R. Halpern of Knobbe, Martens, Olson & Bear, LLP for Activa Group, Inc. _____ Before Cataldo, Goodman and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: Activa Group, Inc. (“Respondent”) is the owner of record of two registrations on the Principal Register, both for the identical goods: “umbrellas and their parts therefor; patio umbrellas; market umbrellas; beach umbrellas; umbrella frames; umbrella bases; bags for umbrellas; and umbrella covers” for the following design marks: Cancellation No. 92066166 - 2 - 1 2 In its Petition for Cancellation,3 Fox Umbrellas Limited (“Petitioner”) seeks cancellation of Respondent’s ’241 and ’605 registrations on the ground that Respondent’s marks, as applied to the goods identified in the Registrations, so resembles Petitioner’s prior common law FOX UMBRELLA word and FOX and UMBRELLA Design marks, used in connection with umbrellas and their parts, walking sticks, and walking stick seats, as to be likely to cause confusion, mistake, or to deceive, in derogation of Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Applicant denied the salient allegations of the Petition for Cancellation in its Answer, and also asserted but did not pursue a number of “affirmative defenses.”4 Accordingly, we deem Respondent to have waived all of its asserted defenses. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1 Registration No. 4846241 (the “’241 Registration”) was issued on November 3, 2015 from an underlying application filed on August 2, 2011. The registration contains the following description of the mark: “Color is not claimed as a feature of the mark. The mark consists of a fox and umbrella design.” 2 Registration No. 4874605 (the “’605 Registration”) was issued on December 22, 2015 from an underlying application filed on August 2, 2011. The registration contains the following description of the mark: “Color is not claimed as a feature of the mark. The mark consists of a design of a fox and umbrella, in the rain within a square.” 3 Petition for Cancellation, 1 TTABVUE. References to the record refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket entry number; and coming after this designation are the page and paragraph references, if applicable. 4 Answer, 4 TTABVUE. Cancellation No. 92066166 - 3 - 1422-23 n.7 (TTAB 2014); Alcatraz Media v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014). Petitioner bears the burden of proving its Trademark Act Section 2(d) claim for cancellation by a preponderance of the evidence. Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 41 USPQ2d 1369, 1372 (Fed. Cir. 1997); West Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). Petitioner submitted evidence and filed a Trial Brief. Respondent did not. Having considered the evidentiary record, the arguments and applicable authorities, as explained below, we find that Petitioner has carried its burden, and grant the Petition. I. The Evidentiary Record The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of Respondent’s involved registrations. In addition, Petitioner introduced the following evidence:  Petitioner’s Notice of Reliance (“Pet NoR”) (14 TTABVUE) on: o The File History of Petitioner’s Application Serial No. 85805343 (the “’343 Application”) to register the mark: for “umbrellas and their parts; walking sticks; walking stick seats” (“Umbrella” disclaimed). o Petitioner’s website at https://www.foxumbrellas.com. o Print media articles discussing the business of Petitioner or its predecessors in interest.  Testimony Declaration of Petitioner’s Managing Director, Paul Garrett (“Garrett Decl.”) with exhibits (Public Version, 17 TTABVUE; Confidential Version and exhibits, 15-16 TTABVUE). Cancellation No. 92066166 - 4 - Respondent did not introduce any evidence during its Testimony Period. II. The Parties Petitioner is a United Kingdom company that traces the lineage of its company and FOX UMBRELLA(S) Marks back to its English founder, Thomas Fox, in 1868. Petitioner asserts it has been selling products bearing its marks in the United States since 1980.5 Petitioner claims U.S. common law rights in the following trade names, word marks, word-and-design marks, and design marks in connection umbrellas and their parts (including umbrella covers), walking sticks, and walking stick seats as far back as 1980:6 Since it did not submit any evidence or argument, all we know about Respondent – from its trademark registrations – is that it is a China corporation having an address in Ningbo, China. In 2009, Petitioner successfully petitioned to have 5 Garrett Decl., 17 TTABVUE 2-3, ¶¶ 1, 4, 5. 6 Pet. NoR, 14 TTABVUE 113-115, 151-283, Exhs. 1-2; Garrett Decl., 17 TTABVUE 2-5, ¶¶ 3-4, 5-8; Garrett Confidential Exhibits: 15 TTABVUE 9-362, Exhs. 1-2; 16 TTABVUE 236-44, Exhs. 7, 8. Cancellation No. 92066166 - 5 - Respondent’s FOX and UMBRELLA Design registrations in the United Kingdom cancelled on grounds of abandonment,7 and in 2011 the parties entered into a co-existence agreement covering the territory of the European Union.8 Neither of these facts is relevant to this proceeding. Information concerning parties’ foreign trademark-related activities is not relevant to the issues in a U.S. cancellation proceeding. Oland’s Breweries [1971] Ltd. v. Miller Brewing Co., 189 USPQ 481, 483 n.2 (TTAB 1975), aff’d, 192 USPQ 266 (CCPA 1976); Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974). “[I]nformation and decisions relative to trademark disputes in foreign jurisdictions are not controlling on a determination of a party’s right to register in the United States.” Boston Chicken Inc. v. Boston Pizza Int’l Inc., 53 USPQ2d 1053, 1055 (TTAB 1999). III. Entitlement to a Statutory Cause of Action Entitlement to a statutory cause of action is a threshold issue that must be proven by the plaintiff in every inter partes case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action under Trademark Act Section 14, 15 U.S.C., § 1064, a plaintiff must demonstrate “an interest falling within the zone of interests protected by the statute and … proximate causation.” Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021), (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 7 Garrett Decl., 17 TTABVUE 6, ¶ 13; Garrett Confidential Exhibit: 16 TTABVUE 287-99, Exh. 12. 8 Garrett Confidential Exhibit: 16 TTABVUE 161-68, Exh. 5. Cancellation No. 92066166 - 6 - USPQ2d 2061, 2067-70 (2014)).9 Stated another way, a plaintiff is entitled to bring a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); see also Empresa Cubana, 111 USPQ2d at 1062. According to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), there is “no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana.” Corcamore, 2020 USPQ2d 11277 at *4. Thus, “a party that demonstrates a real interest in cancelling a trademark under [Trademark Act Section 14, 15 U.S.C.] § 1064 has demonstrated an interest falling within the zone of interests protected by [the Trademark Act] .… Similarly, a party that demonstrates a reasonable belief of damage by the registration of a trademark demonstrates proximate causation within the context of § 1064.” Corcamore, 2020 USPQ2d 11277 at *7. “A petitioner may demonstrate a real interest and reasonable belief of damage where the petitioner has filed a trademark application that is refused registration based on a likelihood of confusion with the mark subject to cancellation.” Australian Therapeutic, 2020 USPQ2d 10837, at *4. Consistent with the allegations made in its 9 Our decisions have previously analyzed the requirements of Trademark Act Sections 13 and 14, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Trademark Act Sections 13 and 14 remain applicable. Cancellation No. 92066166 - 7 - Petition for Cancellation,10 Petitioner made of record the application file history for its ’343 Application to register the FOX UMBRELLA and FOX and UMBRELLA Design ( ) mark for “umbrellas and their parts; walking sticks; walking stick seats”, showing that the application was refused registration on the ground of likelihood of confusion with Respondent’s registered FOX and UMBRELLA Design ( and ) marks.11 Petitioner therefore has adequately demonstrated its entitlement to bring and maintain its Trademark Act Section 2(d) claim. IV. Priority “A party claiming prior use of a [mark similar to] registered mark[s] may petition to cancel the registration[s] on the basis of such prior use pursuant to [S]ection 14 of the Lanham Act. 15 U.S.C. Section 1064.” West Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity” attaches to Respondent’s involved registrations, and Petitioner, the alleged prior user, bears the burden of proving its claim of priority by a preponderance of the evidence. Id.; Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1105-06 (TTAB 2007). “To establish priority, the petitioner must show proprietary rights in the mark[s] that produce a likelihood of confusion…. These proprietary rights may arise from a 10 Petition for Cancellation, 1 TTABVUE 5-6, ¶¶ 3-4, 7. 11 ‘343 Application file history, Pet NoR, 14 TTABVUE 5-150. Cancellation No. 92066166 - 8 - prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (internal citation omitted); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). In determining prior use, “one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use.” West Fla. Seafood, 31 USPQ2d at 1663. Because Respondent did not make of record any evidence establishing prior use of its mark, the earliest date on which Respondent may rely for priority purposes is the August 2, 2011 filing date of the underlying applications that matured into its ’241 and ’605 Registrations. See, e.g. Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980). Petitioner made of record:  Reprints of invoices bearing Petitioner’s FOX UMBRELLA(S) and FOX and UMBRELLA Design marks from 1999 to 2016, memorializing sales to U.S. customers.12  Handwritten and typewritten company ledgers showing merchandise sales to U.S. customers from 1980 to 1998.13  A summary of U.S. retailers through which Petitioner’s products have been sold from coast-to-coast.14 12 Garrett Confidential Exhibits: 15 TTABVUE 9-292, 304-362, Exhs. 1, 2. 13 Id. at 293-303, Exh. 1. 14 Id. at 363-70, Exh. 3. Cancellation No. 92066166 - 9 -  Letters from two of Petitioner’s U.S. retail customers, one customer stating that each of Petitioner’s umbrellas sold through their stores bears the “FOX UMBRELLAS” mark on the hang tag, and that the name FOX UMBRELLAS has been depicted on the ribs of each umbrella from the 1970s until 2017; the other customer stating this occurred from 2010 to 2017.15  Petitioner’s internal business records summarizing direct sales to customers located in the U.S. from 2002 to 2018.16  Representative samples of Petitioner’s correspondence (under the FOX UMBRELLAS trade name) with customers and potential customers in the U.S. from 2003 to 2008.17  Photographs showing Petitioner’s umbrellas (some with covers on them) and umbrella handles bearing hang tags with the FOX UMBRELLA and FOX and UMBRELLA Design marks on them.18  An article in MEN’S WEAR magazine featuring Petitioner’s business and products from 1981.19 The authenticity of all of the above-noted evidence was verified by Petitioner’s Managing Director, Paul Garrett, from personal knowledge or through his review of company records within his possession or control, or to which he has access as part of 15 Id. at 371-73, Exh. 4. 16 Garrett Confidential Exhibit: 16 TTABVUE 1-160, Exh. 5. 17 Id. at 169-235, Exh. 6. 18 Id. at 236-42, Exh. 7. 19 Pet. NoR, 14 TTABVUE 290-291. We give no consideration to the other publications Petitioner made of Record. The 1981 article from CAPITAL magazine is written in French. The book FINEST is written in German. From the text of the 1981 article in THE KEY magazine, the 2007 article in THE LADY magazine, the 2014 article in BBC NEWS BUSINESS, the 2012 article in THELONDONLUXE, and the undated posting on the SHERLOCKOLOGY fan website, we can discern that they are British publications. The 1947 article Petitioner provided is from an unknown publication of unknown origin. (Pet. NoR, 14 TTABVUE 242-46, 250-89, 292-93). We find no basis to conclude that the foreign publications, even if in English, would be encountered by relevant consumers in the United States. See Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1552 (TTAB 2009) (striking from evidence excerpts from foreign publications which were not shown to be in general circulation in the United States). Articles featuring Petitioner and its business in BMI VOYAGER, MEN’S HEALTH, COUNTRY LIFE magazines, as reprinted on Petitioner’s website (Pet. NoR, 14 TTABVUE 239-41, 247-49), are all dated after Respondent’s underlying August 2, 2011 application filing date. Cancellation No. 92066166 - 10 - his responsibilities.20 Petitioner therefore has made of record documented testimony establishing its priority in the use of its FOX UMBRELLA(S) and FOX and UMBRELLA Design marks for umbrellas and their parts (including umbrella covers), walking sticks, and walking stick seats prior to the August 2, 2011 filing date of the underlying applications that matured into Respondent’s ’241 and ’605 Registrations. To establish priority based on common law use, Petitioner’s marks must be distinctive, inherently or otherwise, and Petitioner must show proprietary rights in a mark or marks as to which Respondent’s marks give rise to a likelihood of confusion. Otto Roth, 209 USPQ 43-45. In its Answer, Respondent challenges Petitioner’s claim that its FOX UMBRELLA and FOX and UMBRELLA Design marks are distinctive.21 In its Trial Brief, Petitioner argues: [W]hile Petitioner has disclaimed the term UMBRELLA [in its pending trademark application], the FOX portion of Petitioner’s Fox Umbrella Marks is also inherently distinctive and arbitrary. … Though the word mark FOX UMBRELLA originated with the founder of the company, Thomas Fox, in 1868, the term FOX is nevertheless inherently distinctive because its primary significance is not as a surname. Rather, consumers would naturally understand the typical English-language meaning of the term FOX as the mark’s primary significance (i.e. as defined by Merriam-Webster, “any of various carnivorous mammals … of the dog family related to but smaller than wolves with shorter legs, more pointed muzzle, large erect ears, and long bushy tail ….”).22 20 Garrett Decl., 17 TTABVUE 2-6, ¶¶ 1-12. 21 Petition for Cancellation, 1 TTABVUE 8, ¶ 15; Answer, 4 TTABVUE 4, ¶ 15. 22 Petitioner’s Brief, 34 TTABVUE 21-22. Petitioner did not make of record this definition of FOX from MERRIAM-WEBSTER’S online dictionary https://www.merriam- webster.com/dictionary/fox, last visited August 2, 2021) during its testimony period. Rather, Petitioner asks the Board to take judicial notice of this definition pursuant to Fed. R. Evid. 201(b). We take judicial notice of this dictionary definition, as it is the regular practice of the Board to do so. See Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., Cancellation No. 92066166 - 11 - Petitioner further contends that, even if its FOX UMBRELLA word and design marks were found not inherently distinctive (or primarily merely a surname), sufficient evidence has been made of record to demonstrate that Petitioner’s marks have acquired distinctiveness pursuant to Trademark Act Section 2(f), 15 U.S.C. § 1052(f).23 We need not decide whether, inherently, Petitioner’s FOX UMBRELLA word and design marks are merely descriptive or comprise matter that is primarily merely a surname – because we find that Petitioner’s marks have acquired distinctiveness. Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ2d 1739, 1744 (Fed. Cir. 2018) (“[T]he Board refused to determine whether the [SCHLAFLY] mark was primarily merely a surname …. Because the Board found that the SCHLAFLY mark for beers had acquired secondary meaning, [Trademark Act] Section 1052(e)(4) did not bar the registration.”). “To prove distinctiveness under 15 U.S.C. § 1052(f) …, [Petitioner] may submit any appropriate evidence tending to show that the mark[s] distinguish[] … [Petitioner’s] goods.” Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1583, 6 U.S.P.Q.2d 1001, 1010, (Fed. Cir. 1988) (internal quote marks omitted). As itemized above, Petitioner has demonstrated that its FOX UMBRELLA word and design marks have acquired distinctiveness in the U.S. through sales in this country since 2019 USPQ2d 208901, at *4 n.34 (TTAB 2019) (Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format). 23 Id. at 22-23. Cancellation No. 92066166 - 12 - 1980 and continuing to the date of trial,24 a list of U.S. retailers from coast-to-coast that carry Petitioner’s products, recognition statements from retail customers, and correspondence exchanged with customers and potential customers since 2003. We also infer that Petitioner’s use of its marks in connection with its goods has been exclusive, given the absence of evidence of third-party uses of similar marks in the U.S. for competitive products. V. Likelihood of Confusion Trademark Act Section 2(d), 15 U.S.C. § 1052(d), prohibits the registration of a mark that [c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Our analysis is based on all of the probative evidence of record. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (noting the elements, or factors, to be considered). In making our determination, we consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 24 Per Petitioner’s motion of June 27, 2018, and the Board’s Order of the same date, Petitioner’s testimony period closed on November 26, 2018. 12-13 TTABVUE. The proceedings were thereafter suspended from January 2019 until November 2020, so that Respondent could complete its deposition on written questions of Petitioner. See 20-32 TTABVUE. Petitioner ultimately filed its Trial Brief on April 7, 2021. 34 TTABVUE. Cancellation No. 92066166 - 13 - 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination”). In applying the DuPont factors, we bear in mind the fundamental purposes underlying Trademark Act Section 2(d), which are to prevent confusion as to source and to protect trademark owners from damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). These factors, and the other DuPont factors for which there is evidence and argument, are discussed below. A. Similarity or Dissimilarity of Goods, Channels of Trade and Purchasers The second, third and fourth DuPont factors are “[t]he similarity or dissimilarity and nature of the goods … described in … [a] registration … [and] in connection with which a prior mark is in use”; “[t]he similarity or dissimilarity of established, likely-to-continue trade channels”; and “[t]he … buyers to whom sales are made ….” DuPont, 177 USPQ 567. As noted, Respondent’s identified goods are “umbrellas and Cancellation No. 92066166 - 14 - their parts therefor; patio umbrellas; market umbrellas; beach umbrellas; umbrella frames; umbrella bases; bags for umbrellas; and umbrella covers.” Petitioner’s goods include umbrellas and their parts therefor; bags for umbrellas; and umbrella covers. Thus, the parties’ goods are identical in part. There are no limitations upon Respondent’s goods recited in its registrations. Where, as here, the respective goods are identical in part, without restrictions as to nature, type, channels of trade, or classes of purchasers, the identified goods are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Thus, these DuPont factors favor a finding of likelihood of confusion. B. The Similarity or Dissimilarity of the Marks We now consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), the first DuPont factor. 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, Cancellation No. 92066166 - 15 - 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted)). The focus is on the recollection of the average purchaser – here, an umbrella purchaser – who normally retains a general rather than a specific impression of trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007). In comparing the parties’ marks, we note that Petitioner uses its marks with goods that are identical in part to the goods recited in Respondent’s registrations. Thus, the degree of similarity between the marks required to support a finding of likelihood of confusion is less than it would be if the goods were not identical. Bridgestone Ams. Tire Operations LLC v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); see also Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”). Notably, the dominant portion (by relative size) of Petitioner’s word-and-design marks is the rendition of a fox under an umbrella. One of Petitioner’s design marks is solely that of a fox under an umbrella. When the marks at issue are both primarily design marks, the similarity of the marks must be decided principally on the basis of visual similarity. See e.g., In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990).25 25 Although the marks at issue must be considered in their entireties, one feature of a mark may be more significant than another, and it is not improper for rational reasons to give more Cancellation No. 92066166 - 16 - Petitioner’s word-and-design and design marks, and both of Respondent’s registered marks, all contain or consist of depictions a fox under an umbrella. In all cases, the fox sits upright with the umbrella open and tilting to the right. The design shown in Respondent’s ’605 Registration is markedly similar to the design portions of Petitioner’s marks, with the dominant elements of the respective designs consisting of a realistically rendered fox sitting under an umbrella. While the design shown in Respondent’s ’241 Registration is a simplified line drawing, the overall shape, design, meaning, and commercial impression are the same. The animal shown is clearly identifiable as a fox (bushy tail, pointed and angular head and snout, long body with folded haunch, as may be seen in the more realistic designs) sitting upright under a right-leaning umbrella. Petitioner’s trade names, word marks and word-and-design marks comprise or include the terms FOX UMBRELLA(S). Respondent’s registered marks are both depictions a fox under an umbrella. Under the doctrine of legal equivalents, a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers, such that a design mark may be found confusingly similar to a word mark consisting of the design’s literal equivalent. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141, 142-143 (TTAB 1986) (applicant’s mark consisting of a silhouette of a lion’s head and the letter “L,” for shoes, and registrant’s mark, LION, for shoes, likely to cause confusion); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, weight to this dominant feature in determining the commercial impressions created by the marks. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985). Cancellation No. 92066166 - 17 - Inc., 224 USPQ 1064, 1066 (TTAB 1984) (holding applicant’s marks featuring a design of a mountain lion and opposer’s mark PUMA likely to cause confusion); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974) (mark consisting of a design of an eagle lined for the color gold and mark consisting of GOLDEN EAGLE and design of an eagle likely to cause confusion). Indeed, as the Board has explicitly stated, “[i]t is established that where a mark comprises a representation of an animal … and another mark consists of the name of that animal …, such designations are to be regarded as legal equivalents in determining likelihood of confusion under the Trademark Act.” Squirrel Brand Co. v. Green Gables Inv. Co., 223 USPQ 154, 155-56 (TTAB 1984) (the word mark SQUIRREL BRAND and a cartoonish line drawing of a squirrel held to be equivalent). Here, Applicant’s FOX UMBRELLA(S) trade names, word marks and word-and-design marks explicitly describe and are legally equivalent to Registrant’s design marks, which depict different renditions of a fox and an umbrella. Accordingly, even if one were to afford greater weight to the FOX UMBRELLA(S) text in Petitioner’s Marks, the respective marks would still be highly similar and, indeed, legal equivalents. The respective marks would still have the same meaning, commercial impression, and, if spoken, sound. The inclusion of the similar FOX and UMBRELLA Design in Petitioner’s Marks only underscores that conclusion. The similarities between the Petitioner’s and Respondent’s marks supports a finding that confusion is likely. Cancellation No. 92066166 - 18 - VI. Summary Having considered the evidentiary record, Petitioner’s arguments and applicable authorities, as explained above, we grant the Petition for Cancellation on the ground that Petitioner has priority and that Respondent’s FOX and UMBRELLA Design marks are likely to be confused with Petitioner’s FOX UMBRELLA(S) and FOX and UMBRELLA Design marks for in-part identical goods. Decision: The Petition to cancel Respondent’s FOX and UMBRELLA Design registrations, Registration Nos. 4846241 and 4874605, on the ground of Petitioner’s priority and likelihood of confusion under Trademark Act Section 2(d), is granted.