Rolex Watch U.S.A., Inc.v.PRL USA Holdings, Inc.

Trademark Trial and Appeal Board

Jun 7, 2012

No. 91170868 (T.T.A.B. Jun. 7, 2012)

Mailed: June 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Rolex Watch U.S.A., Inc.
v.
PRL USA Holdings, Inc.
_____

Opposition No. 91170868
to application Serial Nos. 78797200 and 78797255
filed on January 23, 2006
_____

Gary D. Krugman of Sughrue Mion PLLC for Rolex Watch U.S.A.,
Inc.

Scott Gelin of Greenberg Traurig, LLP for PRL USA Holdings,
Inc.
______

Before Grendel, Kuhlke and Ritchie, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, PRL USA Holdings, Inc., seeks registration
of the marks RALPH LAUREN RLX and RLX RALPH LAUREN in
standard characters for goods identified in the applications
as “jewelry and watches” in International Class 14.1

1 Respectively, Serial Nos. 78797200 and 78797255, both filed on
January 23, 2006, based on allegations of a bona fide intention
to use the marks in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. §1151(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91170868
2
Opposer, Rolex Watch U.S.A., Inc., opposed registration
of applicant’s marks on the ground that, as used in
connection with applicant’s goods, the marks so resemble
opposer’s previously used and registered mark ROLEX for
“watches, watch bracelets, and related jewelry products” as
to be likely to cause confusion, to cause mistake, or to
deceive under Trademark Act Section 2(d), 15 U.S.C.
§1052(d).
By its answer applicant denied the salient
allegations.2
EVIDENCE OF RECORD
The evidence of record consists of: (1) the pleadings;
(2) the files of the opposed applications; (3) opposer’s
notices of reliance on its pleaded registrations,
applicant’s responses to opposer’s interrogatories nos. 9-
11, and printed publications; (4) opposer’s testimony
deposition, with exhibits, of Peter Nicholson, opposer’s
Vice President and Director of Communications; (5) opposer’s
declaration with exhibits of Thomas D. Dupont, opposer’s
survey expert (submitted pursuant to stipulation by the
parties);3 (6) applicant’s notices of reliance on printed

2 We have not considered applicant’s inadequately pleaded and
untried affirmative defenses of “laches, estoppel and/or
acquiescence.”

3 Applicant’s motion to exclude the declaration and survey
evidence attached thereto is denied, as discussed below.

Opposition No. 91170868
3
publications,4 opposer’s responses to certain of applicant’s
discovery requests, and the discovery deposition, with
exhibits, of Thomas D. Dupont; (7) 63 registrations for
RALPH LAUREN formative trademarks and one for the mark RLX
(submitted pursuant to stipulation by the parties); and (8)
applicant’s testimony depositions, with exhibits, of Talbot
Logan, applicant’s Vice President of Wholesale Initiatives
and Brand Presentation, and Sasha Kelly, applicant’s Senior
Vice President of RLX Brand and Outerwear Division.
As noted above, applicant moved to exclude the
declaration and accompanying exhibits of opposer’s survey
expert, Mr. Thomas D. Dupont, on the grounds that “such
evidence is not relevant and/or material to the analysis of
the issue that is currently before the Board.”5 Applicant
argues that because the survey only measures consumer
perception of the term RLX and does not include the marks in
issue, RLX RALPH LAUREN and RALPH LAUREN RLX, the survey and
Mr. Dupont’s analysis is fatally flawed inasmuch as they do
not address whether or not there is any likelihood of
confusion between the marks in issue and opposer’s ROLEX
mark. In addition, applicant contends that the survey is

4 In footnote 6 of its brief, opposer notes that applicant did
not indicate the relevance of these materials in its notice of
reliance. However, any objection on this basis is deemed waived
inasmuch as it was not raised promptly. Hunt-Wesson Foods, Inc.
v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979).

5 App. Br. p. 1.
Opposition No. 91170868
4
over inclusive in that it was not limited to include only
consumers of watches that cost “at least $1,000.”6
Opposer responds that the survey was properly conducted
and introduced into the record. Further, opposer argues
that applicant does not contest Mr. Dupont’s qualifications
or the “methodology in connection with which the survey was
designed, administered and analyzed.”7 Opposer contends
that “the issue of the survey’s relevance or materiality to
the issues presented herein goes only to the weight to be
afforded the survey evidence and not to whether it should
somehow be excluded.”8 Opposer explains that the “survey
was conducted early in this case, when Applicant also sought
to register RLX by itself as a trademark for jewelry and
watches. ... [and] was designed to measure consumer
perception as to the source of watches sold under the name
RLX.”9
The record establishes Mr. Dupont as a qualified survey
expert and the survey was properly conducted, employing the
Eveready format. Union Carbide Corp. v. Ever-Ready, Inc.,
531 F.2d 366, 188 USPQ 23 (7th Cir. 1976). As to
applicant’s contention that the universe of consumers in the

6 App. Br. p. 5.

7 Reply Br. p. 2.

8 Id.

Opposition No. 91170868
5
survey is over inclusive, the identification of goods in the
applications and opposer’s pleaded registrations are not
limited by cost, channels of trade or classes of consumers,
and, as such, the failure to limit the survey universe by
cost is not a flaw. With regard to the survey’s relevance,
this proceeding had been consolidated with Opposition No.
91169129 wherein opposer opposed applicant’s application
Serial No. 78528608 for the mark RLX. The survey was
conducted prior to applicant’s unconsented abandonment of
the RLX application. On April 17, 2009, the Board entered
judgment against applicant as to Opposition No. 91169129
based on the unconsented abandonment of application Serial
No. 78528608. While the survey has less probative value as
to the remaining applications, it is not so wholly
irrelevant as to warrant exclusion. At a minimum, the
survey serves to show consumer perception as to one element
of applicant’s mark.
In view thereof, applicant’s motion to exclude is
denied. However, as applicant argues, we must consider the
marks in their entireties, which limits the probative value
of the survey, in particular under the circumstances of this
case, where the additional material consists of an extremely
well-known mark.
THE PARTIES AND MARKS IN ISSUE

9 Id. at 3.
Opposition No. 91170868
6
Opposer is the “exclusive distributor of Rolex Watches
in the United States” which are sold through approximately
“700 official Rolex jewelers.”10 Only four to six Rolex
jewelers sell Rolex watches exclusively, the remaining
stores sell multiple brands.11 The trademark ROLEX is on
every watch.12
Opposer’s pleaded registrations are set forth below:
Registration No. 101819, issued on January 12,
1915 (renewed), for the mark for
“watches, clocks, parts of watches and clocks, and
their cases,” in International Class 14; and

Registration No. 1753843, issued on February 23,
1993 (renewed), for the mark ROLEX (in typed form)
for “jewelry” in International Class 14.

Opposer has never used the term RLX on its watches or
in its advertising.13
Applicant “is a leader in the design, marketing and
distribution of premium lifestyle products [which include] a
full range of men’s, women’s and children’s fashions,
footwear, jewelry, luxury watches, handbags, fragrances, and
consumer goods” offered under the RALPH LAUREN house mark.14
Between 2004 and 2007, applicant sold watches produced by

10 Nicholson Test. pp. 9-10.

11 Id. p. 19.

12 Id. at 11.
13 Nicholson Test. pp. 71, 81; App. Not. Rel. Exh. 1 Response to
Applicant’s Requests for Admissions Nos. 2 and 3.

14 App. Br. p. 7; Logan Test. pp. 10-11, 13, 34-35.
Opposition No. 91170868
7
the company Suunto and the watches had both the Suunto and
RLX brands on the goods.15 Applicant has at least 63
registrations for the mark RALPH LAUREN for various clothing
and accessory items.16 Applicant sponsors many athletic
events, including Wimbledon and the U.S. Open where the on-
court officials, ball boys and ball girls appear in uniforms
bearing the RALPH LAUREN marks and the arenas display images
of the RALPH LAUREN marks.17 Applicant has been using the
mark RALPH LAUREN RLX on clothing and accessories since
2004. An example of its use of the mark RALPH LAUREN RLX in
advertising for its goods related to one of its sponsored
athletes, golfer Luke Donald, is shown below.

15 Kelly Test. p. 22.

16 Applicant asserts that two of its registrations, Reg. Nos.
1835393 and 1972538 for “jewelry” cover watches as a subset of
jewelry. This is not the case as watches are not a “subset” of
jewelry and, in addition, based on the record these registrations
issued on May 10, 1994 and May 7, 1996, respectively, prior to
applicant’s use of any of its marks on watches.

17 Logan Test. pp. 19-24.

Opposition No. 91170868
8
18

Opposer and applicant advertise in the same magazines19
(e.g., GQ, VOGUE, Golf Digest), sponsor the same sporting
events (e.g., Wimbledon, the U.S. Open and the American
Junior Golf Association (AJGA))20 and, in some cases, even
sponsor the same athlete (e.g., Luke Donald).21 With regard
to the AJGA, the parties are the two major sponsors and
opposer’s ROLEX mark appears next to applicant’s RALPH
LAUREN mark in promotional materials, as shown below, and on

18 App. Not. Rel. Exh. 12 www.aspenpeak-magazine.com (page one of
a two page advertisement of RLX Ralph Lauren golf men’s
outerwear).

19 Nicholson Test. p. 25; Logan Test. pp. 14-15.

20 Nicholson Test. pp. 30-35; Logan Test. p. 19.

21 Nicholson Test. p. 49; Logan Test. p. 21.

Opposition No. 91170868
9
the same items of golf apparel (e.g., golf shirts and
vests).22

PRIORITY/STANDING
Because opposer’s pleaded registrations are of record,
are valid and subsisting, and owned by opposer, opposer’s
standing to oppose registration of applicant’s marks is
established 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 issue of likelihood of
confusion under Section 2(d).
LIKELIHOOD OF CONFUSION
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

22 Nicholson Test. pp. 35-48, Exh. 12-17.
Opposition No. 91170868
10
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Further, “[a]lthough confusion, mistake or deception about
source or origin is the usual issue posed under Section
2(d), any confusion made likely by a junior user’s mark is
cause for refusal; likelihood of confusion encompasses
confusion of sponsorship, affiliation or connection.”
Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1429 (TTAB 1993); Federal Bureau
of Investigation v. Societe: “M. Bril & Co.,” 172 USPQ 310,
315 (TTAB 1971) (under Section 2(d) party must show
purchasing public would mistakenly assume that the
applicant’s goods or services originate with, are sponsored
by, or are in some way associated with it”). See also
Majestic, 65 USPQ2d at 1205 (“...mistaken belief that [a
good] is manufactured or sponsored by the same entity ...
is precisely the mistake that Section 2(d) of the Lanham Act
seeks to prevent”); In re Save Venice New York, Inc., 259
F.3d 1346, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001) (“The
related goods test measures whether a reasonably prudent
consumer would believe that non-competitive but related
goods sold under similar marks derive from the same source,
or are affiliated with, connected with, or sponsored by the
same trademark owner”).
Opposition No. 91170868
11
Because fame plays a dominant role in the likelihood of
confusion analysis, we first address opposer’s assertion
that its mark is famous. Kenner Parker Toys Inc. v. Rose
Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992). See also 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). Finally, “[b]ecause 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.” Lacoste Alligator S.A.
v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009).
Applicant concedes that ROLEX is famous and, based on
this record, opposer has clearly established that its mark
is famous. Cf. Rolex Watch U.S.A. Inc. v. AFP Imaging
Corp., 101 USPQ2d 1188, 1193 (TTAB 2011) (ROLEX famous for
dilution purposes). Opposer has sold watches under the
ROLEX mark for approximately one hundred years in the United
Opposition No. 91170868
12
States.23 Over the past few years its sales and advertising
expenditures have been substantial. Opposer is the largest
advertiser of watches in the United States.24 In addition
to exposing consumers to its mark in all types of media,
television, outdoor billboard, radio, internet, widely-
distributed national magazines and newspapers, opposer
sponsors many well-known and viewed sporting events,
including Wimbledon, where its mark is displayed on the
courtside clocks on both ends of the court and during
television replays referred to as a “Rolex replay.”25
Opposer also sponsors the Masters, U.S. Open, British Open,
the PGA Championship, the Solheim Cup, the President’s Cup,
and the Ryder Cup which are all nationally televised and the
ROLEX mark is visible in advertising at these events.26
We turn now to consider the similarities between
opposer’s and applicant’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 application and registration, respectively. See
Octocom Systems Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The

23 Nicholson Test. pp. 14-15.

24 Id. at 58-59.

25 Id. at 24-31.

26 Id. at 32-33.
Opposition No. 91170868
13
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.”); and In re Elbaum, 211 USPQ 636
(TTAB 1981).
Opposer’s registrations cover watches and jewelry which
are identical to applicant’s listed goods, namely, jewelry
and watches. Further, inasmuch as the identifications of
goods are identical, in part, and given the lack of
restrictions in the identifications of goods, we must
presume for purposes of the likelihood of confusion
analysis, that the trade channels and classes of purchasers
overlap. Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) and Octocom, 16
USPQ2d at 1783.
The evidence shows that the ordinary channels of trade
for watches and jewelry includes department stores and
retail watch and jewelry stores. The purchasers of such
goods include ordinary, as well as, discriminating
consumers. Applicant’s arguments centered on the high price
of the parties’ respective goods, ignore well established
case law requiring that the analysis be based on how the
Opposition No. 91170868
14
goods are identified in the involved applications and
opposer’s registrations. As noted above, because there are
no limitations, we must consider all ordinary classes of
purchasers for watches and jewelry, regardless of price.
Further, we make our determination on the least
sophisticated within that class. Thus, we cannot limit our
analysis to the conditions of sale of watches priced at
several thousand dollars. In re Thomas, 79 USPQ2d 1021,
1024 (TTAB 2006) citing J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991) (Board must consider jewelry as encompassing all kinds
and styles of jewelry regardless of what the evidence might
show as to the actual nature of the jewelry). Moreover, if
we were to limit our analysis to a high price range, even a
discriminating purchaser of expensive watches or jewelry
could be confused as to source or sponsorship where
identical goods are sold under similar marks. See Weiss
Associates Inc. v HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990).
Thus, we turn to consider the parties’ respective
marks, ROLEX on the one hand, and RLX RALPH LAUREN and RALPH
LAUREN RLX on the other. We examine the similarities and
dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
Opposition No. 91170868
15
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). 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 their entireties that confusion as
to the source of the goods offered under the respective
marks is likely to result.
We first note that because applicant seeks registration
in standard characters, its mark is not limited to any
particular depiction. The rights associated with a mark in
standard characters reside in the wording and not in any
particular display. In re RSI Systems, LLC, 88 USPQ2d 1445
(TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d
2012, 2015 (TTAB 1988); TMEP 1207.01(c)(iii) (7th ed. rev.
2010). Thus, applicant’s possible portrayal of the X in a
different color or the minimal stylization in registrant’s
mark in Reg. No. 101819 cannot serve to distinguish the
marks, inasmuch as we must consider applicant’s mark
“regardless of font style, size, or color.” Citigroup Inc.
v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1258-59
(Fed. Cir. 2011). Further, we must consider possible
displays that may emphasize a particular portion of the
marks, e.g., applicant’s use of RLX RALPH LAUREN in
connection with its clothing items shown supra, wherein RLX
is in a larger typeface.
Opposition No. 91170868
16
Opposer argues that the RLX portion of the mark is
similar to its ROLEX mark based on: (1) the prior judgment
in Opposition No. 91169129 wherein applicant abandoned its
application for the mark RLX; (2) the Dupont survey wherein
61 percent of the survey respondent believed that opposer
was the source of watches sold under the RLX brand; and (3)
third-party use of RLX to refer to opposer.
With regard to the first point, while Opposition No.
91169129 does have preclusive effect for what was at issue
in that particular proceeding, i.e., the mark RLX for
jewelry and watches, the judgment is not similarly binding
as to the marks involved in this proceeding. First, claim
preclusion does not apply because the marks, i.e., the
transactional facts, are not identical. Chromalloy American
Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694,
222 USPQ 187 (Fed. Cir. 1984). Second, issue preclusion, or
collateral estoppel, does not apply because the prior
proceeding ended in default judgment and, therefore, the
issues were not fully litigated. Sharp Kabushiki Kaisha v.
ThinkSharp Inc., 448 F.3d 1568, 79 USPQ2d 1376 (Fed. Cir.
2006); In re Anderson, 101 USPQ2d 1912, 1917-1918 (TTAB
2012).
With regard to the asserted third-party use of RLX,
public use of a term may create “‘a protectable property
right in the term’ if the public has come to associate the
Opposition No. 91170868
17
term with the company or its goods or services.” Big Blue
Products, Inc. v. International Business Machines Corp., 19
USPQ2d 1072, 1074 (TTAB 1991). By its argument, it appears
opposer is not asserting such a protectable interest in RLX
but simply using third-party use as evidence of consumer
perception.
The evidence of third-party use of RLX in connection
with opposer’s watches is minimal, consisting of printouts
from only four websites and search results displayed by the
Google search engine. The first one, tradekey.com,
describes itself as “one of the leading B2B Marketplace that
helps rlx watches buyers to instantly connect with quality
rlx watches manufacturers & suppliers from all over the
world including rlx watches from China, USA, Turkey and
other countries.”27 The abbreviation is used infrequently
on this site and most notably simply as part of the internet
address extension (tradekey.com/ks-rlx-watches/). The next
example is someone offering a free application for the
window phone titled “Rlx Watch Guide” providing information
on Rolex watches. The final two examples are from German
websites,28 www.watch-tool.de and www.rlx-slaes.com “the
official sales corner of www.r-.-x-de.” To the extent these
examples have any relevance to U.S. consumer perception,

27 Opp. Not. of Rel.

28 The .de TLD indicates a German website.
Opposition No. 91170868
18
they have limited probative value. Finally, opposer
submitted the image results from a search on the Google
search engine of the phrase “rlx watch.” The image display
shows various Rolex watches. In all of these examples, the
mark ROLEX also appears on the webpage.
This evidence only shows four entities using the term
rlx to refer to Rolex and one search engine using the
abbreviation rlx to find and display Rolex watches. In
addition, there is no information as to how many U.S.
consumers have been exposed to this usage. Based on this
evidence of third-party usage, we cannot find that U.S.
consumers would view RLX as identifying opposer as the
source of the goods.
Finally, the survey, reporting consumer perception of
opposer as the source of RLX watches at 61 percent, is
certainly strong evidence as to the term RLX by itself, but
in the context of the entirety of the marks in issue, we
find it to be of minimal probative value.29
Conceding that applicant’s mark RALPH LAUREN is well
known, opposer frames the issue as follows:
Of course, consumers encountering RLX RALPH LAUREN
or RALPH LAUREN RLX watches will believe that the
watches emanate from or are in some way connected
to Applicant. Opposer concedes that point but

29 We do not, as applicant requests, make an adverse inference
based on opposer’s failure to proffer a survey for the marks in
issue. Hilson Research, Inc. v. Society for Human Resources
Mgmt., 27 USPQ2d 1423, 1435-36 (TTAB 1993).

Opposition No. 91170868
19
that concession does not resolve the issue. The
equally critical question is whether, because of
the prominent depiction of the RLX term, consumers
would also make an association between the watches
and Opposer. Would consumers believe that watches
sold under the RLX RALPH LAUREN or RALPH LAUREN
RLX marks have some connection with Opposer in
terms of whether such watches are manufactured by,
sponsored by, endorsed by or otherwise approved by
Rolex when such is not the case?

Opposer presented various examples where opposer and
applicant are both sponsors of an event or an athlete and
their marks are simultaneously displayed. For example, as
noted above, both parties sponsor the American Junior Golf
Association. In the AJGA handbook opposer’s Rolex mark
appears on the same page as applicant’s other marks, i.e.,
POLO, RALPH LAUREN and the horse and rider design.30
Another example is at Wimbledon where ROLEX is displayed,
inter alia, on the courtside clocks and the RALPH LAUREN
name is featured on court signage and on the ball boys and
umpires clothing.31 This type of overlap would also occur
at the U.S. Open where applicant is the official outfitter
and opposer also sponsors and prominently displays its ROLEX
mark.32 In addition, opposer’s ROLEX mark appears on the
outside of applicant’s polo shirts with the name RALPH

30 Nicholson Test. p. 39, Exh. 12 and 13.

31 Logan Test. p. 20.

32 Logan Test. p. 20; Nicholson Test. p. 32.

Opposition No. 91170868
20
LAUREN on the labels given out at various events.33
Finally, both parties sponsor some of the same athletes, for
example, Luke Donald who wears Ralph Lauren clothing when he
plays and once finished with his round of golf puts on his
ROLEX branded watch.34 Based on this record, there is no
question that the parties target similar consumers and offer
a similar lifestyle product and, to that end, overlap in
their marketing positioning by sponsoring similar types of
sporting events, e.g., tennis, golf, sailing.
Applicant argues that the addition of its well-known
house mark alleviates any possible likelihood of confusion.
Opposer responds that in general the addition of a house
mark does not mitigate confusion unless the common element
is weak or merely descriptive. See Knight Textile Corp. v.
Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (NORTON
MCNAUGHTON ESSENTIALS not confusingly similar with
ESSENTIALS).
Opposer is correct that generally the addition of a
house mark will not avoid confusion and, in fact, may serve
to increase likely confusion. In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010)
(applicant’s mark ML is likely to be received as a shortened
version of registrant’s mark, ML MARK LEES (stylized), when

33 Nicholson Test. p. 47, Exh. 16.

34 Id. p. 49.
Opposition No. 91170868
21
used on the same or closely related skin-care products); In
re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (CORAZON
BY CHICA with design, and CORAZON with design, both for
jewelry, likely to cause confusion, noting that, “to many
consumers, applicant’s mark for the identical word ‘Corazon’
followed by the phrase ‘BY CHICA’ will simply be viewed as
the identification of the previously anonymous source of the
goods sold under the mark CORAZON”). However, there is one
other exception where the addition of a house mark or other
matter may obviate confusion. When the additional matter,
including house marks, conveys a significantly different
commercial impression considering the marks in their
entireties, this may avoid likely confusion. Shen Mfg. Co.
v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350,
1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that
contemporaneous use of THE RITZ KIDS for clothing items
(including gloves) and RITZ for various kitchen textiles
(including barbeque mitts) is likely to cause confusion,
because, inter alia, THE RITZ KIDS creates a different
commercial impression).
We agree that RLX and ROLEX are not merely descriptive
or suggestive terms. However, to the extent any portion of
applicant’s marks is dominant, it would have to be the name
RALPH LAUREN which opposer concedes is a well-known strong
mark. This fact is also supported by the record.
Opposition No. 91170868
22
Further, although the letters RLX have no meaning in a
vacuum, when joined with the well-known name RALPH LAUREN
the letters serve as his initials RL combined with X,
indicating an expansion of his product line. Through the
testimony of Sasha Kelly, applicant’s Senior Vice President
of the RLX brand, the concept of the mark RLX derives from
RALPH LAUREN EXTREME.35 The X refers to products designed
“specifically for a sport end use ... for real athletes,
tested by athletes.”36
Certainly the mark ROLEX is famous and should be
afforded a broad scope of protection. In addition, these
parties substantially overlap in their channels of trade,
even to the point of being displayed in the same venue and
on the same person. However, given the different
connotation and commercial impression engendered by the
presence of the well-known mark RALPH LAUREN, when viewing
the mark in its entirety, consumers will perceive RLX as Mr.
Lauren’s initials and not an abbreviation of ROLEX. Even in
the case where the RLX is emphasized as shown supra, in view
of the strength of the RALPH LAUREN mark it still creates
the commercial impression of Mr. Lauren’s initials when
displayed alongside the well-known RALPH LAUREN house mark.

35 Kelly Test. p. 11.

36 Id. pp. 11-12.

Opposition No. 91170868
23
This case is distinguished from In re Christian Dior,
S.A., 225 USPQ 533 (TTAB 1985) where the Board found
applicant’s mark LE CACHET DE DIOR to be confusingly similar
to registrant’s mark CACHET. In that case, the Board found
that the addition of the house mark DIOR did not obviate
likely confusion and to the extent the DIOR name was well-
known that “would only serve to aggravate the likelihood of
confusion that would arise from the contemporaneous use of
the marks on the respective goods.” Id. at 535. In that
case, the common element did not create a different
connotation and commercial impression when used in
connection with the house mark.
Although not a “house mark” case, we find the case
before us more similar to Champagne Louis Roederer S.A. v.
Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir.
1998) where the Court affirmed the Board’s decision, that
despite the fact that the goods and channels of trade were
the same and plaintiff’s mark had “come to serve as a very
strong indication of origin for [its] champagne,” the marks
CRISTAL and CRYSTAL CREEK evoked very different images in
the minds of consumers sufficient to obviate a likelihood of
confusion. Id. at 1460, quoting, slip op. Opposition No.
91080932 at p. 9 (TTAB June 25, 1997). Here, as noted
above, the difference in connotation resulting from the
connection between the letters RL and the RALPH LAUREN name,
Opposition No. 91170868
24
create a different commercial impression than that of the
ROLEX marks.
With regard to the factor of actual confusion,
applicant asserts that it “has been selling a full line of
apparel under its RALPH LAUREN RLX brand since 1998 [and]
[s]ince that time, Applicant has marketed and sold its RALPH
LAUREN RLX branded apparel and accessories in major
department and fine retail stores, many of which also sell
Opposer’s Rolex watches [and] [o]pposer has not provided a
single instance of actual consumer confusion.”37 Further,
applicant notes that the record does not contain any
examples of actual confusion and it is not aware of any
instances of actual confusion.38
Opposer responds that the “fact that there is no
evidence of actual confusion is of no relevance to this
opposition brought against Applicant’s two marks for goods
described as jewelry and watches.”39 Further opposer notes
that the subject applications are based on intent to use and
there is no evidence in the record of use of either mark in
connection with watches and no evidence of an opportunity
for any confusion to have occurred.

37 App. Br. p. 25.

38 Kelly Test. p. 22.

39 Reply Br. p. 9.

Opposition No. 91170868
25
We find this factor to be neutral. As noted by
opposer, there is no evidence in the record of applicant’s
use of the subject marks on watches or jewelry.40
Because the marks are sufficiently different, the du
Pont factor of the dissimilarities of the marks outweighs
the other relevant du Pont factors discussed above. In view
thereof, we conclude that there is no likelihood of
confusion between applicant’s marks RLX RALPH LAUREN and
RALPH LAUREN RLX and opposer’s ROLEX marks. See Kellogg Co.
v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142,
1145 (Fed. Cir. 1991) (“We know of no reason why, in a
particular case, a single du Pont factor may not be
dispositive”). See also, In re E.I. du Pont de Nemours &
Co., USPQ at 567 (“[E]ach [of the thirteen elements] may
from case to case play a dominant role”).
Decision: The opposition is dismissed.

40 While there is testimony regarding the use of the mark RLX with
the mark SUUNTO on watches, this not the mark in issue here and
the testimony limits the trade channels of those watches to
applicant’s website and applicant’s stores. Kelly Test. p. 22.