Ball Up, LLCv.Arden Holdings Inc.

Trademark Trial and Appeal Board

Sep 27, 2017

No. 91226473 (T.T.A.B. Sep. 27, 2017)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 27, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _______ Trademark Trial and Appeal Board _______ Ball Up, LLC v. Arden Holdings Inc. _______ Opposition No. 91226473 to Application Serial No. 86726855 _______ Daniel J. Chalker of Chalker Flores LLP P for Ball Up, LLC. Arden Holdings Inc., appearing pro se. _______ Before Kuhlke, Ritchie, and Shaw, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Arden Holdings Inc. (“Applicant”) seeks registration of the mark for goods identified as “soles for footwear,” in International Class 25.1 1 Application Serial No. 86726855, filed on August 17, 2015 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging bona fide intent to use the mark in commerce. Opposition No. 91226473 2 Ball Up, LLC (“Opposer”) has opposed registration of Applicant’s mark on the grounds of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), false suggestion of a connection under Section 2(a), 15 U.S.C. § 1052(a) and dilution by blurring and tarnishment under Section Trademark Act Section 43(c), 15 U.S.C. § 1025(c). Opposer pleaded ownership of the mark in the following: 1. Registration No. 5006373,2 for: Publications and printed matter, namely, post cards, paper place mats, memo pads, book covers, wrapping paper and posters in the field of basketball; stickers, namely, stickers, decals, commemorative stamps and bumper stickers in the field of basketball; collectible cardboard trading discs in the field of basketball; ball point pens and pencils in the field of basketball; notebooks, namely, 3-ring binders, wire- bound notebooks, and portfolio notebooks in the field of basketball; photographs, namely, unmounted and mounted photographs in the field of basketball; books, namely, children’s activity books, statistical books, calendars, commemorative game programs, guide books and reference books in the field of basketball; magazines in the field of basketball; stationery, namely, stationery folders, notecards, paper pennants, stationery-type portfolios and statistical sheets in the field of basketball; newsletters and 2 The underlying application was pleaded and issued into a registration on July 26, 2016, claiming dates of first use anywhere and in commerce of September 2015. UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009) (if a party pleads a pending application in the notice of opposition, it may make the resulting registration of record at trial without having to amend its pleading to assert reliance on the registration). The description of the mark reads: “The mark consists of the stylized word ‘RISE’, with the letters ‘R’, ‘S’, ‘E’ and a figure of a jumping basketball player forming the letter I between the letters ‘R’ and ‘S’.” Opposition No. 91226473 3 pamphlets in the field of basketball for the distribution to the television and radio media, in International Class 16; 2. Registration No. 5007566,3 for: Toys and sporting goods in the nature of basketball accessories, namely, basketballs, bags specially adapted for basketballs, basketball nets, basketball kits comprised of a basketball net and sports whistle, and basketball backboards; golf accessories, namely, golf ball tees and markers, golf gloves and divot repair tools, golf bags, golf clubs, golf balls; collectible balls, namely, footballs, basketballs, baseballs and soccer balls; competition and leather sports balls, namely, rubber balls, foam sport balls, playground balls, rubber action balls and foam action play balls; balls, namely, vinyl play balls, plush play balls, sports balls and toy play balls; pumps for inflating sports equipment, namely, footballs, soccer balls, plush sports and toy balls, vinyl sports and toy balls; dolls; plush mascot toys; action figures; flying discs; games, namely, board games, basketball table top games, playing cards, puzzles, parlor and memory games; stand alone video game machines and arcade- type video game machines; hand- held mobile video games with liquid crystal displays; electronic video arcade game machines; and Christmas tree decorations, in International Class 28; 3. Application Serial No. 86844867,4 for: Athletic bags, shoe bags for travel, overnight bags, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote bags, drawstring pouches, luggage, valises, attaché cases, business card cases, book bags, all purpose sports bags, billfolds, wallets, briefcases, gym bags, purses, coin purses, fanny packs, waist packs, cosmetic cases sold empty, garment bags for travel, handbags, suitcases, toiletry cases sold empty, trunks for traveling, key cases and rucksacks; umbrellas, namely, patio umbrellas, beach umbrellas and golf umbrellas; pet accessories, namely, pet clothing, leashes and collars for 3 The underlying application was pleaded and issued into a registration on July 26, 2016, claiming dates of first use anywhere and in commerce of September 2015. Id. 4 Filed on December 10, 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use as of September 2015. Opposition No. 91226473 4 animals; canes; leather key chains; tags, namely, luggage tags, in International Class 38; 4. Application Serial No. 86845191,5 for: Clothing, namely, men’s and unisex tshirts, sport shirts, rugby shirts, basketball shirts for use in shooting basketballs, woven and knit shirts, shirts, polo shirts, pants, tank tops, jerseys, shorts; men’s and women’s and youth combo clothing packages, namely, sweatshirts, sweatpants, warm-up suits, warm-up pants, warm-up tops, uniforms; men’s, women’s and youth outerwear, namely, jackets, wind resistant jackets, parkas, coats, sweaters; undergarments, namely, boxer shorts, underwear; men’s and unisex pants, namely, board shorts, slacks, pants, shorts; men’s and unisex sleep apparel, namely, pajamas, nightshirts; women’s apparel, namely, jersey dresses, dresses, skirts, cheerleading dresses and uniforms, bikinis, tankinis, beach cover-ups, bathing suit cover-ups, bathing suit wraps; men’s and unisex swim wear, bathing suits, swimsuits, swim trunks, bathing trunks, wet suits; headwear, namely, beach hats, sun visors, hats, caps, visors, swim caps, bathing caps, headbands; footwear, namely, basketball shoes, basketball sneakers, sandals, beach sandals; clothing accessories, namely, ear muffs, gloves, mittens, scarves, wrist bands, aprons, belts, ties, socks, baby bibs not of paper; infant and toddler apparel, namely, pajamas, jackets, shirts, shorts, pants, hats, jumpers, rompers, layettes and one-piece garments for children; men’s and women’s performance apparel, namely, uniforms, shirts, pants, dresses, skirts, shorts, hats, pants, sweat shirts, sweat pants, jerseys, tshirts, shoes and socks, in International Class 25; and 5. Application Serial No. 86849718,6 for: Entertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions; the production and distribution of radio and television programs featuring broadcasts of 5 Filed on December 10, 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming a dates of first use as of June 2015. 6 Filed on December 15, 2015 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging bona fide intent to use the mark in commerce. Opposition No. 91226473 5 basketball games, basketball events and programs in the field of basketball; entertainment services, namely, providing a website featuring nondownloadable multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings in the field of basketball, basketball news in the nature of information, statistics, and trivia about basketball, and on- line non-downloadable publications in the nature of magazines, guides, newsletters, coloring books, game schedules in the field of basketball that can be printed over the internet, in International Class 41. Opposer also pleaded common law rights to the “RISE Jumping Man Mark” based on use in commerce at least as early as June 2015.7 Applicant denied the salient allegations of the notice of opposition. Only Opposer filed a brief. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the involved application. Opposer states that the parties have stipulated that witness testimony may be offered by affidavit.8 Opposer submitted the following evidence: 1. Opposer’s First Notice of Reliance comprising: a. Copies of Opposer’s two pleaded U.S. Trademark Registration certificates; b. Portions of Opposer’s three pleaded U.S. Trademark applications; 7 1 TTABVUE 8. 8 7 TTABVUE 2. We further note that the notice of reliance was filed on January 30, 2017 and as of the January 14, 2017 effective date of the amended rules, parties may unilaterally chose to submit testimony by declaration or affidavit subject to the right of the adverse party to take oral cross examination. Trademark Rule 2.123, 37 CFR § 2.123. Opposition No. 91226473 6 c. Opposer’s Requests for Admissions to Applicant, dated September 29, 2016, and Applicant’s Answers thereto, dated November 11, 2016; d. Opposer’s First Request for Production to Applicant and Applicant’s Answer thereto; and e. Opposer’s First Set of Interrogatories to Applicant and Applicant’s Answer thereto. 2. The declaration testimony of Robert Keetch, Opposer’s President, with exhibits.9 Applicant did not submit any testimony or evidence.10 Evidentiary Issues Regarding Opposer’s request for admissions and Applicant’s responses thereto, supra, because Applicant did not provide Opposer with its written answers to the request in a timely manner, the requested admissions are deemed admitted by operation of law. Fed. R. Civ. P. 36(a)(3); see Fram Trak Indus. v. Wiretracks, LLC, 77 USPQ2d 2000, 2005 (TTAB 2006). Although Applicant served Opposer with late answers to the requested admissions, Applicant neither moved to reopen its time to respond to the admission requests under Fed. R. Civ. P. 6(b)(2), nor moved to withdraw and amend its admissions pursuant to Fed. R. Civ. P. 36(b). Rule 36(a), however, provides that requests for admission may be directed to “facts, the application of law to fact, or opinions about either.” Several of Opposer’s requests for admission encompass conclusions of law. Therefore, Applicant’s lack of 9 7 TTABVUE. 10 Although not required to do so by Board rules, Applicant submitted into the record pretrial disclosures noting that it was not planning to take any testimony. 8 TTABVUE. See TBMP § 702.01 (June 2017). Opposition No. 91226473 7 response to those requests does not constitute an admission to the conclusions of law. See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153-54 (CCPA 1978) (likelihood of confusion is a legal conclusion, therefore, it cannot be an “admission,” only facts may be admitted; under no circumstances may a party’s opinion . . . relieve the decision maker of the burden of reaching [its] own ultimate conclusion on the entire record); Harco Labs., Inc. v. Decca Navigator Co., 150 USPQ 813, 814 n.2 (TTAB 1966) (the Board cannot rely on admissions stating legal conclusions). Accordingly, we have not considered requests for admission seeking to elicit admissions to conclusions of law. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. In this case, Opposer made of record by notice of reliance copies of its pleaded applications and registrations and attested to the ownership of these recently issued Opposition No. 91226473 8 registrations. In view thereof, Opposer has established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Priority Priority is not in issue with respect to the mark and the goods in classes 16 and 28 set out in Opposer’s pleaded and proven registrations, supra. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Regarding Opposer’s common law rights in the mark, Opposer’s President, Robert Keetch, testified that Opposer has been using the mark since “at least as early as June 2015.”11 Moreover, Mr. Keetch identified Opposer as the owner of application serial number 86845191, supra, introduced via Opposer’s notice of reliance, and which claims dates of use on clothing articles as of June 2015. Inasmuch as Applicant’s constructive first use date is August 17, 2015, we find Mr. Keetch has properly established Opposer’s priority as to the clothing articles, including, “footwear, namely, basketball shoes, basketball sneakers, sandals, beach sandals; [and] men’s and women’s performance apparel, namely, . . . shoes.12 See Omega SA v. Compucorp, 229 USPQ 191, 195 (TTAB 1985) (allegations and documents in application file not evidence unless and to the extent they have been identified and introduced in evidence during testimony). Applicant admits that “Opposer used its 11 Keetch Test., p. 2, 7 TTABVUE 6. 12 6 TTABVUE 14 Opposition No. 91226473 9 mark in interstate commerce prior to the filing of Applicant’s trademark application serial number 86/726,855 on August 17, 2015.”13 Likelihood of Confusion We begin with likelihood of confusion. Our determination of the issue is based on an analysis of all the probative facts in evidence relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the services and the similarities between the marks. 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 [or services] and differences in the marks.”). The relevant du Pont factors in the proceeding now before us are discussed below. 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression We first consider the marks, comparing them for similarities and dissimilarities in appearance, sound, connotation and commercial impression. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity in any one of these elements is sufficient to support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 13 Opposer’s Requests for Admission, Request No. 3, 6 TTABVUE 38. Opposition No. 91226473 10 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”). Applicant admits that the marks are similar in pronunciation in that “both marks can be pronounced ‘RISE.’”14 Further, Applicant admits that both marks are comprised of the word RISE, with Opposer substituting its “jumping man” in place of the letter “I” and Applicant “slightly modif[ying] the ‘E’ by removing the vertical line.”15 The word portion of the marks, therefore, are similar in commercial impression in that they both consist of the term RISE. Opposer’s addition of its “jumping man” to its mark and Applicant’s slight modification of the letter “E” do not significantly distinguish the marks. Rather, the dominant common term “RISE” creates the same suggestion of rising up or jumping. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES). Accordingly, the du Pont factor regarding the similarity of the marks weighs in favor of finding a likelihood of confusion. 2. The similarity or dissimilarity of the goods, trade channels and conditions of sale We next consider the du Pont factors regarding the similarity or dissimilarity of the parties’ respective goods, their channels of trade and conditions of sale. It is not necessary that the goods be identical or competitive, or even that they move in the same channels of trade, to support a finding of likelihood of confusion. Rather, it is 14 Opposer’s Requests for Admission, Request No. 8, 6 TTABVUE 39. 15 Opposer’s Requests for Admission, Request No. 9, 6 TTABVUE 39. Opposition No. 91226473 11 sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would or could be encountered by the same persons in situations that would give rise, because of the similarity of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Applicant’s goods are “soles for footwear.” Opposer uses its mark on a variety of clothing articles, including, “footwear, namely, basketball shoes, basketball sneakers, sandals, beach sandals; [and] men’s and women’s performance apparel, namely, . . . shoes.”16 Opposer’s witness attests that shoes and soles for footwear are related goods, and Exh. C, a webpage printout from a third party, displays footwear and insoles offered for sale next to each other.17 Moreover, Applicant admits that its goods are “directly related to Opposer’s clothing products, namely basketball shoes, basketball sneakers, sandals, beach sandals and shoes.”18 Applicant further admits that its goods will be “sold, distributed and made available to the purchasing public” in “trade channels that are the same or similar” and “under the same or similar conditions” as Opposer’s footwear.19 16 6 TTABVUE 14. 17 7 TTABVUE 7-8, 25. 18 Opposer’s Requests for Admission, Request No. 11, 6 TTABVUE 40. 19 Opposer’s Requests for Admission, Request Nos. 12 and 13, 6 TTABVUE 40. Opposition No. 91226473 12 Accordingly, we find that the du Pont factors relating to the similarity of the goods, channels of trade and conditions of sale weigh in favor of a finding of likelihood of confusion. Conclusion After considering all of the applicable du Pont factors, including any factors not discussed herein, we find that Applicant’s mark, , for “soles for footwear” is likely to cause confusion with Opposer’s mark, , for, inter alia, footwear. In light of this finding we need not address Opposer’s other grounds for opposition. Decision: The opposition is sustained and registration of the mark is refused.