Great White Shark Enterprises, Inc.v.Brick City 21 LLC

Trademark Trial and Appeal Board

Oct 12, 2012

No. 91201911 (T.T.A.B. Oct. 12, 2012)

Goodman

Mailed: October 12, 2012

Opposition No. 91201911

GREAT WHITE SHARK ENTERPRISES,
INC.

v.

BRICK CITY 21 LLC

Before Quinn, Ritchie and Kuczma, Administrative Trademark
Judges.

By the Board:

Brick City 21 LLC (“applicant”), which is proceeding
pro se in this case, has filed an application to register
the mark for “casual clothing and
garments, namely, shirts, pants, shorts, hooded sweatshirts,
hats, bandanas, jackets and sweatshirts” in International
Class 25.1 Great White Shark Enterprises, Inc., (“opposer”)

1 Application Serial No. 77963257, filed March 19, 2010,
asserting a date of first use and use in commerce as of February
10, 2010.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91201911

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has opposed registration on the ground of priority and
likelihood of confusion. Opposer alleges use of “a
designation comprised of a shark (the ‘Greg Norman Logo’)”
since at least as early as December 1992 “in conjunction
with clothing, particularly casual clothing and activewear,
and various other goods and services.” Opposer has also
pleaded ownership of multiple registrations for the Greg
Norman Logo including Registration No. 2361139 for the
following mark:

for “apparel, headwear” in Class 25.2
In its answer, applicant has denied the salient
allegations in the notice of opposition.
This case now comes up on opposer’s motion, filed June
12, 2012, for partial summary judgment on the issues of
standing, priority and two likelihood of confusion du Pont
factors3, namely similarity of the parties’ goods and
similarity of the channels of trade and classes of

2 Registration issued June 27, 2000; renewed.
3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973).
Opposition No. 91201911

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purchasers. Opposer has not sought partial summary judgment
on any other du Pont factors.
A party is entitled to summary judgment when it has
demonstrated that there is no genuine dispute as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). In reviewing a
motion for summary judgment, the evidentiary record and all
reasonable inferences to be drawn from the undisputed facts
must be viewed in the light most favorable to the nonmoving
party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200,
22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
In support of its motion, opposer has submitted copies
of electronic TARR and TESS reports from the USPTO website
for Registration No. 2361139 confirming its ownership and
the current status of the Registration.
Standing
Turning to the merits of the motion for partial summary
judgment, we first determine opposer’s standing to bring
this opposition proceeding. Standing is a threshold issue
that must be proven by a plaintiff in every inter partes
case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999). We find that opposer’s standing to bring
this opposition proceeding is undisputed by applicant4 and

4 Applicant’s arguments in paragraph 2 although titled “Standing
and Priority” address priority but not the standing issue.

Opposition No. 91201911

4
is established by the TARR and TESS printouts for pleaded
Registration No. 2361139. Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185, 189-190
(C.C.P.A. 1982); see also Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010) (pleaded
registration made of record establishes standing).
Accordingly, we find no genuine dispute of material
fact that opposer’s standing has been established.
Priority

We will now turn to the question of priority. Although
applicant has made some arguments as to opposer’s priority,
we find that opposer’s submission of electronic TARR and
TESS reports of its pleaded Registration No. 2361139 removes
the issue of priority with respect to the goods “apparel,
headwear.” King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Accordingly, we find no genuine dispute of material
fact that opposer’s priority has been established with
respect to the pleaded registration and the goods “apparel,
headwear.”
Likelihood of confusion
We now turn to the issue of likelihood of confusion
with respect to du Pont factors, two and three, similarity
or dissimilarity and nature of the goods or services and
similarity or dissimilarity of established or likely to
Opposition No. 91201911

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continue trade channels. In re E. I. du Pont de Nemours &
Co., 177 USPQ at 567. We must decide, for purposes of the
present motion, whether there are any genuine disputes of
material fact regarding du Pont factors numbers two and
three that would need to be resolved at trial.
Consideration of these factors is based on the goods
recited in applicant's application vis-à-vis the goods
identified in opposer’s pleaded registration. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783, 1815 (Fed. Cir. 1992). The respective identification
of goods in applicant’s application and the goods in
opposer’s registration may of themselves be evidence as to
the relatedness of the parties’ goods. Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002).
Opposer has argued that the parties’ goods are similar
because applicant’s goods fall within the scope of opposer’s
goods as identified and that the channels of trade for the
parties’ goods are the same because the parties’ goods are
legally identical.
Applicant, on the other hand, has argued that it
offered to amend its identification of goods, and that the
parties’ channels of trade are different because applicant
sells its goods at poker tournaments to individuals ranging
in age from 35 to 69 who compete in poker tournaments and
Opposition No. 91201911

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watch poker championships while opposer sells its goods at
golf shops, golf boutiques and department stores to
consumers whose ages range between 16 to 30.
Similarity or Dissimilarity of the Nature of the
Parties’ Goods

When goods in a registration are broadly described and
there are no limitations in the identification goods as to
their nature, it is presumed that the goods encompass all
goods of the nature and type described. Canadian Imperial
Bank of Commerce, 1 USPQ2d at 1815-1816; In Rocket
Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073
(TTAB 2011) (citations omitted).
With respect to the relatedness of the parties' goods,
opposer’s pleaded Registration No. 2361139 identifies its
goods as “apparel, headwear.” See TARR and TESS reports.
Applicant’s goods are identified in application Serial No.
77963257 as “casual clothing and garments, namely, shirts,
pants, shorts, hooded sweatshirts, hats, bandanas, jackets
and sweatshirts.” The broad term “apparel” in opposer’s
registration encompasses all types of clothing and
“headwear” encompasses all types of “hats.”
We find that there is no genuine dispute of material
fact that the parties’ goods are legally identical. Cf. Big
M. Inc. v. The United States Shoe Corporation, 228 USPQ 614
(TTAB 1985) (retail store services featuring women’s
sportswear and retail store services featuring women’s
Opposition No. 91201911

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apparel and accessories legally identical because broad term
apparel necessarily includes sportswear).
Similarity or Dissimilarity of the Channels of
Trade/Classes of Purchasers

With respect to the channels of trade and classes of
purchasers, there are no restrictions in either applicant's
identification or the identification in opposer's
Registration no. 2361139. Therefore, it is presumed that
the identifications encompass all goods of the type
described, that they move in all normal trade channels for
such goods, and that they are available to all potential
consumers for such goods. Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). In addition, because the goods in opposer’s
registration and applicant’s involved application are
legally identical, such goods are presumed to travel in
similar trade channels and to be purchased by the same
classes of consumers. See Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) (Where goods in applicant's
application were in-part identical to those in registrant's
registration, lack of restrictions as to trade channels or
purchasers gives rise to presumption that goods “could be
offered and sold to the same classes of purchasers through
the same channels of trade”).
Opposition No. 91201911

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Accordingly, we find that there is no genuine dispute
of material fact that the parties’ channels of trade and
classes of purchasers are overlapping.
Decision
We find based on the record herein and the applicable
law, that there is no genuine dispute of material fact that
opposer has established its standing, priority, the
relatedness of the parties’ goods and overlapping channels
of trade and classes of purchasers. Opposer’s motion for
partial summary judgment is granted, as to standing,
priority, similarity of the parties’ goods, channels of
trade and classes of purchasers.5
Given the limited issues remaining in dispute in this
case, the parties may wish to consider accelerated case
resolution. See TBMP Sections 702.04 and 705 (3d ed. rev.
2012) for more information.
Proceedings are resumed.
Dates are reset as follows:
Plaintiff's Pretrial Disclosures Due 11/25/2012
Plaintiff's 30-day Trial Period Ends 1/9/2013
Defendant's Pretrial Disclosures Due 1/24/2013
Defendant's 30-day Trial Period Ends 3/10/2013
Plaintiff's Rebuttal Disclosures Due 3/25/2013
Plaintiff's 15-day Rebuttal Period Ends 4/24/2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,

5 No further evidentiary submissions are necessary at trial on
these issues.
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9
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.