Wolverine World Wide, Inc. and Wolverine Outdoors, Inc.v.Happy Puppies Athleticwear, Inc.

Trademark Trial and Appeal Board

Oct 11, 2016

No. 91219409 (T.T.A.B. Oct. 11, 2016)

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA776067
Filing date: 10/11/2016
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91219409
Party Plaintiff
Wolverine World Wide, Inc.
Correspondence
Address
KENNETH L WILTON
SEYFARTH SHAW LLP
2029 CENTURY PARK E STE 3500
LOS ANGELES, CA 90067-3021
UNITED STATES
kwilton@seyfarth.com, cprice@seyfarth.com, jsutherland@seyfarth.com,
kelko@seyfarth.com, LAXTTABDocket@seyfarth.com
Submission Rebuttal Brief
Filer's Name Carrie P. Price
Filer's e-mail kwilton@seyfarth.com, cprice@seyfarth.com, jsutherland@seyfarth.com,
kelko@seyfarth.com, LAXTTABDocket@seyfarth.com
Signature /s/ Carrie P. Price
Date 10/11/2016
Attachments Opposers Combined Reply and Response PUBLIC VERSION.pdf(180294 bytes
)
27190243v.2
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the Matter of Application Serial No. 86/168053
Published in the Official Gazette of July 22, 2014
WOLVERINE WORLD WIDE, INC.,
Opposer,
v.
HAPPY PUPPIES ATHLETICWEAR, INC.,
Applicant.
Opposition No. 91219409 (Parent)
Cancellation No. 92060576
And Related Cancellation Petition
OPPOSER’S REPLY BRIEF & BRIEF IN RESPONSE TO APPLICANT’S
COUNTERCLAIM PETITION TO CANCEL
Pursuant to 37 C.F.R. § 2.128(a)(1) and the Parties’ Stipulation Related to Trial
Procedure And Introduction of Evidence [18 TTABVUE]1 as noted and approved by the Board
on March 19, 2016 [19 TTABVUE], Opposer Wolverine World Wide (“Opposer”) hereby
submits its reply brief in support of its opposition to registration of the mark at issue in the
opposed application, and its brief as defendant in response to Applicant Happy Puppies
Athleticwear, Inc.’s (“Applicant”) counterclaim petition to cancel.
REDACTED VERSION
1 The Stipulation streamlined the presentation of evidence in this proceeding, allowing, inter alia,
for the use of discovery depositions and declarations in lieu of testimony, and the authentication
of business record documents presented through Notices of Reliance.
i
27190243v.2
TABLE OF CONTENTS
Page
OPPOSER’S REPLY BRIEF ...................................................................................................... 1
I. INTRODUCTION .......................................................................................................... 1
II. ARGUMENT .................................................................................................................. 1
A. Opposer Has Standing To Maintain Its Opposition ........................................................ 1
B. Opposer’s Evidence Establishes That HUSH PUPPIES® Mark Is Famous .................. 3
C. Opposer’s Registrations Are Unrestricted And Applicant’s Identification Of Goods
Is Unrestricted; Thus The Goods Are Presumed To Travel In All Customary
Channels Of Trade To All Potential Consumers ............................................................ 8
1. Opposer’s And Applicant’s Goods And Channels Of Trade Are Related.................. 9
2. Opposer’s And Applicant’s Consumers Are Similar................................................ 12
D. Opposer’s Mark And Applicant’s Mark Are Similar.................................................... 16
1. The Marks Are Similar In Sight, Sound and Commercial Impression ..................... 16
2. Applicant’s Evidence Of Third Party Registrations Is Unavailing........................... 19
E. Absence Of Evidence Of Actual Confusion Is Not Meaningful Here .......................... 22
III. CONCLUSION............................................................................................................. 23
OPPOSER’S BRIEF IN RESPONSE TO COUNTERCLAIM PETITION TO CANCEL 24
I. INTRODUCTION ........................................................................................................ 24
II. THE RECORD.............................................................................................................. 24
A. Applicant’s Evidentiary Objections Should Be Overruled ........................................... 25
III. STATEMENT OF FACTS ........................................................................................... 27
IV. ARGUMENT ................................................................................................................ 29
A. Applicant’s Petition Must Fail ...................................................................................... 29
1. Applicant Has Failed To Show At Least Three Consecutive Years Of Non-Use .... 30
2. Opposer’s Evidence Shows Intent To Continue Using And/Or Resume Use .......... 31
V. CONCLUSION............................................................................................................. 34
OPPOSER’S EVIDENTIARY OBJECTIONS........................................................................ 36
ii
27190243v.2
TABLE OF AUTHORITIES
Page(s)
Cases
7-Eleven, Inc. v. Wechsler,
83 USPQ2d 1715 (TTAB 2007) ..............................................................................................13
B. Rich’s Sons, Inc. v. Frieda Originals, Inc.,
176 USPQ 284 (TTAB 1972) ..................................................................................................10
Black & Decker Corp. v. Emerson Electric Co.,
84 USPQ2d 1482 (TTAB 2007) ..............................................................................................19
Bond Stores, Inc. v. Albert H. Weinbrenner Co.,
98 USPQ 233 (PTO 1953) .......................................................................................................10
Bose Corp. v. QSC Audio Prod., Inc.,
293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) ...................................................................6
Cartier Int’l A.G. v. Lance Coachman,
Opp. No. 91209815, 61 TTABVUE (TTAB 2016) ...................................................................9
Cels Enterprises Inc. v. California Ivy Inc.,
2 USPQ2d 1440 (C.D. Cal. 1987)......................................................................................10, 13
Combs v. All Surface Entm’t, Inc.,
Cancellation No. 92051490, 2012 TTAB LEXIS 375 (Oct. 5, 2012) .....................................31
Conran v. The Contran Stores, Inc.,
Cancellation Nos. 25165 & 22227, 2001 TTAB LEXIS 31 (TTAB 2001).............................32
Crawford v. Washington,
541 U.S. 36, 124 S.Ct. 1354 (2004).........................................................................................30
Eaton Allen Corp. v. Paco Impressions Corp.,
405 F. Supp. 530 (S.D.N.Y. 1975) ............................................................................................7
In Re Elbaum,
211 USPQ 639 (TTAB 1981) ..................................................................................8, 10, 12, 13
ELCA Enterprises, Inc. v. Sisco Equip. Rental & Sales, Inc.,
53 F.3d 186 (8th Cir. 1995) .......................................................................................................2
F.D.I.C. v. SLE, Inc.,
722 F.3d 264 (5th Cir. 2013) .............................................................................................1, 2, 3
iii
27190243v.2
Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F2d 1098, 192 USPQ 24 (CCPA 1976) ............................................................................19
Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc.,
618 F.3d 1025, 96 USPQ2d 1585 (9th Cir. 2010) ...................................................................15
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
228 USPQ 528, 782 F.2d 987 (Fed. Cir. 1986) .........................................................................5
Hard Rock Cafe International (USA) Inc. v. Elsea,
56 USPQ2d 1504 (TTAB 2000) ..............................................................................................19
Hydra Mac, Inc. v. Mack Trucks, Inc.,
184 USPQ 351 (CCPA 1975) ..................................................................................................17
Imperial Tobacco v. Philip Morris,
899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990) .................................................................32
Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734 (TTAB 2014) ............................................................................................12
Interstate Brands Corp. v. McKee Foods Corp.,
53 USPQ2d 1910 (TTAB 2000) ................................................................................................3
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co v. New Millennium Sports,
S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015) .........................................................20, 21
Johnson & Johnson v. Kumar,
Opp. No. 91152039, 2009 WL 4075364 (TTAB 2009) ..........................................................20
Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015) .........................................................20, 21
Kangol Ltd. V. KangaROOS U.S.A., Inc.,
23 USPQ2d 1945 (Fed. Cir. 1992)...........................................................................................12
Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd.,
774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985) .......................................................................6
Koppers Co., Inc. v. Krupp-Koppers GmbH,
517 F. Supp. 836, 210 USPQ 711 (W.D. Pa. 1981).................................................................34
Lacoste Alligator S.A. v. Maxoly, Inc.,
91 USPQ2d 1594 (TTAB 2009) ................................................................................................4
Lebewohl v. Heart Attack Grill LLC,
107 USPQ2d 1469 (S.D.N.Y. 2012)..................................................................................10, 11
iv
27190243v.2
Massey Jr. College, Inc., v. Fashion Institute of Tech.,
492 F.2d 1399, 181 USPQ 272 (CCPA 1974) .........................................................................29
McGregor-Doniger, Inc. v. Drizzle, Inc.,
599 F.2d 1126, 202 USPQ 81 (2d Cir. 1979) ..........................................................................16
In re Melville,
18 USPQ2d 1386 (TTAB 1991) ..............................................................................................11
In re Mr. Recipe, LLC,
118 USPQ2d 1084 (TTAB 2016) ........................................................................................5, 20
In re Nat'l Data Corp.,
224 USPQ 749 (Fed. Cir. 1985)...............................................................................................17
Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc.,
889 F.2d 1070, 12 USPQ2d 1908 (Fed. Cir. 1989) ...................................................................6
Nirvana, Inc. v. Nirvana For Health, Inc.,
Cancellation No. 92042878 (TTAB Dec. 1, 2010)..................................................................29
P.A.B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di
S.A. e M. Usellini,
570 F.2d 328, 332-334, 196 USPQ2d 801 (CCPA 1978)........................................................31
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) ...........................................................16, 20
In re Pix of Am., Inc.,
225 USPQ 691 (TTAB 1985) ..................................................................................................10
In re Rexal Inc.,
223 USPQ 830 (TTAB 1984) ..................................................................................................19
Rockwood Chocolate Co. v. Hoffman Candy Co.,
54 CCPA 1061, 372 F.2d 552, 152 USPQ 599 (CCPA 1967).................................................29
Seabrook Foods, Inc. v. Bar-Well Foods Ltd.,
196 USPQ 289 (CCPA 1977) ............................................................................................17, 24
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) .......................................................................6
Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983) .....................................................................10
v
27190243v.2
Starbucks U.S. Brands, LLC and Starbucks Corp. D.B.A. Starbucks Coffee Co. v.
Marshall S. Ruben,
78 USPQ2d 1741, 2006 WL 402564 (TTAB 2006) ................................................................16
See Stone Lion Capital Partners, L. P. v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157 (Fed, Cir. 2014) .......................................................8, 9, 20
Swatch AG v. M.Z. Berger & Co.,
108 USPQ2d 1463 (TTAB 2013) ..............................................................................................6
Takahashi v. Bradley Imports, Ltd.,
Cancellation No. 92040069, 2004 TTAB LEXIS 499 (TTAB 2004)................................32, 36
TCPIP Holdings Co. v. Haar Communications, Inc.,
57 USPQ2d 1969 (2d Cir. 2001)................................................................................................7
Villager, Inc. v. Dial Shoe Co.,
256 F. Supp. 694, 150 USPQ 528 (E.D. Pa. 1966)............................................................10, 13
W. Fla. Seafood, Inc. v. Jet Rests., Inc.,
31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994) ...................................................................29
Federal Rules
Fed. R. Civ. P. 25(c) ................................................................................................................1, 2, 3
Fed. R. Civ. P. 26(e) ................................................................................................................25, 26
Fed. R. Civ. P. 37(c) ......................................................................................................................26
Fed. R. Evid. 401 .....................................................................................................................40, 41
Fed. R. Evid. 602 ...............................................................................................................36, 39, 41
Fed. R. Evid. 702 .............................................................................................36, 37, 38, 39, 40, 41
Fed. R. Evid. 801 .............................................................................................36, 37, 38, 39, 40, 41
Fed. R. Evid. 802 .............................................................................................36, 37, 38, 39, 40, 41
Fed. R. Evid. 1002 ...........................................................................................36, 37, 38, 39, 40, 41
Statutes
15 U.S.C. § 1127......................................................................................................................24, 29
15 U.S.C. § 1125(c) .........................................................................................................................7
vi
27190243v.2
Other Authorities
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
(4th ed. 2016) .................................................................................................3, 4, 15, 19, 24, 29
37. C.F.R. § 2.113 ............................................................................................................................3
37 C.F.R. § 2.119(b)(6)..................................................................................................................42
37 C.F.R. § 2.120(j) .......................................................................................................................36
37 C.F.R. § 2.122(a).......................................................................................................................36
37 C.F.R. § 2.122(d) ......................................................................................................................24
37 C.F.R. § 2.123(a)(1)..................................................................................................................26
37 C.F.R. § 2.123(b) ......................................................................................................................24
37 C.F.R § 2.125(c)........................................................................................................................24
37 C.F.R. § 3.71 ...............................................................................................................................3
37 C.F.R. § 3.73(b) ..........................................................................................................................3
37 C.F.R. Part 2 (Oct. 7, 2016) ......................................................................................................25
TBMP (June 2016) § 512.............................................................................................................2, 3
TBMP (June 2016) § 704.10..........................................................................................................36
TBMP (June 2016) § 707.02(b) .....................................................................................................26
TBMP (June 2016) § 740.11..........................................................................................................36
1
OPPOSER’S REPLY BRIEF
I. INTRODUCTION
A key distinction overlooked by Applicant throughout Applicant’s brief is that
Applicant’s identification of goods is unrestricted—it is not restricted to certain sales channels; it
is not restricted to certain consumers; it is not restricted to goods of a certain price point.
Similarly, Opposer’s identification of goods in its registrations are similarly unrestricted. In this
Opposition proceeding, the Board’s inquiry is limited to the scope of Opposer’s unrestricted
registrations and Applicant’s unrestricted application. In other words, evidence of what, to
whom and where Applicant actually sells is irrelevant. Notwithstanding the fact its identification
is unrestricted, Applicant asks the Board for the unencumbered ability to sell its goods to all
potential consumers via all customary trade channels based on its current and limited use of its
mark. Yes the Board must analyze this case through an unrestricted lens.
Additionally, when the parties’ marks are viewed in their entirety (not with sub-parts in
isolation), the sight, sound and commercial impression of the marks are similar such that
confusion is likely, especially when considered in the context of Opposer’s famous mark, which
is entitled to a broad scope of protection. Thus, unless this Opposition is sustained, Applicant
will be positioned to exploit the shade of Opposer’s famous mark. For these reasons as set forth
below, the Opposer’s opposition should be sustained.
II. ARGUMENT
A. Opposer Has Standing To Maintain Its Opposition
Applicant argues that Opposer’s Opposition should be dismissed for lack of standing.
[44 TTABVUE 9-10.] For the following reasons, it should not.
Under Federal Rules of Civil Procedure 25(c), when a transfer of interest occurs after an
action is commenced, the action “may be continued by or against the original party unless the
court, on motion, orders the transferee to be substituted in the action or joined with the original
party.” Rule 25(c)’s language is permissive; it does not require transferees to substitute in an
action. See, e.g., F.D.I.C. v. SLE, Inc., 722 F.3d 264, 267–68 (5th Cir. 2013) (citing Wright,
2
Miller & Kane, Federal Practice and Procedure § 1958 for the proposition that that Rule 25(c) “is
wholly permissive”).
The Trademark Trial and Appeal Board Manual of Procedure’s provisions pertaining to
the assignment of marks and substitution of parties reflect this permissive nature of Rule 25(c).
For instance, Section 512.01 states:
When there has been an assignment of a mark that is the subject of,
or relied upon in, an inter partes proceeding before the Board, the
assignee may be joined or substituted, as may be appropriate,
upon motion granted by the Board, or upon the Board’s own
initiative. . . .
When a mark that is the subject of a Federal application or
registration has been assigned, together with the application or
registration, in accordance with Trademark Act § 10, 15 U.S.C.
§ 1060, any action with respect to the application or registration
which may or must be taken by the applicant or registrant may be
taken by the assignee[.] (emphasis added)
In other words, federal law anticipates that a party may transfer assets subject to a
pending action during that proceeding, and thus permits the original party/assignor to continue
the action with the resulting judgment binding on the assignor’s successor-in-interest, the
assignee, without divesting the assignor of its standing.2 Fed. R. Civ. P. 25(c); F.D.I.C. v. SLE,
Inc., 722 F.3d at 267–68. The purpose of this rule is clear—to promote efficiency by “allow[ing]
an action to continue unabated when an interest in a lawsuit changes hands, rather than requiring
the initiation of an entirely new lawsuit.” ELCA Enterprises, Inc. v. Sisco Equip. Rental & Sales,
Inc., 53 F.3d 186, 191 (8th Cir. 1995). Both the party that originally brought the action, as well
as its privy/successor-in-interest, have an interest in the action and standing to maintain it.
Here, Wolverine owned the HUSH PUPPIES® Mark and asserted registrations when it
commenced its opposition. See Opposer’s Notice of Reliance on Registrations of “HUSH
2 Despite this authority, Applicant declined Opposer’s proposal to bring a consented motion to
substitute Wolverine Outdoors for Wolverine Worldwide, which Opposer proposed on
September 29, 2016 in response to Applicant’s meritless standing challenge.
3
PUPPIES” [20 TTABVUE]. Therefore, because the assignment3 from Opposer to Wolverine
Outdoors, Inc. (“Wolverine Outdoors”), a wholly-owned subsidiary of Opposer, occurred after
this action was commenced, under the Federal Rules and the rules set forth in the Trademark
Rules of Practice, either entity may proceed with the opposition, and both will be bound by the
Board’s determinations. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910,
1910 n.1 (TTAB 2000) (noting the recordation of the assignment and joining the assignee as a
party at final decision).
Accordingly, Opposer requests that the Board reject Applicant’s attempt to dismiss this
Opposition on standing grounds.4 The Federal Rules and Trademark Rules of Practice make
clear that Opposer may maintain this proceeding despite a transfer of interest during its pendency.
See Fed. R. Civ. P. 25(c); F.D.I.C. v. SLE, Inc., 722 F.3d at 267–68; 37. C.F.R. § 2.113(c)-(d); 37
C.F.R. § 3.71 and 3.73(b); see also TBMP § 512. However, the Rules also make clear that the
Board, on its own motion, may choose to substitute Wolverine Outdoors for Opposer, join
Wolverine Outdoors in this proceeding should it wish, or it may simply allow Opposer to
maintain the proceeding, which will bind Opposer and Wolverine Outdoors (as assignee).
B. Opposer’s Evidence Establishes That HUSH PUPPIES
®
Mark Is Famous
It is axiomatic that the stronger the mark, the greater the protection it is afforded. See,
e.g., 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:73 (4th ed.
2016) (hereafter “McCarthy”). Consistent with this principle, famous marks are entitled to broad
protection:
Famous or strong marks enjoy a wide latitude of legal
protection. … Thus, a mark with extensive public recognition and
3 The assignment is recorded at Reel 5738, Frame Nos. 0558-0569 (Feb. 24, 2016).
4 From a practical standpoint there is no reason to dismiss this proceeding on standing grounds.
It would mean that both the Opposition and Counterclaim Petition to Cancel would be dismissed,
just to cause déjà vu for the Board when Opposer’s successor-in-interest inevitably brings a
Petition to Cancel any registration obtained by Applicant, and Applicant counterclaims with the
same Petition to Cancel for abandonment seen here. Accordingly, the parties would be exactly
where they are now, which again illustrates why Fed. R. Civ. P. 25(c) functions as it does.
4
renown deserves and receives more legal protection than an
obscure or weak mark. … Thus, the Lanham Act's tolerance for
similarity between competing marks varies inversely with the fame
of the prior mark. As a mark's fame increases, the Act's tolerance
for similarities in competing marks falls. … The driving designs
and origins of the Lanham Act demand the standard consistently
applied by this court—namely, more protection against confusion
for famous marks.
Id. (citing Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992)). Opposer’s record establishes that its HUSH PUPPIES® Mark has
acquired the status of a famous mark, and is thus entitled to a wide berth of protection.
“A famous mark has extensive public recognition and renown.” Lacoste Alligator S.A. v.
Maxoly, Inc., 91 USPQ2d 1594, 1596 (TTAB 2009). “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,’
widespread critical assessments and notice by independent sources of the products identified by
the marks, as well as the general reputation of the products and services.” Id. Here, Opposer has
offered evidence that its mark is famous, and has been famous for decades. [See 42 TTABVUE
pp. 8-10.5]
Despite this showing, Applicant contends that Opposer’s HUSH PUPPIES® Mark is not
“currently” famous and therefore it should not be given the broad scope of protection for which
famous marks are eligible. [44 TTABVUE 22.] Applicant points to the fact that Opposer first
established its fame as early as the 1960s and 1970s as evidence that the HUSH PUPPIES® Mark
5 Applicant takes issue with certain evidence cited in Opposer’s Opening Brief. [See 44
TTABVUE at p. 23, n.6.] Opposer clarifies here its citations to the record in support of the facts
raised. First, Opposer’s witness, Bill Mirecki, stated in his deposition that in 2014,
[42 TTABVUE p. 5.] Second,
Opposer inadvertently cited to Mr. Mirecki’s deposition for the evidence that “From 1992
through 1997, over three billion HUSH PUPPIES® consumer impressions were made.” It is
Exhibit 5 to Opposer’s Notice of Reliance on Business Records No. 1, 29 TTABVUE, that
contains the citation to that fact (highlighted in document; Bates numbered HP0001233).
5
is not famous today. [44 TTABVUE 23.] Yet the evidence in the record establishes that
Opposer has continued to sell goods under its HUSH PUPPIES® Mark,
Indeed, the fact that Applicant attempts to argue that the examples of recent pop culture
references to the HUSH PUPPIES® Mark “use the mark generically to refer to footwear,”
constitutes an admission by Applicant that Opposer’s HUSH PUPPIES® Mark is so well known
and famous it is essentially ubiquitous. Indeed, a mark cannot function as a generic term unless
it is well known as a source of goods or services. See, e.g., H. Marvin Ginn Corp. v. Int’l Ass’n
of Fire Chiefs, Inc., 228 USPQ 528, 530, 782 F.2d 987, 989-90 (Fed. Cir. 1986) (“The critical
issue in genericness cases is whether members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of goods or services in question.”). Here,
Opposer contends the mere fact Applicant makes such an argument6 highlights the fame of
Opposer’s HUSH PUPPIES® Mark. Moreover, the fact that the modern television references
may have been made derogatorily or in jest (see, e.g., 28 TTABVUE 9 (“I’m about to projectile
express myself all over your Hush Puppies.”) is not evidence of former fame as Applicant
contends. Rather it is evidence of current fame; if not, none of the young target audience of the
show Glee would get the joke—it would fall on deaf ears. Thus, the fact that the mainstream
media have been using Opposer’s Mark to refer to Opposer’s Product for more than 50 years
6 Applicant’s Petition to Cancel (No. 92060576) is based on alleged abandonment, not on the
grounds that Opposer’s HUSH PUPPIES® Mark has become generic. Thus, the issue of
genericness has not been briefed and is not at issue; nonetheless, Opposer states that its HUSH
PUPPIES® Mark, while having achieved fame, has not become generic and there is no evidence
of such in the record. In fact, one pop culture reference to the HUSH PUPPIES® Mark made in
the Simpson’s television program (see 24 TTABVUE 66: Mirecki Depo. Ex. 2) illustrates that
even writers for a popular television show understand that the HUSH PUPPIES® Mark is famous:
“…Principal Skinner: Hear that, he thinks my Try ‘n Save Brand Shush Muts are genuine
HUSH PUPPIES.” See In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1088 (TTAB 2016)
(recognizing contemporary references to the film JAWS indicated current fame of 40-year-old
film).
6
evidences the fame of Opposer’s Mark. [29 TTABVUE 8: Ex. 5; 28 TTABVUE 8, 12: Ex. 2, 16:
Ex. 3; 24 TTABVUE 66: Mirecki Depo. Ex. 2.]
Applicant’s attempts to further undermine Opposer’s evidence of fame also fall flat. For
instance, Applicant’s argument that an average of 1.8 million pairs sold annually is not evidence
of fame relative to the entire U.S. population is deceiving. [44 TTABVUE 24.] First, not every
single U.S. citizen is likely to be in the market for HUSH PUPPIES® shoes. Second, substantial
sales figures without reference to market share or size may still evidence fame, when viewed in
the context of “continuous and extensive critical consideration the marked products have
enjoyed.” As the Board acknowledged in Bose, “sheer numbers,” while not determinative of
fame on their own, can evidence indirect consumer awareness both in terms of vast purchaser
base and awareness as a result of extensive marketing, and can be sufficient to prove. See Bose
Corp. v. QSC Audio Prod., Inc., 293 F.3d 1367, 1372-75, 63 USPQ2d 1303 (Fed. Cir. 2002)
(citing annual sales of $50+ million and annual advertising of $5+ million over 17 years
supported conclusion of fame for the WAVE and ACOUSTIC WAVE products when coupled
with critical acclaim and evidence of consumers asking for the product by name); see also
Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463, 1469 (TTAB 2013) (confidential sales and
advertising figures contributed to fame of mark, in addition to fact that flagship store draws 1M+
visitors per year, and goods featured in many periodicals, including The New York Times); Nina
Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070, 1074, 12 USPQ2d 1908 (Fed. Cir.
1989) (stating “there is ‘no excuse for even approaching the well-known trademark of a
competitor ... and that all doubt as to whether confusion, mistake, or deception is likely is to be
resolved against the newcomer,’ and noting the $200 million in sales and $37 million in
advertising in a 5-year time period); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774
F.2d 1144, 1146, 227 USPQ 541, 542 (Fed. Cir. 1985) (noting “very substantial” nature of sales
and advertising as important indicator of fame); Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 674, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (same).
7
Moreover, like here, “where products are similar … the trademark may be a source of
confusion because it appears to convey the false impression that it is a ‘family mark’ of another
party’s product.” Eaton Allen Corp. v. Paco Impressions Corp., 405 F. Supp. 530, 533 (S.D.N.Y.
1975). Thus, because Opposer’s HUSH PUPPIES® Mark is famous, or at minimum well-known,
and because Opposer’s and Applicant’s goods are related, worn together and frequently sold
together, it is possible a consumer would think that Applicant’s HAPPY PUPPIES-labeled
products emanate from Opposer as a sub-brand of its HUSH PUPPIES® line, resulting in
confusion.
Contrary to Applicant’s contention [see, e.g., 44 TTABVUE at 26 n.7], that fact that
Opposer may be famous for selling casual shoes, not athletic shoes, is irrelevant; its registration
for shoes is unrestricted—thus it is presumed that Opposer trades in all types of shoes; and the
evidence indeed establishes that Opposer sells both casual shoes and “athleisure” shoes. See 20
TTABVUE (Notice of Reliance on Opposer’s Registrations); see also 31 TTABVUE (Notice of
Reliance on Business Records No. 3 with evidence of variations of Opposer’s THE BODY
SHOE® product line and ads for same.) Applicant cites to TCPIP Holdings Co. v. Haar
Communications, Inc., 57 USPQ2d 1969 (2d Cir. 2001) for the proposition that the fame of
Opposer’s HUSH PUPPIES® Mark should not extend to Applicant’s closely related goods. The
citation is inapposite. TCPIP related to the level of fame needed to satisfy the Trademark
Dilution Act, 15 U.S.C. § 1125(c), and addressed the nature of “niche” fame, where a mark was
only known to a small segment of the population. Id. at 1978. Given the fundamental nature of
the dilution statute—which allows enforcement of a mark beyond the related goods or services
required for infringement—the case did not stand for the proposition that fame of a mark did not
extend to related goods. Id. (citing DUPONT, BUICK, and KODAK as examples of famous
marks). Here, Opposer’s mark is famous, and plainly that fame protects it from encroachment
from similar marks for similar goods.
In sum, Opposer has put forth evidence showing the past and present fame of its HUSH
PUPPIES® Mark. As such, the mark is entitled to broad protection.
8
C. Opposer’s Registrations Are Unrestricted And Applicant’s Identification Of
Goods Is Unrestricted; Thus The Goods Are Presumed To Travel In All
Customary Channels Of Trade To All Potential Consumers
Opposer’s registrations for its HUSH PUPPIES® Mark are not restricted in terms of
channels of trade or consumers. [See Opposer’s Notice of Reliance on Registrations, 20
TTABVUE.] Accordingly, Opposer’s goods are presumed to travel in all customary channels of
trade to all potential consumers of its goods, including shoes; retail and on-line stores featuring
shoes, footwear, clothing and accessories; clothing, namely socks; clothing for men, women and
children-namely, shirts, belts and gloves. [Id.]
Similarly, Applicant’s identification of goods in its application is not restricted with
respect to trade channels or consumers. It states, “Athletic pants; Athletic shirts; Athletic shorts;
Athletic skirts; Athletic tights; Athletic tops and bottoms for running, walking, exercising;
Compression garments for athletic or other non-medical use, namely, compression shorts, capris,
pants, leggings and shirts for running, walking, exercising; Jackets; Moisture-wicking sports
pants; Moisture-wicking sports shirts; T-shirts; Tee shirts. [App. Serial No. 86168053.]
As a general rule, “where the goods in a cited registration are broadly described and there
are no limitations in the identification of goods as to their nature, type, channels of trade or
classes of purchasers, it is presumed that the scope of the registration encompasses all goods of
the nature and type described, that the identified goods move in all channels of trade that would
be normal for such goods, and that the goods would be purchased by all potential customers.” In
Re Elbaum, 211 USPQ 639, 640 (TTAB 1981). The Board therefore must focus its
determination on the application and registrations “rather than on real word conditions because
‘the question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application.’” Stone Lion Capital, 110 USPQ2d at 1157
(quoting Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 981 F.2d 937, 942, 16 USPQ2d 1783
(Fed. Cir. 1990)).
9
“[A]n application with no restriction on trade channels cannot be narrowed by testimony
that the applicant’s use is, in fact, restricted to a particular class of purchasers.”7 Id. In other
words, because the Parties’ identifications of goods are not restricted, Opposer and Applicant are
presumed to be selling their goods everywhere, to everyone. As such, as stated below, these
factors weigh in favor of Opposer.
1. Opposer’s And Applicant’s Goods And Channels Of Trade
Are Related
With respect to relatedness of goods, the question is not whether consumers would be
confused by the goods, but rather, whether consumers would be confused as to the source of
them. Thus, “it is sufficient for such purposes that a party claiming damage establish that the
goods are related in some manner and/or that conditions and activities surrounding marketing of
these goods are such that they would or could be encountered by same persons under
circumstances that could, because of similarities of marks used with them, give rise to the
mistaken belief that they originate from or are in some way associated with the same producer.”
Cartier Int’l A.G. v. Lance Coachman, Opp. No. 91209815, 61 TTABVUE at 13 (TTAB 2016)
(non-precedential) (citing Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722;
Edwards Lifesceiences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros.,
Inc., 201 USPQ 851, 854 (TTAB 1978)).
As stated above, because Opposer’s and Applicant’s identifications of goods are not
restricted, their goods are presumed to travel in all channels of trade customary for their type,
namely shoes, socks, apparel and accessories like belts, hats and scarves, including retail stores,
7 This conclusion is intuitive. A registration provides the registrant with the presumed exclusive
right to use its mark on or in connection with the identified goods or services. Applicant should
not be permitted to avoid the consequences of Section 2(d) because today its sales channels do
not intercept Opposer’s, only to obtain a registration that would allow it to preclude future third
parties from selling in every channel of trade for the identified goods, from multiple websites to
brick and mortar stores.
10
department stores and online. In Re Elbaum, 211 USPQ at 640; Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (the Board must not read limitations into the
identification of goods). Further, it has long been held that the goods at issue here are related:
shoes on the one hand, and apparel, like clothing, hats and accessories, on the other. See In re
Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (finding that shoes and apparel were
related because they are often purchased together and may be found in the same retail outlets)
citing cases, including Villager, Inc. v. Dial Shoe Co., 256 F. Supp. 694, 701, 150 USPQ 528,
533 (E.D. Pa. 1966) (“realities of the market place” are that shoes and clothing are related goods);
see also Bond Stores, Inc. v. Albert H. Weinbrenner Co., 98 USPQ 233, 234 (PTO 1953) (“it is
well settled that wearing apparel consisting of clothing and shoes are goods of the same
descriptive character.”) (citing In re Keller, Heumann & Thompson Co., 81 F.2d 399, 28 USPQ
221 (CCPA 1936); see also The Daniels and Fisher Stores Co. v. Padi Clothes Co., Inc., 33
USPQ 560 (Comm’r Patents 1937); Elder Manuf. Co. v. Int’l Shoe Co., 194 F.2d 114, 92 USPQ
330 (CCPA 1952)); B. Rich’s Sons, Inc. v. Frieda Originals, Inc., 176 USPQ 284, 285 (TTAB
1972) (“shoes and women's wearing apparel are closely related goods which could be purchased
in the same retail outlets by the same classes of purchasers and often during the same shopping
excursion to complete an ensemble”) (citations omitted).
Additionally, it is common for companies to make and sell both shoes and clothing under
one mark; shoes and wearing apparel are often sold together; they are often advertised and
promoted together. Villager, Inc., 150 USPQ at 533; Cels Enterprises Inc. v. California Ivy Inc.,
2 USPQ2d 1440, 1442 (C.D. Cal. 1987) (“[I]t is very common for shoe companies to expand into,
or license others to use their trademark on, clothing, and vice versa. Some notable examples
include Adidas, Nike, U.S. Shoe, Ralph Lauren, Calvin Klein, Bill Blass, Liz Claiborne, Gloria
Vanderbilt, and Esprit.”)
Faced with the facially obvious and unremarkable conclusion that shoes and apparel are
related, Applicant is forced to ignore clear precedent and conjure up distinctions unsupported by
either the record or the law. For instance, Applicant’s citation to Lebewohl v. Heart Attack Grill
11
LLC, 107 USPQ2d 1469 (S.D.N.Y. 2012) for the proposition that the Board should look to the
“goods currently sold under HUSH PUPPIES” exemplifies its attempt to avoid the nature of this
proceeding. [44 TTABVUE at 15, n.4.] The question presented here is whether there is likely to
be confusion between the marks shown in the application and registrations at issue for the
identified goods; the question is not how the marks might be used currently or in the future. In
Lebewohl, an Examining Attorney had determined that, from the PTO’s perspective, there was a
likelihood of confusion between the applicant’s marks and the registrant’s. Id. at 1473. In the
cited decision, the court determined that, contrary to the PTO’s determination regarding
registration, the parties’ use of their respective marks (in Las Vegas and Manhattan, New York
respectively) would not cause confusion. The issue here relates to the application and Opposer’s
registration, not the actual use of the respective marks.
Curiously, Applicant conflates the DuPont factors of similarity of marks with relatedness
of goods. In a vain attempt to distinguish the myriad cases stating the unremarkable proposition
that shoes are related to clothing, Applicant attempts to assert that they are only related if the
marks under which they are sold are the same. [44 TTABVUE at 16.] This is simply not the
proper analysis. Goods are related, or they are not. Marks are similar, or they are not. With
regard to the goods as identified, the case law shows that they are related. For example, in In re
Melville, 18 USPQ2d 1386, 1388 (TTAB 1991), the Board that “women’s shoes” and “women’s
pants, blouses, shorts and jackets” were “complementary goods” that “may be found in the same
stores,” holding that that determination supported a finding of likely confusion. Given the
unrestricted identifications of goods at issue, it is plain that the parties’ goods are related.
It is similarly irrelevant to this analysis that Applicant apparently intends only registration
of its mark for “comfortable running apparel for women.” [44 TTABVUE at p. 15 (citing Pita
Decl., 38 TTABVUE ¶¶ 6, 11, 17).] Applicant’s identification of goods is not restricted to
“comfortable” apparel, or even women’s apparel. [See App. Serial No. 86168053.] Also, it is
irrelevant that Applicant claims she only sells her goods through the brand’s website,
12
http://happy-puppies.myshopify.com/ and claims to not “sell through any brick-and-mortar
stores.” [44 TTABVUE at p. 16 (citing Pita Decl., 38 TTABVUE ¶ 14).]
Moreover, Applicant’s attempt to distinguish the Federal Circuit’s holding in Kangol Ltd.
V. KangaROOS U.S.A., Inc., 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) is unavailing. Contrary to
Applicant’s attempt to focus the Board on the purported “start-up” nature of Applicant’s business
[id.], the case actually stands for the proposition that, “[w]hen an application or registration fails
to specify or limit the channels of trade of classes of customers, we must assume that the goods
or services in question travel in all the normal channels of trade and to all prospective purchasers
for the relevant goods or services.” Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1743
(TTAB 2014) (citing Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012); Kangol Ltd. v. KangaROOS U.S.A., Inc., 23 USPQ2d 1945, 1946 (Fed. Cir.
1992)). Thus, Applicant’s attempt to turn the Board’s inquiry into one related to Applicant’s
current distribution channels is unavailing. Opposer’s identified goods and Applicant’s
identified goods should be considered to travel in the normal, and same, channels of trade.
Thus, because the Board must focus its determination not on the parties’ current use but
on the parties’ unrestricted identifications of goods, and because the parties’ goods are related
and will run in all customary channels of trade to all potential consumers, the DuPont factors
regarding relatedness of goods and channels of trade weigh in favor of Opposer.
2. Opposer’s And Applicant’s Consumers Are Similar
In keeping with the analysis above, Opposer’s registrations are not restricted with respect
to consumers. [20 TTABVUE (Notice of Reliance on Opposer’s Registrations). Similarly,
Applicant’s identification of goods is also not restricted to specific consumers. [App. Serial No.
86168053.] Thus, it is presumed that the goods of Opposer (shoes, apparel and accessories like
hats and scarves) and the goods of Applicant (athletic apparel) will be purchased by “all potential
consumers.” In re Elbaum, 211 USPQ at 640.
Applicant again misapprehends the focus of the Board’s inquiry when it argues that
“consumers of the HUSH PUPPIES® brand shoes seeking footwear for errands and casual, non-
13
athletic activity, are distinct from the consumers of the HAPPY PUPPIES brand athletic apparel,
who are seeking exercise clothing that is comfortable.” [44 TTABVUE at p. 20.] Opposer owns
registrations for “shoes,” “clothing, namely, socks” and “clothing for men, women and children-
namely, shirts, belts and gloves”; Applicant is seeking registration of its mark for various types
of athletic apparel.8 Nowhere in any of the identifications of goods is there a mention of errands
or exercise clothing nor (even if it were relevant) is there any evidence that those consumers are
distinct from one another. 9 Because the Board’s inquiry is confined to the cited registrations and
the application, Applicant’s “distinction” is unavailing, as it its citation to 7-Eleven, Inc. v.
Wechsler, 83 USPQ2d 1715 (TTAB 2007). In 7-Eleven, the Board was faced with an application
for “portable animal water dishes” and “soft drinks,” goods that obviously were unrelated. Here,
the goods are closely related, and thus this factor weighs in favor of a finding of likely confusion.
Similarly, it is irrelevant that Opposer may market specific products to individuals of a
certain age, gender or other attributes; Opposer’s registration’s identification of goods is not
restricted to certain consumers or prices. As such, it must be presumed that Opposer’s goods,
including shoes and accessories, are sold to all potential consumers of those goods, just like it
must be presumed that Applicant’s athletic apparel will be sold to all potential consumers of
those goods. In Re Elbaum, 211 USPQ at 640. As detailed above, because clothing and shoes
are worn together and frequently sold together and purchased together, there is overlap between
purchasers of Opposer’s goods and Applicant’s. See, e.g., Villager, Inc., 150 USPQ at 533; Cels
Enterprises Inc. 2 USPQ2d at 1442 (Examples of brand selling both shoes and clothing under the
same mark include “Adidas, Nike, U.S. Shoe, Ralph Lauren, Calvin Klein, Bill Blass, Liz
Claiborne, Gloria Vanderbilt, and Esprit.”).
8 “Athletic pants; Athletic shirts; Athletic shorts; Athletic skirts; Athletic tights; Athletic tops and
bottoms for running, walking, exercising; Compression garments for athletic or other non-
medical use, namely, compression shorts, capris, pants, leggings and shirts for running, walking,
exercising; Jackets; Moisture-wicking sports pants; Moisture-wicking sports shirts; T-shirts; Tee
shirts.” [See App. Serial No. 86168053.]
9 Opposer asserts and incorporates by reference its objections to Applicant’s evidence Nos. 8-11.
14
Applicant argues that “Opposer’s contention that the nature of target customers is likely
to create a likelihood of confusion is also undercut by evidence that consumers of both brands
are sophisticated and not impulse buyers.”10 [44 TTABVUE at p. 19.] However, Applicant’s
argument confuses the sophistication of the marketer, with the sophistication of the consumer.
In fact, the sophistication factor does not turn in favor of Applicant.
First, and most importantly, neither party’s identification of goods is restricted to goods
of a certain price. [See 20 TTABVUE; see also App. Serial No. 86168053.] Therefore, Board
precedent requires consideration of ordinary consumers who buy inexpensive items—the “least
sophisticated consumer in the class”—as well as those who buy more expensive items. See
Cartier Int’l A.G., supra, 61 TTABVUE 22 (non-precedential) (“Because the respective
description of goods include ‘jewelry’ and ‘leather handbags’ without any limit regarding a
particular price point, we must treat the goods as including inexpensive as well as more costly
jewelry and leather handbags, and therefore presume that purchasers for the products include
ordinary consumers who may buy inexpensive jewelry and leather handbags.”) (citing Stone
Lion Capital, 110 USPQ2d at 1163-64; In re Sailerbrau Franz Sailer, 23 USPQ2d 1719,1720
(TTAB 1992); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)).
Second, while Applicant cites to testimony from Opposer’s witness Irene Lau for the
proposition that Opposer’s customers are not impulse buyers, the testimony, when read in full,
stands for the proposition that Opposer’s customers are not necessarily impulse buyers—that
shoes are sometimes impulse purchases:
Q: Do you have an understanding of the term impulse buyer?
A. Yes.
Q. What is an impulse buyer from your understanding?
A. A consumer who is shopping for one thing but sees another
item and purchases that item.
Q. Do you believe that the typical consumer for Hush Puppy
branded shoe product is an impulse buyer?
10 Opposer asserts and incorporates by reference its Objection to Evidence No. 2.
15
A. No.
Q. And is it your understanding that in general consumers of Hush
Puppy branded shoes are individuals who buy those products after
doing some thinking about it and deciding whether or not they
want a shoe?
A. That may be part of it. I don't think it's 100 percent part of it
though.
Q. You would agree with me though, in general, people don't buy
shoes on impulse; is that correct?
A. Not all the time.
Q. I'm saying in general?
A. In general? No, I can't agree to that statement.
. . .
Q. In your view, for Hush Puppy branded shoe products, are those
often bought by people who do so on impulse?
A. Sometimes.
Q. Is there any -- has Wolverine commissioned any studies or does
it have any information that indicates the percentage of time that
its products -- its foot gear products are bought by impulse buyers
or, I'm sorry, are bought on impulse?
A. I don't know.
[See 21 TTABVUE, Lau Depo., 56:8-57:16.] See, e.g., Fortune Dynamic, Inc. v. Victoria's
Secret Stores Brand Management, Inc., 618 F.3d 1025, 1038, 96 USPQ2d 1585 (9th Cir. 2010)
(Quoting McCarthy §23:99 with approval; Consumers of young women's apparel and shoes are
not necessarily such “sophisticated” buyers that confusion is unlikely.).
Moreover, “the price level of the goods or services is an important factor in determining
the amount of care the reasonably prudent buyer will use. If the goods or services are relatively
expensive, more care is taken and buyers are less likely to be confused as to source or affiliation.”
McCarthy § 23:95. Here, the price of the Parties’ respective goods average well below $100,
which does not necessarily indicate the purchasers are sophisticated, discerning, non-impulse
buyers. [See Applicant’s Notice of Reliance on Internet Evidence, 35 TTABVUE 18-22 (Ex. 28-
29; showing shoes and accessories ranging in price from $14-$90) & 38 TTABVUE 9, 12-14,
16
Pita Decl. Exs. A-B (Applicant’s goods ranging from approx. $23-$110).] Cf. McGregor-
Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137, 202 USPQ 81, 92 (2d Cir. 1979) (holding
that “the relevant purchasing group tends to be sophisticated and knowledgeable about women's
apparel” when the goods were coats ranging from $100-$900.).
Third, from the fact that Opposer may be a sophisticated marketer, it does not follow that
its consumers are sophisticated. The evidence Applicant cites reflecting how Opposer has
painstakingly studied its consumers and divided them into six categories with distinct marketing
messages [44 TTABVUE 19-20 (citing 21 TTABVUE at Ex. 10)] does not reflect that Opposer’s
customers are necessarily discerning. Instead, the testimony and evidence shows that Opposer is
a sophisticated marketer that seeks to put targeted marketing messages before different segments
of its consumers. By way of analogy, the fact that The Coca-Cola Company may be a
sophisticated marketing machine does not mean its consumers are sophisticated or that the
purchase of a soda is anything other than an impulse purchase; inexpensive food products are
known to be purchased with a low degree of care. Starbucks U.S. Brands, LLC and Starbucks
Corp. D.B.A. Starbucks Coffee Co. v. Marshall S. Ruben, 78 USPQ2d 1741, 2006 WL 402564
(TTAB 2006) (retail coffee and coffee service are relatively inexpensive goods and services “and
thus more susceptible to confusion”; a likelihood of confusion was found).
In sum, Opposer’s and Applicant’s consumers are similar because the identification of
goods of each is not restricted to a certain type of consumer or price—the fact that Applicant, in
practice, may currently only target women is irrelevant because its identification of goods is
unrestricted. Similarly, the fact that consumers of $50 clothing and shoes may be somewhat
discerning does not mean they are in fact so sophisticated or discerning that likelihood of
confusion is eliminated. As such, these DuPont factors weigh in favor of Opposer.
D. Opposer’s Mark And Applicant’s Mark Are Similar
1. The Marks Are Similar In Sight, Sound and Commercial Impression
We begin by observing that the parties’ marks must be compared in their entireties with
regard to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v.
17
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005). Nonetheless, to the extent that the parties’ marks contain a common
element, it is proper to inquire whether, in considering the marks in their entireties, one element
is dominant—that is, whether it is more responsible than other elements for creating the
commercial impression communicated by the mark overall. See In re Nat'l Data Corp., 224
USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in their entireties.”).
Opposer contends that Applicant’s mark, “HAPPY PUPPIES,” is so similar to its
previously used and registered HUSH PUPPIES® Mark in sight, sound and commercial
impression so as to cause confusion. While Applicant disagrees, for the reasons stated below,
the similarity of the marks weighs in favor of sustaining Opposer’s opposition.
Applicant argues that its inspiration for creating its HAPPY PUPPIES mark distinguishes
it from Opposer’s rationale for creating its HUSH PUPPIES® Mark, rendering the “meaning of
the two marks very different, and the associated commercial impressions … quite distinct.” [44
TTABVUE at p. 12.] However, there is no evidence in the record of how consumers interpret
these marks, which controls; rather, there is only evidence of what the parties intended their
marks to convey.11 See Hydra Mac, Inc. v. Mack Trucks, Inc., 184 USPQ 351, 351 (CCPA 1975)
(“[T]he commercial impression intended by the user of a mark is entitled to very little
consideration in resolving the issue of likelihood of confusion, etc., where, as the board here
found, the actual impression created by the mark is different from the impression allegedly
intended by the user.”); Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196 USPQ 289 (CCPA
1977) (“[R]egardless of Seabrook’s intentions, it is the association, by the consumer, of the ‘oval’
design with Seabrook as the source that is determinative.”) (emphasis in original).
11 Opposer incorporates by reference its objections to Applicant’s evidence in support of the
sight, sound and meaning of the parties’ marks as detailed in its Objection Nos. 3-7.
18
Both parties created their marks to convey an impression of comfortable products. [See
38 TTABVUE ¶¶ 6-7, 18 (stating that Applicant created its products to address the problem of
“too short” and not comfortable; acknowledging that consumers of Applicant’s products seek to
“maximize comfort” and that this “functionality … is the leading factor which drives HAPPY
Puppies’ consumers”); 21 TTABVUE Lau Depo., 13:18-14:14 (describing the analogy that a
person’s “dogs” are not “barking” —i.e., that his feet are happy—thanks to the comfortable
HUSH PUPPIES® shoes.] Therefore, Opposer contends that because the marks are so similar in
appearance and were created to indicate the source of products made with maximum comfort in
mind, they convey similar commercial impressions.
Next, Applicant contends that the marks are dissimilar in sound because “Hush” is a one-
syllable word, and “Happy” is a two-syllable word. [44 TTABVUE at p. 12.] It tries to further
distinguish the sound of the marks by stating that “the phrase HAPPY PUPPIES contains a
consonance … between two words due to the ‘ppy’ and ‘ppies’ at the end of each of the two
words, while ‘HUSH PUPPIES” has no such consonance.” However, Applicant’s evidence in
support of this argument is inadmissible, as set forth in its objections at pages 36-40 herein, and
should not be considered.12 Nevertheless, the words are similar in sound despite Applicant’s
contentions because both contain the English word “Puppies” preceded by a 4- or 5-syllable
word starting with a hard “H” sound.
Lastly, the words are also similar in sight. Applicant’s assertion that the “first work of a
mark typically provides the strongest commercial impression” ignores the nature of the marks at
issue. Here, the common element – PUPPIES – modified by the first word in each mark, one a
verb and one an adjective:
HUSH PUPPIES
HAPPY PUPPIES
12 Opposer incorporates by reference its objections to Applicant’s evidence in support of the
sight, sound and meaning of the parties’ marks as detailed in its Objection Nos. 3-7.
19
“Happy” is an adjective that modifies “Puppies,” describing their state of mind. [See 38
TTABVUE ¶ 8.] In Opposer’s Mark, HUSH PUPPIES®, “Hush” also modifies the dominant
word, “Puppies,” emphasizing their quiet (e.g., not barking) nature. [21 TTABVUE Lau Depo.,
13:18-14:14.] The mere “addition of a suggestive or descriptive element is generally not
sufficient to avoid confusion.” McCarthy § 23:50; see also In re Rexal Inc., 223 USPQ 830
(TTAB 1984) (finding likelihood of confusion between GOLIATH for pencils and LITTLE
GOLIATH for a stapler). Given the highly distinctive word PUPPIES, and the nature of the
other word in each mark, “Puppies” is in fact the dominant portion of the marks. See Hard Rock
Cafe International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1512 (TTAB 2000) (finding
COUNTRY ROCK CAFÉ and HARD ROCK CAFÉ confusingly similar, rejecting Applicant’s
argument that the differing first words were dominant); Black & Decker Corp. v. Emerson
Electric Co., 84 USPQ2d 1482, 1492 (TTAB 2007) (finding DIRT HAWG and WATER HAWG
confusingly similar to HEDGE HOG, GRASS HOG and similar two word marks).
Contrary to Applicant’s position, goods do not become unrelated simply because the at-
issue marks are not identical. The similarities between the marks and goods are considered, not
just whether they are mirror images. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes
to the cumulative effect of differences in the essential characteristics of the goods and the
differences in the marks.”). Accordingly, because Applicant’s “HAPPY PUPPIES” mark is
similar in sight, sound and commercial impression to Opposer’s previously used, registered and
famous HUSH PUPPIES® Mark, this DuPont factor weighs in Opposer’s favor as well.
2. Applicant’s Evidence Of Third Party Registrations Is Unavailing
Applicant argues that its evidence of third-party registrations that contain variations of
the word “puppy” or “hush” are evidence that confusion is unlikely. [44 TTABVUE at p. 21-22.]
This is not the case.
First, the mere fact these third-party marks exist is not necessarily compelling. This type
of third-party evidence traditionally has “minimal probative value” where, as here, it is not
20
accompanied by evidence of consumer awareness or actual use. See Stone Lion Capital Partners,
L. P. v. Lion Capital LLP, 746 F.3d 1317, 1320, 110 USPQ2d 1157, 1160 (Fed, Cir. 2014)
(discounting the mere existence of other third-party registrations and affirming finding that
applicant’s STONE CAPITAL mark was confusingly similar to the existing LION CAPITAL
mark); see also Johnson & Johnson v. Kumar, Opp. No. 91152039, 2009 WL 4075364, at *13
(TTAB 2009) (non-precedential) (holding that evidence of registrations alone, without evidence
of use, are “not evidence the marks are in use and thus are not probative evidence under the sixth
du Pont factor.”); Palm Bay Imports, Inc., 73 USPQ2d at 1693 (“Evidence of third-party use of
similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”) (emphasis added); In re Mr. Recipe, LLC, 118 USPQ2d at
1089 (evidence of use or consumer perception generally required and distinguishing Juice
Generation and Jack Wolfskin). Here, Applicant has not offered any evidence of consumer
perception of this third-party marks or of their use.
Second, by the fact that these marks were registered in connection with Class 25 goods, it
does not follow that consumers will necessarily associate the mark with the Class 25 goods. For
instance, given that the Dr. Pepper Company owns the SLUSH PUPPIE mark, the primary
product consumers would likely associate with the mark SLUSH PUPPIE is a frozen beverage—
the Class 25 goods likely exist for tangential, promotional reasons.
Third, Applicant’s attempt to draw a parallel between the case at bar and Juice
Generation falls flat. In Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015), the court held that the existence of third party use and registrations
of similar marks all using “peace, love [, / &] [food / beverage],” evidenced a lower likelihood of
confusion because consumers were conditioned to recognize that the “peace, love” portion of the
mark at issue was not a source identifier, thus lowering the likelihood of confusion. There, the
evidence of the existence of the registrations themselves was key because it indicated that “the
phrase PEACE & LOVE carries a suggestive or descriptive connotation in the food service
21
industry, and is weak for that reason” by nature of the fact that “peace, love” + a particular food
item was used so frequently in a particular way. Id.
What Juice Generation does not stand for is the proposition that several registrations that
happen to include an element common to the marks at issue somehow impacts the distinctiveness
of the Opposer’s mark.13 Here, unlike in Juice Generation, Applicant’s list of third party
registrations that happen to include a variant of the word “Puppy” or “Hush” (but not even in
combination) is not evidence that variations of “Puppy” or “Hush” in some portion of some mark
has a suggestive or descriptive connotation with respect to clothes or shoes. [44 TTABVUE at p.
21; 33 TTABVUE.] Indeed, only one of the marks cited by Applicant (“PUPPIES N
PUDDLES”) uses the plural “PUPPIES” like Opposer’s Mark and Applicant’s Mark, and that
mark is plainly dissimilar to the marks at issue. None of the third party registrations begin with
an H-word followed by the dominant word “PUPPIES.” Furthermore, here is no evidence here
that “some segment that is common to both parties’ marks may have a ‘normally understood and
well-recognized descriptive or suggestive meaning.” Juice Generation, 794 F.3d at 1339. There
is no evidence that five registrations of marks that include “Hush” and 13 registrations that
include a variation of “Puppy” has had any impact whatsoever on consumers, let alone has
trained them to distinguish between marks on the basis of “minute distinctions.” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373-
74, 116 USPQ2d 1129 (Fed. Cir. 2015) (“voluminous” evidence of third-party registrations
(100+) of composite marks utilizing paw prints demonstrated the “ubiquitous” use of paw prints
on clothing as source identifiers); see also Cartier Int’l A.G., supra, 61 TTABVUE 18 (noting
that evidence of three third-party registrations, with no evidence regarding extent of use or that
13
See 33 TTABVUE (Applicant’s Notice of Reliance on Third-Party Registrations, Exhibits 1-
18, citing the following registrations: PUPPY POSSE; SLUSH PUPPIE; PUPPY KISSES;
POUND PUPPY; CUTE PUPPY; PUPPY GUS; PUPPY & BEAN; PUPPIES N PUDDLES;
LOVE PUPPY LOVE; LUCKY PUPPY; PUPPY JONES; HUSH BUDDY; BODY HUSH;
ORANGE HUSH; HONEY HUSH; HUSH HIDE; SIC PUPPY; MR. PUPPY). Opposer requests
the Board take judicial notice that the registration of SIC PUPPY, Reg. No. 3,712,026, has been
cancelled.
22
consumers were conditioned by wide-spread third party use, did not undercut Opposer’s
evidence of its strong mark).
In sum, this list of third-party marks does not support Applicant’s cause. Without further
evidence regarding how consumers perceive these marks, or how they are actually used, they do
not provide a compelling reason to presume consumers will be less likely to be confused by the
similarity of the at-issue marks.
E. Absence Of Evidence Of Actual Confusion Is Not Meaningful Here
Applicant contends that because there is no evidence of actual consumer confusion
between its “HAPPY PUPPIES” mark and Opposer’s HUSH PUPPIES® Mark, this DuPont
factor weights in favor of Applicant. [44 TTABVUE at p. 27.] Yet “the absence of any reported
instances of confusion is meaningful only if the record indicates appreciable and continuous use
by the parties of their marks for a significant period of time.” Cartier Int’l A.G., supra, 61
TTABVUE 23 (emphasis added) (citing Citigroup Inc. v. Capital City Bank Grp., Inc., 94
USPQ2d 1645, 1660 (TTAB 2010), aff’d 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011);
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992)). Here, it is not.
As Applicant points out, neither party is aware of actual instances of confusion. [44
TTABVUE at p. 27 (citing 21 TTABVUE Ex. 3; see also 38 TTABVUE: Pita Decl., ¶ 30).] Yet
there is also no evidence that a reasonable opportunity for confusion has occurred. Applicant
states that it only sells its goods through its own website, http://happy-puppies.myshopify.com
[35 TTABVUE: Pita Decl., ¶ 14], and that all-time—only since September 2014—Applicant has
received less than 3,000 orders from roughly 2,000 customers [id., ¶ 30]. There is no evidence in
the record that Applicant has spent any funds advertising or promoting its goods, or where such
promotion (if any) would have occurred. The de minimis sales and lack of evidence of
marketing or promotional efforts compels the conclusion that Applicant’s “HAPPY PUPPIES”
athleticwear have made little impact on the market, and therefore, there has not been a
reasonable opportunity for confusion to occur. See, e.g., Cartier Int’l A.G., supra, 61
TTABVUE 24 (noting that de minimis sales, only $6,000 spent on advertising (mostly through
23
giveaways), and sales to individuals in only four U.S. metro markets indicated lack of market
impact and neutralized evidence of lack of confusion). Thus, this DuPont factor does not favor
Applicant’s position either.
III. CONCLUSION
For the foregoing reasons, the Opposition should be sustained. Opposer’s mark is
famous, and as a famous mark, it is entitled to broad protection. Applicant’s “HAPPY PUPPIES”
mark is so similar in sight, sound and commercial impression when compared to Opposer’s
HUSH PUPPIES® Mark that confusion is likely. Further, because the identification of goods in
Opposer’s registrations and Applicant’s application are unrestricted, and the goods themselves
are related, the party’s goods will run in the same channels of trade to the same consumers. As
such, this Opposition should be sustained and registration refused.
/ / /
/ / /
/ / /
24
OPPOSER’S BRIEF IN RESPONSE TO COUNTERCLAIM
PETITION TO CANCEL
I. INTRODUCTION
Applicant brings a counterclaim petition to cancel Opposer’s registration for its HUSH
PUPPIES® Mark for “clothing for men, women, and children-namely, shirts, belts and gloves,”
U.S. Registration No. 1,053,340.14 To prevail, Applicant must show that Opposer has
discontinued its use with intent not to resume such use. 15 U.S.C. § 1127. Intent not to resume
use may be inferred from three consecutive years of non-use. Id. Opposer can rebut this
presumption with evidence that it has either used the mark, that it has intended to resume use, or
that its actions constitute “excusable non-use.” As set forth below, the evidence is insufficient
for the petition to cancel to be sustained. While there is some evidence of non-use, Opposer has
successfully rebutted the abandonment presumption with both testimonial and documentary
evidence that it has the intent to resume use, and lacked intent to abandon, its HUSH PUPPIES®
Mark with respect to shirts, belts and gloves. Because abandonment of a trademark registration
is considered a forfeiture of an important right, it must be strictly proved. See McCarthy § 17:12;
P.A.B. Produits, 196 USPQ at 804. Applicant has failed to do so here. Accordingly, the petition
to cancel should be overruled.
II. THE RECORD
The record, which was timely filed through Notices of Reliance under Rule 2.122(d) and
Notices of Taking of Testimony under Rule 2.123(b) of the Trademark Rules of Practice, and the
transcripts of deposition testimony taken and filed under Rule 2.125(c) pursuant to the parties’
Stipulation Related to Trial Procedure And Introduction of Evidence [18 TTABVUE] as noted
and approved by the Board [19 TTABVUE] on March 19, 2016, consists of docket entries 20-40
TTABVUE, as set forth on page three of Opposer’s Opening Brief [42 TTABVUE].
14 Applicant withdrew its petition to cancel with respect to U.S. Registration No. 2,040,768 for
“clothing, namely socks,” in its Opening Brief. See 44 TTABVUE at p. 32 n.8. Opposer
similarly declined to pursue its dilution claim.
25
A. Applicant’s Evidentiary Objections Should Be Overruled
Applicant objects to and moves to strike Opposer’s evidence submitted as 39-40
TTABVUE, the Notice of taking of Testimony of Irene Lau and the corresponding testimony and
exhibits. [44 TTABVUE at p. 38.] Applicant contends this evidence should not be admitted
because it was not produced during discovery and thus was “late-produced.” [Id. at 39.] This
objection should be overruled, and the evidence admitted, for the following reasons.
First, Applicant’s timeliness argument ignores the timeline of this proceeding: discovery
closed on November 4, 2015, several months before Opposer’s Testimony Period closed on
March 18, 2016 and its rebuttal testimony period closed on June 14, 2016. [See 19 TTABVUE
(Trial Stipulation Order).] As such, certain documents including the purchase order invoices
from March 2016 [40 TTABVUE 10-12] and emails between Ms. Lau and an accessories vendor
from March and April 2016 [id. at 45-46] were not even in existence during the discovery period.
Further, because the evidence was presented in response to Applicant’s petition to cancel, it was
properly introduced during Opposer’s section testimony period. [Id.] Thus, Opposer’s
submission of this evidence did not violate the rules, but rather, complied with them, specifically
its continuing obligations imposed by Fed. R. Civ. P. 26(e).15
Second, while this testimony and the corresponding exhibits were not produced during
discovery, the parties’ trial stipulation as ordered by the Board [18-19 TTABVUE] affirmatively
permitted the offering of testimony by declaration during the testimony periods, and the ability to
depose witnesses16 on such declarations:
15 It is improper, and sophistic, for Applicant to rely on Opposer’s responses to requests for
production of documents as evidence of Opposer’s failure to produce the documents attached to
Ms. Lau’s testimonial declaration during the discovery period. These responses are not evidence.
As set forth in the TBMP, while interrogatories and requests for admission may be submitted by
Notice of Reliance and relied on as evidence, responses to requests for production may not. [See
Opposer’s Objection to Evidence No. 1, incorporated herein by reference.] Further, the evidence
did not even exist during the discovery period; proceedings are to be decided on their merits, not
the accidental timing that relevant evidence came into existence after the procedural mechanism
for identifying that evidence was served.
16 Not coincidentally, this procedure—testimony by declaration with the right of cross-
examination—is consistent with the Board’s new Rules. See 37 C.F.R. Part 2 (Oct. 7, 2016)
available at: https://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf; see
26
Declarations: Either party can introduce testimonial evidence during their
respective trial testimony periods via sworn declaration or affidavit which will be
treated as trial testimony that can be relied on by both parties.
[Id.]
Third, the stipulation between the parties also provided that:
Further Cooperation: The parties agree to cooperate in good faith to resolve
any issues that may arise in implementing the procedures set forth above,
including timely raising any curable objections to evidence, inadvertent errors in
filing, timing issues, and other procedural matters.
[Id.] Opposer contends that any issues and objections raised by Applicant to the declaration and
its exhibits were curable, and thus should have been raised earlier. Had Applicant complied with
the cooperation provision of the Trial Stipulation and raised this issue with Opposer, Opposer
would have agreed to allow Ms. Lau to have been cross-examined in-person or upon written
questions. However, because Applicant did not raise these issues with time to allow the parties
to cure them, it is improper for Applicant to now seek to capitalize on its own delay. Put another
way, failure to timely disclose evidence only results in exclusion if the untimely disclosure was
not justified or caused harm. See Fed. R. Civ. P. 37(c); see also TBMP § 707.02(b) (“If the
objection which is one that could have been cured promptly, and was not timely raised, the
objection is deemed to be waived.”). Here, the disclosure was substantially justified: the
disclosure was made pursuant to the parties’ stipulation and six weeks before Opposer’s opening
brief was due—more than enough time for the parties to have agreed to a cross-examination
procedure or petitioned the Board for more time to do so. Further, any “harm” caused was of
Applicant’s own making by failing to cooperate with Opposer in an attempt to cure any
perceived issue.
also 37 C.F.R. § 2.123(a)(1) (“If a testimony declaration can be stricken simply because the
opposing party chooses not to exercise its right of cross-examination, then the time-saving
rationale for the rule would be defeated.).
27
In sum, because Opposer’s testimony from Ms. Lau and the accompanying exhibits were
properly produced during its testimony period consistent with the parties’ stipulation, and
because any perceived issue could have been cured had Applicant complied with the “further
cooperation” provision of the parties’ stipulation, Applicant’s objection should be overruled and
the evidence admitted.17
III. STATEMENT OF FACTS
Opposer obtained registration of its HUSH PUPPIES® Mark for “clothing for men,
women, and children-namely, shirts, belts and gloves,” U.S. Registration No. 1,053,340, on
November 23, 1976. [20 TTABVUE 14-15.]
Opposer’s HUSH PUPPIES® Mark was used on t-shirts that were sold by Opposer
continuously until 2008. [Id., 18:5-7; 22:3-7.] And, as recently as 2013, Opposer offered shirts
bearing the HUSH PUPPIES® Mark. [Id., 19:5-12; 21:11-18.] Opposer also sells apparel under
the HUSH PUPPIES® brand in Europe, South America and Asia. [24 TTABVUE (Mirecki
Depo.) at 48:21-50:25.] While sales of goods under a mark outside the United States does not
constitute use to support a registration, it is probative of the fact that the mark owner does not
intend to abandon use of the mark on those same goods in the United States.
Since at least 1995, apparel and accessories, including socks, gloves and belts, have been
part of the HUSH PUPPIES® brand’s strategy. [See 21 TTABVUE (Lau Depo) at 36:19-37:5
(“Our overall strategy for the Hush Puppies brand is to develop brand extension categories
including apparel but also including accessories such as small leather goods, hand bags, belts,
cold weather accessories, rain -- jewelry”); see also 40 TTABVUE (Lau Decl.) ¶ 7 & Ex. B
(2013-14 Brand Positioning document) at p. 5 (“Evolving the Brand” slide mentions “Lifestyle
apparel and accessories”); p. 7 (SWOT analysis notes a HUSH PUPPIES® brand strength as
“Strong Apparel and Accessories model - with momentum”).] For example until 2010, Opposer
17 Even if the Board were to strike Ms. Lau’s declaration and exhibits (which it should not) much
of the information therein simply expands upon of Ms. Lau’s deposition testimony cited here and
other documentary evidence, still permitting Opposer to defeat Applicant’s petition to cancel.
28
continuously sold belts under the HUSH PUPPIES® Mark. [Id., 26:24-27:22.] In addition,
Opposer sold gloves (when seasonally appropriate) from 1998 to 2013. [Id., 28:1-21; 21
TTABVUE (Lau Depo. Ex. 3: Opposer’s Interrogatory responses) at p. 4 (Answer to
Interrogatory No. 3; gloves last sold in 2013).]
More recently, Ms. Lau, who has held the title of Director of Apparel and Accessory
Licensing for the HUSH PUPPIES® brand for more than 15 years, has been communicating with
vendors to produce accessories such as hats, scarves, belts, gloves, jewelry, socks, tights and
leggings, to be sold under Opposer’s HUSH PUPPIES® Mark. [See 40 TTABVUE ¶ 8 & Ex. C
(emails dated Nov. 2013 through April 2016 between Ms. Lau and vendor discussing Ms. Lau’s
desire to contract for hats, scarves, belts, cold weather apparel (including hats and gloves) and
jewelry, as well as target price points and desired quantities).] Indeed, it is part of Opposer’s
2016 brand strategy to incorporate headwear, hosier and legwear (like leggings) scarves and
seasonal, cold weather items like gloves and hats to its offering through retail and e-commerce
outlets. [Id., ¶¶ 8-9.]
In addition, accessories including handbags and scarves have been available as recently
as April 22, 2016 on Opposer’s website, www.hushpuppies.com, which includes a separate and
distinct “Accessories” section. [See 35 TTABVUE 6-8 (HUSH PUPPIES® website landing page,
showing “Accessories” section, showing graphics of apparel and jewelry in addition to shoes);
10 & 13 (HUSH PUPPIES® website displaying handbags); 16, 21-11 (same displaying various
scarves and handbags); see also 21 TTABVUE (Lau Depo.), at 52:10-54:4 (discussion of
Opposer selling HUSH PUPPIES® brand socks, hats and scarves available intermittently from
2016 through “today” (Oct. 16, 2015).] Items including socks, handbags, plush toys, scarves and
shoe care are sold at HUSH PUPPIES® owned retail stores as well. [21 TTABVUE (Lau Depo)
at 16:12-15.]
While some goods are seasonal (such as cold weather items like gloves) and thus are not
always in market, at other times gaps have occurred due to vendor changes. During these gaps
Opposer has never intended to not resume use of its HUSH PUPPIES® Mark on apparel and
29
accessories, and in fact continues to intend to sell socks, shirts, belts, gloves and other similar
items under its HUSH PUPPIES® Mark. [See id. ¶ 10; see also 21 TTABVUE (Lau Depo.) at
53:6-54:4 (discussing one reason for intermittent sales due to “partnership and minimum issues”);
see also 24 TTABVUE (Mirecki Depo) at 12:11-13: (“Q: [W]hat kind of extension of categories
do you expect in the [] owned market? A: …categories that relate to handbags, slippers, gloves,
all categories that we’ve either been in, currently in or want to get into[.]”]
IV. ARGUMENT
A. Applicant’s Petition Must Fail
Applicant bears the burden of proof on its petition to cancel Opposer’s HAPPY PUPPIES
Mark for shirts, gloves and belts. Because a cancelation results in a forfeiture, and the law
abhors forfeiture, cancellation should not be granted lightly. “Cancellation of a valuable
registration around which a valuable business good-will has been built should be granted only
with ‘due caution and after a most careful study of all the facts.’” Rockwood Chocolate Co. v.
Hoffman Candy Co., 54 CCPA 1061, 372 F.2d 552, 554, 152 USPQ 599 (CCPA 1967) (quoting
Sleepmaster Prods. Co v. Am. Auto-Felt Corp., 241 F.3d 738, 788, 113 USPQ 63 (CCPA 1957)).
Thus, to prevail Applicant must show (1) discontinued use of the Mark in connection with the
described goods; and (2) Opposer’s intent not to resume use of the trademark. See 15 U.S.C. §
1127, McCarthy § 20:64; Massey Jr. College, Inc., v. Fashion Institute of Tech., 492 F.2d 1399,
1404, 181 USPQ 272 (CCPA 1974). A presumption of validity attaches to a registered mark;
thus, the party seeking cancellation must rebut this presumption. Id.; see also W. Fla. Seafood,
Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125, 31 USPQ2d 1660 (Fed. Cir. 1994). However, if the
petitioner can show three consecutive years of non-use then there arises a rebuttable presumption
of intent to abandon, which shifts the burden of production to the registrant to show lack of intent
to resume use. See Nirvana, Inc. v. Nirvana For Health, Inc., Cancellation No. 92042878, at
*10-11 (TTAB 2010) (non-precedential) (rebuttable presumption relieves the party claiming
abandonment having to affirmatively prove registrant’s intent not to resume use; registrant can
30
rebut presumption with evidence showing either that it used the mark or that it intended to
resume use during the time in question).
As set forth below, Applicant fails to meet these requirements.
1. Applicant Has Failed To Show At Least Three Consecutive Years
Of Non-Use
Opposer’s at-issue registration applies to “clothing for men, women, and children-namely,
shirts, belts and gloves.” [20 TTABVUE 14-15.] As such, Opposer addresses each good
described separately below.
Shirts: Opposer last offered t-shirts in connection with its HUSH PUPPIES® mark in
2013.18 [21 TTABVUE (Lau Depo.) 19:5-12.]
Belts: Opposer last offered belts in 2010 because it has been unsuccessful in securing a
partner to produce them since that time. [21 TTABVUE (Lau Depo.) 26:24-27:22; 50:17-51:22.]
Gloves: Opposer last offered gloves in 2013; it was unable to continue doing so with its
then-manufacturer [Id., 28:2-21.] While
gloves from this manufacturer are still in the market19 in circulation, Opposer is looking for
another manufacturer to partner with to replace [Id.]
Ms. Lau was deposed regarding the facts stated above in October 2015. Accordingly, the
evidence does not establish three years of consecutive non-use for shirts and gloves—as of that
date, there was only two years of non-use between the 2013 dates Opposer last offered t-shirts
and gloves and the date of the testimony. Moreover, Applicant plead in its petition to cancel,
18 There is a discrepancy between the last offered date for t-shirts between Opposer’s
interrogatory responses and deposition testimony. Opposer’s interrogatory responses (dated June
2015) indicate the date was “on or around 2012,” however, Ms. Lau later testified that the last
date t-shirts were offered was in 2013 in conjunction with an Airstream promotion [see 21
TTABVUE at 19:10-24]. Thus, Opposer contends Ms. Lau’s later, live testimony should be
relied upon for this date because the opportunity for cross-examination during the deposition
supports an inference of reliability. See, e.g., Crawford v. Washington, 541 U.S. 36, 62, 124 S.Ct.
1354 (2004) (the reliability of evidence can be assessed “by testing in the crucible of cross-
examination”).
19
See 21 TTABVUE (Lau Depo) Ex. 3: Opposer’s Interrogatory Responses, Answer to
Response No. 4 at p. 5
31
filed on December 23, 2014, that Opposer had not used its HUSH PUPPIES® Mark in connection
with shirts, belts and gloves for at least three consecutive years prior to the date of that pleading
[see Cancellation No. 92060576, 1 TTABVUE 4-5 (¶¶ 5-9)]. Thus, the record clearly establishes
use during by Opposer of its mark in connection with shirts and gloves during the three-year time
period (Dec. 23, 2011 - Dec. 23, 2014)20 established by Applicant’s pleading as well. See P.A.B.
Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e M. Usellini, 570
F.2d 328, 332-334, 196 USPQ2d 801 (CCPA 1978) (burden to establish non-use falls on
petitioner; unless pleading amended or parties on notice of non-use period being measure from
date other than date of pleading). Opposer conceded the evidence does establish at least three
years of consecutive non-use of Opposer’s Mark in connection with belts. Nevertheless, as
detailed below, Opposer rebuts the presumption of abandonment with its affirmative evidence of
intent to use and resume use, and lack of intent to abandon. Therefore, the petition to cancel
should not be sustained.
2. Opposer’s Evidence Shows Intent To Continue Using And/Or
Resume Use
Applicant relies exclusively on the written discovery responses of Opposer, and ignores
the testimony of its witnesses (in both deposition and declaration form) in its brief. In so doing,
Applicant cherry-picks from the evidence in the record to conclude that “there is no objective
evidence of an intent to resume any such use.” [44 TTABVUE at 34-36.] As set forth above in
the statement of facts, and again below, there is indeed evidence that Opposer has never lacked
the intent to use its HUSH PUPPIES® Mark on shirts, belts and gloves. Notably, Applicant’s
contention that Ms. Lau’s sworn deposition testimony cannot be relied upon as evidence because
it is “undocumented” is strained. Applicant’s cited cases are not determinative here. See Combs
v. All Surface Entm’t, Inc., Cancellation No. 92051490, 2012 TTAB LEXIS 375 (TTAB 2012);
20 Per the holding and discussion in P.A.B. Produits, Opposer argues the relevant date for
purposes of Applicant’s burden to show non-use is the date of the filing of its petition to cancel;
Opposer does not concede any other date is appropriate. Yet in any event, because Opposer’s
evidence establishes use of its Mark in connection with shirts and gloves in 2013, use is shown
and the abandonment presumption rebutted.
32
Takahashi v. Bradley Imports, Ltd., Cancellation No. 92040069, 2004 TTAB LEXIS 499 (TTAB
2004); Conran v. The Contran Stores, Inc., Cancellation Nos. 25165 & 22227, 2001 TTAB
LEXIS 31 (TTAB 2001). These cases stand for the general proposition that conclusory
testimony alone cannot rebut the abandonment presumption created by a petitioner’s showing of
three consecutive years of non-use. In these cases, testimony offered was either conclusory, or,
like in Combs, conclusory and directly contradicted by other evidence in the record. See 2012
TTAB LEXIS at *21.
Here, on the other hand, Ms. Lau’s testimony is not merely conclusory: Ms. Lau’s
testimony21 outlined in detail Opposer’s continuing intent to use its HUSH PUPPIES® mark in
connection with apparel and accessories, including shirts, belts and gloves, describing the
conditions outside of its control that resulted in the non-use (such as its glove licensee, Grandoe
Corporation, going out of business and other issues pertaining to required minimums) [21
TTABVUE (Lau Depo.) 53:6-54:4], and further, was corroborated by documents [see 40
TTABVUE 5-56 (exhibits to Lau Decl.); see also 32 TTABVUE 19 (HP0001503) (describing
Opposer’s goods as “Apparel and accessories that have a sumptuous quality due to their soft and
easy style[.]”.] This is more than a “simple averment” of intent not to abandon. Imperial
Tobacco v. Philip Morris, 899 F.2d 1575, 1581, 14 USPQ2d 1390 (Fed. Cir. 1990). This
complete record—including discovery responses, documents produced, sworn deposition
testimony and trial testimony declarations—shows Opposer lacks the requisite intent to not
resume use that would justify cancellation.
The record shows that Opposer did not choose to abandon its HUSH PUPPIES® Mark in
connection with shirts, belts and gloves. Rather, the evidence shows that Opposer maintains the
intent to use its Mark on these items, as well as other related apparel and accessory goods, and is
in fact actively seeking to engage with new vendors and manufacturers to bring these goods to
market. For instance:
21
See citations to testimony on next page and above in Section III, p. 27 (Statement of Facts).
33
• Opposer’s HUSH PUPPIES® Mark was used on clothing, including t-
shirts, offered in the U.S. consistently until 2008 and as recently as 2013.
[21 TTABVUE (Lau Depo.) at 17:14; 18:5-7; 19:5-12; 21:11-18; 22:3-7.]
• Opposer currently sells apparel under its HUSH PUPPIES® Mark in
Europe, South America, and Asia. [24 TTABVUE (Mirecki Depo.) at
48:21-50:25.]
• Since at least 1995, apparel and accessories, including socks, gloves and
belts, have been part of the HUSH PUPPIES® brand’s strategy. [21
TTABVUE (Lau Depo) at 36:19-37:5; see also 40 TTABVUE (Lau Decl.)
¶ 7 & Ex. B (2013-14 Brand Positioning document at slides 5 & 7).]
• Until 2010, Opposer continuously sold belts under the HUSH PUPPIES®
Mark. [Id., 26:24-27:22; 50:17-51:22.]
• Until 2013 Opposer offered gloves, until it was unable to continue
doing so with its then-manufacturer,
[Id., 28:2-21; see also 21 TTABVUE 182-195
(Confidential Lau Depo. Ex. 8: Licensing Forms for Feb.
2013).] While gloves from this manufacturer are still in the market in
circulation, Opposer is looking for another manufacturer to replace
[Id.]
• Ms. Lau has recently (from 2013-2016) been communicating with vendors
to produce accessories such as hats, scarves, belts, gloves, jewelry, socks,
tights and leggings, to be sold under Opposer’s HUSH PUPPIES® Mark.
[See 40 TTABVUE (Lau Decl.) ¶ 8 & Ex. C.] Notably, the most recent
2016 communications were substantive, discussing pricing, quantity and
other specifics that would help Opposer bring these goods to market for
the Holiday 2016 season. [Id.]
• Opposer’s 2016 brand strategy includes incorporating headwear, hosiery
and legwear (like leggings) scarves and seasonal, cold weather items like
gloves and hats to its offering through retail and e-commerce outlets. [Id.,
¶¶ 8-9; see also 24 TTABVUE (Mirecki Depo) at 12:11-13.]
• Accessories including handbags and scarves have been available as
recently as April 22, 2016 on Opposer’s website, www.hushpuppies.com,
which includes a separate and distinct “Accessories” section. [See 35
TTABVUE 6-8; 10 & 13; 16, 21-11; see also 21 TTABVUE (Lau Depo.),
at 52:10-54:4.]
• Items including socks, handbags, plush toys, scarves and shoe care are
sold at Opposer-owned retail stores as well. [21 TTABVUE (Lau Depo)
at 16:12-15.]
34
This evidence illustrates Opposer’s consistent and continued intent to use its HUSH
PUPPIES® Mark on shirts, belts and gloves in addition to a broader range of related accessories
and apparel. Indeed, there is no evidence that Opposer ever intended to abandon use of its Mark
for these goods or that, for those goods in connection with which it currently is not using its
Mark, it lacks intent to resume use. Any discontinuances of use have been due to excusable
reasons, such as seasonality for certain items (like gloves and scarves) and vendor issues for
others (like belts and gloves). [See, e.g., 21 TTABVUE (Lau Depo.) at 28:2-21, 50:17-54:13 &
40 TTABVUE (Lau Decl.) ¶ 10.]
Moreover, Opposer’s lack of intent to abandon its mark for shirts, gloves and belts, is
underscored by the fact that Ms. Lau has held the title Director of Apparel and Accessory
Licensing for Opposer’s HUSH PUPPIES® brand for more than 15 years. [40 TTABVUE ¶3
(Lau Decl.); see also 21 TTABVUE (Lau Depo.) 5:4-6:2.] From the fact that Ms. Lau has held
this position at Opposer for more than 15 years it follows that Opposer has always had and
continues to have the intent to use its HUSH PUPPIES® Mark on apparel and accessories,
including the shirts, belts, and gloves described in the at-issue registration. See Koppers Co., Inc.
v. Krupp-Koppers GmbH, 517 F. Supp. 836, 210 USPQ 711 (W.D. Pa. 1981) (noting that while
registrant discontinued the use of its mark in the U.S. for a number of years while it tried to find
customers for a particular process, it continued to employ engineers, maintained its technical
files, held registered patents and negotiated a 10-year extension contract; this evidenced
registrant’s lack of intent to abandon its rights in the mark).
Accordingly, the record reflects that Opposer maintains the intent to use and resume use
of its HUSH PUPPIES® Mark in connection with shirts, belts and gloves, and that Applicant has
failed to present evidence sufficient to support a finding of cancellation by abandonment.
Accordingly, Applicant’s petition to cancel must be overruled.
V. CONCLUSION
For the foregoing reasons, Applicant is not entitled to cancellation of Opposer’s
registration (No. 1,053,340) of its HUSH PUPPIES® Mark for shirts, belts or gloves. First,
35
Applicant has failed to meet its burden of showing Opposer has not used the Mark for three
consecutive years with respect to shirts and gloves. Accordingly, it is not entitled to the
presumption of lack of intent to resume use with respect to those goods. More importantly,
however, is that Opposer has offered evidence showing that it has never lacked intent to use, and
indeed intends to resume use of, its HUSH PUPPIES® Mark on these goods, and that any
intermittent or non-use was due to excusable non-use, such as supplier issues and seasonality.
As a result, the Board should overrule Applicant’s petition to cancel.
/ / /
/ / /
/ / /
36
OPPOSER’S EVIDENTIARY OBJECTIONS
Pursuant to the Federal Rules of Evidence and 37 C.F.R. §§ 2.120(j) and 2.122(a),
Opposer asserts the following objections to Applicant’s evidence:
1. 34 TTABVUE 11-26, 30-35 (Opposer’s
responses to Applicant’s Requests for
Production of Documents and Things,
submitted via Notice of Reliance on
Disclosures).
37 C.F.R. § 2.120(j)(3); TBMP § 704.10,
740.11: Only interrogatory responses and
admissions are admissible as evidence offered
by notice of reliance; the rules do not provide
for admission of responses to requests for
production to be admitted via Notice of
Reliance, although the documents produced in
response thereto may be. See also Takahashi
v. Bradley Imports, Ltd., 2004 TTAB LEXIS
499, at *5 n.3 (TTAB Aug. 18, 2004) (non-
precedential) (“answers to requests for
production of documents are not proper subject
matter for a notice of reliance”).
2. Declaration of Laura Pita, 38
TTABVUE ¶18:
“Athletes and other individuals
committed to running exercise care in
the selection of brands for purchase of
clothing to maximize comfort. The
functionality of the athleticwear offered
under the HAPPY PUPPIES brand is
the leading factor which drives Happy
Puppies’ consumers.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
testimony is an out-of-court statement offered
for the truth of the matter asserted, namely,
what concerns athlete purchasers of apparel
and what drives their purchases.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of the
level of care purchasers of athletic apparel use
when making purchasing decisions.
Lack of Foundation, Fed. R. Evid. 602: Ms.
Pita does not testify that she has any personal
knowledge of or a basis for her testimony
regarding athletes’ purchasing behavior,
including what drives purchases.
Improper Expert Testimony, Fed. R. Evid.
702: Ms. Pita does not qualify as an expert to
give testimony regarding purchasing behavior
or purchase drivers.
3. Id., ¶ 23:
“The HAPPY PUPPIES mark is distinct
from the HUSH PUPPIES brand, in
connotation, sound, and sight.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, whether the
parties’ marks are similar in sight, sound and
commercial impression.
37
Improper Expert Testimony, Fed. R. Evid.
702: Ms. Pita does not qualify as an expert to
give testimony regarding the sight, sound or
commercial impression conveyed by
Applicant’s “HAPPY PUPPIES” mark.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of the
sight, sound or commercial impression
conveyed by Applicant’s “HAPPY PUPPIES”
mark.
4. Id., ¶ 24:
“The dominant portion of the Application
[sic] is the leading term HAPPY, which
connotes motivation, excitement, and
activity, which characteristics formed the
basis for creation of the HAPPY PUPPIES
brand.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, which portion
of Applicant’s “HAPPY PUPPIES” mark is
dominant, the commercial impression it
conveys and the definition of terms in the
mark.
Improper Expert Testimony, Fed. R. Evid.
702: Ms. Pita does not qualify as an expert to
give testimony regarding the sight, sound or
commercial impression conveyed by
Applicant’s “HAPPY PUPPIES” mark.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of the
sight, sound or commercial impression
conveyed by Applicant’s “HAPPY PUPPIES”
mark or the definition of terms contained
therein.
38
5. Id., ¶ 25:
“By contrast, the leading term HUSH
signifies calm, quiet, relaxation, and
tranquility.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, the commercial
impression conveyed by Opposer’s HUSH
PUPPIES® Mark and the definition of terms
therein.
Improper Expert Testimony, Fed. R. Evid.
702: Ms. Pita does not qualify as an expert to
give testimony regarding the sight, sound or
commercial impression conveyed by
Opposer’s HUSH PUPPIES® MARK.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of the
sight, sound or commercial impression
conveyed by Opposer’s HUSH PUPPIES®
Mark, or the definition of terms contained
therein.
6. Id., ¶ 26:
“[T]he two terms also have completely
different sounds. In addition, one leading
word is two syllables and the other one is
one syllable.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, the sounds of
the parties’ marks.
Improper Expert Testimony, Fed. R. Evid.
702: Ms. Pita does not qualify as an expert to
give testimony regarding the sight, sound or
commercial impression conveyed by the
parties’ marks.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of the
sight, sound or commercial impression
conveyed by the parties’ marks.
7. Id., ¶ 27:
“In addition, the phrase HAPPY PUPPIES
contains a similarity of sounds between
two words due to the “ppy” and “ppies” in
the end in the respective words. There is
no such similarity between the two words
of the phrase HUSH PUPPIES.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, the sounds of
the parties’ marks.
Improper Expert Testimony, Fed. R. Evid.
702: Ms. Pita does not qualify as an expert to
give testimony regarding the sight, sound or
commercial impression conveyed by the
parties’ marks.
39
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of the
sight, sound or commercial impression
conveyed by the parties’ marks.
8. Id., ¶ 28:
“I have become generally familiar with the
HUSH PUPPIES brand. My
understanding is that the HUSH PUPPIES
brand offers shoes designed for casual
attire and relaxation. I understand that
Wolverine does not offer athletic apparel
and clothing designed for running and
exercise under the HUSH PUPPIES
brand.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, the goods
offered by Opposer under Opposer’s Mark.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of the
goods offered by Opposer under Opposer’s
Mark.
Lack of Foundation, Fed. R. Evid. 602: Ms.
Pita lacks the requisite personal knowledge to
testify about Opposer’s business.
9. Id., ¶ 29:
“Happy Puppies does not sell or intend to
sell any goods under the HAPPY
PUPPIES brand that would overlap with
the footwear offered under the HUSH
PUPPIES brand.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, whether goods
sold under Applicant’s mark are similar and
sold to similar consumers as goods sold by
Opposer under Opposer’s Mark.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence
whether goods sold under Applicant’s mark are
similar and sold to similar consumers as goods
sold by Opposer under Opposer’s Mark.
Lack of Foundation, Fed. R. Evid. 602: Ms.
Pita lacks the requisite personal knowledge to
testify about whether goods sold under
Applicant’s mark are similar and sold to
similar consumers as goods sold by Opposer
under Opposer’s Mark.
Improper Expert Testimony, Fed. R .Evid.
702: Ms. Pita is not qualified to testify as an
expert regarding whether goods sold under
Applicant’s mark are similar and sold to
similar consumers as goods sold by Opposer
under Opposer’s Mark.
40
Relevance, Fed. R. Evid. 401: Ms. Pita’s
contention regarding Applicant’s intentions is
not relevant to the Board’s determination
regarding whether confusion is likely between
the parties’ marks based on the information
contained in Opposer’s registration and
Applicant’s application.
10. Id., ¶ 31:
“In my view, consumers would not
confuse the loafers and casual footwear
offered under the HUSH PUPPIES brand
with the running attire and athletic apparel
offered under the HAPPY PUPPIES
brand.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, whether there is
likelihood of confusion between Opposer’s
HUSH PUPPIES® Mark and Applicant’s
HAPPY PUPPIES mark.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of
whether there is likelihood of confusion
between Opposer’s HUSH PUPPIES® Mark
and Applicant’s HAPPY PUPPIES mark.
Improper Expert Testimony, Fed. R .Evid.
702: Ms. Pita is not qualified to testify as an
expert regarding whether there is likelihood of
confusion between Opposer’s HUSH
PUPPIES® Mark and Applicant’s HAPPY
PUPPIES mark.
Relevance, Fed. R. Evid. 401: Ms. Pita’s
personal view regarding consumer purchase
behavior is not relevance to the Board’s
determination regarding whether confusion is
likely between the parties’ marks based on the
information contained in Opposer’s
registration and Applicant’s application.
41
11. Id., ¶ 32:
“Consumers looking to purchase athletic
apparel would not be confused into
purchasing HUSH PUPPIES shoes by
believing there is affiliation with my
brand, and would also not purchase
HAPPY PUPPIES athletic apparel under
the belief that the HAPPY PUPPIES brand
is affiliated with HUSH PUPPIES casual
shoes.”
Hearsay, Fed. R. Evid. 801, 802: Ms. Pita’s
out-of-court testimony is offered for the truth
of the matter asserted, namely, whether there is
likelihood of confusion between Opposer’s
HUSH PUPPIES® Mark and Applicant’s
HAPPY PUPPIES mark.
Best Evidence Rule, Fed. R. Evid. 1002: Ms.
Pita’s testimony is not the best evidence of
whether there is likelihood of confusion
between Opposer’s HUSH PUPPIES® Mark
and Applicant’s HAPPY PUPPIES mark.
Improper Expert Testimony, Fed. R .Evid.
702: Ms. Pita is not qualified to testify as an
expert regarding whether there is likelihood of
confusion between Opposer’s HUSH
PUPPIES® Mark and Applicant’s HAPPY
PUPPIES mark.
Relevance, Fed. R. Evid. 401: Ms. Pita’s
personal view regarding consumer purchase
behavior is not relevant to the Board’s
determination regarding whether confusion is
likely between the parties’ marks based on the
information contained in Opposer’s
registration and Applicant’s application.
Lack of Foundation, Fed. R. Evid. 602: Ms.
Pita lacks the requisite personal knowledge to
testify about whether consumers could be
confused as to the source or affiliation of
goods sold under the at-issue marks.
Respectfully submitted,
SEYFARTH SHAW LLP
Date: October 11, 2016 By: s/ Carrie P. Price
Kenneth L. Wilton
Carrie P. Price
Attorneys for Opposer
WOLVERINE WORLD WIDE, INC.
2029 Century Park East, Suite 3500
Los Angeles, CA 90067-3021
Telephone: (310) 277-7200
Facsimile: (310) 201-5219
42
CERTIFICATE OF SERVICE
Pursuant to Rule 2.119(b)(6) of the Trademark Rules of Practice, and by agreement of the
parties, the undersigned hereby certifies that she caused a copy of the foregoing OPPOSER’S
REPLY BRIEF & BRIEF IN RESPONSE TO APPLICANT’S COUNTERCLAIM PETITION
TO CANCEL to be served upon the following counsel of record via email on October 11, 2016.
Richard H. Brown, Esq.
Carrie Webb Olson, Esq.
Ryan S. Osterweil, Esq.
DAY PITNEY LLP
7 Times Square
New York, NY 10036
Email: rbrown@daypitney.com
colson@daypitney.com
rosterweil@daypitney.com
s/ Carrie P. Price
Carrie P. Price