Abercrombie & Fitch Trading Co.v.Isabella Elisabeth Schnittger

Trademark Trial and Appeal Board

Aug 12, 2019

91218738 (T.T.A.B. Aug. 12, 2019)

Hearing: June 5, 2019 Mailed: August 12, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Abercrombie & Fitch Trading Co.
v.
Isabella Elisabeth Schnittger
___
Opposition No. 91218738
___
Susan M. Kayser, Jessica D. Bradley and Allison Prevatt of Jones Day
for Abercrombie & Fitch Trading Co.

Isabella Elisabeth Schnittger, pro se.
______

Before Wolfson, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Isabella Elisabeth Schnittger seeks registration of the mark shown
below

for “Caps; Hats; Hooded sweatshirts; Jackets; Long-sleeved shirts; Socks;
This Opinion is not a
Precedent of the TTAB
Opposition No. 91218738
2
Sweatshirts; T-shirts; Underwear.”1 In its notice of opposition, Opposer Abercrombie
& Fitch Trading Co. alleges prior use and registration of a “Moose Design logo” in the
forms shown below
2 and 3

for clothing, and, in the case of the “solid form” moose design on the left, retail clothing
stores. Several of Opposer’s pleaded registrations are over five years old. As grounds
for opposition, Opposer alleges that use of Applicant’s mark is likely to cause

1 Application Serial No. 86152857, filed December 26, 2013 under Section 1(b) of the
Trademark Act, based on an alleged intent to use the mark in commerce. The application
includes this description of the mark: “The mark consists of a deer silhouette with 7 point
antlers. Below there is the stylized text ‘Red Dear’.”
2 Registration Nos. 3065016 (issued March 7, 2006; renewed) for “clothing, namely, shirts
and sweaters;” 4551991 (issued June 17, 2014; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged) for “Clothing, namely, beach cover-ups, bras, camisoles, halter tops
and night shirts;” 3964371 (issued May 24, 2001; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged) for “Retail store services, and on-line retail store services featuring
clothing, footwear, accessories, fragrances and jewelry;” and “Clothing, namely, polo shirts,
blouses, sweaters …”; and 4168384 (issued July 3, 2012; Section 8 Affidavit accepted, Section
15 Affidavit acknowledged) for “Clothing, namely, beachwear, belts, blazers, dresses,
footwear, gloves, knee highs, loungewear, mittens, and vests.”
3 Registration Nos. 3212644 (issued February 27, 2007; renewed) for “Clothing, namely, polo
shirts, sweaters, t-shirts, shirts, knit tops …;” and 3574198 (issued February 10, 2009;
renewed) for “Clothing, namely, footwear” and “Jewelry, namely, necklaces and bracelets.”
Opposition No. 91218738
3
confusion with, and dilute, Opposer’s marks. In her answer, Applicant denies the
salient allegations in the notice of opposition.
I. The Parties’ Stipulations Regarding Trial, the Resulting Record and
Opposer’s Evidentiary Objections
The parties agreed to simplify the trial of this case by, inter alia, submitting
testimony through affidavits, stipulating to certain facts and limiting documentary
trial evidence to materials produced during discovery. 11 TTABVUE (“Trial
Stipulation”).4 The Board approved their Trial Stipulation. 12 TTABVUE.
A. Stipulated Facts
After their Trial Stipulation was approved, the parties filed their “Stipulation of
Facts,” which includes the following stipulated facts, among others:
Opposer owns its pleaded registrations and they are “valid,
subsisting and have never been abandoned.”

Opposer has been using its solid form moose design for
clothing since at least as early as February 2002 and its
“outline form” moose design for clothing since at least as
early as November 1, 2004.

“Applicant did not sell or offer to sell any products or
services bearing Applicant’s Mark” or use her mark, prior
to December 26, 2013.

“Both Applicant’s Mark and Opposer’s Mark5 include
profiles of full-bodied, four-legged animals with antlers in
silhouette form.”

4 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
5 “Opposer’s Mark” is a defined term in the Stipulation of Facts, which encompasses all of
Opposer’s pleaded marks. 13 TTABVUE 2 n.1 (Stipulation of Facts p. 1 n.1).
Opposition No. 91218738
4
“As of May 4, 2015, [Opposer] had over 370 retail store
locations across the United States, including over 240
Abercrombie & Fitch retail store locations, and over 120
abercrombie kids retail store locations.”

“Consumers of products bearing Opposer’s Mark could also
be consumers of products bearing Applicant’s Mark.”

“From 2001-2006, [Opposer] released and distributed
catalogs displaying and offering for sale clothing bearing
Opposer’s Mark, with a total U.S. circulation of over 10.3
million copies.”

Actor Cory Monteith wore a polo shirt bearing Opposer’s
Mark during an episode of the Fox television show Glee,
and another polo shirt bearing the mark was worn on an
episode of the NBC television show Will & Grace. Third-
party websites have published photographs of celebrities
wearing clothing bearing Opposer’s Mark, including
Jennifer Aniston, David Beckham and Jessica Simpson.

Clothing bearing Opposer’s Mark has been featured in
national magazines including Teen Vogue, GQ, Details and
Men’s Fitness, and The New York Times, Chicago Tribune
and Washington Post have published articles regarding
Opposer’s Mark.

Opposer has enforced its rights in Opposer’s Mark against
third parties using similar marks.

13 TTABVUE 2-8 (Stipulation of Facts ¶¶ 1, 3, 4, 10-12, 19, 29, 31, 33-35, 37, 40).
B. The Record
The record consists of these stipulated facts, the pleadings, and, by operation of
Trademark Rule 2.122(b), the file of Applicant’s involved application. In addition,
Opposer introduced:
Testimony Affidavit of Jessica D. Bradley, an attorney with
Opposer’s law firm, and the exhibits thereto (“Bradley
Aff.”). 15 TTABVUE.

Opposition No. 91218738
5
Testimony Affidavit of Reid M. Wilson, Opposer’s Vice
President and Associate General Counsel – Intellectual
Property, and the exhibits thereto (“Wilson Aff.”). 16-18
TTABVUE.

Rebuttal Testimony Affidavit of Ms. Bradley (“Bradley
Reb. Aff.”). 21 TTABVUE.

Rebuttal Testimony Affidavit of Mr. Wilson, and the
exhibits thereto (“Wilson Reb. Aff.”). 22 TTABVUE.

Applicant introduced:
Her own Testimony Affidavit and the exhibits thereto
(“Schnittger Aff.”), and a revised version thereof (“Rev.
Schnittger Aff.”). 19 and 23 TTABVUE.

C. Evidentiary Objections
The Board previously granted Opposer’s motion to strike materials Applicant
submitted for the first time with Applicant’s revised testimony affidavit, after
Applicant’s testimony period ended. 25 TTABVUE. Those materials, 23 TTABVUE
25-74 and the materials Applicant submitted via compact disc, have not been
considered.
In its Trial Brief, Opposer also objects to portions of Applicant’s testimony as
hearsay, “irrelevant,” and lacking “foundation,” and to certain documents as
unauthenticated or hearsay. 28 TTABVUE 58-71 (Opposer’s Trial Brief. Appendix 1).
Opposer also objects to the Internet materials attached to the Schnittger Affidavit as
Exhibit A because they were not produced during discovery, because of the manner
in which the documents’ urls were presented and because Applicant failed to include
the date the materials were accessed. Finally, Opposer objects to copies of certain
Opposition No. 91218738
6
Maine statutes upon which Applicant relies, and to Exhibit D to Applicant’s Affidavit,
which includes descriptions and photographs apparently from the Internet.
We have not considered Exhibit D to Applicant’s Affidavit, because even if the
materials are what Applicant claims them to be, neither Opposer’s nor third parties’
use of marks outside of the United States is relevant to United States trademark
rights.
As indicated in the Board’s order on Opposer’s earlier motion to strike, Opposer’s
objections to Exhibit A might be appropriate if Applicant had introduced the
materials via notice of reliance under Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031
(TTAB 2010), but here the materials were introduced via an affidavit. 25 TTABVUE
4-5 and fn. 1, 2. In any event, the Trial Stipulation specifically provides that “the
parties may submit evidence of which they request that the Board take judicial
notice,” 11 TTABVUE 2, which is what Applicant did with respect to Exhibit A. 19
TTABVUE 4 (Schnittger Aff. ¶ 4). We have considered Exhibit A to the extent it is
probative.
As for Exhibits B and C, we may consider Applicant’s cite to Maine statutes just
as we may consider cites to caselaw, the Lanham Act and other federal and state
statutes, government regulations such as those published in the Code of Federal
Regulations and other legal authority. We have considered the Maine statutes.
With respect to Opposer’s remaining objections, suffice it to say, “we simply accord
the evidence whatever probative value it deserves, if any at all … Ultimately, the
Board is capable of weighing the relevance and strength or weakness of the objected-
Opposition No. 91218738
7
to testimony and evidence in this specific case, including any inherent limitations,
and this precludes the need to strike the testimony and evidence.” Hunt Control Sys.
Inc. v. Koninkijke Philips Electronics N.V., 98 USPQ2d 1558, 1564 (TTAB 2011). See
also Grote Indus., Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1200 (TTAB 2018)
(“We also remind the parties that our proceedings are tried before judges not likely
to be easily confused or prejudiced. Objections to trial testimony on bases more
relevant to jury trials are particularly unnecessary in this forum.”) (citing U.S.
Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB 2006)); RxD Media,
LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1804 (TTAB 2018);
Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478 (TTAB 2017) (quoting
Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB
2017)). We have kept Opposer’s objections in mind in considering and determining
the probative value of Applicant’s evidence.
II. Standing
Opposer’s pleaded registrations, effectively made of record via the Stipulation of
Facts, establish its standing. 13 TTABVUE ¶ 1 (pleaded registrations). See Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000). “Applicant does not argue that Opposer lacks standing.” 30
TTABVUE 6 (Applicant’s Trial Brief at 5).
III. Priority
Because Applicant has not counterclaimed to cancel any of Opposer’s pleaded
registrations, priority is not at issue with respect to the marks and goods identified
Opposition No. 91218738
8
therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974). In any event, the parties stipulated to Opposer’s prior common law
use of its pleaded marks for clothing. 13 TTABVUE ¶¶ 2, 3, 8.
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 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
differences in the marks.”). Opposer bears the burden of establishing that there is a
likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d
at 1848. We consider the likelihood of confusion factors about which there is evidence,
and treat the remaining factors as neutral.
A. The Strength/Fame of Opposer’s Mark
We begin with the fame factor, because when fame exists, it plays a dominant role
in the likelihood of confusion analysis. Indeed, famous marks “‘enjoy a wide latitude
of legal protection.’” Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54 USPQ2d
Opposition No. 91218738
9
1894, 1897 (Fed. Cir. 2000)); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame is not “an all-or-nothing factor,” however. Phelps Vineyards, LLC v.
Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Rather, we must place Opposer’s moose design mark “along a spectrum from very
strong to very weak.” Id. (quoting Palm Bay Imps. V. Veuve Clicquot Ponsardin
Masion Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). In
doing so, we must consider Opposer’s pleaded marks from the perspective of “the class
of customers and potential customers” of the relevant products, in this case
consumers and potential consumers of clothing. Palm Bay, 73 USPQ2d at 1695 (“[A]
mark’s renown within a specific product market is the proper standard.”). The
stronger the mark, the greater the scope of protection to which it is entitled. Tao
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017) (“A
very strong mark receives a wider latitude of legal protection in the likelihood of
confusion analysis.”); Nike, Inc. v. WNBA Enterprises, LLC, 85 USPQ2d 1187, 1198
(TTAB 2007).
While consumer surveys may provide direct evidence of a mark’s degree of
strength, they are not necessary; indeed, they “rarely appear.” Bose, 63 USPQ2d at
1305. In the absence of direct evidence, fame or strength “of a mark may be measured
indirectly, among other things, by the volume of sales and advertising expenditures
of the goods traveling under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose, 63 USPQ2d at 1305. Other relevant
Opposition No. 91218738
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factors include “length of use of the mark, market share, brand awareness, licensing
activities, and variety of goods bearing the mark.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Here, while Opposer has designated much of its evidence of fame/strength as
“confidential,” and we therefore only discuss it generally, suffice it to say that Opposer
has been quite successful in selling clothing products bearing its pleaded marks. It
has used its solid form pleaded mark for almost 16 years, and its outline form pleaded
mark for almost 15 years. 17 TTABVUE 3 (Wilson Aff. ¶¶ 4, 5). Its annual and
cumulative sales and advertising figures are impressive by any measure, and a good
bit higher than seen in typical Board cases. The number of visits to Opposer’s
websites, and subscribers to Opposer’s e-mail distribution lists, are similarly
impressive, and both the websites and e-mails feature the pleaded marks. Opposer’s
Facebook page has received almost 9 million “likes.” Opposer’s prominence in the
clothing market is also obvious from its having 370 retail stores and distributing over
10 million catalogs. Products bearing Opposer’s pleaded marks have appeared in
prominent television shows, and prominent print publications have discussed
Opposer’s pleaded marks.
Nevertheless, “[w]e have no context for opposer’s advertising and sales figures,”
or its other evidence of strength/fame, “such as how the figures for [products bearing
Opposer’s pleaded marks] compare with that for other brands of” clothing. Lebanon
Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1831 (TTAB 2012); see
also Bose, 63 USPQ2d at 1309 (“some context in which to place raw statistics is
Opposition No. 91218738
11
reasonable”). Moreover, while Opposer has offered other evidence of the strength of
its pleaded marks, beyond its sales and advertising figures, the other evidence is also
without context, such as circulation figures for print publications or ratings for
television shows. The extent to which consumers are exposed to and recognize
Opposer’s pleaded marks, as opposed to its various other marks (such as
ABERCROMBIE & FITCH and A&F), is unclear.
Ultimately, even if Opposer has not established that its pleaded marks are
“famous” for likelihood of confusion purposes, Opposer’s evidence easily establishes
that its pleaded marks are “renowned” in the clothing market, and commercially
quite strong. Opposer’s pleaded marks are thus entitled to a concomitantly broad
scope of protection. See Joseph Phelps Vineyards, 122 USPQ2d at 1734-35. This factor
weighs heavily in favor of finding a likelihood of confusion.
B. The Goods, Channels of Trade and Classes of Consumers
All of the goods for which Applicant seeks registration are either identical or
legally identical to those for which Opposer’s pleaded marks are registered. In fact,
both parties offer or intend to offer caps, hats, jackets, socks, sweatshirts, t-shirts and
underwear, and Opposer’s “shirts” and “sweatshirts” encompass Applicant’s “long-
sleeved shirts” and “hooded sweatshirts,” respectively. Because the goods are
identical or legally identical, we must presume that the channels of trade and classes
of purchasers are as well. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and
classes of consumers, the Board was entitled to rely on this legal presumption in
Opposition No. 91218738
12
determining likelihood of confusion); American Lebanese Syrian Associated Charities
Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The legal identity of the goods and their overlapping channels of trade and classes
of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but
also reduce the degree of similarity between the marks necessary to find a likelihood
of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010).
C. Similarity of the Marks
Having effectively conceded that many of the facts weigh in favor of finding a
likelihood of confusion, Applicant relies on the alleged dissimilarity of the marks:
Applicant’s argument is really very simple: it is not the
purpose of trademark registration to allow one company to
try to associate any “antlered animal” with its brand by
foreclosing Applicant or anyone using both a trade name
and a different “antlered animal”, namely a 7 pointed stag
(male) deer with the words “Red Dear”, in creating a mark
for its own brand.

30 TTABVUE 6 (Applicant’s Appeal Brief at 5).
This argument does not account for the way we must compare the parties’ marks.
Our determination is not based on individual features of the parties’ marks, such as
the type of antler featured in each mark, or the words accompanying Applicant’s deer
design. Rather, we must consider the marks “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay, 73 USPQ2d at 1691
Opposition No. 91218738
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(quoting du Pont, 177 USPQ at 567). When we do so, we find that the similarities
between the marks outweigh the dissimilarities.
In fact, “[t]he proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v.
LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Here, Applicant
stipulates that its mark and Opposer’s pleaded solid form mark6 both “include profiles
of full-bodied, four-legged animals with antlers in silhouette form.” 13 TTABVUE 6
(Stipulation of Facts ¶ 12). Both are facing to the side rather than the front or back,
and the parties’ animal designs are similarly-shaped, especially in the torso area.
To be sure, there are also differences between the animals, as their antlers are not
the same and their heads are shaped differently and in somewhat different positions.
The mouth in Applicant’s deer is open, perhaps because it is calling out or consuming
something.
Despite these and other more minor differences, however, the marks are
sufficiently similar in terms of their commercial impressions that clothing consumers
who encounter them would be likely to assume a connection between the parties. In
so finding, we have focused, as we must, on the recollection of the average purchaser,

6 We focus on Opposer’s solid form mark because it is more similar to Applicant’s mark. See
In re Max Capital, 93 USPQ2d at 1245.
Opposition No. 91218738
14
who normally retains a general rather than a specific impression of trademarks. In
re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975)). See Geigy Chem. Corp. v. Atlas Chem. Indus., Inc.,
438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971) (finding a likelihood of confusion due
in part to “the fallibility of memory over a period of time”). Indeed, “[c]onsideration
must also be given to the fact that a purchaser’s recollection of design marks is often
of a general and hazy nature.” Matsushita Elec. Indus. Co., Ltd. v. Sanders Assoc.,
Inc., 177 USPQ 720, 726 (TTAB 1973).
Here, at least some consumers familiar with Opposer’s marks who later encounter
Applicant’s mark will not remember which direction Opposer’s animal was facing,
what its antlers looked like specifically or how its mouth was depicted. Rather,
because of the fallibility of memory, they will have the “general rather than a specific
impression” that Applicant’s mark, like Opposer’s, features a “full-bodied, four-legged
anima[l] with antlers in silhouette form.” As we stated in analogous circumstances:
There is no doubt but that if the design marks here
involved would be placed side-by-side certain differences
between them including those enumerated by applicant
would be discernible. But in the normal environment of the
marketplace where purchases are actually made,
individuals would not usually have an opportunity to
examine these marks in minute detail. An individual relies
on his recollection of the marks that he has previously
encountered in the marketplace. And, more often than not,
in the case of design marks, his recollection is not
obfuscated with minute details or characteristics of the
marks, but is governed by an overall or general impression
of the many marks that surround him in his daily living
experiences. Viewing the marks in question in this light, it
is apparent that there are marked resemblances in overall
design format, and commercial impression. These
Opposition No. 91218738
15
resemblances are sufficient, in and of themselves, to cause
individuals, including those described by applicant as
discriminating, familiar with either mark and then
encountering the other on competitive goods, to mistakenly
believe that these products originate from the same
producer.

In re Steury Corp., 189 USPQ 353, 355 (TTAB 1975). See also In re Vienna Sausage
Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990); In re United Service Distributors, Inc.,
229 USPQ 237, 239 (TTAB 1986); Puma-Sportschuhfabriken Rudolf Dassler KG v.
Garan, Inc., 224 USPQ 1064, 1066 (TTAB 1984).
We have not ignored the words RED DEAR appearing at the bottom of Applicant’s
mark, nor have we forgotten that as a general matter “the verbal portion of a word
and design mark likely will be the dominant portion.” In re Viterra, 101 USPQ2d at
1911. In this specific case, however, the words RED DEAR are dwarfed by Applicant’s
deer design, which is dominant because of how big it is in relation to the words.
Moreover, notwithstanding the difference in spelling, the word “dear” in Applicant’s
mark may serve to highlight Applicant’s deer design because “dear” and “deer” are
phonetic equivalents, and perhaps even call to mind Opposer’s mark, which could also
appear to some consumers as a deer. Cf. Kangol Ltd. v. Kangaroos U.S.A., Inc., 974
F.2d 161, 23 USPQ2d 1945, 1945 (Fed. Cir. 1992) (“applicant’s use of the word
‘KANGOL’ in connection with the kangaroo design is likely to be perceived as slang
or foreign usage for kangaroo”); In re Rolf Nilsson AB, 230 USPQ 141, 142 (TTAB
1986) (“it is well settled that a picture and the word that describes that picture are
given the same significance in determining likelihood of confusion”). In fact,
Opposition No. 91218738
16
Applicant admits that “a moose is part of the deer family biologically ….” 23
TTABVUE 12 (Schnittger Aff. ¶ 4).
In any event, where the designs are similar and prominent, Applicant’s addition
of two words, much smaller than the design itself, is insufficient to prevent confusion.
Indeed, in Kangol, the Court considered whether the marks and ,
both for clothing, were likely to be confused. It held that
the kangaroo design, common to both marks, is likely to be
perceived as the dominant feature. In both instances,
consumers are likely to ‘read’ what they see, regardless of
what the word below the design actually says. … Though
admittedly different in design, the use of the kangaroo by
both Kangaroos and Kangol may suggest to the consumer
that there is a common source or origin between opposer’s
and applicant’s goods.

Kangol, 23 USPQ2d at 1946. See also In re Vienna Sausage, 16 USPQ2d at 2047-48.
This case also calls to mind a number of other analogous cases in which design
marks were found similar, notwithstanding their obvious differences. For example,
the following marks have been found confusingly similar:
and
In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971) (both for bath
products).
Opposition No. 91218738
17
and
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) (applicant’s
road maps found to be within opposer’s “natural area of expansion” given its licensing
of its mark on a wide variety of goods).
and
Penguin Books, 48 USPQ2d at 1280 (computer programs and books).
and
In re Vienna Sausage, 16 USPQ2d at 2044 (both for frankfurters).

and
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988) (both for
clothing).
Opposition No. 91218738
18
and
In re United Service Distributors, 229 USPQ at 237 (distributorship services in the
field of health and beauty aids and moisturizing skin cream).
and
Puma-Sportschuhfabriken, 224 USPQ at 1064 (both for shirts).
and
Odom Sausage Co., Inc. v. Doskocil Sausage, Inc., 169 USPQ 379 (TTAB 1971) (both
for sausage).
and
Opposition No. 91218738
19
In re Triple R Mfg. Corp., 168 USPQ 447 (TTAB 1970) (both for oil filters). In Time
Warner, Penguin Books, Greyhound, United Service Distributors and Puma,
confusing similarity was found even though the marks in those cases faced different
directions, as they do here.
In short, here, as in the cited cases, while there are differences between the marks,
they are not sufficient to overcome the various similarities when these “profiles of
full-bodied, four-legged animals with antlers in silhouette form” are used on identical
goods. This factor also weighs in favor of finding a likelihood of confusion.
V. Conclusion
Applicant’s mark is similar enough to Opposer’s commercially strong mark that
use of Applicant’s mark for its identical goods, which move in the same channels of
trade to the same classes of consumers, would be likely to cause confusion with
Opposer’s pleaded marks.7
Decision: The opposition is sustained and registration of Applicant’s mark is
refused.

7 We need not reach Opposer’s dilution claim. Yazhong Investing Ltd. v. Multi-Media Tech
Ventures, Ltd., 126 USPQ2d 1526, 1540 (TTAB 2018); Multisorb Tech., Inc. v. Pactiv Corp.,
109 USPQ2d 1170, 1171 (TTAB 2013).