Retail Royalty Companyv.Michael R. Longshore

Trademark Trial and Appeal BoardJan 21, 2014

No. 91192917 (T.T.A.B. Jan. 21, 2014)

Laura C Retail R Michael Before B Opinion Mic the mar for the g UNIT . Miller a oyalty Com R. Longsh ucher, Be by Bergsm hael R. Lo k shown b oods set fo P ED STAT Trad nd Lisa P pany. ore pro se rgsman an an, Admi ngshore (“ elow rth below THIS OPI RECEDEN ES PATEN emark Tr Retail Ro Michae Oppositio earson fo . d Hightow nistrative applicant”) : NION IS N T OF TH T AND T _____ ial and Ap _____ yalty Com v. l R. Longsh _____ n No. 9119 _____ r Kilpatri _____ er, Admin Trademark filed an i OT A E TTAB M RADEMAR peal Board pany ore 2917 ck Townse istrative T Judge: ntent-to-u ailed: Ja K OFFIC nd & Sto rademark se applicat nuary 21, 2 E ckton LLP Judges. ion to reg 014 for ister Opposition No. 91192917 2 A-shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Dress shirts; Hooded sweat shirts; Knit shirts; Long-sleeved shirts; Night shirts; Open-necked shirts; Polo shirts; Shirts; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sleep shirts; Sport shirts; Sports shirts; Sports shirts with short sleeves; Sweat shirts; T- shirts; Turtle neck shirts; Wearable garments and clothing, namely, shirts, in Class 25. Retail Royalty Company (“opposer”) opposed the registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the registered marks shown below for a variety of goods and services, including clothing, as to be likely to cause confusion, and on the ground that applicant did not have a bona fide intent to use his mark when he filed his application. 1 2 and 3 1 Registration No. 3539007, registered November 25, 2008; and Registration No. 3662110, registered July 28, 2009. 2 Registration No. 3596446 registered March 24, 2009; and Registration No. 3600044, registered March 31, 2009. Opposition No. 91192917 3 Applicant, in his answer, denied the salient allegations in the notice of opposition. Opposer’s first mark listed above, , has been registered for the goods set forth below. Wearing apparel, clothing, and clothing accessories, namely, beachwear, jackets, leg warmers, loungewear, robes, scarves,” in Class 25 (Registration No. 3662110); and Wearing apparel, clothing, and clothing accessories, namely, bottoms, gym suits, tops, lingerie, pants, shirts, shorts, skirts, sleep wear, sweaters, swim wear, underwear, footwear, and headwear,” in Class 25 (Registration No. 3539007). We will focus our likelihood of confusion analysis on the mark in those registrations because when that mark is considered vis-à-vis the applied-for mark and identified goods, it is that mark that is most likely to support a finding of likelihood of confusion. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), applicant’s application file. In addition, the parties introduced the following testimony and evidence: 3 Registration No. 3878197, registered on November 16, 2010. Opposition No. 91192917 4 A. Opposer’s evidence and testimony. 1. Notice of reliance on copies of opposer’s pleaded registrations printed from the electronic database records of the USPTO showing the current status and title of the registrations; 2. Notice of reliance on the discovery deposition of applicant with attached exhibits; 3. Notice of reliance on copies of decisions of the Trademark Trial and Appeal Board sustaining eight oppositions in favor of opposer involving other bird designs; 4. Notice of reliance on unsolicited print publications available to the general public to show the public’s exposure to information about opposer; and 5. The testimony deposition of Steve Kubinski, opposer’s Vice President of Marketing, with attached exhibits. B. Applicant’s evidence. Applicant submitted a notice of reliance on the following items: 1. An excerpt from a third-party website purporting to show a dove used in connection with clothing;4 2. A third-party application for a mark featuring a bird silhouette for clothing and an excerpt from the website showing use of that mark;5 4 Applicant introduced into the record an excerpt from the Selena Gomez Dream Out Loud website (http://www.selenagomezdreamoutloud.webs.com/) purporting to show a dove as part of her trade name or trade dress. However, the excerpt made of record did not show the use of a bird design. 5 Applicant submitted a copy of the HOLLISTER and design application (Serial No. 85193900). Pending applications are evidence only that the applications were filed on a certain date; they are not evidence of use of the marks. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Opposition No. 91192917 5 3. An excerpt from a website explaining the significance of doves in the Bible; and4. Copies of documents previously filed in this proceeding. We note that opposer has objected to most of the exhibits introduced by applicant through his notice of reliance. The Board is capable of weighing the relevance and strength or weakness of the objected-to evidence in this specific case, including any inherent limitations, and this precludes the need to strike the evidence. Given the circumstances herein, we choose not to make specific rulings on each and every objection. As necessary and appropriate, we will point out in this decision any limitations applied to the evidence or otherwise note that the evidence cannot be relied upon in the manner sought. While we have considered all the evidence and arguments of the parties, we do not rely on evidence not discussed herein. Standing and Priority Because opposer has properly made its pleaded registrations of record, 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). In addition, Section 2(d) priority is not an issue in this case as to the marks and the goods covered by the pleaded registrations made of record. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Likelihood of Confusion Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699 (TTAB 1992). Opposition No. 91192917 6 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, 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 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”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. A. The similarity or dissimilarity and nature of the goods, the likely-to-continue channels of trade and classes of consumers. The identification of goods in the application and opposer’s registrations include, inter alia, jackets, shirts, pants, footwear and headwear. Therefore, the goods of the parties are in part identical. It is not necessary that all of the goods listed in the application and registrations be related. In the context of likelihood of confusion, it is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the description of goods in the application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). Opposition No. 91192917 7 Because the goods described in the application and opposer’s registrations are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“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.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Applicant argues that because his clothing line is “inspirational wear,” the trade channels and classes of consumers are different. [Applicant] produces “inspirational wear” at this time with plans to expand the line to other items in the future. The main focus is T-shirt at this time. All of the shirts carry a message. The trade channel may not be similar, nor the consumers that purchase the products, but Applicant wanted the opportunity to have availability in the marketplace for purchases by consumers without limitations or restrictions. Restrictions of whom to sell and where (groups and organizations) unfair [sic] limitations.6 The problem with applicant’s argument is that his identification of goods is not limited to “inspirational wear” and there are no restrictions or limitations as to channels of trade and classes of consumers in his identification of goods. Because the scope of the registration applicant seeks is defined by its application (and not by 6 Applicant’s Brief, p. 5. Opposition No. 91192917 8 its actual use) it is the application (and not actual use) that we must look to in determining applicant’s right to register: 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. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Likewise, because there are no limitations as to channels of trade or classes of purchasers in the identification of goods in opposer’s registrations, we must presume that opposer’s goods move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods, including purchasers of “inspirational wear.” See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera- Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). In view of the foregoing, we find that the goods are in part identical and that there is a presumption that the goods move in the same channels of trade and are sold to the same classes of consumers. B. The strength of opposer’s mark. Applicant argues, in essence, that there are numerous bird marks in use on clothing and, therefore, opposer’s mark is a weak mark entitled to only a narrow Opposition No. 91192917 9 scope of protection or exclusivity of use.7 To support this argument, applicant submitted a copy of an excerpt from a third-party website displaying the mark HOLLISTER and a bird design shown below for clothing. The probative value of the website is limited because there is no evidence regarding the extent of public exposure to the HOLLISTER and design mark. There is no evidence regarding how many prospective customers have seen the website, the number of customers the company has or the trading area for this company. See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 n.5 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 n.16 (TTAB 1996). Moreover, one third-party use of a mark that is arguably not as similar in appearance to applicant’s mark as opposer’s mark is not sufficient for us to find that consumers are so used to seeing marks containing the silhouettes of birds for clothing that consumers can distinguish between them. We find that opposer’s mark comprising the silhouette of a bird when used in connection with clothing is an arbitrary mark and inherently strong. C. The similarity of the marks in their entireties in terms of appearance, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 7 Applicant’s Brief, p. 5. Opposition No. 91192917 10 USPQ at 567. 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). In comparing the marks, we are mindful that where, as here, the goods are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Also, the test 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 impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the goods at issue are clothing, the average customer is an ordinary consumer. Opposit Whe marks m Sausage consider side-by- often of similar 229 US silhouet the fiel silhouet confusio Whe them ar in the impress As indic ion No. 91 n, as here ust be de Mfg. Co ation mus side in th a general, despite dif PQ 237 tes of a ma d of healt tes of a ma n). Applic n the mar e detectab marks w ions. Both ated in th 192917 , the mark cided prim ., 16 USP t be given e marketp rather th ferences b (TTAB 19 n and wom h and bea n and wom ant’s Mark ks are pla le. Howev hen view marks dep e previous s at issue arily on th Q2d 2044 to the fac lace and a an specific etween the 86) (holdi an, used uty aids, an, used ced side-b er, that is ed side-b ict the sil section, w 11 are both e basis of , 2047 (T t that the purchase , nature; t m. See, e.g ng mark in connect and mark in connect y-side for not the tes y-side, th houette of e note th design ma visual sim TAB 199 marks us r’s recolle hus the m ., In re Un consisting ion with d consistin ion with sk Opp compariso t. Notwith ey engend a dove in e strong a rks, the si ilarity. E.g 0). As in ually will ction of de arks may ited Serv. of a de istributors g of a de in cream, oser’s Ma n, specific standing er simila flight with rbitrary ch milarity of ., In re Vie dicated ab not be vie sign mark be confusi Distribs., sign featu hip servic sign featu likely to c rk difference the differe r comme wings spr aracter of the nna ove, wed s is ngly Inc., ring es in ring ause s in nces rcial ead. the Opposition No. 91192917 12 marks when used in connection with clothing. In view thereof, we find that the marks are similar in terms of appearance and commercial impression. D. Balancing the factors. Because the marks are strong arbitrary marks engendering similar overall commercial impressions and because the goods are in part identical with a presumption that they move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark so resembles opposer’s mark as to be likely to cause confusion. Because we find that applicant’s mark is likely to cause confusion with opposer’s mark and registration to applicant is refused, we do not need to decide whether applicant had a bona fide intent to use his mark when he filed his application. Decision: The opposition is sustained and registration to applicant is refused.

Retail Royalty Company v. Michael R. Longshore