PRL USA Holdings, Inc.v.Thread Pit, Inc.

Trademark Trial and Appeal Board

May 14, 2012

No. 92047436 (T.T.A.B. May. 14, 2012)

Oral Hearing: Mailed:
October 20, 2011 May 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

PRL USA Holdings, Inc.
v.
Thread Pit, Inc.
_____

Cancellation No. 92047436
_____

Scott Gelin, G. Roxanne Elings and Anna Dalla Val of
Greenberg Traurig, LLP for PRL USA Holdings, Inc.

Howard A. Caplan of Lewis Longman & Walker PA for Thread
Pit, Inc.
______

Before Kuhlke, Bergsman and Wolfson, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

PRL USA Holdings, Inc. (petitioner) has petitioned to
cancel Registration No. 3180680 owned by Thread Pit, Inc.
(respondent) for the mark shown below for goods identified
as “t-shirts and collared polo shirts,” in International
Class 25.1

1 The registration issued on December 5, 2006 from the underlying
application filed on January 19, 2006.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92047436
2

As grounds for cancellation petitioner asserts the
claim of likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d) and dilution under
Section 43(c) of the Trademark Act, 15 U.S.C. § 1125. In
connection with these claims, petitioner alleges that it
owns several registrations for the Polo Player mark shown
below and several marks incorporating the word POLO for a
variety of clothing and accessory items and that its marks
have become famous prior to respondent’s use of its mark.

Respondent filed an answer by which it admitted to
petitioner’s ownership of the pleaded registrations, that
its goods are “the same as some of the goods contained in
[petitioner’s pleaded] registrations” but otherwise denied
the salient allegations. In addition, respondent asserted
as an affirmative defense that its “use of its mark is a
parody of certain of [respondent’s] marks.” The remaining
Cancellation No. 92047436
3
“affirmative defenses” simply serve to amplify its general
defense that there is no likelihood of confusion.
THE RECORD
The evidence of record consists of the pleadings; the
file of the subject registration; petitioner’s testimony by
declaration2 with accompanying exhibits A-G of Ellen Brooks,
Director, U.S. Trademark Enforcement for respondent’s parent
company Polo Ralph Lauren Corporation; petitioner’s notices
of reliance on respondent’s responses to certain discovery
requests, excerpts from the discovery deposition of Nicholas
Lynn Moskowitz, printed publications, its pleaded
registrations, and court decisions wherein the Polo Player
design mark was found inherently distinctive and famous;
respondent’s testimony by declaration with accompanying
exhibits A-D of Nicholas Moskowitz, respondent’s President
and owner; respondent’s notices of reliance on its subject
registration3 and certain of petitioner’s discovery
responses. Petitioner also submitted a rebuttal declaration
from Ellen Brooks which is the subject of an objection from
respondent addressed below.

2 Upon stipulation of the parties, filed January 21, 2010,
testimony was submitted by declaration.

3 For future reference, respondent is advised that this was
unnecessary inasmuch as the subject registration “forms part of
the record of the proceeding without any action by the parties
and reference may be made to the file for any relevant and
competent purpose.” Trademark Rule 2.122(b).
Cancellation No. 92047436
4
In addition, the parties submitted under stipulation
several documents including excerpts from petitioner’s and
respondent’s websites, articles from printed publications,
petitioner’s advertising, and petitioner’s annual reports.
Both parties filed briefs; however, respondent did not
attend the oral hearing.
EVIDENTIARY ISSUE
As a preliminary matter, we take up for consideration
respondent’s objection, made in its main trial brief, to the
rebuttal declaration of Ellen Brooks. Respondent states
that it was never served with a copy of this declaration.
The filing with the Board does not include a certificate of
service. In addition, petitioner did not submit any
argument in response; therefore, respondent’s assertion that
the declaration was not served stands unrebutted. Every
paper filed with the Board must be served upon the other
parties and proof of service must be made before a paper
will be considered. Trademark Rule 2.119(a). In view
thereof, the May 24, 2010, declaration of Ellen Brooks is
hereby stricken from the record.
PRIORITY/STANDING
Because petitioner has made its pleaded registrations
of record and has shown that the registrations are valid and
subsisting and owned by petitioner, petitioner has
established its standing to cancel respondent’s registration
Cancellation No. 92047436
5
and its priority is not in issue. See King Candy Co., Inc.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Accordingly, we turn to the question of likelihood of
confusion.
LIKELIHOOD OF CONFUSION
Petitioner only made some of its pleaded registrations
of record by notice of reliance.4 The most relevant are set
forth as follows:
Registration No. 2823094 for the mark shown below
for “tote bags” in International Class 18 and
“wearing apparel, namely, sweaters and t-shirts”
in International Class 25, issued March 16, 2004,
Section 8 and 15 affidavit accepted and
acknowledged;

Registration No. 3199839 for the mark shown below
for “wearing apparel, namely, jackets,

4 The printouts of registrations from TESS, the USPTO electronic
database, attached to the pleading are not sufficient to make the
remaining registrations of record because the petition for
cancellation was filed on April 25, 2007, prior to the November
1, 2007 Trademark Rules amendments. Moreover, respondent’s
answer only serves as an admission to petitioner’s ownership and
not to the status of the pleaded registrations. In addition,
petitioner introduced into the record certain of its
registrations that it did not plead. With regard to these
registrations, we only consider them in connection with
petitioner’s allegation of fame and not for priority or reliance
on other Section 7(b) presumptions.
Cancellation No. 92047436
6
sweatshirts, sweat pants, hats, scarves, jerseys,
jeans, turtlenecks and bikinis” in International
Class 25, issued January 16, 2007.

For our determination of likelihood of confusion in
this cancellation, we focus our decision on Reg. No. 2823094
for the Polo Player mark and above-noted clothing items,
specifically, t-shirts. If we do not find likelihood of
confusion with respect to the mark in this registration for
in part identical goods, then there would be no likelihood
of confusion with respect to the marks and goods in
petitioner’s other registrations. See In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and 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).
Petitioner presented evidence and argument on the
factors of the relatedness of the goods, channels of trade
Cancellation No. 92047436
7
and classes of purchasers, the similarity of the marks,
respondent’s intent, and the fame of its mark.
We begin with the factor of fame because fame “plays a
‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000). “[T]he fame of a mark may be
measured indirectly, among other things, by the volume of
sales and advertising expenditures of the goods traveling
under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose Corp. v. QSC
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002).
The record shows that petitioner owns seven
registrations that include the Polo Player mark, and has
been using the Polo Player mark in connection with clothing
items, including t-shirts, for over forty years since 1967.
Brooks Test. p. 2. Petitioner expends a substantial sum “in
promoting the sale of Polo Player products in a wide variety
of media and its products are regularly featured in” widely-
distributed magazines such as Vogue, Elle, GQ, Fortune,
Sports Illustrated, Vanity Fair, Town & Country, Travel &
Leisure, Maxim, Rolling Stone, Cosmopolitan, Entertainment
Weekly, Oprah and Golf Digest. Id. p. 3. Petitioner is or
has been the official sponsor of the following sporting
events: Wimbledon, the US Open, and the 2008 and 2010
Cancellation No. 92047436
8
Olympics. Id. Petitioner also sponsors many individual
sports figures including Tom Watson, Davis Love III, Jeff
Sluman and Luke Donald. Id. p. 4. Petitioner uses its Polo
Player mark in connection with these sponsorships. Id.
Petitioner sells its Polo Player products at 200 of its
stores, in many department and fine retail stores across the
United States (e.g., Macy’s, Nordstrom’s, Saks,
Bloomingdales), and online at its website and those of other
online retailers such as Macys.com and Nordstrom.com. Id.
Petitioner’s sales have also been substantial. Id. and
Stip. Exh. 58-68.5
On this record, we find that petitioner has shown that
its Polo Player mark is famous in the field of clothing and,
indeed, respondent concedes this factor. Resp. Br. p. 9.
See also Pet. Notice of Reliance Exh. B Responses to
Petitioner’s Second Set of Requests for Admissions No. 23.
In view thereof, petitioner’s mark is entitled to broad
protection. Recot, 54 USPQ at 1897. Respondent’s argument
that the fame of petitioner’s mark serves to lessen the
likelihood of confusion is counter to legal precedent of the
Board and the Board’s primary reviewing court, the Court of

5 We note that the sales figures are not broken down specifically
as to the Polo Player mark; however, viewed in the context of the
record as a whole the Polo Player design is ubiquitous on
petitioner’s goods and in petitioner’s advertising and
sponsorships. In view thereof, we infer from this that a
substantial portion of the sales figures are attributable to
products with which the Polo Player mark is used.
Cancellation No. 92047436
9
Appeals for the Federal Circuit. As stated by the Federal
Circuit:
While scholars might debate as a factual
proposition whether fame heightens or dulls the
public’s awareness of variances in marks, the
legal proposition is beyond debate. The driving
designs and origins of the Lanham Act demand the
standard consistently applied by this court –
namely, more protection against confusion for
famous marks.

Kenner Parker Toys v. Rose Art Indus., Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
This brings us then to our consideration of the
similarities between petitioner’s and respondent’s goods,
channels of trade and classes of purchasers. We must make
our determinations under these factors based on the goods as
they are recited in the respective registrations. See
Octocom Systems Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.”); In re Elbaum, 211 USPQ 636
(TTAB 1981).
Petitioner’s and respondent’s registrations both
include t-shirts; thus the goods are in part identical. It
Cancellation No. 92047436
10
is sufficient for a finding of likelihood of confusion if
the relatedness is established for any item encompassed by
the identification of goods within a particular class in the
subject registration. Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981);
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1847 n.9 (TTAB 2004). Respondent argues that its
registration covers only t-shirts and collared polo shirts
whereas petitioner’s various registrations cover a wide
variety of clothing goods such that “the scope of goods on
which the parties marks appear is so vastly different.” We
first note that petitioner’s Registration No. 2823094 only
includes sweaters, t-shirts and tote bags. However, even
considering petitioner’s other registrations and evidence of
use for a wide variety of clothing goods, this does not
mitigate the fact that there is an overlap with the
identical goods, namely, t-shirts.
Moreover, with regard to the channels of trade and
classes of purchasers, because the goods are in part
identical and there are no restrictions in the
identifications as to trade channels and purchasers, we must
presume that the parties’ goods would be sold in the same
channels of trade and to the same relevant purchasers. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002).
Cancellation No. 92047436
11
In addition, respondent’s arguments regarding the
actual conditions of sale are not relevant to our
determination. As noted above, we make our determination
based on the listed goods in the registrations. Thus, the
arguments that petitioner’s goods are expensive and limited
to the high end of the market, and the relevant consumers
are sophisticated purchasers are not persuasive. Because of
the absence of such limitations from the identifications set
forth in the registrations we must consider any ordinary
channel of trade for t-shirts. See In re Bercut-Vandervoort
& Co., 229 UPSQ 763, 764 (TTAB 1986) (applicant may not
restrict scope of the identified goods by extrinsic
evidence). Further, we must make our determination based on
the least sophisticated consumer for the identified goods,
namely, t-shirts. Giersch v. Scripps Networks Inc., 90
USPQ2d 1020, 1027 (TTAB 2009) (citing Alfacell Corp. v.
Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). In sum,
we find that the similarities between petitioner’s and
respondent’s goods, channels of trade and classes of
purchasers favors a finding of likelihood of confusion.
We turn now to a consideration of the first du Pont
factor, i.e., whether the parties’ respective Polo Player
marks and are similar or dissimilar when
compared in their entireties in terms of appearance,
Cancellation No. 92047436
12
connotation and commercial impression.6 We make this
determination in accordance with the following principles.
The test, under this du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impressions
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Further, in view of the fame of
petitioner’s mark we keep in mind that a famous mark enjoys
a wide scope of protection and “[T]here is no ‘excuse for
even approaching the well-known trademark of a competitor.’”
Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d
1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting,
Planter’s Nut & Chocolate Co. v. Crown Nut Co., Inc., 305
F.2d 916, 134 USPQ 504, 511 (CCPA 1962). Finally, we are
cognizant of the principle that the more closely related the
goods are, the less similarity in the marks is required to
support a conclusion of likelihood of confusion. Century 21

6 We do not consider the element of sound as we are making our
determination only on petitioner’s design mark.

Cancellation No. 92047436
13
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
With regard to appearance, we find them to be very
similar. The horses are in identical positions with the
left front leg curling back and crossing the right rear
legs, the reins drape in the same manner, and the mallet
extends from the rider at the same angle. In addition, the
horses and riders are similarly portrayed in silhouette.
Moreover, both marks contain no other elements, either
design or words. The only difference in the appearance of
the marks is the position of the rider, which in both marks
appears as a polo player, where he is depicted as falling
off the horse in respondent’s mark. While there may be some
difference in commercial impression between the two
depictions, as respondent posits, i.e., “a competent in
control rider versus a completely out of control rider,” we
find the overall commercial impression of the polo player to
be very similar. In particular, with regard to such goods
where the mark is frequently applied as a small logo in the
upper corner of the t-shirt, it requires close inspection to
distinguish the different attributes of the rider. Given
the fame of petitioner’s mark, the points of similarities in
appearance, connotation and commercial impression outweigh
the dissimilarities. In view thereof, we find the marks to
be similar.
Cancellation No. 92047436
14
Respondent argues that there is no evidence of actual
confusion. However, we cannot determine on this record that
there has been any meaningful opportunity for actual
confusion to have occurred in the marketplace, and
accordingly, we cannot conclude that the alleged absence of
actual confusion is entitled to much weight in our
likelihood of confusion analysis. See Gillette Canada Inc.
v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Moreover,
evidence of actual confusion is not a prerequisite to
finding likelihood of confusion and this factor is neutral
as to both parties. Herbko International, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002)
(“[A] showing of actual confusion is not necessary to
establish a likelihood of confusion.”)
Petitioner argues that respondent was aware of
petitioner’s mark before adopting its mark and in fact
designed its mark “with the intention to be similar to the
Polo Player Mark.” Pet. Br. p. 24. Respondent argues that
while it was aware of petitioner’s mark “[t]he creative
process did not include copying and pasting any horse or
rider image [and] [t]he intent of the design of Registrant’s
mark was to parody the elite in society as embodied by the
sport of polo.” Resp. Br. p. 2; Moskowitz Decl. p.2. With
regard to the parody argument, respondent argues that it
falls under the last du Pont factor namely “[a]ny other
Cancellation No. 92047436
15
established fact probative of the effect of use,” du Pont,
at 177 USPQ at 567, contending:
One factor is the satiric, parodic nature of
Registrant’s mark. ... Numerous visitors to the
Thread Pit website placed satiric, humorous
comments about Registrant’s mark. ... These and
other comments clearly demonstrate that
Registrant’s mark communicates an element of
satire, ridicule, joking, or amusement.

Resp. Br. pp. 10-11.
Parody is not a defense if the marks are otherwise
confusingly similar. Boston Red Sox Baseball Club LP v.
Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008);7 Starbucks U.S.
Brands, LLC and Starbucks Corporation D.B.A. Starbucks
Coffee Company v. Marshall S. Ruben, 78 USPQ2d 1741, 1754
(TTAB 2006); Columbia Pictures Industries, Inc. v. Miller,
211 USPQ 816, 820 (TTAB 1981) (“The right of the public to
use words in the English language in a humorous and parodic
manner does not extend to use of such words as trademarks if
such use conflicts with the prior use and/or registration of
the substantially same mark by another.”)
Respondent has stated that its mark is “a parody of the
societal elite as embodied by the sport of polo, which is

7 Respondent’s statement that the Board “held that SEX ROD was a
parody” is incorrect. In that case, the Board stated that
“[e]ven assuming for the sake of argument that SEX ROD is a
parody of opposer’s “RED SOX” marks, as applicant asserts, there
is nothing in the parody itself which changes or detracts from
the vulgar meaning inherent in the term.” Boston Red Sox, 88
USPQ2d at 1589. Clearly, the Board did not hold that the mark in
that case was a parody, but merely stated that if were it would
not be a defense to the Section 2(a) claim.

Cancellation No. 92047436
16
perceived to be a sport reserved for the elite. The rider
falling off the horse is the parody of that elite, luxury
lifestyle. And of the humor in seeing someone fall off a
horse, somewhat like in slapstick comedy.” Moskowitz Decl.
p. 2 ¶8. This is similar to the circumstances in Nike, Inc.
v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018,
1023 (TTAB 2011). In that case, the Board found that where
“a defendant appropriates a trademarked symbol such as a
word or picture, not to parody the product or company
symbolized by the trademark, but only as a prominent means
to promote, satirize or poke fun at religion or religious
themes, this is not ‘parody’ of a trademark.” Similarly,
here, parodying a lifestyle is not a parody of a trademark.
See also Elvis Presley Enterprises Inc. v. Capece, 141 F.3d
188, 46 USPQ2d 1737, 174-46 (5th Cir. 1998).
In view of the above, respondent’s assertion of parody
does not provide it with a defense to petitioner’s claim
under Section 2(d.
Considering the similarity of the marks in their
entireties, the fame of petitioner’s mark, the identical
nature of the goods and the overlap in trade channels and
purchasers, we conclude that the evidence of record as it
pertains to the relevant du Pont factors supports a
likelihood of confusion between petitioner’s Polo Player
mark and respondent’s Polo Player mark.
Cancellation No. 92047436
17
In view of our decision on likelihood of confusion we
do not reach the claim of dilution.
Decision: The petition for cancellation is granted.