R.M.S. Titanic, Inc.v.R.M.S. Ltd. N.Y.C.

Trademark Trial and Appeal Board

Nov 30, 1999

No. 91098964 (T.T.A.B. Nov. 30, 1999)

Hearing: Paper No.
December 1, 1998 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 30, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
R.M.S. Titanic, Inc.
v.
R.M.S. Ltd. N.Y.C.
_____
Opposition No. 98,964
to application Serial No. 74/442,212
filed on September 30, 1993
Opposition No. 99,005
to application Serial No. 74/442,213
filed on September 30, 1993
_____
Edward H. Rosenthal of Frankfurt, Garbus, Klein & Selz, P.C.
for R.M.S. Titanic, Inc.
Paul Adams of Peacock, Myers & Adams, P.C. for R.M.S. Ltd.
N.Y.C.
______
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Opposition Nos. 98,964
99,005
2
R.M.S. Titanic, Inc. has opposed the applications of
R.M.S. Ltd. N.Y.C. to register R M S TITANIC1 and TITANIC
(in block type)2 for clothing, namely T-shirts, sweatshirts,
shirts, hats and caps. As grounds for the oppositions,
opposer has alleged that it is the successor-in-interest to
Titanic Venture Limited Partnership; that opposer is the
sole owner of all salvage rights in the wreck of the RMS
Titanic, as well as all items recovered from the wreck; that
beginning in 1987 opposer has been conducting expeditions
and salvage operations with respect to the wreck; that
between 1987 and 1994 approximately 4000 artifacts have been
removed; that opposer’s activities with respect to the
wrecksite and salvage operations have been the subject of
worldwide media coverage, and the public recognizes
opposer’s association with the wreck, with the name Titanic,
and with various merchandise associated with the wreck and
the articles removed therefrom; that beginning in 19843
opposer has exhibited artifacts recovered from the wreck and
has used the name Titanic in connection with a worldwide
tour; that at the time the notices of opposition were filed

1 Application Serial No. 74/442,213, filed September 30, 1993
and asserting first use and first use in commerce on April 15,
1992.
2 Application Serial No. 74/442,212, filed September 30, 1993
and asserting first use and first use in commerce on April 15,
1992.
3 Based on the other allegations in the notice of opposition it
appears that the reference to 1984 is a typographic error.
Opposition Nos. 98,964
99,005
3
in 1995 plans were being made to begin a worldwide tour of
the artifacts, including in the United States, in 1996; that
applicant’s marks, when used in connection with applicant’s
goods, are likely to cause confusion or mistake or to
deceive; that applicant’s marks when used on its goods are
merely descriptive or deceptively misdescriptive of such
goods; that applicant’s marks falsely suggest a connection
with persons, living or dead, institutions, beliefs or
national symbols; that applicant’s marks are merely
ornamental and fail to indicate applicant as the source of
the goods; and that applicant’s marks, as used on the
specimens submitted with its applications, violate opposer’s
rights in opposer’s registration for WHITE STAR and design.
In its answers applicant admitted that it is aware of
an exhibit in the United Kingdom of artifacts recovered from
the wreck of the ship Titanic; and that there is a
registration for WHITE STAR which applicant has petitioned
to cancel; and denied the remaining salient allegations of
the notices of opposition.4

4 Applicant asserted, as affirmative defenses, that opposer
is barred by laches because its purported predecessor in
interest previously abandoned applications for trademarks
that include the word TITANIC, and because opposer and its
predecessor did not oppose or seek to cancel Registration
No. 1,548,153 for a mark which included the word TITANIC,
and against which applicant brought a partial cancellation
action. However, applicant did not argue these defenses in
its brief, and we therefore have deemed them to be waived.
Opposition Nos. 98,964
99,005
4
These opposition proceedings were consolidated by the
Board upon applicant’s uncontested motion, and because the
proceedings involved common factual issues.
The record includes the pleadings; the files of the
opposed applications; the testimony, with exhibits, of
opposer’s witness George Tulloch; of applicant’s witnesses
Nathan Korn, James Korn, and Sandra Szwarc; and of opposer’s
rebuttal witness James Korn. Opposer has submitted,
pursuant to a notice of reliance, a copy of its cancelled
registration for WHITE STAR and design and certain pages
from Books in Print 1997-98 by R.R. Bowker. Opposer also
submitted with its notice of reliance the results of a
search for the word “Titanic” in the database of Barnes and
Nobles’ “books in print.” Although this material is not
proper subject matter for a notice of reliance, applicant
has treated it as being of record, and we therefore deem it
to have been stipulated into the record.
Both opposer and applicant filed briefs on the case,
and opposer filed a reply brief. Both parties were also
represented at an oral hearing held before the Board.
The record shows that opposer, R.M.S. Titanic, Inc., is
the successor-in-interest to a company called Titanic
Ventures. Titanic Ventures was a partnership which was
created as a way to raise funds for a French governmental
oceanographic institute called IFREMER (Institute France for
Opposition Nos. 98,964
99,005
5
the Research and Exploration of the Sea). IFREMER had
discovered the wreck of the ship Titanic in 1985, and the
money raised through private investment in Titanic Ventures
was used to recover objects from the wreck. Hereafter, the
term opposer will be used to refer to the activities of both
Titanic Ventures and R.M.S. Titanic, Inc.
Opposer entered into an arrangement with IFREMER in
1987 by which opposer, as a result of its funding of
IFREMER, would attempt to recover and conserve artifacts
from the wreck Titanic and make a return on its investment
by presenting exhibitions to the public and selling video
and still images and merchandising materials related to the
ship. These plans included selling replicas of artifacts.
Opposer has conducted four expeditions to the wreck,
the first of which occurred in the summer of 1987, followed
by expeditions in 1993, 1994 and 1996. Although opposer’s
ultimate plan was to mount exhibitions of the artifacts in
the United States, it started with so-called test runs
abroad. Artifacts from the first expedition were first
exhibited in a Paris museum. Additional museum exhibitions
occurred in Scandinavia in 1991 and 1992, and in England in
1994. As part of these museum exhibitions opposer sold
collateral merchandise, such as mugs, T-shirts, flashlight
and pens. These items bore various “Titanic” related
markings, including the White Star flag and banner.
Opposition Nos. 98,964
99,005
6
Opposer engaged in discussions with various venues in
the United States about mounting exhibitions, including a
Maryland museum in 1990, Sea World in approximately 1992,
and the Chicago Museum of Science. The first exhibition in
the United States of artifacts opposer recovered from the
Titanic opened in Norfolk, Virginia in November 1996, and
went on to be displayed on the Queen Mary in California in
1997. A larger exhibition opened in Memphis, Tennessee in
1997. Clothing with the word “Titanic” on it was offered
for sale at all of these exhibits.
Opposer’s various recovery expeditions received a
significant amount of publicity. In particular, the “Today”
show did an on-site interview when the second expedition
returned to Norfolk with artifacts. A British television
crew joined the third expedition in 1994, and the
documentary they produced was televised on both British and
U.S. television.
Applicant was started in 1992, and it deals exclusively
with the sale of clothing related to the ship RMS Titanic.
This clothing was first sold at Kaufman’s Surplus, Inc., an
army-navy store in Manhattan, and at Kaufman West, a store
in New Mexico owned by the brother of applicant’s
president.5

5 Kaufman’s Surplus, Inc. is the family company of James Korn,
applicant’s president. Mr. Korn, who testified for applicant,
frequently used the word “we” without differentiating whether he
Opposition Nos. 98,964
99,005
7
The first item of clothing sold by applicant, in 1992,
was a T-shirt with the words WHITE STAR LINE (WHITE STAR
LINE was the shipping line which launched the ship Titanic),
a design of a flag, and the words TITANIC CREW on the front.
On the back were the words MAIDEN VOYAGE R◆M◆S TITANIC 1912.
The line has increased through the years, with the
introduction of T-shirts saying, in place of “CREW,” “FIRST
CLASS,” “LOOKOUT,” “STEERAGE,” “SHIPS’ OFFICER,” and
“MUSICIAN.” The most recent is a tank top with the words
“Titanic gymnasium.”
Applicant’s clothing has been sold at various museums
which have featured Titanic exhibitions or shows. For
example, the South Street Seaport Museum in New York has
ordered Titanic T-shirts, caps and Zippo lighters from
applicant; applicant’s T-shirts were also sold at a Fort
Lauderdale, Florida museum in connection with their IMAX
film Titanica.
In addition to T-shirts, applicant has sold seamen’s
caps with a band bearing the legend RMS TITANIC. At first
applicant used actual World War II vintage sailor’s caps;
subsequently it used replicas of a turn-of-the-century
seaman’s cap. Applicant also, beginning in 1994, started

was referring to applicant or to Kaufman’s Surplus, but because
on September 24, 1993 Kaufman Surplus assigned its rights in the
various Titanic trademarks to applicant, we have, unless
otherwise noted, collectively referred to both Kaufman and
applicant as “applicant.”
Opposition Nos. 98,964
99,005
8
selling a baseball cap bearing the words R 0 67,7$1,&RQ
the front.
Before discussing opposer’s grounds for opposition, we
must first determine what those grounds are. In its notices
of opposition opposer asserted that applicant’s mark
violated Section 2(a) of the Trademark Act. However,
opposer never referred to such a claim in its main or reply
briefs at trial. At the oral hearing opposer’s attorney was
asked if that claim had been waived, and even though the
attorney answered in the negative, opposer provided no
argument as to how it had established such a claim. Since
opposer obviously felt no need to discuss the Section 2(a)
claim which it apparently still asserts, we will not burden
this opinion with such a discussion. We will simply state
that opposer has failed to prove that its oppositions should
be sustained on the basis of Section 2(a).
Opposer also asserted in its notices of opposition that
applicant’s use of its marks in its specimens violated
opposer’s rights in the WHITE STAR name reflected in
opposer’s registration. Opposer did not argue this claim in
its briefs and, indeed, its registration for WHITE STAR was
cancelled for failure to file a Section 8 affidavit of use.
Accordingly, we deem this claim, to the extent that it can
even be considered a valid ground for opposition, to have
been waived.
Opposition Nos. 98,964
99,005
9
This brings us to the ground of likelihood of
confusion, one of the grounds asserted in opposer’s notices
of opposition which opposer also argued in its briefs.
Opposer’s notices of opposition with respect to this ground
are rather vague. As noted above, opposer essentially
alleged that it is the owner of salvage rights in the wreck
of the RMS TITANIC, and that as a result of its activities
with respect to the salvage operations the public has come
to recognize opposer’s association with the wreck, the name
TITANIC, merchandise associated with the wreck and artifacts
removed from the wreck. Opposer then alleged that
applicant’s use of its marks is likely to cause confusion,
but did not specify the specific goods or services in which
opposer has prior rights, and with which applicant’s use of
its mark is likely to cause confusion.
In its brief opposer has argued that it has been using
the marks TITANIC and RMS TITANIC in connection with its
research and recovery services since 1987. Although opposer
may have undertaken research (and this is not clear from the
record) and recovery activities, these activities do not
constitute services as contemplated under trademark law.
That is, opposer’s recovery activities were not services
provided to others, but were merely activities undertaken on
its own behalf. As for the services provided as part of its
museum exhibitions, the record is clear that opposer did not
Opposition Nos. 98,964
99,005
10
provide such services in the United States until 1996, a
date long after the filing of applicant’s applications.
Opposer also argues that as of 1987 it “sold and
distributed clothing, including T-shirts and caps, bearing
the marks TITANIC and RMS TITANIC, and offered those items
for sale in the United States.” Brief, p. 25. Opposer
bases this assertion on the testimony of George Tulloch, who
had been president of one of the partners of opposer’s
predecessor-in-interest. However, after reviewing Mr.
Tulloch’s testimony, and in particular the pages specified
by opposer in support of its assertion, we find the
testimony in this regard to be very vague. Specifically, in
response to the question “were these things actually offered
for sale, the caps and hats,” Mr. Tulloch stated:
They were offered for sale to people who
would have been entitled to be
considered rightful to. Some you would
give away. I can recall the police in
San Pierre [France] where the shops went
out were very helpful, the customs
officials, et cetera. We sent free
pieces to those people and to other
people, I’ve mentioned other
institutions.
But to other people we would sell them.
They wanted them and we sold them to
them, not on a large scale, because we
were not ready with an exhibition, but
we were building towards what we were
intending to do, but, yes, some were
sold.
Q.: Were these to individuals, the ones
that were sold to individuals, in the
United States?
Opposition Nos. 98,964
99,005
11
A.: Yes, people that would be related—I
mean, the jackets, a lot of this
material—it just was not our business to
give away merchandise and they would
want a jacket or a hat or whatnot, and
they would have to pay, and, you know,
that’s in New York and Connecticut and
Georgia and California, wherever certain
people wanted them.
Tulloch testimony, pp. 15-16
Later in his testimony, again at the pages particularly
pointed to by opposer, Mr. Tulloch stated:
…this might have been for interested
parties who said, wonderful expedition,
can I buy some pieces and I can’t really
swear which invoice this represents, but
we did have people who wanted jackets
and hats and whatnot, and we had to –
just as you saw, as you noted in that
December letter where we gave the police
in San Pierre, four hats, four patches,
we needed to buy these things for people
who either graciously earned them or who
wanted to buy them.
Tulloch testimony, p. 136.
This testimony is not sufficient to establish that
opposer was making public sales of clothing sufficient to
establish trademark rights in the United States in TITANIC
or any mark containing this term.6 On the contrary, it
appears to us that clothing bearing the word TITANIC was not

6 It appears from Mr. Tulloch’s testimony, which we reiterate is
rather vague, that any reference to TITANIC which would have
appeared on clothing in 1987 was as part of a circular logo in
which the words EXPEDITION TITANIC 1987 appear in the top portion
of a band encircling the globe on which a large design of an
ocean liner appears. Other wording is also in this band.
Opposition Nos. 98,964
99,005
12
sold to the public at large, but was given or sold only to
those who had a relationship to the expedition.
Subsequent to the 1987 expedition and prior to the
filing of applicant’s applications on September 30, 1993,
opposer’s sales of TITANIC related merchandise were limited
to Europe, where exhibitions of artifacts recovered from the
wreck had been mounted. Any such sales abroad did not
establish opposer’s trademark rights in the United States.
Accordingly, we find that opposer has not proven that
it has prior rights in the trademark TITANIC, and its
Section 2(d) ground for opposition must accordingly fall.7
This brings us to opposer’s primary ground for
opposition. Although opposer has characterized this ground
as both that applicant’s marks are merely descriptive and
that they are ornamental, it appears to us that the gravamen
of opposer’s opposition is that applicant’s marks are
ornamental and therefore fail to function as trademarks
indicating the source of applicant’s goods.
After reviewing applicant’s various uses of TITANIC and
RMS TITANIC in connection with its T-shirts, caps and hats,
we agree with opposer that these words will not be perceived

7 In view of opposer’s failure to prove trademark rights in
TITANIC for clothing prior to applicant’s filing date, we need
not engage in a discussion of applicant’s claim of rights in
certain T-shirt designs featuring the ship Titanic which were
originally owned by Patrick and Sandy Szwarc, d/b/a Rising Sun,
and which became the property of Kaufman Surplus Inc. (not
applicant) in an agreement dated August 28, 1996.
Opposition Nos. 98,964
99,005
13
as an indicator of source of applicant’s goods, but merely
as a reference to the ship Titanic. As indicated above,
applicant uses TITANIC on the front of its T-shirts, and RMS
TITANIC on the back, as shown below.

Opposition Nos. 98,964
99,005
14
Since the ship Titanic is famous because it sank on its
maiden voyage in 1912, consumers would perceive the term RMS
TITANIC as used on the T-shirts as referring only to the
ship, and not to the source of the shirts. Similarly, the
word TITANIC on the front of the shirt, used in conjunction
with WHITE STAR LINE, the company which owned the ship,
would be seen as a reference to the ship alone. These
T-shirts also bear a tag attached to the neck label, one
side of which has the same wording as on the back of the
T-shirts (i.e., MAIDEN VOYAGE, R M S TITANIC, 1912), and the
other side has the same material as the front of the T-shirt
(i.e., WHITE STAR LINE, a flag with a single star, and
TITANIC), with just the particular title of CREW, MUSICIAN,
etc. omitted. The MAIDEN VOYAGE side of the tag also
contains, in very small letters, the legend “Titanic, R.M.S.
Titanic, White Start Line and the Pennant Design are
Trademarks of R M S Ltd N Y C.” The tags are shown below.
Opposition Nos. 98,964
99,005
15
Again, we find that the impression on consumers of the
words TITANIC and RMS TITANIC on these neck label tags is
merely of a reference to the ill-fated ship Titanic, rather
than as an indicator of source of the shirts. We say this
despite the legend on the tags asserting TITANIC and RMS
TITANIC to be trademarks of applicant’s. Merely asserting
that a term is one’s trademark, or having the intention to
claim it as a mark, is not sufficient to show that it does
in fact function as a mark. Given the small size of the
legend, and the strong impression, from all the material on
the fronts and backs of the shirts, as well as the neck
tags, that TITANIC and RMS TITANIC are merely references to
the ship, consumers are unlikely to note the legend or to
ascribe source-indicating significance to the words TITANIC
and RMS TITANIC.
As for the use of RMS TITANIC on applicant’s caps,
applicant has not made of record the original seamen’s caps
on which it first used the phrase. Judging from the
replicas of the turn-of-the-century seamen’s caps which
feature a band with the words R 0 67,7$1,&FRQVXPHUVZRXOG
view such phrase as merely a reference to the ship, and the
caps as reflecting the kind of cap worn by sailors on the
ship, rather than viewing the words as a trademark
identifying the source of the caps. This impression is
Opposition Nos. 98,964
99,005
16
heightened by the label, which includes the legend “Property
of WHITE STAR LINE RÂ067,7$1,&
Because applicant was required to have used TITANIC
and RMS TITANIC in a trademark manner as of the time it
filed its applications, see the interlocutory decision in
Century 21 Real Estate Corp. v. Century Life of America,
10 USPQ2d 2034 (TTAB 1989), reversed on other grounds, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), it is not
necessary for us to examine applicant’s uses of TITANIC
and RMS TITANIC which were first made after September 30,
1993. However, we note for the record that none of
applicant’s uses of these terms function as a trademark.
Rather, they would be perceived by consumers as merely
referring to the ship Titanic, and thus are ornamental
uses.
Decision: The opposition is sustained on the ground
that the applied-for terms, as used by applicant, fail to
function as trademarks for applicant’s goods, and are merely
ornamental uses. The opposition is dismissed as to the
remaining grounds pleaded in the notices of opposition.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board