Anvil Knitwear, Inc.v.Success Ware, Inc.Download PDFTrademark Trial and Appeal BoardMar 15, 2010No. 91155386 (T.T.A.B. Mar. 15, 2010) Copy Citation Mailed: March 15, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Anvil Knitwear, Inc. v. Success Ware, Inc. _____ Opposition No. 91155386 to application Serial No. 75542015 filed on August 22, 1998 Opposition No. 911559232 to application Serial No. 75982484 filed on August 22, 1998 _____ James D. Weinberger of Fross Zelnick Lehrman & Zissu, P.C. for Anvil Knitwear, Inc. Success Ware, Inc., pro se. ______ Before Walsh, Bergsman and Wellington, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Success Ware, Inc. (“applicant”) filed intent-to-use applications on the Principal Register for the mark COURAGE and an anvil design, shown below, for “clothing, namely, caps,” in Class 25 (Serial No. 75542015) and “clothing, namely, t-shirts and sweatshirts,” in Class 25 (Serial No. 75982484). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91155386 Opposition No. 91159232 2 Applicant describes its mark as “the word COURAGE and an anvil design.” Anvil Knitwear, Inc. (“opposer”) filed notices of opposition against the registration of applicant’s marks on the ground of priority of use and likelihood of confusion pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d). In the notices of opposition, opposer asserted ownership of the following registrations: 1. Registration No. 0783710 for the mark ANVIL, in typed drawing form, for “men’s and boys’ shirts,” in Class 25;1 2. Registration No. 0783711 for an anvil design mark, shown below, for “men’s and boys’ shirts,” in Class 25;2 1 Issued January 19, 1965; Sections 8 and 15 affidavits accepted and acknowledged; second renewal. 2 Issued January 19, 1965; Sections 8 and 15 affidavits accepted and acknowledged; second renewal. Opposition No. 91155386 Opposition No. 91159232 3 3. Registration No. 0903069 for the mark ANVIL, in typed drawing form, for “men’s, women’s, boys’, girls’ and children’s shirts,” in Class 25.3 4. Registration No. 1659008 for the mark ANVIL, in typed drawing form, for “tank top shirts, sweat shirts and knitted dresses,” in Class 25.4 5. Registration No. 2201382 for the mark ANVIL, in typed drawing form, for “caps,” in Class 25.5 Applicant, in its answers, denied the salient allegations in the notices of opposition. In opposition No. 91155386, applicant filed a pleading captioned “Counterclaim.” In an order dated August 3, 2006, the Board noted that applicant’s counterclaim was merely an amplification of its denials of the allegations set forth in the notice of opposition. Because the counterclaim did not attack the validity of any of opposer’s pleaded registrations, the Board held that it would not give the counterclaim any further consideration. In the August 3, 2006 order, the Board also consolidated the two oppositions. 3 Issued November 24, 1970; Sections 8 and 15 affidavits accepted and acknowledged; second renewal. 4 Issued October 1, 1991; Sections 8 and 15 affidavits accepted and acknowledged; renewed. 5 Issued November 3, 1998. Patent and Trademark Office records show that this registration has been canceled under Section 8 of the Trademark Act. Accordingly, we will not give this registration any further consideration. Opposition No. 91155386 Opposition No. 91159232 4 Evidentiary Issues A. Applicant’s Notice of Reliance. During its testimony period, applicant filed a notice of reliance on a number of documents from a civil action between the parties and briefs supporting or opposing motions filed by the parties in this proceeding and in a prior proceeding between the parties. Opposer filed a motion to strike the following exhibits attached to applicant’s notice of reliance on the ground that they are not the proper subject matter to be introduced into evidence through a notice of reliance: 1. Exhibit C – the declaration of Christopher Levesque, opposer’s Vice President of Marketing, in support of opposer’s motion for summary judgment dismissing applicant’s complaint for copyright infringement before the United States District Court for the Central District of California; 2. Exhibit E-1 – applicant’s brief in response to opposer’s motion to admit testimony from a prior Board proceeding; 3. Exhibit E-3 – exhibits from a testimonial deposition taken during the prior Board proceeding between the parties; 4. Exhibit F – “Applicant’s Response in opposition and objection to opposers (sic) response to applicant’s Opposition No. 91155386 Opposition No. 91159232 5 objection to opposer’s untimely filing of opposer’s deposition testimony”; and 5. Exhibit H – applicant’s reply brief in support of its request for reconsideration of the Board’s decision denying summary judgment. Opposer expressly limited its motion to strike to the ground that the documents are not the proper subject matter to be introduced into evidence through a notice of reliance. It reserved the right to raise other grounds of objection, such as relevance, in its final briefs on the case. In opposition to the motion to strike, applicant argued that the documents are relevant. Applicant did not address opposer’s contention that the documents at issue are not the proper subject matter for introduction into evidence through a notice of reliance. Opposer’s motion to strike Exhibits C, E-1, E-3, F, and H is granted. The documents at issue are applicant’s copies of documents filed in this proceeding or in a different civil action between the parties. Trademark Rule 2.122(e) provides that a party may introduce into evidence copies of official records through a notice of reliance. Trademark Rule 2.122(e) specifically provides that the authenticity of the official record must be established under the Federal Rules of Evidence. The term “official records” refers to the records of public offices or agencies, or records kept Opposition No. 91155386 Opposition No. 91159232 6 in the performance of duty by a public officer. Weyerhaeuser Co. v. Katz, 24 USPQ2d 130, 1231 (TTAB 1992); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n. 5 (TTAB 1979); see also Fed.R.Evid. 902(4). Trademark Rule 2.122(e) does not refer to a company’s own copies of “official documents.” TBMP §704.07 (2nd ed. rev. 2004). Because opposer did not object to Exhibits A-D, E-3 and G, we will consider those exhibits for whatever probative value they may have. In that regard, we note that applicant introduced those documents to prove that opposer’s anvil design mark is no longer in use. Thus, Applicant relies on the documents to show as evidence that Opposer has discontinued use of the mark in question, Registration No. 783,711 and/or has abandoned the mark through material alteration which must be considered no longer in use.6 In other words, applicant is attacking the validity of opposer’s pleaded registration. However, applicant did not file a counterclaim to cancel opposer’s registration. As noted above, in an order dated August 3, 2006, the Board noted that applicant’s purported counterclaim was merely an amplification of its denials of the allegations set forth in the notice of opposition, that it did not attack the validity of any of opposer’s pleaded registrations and, 6 Applicant’s notice of reliance, p.4. Opposition No. 91155386 Opposition No. 91159232 7 therefore, the Board would not give the counterclaim any further consideration. At no time did applicant seek leave to amend its answer to properly assert a counterclaim to cancel Registration No. 0783711. Our rules are clear: “An attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.” Trademark Rule 2.106(b)(2)(ii). In view thereof, we will not consider any evidence or argument relating to whether opposer abandoned the mark (the anvil design) in Registration No. 0783711. B. Testimony Deposition of Anthony Corsano. On August 22, 2008, opposer filed a motion to admit testimony from the prior Board proceeding between the parties. Specifically, opposer sought leave to introduce into evidence the testimony deposition of Anthony Corsano, then opposer’s Vice-President of Marketing and Sales, taken on February 14, 2001 in the previous Board proceeding between the parties. Applicant objected to opposer’s motion. In an order dated October 14, 2008, the motion was denied because the testimony at issue was taken in 2001 and is now stale as it relates to opposer’s sales, advertising and consumer recognition of opposer’s marks. Opposition No. 91155386 Opposition No. 91159232 8 On December 2, 2008, opposer took the testimony deposition of Anthony Corsano. Applicant did not attend the deposition. In its brief, applicant objected to the Corsano testimony and some of the exhibits on the ground that the exhibits in the 2008 Corsano deposition were also introduced in the 2001 Corsano deposition in the prior Board proceeding between the parties and, therefore, opposer disregarded the Board’s October 14, 2008 order prohibiting the use of a prior deposition from another proceeding. Also, applicant argued that several of the exhibits constituted a new anvil design mark used by opposer that is not subject to this proceeding and that those exhibits should not be considered. Applicant’s objections are not well taken. First, opposer took Mr. Corsano’s deposition during its assigned testimony period. There is no prohibition against opposer having the witness authenticate exhibits that were previously used in another proceeding. Second, applicant incorrectly assumed that opposer is limited to the anvil design represented in Registration No. 0783711. Opposer alleged the following: 3. In 1935, [opposer] adopted and began using a visual depiction of the ANVIL name and mark – the design of an anvil – as a trademark (the “Anvil Design Trademark”) for wearing apparel. Beginning long prior to any date of first use on which Applicant can rely or the date of filing of its intent-to-use Opposition No. 91155386 Opposition No. 91159232 9 application, the trademark has been used to identify the source of [opposer’s] apparel and to distinguish that apparel from the products of others. Whether changes to opposer’s anvil design mark constitute a new mark is a question of fact that would need to be decided in this case if that issue were before us. However, as indicated above, opposer pleaded ownership of Registration No. 0783711 for an anvil design and because applicant did not file a counterclaim to attack the validity of the registration, applicant cannot now argue that opposer has abandoned that mark. In view of the foregoing, applicant’s objections to the deposition of Anthony Corsano are overruled. The Record By rule, the record includes applicant’s application file and the pleadings. Trademark Rule 2.122(b), 37 CFR §2.122(b). A. Opposer’s evidence. 1. Notice of reliance on copies of the opposer’s pleaded registration prepared and issued by the Patent and Trademark Office showing both the current status and title to the registrations; and 2. Testimony deposition of Anthony Corsano, opposer’s President and Chief Operating Officer, with attached exhibits. Opposition No. 91155386 Opposition No. 91159232 10 B. Applicant’s evidence. Applicant submitted the notice of reliance discussed above. Standing Because opposer has properly made its pleaded registrations of record, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Priority Because opposer’s pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks and the goods covered by the registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). With respect to “caps,” opposer may not rely on its pleaded registration because it has expired. Nevertheless, Mr. Corsano testified that opposer sells caps and the catalogs show use of the word mark ANVIL used to identify caps since 1995.7 There was no evidence regarding the use of anvil design on caps.8 7 Corsano Dep., p. 28 and Exhibit 5. 8 Most of the exhibits attached to the Corsano deposition were illegible and, therefore, had no probative value. Opposition No. 91155386 Opposition No. 91159232 11 Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 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 and/or services. 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”). A. The similarity or dissimilarity and nature of opposer’s gods and the good described in the application. Applicant is seeking to register its marks for caps, t- shirts and sweatshirts. Opposer’s anvil design registration is for “men’s and boys’ shirts” and its word mark ANVIL has been registered for, inter alia, shirts and sweatshirts. Furthermore, Mr. Corsano testified that opposer sells caps identified by the ANVIL word mark. In view thereof, the goods of the parties are in part identical. Opposition No. 91155386 Opposition No. 91159232 12 B. The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers. Because the goods identified in the application and the cited registrations are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). With respect to caps, because there are no restrictions as to channels of trade or classes of consumers in applicant’s description of goods, we must assume that applicant’s caps will be sold in all of the normal channels of trade to all of the normal purchasers for such goods, including opposer’s channels of trade and purchasers. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). Opposition No. 91155386 Opposition No. 91159232 13 C. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful that where, as here, the goods are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In Opposition No. 91155386 Opposition No. 91159232 14 re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there 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 a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. First, we compare opposer’s ANVIL word mark with applicant’s mark, shown below: While the words “Anvil” and “Courage” are different, applicant’s design is an “anvil.” On the one hand, in analyzing applicant’s mark, the word “Courage” generally would be considered the dominant part of the mark because consumers would use the word “Courage” in requesting the Opposition No. 91155386 Opposition No. 91159232 15 products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). On the other hand, the common portions of the marks must be considered and no portion of the marks may be disregarded. Price Candy Company v. Gold Medal Candy Corporation, 105 USPQ at 268. In this regard, words and the symbols identified by those words are given the same significance in determining the similarity of the marks. Shunk Mfg. Co., v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963); see also Spaulding Bakeries Inc. v. Interstate Brands Corp., 209 USPQ 355, 356 (TTAB 1980); Roush Bakery Products Co., Inc. v. Ridlen, 203 USPQ 1086, 1089 (TTAB 1979). The reason that words and symbols are considered equivalents is that purchasers do not often have an opportunity for a side-by- side comparison of the marks. Thus, consumers must rely on their memories of or recollections of past experiences, which may be hazy and of a general or overall nature, and as a consequence, a pictorial representation may trigger the recollection of the literal equivalent. Spaulding Bakeries Inc. v. Interstate Brands Corp., 209 USPQ at 356; Roush Bakery Products Co., Inc. v. Ridlen, 203 USPQ at 1089. In this case, the pictorial representation of an anvil in applicant’s mark is clear and unequivocal. There is no question but that opposer’s word mark ANVIL aptly describes Opposition No. 91155386 Opposition No. 91159232 16 the design element in applicant’s mark. Moreover, the word “Anvil” and the anvil design in applicant’s mark are neither suggestive nor descriptive of clothing, but, on the contrary, they are completely arbitrary. Furthermore there is nothing in the record to show that word “Anvil” is commonly used to identify or describe clothing. Thus, while the word “Courage” may be the dominant feature of applicant’s mark, the anvil design is an essential element and the anvil design in applicant’s mark may trigger the recollection of opposer’s ANVIL mark. See In re Sloppy Joe’s International, Inc., 43 UPSQ2d 1350, 1355 (TTAB 1997) (SLOPP JOE’S and portrait of Ernest Hemingway is similar to HEMINGWAY because the portrait of Ernest Hemingway is not an ancillary or subordinate design). Although opposer’s ANVIL mark and applicant’s COURAGE and design mark are not similar in appearance or sound, we find that they are similar in meaning and commercial impression. Now we compare opposer’s anvil design mark, shown below, and applicant’s mark, shown below. Registrant’s Mark Applicant’s Mark Opposition No. 91155386 Opposition No. 91159232 17 As discussed above, the word “Courage” is the dominant part of applicant’s mark. On the other hand, both marks have realistic albeit not identical anvil designs. In fact, in comparing the marks, we note that applicant’s mark incorporates the opposer’s entire mark; just merely turning the anvil design in a different direction does not alter the commercial impression. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. The Wella Corp, v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray, conditioner and shampoo is likely to cause confusion with the mark CONCEPT for cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and soldier design for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL LANCER for gin); In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design for fabrics is likely to cause confusion with WEST POINT for woolen piece goods). We find that although there are differences in the sound of the marks, we find that the marks share visual similarities and that they are similar in meaning and commercial impression. Opposition No. 91155386 Opposition No. 91159232 18 Before leaving the similarity of the marks, we note that if applicant wished to register a mark that merely conveyed the commercial impression engendered by the word “Courage,” it could have done that by simply seeking to register the word “Courage.” However, applicant did not do that. Instead, it filed an application to register a mark that includes a design of an anvil and it did so with knowledge of opposer’s marks as this is at least the third proceeding between the parties regarding an anvil design. Thus, applicant was unquestionably bound by the duty imposed on all junior users to select marks that are sufficiently distinguishable from marks that have federally recorded superior rights. Jockey International v. Butler, 3 USPQ2d 1067, (TTAB 1987); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1455 (TTAB 1986). Applicant did not fulfill this duty when it adopted its COURAGE and design mark and filed the applications at issue. D. Balancing the factors. In view of the similarity of the marks, the identity of the goods, and the presumption that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark COURAGE and design for clothing, namely, t-shirts, sweatshirts and caps is likely to cause confusion with opposer’s ANVIL mark and Opposition No. 91155386 Opposition No. 91159232 19 anvil design mark for clothing, including t-shirts, sweatshirts and caps. Decision: The oppositions are sustained and registration to applicant is refused. Copy with citationCopy as parenthetical citation