Headwall Ventures, Inc.v.Peter Scott

Trademark Trial and Appeal BoardMay 29, 2012

No. 91192340 (T.T.A.B. May. 29, 2012)

Mailed: May 29, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Headwall Ventures, Inc. v. Peter Scott _____ Opposition No. 91192340 to application Serial No. 77197988 filed on June 5, 2007 _____ Tim Headley and Heather Hoopingarner Thiel of the Law Offices of Tim Headley for Headwall Ventures, Inc. John L. Dupré of Hamilton Brook Smith & Reynolds PC for Peter Scott. ______ Before Seeherman, Bucher and Holtzman, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Headwall Ventures, Inc. has opposed, on the ground of likelihood of confusion, the application of Peter Scott to register CAVEMAN in standard character form for “vehicle decals, decorative stickers” in Class 16 and “t-shirts, hats, shorts, sweat shirts, bandanas, sweat pants, baseball caps, bathrobes, halter tops, muscle tops, panties, jackets, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91192340 2 skull caps, snow pants, snow suits, snowboard gloves, snowboard pants, undergarments and underwear” in Class 25.1 Specifically, opposer has alleged that since at least as early as February 1998, well prior to the filing of applicant’s intent-to-use application, opposer has used the mark CAVEMAN; that opposer continues to use the mark CAVEMAN for clothing items; that opposer obtained trademark registrations for CAVEMAN, including a registration for clothing; that, although opposer inadvertently failed to renew that registration, it never had an intent to abandon its rights in the mark; that opposer has filed several applications for the mark CAVEMAN for various goods, including an application for the same goods identified in its expired registration; that opposer owns a registration for a caveman design for clothing items, and has used this design mark since as early as February 1998, often in conjunction with the mark CAVEMAN; that the word mark and the design mark are well known; that the parties’ goods are similar or closely related and will be encountered by the same or similar class of purchasers; and that applicant’s mark so resembles opposer’s word mark and design mark that it is likely to cause confusion, mistake or to deceive. Applicant has denied all of the allegations in the notice of opposition in his answer. 1 Application Serial No. 77197988, filed June 5, 2007, based on Opposition No. 91192340 3 The record includes the pleadings; the file of the opposed application; and the testimony, with exhibits, of Robert Anthony Yrshus, the president and director of opposer.2 Applicant did not submit any testimony or evidence. Only opposer filed a brief. Standing Opposer has submitted evidence that it owns Registration No. 2170419 for the caveman design mark, shown below, for “clothing, namely, shirts, caps, sweaters, jackets, shorts, pants, underwear, ties and socks.”3 Section 1(b) of the Trademark Act (intent-to-use). 2 It is noted that the transcript for Mr. Yrshus’s deposition contains a stipulation “between counsel for the respective parties hereto that all objections are reserved until the time of trial.” However, counsel for applicant did not attend the deposition, so it is not clear when he agreed to this. Further, the stipulation itself does not make sense, since the deposition was taken as trial testimony. In any event, no objections were raised by applicant at any time, so we need not be concerned about the validity of this stipulation, but counsel should be careful that court reporters do not simply insert form paragraphs into transcripts unless they are authorized. We further note that opposer’s counsel, when filing the transcript, attached many of the exhibits in random order, e.g., Exhibit 28 was attached between Exhibit 25 and Exhibit 34, and many duplicate exhibits were interspersed within the filings, e.g., Exhibit 24 was filed after Exhibits 27, 30 and 32. Attaching exhibits out of order or as duplicates makes it more difficult for the Board and the public to review the transcript. 3 Issued June 30, 1998; Section 8 & 15 affidavits, respectively, accepted and acknowledged; renewed. Opposition No. 91192340 4 Opposer also previously owned a registration for the word mark CAVEMAN, No. 2170443, for the same goods,4 which inadvertently expired because opposer, when filing the renewal applications for the design mark and the word mark, did not realize that the credit line on its charge card was not sufficient to cover the entirety of both renewal fees. Opposer subsequently filed a new application for the word mark CAVEMAN in standard characters for the clothing items listed above;5 examination of this application has been suspended. In addition, opposer’s witness has testified as to its use of the marks CAVEMAN and the caveman design for clothing, and to its continuing intent to use these marks. In view thereof, opposer has shown it has a real interest in this proceeding, and has demonstrated its standing to pursue this opposition. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Priority Because opposer’s registration for the caveman design mark is of record, priority is not in issue with respect to this mark and the clothing items identified in the registration. King Candy Company v. Eunice King’s Kitchen, 4 Issued June 30, 1998. 5 Serial No. 77807873, filed August 19, 2009. Opposition No. 91192340 5 Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). As for the word mark CAVEMAN, the expired registration for this mark does not provide opposer with any rights. Therefore, opposer must rely on any common law rights it may have. There is no question that opposer began using the mark CAVEMAN in the 1990s, and therefore long prior to the June 5, 2007 filing date of applicant’s application, which, in the absence of any evidence of applicant’s use, is the earliest date on which applicant may rely. However, there have been long gaps during which opposer did not use the mark, and much of opposer’s testimony is an explanation of what activities it was undertaking to show that it had not abandoned its rights in the mark. In view of the presumptions accorded by Section 7(b) of the Act to a valid registration, versus the need for an opposer relying on its common law rights to show the type and extent of its usage, we choose not to burden this opinion with an extensive discussion of opposer’s activities with respect to the CAVEMAN word mark. Instead, we will concentrate our analysis of likelihood of confusion on opposer’s design mark. Likelihood of confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative Opposition No. 91192340 6 facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). There can be no doubt that opposer’s design mark is a pictorial representation of a cave man. Applicant’s word mark is CAVEMAN. As such, applicant’s mark is the literal equivalent of opposer’s mark. “It is established that where a mark comprises a representation of an animal or individual and another mark consists of the name of that animal or individual, such designations are to be regarded as legal equivalents in determining likelihood of confusion under the Trademark Act.” Squirrel Brand Co. v. Green Gables Investment Co., 223 USPQ 154, 155 (TTAB 1984). See Izod Ltd. v. Zip Hosiery Co., Inc., 405 F.2d 575, 160 USPQ 202 (CCPA 1969) (representation of head of tiger-like animal and words “TIGER HEAD” for clothing items); Shunk Manufacturing Co. v. Tarrant Mfg. Co., 137 USPQ 881, F.2d 328 (CCPA 1963) Opposition No. 91192340 7 (caricature representation of Scotsman, i.e., man in kilts and Scottish garb, and word SCOTCHMAN for mechanical equipment); In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (design of lion’s head and word mark LION for shoes). In view of the fact that the marks have the same meaning and convey the same commercial impression, we find that the du Pont factor of the similarity of the marks favors opposer. We also note that there is no evidence that opposer’s mark is other than a strong mark; there is nothing that would indicate that it is other than an arbitrary design for the goods at issue, and there is no evidence of relevant third-party use.6 These points favor opposer. However, we are in no way saying that opposer’s mark is well known. Although opposer submitted evidence of sales and some publicity, most of the publicity, in the form of television and radio appearances and news articles, occurred in 2002 or earlier, and there is no evidence that opposer’s mark has any recognition today. Nor is the evidence of opposer’s sales sufficient to show that the mark is well- known. The sales figures that opposer has supplied are not particularly large, and most of those sales occurred in 2003 6 Opposer’s witness testified that, in 2007, there was some interest in his mark CAVEMAN and products because of the popularity of the GEICO insurance advertising campaign featuring “cavemen,” and because of a television show at that time called “Caveman.” Even if we were to treat this testimony as showing third-party use of the mark CAVEMAN, such use for different Opposition No. 91192340 8 or earlier. While there were also some sales during the summer of 2009, again, the figures are not particularly high, and there were no sales between that time and the time opposer’s witness testified in May 2011. Turning to a consideration of the goods, many of the clothing items listed in opposer’s registration and applicant’s application are the same, e.g., shorts, underwear, jackets and caps/baseball caps. Because these goods are legally identical, this du Pont factor favors a finding of likelihood of confusion insofar as the application in Class 25 is concerned, and we need not consider the remaining goods in that class, since likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any item that comes within the identification of goods in the class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Further, because these goods in Class 25 are legally identical, they must be deemed to be sold in the same channels of trade to the same classes of consumers. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). The du Pont factors of the similarity of the goods and channels of trade favor opposer. With respect to the consumers of the Class 25 goods, as the goods are identified, the purchasers are the public at services does not affect the strength of opposer’s mark for Opposition No. 91192340 9 large, and therefore they cannot be treated as being sophisticated purchasers. In addition, by their very nature, some of the goods, such as the t-shirts and underwear identified in applicant’s application, can be inexpensive items that are purchased on impulse and without great care. The du Pont factor of the conditions of purchase favors opposer. To the extent that any other du Pont factors are relevant, we treat them as neutral. Based on the record and the arguments, we find that opposer has shown that the use of applicant’s mark on its identified clothing items is likely to cause confusion with opposer’s caveman design mark. When it comes to applicant’s “vehicle decals, decorative stickers” in Class 16, however, we reach a different result. Opposer’s witness did not discuss decals or stickers at all, or show how such goods are related to opposer’s clothing. In its brief, opposer has concentrated its arguments on applicant’s clothing. The only comment opposer has made about applicant’s Class 16 goods is that “Although [opposer] never registered its caveman marks for use on stickers and decals, [opposer] has used its caveman marks on stickers and decals.” Brief, p. 29. Opposer cites in support of this statement Exhibit 40 to Mr. Yrshus’s clothing. Opposition No. 91192340 10 testimony deposition. That exhibit, as testified to by Mr. Yrshus, is “photographs of our product line … and they were basically used to be available for any marketing material that we wanted to create in the future.” pp. 99-100. The photographs are of items of clothing such as boxers, t-shirts and caps, bearing the CAVEMAN word mark, draped on rocks and propped on trees or tree branches. There is one photograph that shows several rectangular papers with the words “caveman” and “I’ll Decide.” It is not clear to us that these papers are in fact decals or stickers. Certainly there is no evidence to show that opposer ever sold decals or stickers, let alone that it sold such goods prior to applicant’s filing date. Therefore, we may consider these possible decals/stickers only in terms of whether opposer has shown that its clothing items and applicant’s decals and stickers are related. The mere fact that opposer included these papers in a photograph that might be used in future marketing materials is not a sufficient basis for us to find that decals or stickers are related to clothing. As we said above, it is not clear from the photographs that these papers are in fact stickers or decals, and there is no testimony from opposer’s witness as to what the papers are. Even if the photographs are evidence that opposer was considering expanding its line to stickers or decals, this does not show that these goods Opposition No. 91192340 11 and clothing items are related. Mr. Yrshus’s testimony is replete with ideas about opposer’s expanding its brand to other items. For example, opposer obtained a registration (now cancelled) for CAVEMAN for golf balls because one of the partners was an avid golfer, although the extension of the line to golf balls was never pursued. Opposer filed an application (now abandoned) for CAVEMAN for “vitamin supplement in tablet form for use in making an effervescent beverage when added to water” and for “beer; mineral waters, aerated waters, carbonated waters, flavored water and other non-alcoholic beverages, namely, punches, soft drinks, smoothies and lemonades; sports drinks; energy drinks; isotonic drinks; hypertonic drinks; fruit juices and fruit drinks; vegetable juices and vegetable drinks; syrups, powders, concentrates and effervescent tablet for making non-alcoholic drinks and beverages, namely, non-alcoholic soft drinks, non-alcoholic beer, non-alcoholic punches, non alcoholic cocktail mixes, non alcoholic fruit drinks and non-alcoholic mixed cocktails,”7 because Mr. Yrshus had an opportunity to buy a bottling plant. In addition, opposer filed an application, also now abandoned, for CAVEMAN for “collectable toy figures; electric action toys; mechanical action toys; modeled plastic toy figurines; molded toy figures; plastic character toys; plush toys; positionable 7 Application Serial No. 78620258. Opposition No. 91192340 12 toy figures; rubber character toys; soft sculpture plush toys; stuffed and plush toys; toy action figures; toy figures; toys, namely, children’s dress-up accessories.”8 We acknowledge that applicant has applied to register his mark for both clothing and decals and stickers, but we decline to consider the goods related based only on this, as that would be tantamount to a per se rule that if an application included goods in more than one class we would have to find them related to each other, no matter how different they would appear to be on their face. We have rejected such a concept when third-party registrations for many diverse goods (for example, registrations of house marks) are used in an attempt to prove relatedness of goods. See In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010) (the diversity of the goods identified in this registration diminishes the probative value in establishing that any two items identified in the registration are related). In short, on this record the evidence is not sufficient for us to find that applicant’s Class 16 goods and opposer’s goods are related. We have no evidence, for example, that third parties have adopted a single mark for both clothing and decals/stickers, or that this is a practice in the trade. Opposer has simply failed to prove that applicant’s 8 Application Serial No. 77597824. Opposition No. 91192340 13 vehicle decals and decorative stickers are related to opposer’s identified clothing items, or that consumers are likely to believe that applicant’s vehicle decals and decorative stickers, sold under the mark CAVEMAN, would emanate from the same source as opposer’s clothing sold under the caveman design mark. Decision: The opposition is sustained as to the application in Class 25, but dismissed as to the application in Class 16.