Orange 21 North America Inc., formerly Spy Optic, Inc.v.Beryll Brand Division Est. and Sigmar Berg

Trademark Trial and Appeal Board

Feb 21, 2012

No. 91181440 (T.T.A.B. Feb. 21, 2012)

Mailed: February 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Opposition No. 91181440
Cancellation No. 92051640

Orange 21 North America Inc., formerly Spy Optic, Inc.1

v.

Beryll Brand Division Est. and Sigmar Berg

_____

Stephen Z. Vegh of Stetina Brunda Garred & Brucker for
Orange 21 North America Inc.

A. Raymond Hamrick, III, William G. Kelsberg, and Daniel J.
Quisenberry of Hamrick & Evans, LLP for Beryll Brand
Division Est. and Sigmar Berg.

______

Before Quinn, Bergsman, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

On July 6, 2006, Beryll Brand Division Est.
(“applicant”), by its predecessor-in-interest Sigmar Berg,2
filed an application for the mark depicted below:

1 Change of name from Spy Optic, Inc. to Orange 21 North America
Inc. was recorded at Reel/Frame 4174/0056 on March 25, 2010.
2 Assignment recorded at Reel/Frame 3756/0529 on April 10, 2008.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91181440
Cancellation No. 92051640
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for “jewelry” in International Class 14;
“leather accessories, namely, leather handbags, leather
wallets, leather purses, leather key cases, leather key
chains, leather briefcases, leather cases, leather for
furniture” in International Class 18; and “furniture” in
International Class 20.3 Registration has been opposed by
Orange 21 North America Inc., formerly Spy Optic, Inc.
(“opposer”).
On March 11, 2010, the opposition proceeding was
consolidated with cancellation proceeding No. 92051640,
filed by opposer against applicant’s registrations for the
marks depicted below:
for “spectacle frames; sunglasses, cases
for spectacles and sunglasses; parts and components for
spectacles and sunglasses, namely--chains for spectacles and
side guards for eyeglasses” in International Class 9;
“cloths for cleaning spectacles” in International Class 21;

3 Trademark application Serial No. 79033048, with an effective
filing date of July 6, 2006, on the basis of a request for
extension of protection from International Registration No.
0908896, issued July 6, 2006.
Opposition No. 91181440
Cancellation No. 92051640
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and “clothing, namely, shirts, pants, underwear, dresses,
skirts, pullovers, jackets, overcoats, caps, stockings, and
socks” in International Class 25;4 and
for “cases for spectacles and
sunglasses; chains for spectacles and for sunglasses; frames
for spectacles and sunglasses; spectacle frames made of
metal and of synthetic material; spectacle frames made of
metal or of a combination of metal and plastic; spectacles
and sunglasses” in International Class 9; “jewelry” in
International Class 14; “leather bags, suitcases and
wallets; leather briefcases; leather for furniture; leather
key chains; leather purses” in International Class 18; and
“leather belts; shirts; caps; shoes; dresses; jackets;
overcoats; pants; pullovers; skirts; socks; stockings; tops”
in International Class 25; based on use in commerce as of
January 1, 2002 (Classes 9, 14, and 25) and September 1,
2008 (Class 18).5
Opposer opposes the registration of applicant’s
mark (for jewelry, leather accessories and furniture), and
seeks cancellation of applicant’s registered marks (for

4 Reg. No. 3359880; issued December 25, 2007. The registration
issued under 15 U.S.C. § 1141(f) based on International Reg. No.
0856075, issued April 8, 2005.
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Cancellation No. 92051640
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sunglasses, cloths and clothing) and (for sunglasses,
jewelry, leather items and clothing), on the grounds of
priority of use and likelihood of confusion under Section
2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d).
Opposer claims ownership of the following registrations and
alleges that applicant’s marks so resemble opposer’s
registered marks as to be likely to cause confusion, mistake
or deception among purchasers:
a. Reg. No. 2092022 for PLUS SYSTEM for “sunglasses”
in International Class 9 and “sports goggles for
motorcycling, biking and skiing” in International
Class 28;6

b. Reg. No. 2157268 for for “sunglasses;”7
c. Reg. No. 3432701 for for “protective eyewear
lenses, namely, lenses for sunglasses and
goggles”;8 and

d. Reg. No. 3436802 for for “sunglasses.”9

In its amended petition to cancel, opposer also alleges
that applicant’s registered marks have not been used on

5 Reg. No. 3684006; issued September 15, 2009.
6 Issued August 26, 1997; renewed.
7 Issued May 12, 1998; renewed.
8 Issued May 20, 2008.
9 Issued May 27, 2008. Opposer’s motion (filed August 20, 2010)
for leave to file an amended notice of opposition and amended
petition to cancel to claim ownership of this registration is
granted as conceded. Trademark Rule 2.127(a). Although
applicant did not file an answer to either amended pleading in
its initial answer, applicant admitted therein that opposer
“obtained” the three other pleaded registrations. Accordingly,
we have treated applicant’s answers as amended to include a
response admitting that opposer obtained Reg. No. 3436802.
Opposition No. 91181440
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“sunglass and eyeglass goods”;10 that applicant’s use of its
marks “constitutes misrepresentation of source of the
products in connection therewith, and falsely suggests an
association between the products of [opposer and
applicant]”;11 and that applicant committed fraud on the
Office in connection with the application for registration
of the mark, Reg. No. 3359880, by making a false
declaration in the application that no other entity has the
right to use the mark in commerce.12
Applicant filed answers denying the salient allegations
of the notice of opposition and petition to cancel, and
pleaded affirmative defenses. Because the defenses were not
pursued at trial, they are considered waived and given no
further consideration. The issues before us are whether
applicant’s marks so resemble opposer’s marks as to be
likely to cause confusion, whether applicant’s registered
marks have ever been used on “sunglass and eyeglass goods”
and whether registration of the mark was procured by
fraud.
The Record

10 Amended Petition for Cancellation, para. 19.
11 Id., para. 9.
12 Opposer also alleged that applicant’s use of its marks will
dilute the strength of opposer’s marks, but the alleged dilution
claim is insufficient as a matter of law in both the notice of
opposition and the petition to cancel. Further, opposer did not
pursue the dilution claim or the claim of misrepresentation and
Opposition No. 91181440
Cancellation No. 92051640
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By rule, the record includes applicant’s application
and registration files and the pleadings. Trademark Rule
2.122(b), 37 CFR §2.122(b).
In addition, both parties have filed evidence under
notices of reliance and testimony in this proceeding.
Opposer’s Record
Opposer filed a notice of reliance to introduce the
following evidence into the record during its testimony
period:
1. Certified copies showing the current status and
title of its U.S. trademark registrations:

a. Reg. No. 2092022 for the mark PLUS SYSTEM for
“sunglasses” in International Class 9 and
“sports goggles for motorcycling, biking and
skiing” in International Class 28.13

b. Reg. No. 2157268 for the mark for
“sunglasses.”14
c. Reg. No. 3432701 for the mark for
“protective eyewear lenses, namely, lenses for
sunglasses and goggles.”15
d. Reg. No. 3436802 for the mark for
“sunglasses.”16

false suggestion at trial, or argue the claims in its brief.
Therefore, we consider these claims to have been waived.
13 Issued August 26, 1997; renewed.
14 Issued May 12, 1998; renewed.
15 Issued May 20, 2008.
16 Issued May 27, 2008.
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Cancellation No. 92051640
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2. The discovery deposition17 of Matt Harkins,
opposer’s vice-president of Brand Management,
taken on July 23, 2010, and attached Exhibits 1-6;

3. The discovery deposition of Francis Richards,
opposer’s vice-president of Business Development
and head of the Music Division, taken on July 26,
2010, and attached Exhibits 1-6, 10-16, 18, 19,
22-26;

4. The discovery deposition of Sigmar Berg, taken on
July 28, 2010, and attached Exhibits 1-15;

5. Applicant’s responses to opposer’s Interrogatory
Nos. 3, 7, 8 and 10 and amended responses to
Interrogatory Nos. 1 and 4; and

6. Applicant’s amended response to opposer’s request
for production of documents No. 16.

Opposer also filed a copy of the testimonial deposition
of Francis Richards, taken on September 24, 2010, with
accompanying exhibits Nos. 1-26.
Applicant’s Record
Applicant filed a notice of reliance to introduce the
following evidence into the record during its testimony
period:
1. Copies of applicant’s registrations and
application;18

17 Under Trademark Rule 2.120(j)(1), a party may not offer the
discovery deposition of its own witness as trial testimony,
except in certain situations. However, Trademark Rule
2.120(j)(2) allows such deposition to be used by stipulation of
the parties. Here, applicant acknowledged in its notice of
reliance that opposer “makes [the Harkins and Richards discovery
depositions] part of the record” and indicates that applicant
would file any relevant missing parts. We consider applicant’s
response to be a stipulation to the admission of the discovery
depositions. The complete transcripts of both discovery
depositions of Messrs. Harkins and Richards have been made of
record herein. See TBMP 704.09 (3d ed. 2011).
Opposition No. 91181440
Cancellation No. 92051640
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2. A statement of reliance on the discovery
depositions of Matt Harkins and Francis Richards,
previously submitted by opposer;

3. Opposer’s supplemental responses to applicant’s
Interrogatory Nos. 3, 10, 11, 13, 17, and 18;

4. Opposer’s supplemental responses to applicant’s
requests for production of documents Nos. 9, 13,
18, 22, 23, and 24;

5. Copy of a transmittal letter and attached response
to Office action, dated January 2, 1997, from the
USPTO records in Reg. No. 0709326;

6. Printout from USPTO database of Reg. No. 0709326;

7. Wikipedia entry/article found at
http://en.wikipedia.org/wiki/cross; and

8. Copy of entry/article found at
www.logodesignlove.com/cross-logos.

Applicant also filed copies of the testimonial
depositions of Sigmar Berg, taken on November 16, 2010, with
accompanying exhibits; and of Robert Huei Chang, president
of Frontier Fashion, Inc., with accompanying exhibits.
Applicant further seeks to rely on “any and all
‘specimens’ of use and/or statements of use filed by
[opposer] pertaining to the trademarks” at issue herein.19
Applicant introduced, through Mr. Berg’s testimony, a copy
of a Combined Declaration of Use and Incontestability in
Reg. No. 2157268, filed by opposer in that registration,20

18 A defendant’s involved applications and/or registrations are
automatically of record pursuant to Trademark Rule 2.122(b) and
need not be re-introduced by the defendant.
19 Notice of reliance, p. 4.
20 Berg Dep., p. 48, Ex. 110.
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Cancellation No. 92051640
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and a Statement of Use in Reg. No. 2157268, filed by opposer
in that registration.21 No other specimens or statements of
use were introduced in evidence as exhibits during
applicant’s trial period, and to the extent they exist, they
are not considered as evidence in this proceeding.
Evidentiary Objections
Opposer moves to strike certain testimony and evidence
adduced by applicant in this case. Specifically, opposer
seeks to have the Board strike:
1. The testimony of Sigmar Berg, starting on page 68:4
and concluding at 85:22, together with Exhibit Nos.
118-126, that relate to third-party uses of “cross”
marks.22

2. Mr. Berg’s testimony starting at page 74:10 and
concluding at 76:17, which concerns a telephone
conversation Mr. Berg had with a receptionist at
Frontier Fashions.

3. Mr. Berg’s discovery deposition testimony starting
at page 269:1 and concluding at 274:6, concerning
applicant’s approximate sales revenue over the past
year of sunglasses sold in the United States under
applicant’s marks.

4. A Wikipedia entry concerning the historical uses of
“crosses,” identified as Exhibit 5 to applicant’s
notice of reliance and as Exhibit 112 to Mr. Berg’s
testimony deposition (including opposer’s objection
to Exhibit 133 to Mr. Berg’s testimony deposition,
which is an earlier version of the Wikipedia entry).
Opposer seeks to have the Board also strike “all

21 Id., p. 49, Ex. 111.
22 Opposer identifies page 64:19 of Mr. Berg’s deposition as the
starting location of opposer’s running objection to Exhibit Nos.
118-126. However, Exhibit No. 117, to which no objection was
made, is introduced at page 64:19 of Mr. Berg’s deposition.
Exhibit No. 118 is introduced at page 68:4. Therefore, we have
construed the objection to commence with Mr. Berg’s testimony at
page 68:4.
Opposition No. 91181440
Cancellation No. 92051640
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testimonial evidence offered by Mr. Berg or others
regarding this Wikipedia entry.” Opposer’s Brief,
p. 40 n.70. Opposer has not identified the pages at
which such testimony is alleged to appear.

5. The website printout identified as Exhibit 6 to
Applicant’s notice of reliance (also identified as
Exhibit 16 to Mr. Berg’s discovery deposition),
showing uses of a “cross” design in different
commercial settings (the “Logo Design Love”
document).

6. A copy of an Office action initially refusing
opposer’s application for registration of its mark,
as well as opposer’s response to the Office action.

7. The entire testimonial deposition of Robert Huei
Chang, President of Frontier Fashions.

We now address in turn opposer’s objections to the
above-enumerated evidence and testimony.
1. Third-Party Uses of “Cross” Marks on Sunglasses
Opposer has objected to applicant’s introduction of
Exhibits 118-126, identified during Mr. Berg’s testimonial
deposition, as well as Mr. Berg’s testimony regarding the
exhibits. The documents applicant seeks to introduce are
printouts from third-party Internet websites advertising
sunglasses and cases bearing “cross” symbols. Mr. Berg
searched the Internet and located these documents on
November 12, 2010, and his deposition was held on November
16, 2010. The documents were made available to opposer at
Mr. Berg’s deposition, and opposer conducted cross-
examination of Mr. Berg regarding the materials. Although
only Exhibits 118, 119, 121 and 122 include the website
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Cancellation No. 92051640
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address, and the date/time the documents were printed, Mr.
Berg testified that he printed out Exhibits 118-126 himself
after he searched for entries using the criteria:
“sunglasses with cross logos.”23
Opposer claims that because these exhibits were not
produced until trial, despite opposer’s having properly
requested them during discovery, the Board should strike
them.24 Applicant counters that Mr. Berg did not print out
the documents comprising Exhibits 118-126 until shortly
before his deposition, and thus they did not exist when
applicant responded to opposer’s discovery requests.
“The duty to supplement disclosures and discovery
responses in proceedings before the Board is governed by
Fed. R. Civ. P. 26(e)(1) and (2).” TBMP § 408.03. Under
that rule, a party that has responded to a request for
discovery is under a continuing duty to supplement the

23 Berg Dep., p. 68:9.
24 In its First Request for Production of Documents, opposer
sought “(1) any searches or investigations conducted by or for
[applicant] in connection with [applicant’s] marks, (2) documents
‘referring to [opposer or opposer’s] business’, and (3) documents
‘on which [applicant] will rely’” at trial. Opposer’s Brief, p.
37. Opposer designates Request Nos. 2, 14 and 21 as those which
request materials relating to these three topics. Exhibit No. 15
to Mr. Berg’s discovery deposition comprises applicant’s amended
responses to opposer’s document production requests Nos. 2 and
14. Exhibit No. 15 contains no reference to a Request No. 21;
the signature page shows the last request is numbered “20.”
Exhibit No. 3 to opposer’s notice of reliance is a copy of
applicant’s response to document production Request No. 16.
Exhibit 16 contains the signature page that also ends at “20.”
There is, therefore, no record of a document production request
No. 21, and we have not relied on any such request in making our
determination of admissibility of the evidence.
Opposition No. 91181440
Cancellation No. 92051640
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response in a timely manner. See Panda Travel, Inc. v.
Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1791 (TTAB
2009)(“Each party has a duty to make a good faith effort to
satisfy the reasonable and appropriate discovery needs of
its adversary”; documents not produced until after the start
of trial stricken).
Applicant’s failure to provide opposer with copies of
the printouts until Mr. Berg’s deposition did not unduly
prejudice opposer’s ability to present its case. See
Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB
1998)(although opposer only knew that applicant’s expert
witness was going to testify the day before the deposition
was taken, despite an outstanding interrogatory request for
such information, witness’s testimony was admissible).
Additionally, the information presented in the third-party
web pages is publically available information and not
information that only applicant knew of prior to its
disclosure. Cf. JSB International, Inc. v. Auto Sound
North, Inc., 215 USPQ 60, 62 (TTAB 1982)(respondent’s
failure to amend response to interrogatory until after close
of petitioner’s trial period “materially prejudiced
petitioner in its ability to undertake further discovery,
initiate testimony, and otherwise defend itself against
registrant’s new claims of earlier use, the facts of which
Opposition No. 91181440
Cancellation No. 92051640
13
were peculiarly rooted in registrant’s affairs, records and
history”).
Accordingly, Exhibits 118-126 have been considered for
whatever probative value they may have.25
In its reply brief, opposer raises a related argument
that the Board should disregard applicant’s request that the
Board take judicial notice that numerous third-party
registrations for “cross” design marks are “listed in the
USPTO data base as of April 7, 2011.”26 Opposer argues that
the references to the numbers of such registrations in the
Office are not proper evidence because applicant did not
introduce the registrations themselves under a notice of
reliance during its testimony period. Opposer is correct in
this regard, and we have not given any consideration to
applicant’s statements regarding the number of “cross”
design registrations that exist in the Office. The Board
does not take judicial notice of registrations that reside
in the USPTO. In re Jonathan Drew, Inc. d/b/a Drew Estate,
97 USPQ2d 1640, 1646 n.11 (TTAB 2011).
2. Mr. Berg’s Testimony Regarding Telephone Conference
Mr. Berg testified that Frontier Fashion sells a line
of sunglasses, such goods being shown in Exhibit No. 123

25 Opposer’s assertion that applicant should be estopped from
relying on the exhibits and pertinent testimony, referencing TBMP
§ 527.01(e), is misplaced. Applicant did not fail to respond to
opposer’s document production request Nos. 2 and 14. See fn. 24.
Opposition No. 91181440
Cancellation No. 92051640
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(the “home page from Frontier Fashion showing a line of
sunglasses … with their plus or cross logo on the
inside”27). Mr. Berg testified: “I called the number on
this printout [Exhibit 123] that I had and I asked her if
she -- if this model’s for sale and she said, Yes.”28 The
testimony establishes only that Mr. Berg engaged in a phone
conference; it does not establish that the goods about which
he inquired are available. The receptionist’s out-of-court
statement constitutes hearsay, being offered to establish
the truth of the matter asserted, i.e., that the glasses are
for sale. Accordingly, we sustain opposer’s objection to
Mr. Berg’s testimony regarding his telephone conference with
the receptionist from Frontier Fashion.
3. Sales and Revenue-Related Documents
Opposer contends that it requested production of
documents depicting applicant’s annual sales since January
1, 2000 for goods or services offered or sold under
applicant’s marks; that applicant refused, responding:
“Applicant will not produce any documents reflecting its
annual sales or income, but is producing herewith documents
evidencing its sales of goods and the price at which such

26 Applicant’s Brief, p. 26.
27 Id., p. 74.
28 Id., p. 121, see also pp. 74-5.
Opposition No. 91181440
Cancellation No. 92051640
15
goods are sold.”29 During his discovery deposition, Mr.
Berg testified as to applicant’s sales revenue, which
testimony, opposer contends, should be stricken because of
applicant’s refusal to respond to the production request.
Opposer further contends that applicant should not be
allowed to present any evidence of sales of its sunglasses
under the marks during its trial period.
At his discovery deposition, Mr. Berg testified that
applicant does not have any documents reflecting the amount
of revenue that applicant has received from the sale of its
sunglasses and other eyewear bearing applicant’s marks.30
His testimony is that the sales information is not broken
down but exists only as “general sales information,” and
that applicant can segregate sales from sunglasses and other
eyewear for only the year preceding his deposition (i.e.,
for 2009).31 Mr. Berg provided testimony regarding
applicant’s sales for 2009. Thus, the best evidence
regarding applicant’s sales for 2009 (we have no figures for
other years) is Mr. Berg’s testimony, which we have
considered for whatever probative value it may have.
4. Wikipedia Entry Concerning Historical Uses of “Crosses”

29 The record does not clarify which documents, if any, were
produced in response to this request.
30 Berg Discovery Dep., p. 269.
31 Id., p. 270.
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Applicant introduced copies of two related excerpts
from Wikipedia32 that depict and discuss generally the use
of crosses “as ‘emblems and symbols’ in different societies
throughout history.”33 Opposer contends that the Wikipedia
entries are irrelevant and that their consideration “would
be a colossal waste of time and result in an undue delay” of
proceedings, citing Fed. R. Evid. 403.34 Applicant refutes
this assertion, contending that the evidence goes to the
issue of whether the cross is a common geometric shape, the
strength of opposer’s marks, and “the likely ability of the
consumers to distinguish differences in chosen trademarks
that include some derivation of a cross.”35 While the
probative value of the Wikipedia entries are limited, the
Board has considered them inasmuch as both Exhibits 112 and
133 bear the web address at which they were printed and
their dates confirmed; Exhibit 112 is dated, and applicant’s
counsel indicated during Mr. Berg’s testimony deposition
that he printed out Exhibit 133 about a year earlier.36
With respect to documents obtained from the Internet, “if a
document obtained from the Internet identifies its date of
publication or date that it was accessed and printed, and
its source (e.g., the URL), it may be admitted into evidence

32 Exhibit 133 is an earlier version of Exhibit 112.
33 Opposer’s Brief, p. 40.
34 Id., p. 42.
35 Applicant’s Brief, p. 35.
36 Berg Dep., p. 53.
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pursuant to a notice of reliance in the same manner as a
printed publication in general circulation in accordance
with Trademark Rule 2.122(e).” Safer, Inc. v. OMS
Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
Moreover, opposer had the opportunity to rebut the evidence
and call its veracity into question during its rebuttal
period. In re IP Carrier Consulting Group, 84 USPQ2d 1028,
1033-34 (TTAB 2007)(The Board “will consider evidence taken
from Wikipedia so long as the non-offering party has an
opportunity to rebut that evidence….”).
5. Third-Party Crosses in “Logo Design Love” Document
As further evidence that the “cross” symbol is a common
geometric design, applicant introduced a copy of pages from
the website “www.logodesignlove.com,” self-proclaimed as
being “for logo designers and all who love logos.”37 On the
first page of the printout appears the wording: “…here I
share a few logos with crosses.” Opposer objects to the
introduction of this document on the grounds of relevance,
hearsay, and lack of authentication under Fed. R. Evid. 902.
For the reasons discussed in connection with the
Wikipedia evidence discussed supra, we find the “Logo Design
Love” document to be relevant to the issue of the strength
of opposer’s marks and the alleged common nature of the

37 Notice of reliance, Exhibit 6; also Exhibit 16 to Berg
Discovery Dep.
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“cross” symbol. As for the objections based on hearsay and
lack of authentication, most of the pages in the “Logo
Design Love” document identify the URL. The date, May 7,
2009, appears on the first page of the document, but not in
such a way as to clearly identify May 7, 2009 as the date
the document was published or accessed and printed.
However, Mr. Berg did confirm that someone from his office
compiled these documents(“with me or alone”38) after
receiving a “July 2007 letter from opposer’s attorney.”39
A document downloaded from the Internet, by its nature
as an electronic record, is subject to change at any time.
Without the print or publication date clearly identified,
the nonoffering party has no means to verify the accuracy of
the data and rebut any information contained therein that
may have changed since the print date. As it is unclear
from the face of the “Logo Design Love” document when it was
printed, the better practice would have been to have Mr.
Berg clearly identify when the document was accessed and
printed. However, his confirmation that either he or
someone from his office printed the documents sometime after
July 2007 sufficiently authenticates the “Logo Design Love”
document, given that this testimony was provided during Mr.
Berg’s discovery deposition, and opposer could have verified

38 Berg Discovery Dep., p. 283.
39 Id., p. 285.
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the accuracy of the document by accessing it via the URL
after the deposition, noting any changes, and submitting
testimony indicating any discrepancies during opposer’s
trial period. Cf. Calypso Technology, Inc. v. Calypso
Capital Management, LP, 100 USPQ2d 1213, 1218-19 (TTAB
2011)(statement made in party’s notice of reliance as to
date webpages were published insufficient to establish date
under Safer).
It is also unclear whether those pages of Exhibit 6,
marked “BE00169-BE00175,” were accessed or printed at the
same time as the rest of the Exhibit. Those pages bear no
date or web address and, unlike the other pages of the “Logo
Design Love” document, appear to be copies of actual
products with cross logos on them, rather than mere
depictions of cross images per se (with the exception of
BE00175, which also appears to depict images of crosses by
themselves, and not in connection with any goods). With
respect to these pages, however, Mr. Berg testified that he
“looked up different eyewear companies using a cross on the
outside of eyewear”40 and that someone from his office
accessed the pages. Opposer was afforded an opportunity to
ask Mr. Berg specifically where the pages came from, and to
then independently verify their accuracy, if desired.
Moreover, Mr. Berg discussed the designs on the crosses.
Opposition No. 91181440
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For these reasons, we have considered Mr. Berg’s testimony
comparing the designs to those of opposer, and considered
the pages showing cross designs on goods, limited to what
they show on their face. Because Mr. Berg did not testify
to the actual use of any of the cross designs shown on these
pages, with the exception of Chrome Hearts, a third-party
sunglasses retailer, we have not considered the documents
for the truth of any matters stated therein, such as proving
that any of the depicted goods have been, or are being,
offered for sale or distribution. See Top Tobacco, L.P. v.
North Atlantic Operating Co., Inc. 101 USPQ2d 1163, 1168
(TTAB 2011); and Mag Instrument, Inc. v. The Brinkmann
Corporation, 96 USPQ2d 1701, 1708 (TTAB 2010)(probative
value of advertisements “strictly confined to showing that
the public may have been exposed to those internet websites
and therefore may be aware of the information or
advertisements contained therein.”).
6. Prosecution Materials from Ser. No. 75042325
Applicant has introduced into evidence a copy of an
Office action initially refusing opposer’s application for
the mark , as well as opposer’s Response to the Office
action refusal. Refusal was based on alleged likelihood of
confusion with trademark registration No. 0709326, which was

40 Id., p. 281.
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Cancellation No. 92051640
21
canceled under Section 8 of the Trademark Act, 15 U.S.C. §
1058 during the prosecution of opposer’s application.
Opposer contends that the canceled registration and opposer’s
statements made in the Response to the Office action in that
proceeding are irrelevant and have no bearing on the present
matter. Opposer’s statements may, however, be used as
evidence to “illumin[ate] the shade and tone in the total
picture confronting the decision maker.” Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ
151, 154 (CCPA 1978); see also, Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1283 (Fed. Cir. 1984) (applicant’s earlier contrary position
taken before the examining attorney as to the meaning of its
mark may be relevant); cf. TBMP 704.04 (3rd ed. 2011)(the
allegations and statements made and documents and things
filed in an application or registration may be used as
evidence against the applicant or registrant, that is, as
admissions against interest and the like). Opposer’s opinion
regarding the likelihood of confusion between its mark and
the cited mark may be considered relevant and competent to
the issue of likelihood of confusion between the marks in the
present proceedings. Under no circumstances, however, will
opposer’s opinion, earlier or current, relieve the Board “of
the burden of reaching [its] own ultimate conclusion on the
entire record.” Interstate Brands, 198 USPQ at 154.
Opposition No. 91181440
Cancellation No. 92051640
22
Accordingly, while opposer’s earlier opinion is an admission
against interest, it is not dispositive and we have
considered it in the context of the entire record on the
issue of likelihood of confusion.
7. Testimony of Frontier Fashion’s President
Opposer seeks to exclude the entire testimonial
deposition of Frontier Fashion’s President, Mr. Robert Huei
Chang, on grounds of bias. Mr. Chang testified to, inter
alia, Frontier Fashion’s use of the registered mark on a
line of sunglasses.41 Opposer’s objection to the testimony
stems from the fact that opposer has filed a petition to
cancel this registration. Opposer alleges that at the time
of Mr. Chang’s deposition, “Spy had exchanged numerous
communications with Frontier Fashions’ trademark counsel” and
that opposer “intended to cancel Frontier Fashions’
registration should a suitable resolution not be reached….”42
During his deposition, Mr. Chang was asked whether he
believed “that the outcome of this litigation could,
depending on how it is ruled upon, impact your case as
between opposer and Frontier Fashion?”43 Mr. Chang responded
“I don’t think so.”44 When asked directly whether he favored
applicant in the present dispute, Mr. Chang answered, “It’s

41 Reg. No. 3687866; Chang Dep., p. 73, Exhibit 117 to Berg Dep.
42 Opposer’s Brief, p. 47.
43 Chang Dep., p. 81.
44 Ibid.
Opposition No. 91181440
Cancellation No. 92051640
23
not my desire.”45 Counsel examined Mr. Chang further on this
point:
Q: Well, let me ask it this way. Is it your
understanding that if Berg and Beryll prevail in the Spy
action filed against them, that that will in some way assist
or help Frontier’s defense of the case filed by Spy against
Frontier?
…
A: No.
Q: Okay. Why not?
…
A: Like I said, it’s like a dispute between you and
Beryll and the -- and then your company against my company.
Yeah.
Q: Okay.
A: Not like one. We are not like one case together.
It’s two different cases.46

Mr. Chang further testified that prior to his
deposition, he had never seen the mark and had never
heard of applicant,47 although he had heard of opposer.48
Further, it is not evident from other testimony of Mr. Chang
that Mr. Chang is prejudiced against opposer.
It is “not our practice to strike testimony depositions
which were regularly taken.” Marshall Field & Co. v. Mrs.
Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB 1992). Opposer’s
objections go to the probative weight to be afforded the
testimony, and they have been duly considered in our weighing
of the evidence.

45 Chang Dep., p. 76.
46 Id., pp. 77-78.
47 Id., pp. 16 and 115.
48 Id., p. 115.
Opposition No. 91181440
Cancellation No. 92051640
24
We now consider the merits of opposer’s claims against
applicant’s registration of its marks and .
Standing
Standing is a threshold issue that must be proven in
every inter partes case. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). Because opposer has properly made its pleaded
registrations of record, showing itself as owner (following
its name change to Orange 21 North America Inc.) of the
registrations and that they are subsisting, opposer has
established its standing. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
Fraud
Opposer claims that applicant committed fraud in filing
its underlying application for Reg. No. 3684006 for the mark
. Specifically, opposer alleges that it filed a
notice of opposition against applicant’s application (Ser.
No. 79033048) for the mark on or about December 19,
2007, before applicant applied for registration of the mark
, and that therefore, applicant “knew, or should have
known” that opposer’s rights were superior to applicant’s.49

49 Opposer’s amended petition to cancel, p. 5.
Opposition No. 91181440
Cancellation No. 92051640
25
By signing the declaration in the application on May 8,
2008, claiming that “no other person, corporation, or
association has the right to use the mark in commerce,”
opposer alleges applicant committed fraud.
The Federal Circuit has made clear that fraud must be
proven to the hilt and that the “should have known” standard
for attributing knowledge is not the proper one. In re Bose
Corp., 91 USPQ2d 1938, 1939-40 (Fed. Cir. 2009); see also
Qualcomm Incorporated v. FLO Corporation, 93 USPQ2d 1768,
1770 (TTAB 2010); Intellimedia Sports Inc. v. Intellimedia
Corp., 43 USPQ2d 1203, 1205 (TTAB 1997). Because intent is
a required element to be pleaded for a claim of fraud,
allegations that a party made material representations of
fact that it “knew or should have known” were false or
misleading are insufficient. Opposer’s claim that applicant
committed fraud because it knew or should have known that
opposer’s alleged rights were superior, is accordingly
denied.
Opposer also alleges, in its amended petition for
cancellation, that applicant “has failed to use the and
[marks] on sunglass and eyeglass goods in the United
States contrary to the requirements of the United States
trademark law in maintaining the registration of these
Opposition No. 91181440
Cancellation No. 92051640
26
marks.”50 With respect to the mark, Reg. No. 3359880,
this mark was registered under Trademark Act § 66(a), 15
U.S.C. § 1141(f), and applicant is entitled to the
constructive use date of its filing (April 8, 2005, based on
priority from International Reg. No. 0856075), 15 U.S.C. §
1141(f)(b). Although Mr. Berg testified that the mark has
been used on sunglasses, sunglass cases, sunglass cloths,
jewelry, t-shirts, belts, and bags,51 an affidavit of use is
not required to support that registration until December 25,
2012 (the end of the 1-year period immediately preceding the
expiration of 6 years following December 25, 2007, the date
of issuance of the certificate of extension of protection).
15 U.S.C. § 1141k(a)(1). Moreover, opposer did not plead
abandonment in this case. See Trademark Act § 45, 15 U.S.C.
§ 1127 (“Nonuse for 3 consecutive years shall be prima facie
evidence of abandonment.”).
With respect to the mark , Reg. No. 3684006,
opposer argues that applicant knew or should have known that
the mark was not being used in connection with some of the
goods, namely, cases for spectacles and sunglasses; chains
for spectacles and for sunglasses; frames for spectacles,
spectacles, caps; shoes; dresses; jackets; overcoats; pants;
pullovers; skirts; socks; stockings; and tops. We have

50 Opposer’s Brief, p. 6.
Opposition No. 91181440
Cancellation No. 92051640
27
already explained that it is not enough for fraud to show
that a party “knew or should have known” its mark was not in
use; actual knowledge and an intent to deceive must be
shown. Moreover, in his discovery deposition, Mr. Berg
stated dates of first use consistent with the dates shown in
the application for registration of the mark, and explained,
perhaps somewhat ambiguously, the reason there is a
discrepancy regarding some of the dates provided in
applicant’s responses to opposer’s interrogatories.52 We
accept Mr. Berg’s explanation. Moreover, while Mr. Berg
indicated that applicant no longer produces chains for
spectacles or sunglasses53 or cloths for cleaning,54 Mr. Berg
confirmed that applicant had produced “eyewear chains” in
200255 and currently sells sunglasses together with a “case
and a cleaning cloth with the same logo on it.”56 Mr. Berg
further testified that applicant first sold jewelry in
2002,57 presently sells jewelry,58 and presently sells t-
shirts.59 No specific testimony was taken regarding the
other goods, and opposer did not inquire into Mr. Berg’s
state of mind or intent to deceive, or whether Mr. Berg was

51 Berg Discovery Dep., p. 31.
52 Id., pp. 54-55.
53 Id., p. 63.
54 Id., p. 70.
55 Id., p. 40.
56 Berg Dep., p. 21.
57 Id., pp. 40-41.
58 Id., p. 29.
59 Id., p. 12.
Opposition No. 91181440
Cancellation No. 92051640
28
aware if any of the statements he made in the applications
for registration of applicant’s marks were false.
Opposer did not seek to amend its notice of opposition
or petition to cancel following the deposition to allege
further facts upon which fraud could be based. We find that
opposer has not shown that the dates set forth in the
application for the registration are false, or that
applicant intended to deceive the Office by misrepresenting
the dates of first use. Accordingly, the fraud claim on the
basis that applicant knowingly misrepresented that it was
using its marks, with an intent to deceive the Office, is
dismissed.
We now turn to the issue of likelihood of confusion.
Priority
Although the cases are consolidated, we examine each
separately for priority purposes.
Opposition No. 91181440
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in the opposition, as
to the marks and the goods covered by the registrations.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
Cancellation No. 92051640
Because both opposer and applicant own registrations,
opposer must prove priority of use in order to prevail in
Opposition No. 91181440
Cancellation No. 92051640
29
the cancellation. M.C.I. Foods, Inc. v. Brady Bunte Brady
Bunte v. M.C.I. Foods, Inc., 96 USPQ2d 1544, 1550 (TTAB
2010)(where both parties own registrations, priority is
always an issue because both parties are entitled to the
presumptions accorded a registration under Section 7(c) of
the Trademark Act of 1946, 15 U.S.C. §1057(c)). Because
opposer has pleaded multiple registrations, we examine its
claim of priority with respect to each individual mark.
A. Opposer has priority vis-à-vis its mark PLUS SYSTEM
and its mark .

In proving priority of use, the parties may rely, as
evidence of use of their marks, upon the filing dates of the
applications for the subsequently issued registrations.
Id., see also, Brewski Beer Co. v. Brewski Brothers Inc., 47
USPQ2d 1281, 1284 (TTAB 1998)(“of course, [either party] may
rely on its registration for the limited purpose of proving
that its mark was in use as of the application filing
date.”).
In this regard, applicant may rely upon the filing date
of April 8, 2005 of its registration for the mark . The
testimony of applicant’s witness, Mr. Berg, establishes
“2002” as the earliest date of first use of applicant’s
mark (such use being on sunglasses).60 Opposer may

60 Berg Dep., p. 14.
Opposition No. 91181440
Cancellation No. 92051640
30
rely on the filing dates of December 1, 1995 as the date of
first use of its mark PLUS SYSTEM, and January 11, 1996 as
the date of first use of its mark.
Thus, opposer has priority of use in the cancellation
vis-à-vis its mark PLUS SYSTEM and the mark .
B. Opposer does not have priority vis-à-vis its marks
and .

The filing dates of opposer’s marks and , October
31, 2006 and April 18, 2005 respectively, post-date the April
8, 2005 filing date of applicant’s mark , as well as the
2002 date of applicant’s first use of the mark .
Opposer has not shown an earlier date of use for either of
these two marks. Accordingly, opposer’s petition for
cancellation based on these two registrations must fail for
lack of priority. No further consideration has been given to
either mark for purposes of deciding likelihood of confusion.
Family of Marks
As a threshold matter, we note that opposer has argued
in its brief that its marks comprise a family of marks, and
that applicant’s mark would be viewed as a “member of
[opposer’s] marks family.”61 Applicant has responded, in
its brief, that the evidence does not support opposer’s
Opposition No. 91181440
Cancellation No. 92051640
31
assertion of a family of “cross design” marks.62 We agree.
There is no “recognizable common characteristic” among the
marks PLUS SYSTEM , , and . See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889,
1891 (Fed. Cir. 1991). Moreover, the evidence does not show
that opposer promotes its marks as a family or that the
public perceives the marks as a family. “Simply using a
series of similar marks does not of itself establish the
existence of a family.” Id.. The requisite showing of a
family of marks has not been made.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, Palm
Bay Imp., 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, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

61 Opposer’s Brief, p. 31.
Opposition No. 91181440
Cancellation No. 92051640
32
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”).
A. The strength of opposer’s marks.

Opposer argues that “there is ample evidence supporting
a finding that [opposer’s] marks are famous.”63 Fame, if it
exists, plays a dominant role in the likelihood of confusion
analysis because famous marks enjoy a broad scope of
protection or exclusivity of use. A famous mark has
extensive public recognition and renown. Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002). Fame may be measured indirectly by the
volume of sales and advertising expenditures of the goods
and services identified by the marks at issue, “by the
length of time those indicia of commercial awareness have
been evident,” widespread critical assessments and through
notice by independent sources of the products identified by
the marks, as well as the general reputation of the products
and services. Bose Corp., 63 USPQ2d at 1305-1306 and 1309.
Although raw numbers of product sales and advertising
expenses may have sufficed in the past to prove fame of a
mark, raw numbers alone may be misleading. Some context in

62 Applicant’s Brief, p. 27.
63 Opposer’s Brief, p. 28.
Opposition No. 91181440
Cancellation No. 92051640
33
which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for
comparable types of products or services). Bose Corp., 63
USPQ2d at 1309. Finally, because of the extreme deference
that we accord a famous mark in terms of the wide latitude
of legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, it is the
duty of the party asserting that its mark is famous to
clearly prove it. Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Opposer has been using the PLUS SYSTEM mark since 1995
and the mark since 1996.64 Opposer has not adduced
evidence or testimony regarding the fame of the PLUS SYSTEM
mark, which is “typically used in conjunction with or in
combination with” opposer’s other marks.65 To support its
claim that the mark is famous, opposer produced
confidential sales figures that show revenues for the ten-
year period, 2000 to 2010, broken down by mark and model of
sunglasses.66 Opposer has also provided confidential
advertising figures showing its expenditures.67 However,

64 Opposer’s Brief at p. 32 references the several locations in
the testimony and evidence of record at which these dates are set
forth.
65 Richards Dep., p. 38.
66 Id., p. 24; Confidential Ex. 1.
67 Richards Discovery Dep., p. 181.
Opposition No. 91181440
Cancellation No. 92051640
34
opposer did not provide testimony showing how opposer’s
advertising budget covers the marks pleaded by opposer in
this proceeding versus any other marks used by opposer on
its sunglasses. Mr. Richards testified that of the
sunglasses that bear the mark, twenty percent of them
also include the word mark “Spy.”68 We may therefore
surmise that some portion of the advertising budget is
attributable to the promotion of the “Spy” mark. Opposer
has also engaged in other promotional and marketing
activities such as “non-compensated promotional
arrangements” with movies, video games, musicians and
athletes.69
We are constrained to not discuss the sales and
advertising efforts in any detail, as the materials have
been filed under seal. Suffice it to say, the cumulative
evidence and testimony does not show that either the mark
PLUS SYSTEM or the mark have become famous for purposes
of likelihood of confusion.
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,

68 Richards Dep., p. 26.
69 Richards Discovery Dep., p. 47; Richards Dep., p. 9.
Opposition No. 91181440
Cancellation No. 92051640
35
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. In a particular case, any one of these
means of comparison may be critical in finding the marks to
be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1987). Each of the pleaded marks is compared individually
to applicant’s marks to determine whether their similarities
outweigh their differences.
1. Opposer’s mark; Applicant’s and marks
When comparing design marks, the key factor is visual
appearance. See Diamond Alkali Co. v. Dundee Cement Co.,
343 F.2d 781, 145 USPQ 211, 213 (CCPA 1965)(“When symbol
marks such as these are being considered, appearance is most
significant. ‘Symbols of this kind do not sound,’” citing
Columbian Steel Tank Co. v. Union Tank & Supply Co., 277
F.2d 192, 196, 125 USPQ 406, 409 (CCPA 1960)); see also
General Foods Corp. v. Ito Yokado Co. Inc., 219 USPQ 822,
828 (TTAB 1983) (the comparison of design marks comes down
to a “subjective ‘eye ball’ reaction,” citing Long John
Silver’s Inc., v. Lou Scharf Inc., 213 USPQ 263, 267 (TTAB
1982)(visual comparison of pirate design marks)).
Opposer’s mark and applicant’s and marks
do not look alike. Although each mark contains a “plus” or
“cross” symbol, they are markedly different in appearance.
Opposition No. 91181440
Cancellation No. 92051640
36
Opposer’s mark is a 12-sided polygon figure, as described by
opposer in Response to the Office action during prosecution
of the mark.70 It is formed of an outline only.
Applicant’s cross design is solid. The ends of the arms of
each cross-leg in opposer’s mark is twice as wide as the
lines forming the intersection of the legs, whereas
applicant’s cross design is formed of legs whose ends are
about the same width as the intersecting sides. The overall
proportions of the crosses are markedly different.
To the extent the marks may be verbalized, no evidence
of a settled pronunciation for the marks has been presented.
There is no dispute as to the pronunciation of “Beryll,” but
the parties interchangeably refer to the design mark as
either a “plus” or a “cross” design mark. The additional
word “Beryll” in applicant’s marks adds to the aural and
visual dissimilarities between the marks. It has often been
held that as between a design and the word portion of a
trademark, the word portion dominates; it is the portion by
which the goods are called for. In re Inspection Technology
Inc., 223 USPQ 46, 47 (TTAB 1984); see also In re
Continental Graphics Corp., 52 USPQ2d 1374, 1376 (TTAB
1999); and In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). Consumers are likely to sound out the marks

70 Applicant’s Notice of reliance, Ex. 4.
Opposition No. 91181440
Cancellation No. 92051640
37
using the Beryll name. Therefore, the marks do not sound
alike.
For the same reasons, overall connotations and
commercial impressions of the marks also differ. Under
actual marketing conditions, consumers do not necessarily
have the luxury of making side-by-side comparisons between
marks, and must rely upon their imperfect recollections.
See Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255,
259 (TTAB 1980). The average purchaser normally retains a
general rather than a specific impression of trademarks.
See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727
(TTAB 2008); and Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Opposer’s mark conjures up a polygon
shape whereas applicant’s marks conjure up the word “Beryll”
in some significant relation to the plus/cross design
element. Any similarities in the commercial impressions
created by opposer’s mark and applicant’s and
marks are outweighed by their overall dissimilarities.
2. Opposer’s PLUS SYSTEM mark; Applicant’s and
marks

Here, the word “plus” in opposer’s mark may be read as
describing a PLUS design. However, nothing in the record
suggests that the design would look, sound, or mean anything
similar to the word “Beryll” or the plus symbols used in
Opposition No. 91181440
Cancellation No. 92051640
38
applicant’s marks. Moreover, given the addition of the word
“Beryll” in each of its mark to the design therein, and the
additional word “system” in opposer’s mark, we conclude that
opposer’s PLUS SYSTEM mark is dissimilar overall to
applicant’s and marks.
B. The similarity or dissimilarity and nature of the goods
described in the application and registrations.

Because the goods in applicant’s application for the
mark , which is the subject of the opposition, differ
from those in applicant’s registrations for the marks
and , which are the subjects of the cancellation, we
discuss each case individually below.
Opposition No. 91181440.
Applicant is seeking to register its mark for
“jewelry; leather accessories, namely, leather handbags,
leather wallets, leather purses, leather key cases, leather
key chains, leather briefcases, leather cases, leather for
furniture; and furniture.” Opposer’s registrations for the
mark PLUS SYSTEM and the design cover sunglasses and
sports goggles. Although Mr. Harkins testified that opposer
has “produced accessories and jewelry such as wallets,
belts, necklaces, wrist bands, handbags and other similar
accessories,” he was not clear on the “exact mark in
Opposition No. 91181440
Cancellation No. 92051640
39
question, whether it was an additional mark or an
alternative mark” that was used, and he did not know whether
any of the pleaded marks were used in connection with
jewelry, furniture or leather goods.
Since neither registration covers jewelry, leather
goods, or furniture, opposer will have to show that
sunglasses and/or sports goggles are related to jewelry,
leather goods and furniture. 71 Opposer has failed to meet
this burden. Significantly, opposer did not offer direct
testimony or evidence on the issue of relatedness of the
goods. While Mr. Richards indicated that opposer’s October,
2005 catalog promoted some clothing items, such evidence is
insufficient to show a relationship between the goods.
In the opposition, this du Pont factor favors
applicant.
Cancellation No. 92051640.
Applicant has registered its and marks for,
inter alia, “sunglasses”; “spectacle frames”; and “cases for
spectacles and sunglasses.” Opposer’s registered marks

71 Opposer has also not proven that it has prior use of its marks
on jewelry, leather goods or furniture. Although Mr. Harkins
testified that opposer has “produced accessories and jewelry such
as wallets, belts, necklaces, wrist bands, handbags and other
similar accessories,” he was not clear on the “exact mark in
question, whether it was an additional mark or an alternative
mark” that was used, and he did not know whether any of the
pleaded marks were used in connection with jewelry, furniture or
leather goods. Harkins Discovery Dep., p. 52.
Opposition No. 91181440
Cancellation No. 92051640
40
and the mark PLUS SYSTEM include “sunglasses” in their
identification of goods. In part, then, the goods of each
parties’ registration (and of applicant’s two registrations)
are identical. In the cancellation, this du Pont factor
weighs in opposer’s favor.
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Opposition No. 91181440.
The parties did not introduce any evidence as to the
channels of trade or classes of consumers for jewelry or
clothing, and none of opposer’s registrations cover these
goods. Accordingly, this factor is neutral in the
opposition.
Cancellation No. 92051640.
Because the goods identified in applicant’s
registrations and opposer’s registrations are identical in
part, we must presume that the channels of trade and classes
of purchasers for these goods are the same. See 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 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”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
Opposition No. 91181440
Cancellation No. 92051640
41
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”). Moreover, both
parties introduced testimony that confirms they sell
sunglasses through similar trade channels, such as online
and through retail outlets.72 This du Pont factor thus
favors opposer in the cancellation.
D. The conditions under which and buyers to whom sales are
made, i.e. “impulse” vs. careful, sophisticated
purchasing.

Opposition No. 91181440.
The parties did not introduce any evidence as to the
conditions under which sales of jewelry, leather, or
furniture are made. They also did not introduce evidence
regarding the classes of purchasers. Accordingly, this
factor is neutral in the opposition.
Cancellation No. 92051640.
Each party describes their sunglasses as a high-end
product.73 While the parties disagree on which retail
outlets would be considered high-end, each has sold to a
major department store,74 their sunglasses are generally
priced in a similar range,75 and each sees themselves as

72 Berg Discovery Dep., p. 115; Richards Dep., p. 20.
73 Richards Dep., p. 16; Berg Dep., p. 92.
74 Richards Dep., p. 21 (Nordstrom); Berg Dep., p. 91
(Bloomingdale’s).
75 Richards Discovery Dep., p. 149; Berg Dep., p. 25.
Opposition No. 91181440
Cancellation No. 92051640
42
selling a “fashion item.”76 The parties also agree that the
conditions under which sales are made are similar: “they
try them on, they look at them, they look to see if they
know the brand, they look to see how it fits on them, they
look to see if it fits their face correctly and they feel
good.”77 These facts would tend to support a finding that
the classes of buyers to whom sales are made are the same,
but that they are somewhat sophisticated. However, Mr.
Richards stated that in his experience in having visited
over 300 stores over a two-year period, the process of
selecting a pair of sunglasses is not time-consuming, and
that purchasers of sunglasses do not spend a great deal of
time deliberating about what sunglasses to buy.78 In light
of the above, this du Pont factor is considered neutral.
E. Third-party use of similar marks in use on similar goods
Applicant has introduced some evidence of third-party
use of “cross” design marks on sunglasses and related
products including clothing and jewelry.79 Where evidence
of third-party use of similar marks on related goods or
services is wide-spread, it is probative to show that the
public has been conditioned to draw minute distinctions
among the marks, in order to distinguish, one from the

76 Richards Dep., p. 7; Berg Dep., p. 135.
77 Richards Dep., p. 34; see Berg Dep., p. 24.
78 Richards Dep., p. 34.
79 Berg Dep., pp. 66-79; Exs. 118-126.
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Cancellation No. 92051640
43
other, the sources of origin of the goods or services upon
which the similar marks appear. See Palm Bay, 73 USPQ2d at
1694 (“The probative value of third-party trademarks depends
entirely upon their usage.”). Based on Mr. Berg’s
testimony, at least one of the displayed sunglasses was
available for sale. Applicant also introduced the “Logo
Design Love” article and the Wikipedia article, which show
that the “cross” design is a common symbol in general.80
Applicant also introduced the testimony of Frontier
Fashions (“Frontier”), through its designee under Fed. R.
Civ. Pro. 30(b)(6), Robert Huei Chang. Mr. Chang testified
that Frontier uses the mark for sunglasses and that
Frontier was aware of other uses of cross designs on
sunglasses. Mr. Chang testified that he was familiar with
the “Gatorz Maltese Cross Radiator sunglasses” shown in
applicant’s Exhibit 104. He was asked about the cross:
Q. Have you seen the Maltese cross used on various
brands of sunglasses in your industry?
A. Yes, a lot.
Q. And what about the regular cross, have you seen the
regular cross used in different ways by various
sunglass companies?
…

A. Yes.81

80 However, neither show “cross” designs in use on any goods and
accordingly the Wikipedia articles are entitled to very little
weight.
81 Chang Dep., pp. 44-45.
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Cancellation No. 92051640
44
Mr. Chang also testified that Frontier does not claim
any exclusive right to use “any derivation of a plus
sign.”82
This evidence and testimony shows that there are other
“cross” design marks used on sunglasses. It also shows that
the “cross” design has been a common design used throughout
history. We are not concerned with these historical uses,
and the fact that some “cross” designs approximate the
common geometric shape of the “plus sign” is irrelevant to
our decision. On the other hand, the actual use of “cross”
design marks is of some significance, albeit limited in
light of the fact that very few third-party uses were
presented. Moreover, the record is devoid of any evidence
showing the extent of use of these third-party cross
designs. See Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB 1995)
(probative value of evidence of third-party use limited
because of lack of corroborating evidence on extent of use.
The evidence does not show that there are so many “cross”
design marks being used on sunglasses, or that the designs
have been so extensively used that the consuming public has
learned to distinguish the marks based on trivial
differences. This du Pont factor slightly favors applicant.
Conclusion

82 Id., p. 40.
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Cancellation No. 92051640
45
In this case, the marks at issue are simply too
dissimilar to support a finding of likelihood of confusion
in either the cancellation or opposition proceeding. In the
opposition, none of the du Pont factors favors opposer. In
the cancellation, while the goods overlap, and the channels
of trade and classes of consumers are similar, again, the
marks differ so substantially in their overall appearance,
sound, connotation and commercial impression that their
contemporaneous use by different parties will not result in
confusion. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545, 1550 (TTAB 1989), aff'd, 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991) (dissimilarity of the marks
outweighed all other du Pont factors, “even if opposer
offered evidence [that its mark has become famous]”).

Decision: The petition for cancellation is denied and
the opposition is dismissed. Applicant’s trademark
application Serial No. 79033048, for the mark in
classes 14, 18 and 20, will proceed to registration in due
course.