Plaid Inc.v.Plaid, Inc.

Trademark Trial and Appeal Board

Nov 23, 2009

No. 92049221 (T.T.A.B. Nov. 23, 2009)

MBA Mailed: November 23, 2009

Cancellation No. 92049221

Plaid Inc.
(a New York corporation)

v.

Plaid, Inc. (a Connecticut
corporation)

Before Walters, Zervas and Wellington, Administrative
Trademark Judges

By the Board:
Respondent Plaid, Inc. (“respondent”), a Connecticut
corporation, owns a registration of the mark PLAID, in
standard characters, for various advertising, marketing and
design services (the “Registration”).1 Petitioner Plaid
Inc. (“petitioner”), a New York corporation, seeks to cancel
the Registration, alleging: (1) prior use of an identical
mark for “branding, design, communications, advertising and
marketing services;” (2) ownership of a pending application

1 Registration No. 3412392, issued April 15, 2008, based on a
date of first use in commerce of June 1, 2007 for “Advertising
and marketing services; design of advertising materials for
others; Advertising services, namely promoting the goods,
services, and brand identity of third parties through print,
audio, video, digital and on-line medium” in International Class
35 and “Visual design services in the nature of designing visual
elements for online, broadcast, printing, outdoor and other
communication media” in International Class 42.
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
T.T.A.B.
Cancellation No. 92049221
2
for the identical mark PLAID, in standard characters, for
services virtually identical to those identified in the
Registration,2 which application petitioner “reasonably
believes” may be refused based on a finding that the mark
therein is confusingly similar to the mark in the
Registration; and (3) that use of respondent’s mark is
likely to cause confusion with petitioner’s identical mark.3
Respondent denies the salient allegations in the petition
for cancellation.
This case now comes up for consideration of
petitioner’s motion for summary judgment on its claim of
priority and likelihood of confusion, filed July 3, 2009.
In support of its motion, petitioner claims, based on the
testimony of its President and documentary evidence, that it
has prior and continuous use of PLAID since no later than
October 4, 2005. Affidavit of Carol Costello (“Costello

2 Application Serial No. 77451901, filed April 18, 2008, based
on a claimed date of first use in commerce of October 4, 2005 for
services virtually identical to those identified in the
Registration. The only difference between the two
identifications is that petitioner’s identification of its Class
42 services references “print” media, whereas respondent’s
references “printing” media. Because the filing date of this
application is subsequent to the filing date of the application
that matured into the Registration, petitioner may not rely on
the application to establish priority. Rather, petitioner must
rely on actual trademark use or “use analogous to trademark use”
to establish priority.
3 Petitioner also alleges that it “will suffer severe and
irreparable damages” if the Registration is not cancelled, as a
result of “brand dilution.” Petition for Cancellation ¶ 25. We
do not construe this bare, otherwise unexplained allegation as an
attempt to plead dilution.

Cancellation No. 92049221
3
Aff.”) ¶¶ 2-23 and Ex. A-T. Petitioner also argues that
there is a likelihood of confusion between the parties’
marks because both parties render the same or similar
services under the same mark, including advertising, brand
strategy, visual design and Web design. Id. ¶ 26;
Transcript of Deposition of Darryl Ohrt, respondent’s
President (“Ohrt Tr.”) pp. 18-22, 29-34, 61-62, 87-90, 148-
154. Furthermore, according to petitioner, both parties use
their respective marks on the Internet and there is
additional, extensive “overlap” between the parties’
channels of trade. Costello Aff. 24-28 and 33; Ohrt. Tr.
pp. 57-64. Finally, petitioner alleges that its mark is
“famous” and that there has been actual confusion between
the parties and their respective marks. Declaration of
Jamie Scalera (“Scalera Dec.”), owner of Miss Smith, ¶¶ 1-3;
Declaration of Marty Orzio (“Orzio Dec.”), Chief Creative
Officer, Energy BBDO, ¶¶ 1-3.
In its opposition to the motion, respondent argues that
it uses the “Internet and social media” to an “extreme
degree,” but that “its use of print is minimal,” whereas
petitioner primarily uses its mark in print media.
Respondent also argues that although both parties “use the
name Plaid Inc.,” and “are involved, to one degree or
another, in branding advertising, marketing, and design
services of some sort,” confusion is unlikely because the
Cancellation No. 92049221
4
parties’ customers and potential customers “are highly
sophisticated purchasers who must make a highly
sophisticated purchasing decision.” Respondent claims that
“there is a genuine issue of material fact as to whether
Petitioner’s use of its corporate name functions as a
Service Mark and stands for the services it provides.”
Finally, respondent claims, based on domain name
registration information and printouts of portions of
certain Web pages, that “there are multiple marketing,
branding and market research agencies which incorporate the
word ‘Plaid’ in their names.” Affidavit of Darryl Ohrt
(“Ohrt Aff.”) in Support of Respondent’s Opposition ¶ 24 and
Ex. F-Q.4
In reply, petitioner primarily restates its original
arguments. It also objects to respondent’s purported
evidence of third party use of similar marks for similar
services, arguing: (1) “there is no evidentiary foundation …
inasmuch as Respondent does not offer any deposition
testimony or written sworn statements from any of these
companies with respect to their alleged use of Plaid …;” (2)
the Web page printouts are hearsay; (3) “there is no

4 Respondent also complains that the identification of
services in petitioner’s application is virtually identical to
the identification of services in the Registration, and argues
that there are “potentially fatal flaws in Petitioner’s
application and the specimens” submitted therewith. The validity
of petitioner’s application is not at issue in this proceeding,
however.
Cancellation No. 92049221
5
evidence with respect to when [the third parties] began
using” the marks; (4) “unlike Petitioner, not one of the
entities identified by Respondent uses the name ‘Plaid’
alone;” and (5) many of the printouts “make clear that the
entities at issue provide services unlike, or far narrower
than, the broad range of services provided by Petitioner ….”
Summary judgment is appropriate where there are no
genuine issues of material fact in dispute, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ. P.
56(c). Petitioner, as the movant seeking summary judgment,
bears the initial burden of demonstrating the absence of any
genuine issue of material fact. See, Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793,
1796 (Fed. Cir. 1987). A factual dispute is genuine if, on
the evidence of record, a reasonable fact finder could
resolve the matter in favor of the non-moving party. See,
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542,
1544 (Fed. Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, in this case
respondent, and all justifiable inferences are to be drawn
in respondent’s favor. Lloyd’s Food Products, Inc. v.
Cancellation No. 92049221
6
Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Opryland USA, supra. The Board may not resolve
issues of material fact; it may only ascertain whether
issues of material fact exist. See, Lloyd’s Food Products,
987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme Foods, 961
F.2d at 200, 22 USPQ2d at 1542.
Standing
Petitioner must demonstrate “that it has a reasonable
belief that it would be damaged” by the continued
registration of respondent’s mark. Syngenta Crop
Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1118
(TTAB 2009). In this case, there is no genuine issue of
material fact regarding standing. First, the Board has
found that a petitioner’s allegation of a mere “belief of
the likelihood of refusal of its application under Section
2(d)” is sufficient for purposes of standing. The Hartwell
Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990). Second,
petitioner has established its use of PLAID for advertising,
marketing, branding and design services since October 4,
2005, and alleged likelihood of confusion based on the
parties’ use of identical marks for similar or identical
services. Costello Aff. ¶¶ 2-23 and Ex. A-T. This is
sufficient to establish that there is no genuine issue of
material fact regarding petitioner’s standing. Giersch v.
Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009);
Cancellation No. 92049221
7
Syngenta, 90 USPQ2d at 1118. Respondent does not
specifically contend otherwise, much less introduce
contradictory evidence.
Priority
As to priority, respondent is relying on the filing
date of its application which matured into the Registration,
i.e. February 22, 2007, while petitioner is attempting to
establish prior use of PLAID as a service mark and/or trade
name. We find that petitioner has established that it has
used its service mark PLAID since October 4, 2005. We
disagree with respondent’s contention, unsupported by
evidence, that there is a genuine issue of material fact
regarding whether petitioner uses PLAID only as a trade
name, and not as a service mark. Petitioner’s evidence,
including Ms. Costello’s testimony and the documentary
evidence that petitioner made multiple business proposals
and presentations to actual purchasers and potential
purchasers which prominently displayed PLAID shows
petitioner’s use of its mark, as a service mark, for
advertising, branding, marketing and design services since
October 2005. Furthermore, because respondent concedes that
it did not file the application which matured into the
Registration until February 22, 2007, and that it did not
begin using PLAID until June 1, 2007, there is no genuine
issue of material fact that petitioner has priority of use
Cancellation No. 92049221
8
for advertising, branding, marketing and design services.
Ohrt Aff. ¶¶ 5, 6.
Even if, as respondent alleges, petitioner only used
PLAID as a trade name, that would not create a genuine issue
of material fact with respect to petitioner’s standing, or
its priority. Indeed, “a trade name lacking any independent
trademark or service mark significance may bar registration
of a trademark or service mark that is confusingly similar
to that trade name.” Martahus v. Video Duplication Services
Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850-51 (Fed. Cir. 1993).
Here, petitioner’s evidence establishes its use of PLAID as
a trade name in connection with advertising, branding,
marketing and design services.
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the [respondent’s services] originate from the same source
as, or are associated with,” petitioner’s services. In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In considering the question on
a motion for summary judgment, we analyze all probative
facts in evidence which are relevant to any of the 13
likelihood of confusion factors set forth in In re E.I. du
Pont de Menours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973), as well as whether there are genuine disputes as to
Cancellation No. 92049221
9
any of these factors which would be material to a decision
on the merits. In this case, the parties have introduced
evidence concerning, and we therefore address herein, the
similarity between the parties’ marks, services and channels
of trade, fame of the parties’ marks, actual confusion and
third party use of similar marks for similar services.
Turning first to the similarity of the parties’ marks,
there is no genuine issue of material fact. The parties’
marks are identical. This factor weighs heavily in favor of
a finding of likelihood of confusion. Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 1109 (2007); Hornblower &
Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735
(TTAB 2001).
Turning next to the parties’ services, petitioner uses
its mark for, among other things, branding, design,
advertising and marketing services. Costello Aff. ¶ 2.
Respondent has registered its mark for the same services.
Ohrt Tr. pp. 18-22, 29-34, 61-62, 87-90, 148-54; Ohrt Aff. ¶
22. Therefore, we find that there is no genuine issue of
material fact that the parties’ services are virtually
identical, and therefore this fact also weighs heavily in
favor of a finding of likelihood of confusion.
Turning to the parties’ channels of trade, where, as
here, “there is no limitation on the channels of trade” in
the Registration’s recitation of services, it is presumed
Cancellation No. 92049221
10
that respondent’s services move in all normal channels of
trade. See, e.g., Octocom Systems, Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); Venture Out Properties LLC v. Wynn Resorts
Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Even if we
construed the words “print,” “audio,” “video,” “digital,”
“outdoor,” “broadcast” and “online” in the Registration as
limitations on respondent’s channels of trade, petitioner’s
evidence establishes that petitioner’s channels of trade are
the same, and limited in the same manner. Furthermore, even
if respondent primarily uses its mark in connection with the
Internet and social media, and petitioner primarily uses its
mark in print, this does not create a genuine issue of
material fact, because there is still overlap between the
parties’ channels of trade. Therefore, there is no genuine
issue of material fact that the parties’ channels of trade
are identical or similar, and this factor also weighs in
favor of a finding of likelihood of confusion.5

5 Respondent’s argues that petitioner’s evidence regarding its
channels of trade should be given no consideration because
respondent served an interrogatory on this topic in response to
which petitioner only objected, rather than providing a
substantive response. Respondent’s objection is overruled,
because: (1) respondent did not move to compel a supplemental
response to the interrogatory in question; (2) respondent did not
question Ms. Costello about petitioner’s channels of trade when
it took her discovery deposition; and (3) petitioner
substantively responded to other interrogatories which also
related to petitioner’s channels of trade.

Cancellation No. 92049221
11
While there may be genuine issues of material fact
regarding the fame of petitioner’s mark, in view of the
identity of the marks and services, we find it unnecessary
to consider fame in reaching a decision.
Finally, turning to petitioner’s purported evidence of
actual confusion and respondent’s purported evidence of
third party use of similar marks for similar services, the
parties dispute the admissibility, relevance and reliability
of this evidence. We need not resolve the parties’ disputes
over this evidence, however, under the circumstances of this
case. That is, even if we were to assign no probative value
to petitioner’s evidence of actual confusion, and give full
weight to respondent’s evidence of third party use of
similar marks, we would not find that there is a genuine
issue of material fact regarding likelihood of confusion.
To the contrary, in this case, on the record presented, even
if we were to find that there has been no actual confusion
and that petitioner’s mark is weak as a result of third
party use of similar marks, petitioner’s mark is not so weak
that it is not entitled to protection against an identical
mark used for identical services which travel in similar
channels of trade. There is simply no genuine issue of
material fact that there is likelihood of confusion between
the parties’ marks. Hornblower & Weeks, 60 USPQ2d at 1735
Cancellation No. 92049221
12
(“[u]se of identical marks for virtually identical services
would create a likelihood of confusion”).6
Because we find, based on the record herein and the
applicable law, that there is no genuine issue of material
fact and that petitioner has established its priority and
likelihood of confusion as a matter of law, petitioner’s
motion for summary judgment is hereby GRANTED. Accordingly,
judgment is hereby entered against respondent, the petition
to cancel is granted, and Registration No. 3412392 will be
cancelled in due course.
***

6 While respondent argues that the parties’ customers are
sophisticated, it has not introduced any direct evidence to
support this argument. Therefore, this factor is neutral.