Gecko Trading Co., Inc.v.Gecko’s Toes, Inc.

Trademark Trial and Appeal Board

Mar 10, 2009

No. 91173878 (T.T.A.B. Mar. 10, 2009)

Mailed: March 10, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Gecko Trading Co., Inc.
v.
Gecko’s Toes, Inc.
_____

Consolidated Opposition Nos. 91173878 and 911741361
to application Serial Nos. 78895782 and 78805903
_____

Bruce B. Brunda of Stetina Brunda Garred & Brucker for Gecko
Trading Co., Inc.

Matthew H. Swyers of The Swyers Law Firm, PLLC for Gecko’s
Toes, Inc.
______

Before Walters, Holtzman and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Gecko’s Toes, Inc., filed applications to
register the following marks in standard characters on the
Principal Register: AIRGECKO2 and GECKO’S TOES3 both for
“Hose hangers not of metal” in International Class 20.

1 These proceedings were consolidated in a Board order issued on
March 1, 2007.
2 Application Serial No. 78895782 was filed on May 30, 2006,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce on the identified goods.
3 Application Serial No. 78805903 was filed on February 2, 2006,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce on the identified goods.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition Nos. 91173878 and 91174136

2
Registration has been opposed by Gecko Trading Co.,
Inc. (“opposer”). As grounds for opposition, opposer
asserts that continuously since April 1984, and long prior
to the filing dates of applicant’s involved applications,
opposer has provided a wide variety of products, including
clothing, jewelry, sporting goods, skin and hair care
products, toys, sunglasses and eyeglasses, and novelty items
under the marks GECKO, MAUI GECKO and GECKO HAWAII; that
opposer owns 15 registrations for such marks; that, in
addition, opposer has made common law use of the mark GECKO
for a variety of goods not covered in its registrations; and
that applicant’s marks, when used on its goods as well as
retail and wholesale store services featuring such goods, so
resemble opposer’s previously used and registered marks as
to be likely to cause confusion, mistake, or deception in
contravention of Section 2(d) of the Trademark Act.4
In its answers, applicant denies the salient
allegations of the notices of opposition.5
The record consists of the pleadings; the files of the
opposed applications; the testimony deposition, with
exhibits, of Tina Fein, opposer’s Vice President; the

4 Opposer also asserted a claim of dilution, but withdrew such
claim in its brief on appeal.
5 In addition, applicant asserted the affirmative defenses of
laches and acquiescence. However, applicant did not pursue those
affirmative defenses at trial and, accordingly, they will be
given no consideration.

Opposition Nos. 91173878 and 91174136

3
testimony deposition, with exhibits, of Mary Winchester,
applicant’s president; the testimony deposition of Ruth
Ander, a customer of applicant; opposer’s pleaded
registrations, identified and introduced as exhibits to the
testimony deposition of Ms. Fein; opposer’s notice of
reliance upon applicant’s responses to opposer’s
interrogatories; and applicant’s notice of reliance on
opposer’s responses to certain of applicant’s
interrogatories and applicant’s requests for admission.
Both parties filed briefs, and opposer filed a reply
brief.
The parties have designated portions of the record and
the briefs as “confidential.” We will refer to the
information so designated in only a very general fashion.
Opposer’s Standing and Priority of Use
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, Section 2(d) priority is not an
issue in this case as to the marks therefor and goods and
services covered thereby. See King Candy Co. v. Eunice
Opposition Nos. 91173878 and 91174136

4
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).6
Opposer has made the following registrations of record.
Registration Nos.:
1510173 for the mark GECKO for “clothing, namely
shirts, dresses, sweatsuits, hats, shorts, skirts and
shoes”;
1512691 for the mark GECKO for “textile tote bags and
duffle bags”;
1514657 for the mark MAUI GECKO (MAUI disclaimed) for
“clothing, namely shirts, dresses, sweatshirts, hats,
shorts, skirts and shoes”;
1786819 for the mark GECKO HAWAII (HAWAII disclaimed)
for “clothing, namely shirts, dresses, sweatshirts, hats,
shorts, skirts and shoes”;
1903602 for the mark GECKO for “clothing, namely,
pajamas”;
1943766 for the mark GECKO for “retail and wholesale
stores featuring apparel, beach products, stuffed dolls and
novelty items”;
2049055 for the mark GECKO for “skin cleansing soaps
and gels, bubble bath, cosmetics, namely, body lotions, skin
moisturizers, after-sun lotions, hair products, namely, hair

6 We note in addition that applicant does not contest either
opposer’s standing to bring these proceeding or priority of use.

Opposition Nos. 91173878 and 91174136

5
lotions, hair shampoos, hair conditioners, and essential
oils for personal use”;
2260689 for the mark GECKO for “sunglasses, eyeglasses,
eyeglass cases, eyeglass straps to attach to eyeglasses”;
2287612 for the mark GECKO HAWAII (HAWAII disclaimed)
for “towels”;
2308720 for the mark GECKO for “towels”;
2347417 for the mark GECKO for “sporting goods, namely,
snowboards, surfboards, skateboards and in-line skates”;
2446676 for the mark GECKO for “jewelry, clocks,
watches”;
2453448 for the mark GECKO for “beverage glassware,
mugs, plates”;
2463090 for the mark GECKO for “toys, namely, stuffed
toy animals and flying disks”; and
2482688 the mark GECKO for “smoking accessories,
namely, cigarette and cigar lighters not of precious metal,
pipe cleaners, cigar humidors, cigar cutters, cigarette
holders not of precious metal”.
Likelihood of Confusion
We turn now to consideration of the issue of likelihood
of confusion. Our determination of likelihood of confusion
is based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
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6
likelihood of confusion. See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). We will concentrate our discussion of the issue of
likelihood of confusion on those registrations of opposer’s
which are closest to the marks for which applicant is
seeking registration, namely, opposer’s registrations for
the mark GECKO.
Fame of Opposer’s GECKO Mark
We begin our analysis by considering opposer’s
allegation that its GECKO mark is famous. We begin with
this factor, because fame “plays a ‘dominant’ role in the
process of balancing the du Pont factors.” Recot Inc. v.
Benton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000). See also, Palm Bay, 73 USPQ2d at 1694-95. In
addition, fame “varies along a spectrum from very strong to
very weak.” In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059 (Fed. Cir. 2003).
In this case, opposer contends that its GECKO mark is
famous based on its use since 1984; opposer’s ownership of
its above-noted registrations of its GECKO mark; annual
Opposition Nos. 91173878 and 91174136

7
sales of approximately $7 - $10 million annually for the
last 12 years; advertising expenditures of over $150,000
from 2001 – 2002 for its clothing products; the nationwide
scope of opposer’s sales of a wide range of goods, including
through major department stores and the Internet as well as
opposer’s two retail stores; opposer’s extensive licensing
program for goods under its GECKO mark; and opposer’s
consistent efforts to protect its rights in the GECKO mark.
Opposer also contends that its mark is entitled to a broad
scope of protection because the mark is arbitrary as applied
to its goods and services.
We find that opposer’s evidence of the asserted
notoriety of its GECKO mark, while sufficient to show that
it has enjoyed success in marketing goods thereunder, is
insufficient to show that such mark is famous. For example,
mere length of time that a mark is in use does not by
itself establish consumer awareness of the mark, such that
the mark can be found to be famous. See General Mills Inc.
v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1992).
In this case, the limited evidence we have of use of this
mark and availability of opposer’s goods to consumers
through its own retail store, and in department stores is
not sufficient to establish extensive public recognition and
renown of opposer’s GECKO mark. See Toro Co. v. ToroHead
Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). Cf. Kenner Parker
Opposition Nos. 91173878 and 91174136

8
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992).
Nonetheless, the parties agree that the term GECKO
refers to a small lizard, and that as a result the mark
appears arbitrary as used in reference to opposer’s goods
and services. In addition, opposer’s evidence clearly
demonstrates that its arbitrary mark GECKO is strong and has
established some renown, particularly in relation to
clothing and sporting goods.
The Marks
We turn then to a comparison of the marks before us,
applicant’s AIRGECKO and GECKO’S TOES marks and opposer’s
GECKO mark. In determining the similarity or dissimilarity
of marks, we must consider the marks in their entireties in
terms of sound, appearance, meaning and commercial
impression. See Palm Bay Imports, 73 USPQ2d at 1692-93.
We note initially that opposer has not argued that it
owns a family of GECKO and GECKO formative marks. Nor will
we consider that unpleaded issue in our determination
herein. Moreover, although opposer submitted its
registrations, there is insufficient evidence of use of
these specific GECKO and GECKO formative marks to support a
finding that “the pattern of usage of the common element is
sufficient to be indicative of the origin of the family.”
The Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d
Opposition Nos. 91173878 and 91174136

9
1482, 1490 (TTAB 2007) citing J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed.
Cir. 1991).
The marks AIRGECKO and GECKO’S TOES on one hand and
GECKO on the other are similar in sound. The term GECKO is
opposer’s entire mark, and the identical term is a major
component of applicant’s marks. GECKO is also a visually
significant component of applicant’s marks. In essence,
applicant has incorporated the entirety of opposer’s GECKO
mark into its AIRGECKO and GECKO’S TOES marks, and added
modifying language thereto. In addition, the marks as a
whole are substantially similar in meaning and connotation.
The parties agree that GECKO describes a small lizard, and
as a result the term appears to be arbitrary as applied to
the parties’ goods and services. Thus, opposer’s GECKO mark
conveys the idea of a small reptile. Applicant’s AIRGECKO
mark conveys the idea of a flying or airborne reptile while
GECKO’S TOES conveys the idea of an anatomical feature of
such a reptile. As a result, opposer’s GECKO mark and
applicant’s AIRGECKO and GECKO’S TOES marks are highly
similar in meaning and connotation, the latter marks
suggesting a type of gecko lizard or a feature thereof.
Further, there is very little evidence of third-party
uses of the mark GECKO or GECKO formative marks for goods
and/or services in the involved and/or closely related
Opposition Nos. 91173878 and 91174136

10
fields, other than those uses which opposer has introduced
as evidence of its successful enforcement activities, either
through the third-parties’ agreements to cease use or their
agreement to purchase a license from opposer.
As a result of the foregoing, we find that the
similarities between applicant’s marks and opposer’s GECKO
mark in appearance, sound, connotation and commercial
impression outweigh the dissimilarities.
The Goods and Services
We now turn to a consideration of the similarity
between opposer’s goods and services as identified in its
registrations for its GECKO mark and applicant’s identified
goods. It is settled that the issue of likelihood of
confusion must be determined in light of the goods or
services as identified in the involved application(s) and
registration(s) and, in the absence of any specific
limitations therein, on the presumption that all normal and
usual channels of trade and methods of distribution are or
may be utilized for such goods or services. See Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian Imperial Bank
of Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987); and CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Opposition Nos. 91173878 and 91174136

11
It further is settled that goods or services need not
be identical or even competitive to support a finding of
likelihood of confusion, it being sufficient instead that
the goods or services are related in some manner or that the
circumstances surrounding their marketing are such that they
would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992);
and Chemical New York Corp. v. Conmar Form Systems Inc.,
1 USPQ2d 1139 (TTAB 1986).
In this case, applicant’s goods are identified in both
of its involved applications as “hose hangers not of metal.”
Opposer asserts that “relatedness of the goods in this case
arises from relatedness of specific respective products sold
by the parties, relatedness of the associated retail and
wholesale services, and the broader relatedness of the
marketplace in which the various goods of the Parties are
offered for sale” (brief, p. 13.) However, opposer has
failed to submit evidence sufficient to support a finding of
such relatedness.
Opposer has registered its GECKO mark for a variety of
goods, including clothing, sporting goods, jewelry, beach
products, skin and hair care products, smoking articles,
eyewear, and glassware. However, there is no evidence of
Opposition Nos. 91173878 and 91174136

12
record that any of these goods are related to applicant’s
“hose hangers not of metal.” Opposer’s unsupported
assertions regarding the relatedness of the parties’ goods
have no evidentiary value. Further, and as noted above,
opposer has not argued, nor do we find, that opposer is
using GECKO as a house mark or “family” mark to identify a
wide variety of goods. See In re E. I. du Pont de Nemours &
Co., 177 USPQ at 567. Thus, while opposer has registered
its GECKO mark for a number of general consumer products,
opposer has failed to introduce evidence sufficient to
support a finding that its goods and services under its
GECKO mark are of a type such that purchasers familiar
therewith would assume that opposer now offers non-metal
hose hangers under applicant’s AIRGECKO and GECKO’S TOES
marks. See Uncle Ben’s Inc. v. Stubenberg International
Inc., 47 USPQ2d 1310, 1313 (TTAB 1998).
Opposer further has registered its GECKO mark for
“retail and wholesale stores featuring apparel, beach
products, stuffed dolls and novelty items.” However, once
again there is no evidence that any of the goods featured in
opposer’s retail or wholesale stores are related to
applicant’s “hose hangers not of metal.”7 In short, opposer

7 Nor is there sufficient evidence that the common law use of the
GECKO mark by opposer and its licensees at its two retail stores
in Hawaii involves the sale of goods related to those of
applicant. The somewhat speculative testimony of opposer’s vice-
president, Ms. Fein, and supporting evidence (Exhibit 25)
Opposition Nos. 91173878 and 91174136

13
has failed to introduce evidence that its goods and services
under its GECKO mark are related to applicant’s goods under
its involved marks.8
Channels of Trade
As is readily apparent, applicant’s identification of
goods contains no limitations as to their channels of trade
or the purchasers to whom its goods are marketed. As a
result, and in accordance with our established case law, we
must presume that applicant’s “hose hangers not of metal”
move in all channels of trade that are normal therefor and
are available to all the usual purchasers thereof.
However, and as discussed above, opposer has failed to
introduce sufficient evidence to support a finding that its
goods and services under its GECKO mark are related to
applicant’s goods in its involved applications. As such, we
cannot presume that the channels of trade for its goods and
services are the same as or overlapping with those in which
applicant’s goods may be encountered. Cf. Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)(“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications

regarding the “home and garden products, such as gardening
gloves, statues, wall plaques and other products” (brief, p. 12)
available at these locations does not establish that such goods
are related to those of applicant.
8 We note in addition that the goods recited under opposer’s
pleaded MAUI GECKO and GECKO HAWAII marks are included among the
goods identified in opposer’s pleaded GECKO marks.
Opposition Nos. 91173878 and 91174136

14
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade.”)
Further, the testimony and evidence of record indicates
that while both parties’ goods are available over the
Internet, the channels of trade therefor otherwise are
distinct, with applicant’s goods available at flea markets,
swap meets, home and garden shows, the QVC television
network and other television appearances,9 while opposer’s
goods are available in its two stores in Hawaii as well as
mass retail department stores such as Sears, J.C. Penney’s,
and Kohls10. As such, neither the nature of the goods
themselves nor the evidence of record supports a finding
that such goods travel in common trade channels or are made
available to the same customers.
Actual Confusion
Neither party has introduced testimony or evidence of
any instances of actual confusion. However, there is
insufficient evidence that the extent and scope of
applicant’s use is such that there have been many
opportunities for actual confusion to occur. The absence of
actual confusion is not surprising given the relatively

9 Winchester testimony, p. 42-3.
10 Fein testimony, p. 28-9, 51; Exhibit 20.

Opposition Nos. 91173878 and 91174136

15
short duration of use by applicant – since January 2006 – of
its marks.
We note in addition that the test is not actual
confusion, but likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Applicant’s Intent in Adopting Its Marks
Finally, the record in these proceedings generally
supports applicant’s contention that it did not intend to
cause confusion with opposer’s goods and services under its
marks. Nonetheless, this factor is of little weight
because, as stated by our primary reviewing court, in J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991): “Whether there is
evidence of intent to trade on the goodwill of another is a
factor to be considered, but the absence of such evidence
does not avoid a ruling of likelihood of confusion.
(citation omitted).”
Conclusion
Opposer has introduced evidence that its GECKO mark is
arbitrary and strong as used in connection with its goods
and services. Further, the similarities between opposer’s
GECKO mark and applicant’s AIRGECKO and GECKO’S TOES
outweigh the differences. However, opposer has failed to
Opposition Nos. 91173878 and 91174136

16
demonstrate that applicant’s “hose hangers not of metal” are
related to its recited goods and services, or that the goods
and services are marketed in the same or overlapping
channels of trade to common consumers.
Primarily in view of the lack of an established
relationship between applicant’s goods and opposer’s goods
and services, we find that opposer has failed to demonstrate
a likelihood that the purchasing public would be confused by
applicant’s registration of its AIRGECKO and GECKO’S TOES
marks for its identified goods.
Decision: The opposition on the ground of priority and
likelihood of confusion is dismissed.