The Black Dog Tavern Company, Inc.v.Joseph J. Juras

Trademark Trial and Appeal Board

Dec 2, 2008

No. 91153557 (T.T.A.B. Dec. 2, 2008)

Hearing: Mailed:
August 21, 2008 December 2, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

The Black Dog Tavern Company, Inc.
v.
Joseph J. Juras
________

Oppositions Nos. 91152364 and 91153557
against Serial Nos. 75510968 and 75518819
_______

Emily LaPointe of The Black Dog Tavern Company, Inc., and
John L. Welch of Lowrie, Lando & Anastasi, LLP for The
Black Dog Tavern Company, Inc.

Daniel T. Earle and James E. Shlesinger of Shlesinger
Arkwright & Garvey LLP for Joseph J. Juras.
_______

Before Bucher, Walsh and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Joseph J. Juras seeks registration on the Principal
Register of the mark YELLOW DOG NANTUCKET (in standard
character format) for “clothing, namely, t-shirts,
sweatshirts, pants, sweatpants, caps, hats, socks,
underwear, boxer-shorts, visors, and jackets” in
International Class 25; and for the following mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Oppositions Nos. 91152364 and 91153557
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for goods, as amended, ultimately limited to “T-Shirts” in
International Class 25. 1
In this consolidated proceeding, The Black Dog Tavern
Company, Inc. has opposed both applications filed by Mr.
Juras on the ground of priority of use and likelihood of
confusion, alleging that applicant’s marks, when used in
connection with the recited goods, so resemble its word mark
THE BLACK DOG and its standing black dog design mark, both
shown in the registrations listed below, as to be likely to
cause confusion, to cause mistake or to deceive, under
Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d):
THE BLACK DOG for “restaurant and bakery shop services”
in International Class 42;2

1 Application Serial No. 75510968 was filed on June 30, 1998
based upon applicant’s claims of first use anywhere and first use
in commerce at least as early as July 3, 1997. Applicant does not
claim rights to the word “Nantucket” apart from the mark as shown.
This application inadvertently issued on May 31, 2005 as Reg. No.
2956378, but was cancelled because the instant opposition had been
timely filed with the Trademark Trial and Appeal Board.
Application Serial No. 75518819 was filed on July 9, 1998
based upon applicant’s claims of first use anywhere and first use
in commerce at least as early as July 3, 1997. Applicant does not
claim rights to the word “Nantucket” apart from the mark as shown.
The mark is lined for the color yellow and color is claimed as a
feature of the mark.

2 Registration No. 1559349 issued on October 3, 1989; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

Oppositions Nos. 91152364 and 91153557
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for “restaurant and bakery shop services”
in International Class 42;3
THE BLACK DOG for “tinned cookies and bakery goods” in
International Class 30;4

for “clothing, namely, hats, t-shirts,
sweatshirts and shorts” in International
Class 25;5
THE BLACK DOG for “printed matter, namely catalogues
published periodically featuring clothing,
food, jewelry, toys and gift items” in
International Class 16;6
THE BLACK DOG for “wine” in International Class 33;7

for “jewelry, namely, pins, charms,
pendants; wall clocks” in International
Class 14;8
THE BLACK DOG for “clothing, namely, hats, t-shirts,
sweaters, vests, polo shirts, chambray
shirts, denim shirts, tank tops, jackets,
pants, dresses, skirts, pajamas, belts,
boxer shorts, and aprons; children's

3 Registration No. 1561546 issued on October 17, 1989; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

4 Registration No. 1593194 issued on April 24, 1990; renewed.

5 Registration No. 1620023 issued on October 30, 1990; renewed.

6 Registration No. 1882153 issued on March 7, 1995; renewed.

7 Registration No. 2000492 issued on September 17, 1996;
renewed.

8 Registration No. 2393737 issued on October 10, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

Oppositions Nos. 91152364 and 91153557
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rompers, onesies, sweatshirts, t-shirts,
sweatshirts, hats, shorts and jackets” in
International Class 25;9
THE BLACK DOG for “tote bags; all-purpose field bags;
carry-on bags; duffle bags; umbrellas;
insulated picnic bags; pet equipment,
namely, pet coats, pet leashes, and pet
collars” in International Class 18;10
THE BLACK DOG for “mugs; pet bowls; water bottles sold
empty; ice buckets” in International Class
21;11
THE BLACK DOG for “stuffed toy dogs; golf balls; plastic
flying discs” in International Class 28;12

for “china dishes; mugs; pet bowls; water
bottles sold empty; beverage glassware; ice
buckets; and coasters, not of paper or of
table linen” in International Class 21;13

9 Registration No. 2393742 issued on October 10, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
10 Registration No. 2396057 issued on October 17, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

11 Registration No. 2396058 issued on October 17, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

12 Registration No. 2396059 issued on October 17, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

13 Registration No. 2398106 issued on October 24, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

Oppositions Nos. 91152364 and 91153557
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for “tote bags; all-purpose field bags;
carry-on bags; duffle bags; umbrellas;
insulated picnic bags; pet equipment,
namely, pet coats, pet leashes, and pet
collars” in International Class 18;14

for “playing cards” in International Class
16;15

for “stuffed toy dogs; golf balls” in
International Class 28;16

for “beach towels; golf towels; burgees and
flags made of cloth; tablecloths; placemats
and napkins made of textiles; dish towels;
oven mitts; and bandanas” in International
Class 24;17
THE BLACK DOG for “beach towels; golf towels; burgees and
flags made of cloth; tablecloths; placemats
and napkins made of textiles; dish towels;
oven mitts; and bandanas” in Int. Cl. 24;18

14 Registration No. 2398107 issued on October 24, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

15 Registration No. 2408614 issued on November 28, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

16 Registration No. 2410612 issued on December 5, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

17 Registration No. 2436745 issued on March 20, 2001; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

18 Registration No. 2436746 issued on March 20, 2001; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

Oppositions Nos. 91152364 and 91153557
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for “rugs and doormats” in International
Class 27;19
THE BLACK DOG for “rugs and doormats” in International
Class 27;20

for “clothing, namely, hats, t-shirts,
sweaters, vests, polo shirts, chambray
shirts, denim shirts, tank tops, jackets,
pants, dresses, skirts, pajamas, belts,
boxer shorts, bathing suits and aprons;
children's rompers, children's underwear,
sweatshirts, t-shirts, sweatshirts, hats,
shorts, and jackets” in International Class
25;21
THE BLACK DOG for “retail store services in the field of
clothing and general merchandise; online
and catalog ordering services in the field
of clothing and general merchandise” in
International Class 35;22

for “retail store services in the field of
clothing and general merchandise; online
and catalog ordering services in the field
of clothing and general merchandise” in
International Class 35;23
THE BLACK DOG for “cocoa” in International Class 30;24

19 Registration No. 2487428 issued on September 11, 2001;
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

20 Registration No. 2487429 issued on September 11, 2001;
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

21 Registration No. 2842709 issued on May 18, 2004.

22 Registration No. 3005863 issued on October 11, 2005.

23 Registration No. 3008791 issued on October 25, 2005.

24 Registration No. 3014309 issued on November 15, 2005.

Oppositions Nos. 91152364 and 91153557
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THE BLACK DOG for “coffee” in Int. Class 30;25 and

for “coffee” in International Class 30;26

The record is also replete with
images supporting opposer’s allegations
of common law usage, over the years, of
composite marks consisting of various
combinations of these registered marks
in connection with clothing,
housewares, toys, gifts and other
merchandise, as well as in connection
with retail store services, online and
catalog ordering services, and
restaurant and bakery shop services.
27
28
29
Opposer also claims that Mr. Juras committed fraud on
the United States Patent and Trademark Office in the filing
of these applications.

25 Registration No. 3085458 issued on April 25, 2006.

26 Registration No. 3090049 issued on May 9, 2006.

27 Opposer’s web pages, “The General Store,” from 2002.

28 Douglas Dep. March 27, 2007, Exhibit 5.

29 Douglas Dep. March 27, 2007, at 23 – 28; Exhibit 8.
Oppositions Nos. 91152364 and 91153557
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Applicant, in his answers, denied all the essential
allegations of these claims.
The parties have fully briefed the issues in these
oppositions, and counsel for both parties appeared before
this panel of the Board at an oral hearing held at the
United States Patent and Trademark Office on August 21,
2008.
I. THE RECORD
By operation of Trademark Rule 2.122, 37 CFR § 2.122,
the records of these combined proceedings include the
pleadings and the files of the involved applications.
The records also include the following evidence:
A. Opposer’s Evidence

1. The testimony deposition taken March 27, 2007 of
Robert S. Douglas, Jr., with accompanying
exhibits, including opposer’s registrations.
Mr. Douglas is the son of the founder of
opposer, and serves currently as opposer’s Chief
Executive Officer.
2. Opposer’s March 30, 2007 Notice of Reliance,
having the transcript of the discovery deposition
of applicant, Joseph J. Juras, taken October 18,
2006, with Exhibits 1-6; applicant’s supplemental

Oppositions Nos. 91152364 and 91153557
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answers nos. 19-20 to opposer’s first set of
interrogatories to applicant; and applicant’s
responses, nos. 11-40 to opposer’s request to
applicant for admissions;
3. Opposer’s November 2, 2007 rebuttal testimony
transcript of Robert S. Douglas Jr. with
opposer’s accompanying Exhibits 1-2; and
4. Opposer’s November 13, 2007 Notice of Reliance,
having a letter from the Office of the
Commissioner for Trademarks dated October 21, 2005
with an attached Cancellation Order; reference to
Cape Cod and Islands from Wikipedia; pages from
INSIDERS’ GUIDE, CAPE COD AND THE ISLANDS; Massachusetts
Registry of Motor Vehicles; a reference to “Cape
Cod and the Islands” in NATIONMASTER-ENCYCLOPEDIA;
and reference to “The Black Dog” from Wikipedia.
B. Applicant’s Evidence
1. Applicant’s Notice of Reliance filing on July
31, 2007 having one hundred eighty-one third-party
registrations; a copy of applicant’s U.S.
Registration No. 2485108; and opposer’s
responses to interrogatory nos. 8 and 18, and
supplemental responses to interrogatory nos. 9 and
10; and
Oppositions Nos. 91152364 and 91153557
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2. Applicant’s July 26, 2007 deposition of Joseph J.
Juras, with Applicant’s Exhibits 1-81, through
Notice of Filing of Testimonial Transcript, dated
February 21, 2008.
II. PRELIMINARY MATTERS:
Applicant objects to five separate items submitted
under opposer’s rebuttal Notice of Reliance of November 13,
2007, alleging that these items comprise improper rebuttal
evidence. Rather than serving as proper rebuttal evidence,
applicant argues that this evidence is merely submitted in
order to strengthen opposer’s case-in-chief, and hence,
should be stricken from the record.
We find that opposer appropriately placed this rebuttal
evidence into the record in order to demonstrate for anyone
who may not know from the geography of Massachusetts the
proximity of Nantucket to Martha’s Vineyard and other
locations on the Cape having one of opposer’s general store
locations. Mr. Juras testified that he had never heard of
opposer or its marks in spite of having lived and worked in
Nantucket. He then argues in his brief that Martha’s Vineyard
and Nantucket are “separate islands with two separate names,
that do not sound or look alike.” (Applicant's Brief at
26). Because applicant has attempted to create a sense of
distance between Nantucket and Martha’s Vineyard, rebuttal
Oppositions Nos. 91152364 and 91153557
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evidence going to the proximity of Nantucket to Martha’s
Vineyard is appropriate.
Having determined that this general subject area is
appropriate for rebuttal evidence, we look further at
applicant’s objections to the reliability of the reliability
of Wikipedia website evidence. The NATIONMASTER-ENCYCLOPEDIA’S
reference to “Cape Cod and the Islands”30 suffers from the
same complaint that applicant lodged against “Cape Cod and
Islands”31 from the Wikipedia website. While we have in the
past noted the inherent problems regarding the reliability of
purported evidence drawn from wiki-type sites, we find that
these two articles merely corroborates information already

30 Geography
“… To the south [of Cape Cod] lie Nantucket Sound; Nantucket
and Martha’s Vineyard (both large islands) …”
Tourism
Although Cape Cod is inhabited all year round, it experiences
a tourist explosion each summer between Memorial Day and
Labor Day, as the New England cold gives way to a brief but
comfortable summer. Many businesses are specifically
targeted to the visitors, and close during the “off-
season”(roughly 8 to 9 months per year) …”
Islands off Cape Cod
Like Cape Cod itself, the islands off Cape Cod have turned
from being natural, whaling, and trading areas to resort
destinations, attracting old wealthy families, and prosperous
tourists alike. The islands include Nantucket and Martha's
Vineyard … Several prominent families have established
compounds or estates on the larger islands, making these Cape
Cod offshore islands some of the wealthiest resorts in the
Northeast, yet they retain much of the early merchant trading
and whaling culture.”
http://www.nationmaster.com/encyclopedia/Cape-Cod-and-Islands.

31 http://en.wikipedia.org/wiki/Cape_Cod_and_Islands

Oppositions Nos. 91152364 and 91153557
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in the record32 or sources on which we can take judicial
notice, such as the Columbia Encyclopedia (Sixth Edition),33
or even opposer’s INSIDERS’ GUIDE®, CAPE COD AND THE ISLANDS,
The Globe Pequot Press (6th Edition
2004). A copy of what appears to be
this book’s frontispiece is a map
showing the geographical proximity
of (1) the Cape, (2) Martha’s
Vineyard, and (3) Nantucket.
Later entries of shopping and restaurants located on the
Cape and the Islands list and describe several of opposer’s
retail locations in Martha’s Vineyard, Falmouth, etc.

32 It is clear that Martha’s Vineyard and Nantucket are
neighboring, well-known resort and vacation islands that along
with Cape Cod are often referred to as “The Cape and the Islands
”or“ Cape Cod and the Islands
“Nantucket is approximately ten miles to the southeast and
[this region] is often referred to on maps and charts as
Cape Cod and the islands. Both islands are famous
destinations, summer destinations.”).
(Testimonial Deposition of Robert S. Douglas, Jr. on March 27,
2007 at 14.

33 Martha’s Vineyard: SE Mass., separated from the Elizabeth
Islands and Cape Cod by Vineyard and Nantucket sounds …. In
the late 1800s the island, with its harbors, beaches, and
scenic attractions, developed into a summer resort.
http://www.bartleby.com/65/ma/MarthasV.html
Nantucket: SE Mass., lying c.25 mi (40 km) S of Cape Cod,
from which it is separated by Nantucket Sound. Muskeget
Channel is located between Nantucket and Martha’s Vineyard to
the west… Nantucket was a major whaling port until the
decline of the industry (c.1850), and it later developed into
a well-known resort and artists’ colony….
http://www.bartleby.com/65/na/Nantucke.html
Oppositions Nos. 91152364 and 91153557
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The Massachusetts Registry of
Motor Vehicles issues license
plates demonstrating that
“Cape Cod & Islands” are
often considered together. 34
This information, contained in these websites, is “not
subject to reasonable dispute” and is “capable of accurate
and ready determination.” See Fed. R. Evid. 201(b).
We turn then to applicant’s final objection, namely an
entry from Wikipedia for “The Black Dog” Tavern Company,
Inc.:
The Black Dog
From Wikipedia, the free encyclopedia

The Black Dog is a restaurant and tavern in Vineyard Haven on the island of
Martha's Vineyard. The restaurant became well known for its souvenir t-shirts,
featuring its logo of the eponymous black dog. They subsequently expanded to
sell other products with the same logo.

The Black Dog t-shirts became well-known during the 90s as photographs of
celebrities wearing the shirts began appearing in national publications. For
example, a photograph of then-President Bill Clinton jogging while wearing
one was distributed by national wire services.

Marketing at The Black Dog was effective. During the early 90s, the
merchandise was only sold at the Martha's Vineyard location. Only a limited
number of people were allowed in the store at one time, so lines formed down
the wooden fenced ramp that ran from the front door. While waiting in line,
visitors were given catalogs to browse. Nowadays, the merchandise is also
available at "mainland" Cape Cod and Newport "Black Dog" stores as well as
online. 35

34 http://www.mass.gov/rmv/express/cape.htm

35 http://en.wikipedia.org/wiki/The_Black_Dog

Oppositions Nos. 91152364 and 91153557
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Applicant questions in particular the reliability of
this information, inasmuch as this wiki entry had last been
modified only eight days before opposer’s Notice of Reliance
was filed. While this entry draws on many of the same
public source citations used herein, and there is really
nothing in this entry that is not otherwise corroborated
elsewhere in the record, we acknowledge that applicant had
no opportunity to rebut the specific conclusions (e.g.,
opinion of the author as to the success of opposer’s
marketing, the renown of opposer’s T-shirts, etc.) in this
wiki entry. Accordingly, we have not considered the
contents of this article in reaching our decision herein.
III. FACTUAL FINDINGS
The record establishes the following facts in this
case.
Opposer -- The Black Dog Tavern Company, Inc.
Captain Robert Douglas, Sr. founded The Black Dog
Oppositions Nos. 91152364 and 91153557
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Tavern Company on Martha’s Vineyard,
Massachusetts. He named the company
and the tavern after his pet Labrador-
boxer mix “Black Dog.” Since January
1971, opposer has used its standing
dog design and THE BLACK DOG marks for
restaurant and bakery shop services. 36
Soon thereafter, opposer began using these marks for a
wide range of retail store, gift and clothing items. The
single-page Black Dog retail mailer of 1987 soon gave way
to The Black Dog Catalogue. By 1992, it was necessary to
build a new Black Dog General Store, opening in 1993. What
began as a restaurant and bakery business in 1971 has over
the past two decades blossomed into a most successful
retail and dining services company, identified by
opposer’s signature marks. Opposer sells the many clothing
and gift items listed above under its marks nationally
through its printed catalog,37 on its www.theblackdog.com
website (launched in the year 2000),38 and at its seventeen
retail stores in Massachusetts, Rhode Island, Maine and

36 Douglas Dep. March 27, 2007, Exhibit 5;
https://www.theblackdog.com/OurFamily.aspx as accessed by opposer
on March 26, 2007.

37 Douglas Dep. March 27, 2007, at 29 – 50.

38 Douglas Dep. March 27, 2007, at 24,

Oppositions Nos. 91152364 and 91153557
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Connecticut -- including a store in Nantucket,
Massachusetts.39 As we will see in more detail later,
opposer’s marks have enjoyed substantial exposure in the
media and have become well-known to the general public.
While the dollar volume of its sales of retail products has
overtaken its dining services, opposer continues to offer
dining services at The Black Dog Tavern and at its bakeries
in Vineyard Haven, Massachusetts.
40
41

39 Douglas Dep. March 27, 2007, at 21 – 22, 26 – 27, 82.

40 Douglas Dep. March 27, 2007, Exhibit 5;
https://www.theblackdog.com/Cafe.aspx and
https://www.theblackdog.com/Bakery.aspx as accessed by opposer on
March 26, 2007.

Oppositions Nos. 91152364 and 91153557
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Applicant -- Joseph J. Juras
Mr. Juras adopted his YELLOW DOG NANTUCKET mark and
applied it to T-Shirts, claiming to have sold a dozen shirts
in Nantucket in the summer of 1997. He filed the two
involved applications a year later. Since that time,
applicant claims to have sold a large volume of T-shirts
throughout the United States, and alleges expansion (since
around 1999) into other items of clothing, such as caps,
visors, sweatshirts, hats, socks, pants, shorts and boxer
shorts. Applicant sells his merchandise over the Internet
at www.yellowdognantucket.com. The website’s “Yellow Dog
Store” offers clothing items such as caps, shirts and
visors, a large oval sticker, a beach bag, coffee, wine, a
large sign showing a standing yellow dog, a children’s book
about the Yellow Dog of Nantucket, etc.42 However, other
than his often vague and sometimes contradictory testimony,43
applicant’s initial invoice for twelve shirts44 and his

41 Douglas Dep. March 27, 2007, Exhibit 5;
https://www.theblackdog.com/Cafe.aspx as accessed by opposer on
March 26, 2007.

42 Juras Dep. July 26, 2007, at 11 – 26.

43 Compare the contents of the July 26, 2007 testimony
deposition of Joseph J. Juras with the discovery deposition of
Joseph J. Juras, taken October 18, 2006, at 11 – 88.

44 Juras Dep. July 26, 2007, Exhibit 1.

Oppositions Nos. 91152364 and 91153557
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demonstration of a presence on the Internet45 comprise the
strongest evidence he has produced in this proceeding to
support the conclusion that he is operating an ongoing,
commercially-viable retail business.
IV. ANALYSIS
A. Standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be (is)
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer has submitted evidence of its ownership of
its various registrations for THE BLACK DOG and the dog
design covering a wide range of goods and services, including
clothing items, as well as proof of its common law usage of
the THE BLACK DOG and the dog design marks. This evidence

45 Juras Dep. July 26, 2007, Exhibit 11.

Oppositions Nos. 91152364 and 91153557
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is sufficient to establish opposer’s interest and,
therefore, standing, in this proceeding.
B. Priority
Because opposer has established that it owns valid and
subsisting registrations of its pleaded marks, priority is
not an issue. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125 (TTAB 1995).
As to opposer’s common law use of its marks in
connection with a variety of goods and services, including
clothing items, opposer has demonstrated use at least as
early as the summer of 1989.46 This date precedes
applicant’s filing date (June 30, 1998) or any other date on
which applicant can rely based on its testimony of record.
In light of this evidence, we award priority to opposer
herein.
C. Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. Our determination
must be based upon our analysis of all of the probative

46 Douglas Dep. March 27, 2007, Exhibit 8A (cover of Summer 1989
catalog).

Oppositions Nos. 91152364 and 91153557
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facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
Commercial strength of opposer’s marks
If proved, the renown of the prior mark plays a
dominant role in the likelihood of confusion analysis. Bose
Corp. v. QSC Audio Prod. Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner
Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame for likelihood of
confusion purposes arises “as long as a significant portion
of the relevant consuming public … recognizes the mark as a
source indicator.” Palm Bay Imports, Inc. v. Vueve Clicquot
Oppositions Nos. 91152364 and 91153557
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Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005).
With significant sales, extensive advertising and
continuous use of Opposer’s marks for almost thirty years
for dining services and over two decades on a wide range of
merchandise, and given the ongoing, favorable publicity
opposer’s services and products have received, we find that
opposer’s marks have achieved a degree of fame, and serve as
strong indicators of source for Opposer’s products and
services. Specifically, the record shows that:
47
• Opposer has advertised
extensively in a wide range of
publications including Audubon,
Better Homes and Gardens, Bon
Appetit, The Boston Globe,
Esquire, House and Garden,
Martha Stewart Living, The New
York Times, The New Yorker, Rolling Stone
Magazine and The Wall Street Journal;48

47 Douglas Dep. March 27, 2007, Exhibit 3F (Martha’s Vineyard
Chamber of Commerce flier of 1977.

48 Douglas Dep. March 27, 2007, at 66 – 67; Exhibit 12.

Oppositions Nos. 91152364 and 91153557
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• sales of this “Vineyard conglomerate” from 1987 to
2006 were approximately $150 million;49
• during this same period, opposer spent more than
$15 million in promotional expenditures;50
• In 2006 alone, Opposer mailed out approximately
378,000 of its catalogues;51

“…What the Lacoste alligator shirt was to the 1970s,
and Ralph Lauren’s polo pony to the ‘80s,
the Black Dog threatens to become to the ‘90s … .”53

49 Douglas Dep. March 27, 2007, at 72.

50 Douglas Dep. March 27, 2007, at 71 - 72.

51 Douglas Dep. March 27, 2007, at 50.

52 Douglas Dep. March 27, 2007, Exhibit 2A (“Legend of The Black
Dog”).

53 Douglas Dep. March 27, 2007, Exhibit 14I (“Martha’s Vineyard,
Putting On the Dog,” The Washington Post, August 31, 1994, article
on front page of Style section at C1).

• Opposer has been recognized in
numerous publications including The
Boston Globe, The New York Times,
USA Today and The Washington Post,
which said:
52
Oppositions Nos. 91152364 and 91153557
- 23 -
54
• Photographs and articles have shown that
celebrities, including former President Bill
Clinton,55 and household names such as Brooke
Shields,56 Matthew Perry,57 Tom Welling,58 Billy
Joel, Henry Winkler and Spike Lee have been
known to wear merchandise featuring prominently

54 Douglas Dep. March 27, 2007, Exhibit 14F.

55 Douglas Dep. March 27, 2007, Exhibit 15A.

56 Douglas Dep. March 27, 2007, Exhibit 15B.

57 Douglas Dep. March 27, 2007, Exhibit 15C.

58 Douglas Dep. March 27, 2007, Exhibit 15D.

Oppositions Nos. 91152364 and 91153557
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the silhouette of a standing Labrador-boxer mix
and/or the words, THE BLACK DOG.59
Based on the totality of this record, we find that
opposer has created a most successful marketing strategy for
its brand. Robert L. Bowden’s book of watercolors entitled
“On Martha’s Vineyard,” depicting scenes from this popular
island destination60 includes “The Black Dog Tavern” with an
insightful quotation:
27. THE BLACK DOG TAVERN
2002, watercolor, 16½” x 10½”
The famous Black Dog.
Is there anything more to be said?

Inasmuch as the word “famous” is a term-of-art in the
field of trademark law, we do not find it necessary to adopt

59 Douglas Dep. March 27, 2007, at 20, 83 – 84.

60 Douglas Dep. March 27, 2007, Exhibit 16C.
Oppositions Nos. 91152364 and 91153557
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Bowden’s exact characterization, but we do find that
opposer’s brand is well-known for dining services and retail
merchandise in the area of Cape Cod and the islands, and has
managed to develop a following among trend-setters coast-to-
coast. Opposer’s T-Shirt with the silhouette of a standing
lab is the item featured most prominently on its website and
in its catalogues, and is the item often worn by celebrities
that catches the photographers’ lenses. Composite marks
consisting of combinations of the standing dog design, the
words THE BLACK DOG, and “Martha’s Vineyard,” “Nantucket,”
or other place names having opposer’s general stores, all
blended together with opposer’s New England aura, reinforce
the connection between this imagery and The Black Dog Tavern
Company of Martha’s Vineyard.
Accordingly, with respect to the commercial strength of
opposer’s marks – that is, the degree of renown THE BLACK
DOG, the standing dog design, as well as their combination,
often in conjunction with references to popular vacation
spots on the Cape and the islands, may have acquired on the
basis of opposer’s use and promotion – we conclude that
opposer’s signature marks comprise well-known, commercially-
strong marks as applied to restaurant services and
collateral merchandise, including specifically T-shirts.
Oppositions Nos. 91152364 and 91153557
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Hence, this factor strongly favors a finding of likelihood
of confusion.
The goods and services
The goods as identified by the respective applications61
and registrations are identical in part, and otherwise, are
all closely related. As seen on the parties’ respective
websites, both opposer and applicant are promoting many of
the same types of goods, i.e., items usually marketed to
tourists on a summer beach vacation.
Hence, this du Pont factor favors the position of
opposer herein. And of course, when marks would appear on
virtually identical goods, the degree of similarity in the
marks necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. V. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700-01 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
Trade channels and Conditions of sale
Considering the parties’ respective goods and services
as identified in the applications and cited registrations,

61 In Application Serial No. 75510968, the identical goods to
opposer’s registrations include t-shirts, sweatshirts, pants,
sweatpants, caps, hats, boxer-shorts and jackets. Opposer has
demonstrated common law usage of its marks on socks and visors.
In Application Serial No. 75518819, the goods in common are
limited to T-shirts.
Registrant’s most relevant registrations are Reg. Nos.
1620023, 2393742, 2842709, 3005863 and 3008791.
Oppositions Nos. 91152364 and 91153557
- 27 -
it is clear that they are all offered to the same classes of
ordinary purchasers – members of the general public. The
common goods, such as T-shirts, are inexpensive clothing
items often purchased on vacation as a souvenir. Under
these circumstances, they are not the type of goods
typically investigated thoroughly before purchase, resulting
in an impulse transaction involving ordinary care, at best.
Confusion under these circumstances is not likely to be
dispelled (if at all) until after the decision to purchase.
Accordingly, we conclude that the conditions of purchase are
such that they would in no way diminish the likelihood of
confusion in this case.
Based on testimony62 and even a computer generated map
made a part of the record,63 applicant sells his T-shirts and
other clothing items at the Sunken Ship, a store within
blocks of opposer’s general store in Nantucket.64 Tourists
to the Cape and the islands – including those who may have
wandered into the Sunken Ship selling YELLOW DOG NANTUCKET
T-shirts – are likely to have seen THE BLACK DOG marks on T-
Shirts, on The Black Dog Tavern, on one of opposer’s
seventeen general stores, and would have already drawn a

62 Douglas Dep. March 27, 2007, at 89 – 91.

63 Douglas Dep. March 27, 2007, Exhibit 21.

64 Douglas Dep. March 27, 2007, at 89 – 91.
Oppositions Nos. 91152364 and 91153557
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connection between this prominent standing dog and opposer’s
dining services and extensive merchandising operations.
Moreover, based upon the identical goods identified by
applicant and by opposer, and where neither identification
has any limitations as to channels of trade, we must presume
that the respective goods will necessarily move through the
same trade channels to the same classes of purchasers.
In addition to brick-and-mortar stores, both opposer65
and applicant66 promote their merchandise online, and offer
these items for sale over the Internet. To the extent that
applicant is actually conducting an ongoing business, his
website would appear to be applicant’s primary means for
selling his T-shirts and other items of clothing.
Hence, whether one considers the online market or the
island tourists and residents, these products share exactly
the same channels of trade.
Accordingly, we find that these related du Pont factors
favor the position of opposer herein.
The marks
In comparing the marks we must consider the appearance,
sound, connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. 73 USPQ2d at 1692.

65 Douglas Dep. March 27, 2007, Exhibit 5.

66 Douglas Dep. March 27, 2007, Exhibit 18.
Oppositions Nos. 91152364 and 91153557
- 29 -
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods are identical.
Century 21 Real Estate Corp. 23 USPQ2d at 1700-01. As noted
above, the goods in this case are identical.
As to the degree of similarity between the two involved
word marks alone (i.e., opposer’s THE BLACK DOG versus
applicant’s YELLOW DOG NANTUCKET67) – but for the fact that
opposer’s mark is so well known – we would find this factor
to be a close call. Absent the renown of opposer’s
enterprise, the mere presence of the common word “Dog”
within a composite mark applied to clothing and gift items
available in tourist-heavy locations may well not prove
sufficient to support a finding of likelihood of confusion
herein. However, we are not limited to this comparison.
Additionally, as to the differences in the appearance
of the design marks, applicant argues that:
The differences between Applicant’s marks and
Opposer’s marks are simple and clear. The
only similarity between the marks is … the
fact that both designs show a realistic
depiction of a dog.

67 Although we do note that in reality, applicant often shortens
the wording within the textual portions of his website, referring
repeatedly to merely “the Yellow Dog.”

Oppositions Nos. 91152364 and 91153557
- 30 -
It is true that opposer’s standing dog faces to the
left in the images shown on the registrations reviewed
above, while applicant’s standing dog faces to the right. It
is also true that applicant’s dog is heavier than opposer’s
dog, having a thicker coat, creating larger legs, tail, neck
and head. Inasmuch as none of opposer’s design mark
registrations claim color, opposer is free to give its black
dog “a coat of many colors,” and the legal significance of
this registered image is in the silhouette design.68

Of course, a side-by-side comparison of the marks is
not the test we employ inasmuch as we must assume that
potential purchasers may encounter opposer’s marks in one
context at a given time and applicant’s marks separately in
a different context at a later time. This circumstance
enhances the likelihood of confusion. Hence, in our

68 Furthermore, it seems from the evidence of record that
opposer used images of its standing dog in a range of colors prior
to applicant’s adoption of his mark. See Douglas Dep. March 27,
2007, at 28; Exhibits 8G, 8H, 8I, 8J and 8L.

Oppositions Nos. 91152364 and 91153557
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comparison of the marks at issue, we must take into account
the fallibility of human memory and strictly avoid a
simplistic side-by-side comparison. See Grandpa Pidgeon’s
of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); and Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
As to appearance, opposer argues as follows:
Opposer’s Dog Design depicts a Labrador-like
standing dog in profile with its head up and
its tail curved upward. The dog wears a
collar. Touches of white are on the dog’s
muzzle and paws. Applicant’s design mark
also shows a Labrador-like standing dog in
profile with its head tilted at an angle
similar to that of the Opposer’s Dog Design.
Applicant’s dog is wearing a collar and also
has white on its muzzle and paws.

Applicant appears to use his standing dog design with
the wording, “Yellow Dog Nantucket” (green T-Shirt below at
right) as in SN 75518819, and at times, without the wording
(cap below at right). In either case, what is most
remarkable is the striking similarity in appearance of two
labs assuming a quite similar posture:
Oppositions Nos. 91152364 and 91153557
- 32 -
69
70

71

Additionally, as we have seen, in
actual practice, opposer also uses its
dog facing right, from usages over the
years in opposer’s catalogue and online 72
store, to the many popular images of the iconic sign for the
Black Dog Tavern as seen when facing Vineyard Haven Harbor:

69 https://www.theblackdog.com/images/product_images/full/
L095.jpg?1174935405437 as accessed by opposer on March 26, 2007.

70 Douglas Dep. March 27, 2007, Exhibit 18B,
Yellow Dog Vintage T-shirt in long-sleeve
The Yellow Dog Vintage wash T-shirt in long-sleeve.
A very soft t-shirt!
List Price: $21.99
http://yellowdognantucket.com/item.html?UCIDs=595338&PRID=973625
as accessed by opposer on March 26, 2007.

71 Douglas Dep. March 27, 2007, Exhibit 18B,
Yellow Dog Visor
List Price: $23.99
Yellow Dog Visor. 100% garment washed cotton with the Yellow Dog
on the front.
http://yellowdognantucket.com/item.html?UCIDs=595338&PRID=910471
as accessed by opposer on March 26, 2007.

72 Opposer’s web pages, “The General Store,” from 2002.

Oppositions Nos. 91152364 and 91153557
- 33 -
73
Incorporating the word portions of the marks, applicant
argues that the word portion of its composite mark “is
relatively small, fitting between the legs” of applicant’s
standing dog, while opposer’s wording is relatively large,
extending the full length of opposer’s standing dog design.

73 Douglas Dep. March 27, 2007, Exhibit 2A, 5, 14J, 16A and 16C.
https://www.theblackdog.com/Tavern.aspx

Oppositions Nos. 91152364 and 91153557
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Again, the test is not a side-by-side comparison. On the
other hand, when afforded this side-by-side comparison, the
accumulated points of similarities in appearance and
commercial impression are quite remarkable, including the
general size and style of fonts employed in the wording
positioned beneath the respective standing dog images.
Hence, based upon the entire record herein – with the
various combinations of dog silhouettes, the word “DOG,”
font choices, listing popular localities in the Cape and the
islands, precisely the same placement on T-shirts and other
identical items of clothing, and especially in light of the
renown of opposer’s marks in connection with T-shirts on the
Cape and the islands – we find that the degree of similarity
in commercial impressions with applicant’s composite mark is
strongest when comparing opposer’s common law composite mark
as used above, as opposed to singling out the similarities
of any two registered marks. See e.g., Blansett Pharmacal
Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1477
(TTAB 1992).
In this context, we agree with opposer that applicant
has adopted a mark strikingly similar in connotation and
commercial impression to opposer’s previously used marks.
Accordingly, the confusing similarity of the marks is a
factor that strongly favors a finding of likelihood of
confusion in this case.
Oppositions Nos. 91152364 and 91153557
- 35 -
Third-Party Registrations
Applicant, in his testimony, notice of reliance and
appeal brief, repeatedly emphasizes a dozen third-party
registrations containing the words “Black Dog” (or “Black
Dawg”), some also including a depiction of a black dog. These
marks were registered in connection with a wide variety of
goods (e.g., newspaper columns, CD’s, books, gun cases,
motorcycles and beer) and services (e.g., computer, hunting,
yoga studio, online accounting, custom motorcycle
manufacturing, car wash, motion picture production, and
asphalt repair), listed below in the order in which the
registrations issued. In the case of many of these
registrations, applicant also demonstrated a presence by the
third-party registrant on the Internet:
BLACK DOG for “news column featuring
newsworthy information
included in a newspaper” in
International Class 16;
“computer services, namely,
providing on-line news column
featuring newsworthy
information included in a
newspaper” in International
Class 42;74

74 Registration No. 2545597 issued to Associated Newspapers
Limited, a U.K. corporation on March 12, 2002; Section 8 affidavit
(six-year) accepted and Section 15 affidavit acknowledged.

Oppositions Nos. 91152364 and 91153557
- 36 -

for “hunting guide services,
dog training” in
International Class 41;75

for a “yoga studio” in
International Class 41;76

75 Registration No. 2676517 issued on January 21, 2003; Section
8 affidavit (six-year) accepted. No claim is made to the words
“Black Dog Hunting Club & Training Kennels” apart from the mark as
shown. Applicant also located this registrant’s presence on the
Internet. See Footnote 96.

76 Registration No. 2693501 issued on March 4, 2003. No claim
is made to the word “Yoga” apart from the mark as shown.
Applicant also located this registrant’s presence on the Internet.
See Footnote 92.

Oppositions Nos. 91152364 and 91153557
- 37 -

for “gun cases” in
International Class 13;77
BLACK DOG for “providing software
application services to
others, namely industry
specific accounting software
systems via a global
communications computer
network” in International
Class 42;78
BLACK DOG CHOPPERS for “originally manufactured
and custom built motorcycles”
in International Class 12;79

for “custom manufacturing and
customizing of motorcycles”
in International Class 40;80

77 Registration No. 2810720 issued on February 3, 2004.

78 Registration No. 2890120 issued on September 28, 2004.

79 Registration No. 3049708 issued on January 24, 2006. No
claim is made to the word “Choppers” apart from the mark as shown.
Applicant also located this registrant’s presence on the Internet.
See Footnote 90.

80 Registration No. 3049711 issued on January 24, 2006. No
claim is made to the words “Custom Cycles,” “Pittsburgh
Pennsylvania,” “Hand Built,” “Built By,” And “Custom Choppers”
apart from the mark as shown. Applicant also located this
registrant’s presence on the Internet. See Footnote 90.
Oppositions Nos. 91152364 and 91153557
- 38 -

for “pre-recorded compact
discs and cd-roms featuring
fiction and non-fiction
books, reference books,
literary works, music,
written and spoken poetry,
cartoons, artwork, historical
content, and instruction in
the field of the arts” in
International Class 9;
“books, namely, fiction books
featuring a wide range of
subject matter; non-fiction
books on a variety of topics,
reference books on a variety
of topics; books featuring
photography, art, cooking,
architecture, humor, and
instructional and teaching
materials for children;
librettos; illustrated and
picture-based books” in
International Class 16;81
SPANISH PEAKS BLACK DOG ALE for “malt beverages, namely,
brewed malt-based alcoholic
beverage in the nature of a
beer” in International Class
32;82

81 Registration No. 3095002 issued on May 23, 2006. No claim is
made to the word “Publishers” apart from the mark as shown.
Applicant also located this registrant’s presence on the Internet.
See Footnote 97.

82 Registration No. 3135367 issued on August 29, 2006. No claim
is made to the word “Ale” apart from the mark as shown. Applicant
also located this registrant’s presence on the Internet. See
Footnote 89.
Oppositions Nos. 91152364 and 91153557
- 39 -

for “malt beverages, namely,
brewed malt-based alcoholic
beverage in the nature of a
beer” in International Class
32;83

for “car wash services” in
International Class 37;84
BLACK DOG FILMS for “entertainment services,
namely, the production and
distribution of general
entertainment, comedy, drama,
documentary, educational and
variety television programs
and motion pictures” in Int.
Class 41;85

83 Registration No. 3179699 issued on December 5, 2006. No
claim is made to the word “Ale” apart from the mark as shown.
Applicant also located this registrant’s presence on the Internet.
See Footnote 89.

84 Registration No. 3207441 issued on February 13, 2007. No
claim is made to the words “Car Wash” apart from the mark as
shown. Applicant also located this registrant’s presence on the
Internet. See Footnote 94.

85 Registration No. 3238904 issued on May 8, 2007. No claim is
made to the word “Films” apart from the mark as shown.
Oppositions Nos. 91152364 and 91153557
- 40 -
BLACK DAWG Sealcoat for “asphalt repair,
maintenance, sealing and
parking lot striping” in
International Class 37.86

Although applicant has shown that some of these
registrants have a presence on the Internet, we still cannot
be sure if these marks are known to an appreciable number of
consumers within the relevant purchasing public.
Nonetheless, we conclude that entrepreneurs in a variety of
fields have adopted the idea of a black dog, and often, it
seems, indications of a beloved pet Labrador, for their
source identifier. Applicant takes the position that in
light of these third-party registrations, opposer is saddled
with a weak, diluted mark entitled to a narrow scope of
protection. We disagree. We find that these specific goods
and services are not closely-related to opposer’s claimed
goods or services, and are not related at all to applicant’s
T-Shirts and other clothing items. Despite opposer’s having
introduced into the record articles that refer to opposer as
“legendary,” “trendy,” “famous,” “recognized world-wide,”
etc., opposer understands correctly that it is not entitled
to trademark rights in gross in the words THE BLACK DOG

86 Registration No. 3245570 issued on May 22, 2007. No claim is
made to the word “Sealcoat” apart from the mark as shown.
Applicant also located this registrant’s presence on the Internet.
See Footnote 88.

Oppositions Nos. 91152364 and 91153557
- 41 -
and/or to every image of a black lab that would preclude the
registration to another of the same or a similar mark in
connection with virtually any goods or services. On the
other hand, the record demonstrates that opposer has
successfully pursued legal actions against third-parties.
Furthermore, while we have found that the commercial
impression of applicant’s dog imagery is strikingly similar
to opposer’s standing dog image, most of these third-party,
“black dog” images are quite different from either the
opposer’s or the applicant’s design marks.
Finally, applicant has also placed into the record
copies of more than 150 other third-party registrations
having the word “Dog,” “Dogs,” “Dawg,” “Dawgs,” etc.,
somewhere within the composite mark. All these
registrations include, inter alia, goods in the clothing
class. Although applicant has also located some of these
same marks on the Internet, again, we cannot be sure if
these marks are known to an appreciable number of consumers
within the relevant purchasing public. Certainly, few
businesses of any size are currently without a web presence.
Moreover, we find that the third-party registered marks are
different as to sound, appearance, meaning and commercial
impression from both opposer’s marks and applicant’s marks.
Oppositions Nos. 91152364 and 91153557
- 42 -
In addition to third-party registrations, applicant has
placed into the record the following third-party usages of
the terms “Black Dog” or “Black Dawg” drawn from Internet
sites. As to these uses, applicant has no indication of the
nature and extent of the actual uses of these marks, and has
testified that he has neither knowledge nor evidence of
whether these marks are generally known to the relevant
purchasing public. The final one of these third-party
usages identified by applicant – a usage that would
otherwise be somewhat difficult for opposer to explain away
– is actually a licensee of opposer.87
for an asphalt
product in New
Hampshire88
BLACK DAWG
SEALCOAT
for an amber ale
brewed in Montana,
and related
merchandise89
SPANISH PEAKS BLACK
DOG ALE
for hand-built
custom chopped
motorcycles in
Pittsburgh, PA 90
BLACK DOG
CHOPPER
for a remodeling
company91

87 Douglas Dep., November 2, 2007, entire transcript, Exhibits 1
- 2.
88 http://www.blackdawgsealcoat.com/; Applicant’s Exhibit 18.

89 http://www.blackdogales.com/; Applicant’s Exhibit 19.

90 http://www.blackdogcustomcycles.com/; Applicant’s Exhibit 20.

91 http://www.blackdogbuilders.com/; Applicant’s Exhibits 28 and
30.
Oppositions Nos. 91152364 and 91153557
- 43 -

for a yoga studio in
Sherman Oaks, CA92
BLACK DOG YOGA
for software
services93 blackdogsoft.com
for four car washes
in SE NH94
BLACK DOG CAR
WASH
for a bed and
breakfast in Estes
Park, CO95 BLACK DOG INN
for a hunting club
in Arkansas96

an imprint of
Workman Publishing
Company located in
NYC, having
moderately-priced
cooking, history,
and other non-
fiction books97 Black Dog & Leventhal
for a graphic design
studio98
black dog design
used by an Idaho
manufacturer of
magazine parts for
military rifles99 BLACK DOG MACHINE

92 http://www.blackdogyoga.net/; Applicant’s Exhibit 25.

93 http://www.blackdogsoft.com/

94 http://blackdogcarwash.stores.yahoo.net/; Applicant’s Exhibit
21.

95 http://www.blackdoginn.com/; Applicant’s Exhibit 36.

96 http://www.blackdoghuntingclub.com/; Applicant’s Exhibit 29.

97 http://www.blackdogandleventhal.com/; Applicant’s Exhibit 24.

98 http://www.black-dog-design.com/; Applicant’s Exhibits 31 and
33.

99 Applicant’s Exhibit 22.

Oppositions Nos. 91152364 and 91153557
- 44 -
for a swimming club
in the Twin Cities,
MN100

for a studio that
does wedding and
other formal
photography101

for a coffee and
wine bar in St.
Paul, MN102

for specialty online
marketing and event
promotion company103

for cycling apparel104

for a semi-dry red
table wine; Château
Morrisette is
opposer’s licensee
in Floyd County,
VA.105

Other marks that applicant located with an Internet
search having the words “dog,” “dogs,” or “dawg” but not the
modifying word, “Black,” as used in connection with goods
such as human and canine clothing are also of little

100 http://blackdog.swimteamsystems.com/; Applicant’s Exhibit 38.

101 http://www.blackdogstudios.com/kds/index.html; Applicant’s
Exhibit 34.

102 http://www.blackdogstpaul.com/; Applicant’s Exhibit 35.

103 http://www.blackdogpromotions.com/; Applicant’s Exhibit 37.

104 www.blackdogbikes.com/; Applicant’s Exhibit 26.

105 http://www.chateaumorrisette.com/; Applicant’s Exhibit 23.

Oppositions Nos. 91152364 and 91153557
- 45 -
relevance in determining the appropriate scope of protection
to be provided for opposer:
for dog-themed
tees/tops from “In
the company of
Dogs”106

for
Bad Dog corduroy
shorts in
“military”107

for hats108

for AlphaDog brand
combat gear109

for performance
apparel110

for dog clothing111

106 http://www.inthecompanyofdogs.com/; Applicant’s Exhibit 53.

107 http://www.hsssurf.com/billabong-bad-dog-corduroy-shorts-
12500.html; Applicant’s Exhibit 58.

108 http://www.fataldog.com/; Registration No. 3206095.

109 http://www.alphadog.us/ or http://www.alphadog.tv/;
Applicant’s Exhibit 59.

110 http://estore.websitepros.com/1016950/StoreFront.bok;
Registration No. 3216378; Applicant’s Exhibit 57.

111 http://www.funnylittledog.com/; Registration No. 2970452;
Applicant’s Exhibit 62.

Oppositions Nos. 91152364 and 91153557
- 46 -
for merchandise sold
to promote the Lucky
Dog Music Hall in
Worchester, MA112

for merchandise sold
to promote the Wormy
Dog Saloon in
Oklahoma City113

for underwear114

for eyeglasses115
Dirty Dog Eyewear and Stuff
of Australia
for a dog bakery in
Austin, TX that also
sells dog toys and
gifts116

Old Dog Clothing
6822 Phillips Place Ct
Charlotte, NC 28210117

Clearly modifiers like “fatal,” “wormy,” “groovy,”
“old,” “speed,” or “funny” create such different

112 http://www.luckydogmusic.com/merchandise.html; Applicant’s
Exhibit 56.

113 http://www.wormydog.com/index.php; Registration No. 2955048;
Applicant’s Exhibit 63.

114 http://www.reddogsportswear.com/products.html; Registration
No. 2622372; Applicant’s Exhibit 67.

115 Applicant’s Exhibit 68.

116 http://www.groovydog.com/; Applicant’s Exhibit 60.

117 Applicant’s Exhibit 64.
Oppositions Nos. 91152364 and 91153557
- 47 -
connotations and commercial impressions from both opposer’s
and applicant’s marks as to be of little more than passing
interest. Opposer’s arbitrary, strong, well-known mark as
applied to its multi-million dollar merchandising enterprise
anchored in a dining services business is not weakened or
diluted by such different marks – most of which also happen
to be antithetical to opposer’s brand image.
In the category of random Internet usages that offer no
threat to opposer, applicant listed two “Dog” marks having
very different connotations and commercial impressions,
originating from individuals who make shirts available
through the online services of Cafepress.com:
118

118 Applicant’s Exhibit 65; Registration No. 2773568;
http://www.cafepress.com/cp/store.aspx?s=davisdog.0
Oppositions Nos. 91152364 and 91153557
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119
In a similar vein, applicant testified to his having
discovered the existence of Salty Dog Café apparel,120 Angry
Dog stencil silk screen by Dayna Gedney,121 Earth Dog
apparel,122 Sea Dog Brewing Company,123 FogDog merchandise,124
Biff … the Dog apparel,125 Wet Dog Designs,126 Two Dog Island
apparel,127 Planet Dog apparel,128 White Dog Café apparel,129

119 Applicant’s Exhibit 54; http://shop.cafepress.com/lucky-dog-
racing.

120 http://www.saltydog.com/; Applicant’s Exhibit 48.

121 http://www.indyish.com/angry-dog; Applicant’s Exhibit 79.

122 http://www.earthdog.com/; Applicant’s Exhibit 78.

123 http://secure.seadogbrewing.com/shop_wears.html; Applicant’s
Exhibit 76.

124 http://www.fogdog.com/home/index.jsp; Applicant’s Exhibit 75.

125 http://www.biffthedog.com/; Registration No. 2942350;
Applicant’s Exhibit 74.

126 http://www.wetdog.com/; Applicant’s Exhibit 73.

127 http://www.twodogisland.com/; Registration No. 2048365;
Applicant’s Exhibit 72.

128 http://www.planetdog.com/home/; Registration Nos. 2490661 and
2490662; Applicant’s Exhibit 71.

129 Applicant’s Exhibit 70.

Oppositions Nos. 91152364 and 91153557
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Blue Dog Café apparel,130 UpDog brand apparel,131 Give a Dog a
Home shirt (for sale on eBay),132 Lazy Dog Adventure Club
apparel,133 and a Pink Dog cap.134
Applicant also submitted photographs he allegedly took
in Nantucket around 2000, including of the Sun Dog store,135 a
T-shirt showing a hand-drawn “Vineyard Dog/ Martha’s
Vineyard” dog,136 The Bad Dog Nantucket,137 a crude, image of a
black dog,138 image of a “guard dog,”139 and a tall, thin,
standing black dog.140 We cannot be sure what all these
various photographs may actually represent, but the
testimony of Robert S. Douglas, Jr. – considered in

130 Applicant’s Exhibit 80.

131 Applicant’s Exhibit 66; Registration No. 2856738.

132 Applicant’s Exhibit 52.

133 http://www.lazydogadventure.com/; Applicant’s Exhibit 50.

134 Applicant’s Exhibit 47; Registration No. 3234287.

135 Applicant’s Exhibit 43.

136 Applicant’s Exhibit 42.

137 Applicant’s Exhibit 39; See also opposer’s Douglas Dep. March
27, 2007, Exhibit 14I, “Martha’s Vineyard, Putting On the Dog,”
The Washington Post, August 31, 1994: “So this summer rival
stores offer the Lazy Dog (a sleeping hound), Mad Dog (a snarling
shepherd) and the Bad Dog (a squatting dog about to do his doggy
business) … .”

138 Id.; applicant’s Exhibit 40.

139 Applicant’s Exhibit 41.

140 Applicant’s Exhibit 45.

Oppositions Nos. 91152364 and 91153557
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connection with various articles in the record – alludes to
an ongoing problem opposer has faced over the years (both
prior to and subsequent to applicant’s adoption of his mark)
with knock-offs designed to profit from opposer’s goodwill.
Accordingly, in spite of a plethora of documents
applicant has placed into the record, we find that the
purported evidence of actual third-party uses and/or
registrations fails to show that opposer’s marks are weak
for restaurant services, and even less so for its collateral
merchandise such as T-shirts.
Absence of actual confusion
Applicant argues that the apparent absence of evidence
of actual confusion indicates that there is no likelihood of
confusion here. Again, opposer disagrees noting that the
absence of actual confusion, by itself, does not mean that
there is no likelihood of confusion, and that the
circumstances present here explain the lack of such
evidence.
We agree with opposer. First, we note that the absence
of actual confusion does not necessarily lead to the
conclusion that there is no likelihood of confusion. In
this case, it is unclear whether there has been a true
opportunity for confusion. As noted above, the record is
most sparse in documenting the level of applicant’s sales.
Oppositions Nos. 91152364 and 91153557
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Consequently, the absence of actual confusion with regard to
sales is meaningless in light of the very limited evidence
of applicant’s sales on this record.
Accordingly, we conclude that this factor is neutral in
assessing the likelihood of confusion in this case
Bad Faith
Opposer has also argued vehemently throughout the
prosecution of these opposition proceedings that applicant
adopted his YELLOW DOG NANTUCKET marks in bad faith:
To top off his fictionalized account of his
business, Juras claims that he never heard of
Opposer or Opposer’s marks prior to starting
his business and that he has never seen
Opposer’s website at any time …. These claims
are utterly ludicrous. It requires one to
believe that it was sheer coincidence that
Juras chose a mark that includes a dog design
that is virtually identical to Opposer’s
design, that Juras just happened to select the
exact same, distinctive Caslon Antique font
that Opposer uses, that he by mere chance
included the name NANTUCKET — along with
Martha’s Vineyard, one of the two,
neighboring, popular tourist islands off Cape
Cod — as part of his mark, and that
serendipitously his rare venture into
advertising comprised a brochure that is a
knock-off of the images in Opposer’s
catalogs.

The only rational conclusion is that Juras
adopted his marks in a deliberate attempt to
trade off Opposer’s goodwill. Juras’s
copying of Opposer’s marks, font,
advertising, and overall aesthetic, coupled
with his inability to produce evidence that he
has a legitimate business as well as his
inability to explain why he adopted his marks
Oppositions Nos. 91152364 and 91153557
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indicates that Juras adopted his marks in bad
faith…

Obviously, Applicant Juras will say anything —
regardless of whether he is under oath and
sworn to tell the truth — rather than admit
that his “growing business” is a hollow and
illegitimate figment of his imagination.

Opposer’s reply brief, at 4 – 5.
Given the way in which most of the relevant du Pont
factors reviewed above favor a finding of a likelihood of
confusion, it is not necessary for us to find applicant
guilty of bad faith in order to conclude that there is
clearly a likelihood of confusion herein. Nonetheless, in
light of the renown of opposer’s marks, applicant’s
professed interests in images of dogs, his years of formal
education and professed business acumen, and his having
lived in Nantucket for one or more high-tourist seasons, we
find that his claimed ignorance of opposer’s well-known
enterprise and branding success prior to adopting his marks
and filing the involved applications strains credulity. As
a newcomer, under this set of circumstances, applicant had a
duty to select a mark that would not give rise to a
likelihood of confusion. e.g., Burroughs Wellcome Co. v.
Warner-Lambert Co., 203 USPQ 191, 200-01 (TTAB 1979).
Oppositions Nos. 91152364 and 91153557
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Conclusion on Likelihood of Confusion:
After careful consideration of all of the evidence of
record in this case related to the du Pont factors, we
conclude that opposer has established its claim of
likelihood of confusion under Trademark Act § 2(d).
In addition to its ownership of a large number of
federal registrations, opposer has established common law
rights in THE BLACK DOG, the standing dog image, the use of
both of these with localities such as Martha’s Vineyard, in
connection with T-Shirts and other items of clothing,
restaurant, bakery shop and other food and dining services,
etc., and that such use began long prior to the filing date
of the subject applications, and that such use has been
continuous.
Applicant’s marks are highly similar to opposer’s
marks. Given the fact that opposer’s marks are well-known
for its dining services and its collateral merchandise,
consumers are likely to assume that applicant’s YELLOW DOG
NANTUCKET T-shirts and other clothing items are sponsored
by or otherwise connected with opposer. Turner Entm’t Co.
v. Nelson, 38 USPQ2d 1942 (TTAB 1996).
Accordingly, we conclude that the use of applicant’s
marks would clearly give rise to a likelihood of confusion
in view of opposer’s previously-used and registered marks.
Oppositions Nos. 91152364 and 91153557
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Fraud on the United States Patent and Trademark Office
Opposer also alleges that applicant has committed fraud
on the Office in connection with the filing of both of these
use-based applications. Specifically, opposer points to the
fact that upon filing these applications in mid-1998,
applicant falsely stated that both his marks were in use on
eleven enumerated items of clothing, when in fact it is now
clear that neither mark was then in use on ten of the eleven
items listed. Accordingly, based on what it characterizes
as applicant’s blatantly and knowingly making false statement
in Juras’ Jurat, opposer has asked us to declare both
applications void ab initio.
By contrast, applicant argues that despite what were
admittedly misstatements made under oath, he never had intent
to commit a fraud on the United States Patent and Trademark
Office.
However, in light of our sustaining both oppositions
based upon a likelihood of confusion, we find that it is not
necessary to reach this issue in these proceedings.
Decision: The oppositions are hereby sustained
pursuant to Section 2(d) of the Lanham Act, and registration
to applicant is denied as to both applications.