Virgin Enterprises Limitedv.Steven E. Moore

Trademark Trial and Appeal Board

Aug 31, 2012

No. 91192733 (T.T.A.B. Aug. 31, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
April 10, 2012 August 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
––––––––––––
Trademark Trial and Appeal Board
––––––––––––
Virgin Enterprises Limited
v.
Steven E. Moore
––––––––––––
Opposition No. 91192733
to application Serial No. 77695546
filed on March 20, 2009
––––––––––––
Joseph V. Norvell, Joseph T. Kucala, Jr., and Sarah E. Dale, of Norvell IP LLC for
Virgin Enterprises Limited.
Steven E. Moore, pro se.
––––––––––––

Before Holtzman, Bergsman and Wellington,
Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:

Steven E. Moore (“applicant”) filed a use-based application on the Principal
Register for the mark VIRGINFARMS and design, shown below, for “agricultural grains
for planting; agricultural seeds; bulbs for agricultural purposes; plantable seed paper
comprised primarily of seeds for agricultural purposes; seeds for agricultural purposes;
spores and spawn; unprocessed seeds for agricultural use,” in Class 31.

Applicant disclaimed the exclusive right to use the term “VIRGIN FARMS.”
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Virgin Enterprises Limited (“opposer”) filed a notice of opposition against the
registration of applicant’s mark on the grounds of likelihood of confusion pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and dilution pursuant to Section
43(c) of the Trademark Act, 15 U.S.C. § 1125(c). Opposer alleged ownership and prior
use of forty-seven trademark and service mark registrations that constitute or include the
word “VIRGIN.”1 For purposes of this opposition, we focus on the following six
registrations for VIRGIN and VIRGIN-formative marks, because these marks are the
closest to applicant’s mark and cover goods and services that, when considered vis-à-vis
the applied-for mark and identified goods, are most likely to support a finding of likelihood
of confusion. See, e.g., In re Max Capital Group Ltd., 93 U.S.P.Q.2d 1243, 1245 (TTAB
2010).
1. Registration No. 1851817 for the mark VIRGIN, in typed drawing form, for
the following services:2
Transportation of goods and passengers by road and air, freight transportation
services; travel agency services, in Class 39; and
Bars; retail store services in the fields of cameras, records, audio and video tapes,
computers and electronic apparatus, and watches, sheet music, books and
photography, handbags, purses, luggage and leather goods, clothing, games, video
game machines and video game cartridges, in Class 42;
2. Registration No. 2770775 for the mark VIRGIN MOBILE, in typed
drawing form, for the following goods and services:3

1 Opposer did not plead a family of marks.
2 Issued August 30, 1994; first renewal.
3 Issued October 7, 2003; Sections 8 and 15 affidavits accepted and acknowledged.
Opposer disclaimed the exclusive right to use the word “MOBILE.”
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Mobile telephones, telephones and modems, and accessories therefor, namely,
batteries; battery chargers; cigarette lighter adapters; hands-free headsets; carrying
cases and belt clips, in Class 9;
Providing directory information via telephone, in Class 35; and
Telecommunications services, namely, transmission of voice, data, images, audio,
video, and information via telephone or the Internet; personal communications
services; pager services; electronic mail services; transmission or broadcast of news
and information for others via telephone, including the Internet, in Class 38;
3. Registration No. 2808270 for the mark VIRGIN ATLANTIC, in typed
drawing form, for “transportation of and arranging transportation of goods and passengers
by road and air; freight transportation services by air; transportation of human beings by
means of land vehicles; chauffeur services; travel agency services, namely, making
reservations and bookings for transportation; arranging and/or conducting travel tours;
operation of aircraft for others,” in Class 39;4
4. Registration No. 3188282 for the mark VIRGIN, in standard character form,
for “alcoholic beverages, namely, vodka and wine,” in Class 33;5
5. Registration No. 3472228 for the mark VIRGIN UNITE, in standard
character form, for the following services:6
Developing promotional campaigns for business; promoting public awareness of
the need for businesses to have a positive impact on the communities and
environment in which they operate and work together with the social sector to drive
long term social change including making investments in emerging markets to
accelerate positive social change through economic development; charitable
services, namely, organizing and coordinating programs for the sick, people with
health problems or issues, the homeless, drug users, those with disabilities, victims
of abuse, those who are bereaved, children in need or at risk, those with sexual

4 Issued January 27, 2004; Sections 8 and 15 affidavits accepted and acknowledged.
5 Issued December 19, 2006.
6 Issued July 22, 2008.
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problems, and underprivileged communities, and organizing and conducting
volunteer programs and community service projects; business management and
administration services in connection with a charity, in Class 35;
Charitable fund raising; charitable financial services for those in need, namely,
accepting and administering monetary charitable contributions; financial
sponsorship of fund raising events and events designed to raise the profile of
charitable and social issues, in Class 36; and
Educational services, namely, conducting summits, conferences, lectures and
seminars in the field of social change and charitable and social issues; training
services in the field of social change and charitable and social issues; organizing
community sporting and cultural events; educational services, namely, providing
classes, lectures, seminars, workshops, and discussion groups in the fields of
sickness, health problems, homelessness, drug use, disabilities, abuse, bereavement,
children’s needs, sexual problems, and poverty to young people, people with health
problems or issues, the homeless, drug users, those with disabilities, victims of
abuse, those who have been bereaved, children in need or at risk, those with sexual
problems, and underprivileged communities; charitable services, namely, academic
mentoring of children from underprivileged communities and young people, in
Class 41; and
6. Registration No. 3541731 for the mark VIRGIN AMERICA, in standard
character form, for the following services: 7
Air transportation; freight transportation services by means of air, ship, truck, and
rail; airport passenger and baggage check-in services; airport services, namely,
ticketing and boarding services; travel services, namely, booking seating
arrangements for airline passengers; air transportation services featuring frequent
flyer miles as a bonus program for frequent air travelers; providing flight arrival
and departure information; and transportation reservation services, in Class 39; and
Onboard in-flight entertainment services, namely, distributing movies, TV
programs, and audio programs, and providing temporary use of video games,
software and personal monitors for viewing the same, in Class 41.
With respect to its claim of likelihood of confusion, opposer alleged that
applicant’s mark VIRGINFARMS and design so resembles opposer’s VIRGIN trade
names and marks as to be likely to cause confusion. With respect to its dilution claim,

7 Issued December 2, 2008. Opposer disclaimed the exclusive right to use the term
“AMERICA.”
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opposer alleged that its VIRGIN mark was famous prior to applicant’s filing date of March
20, 2009, and that the registration of applicant’s mark is likely to dilute the distinctive
quality of opposer’s VIRGIN and VIRGIN-formative marks.
Applicant, in his answer, denied these allegations in the notice of opposition.
Applicant also asserted several affirmative defenses, but did not pursue any of them by
motion or at trial. The affirmative defenses, therefore, are deemed waived and given no
further consideration.
Evidentiary Matters

A. Exhibits to the Answer.
Applicant attached six exhibits to his answer to the notice of opposition, consisting
of five state trademark registrations and a state certificate to brand livestock. For such
material, Trademark Rule 2.122(c) provides that “an exhibit attached to a pleading is not
evidence on behalf of the party to whose pleading the exhibit is attached unless identified
and introduced in evidence as an exhibit during the period for the taking of testimony.” 37
C.F.R. § 2.122(c); see Trademark Trial and Appeal Board Manual of Procedure (TBMP)
§§ 317, 704.05 (3d ed., rev. 2012). Applicant did not testify during the testimony period.
Opposer has objected to the exhibits. Opposer’s objection is sustained and we give no
consideration to these exhibits.
B. Opposer’s Submissions of Printed Publications on DVDs and CD-ROMs.
On October 22, 2010, opposer filed a notice of reliance on a significant volume of
printed publications as evidence, submitted on seven DVDs (totaling more than 180,000
digital files), and on July 12, 2011, opposer submitted certain exhibits to testimonial
Opposition No. 91192733

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depositions on CD-ROMs. Applicant has raised no objections to these submissions, either
as to format or substance of material.
Trademark Rule 2.126 governs form of submissions. 37 C.F.R. § 2.126. For some
time prior to August 31, 2007, the Board permitted certain submissions on CD-ROM. The
Board deleted from Trademark Rule 2.126 the option of filing submissions in CD-ROM
format by amendment to Rule 2.126, effective August 31, 2007.8 Miscellaneous Changes
to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42,242 (Aug. 1, 2007) (codified
at 37 C.F.R. pt. 2). The amended rule was applicable to all cases pending or commenced
on or after that date. 72 Fed. Reg. at 42,242. Part three of the Federal Register notice of
the final package of the rule change is titled “Removal of Option to Make Submissions on
CD-Rom,” and states the basis for the rule change was that file submissions in CD-ROM
form “have presented technical problems for the ESTTA/TTABIS systems.” 72 Fed. Reg.
at 42,247. The section reporting on comments includes the following response:
The Office is willing to reconsider allowing submissions by CD-ROM in
inter partes trademark proceedings if technology eventually will allow such
submissions to be efficiently incorporated in the Board’s electronic
proceeding files. The removal of the option to file materials on CD-ROM is
adopted in this final rule.

8 Notice has been posted on the Trademark Trial and Appeal Board webpage of the U.S.
Patent and Trademark website, at
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf, along with a posted
chart summarizing the rule changes,
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf.
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72 Fed. Reg. at 42, 256. This Federal Register notice has been posted on our website since
it was published. Accordingly, all submissions of printed publications on CD-ROMs and
DVDs9 are not evidence in this proceeding and have not been considered in this decision.10
C. Statements in Applicant’s Brief.
Applicant made a number of statements in his brief, including statements on the
now-excluded exhibits to his pleading. “Factual statements made in a party’s brief on the
case can be given no consideration unless they are supported by evidence properly
introduced at trial. Statements in a brief have no evidentiary value, except to the extent
that they may serve as admissions against interest.” TBMP § 704.06(b). Applicant
submitted no testimony or evidence during the testimony period. Opposer has objected to
this material as inadmissible, in accordance with Trademark Rule 2.122(a), 37 C.F.R.
§ 2.122(a). We have considered applicant’s brief mindful that factual statements, without
supporting evidence properly made of record, are without value.
D. Exhibits to the Reply Brief.
Opposer attached evidence to its reply brief. “Exhibits and other evidentiary
materials attached to a party’s brief on the case can be given no consideration unless they
were properly made of record during the time for taking testimony.” TBMP § 704.05(b);
see, e.g., Syngenta Crop Prot., Inc. v. Bio-Chek, LLC, 90 U.S.P.Q.2d 1112, 1116 (TTAB

9 We take judicial notice that Digital Video Discs (DVDs) are CD-ROMs capable of
storing significantly larger amounts of data. WEBSTER’S NEW WORLD DICTIONARY OF
COMPUTER TERMS 180 (8th ed. 2000).
10 Based on a sampling of the submissions on these DVDs and CD-ROMs, it would appear
that even if we were to have considered the materials identified in the notice of reliance as
Exhibit Nos. 174 and 175, and Exhibits 6, 7, 8, 9, 10, and 13, to testimonial depositions,
these submissions would not have changed the outcome of our decision.
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2009); Bass Pro Trademarks, L.L.C. v. Sportsman Warehouse, Inc., 89 U.S.P.Q.2d 1844,
1848 (TTAB 2008); see 37 C.F.R. § 2.123(l) (“Evidence not obtained and filed in
compliance with these sections will not be considered.”). Accordingly, the evidence
attached to opposer’s reply briefs has been given no consideration.
The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), applicant’s application file. In addition, opposer introduced the
following testimony and evidence:
1. Notice of reliance on the following items:
a. Photocopies of opposer’s pleaded registrations printed from the
electronic database records of the U.S. Patent and Trademark Office,
showing that the registrations are subsisting and owned by opposer
(Opposer’s Exs. 1–44);
b. Photocopies of 67 non-precedential Board decisions involving
oppositions brought by opposer and granted in favor of opposer
(Opposer’s Exs. 45–111); and
c. Photocopies of 62 court judgments in civil actions filed by opposer
and granted in favor of opposer (Opposer’s Exs. 112–173).
2. Testimony deposition of Christine Choi, Director of Corporate
Communications for Virgin Management USA, an affiliate company of
opposer, with attached exhibits (Dep. Exs. 1-5, 11-12, 14-41).
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3. Testimony deposition of Mark James, Intellectual Property Manager for
Virgin Management Limited, an affiliate company of opposer, with attached
exhibits (Dep. Exs. 1-3, 36-37, 39, 40, and 42-56).
Applicant did not introduce any testimony or evidence during his testimony period.
As noted above, applicant has not properly entered any evidence to the record. The parties
briefed the case, and opposer requested and appeared at an oral hearing. Applicant did not
attend the testimony depositions or the hearing.
Standing

As opposer has properly made its pleaded registrations of record, opposer has
established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d
1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
U.S.P.Q. 185, 189 (C.C.P.A. 1982).
Priority

As opposer’s pleaded registrations are of record, Section 2(d) priority is not an
issue in this case as to the marks and the goods and services covered by the registrations.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108, 110
(C.C.P.A. 1974).
Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567
(C.C.P.A. 1973).
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A. The Fame of Opposer’s Marks.
The fifth DuPont factor requires us to consider the fame of opposer’s mark. Fame,
if it exists, plays a dominant role in the likelihood of confusion analysis because famous
marks enjoy a broad scope of protection or exclusivity of use. A famous mark has
extensive public recognition and renown. Bose Corp. v. QSC Audio Prods., 293 F.3d
1367, 63 U.S.P.Q.2d 1303, 1305 (Fed. Cir. 2002); Recot, Inc. v. Becton, 214 F.3d 1322, 54
U.S.P.Q.2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc.,
963 F.2d 350, 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales and advertising
expenditures of the goods and services identified by the marks at issue, “by the length of
time those indicia of commercial awareness have been evident,” by widespread critical
assessments and through notice by independent sources of the products and services
identified by the marks, as well as by the general reputation of the branded products and
services. Bose, 63 U.S.P.Q.2d at 1305-06, 1309. Although raw numbers of product and
service sales and advertising expenses may have sufficed in the past to prove fame of a
mark, raw numbers alone may be misleading. Some context in which to place raw
statistics may be necessary (e.g., the substantiality of the sales or advertising figures for
comparable types of products or services). Id. at 1309.
Because 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 prove it clearly. Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 U.S.P.Q.2d
1901, 1904 (TTAB 2007).
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Opposer submitted the following testimony and evidence to prove the fame of its
VIRGIN and VIRGIN-formative marks:11
1. Mr. James testified that Virgin Atlantic Airways Ltd. (“VAA”) is one of
opposer’s trademark licensees operating in the United States.12 Mr. James testified that
VAA generated over $450 million in U.S. sales of Virgin-branded goods and services in
2006, over $450 million in 2007, $383 million in 2008, and $302 million in 2009.13 Mr.
James did not provide any specifics as to the type or kind of goods and services sold by
VAA under the Virgin brand. Mr. James testified that VAA “spends approximately $10
million each year to advertise in the U.S.”14
2. Mr. James testified that Virgin America Inc. (“VAI”) is another of
opposer’s trademark licensees operating in the United States.15 As for the sales generated
in the United States by VAI of Virgin-branded goods and services, Mr. James testified that
“from August 2007 until June 2010, it was approximately $1.3 billion.”16 Mr. James did
not provide any specifics as to the type or kind of goods and services sold by VAI under
the Virgin brand. For advertising and promotion in the United States, Mr. James testified

11 As discussed supra, all submissions by opposer of printed publications on CD-ROMs
and DVDs are in contravention of our rules and have not been considered as evidence.
12 James Dep. 13:16-13:17, Oct. 19, 2010.
13 James Dep. 26:20-27:10.
14 James Dep. 30:21-30:23.
15 James Dep. 13:24-13:25.
16 James Dep. 27:23-27:25.
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that in 2007, VAI spent approximately $12 million, in 2008, approximately $11 million,
and in 2009, approximately $15 million.17
3. Mr. James testified that Virgin Mobile USA, LLC (“VMU”) is another of
opposer’s trademark licensees operating in the United States.18 Mr. James testified that
VMU generated over $1.1 billion in U.S. sales of Virgin-branded goods and services in
2006, $1.3 billion in 2007, $1.3 billion in 2008, and, for 2009, “up until the third quarter, it
was $937 million.”19 Mr. James did not provide any specifics as to the type or kind of
goods and services sold by VMU under the Virgin brand. Mr. James testified that VMU
“spends on average more than $20 million each year” to promote Virgin-branded phone
products and services.20
4. Mr. James testified that one of opposer’s licensees, Virgin Entertainment
Group, Inc., operated nineteen Virgin Megastores in the United States from 1992 until
June 2009, with store locations including New York, Denver, Los Angeles and San
Francisco, retailing “a wide range of Virgin-branded products,” including “clothing
products, such as T-shirts and sweatshirts, bags, electronic products, playing cards, glasses
[and] jewelry.”21 Mr. James testified that these retail store services generated more than
$197 million in U.S. sales of Virgin-branded goods and services in 2006, $188 million in

17 James Dep. 31:7-31:10.
18 James Dep. 14:5-14:6.
19 James Dep. 28:14-28:22.
20 James Dep. 31:24-32:04.
21 James Dep. 30:2-12, 35:14-23.
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2007, $186 million in 2008, and $153 million in 2009.22 For advertising and promotion in
the United States, Mr. James testified Virgin Megastores “spent more than $10 million in
2006, and almost $10 million in 2007, and for the period from 2008 until June 2009, it was
almost $15 million.”23
5. Mr. James authenticated a VAA press release of October 13, 2010,
mentioning its selection as “ ‘Best Domestic Airline’ among U.S. carriers” in Condé Nast
Traveler’s 2010 Readers’ Choice Awards.24
6. Mr. James authenticated an advertisement for VAA that appeared in a 2010
issue of the New Yorker magazine.25
7. Ms. Choi authenticated articles and that were printed in national
publications between 2007 and 2008, including the Washington Post, the New York
Times, Scientific American, Time magazine, the New Yorker, Bloomberg Businessweek,
which referenced VIRGIN and VIRGIN-formative marks.26
8. Ms. Choi authenticated a DVD containing 126 digital clips from various
nationally aired programs that aired between 2005 and 2009 on broadcast networks and

22 James Dep. 29:8-29:23.
23 James Dep. 32:10-32:14.
24 James Dep. 21:10-21:14.
25 James Dep. 33:15-33 :17 (Dep. Ex. 54).
26 Choi Dep. 25:25, 26:11, 32:16, 35 :4, 35 :24, 44:23, Oct. 18, 2011 (Dep. Exs. 15, 16, 20,
22-23, 31).
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cable television channels, including ABC, CBS, CNBC, Fox News, MSNBC, NBC and
PBS.27
Opposer provided no supporting evidence or testimony regarding comparable
statistics of sales and advertising figures of its leading competitors or its ranking in market
share in respective product and service categories, and has provided little probative
evidence of the general reputation or critical assessments in the consumer marketplace of
the products and services branded with VIRGIN and VIRGIN-formative marks.
As for the printed publications, broadcast clips, and promotional video of record,
many of these submissions show and contain references to VIRGIN and
VIRGIN-formative marks, but nevertheless these have no or very little independent
probative value, as these marks are only seen briefly or are mentioned only in passing.
Generally, the goods and services branded with the marks are not the direct subject of the
submissions. For example, opposer submitted a television clip from the Late Show with
David Letterman, which aired on March 2, 2005.28 The five-minute clip features a skit
about the first solo nonstop unrefueled aircraft flight around the world. The flight was
sponsored by opposer’s founder and chairman, Richard Branson,29 and the aircraft, which
was owned and operated by the late Steve Fossett, was the Virgin Atlantic GlobalFlyer.30
Letterman jokes, “I don’t know much about aviation, but I do know this is absolutely a
pointless exercise. This couldn’t be a more pointless exercise. Me sitting down in this

27 Choi Dep. 18:21-19:23 (Dep. Ex. 11).
28 Dep. Ex. 11 (Late Show with David Letterman (CBS television broadcast Mar. 2, 2005)).
29 James Dep. 38:13-38:16.
30 Steve Fossett, THE COLUMBIA ENCYCLOPEDIA (6th ed. 2008) (online edition).
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chair advances the cause of aviation more than this guy flying around the world solo. It
means nothing.” The joking continues, and as Letterman says that the flight is reported to
be over New York right then, a Virgin-branded toy airplane, pulled by a very visible wire,
flies behind Letterman and across the set. There is no mention of VIRGIN in the segment.
This clip is representative of the passing references to VIRGIN in many of the evidentiary
submissions.
Opposer also argues that a prior finding by the U.S. Court of Appeals for the
Second Circuit that its VIRGIN mark is a famous mark is “solid [precedent] upon which
the Board may rely.”31 However, opposer is incorrect; a “decision by another court based
upon a different record is not evidence in this proceeding.” Citigroup Inc. v. Capital City
Bank Group Inc., 94 U.S.P.Q.2d 1645, 1665 (TTAB 2010), aff’d, 637 F.3d 1344, 98
U.S.P.Q.2d 1253 (Fed. Cir. 2011). By statute, this Board has the duty to decide the right to
federal registration in an opposition. 15 U.S.C. § 1067(a). “This duty may not be
delegated by the adoption of conclusions reached by another court on a different record.
Suffice it to say that an opposition must be decided on the evidence of record.” 94
U.S.P.Q.2d at 1665.
Similarly, opposer argues that we should find fame for its VIRGIN and
VIRGIN-formative marks by extension of finding fame for Richard Branson, stating that
he “is a globally recognized personality synonymous with the VIRGIN marks,” and as
such, argues that Virgin-branded goods and services serve as secondary source indicators

31 Opposer’s Br. 33 (citing Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 67 U.S.P.Q.2d
1420 (2d Cir. 2003)).
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for Branson.32 Opposer supports this argument with evidence of appearances by Branson
and coverage of him via multiple forms of media. However, opposer cites to no caselaw to
support its argument and the evidence fails to establish that the consumers purchasing
Virgin-branded goods and services are even aware of the relationship between Branson and
the goods and services at the time of purchase. Thus, there is neither fact nor governing or
persuasive caselaw in the record to support opposer’s argument.33
Despite these failings in the evidence submitted by opposer, based on the volume
of sales and advertising expenditures of the Virgin-branded goods and services, the variety
of goods and services bearing the mark, and the collective evidence presented that
demonstrates achieved commercial success, a high degree of renown, and widespread
exposure of the general public to opposer’s VIRGIN and VIRGIN-formative marks in print
and digital media, we find that the VIRGIN and the VIRGIN-formative marks are famous
for purposes of likelihood of confusion for a wide variety of consumer goods and for
services in the entertainment, telecommunications, transportation and travel fields.
Even though we have found that opposer has proven that its VIRGIN and
VIRGIN-formative marks are famous for purposes of likelihood of confusion, fame alone
is not sufficient to establish likelihood of confusion. If that were the case, having a famous
mark would entitle opposer to a right in gross, and that is against the principles of
trademark law. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps., Co., 703 F.2d

32 Opposer’s Br. 34; Reply Br. 7.
33 But cf. Herman Miller, Inc. v. Palazzetti Imps. & Exps., Inc., 270 F.3d 298, 60
U.S.P.Q.2d 1633, 1646 n.7 (6th Cir. 2001) (finding that the renown of Charles and Ray
Eames as the designers of a chair that became an iconic piece of modern American
furniture does not automatically mean that consumers understand that the chair is
manufactured by plaintiff).
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1372, 217 U.S.P.Q. 505, 507 (Fed. Cir. 1983). Accordingly, we must consider all relevant
DuPont factors for which evidence has been introduced.
B. The similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.
We now turn to the first DuPont factor, which focuses on the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation and
commercial impression. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177
U.S.P.Q. 563, 567 (C.C.P.A. 1973). In a particular case, any one of these means of
comparison may be critical in finding the marks to be similar. E.g., In re White Swan Ltd.,
8 U.S.P.Q.2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, 1042
n.4 (TTAB 1987). While marks must be compared in their entireties in the comparison
analysis, if a mark comprises both a word and a design, the word is normally accorded
greater weight because it would be used by purchasers to request the goods or services.
E.g., In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999).
In comparing the marks, we are mindful that the test for similarity is not whether
the marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their overall commercial impression
so that confusion as to the source of the goods or services offered under the respective
marks is likely to result. E.g., Sakrete, Inc. v. Slag Processors, Inc., 305 F.2d 482, 134
U.S.P.Q. 245, 247 (C.C.P.A. 1962). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression of the marks. Winnebago
Indus., Inc. v. Oliver & Winston, Inc., 207 U.S.P.Q. 335, 344 (TTAB 1980). We are also
mindful that famous marks enjoy wide latitudes of legal protection. E.g., Kenner Parker
Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir.
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1992). “As a mark’s fame increases, the [Trademark] Act’s tolerance for similarities in
competing marks falls.” Id.
With these principles in mind, we begin our analysis by finding that the respective
marks are similar in appearance and sound because they share the identical term
“VIRGIN,” which we take judicial notice is defined, inter alia, as follows:
adj. 1. Of, relating to, or being a virgin; chaste. 2. Being in a pure or natural
state; unsullied: virgin snow. 3. Unused, uncultivated, or unexplored: virgin
territory. 4. Existing in native or raw form; not processed or refined. 34
Depending on commercial context, the term “VIRGIN” would likely describe or
suggest natural, uncultivated, and unprocessed goods and services to the relevant
consumer. In this case, the relevant customers who would encounter both applicant’s
goods and opposer’s goods and services would be purchasers of agricultural grains, seeds,
bulbs and similar products for planting and related agricultural purposes.
Applicant’s mark incorporates opposer’s entire VIRGIN mark. Likelihood of
confusion has frequently been found where one mark incorporates the entirety of another
mark. See, e.g., Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556,
188 U.S.P.Q. 105, 106 (C.C.P.A. 1975) (BENGAL for gin and BENGAL LANCER for
nonalcoholic club soda, quinine water and ginger ale); Johnson Publ’g Co. v. Int’l Dev.
Ltd., 221 U.S.P.Q. 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM
for hairdressing and conditioner); In re S. Bend Toy Mfg. Co., 218 U.S.P.Q. 479, 480
(TTAB 1983) (LIL’ LADY BUG for toy doll carriages and LITTLE LADY for doll
clothing); Helga, Inc. v. Helga Howie, Inc., 182 U.S.P.Q. 629, 630 (TTAB 1974) (HELGA
for women’s clothing and HELGA HOWIE for women’s clothing); In re Hepperle, 175

34 AM. HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1921 (4th ed. 2006).
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U.S.P.Q. 512, 512 (TTAB 1972) (applicant’s mark ACAPULCO GOLD for suntan lotion
is likely to cause confusion with ACAPULCO for lipstick and powder). In addition,
VIRGIN is the first or only term in all the marks, which often supports finding that marks
are similar. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 U.S.P.Q.2d 1895, 1897 (TTAB
1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered.”); e.g., Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir.
2005) (“The presence of this strong distinctive term as the first word in both parties’ marks
renders the marks similar.”).
However, because the similarity or dissimilarity of the marks is determined based
on the marks in their entireties, the test for similarity cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 U.S.P.Q.
749, 751 (Fed. Cir. 1985); e.g., Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 U.S.P.Q. 233, 234 (C.C.P.A. 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”).
Applicant contends that his mark, in its entirety, engenders a different commercial
impression than any of opposer’s marks of record. Applicant states that the mark
“VIRGINFARMS” denotes “soil’s return to an undefiled state, which allows for the
growth of nutrient dense foods, for human consumption, and seeds for the next planting
season.”35 During prosecution of the application, applicant agreed to disclaim both terms

35 Applicant’s Br. 4–5.
Opposition No. 91192733

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of his mark. Supporting applicant’s contention regarding the mark’s commercial
impression, we take judicial notice that “VIRGIN SOIL” is defined as “soil in its natural
state as distinguished from soil or land that has been plowed or otherwise altered by
humans for cultivated crops or other uses.”36 It would appear to be applicant’s position
that the literal elements of his mark describe a characteristic and purpose of the goods. On
the other hand, applicant contends that none of opposer’s marks “is descriptive of any of
[its] numerous products.”37 We have previously found that differences in connotation can
outweigh visual and phonetic similarities. E.g., Coach Servs. Inc. v. Triumph Learning
LLC, 96 U.S.P.Q.2d 1600, 1609 (TTAB 2010), aff’d 668 F.3d 1356, 101 U.S.P.Q.2d 1713
(Fed. Cir. 2012) (finding “COACH” for educational materials calls “to mind a tutor who
prepares a student for examination,” while “COACH” for leather handbags, fashions, and
accessories is “arbitrary or suggestive of carriage or travel accommodations”); Blue Man
Prods. Inc. v. Tarmann, 75 U.S.P.Q.2d 1811, 1820–21 (TTAB 2005) (finding that while
the marks were very similar in appearance and pronunciation, opposer’s “BLUE MAN
GROUP” conjured the image of the performers, while applicant’s “BLUE MAN” mark
made no such connotation for cigarettes or tobacco, and these differences outweighed the
similarities); In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1984) (finding
“PLAYERS” for shoes engenders a different commercial impression from “PLAYERS”
for underwear).
Contrary to applicant’s contention, we find that applicant’s mark is suggestive, and
opposer’s marks include both suggestive and arbitrary marks. Applicant’s

36 DELMAR’S AGRISCIENCE DICTIONARY WITH SEARCHABLE CD-ROM 249 (2000).
37 Applicant’s Br. 7.
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“VIRGINFARMS” in relation to his listed goods is suggestive of organic farming. Some
of opposer’s marks, for example, “VIRGIN ATLANTIC” for transportation and tour
conducting services, suggest venturing to the unexplored. While we do not agree with
opposer’s assertion that applicant’s “use of a descriptive term after VIRGIN increases the
likelihood of confusion,”38 we do find that the root term of applicant’s and opposer’s
marks, VIRGIN, is a term that means unsullied, uncultivated and unexplored, and that all
the marks engender a similar connotation based on this meaning. In addition, we have
already found that the VIRGIN and VIRGIN-formative marks are famous marks for
purposes of likelihood of confusion. The fame of VIRGIN magnifies the significance of
the similarities of the mark. Balancing both the similarities and differences between the
marks, and giving due weight to the fame of opposer’s marks, we find that the marks are
similar.
C. The similarity or dissimilarity and nature of the goods in the application and the
goods and services in opposer’s registration, likely-to-continue channels of trade
and classes of consumers.
In determining whether goods and services are related, the second DuPont factor
requires that we must consider the goods and services as they are identified in the
respective descriptions in the application and registrations. E.g., Paula Payne Prods. v.
Johnson Publ’g Co., 473 F.2d 901, 177 U.S.P.Q. 76, 77 (C.C.P.A. 1973). It is not
necessary that the goods and services of applicant and opposer be similar or competitive to
support a holding of likelihood of confusion. It is sufficient that the goods and services be
related in some manner, or that the circumstances surrounding their use be such that they
would be likely to be encountered by the same persons in situations that would give rise,

38 Opposer’s Br. 36.
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because of the marks used thereon, to a mistaken belief that they originate from or are in
some way associated with the same source. Miss Universe L.P. v. Community Mktg. Inc.,
82 U.S.P.Q.2d 1562, 1568 (TTAB 2007).
In addition, we must accord “full weight to the fame of a famous mark when
analyzing likelihood of confusion between products that [are] not closely related.” Recot,
Inc. v. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d 1894, 1898 (Fed. Cir. 2000). For example,
in McDonald’s Corp. v. McKinley, 13 U.S.P.Q.2d 1895, 1898 (TTAB 1990), we found
opposer’s restaurant services, food and beverages, and promotional toy and game products
sufficiently related to applicant’s hand-crafted teddy bears, based on opposer’s showing
that it distributed an extremely large number of various toys under the famous
MCDONALD’S and MC-formative marks as promotional items and incentive awards in
connection with its restaurant services, such that those encountering applicant’s bears
under its MCTEDDY mark would assume they originated or were associated with opposer.
In Tiffany & Co. v. Classic Motor Carriages, Inc., 10 U.S.P.Q.2d 1835, 1842–43 (TTAB
1989), we found relatedness of opposer’s jewelry and household goods and related retail
services under its famous TIFFANY mark and applicant’s automobiles under its CLASSIC
TIFFANY mark, based on opposer’s showing that applicant’s advertising associated its
mark with luxury and references to jewelry, which it established created a nexus with its
goods, reputation and goodwill, sufficient to create a mistaken belief that applicant’s goods
were associated with or sponsored by opposer.
Here, there are clear and significant differences between applicant’s goods and the
various goods and services identified in opposer’s registrations of record. Applicant is
seeking to register his mark for “agricultural grains for planting; agricultural seeds; bulbs
Opposition No. 91192733

23

for agricultural purposes; plantable seed paper comprised primarily of seeds for
agricultural purposes; seeds for agricultural purposes; spores and spawn; unprocessed
seeds for agricultural use.” The scope of these goods is grains, seeds and related items
used for planting, and the explicit limitation of these products is that they are for
agricultural purposes and not for human consumption. Meanwhile, opposer has VIRGIN
and VIRGIN-formative marks registered in connection with a variety of goods and
services, generally summarized as musical recordings, printed materials in the
entertainment field, writing instruments, playing cards, clothing, non-alcoholic and
alcoholic beverages, cosmetics and body care preparations, cell phones, small electronics,
articles of luggage and carrying bags, jewelry, transportation services, restaurant and bar
services, mail order catalog and retail store services, advertising and public relations
services, photography services, printing services, travel agency services, insurance and
financial services, charitable fundraising services, computerized communication and
transmission services, body care services, online computer game services, educational
services in the social issue and charity fields, organizing sporting and cultural activities,
and library facility services.
Determinations are reached based on the evidence of record. Unlike the evidence
identified in the McDonald’s and Tiffany & Co. decisions, opposer has not shown that
applicant’s goods would be related to opposer’s goods and services in the mind of the
relevant consuming public, or that applicant’s use of the mark will lead consumers to
believe that applicant’s goods are associated with or sponsored by opposer, based on the
fame of opposer’s VIRGIN and VIRGIN-formative marks. Opposer asserts that the
evidence supports a relationship between applicant’s goods and its goods and services
Opposition No. 91192733

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because all include “agricultural aspects and influence agricultural production.”39 To
support this assertion, it provides the following example:
[T]he Virgin Group’s airport lounges and airlines might purchase and serve
sunflower seeds from VirginFarms. There can be no doubt that a Virgin
Group40 airline passenger who receives a package of VirginFarms’
sunflower seeds will be confused as to the source of those seeds. Likewise,
VirginFarms’ grains and seeds might be used in the production of biofuels
by the Virgin Group’s licensees or, worse, their competitors.41
However, the record evidence does not support opposer’s assertion. First, there is
no evidence that applicant is seeking to use his mark in connection with edible sunflower
seeds, as this application lists items limited to agricultural use only; therefore, the
confusion theorized in this example for opposer’s airline passenger would not result if this
application proceeded to registration. Second, opposer has introduced no evidence to
establish that seeds for agricultural purposes could be used in the production of biofuels,
and there is no evidence that applicant is seeking to use its mark in connection with any
grains and seeds that are potentially capable of being used in the production of biofuels;
therefore, again, there is nothing in the record to support the theorized harm to opposer
should this application proceeded to registration.
The third DuPont factor involves how and to whom the goods and services at issue
are sold or marketed. We must determine, therefore, whether there is likely to be an
overlap between the respective purchasers and users of the goods and services of the
parties. Elec. Design & Sales v. Elec. Data Sys., 954 F.2d 713, 21 U.S.P.Q.2d 1388, 1390

39 Opposer’s Br. 38.
40 In its brief, opposer defined “Virgin Group” as the collective of opposer along with its
licensees and affiliates. Opposer’s Br. 6.
41 Opposer’s Br. 38.
Opposition No. 91192733

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(Fed. Cir. 1992). Since applicant’s description of goods is limited to agricultural purposes,
the listed goods travel in only those normal channels involving goods for agricultural
purposes. However, since those consumers buying seeds and like products for agricultural
purposes would also likely buy phones and travel, these consumers may encounter both
sets of marks. In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see Paula Payne
Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 U.S.P.Q. 76, 77 (C.C.P.A. 1973); Kalart
Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 U.S.P.Q. 139, 139–40 (C.C.P.A. 1958).
Opposer’s registrations have no limitations as to trade channels or classes of purchasers.
The vast difference between grains for planting, spores, and seeds for agricultural
use and all of opposer’s goods and services would not be lost on average purchasers, let
alone those agricultural customers who buy agricultural seeds and grains for commercial
planting and farming. By limiting his goods to those for agricultural planting purposes,
applicant has limited its channels of trade to those that are unlikely to include opposer’s
listed goods and services. Moreover, while opposer asserts that its goods and services
include agricultural aspects and influence agricultural production, opposer has not
provided evidence that supports this assertion in the record.42 While some of opposer’s
submissions through its notices of reliance relate to agricultural production, especially
outside of the United States, printed publications and broadcast programming clips may
not be used to prove the truth of the matters asserted therein, as that would constitute
reliance on hearsay. Thus, we have no basis on which to conclude that the relevant

42 In its brief, opposer mentions the Virgin Group’s Sow-A-Seed program, and asserts that
applicant “may very well sell the seeds used” in the program, which it states “turns vacant
pieces of land into thriving veggie gardens.” Opposer’s Br. 8, 21. No evidence regarding
the existence of this program in the United States is of record.
Opposition No. 91192733

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purchasers would believe that applicant’s goods are associated with or sponsored by
opposer.
Though not directly argued, opposer suggests that since the Virgin Group uses the
VIRGIN and VIRGIN-formative marks in connection with “a vast array of goods and
services,”43 and the “public has an expectation that the Virgin Group will introduce new
and different products and services on a regular basis,”44 agricultural seeds and related
goods for planting are within opposer’s natural expansion of trade. Since opposer did not
introduce any evidence supporting its invocation of the doctrine of natural expansion, we
have not resorted to this analysis when considering the relatedness of the goods and
services in this case.45
When a mark is famous, the degree of relatedness of the goods need not be as great.
See Recot, Inc. v. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d 1894, 1897–98 (Fed. Cir. 2000).
However, there must be something more than just a similarity of marks to show this
relatedness or, again, the owner of a famous mark would have a right in gross. Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imps., Co., 703 F.2d 1372, 217 U.S.P.Q. 505,

43 Opposer’s Reply Br. 14.
44 Opposer’s Br. 8.
45 “Before the doctrine of natural expansion may be invoked by opposer, it must be shown
that the new goods, i.e., the extension of the line of business from that which pre-existed
applicant’s arrival, evolved from the manufacturing and marketing activities of opposer
and did not result from the acquisition of a new business by a diversifying company. The
burden is on opposer to present evidence that is persuasive of the fact that the new business
represents an expansion of, and not merely an unrelated addition to, the business that
opposer conducted prior to the first use of applicant’s mark on the goods for which
applicant is seeking a registration. Without such evidence of a natural expansion, opposer
would be asserting the dreaded right in gross to a mark.” Sheller-Globe Corp. v. Scott
Paper Co., 204 U.S.P.Q. 329, 333–34 (TTAB 1979) (internal citations omitted).
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507 (Fed. Cir. 1983). We find that the goods and services at issue are not related and that
the channels of trade are distinct.
Thus, the second and third DuPont factors, regarding the similarity or dissimilarity
of the goods and services and likely-to-continue channels of trade favor applicant.
D. The conditions under which and buyers to whom sales are made (i.e., impulse vs.
careful, sophisticated purchasing).
Considering the particular nature of applicant’s goods, we have no doubt that
purchasing decisions would not be made impulsively or carelessly, as purchasing grains,
seeds, bulbs and other goods used to yield successful farming and agricultural growth
would be a purchase of some deliberation and analysis.
In addition, even though professional farmers exercising a higher degree of care are
not immune to trademark confusion, the circumstances of purchasing such items would
reduce source confusion. Thus, this fourth DuPont factor favors applicant.
E. Balancing the factors.
While our findings for purposes of likelihood of confusion are that opposer’s marks
are famous and the marks are similar, opposer is not entitled to a right in gross. Opposer
has failed to show that the respective goods and services are similar, let alone related.
Meanwhile, applicant’s goods move in agricultural fields, while opposer’s would not.
Thus, we find that applicant’s use of his VIRGINFARMS mark for “agricultural grains for
planting; agricultural seeds; bulbs for agricultural purposes; plantable seed paper
comprised primarily of seeds for agricultural purposes; seeds for agricultural purposes;
spores and spawn; unprocessed seeds for agricultural use” is not likely to cause confusion
with opposer’s VIRGIN and VIRGIN-formative marks as used in connection with the
listed goods and services in its registrations of record.
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Dilution

In addition to its Section 2(d) claim, opposer has asserted a dilution claim. The
Trademark Dilution Revision Act of 2006 (“TDRA”) provides for a cause of action for the
dilution of famous marks. 15 U.S.C. §§ 1063, 1125(c). The TDRA states that:
Subject to the principles of equity, the owner of a famous mark that is
distinctive, inherently or through acquired distinctiveness, shall be entitled
to an injunction against another person who, at any time after the owner’s
mark has become famous, commences use of a mark or trade name in
commerce that is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark, regardless of the presence or absence of
actual or likely confusion, of competition, or of actual economic injury.

15 U.S.C. § 1125(c)(1).
Opposer contends that the marks are so similar, “dilution by blurring is
inevitable.”46 Section 43(c)(2)(B) of the TDRA states the following:
‘[D]ilution by blurring’ is association arising from the similarity between a
mark or trade name and a famous mark that impairs the distinctiveness of
the famous mark.

15 U.S.C. § 1125(c)(2)(B).
With respect to fame, the dilution analysis requires our consideration of the
following issues in determining opposer’s dilution claim:
1. Whether VIRGIN is a famous mark;

2. Whether VIRGIN became famous prior to the filing date of applicant’s
application (March 20, 2009); and

3. Whether VIRGINFARMS and design is likely to cause dilution by blurring
of the distinctiveness of VIRGIN and VIRGIN-formative marks.

46 Opposer’s Br. 46.
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A. Whether opposer’s mark is famous for purposes of dilution.
Although we have found VIRGIN famous for purposes of opposer’s likelihood of
confusion claim, we must now determine whether VIRGIN is famous in the context of a
dilution claim. Fame for dilution purposes is a distinct concept from fame for likelihood of
confusion purposes, with dilution fame requiring a more stringent showing. Coach Servs.
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 U.S.P.Q.2d 1713, 1724 (Fed. Cir.
2012). Likelihood of confusion fame “varies along a spectrum from very strong to very
weak,” In re Coors Brewing Co., 343 F.3d 1340, 68 U.S.P.Q.2d 1059, 1063 (Fed. Cir.
2003), while dilution fame is an “either-or” proposition—it either exists or it does not. 101
U.S.P.Q.2d at 1724. The bar for establishing dilution fame is set extremely high. Toro Co.
v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1170 (TTAB 2001).
In Toro, we stated that “[f]ame for dilution purposes is difficult to prove,” as to
establish the requisite level of fame, the “mark’s owner must demonstrate that the common
or proper noun uses of the term and third-party uses of the mark are now eclipsed by the
owner’s use of the mark.” 61 U.S.P.Q.2d at 1180.47 An opposer must show that, when the
general public encounters the mark “in almost any context, it associates the term, at least
initially, with the mark’s owner.” Id. at 1181. Evidence to show the transformation of a
term into a truly famous mark may include recognition by the other party, intense media
attention, and surveys. Id. In short, an opposer must show that its marks have become
“household terms which almost everyone is familiar.” Id.
Opposer’s evidence fails to meet the Toro threshold showing of fame. First, the
printed publication articles and broadcast clips do not show Virgin-branded goods and

47 Although the Toro opinion predates the TDRA, its analysis remains relevant.
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services as the subject or focus, and thus, the media evidence fails to show a widespread
recognition of opposer’s marks to the general population. Most of the broadcast clips
reference or show the VIRGIN marks in passing or inconsequentially. For example, in a
television clip of five-minutes and forty-three seconds, which aired on CBS’s “The Early
Show” on February 9, 2007, regarding a $25-million prize offered by former Vice
President Al Gore and Richard Branson to seek a solution to global warming, the only
reference to VIRGIN is to inform viewers that Branson is the CEO and chairman of Virgin
Group; there is not a single reference to Virgin-branded goods and services.48 Similarly, in
a television clip of four-minutes and twenty-two seconds, which aired on CNN’s
“Anderson Cooper 360°” on May 24, 2007, regarding Branson’s participation on an Artic
expedition, the only reference to VIRGIN is to inform viewers that Branson is the CEO of
Virgin Atlantic.49 Most of the evidence consisting of printed publications similarly is not
about a broad variety of Virgin-branded goods and services, but rather initiatives and
investments in which Branson is a participant or leader. Second, opposer did not submit
survey evidence of brand recognition and awareness.50 Third, applicant has not stated that
it recognized opposer as famous.
An example of the quantum and quality of sufficient evidence to establish dilution
fame is the evidence introduced in NASDAQ Stock Market Inc. v. Antartica S.r.l., 69
U.S.P.Q.2d 1718 (TTAB 2003). In that decision, we found that the NASDAQ mark was

48 Dep. Ex. 11 (The Early Show (CBS television broadcast Feb. 9, 2007)).
49 Dep. Ex. 11 (Anderson Cooper 360° (CNN television broadcast May 24, 2007)).
50 We are aware that opposer is not required to introduce a survey to establish that its mark
is famous for purposes of our dilution analysis and we are not making a requirement.
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famous for its stock market services. The record included market studies demonstrating
that the awareness of opposer’s stock market among investors reached more than 80% in
1999 from just above 20% in 1990. 69 U.S.P.Q.2d at 1729. Opposer introduced evidence
that its NASDAQ-branded website received seven million daily views, its daily market
results appeared in hundreds of newspapers, broadcasting stations and websites, and its
NASDAQ-listed companies received separate and significant media coverage as NASDAQ
traded companies. Id. In view of the foregoing, we find that opposer has not established
that VIRGIN is famous for dilution purposes.
On this record, opposer cannot prevail on its dilution claim because we have found
that opposer has not met its burden of proving that its VIRGIN marks are famous for
purposes of dilution. Nevertheless, for purposes of completeness, we discuss whether the
VIRGIN marks were capable of being famous prior to the filing date of applicant’s
application, and dilution by blurring and tarnishment.
B. When were opposer’s marks capable of being famous based on the evidence?
In the event that this case is appealed and the reviewing court finds that based on
opposer’s record, the VIRGIN and VIRGIN-formative marks are famous, we find that such
fame has been established prior to the filing date of the application (March 20, 2009).
Based on Mr. James’ testimony regarding opposer’s sales and advertising
expenditures of VAA, VAI, and VMU regarding Virgin-branded goods and services, we
would be able to find that opposer’s mark became famous prior to the filing date of the
application.
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C. Whether VIRGINFARMS and design is likely to cause dilution by blurring of the
distinctiveness of the VIRGIN and VIRGIN-formative marks.
The Board may look to all relevant facts in determining whether applicant's
VIRGINFARMS mark will blur the distinctiveness of opposer's VIRGIN and
VIRGIN-formative marks. The Trademark Act provides the following guidance:
In determining whether a mark or trade name is likely to cause dilution by
blurring, the court may consider all relevant factors, including the
following:

(i) The degree of similarity between the mark or trade name and the famous
mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an
association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous
mark.

15 U.S.C. § 1125(c)(2)(B)(i)-(vi).

1. The degree of similarity between the mark or trade name and the famous
mark.

In analysis of dilution by blurring, marks are compared under the test for similarity
for likelihood of confusion purposes. Nike Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1030
(TTAB 2011). As in the analysis provided supra, we find that the marks are more similar
than dissimilar.
Because we find that the marks are similar, this factor favors opposer.
Opposition No. 91192733

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2. The degree of inherent or acquired distinctiveness of the famous mark.

As indicated previously, VIRGIN is a suggestive term when used in connection
with agricultural planting goods, and is inherently distinctive in connection with opposer’s
listed goods and services. Accordingly, because VIRGIN is inherently distinctive, this
dilution factor favors opposer.
3. The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.

Opposer has introduced evidence of trademark opposition and infringement action
litigation consisting of 67 non-precedential Board decisions and 62 court judgments in the
United States.51 Opposer also introduced evidence of its trademark licensing in the United
States.52 This evidence demonstrates opposer’s enforcement efforts and measures to have
substantially exclusive use of VIRGIN and VIRGIN-formative marks. Thus, we conclude
that opposer has maintained substantially exclusive use of the VIRGIN and
VIRGIN-formative mark, and therefore, this dilution factor favors opposer.
4. The degree of recognition of the famous mark.

This congressionally mandated factor seems redundant in view of the fact that
opposer must establish that its mark is famous as a prerequisite for establishing a dilution
claim. Nevertheless, we must consider this factor in accordance with the statute. We
conclude, therefore, that the degree of recognition of the famous mark requires us to
determine the level of fame acquired by the famous mark. In other words, once the mark is
determined to be famous as a prerequisite for dilution protection, we must apply a sliding

51 James Dep. 10:6-12:6; Opposer’s Exs. 1–111.
52 James Dep. 12:9-16:20 (Dep. Ex. 46A).
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scale to determine the extent of that protection (i.e., the more famous the mark, the more
likely there will be an association between the famous mark and the defendant's mark).
As indicated above, we have found that VIRGIN is famous for purposes of
likelihood of confusion, but not for purposes of dilution. Thus, VIRGIN has not acquired
an extraordinary degree of recognition such that it “is now primarily associated with the
owner of the mark even when it is considered outside of the context of the owner's goods
and services” such that the mark has become part of the vernacular. Toro Co. v.
ToroHead, Inc., 61 U.S.P.Q.2d at 1180–81. Accordingly, we find that this dilution factor
favors applicant.
5. Whether the user of the mark or trade name intended to create an
association with the famous mark.

Opposer failed to present any evidence demonstrating that applicant intended to
create an association with its VIRGIN and VIRGIN-formative marks. There no evidence
showing that applicant tried to create an association with opposer's mark. In view thereof,
this dilution factor favors applicant.
6. Any actual association between the mark or trade name and the famous
mark.

Opposer failed to present any evidence demonstrating that there is any actual
association between applicant's VIRGINFARMS mark and its VIRGIN and
VIRGIN-formative marks. Since we have no evidence on which to conclude that potential
customers of applicant's products would make any association between the parties’ marks
when used on their respective products and in connection with opposer’s services, this
dilution factor favors applicant.
Opposition No. 91192733

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7. Balancing the factors.

The finding that opposer’s VIRGIN and VIRGIN-formative marks are not famous
for purposes of dilution, the fact that there is no evidence demonstrating any association
between the parties’ marks, and the fact that there is no evidence that applicant intended to
create an association with opposer’s mark outweigh the similarities of the marks and the
distinctiveness and substantially exclusive use of opposer’s VIRGIN and
VIRGIN-formative marks. Based on the record before us, opposer has not demonstrated
that the registration of applicant’s VIRGINFARMS mark will dilute its VIRGIN and
VIRGIN-formative marks by blurring.
D. Dilution by tarnishment.

There is no evidence in this record suggesting that opposer’s VIRGIN and
VIRGIN-formative marks will suffer any negative association by applicant's use of his
mark. In view of the foregoing, opposer has failed to prove its claim of dilution by
tarnishment.
Decision: The opposition is dismissed with prejudice.