Bear U.S.A., Inc.v.Dada Corporation

Trademark Trial and Appeal Board

Oct 10, 2008

No. 91176592 (T.T.A.B. Oct. 10, 2008)

Mailed:
October 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Bear U.S.A., Inc.

v.

Dada Corporation
_____

Opposition No. 91176592
to application Serial No. 78695990
filed on August 18, 2005
_____

Timothy J. Kelly of Fitzpatrick, Cella, Harper & Scinto for
Bear U.S.A., Inc.

Do Hyun Park for Dada Corporation.
______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Bear U.S.A., Inc. has opposed, on the ground of
likelihood of confusion, the application of Dada Corporation
to register PINK BEAR as a trademark for “clothing namely
hats, caps and headwear, headbands, jerseys, jackets, jeans,
casual wear namely shorts, pants, T-shirts, overcoats,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91176592
2
shoes.”1 In particular, opposer has alleged that since as
early as 1993, well prior to the filing date of applicant’s
intent-to-use application, opposer has used in commerce its
BEAR trademarks, including BEAR, BEAR MOUNTAIN, BABY BEAR,
BEAR MAX, BEAR U.S.A. and BEAR U.S.A. and design, in
connection with clothing products; that as a result of
opposer’s sales, advertising and promotion, the BEAR
trademarks became famous prior to the filing date of
applicant’s application; that opposer owns a number of
trademark applications and registrations; and that
applicant’s use of its mark for its identified goods is
likely to cause confusion or mistake or to deceive.
In its answer applicant denied the allegations set
forth in the notice of opposition.
The record includes the pleadings, the file of the
opposed application; the testimony, with exhibits, of Thomas
Hong, opposer’s president; and copies of opposer’s pleaded
registrations, to wit:2

MARK

GOODS

BEAR

Clothing, namely parkas, jackets,
shirts, hats, headbands and footwear3

1 Opposer also pleaded in the notice of opposition that
applicant’s mark will dilute its famous BEAR trademarks.
However, opposer did not discuss this ground in its trial brief,
and we therefore have given it no further consideration.
2 Opposer did not submit copies of all of the registrations it
pleaded in the notice of opposition. No consideration has been
given to those registrations which were not made of record.
3 Registration No. 3038588, issued January 10, 2006.
Opposition No. 91176592
3

BEAR-MAX

Clothing, namely, parkas, jackets4

BABY BEAR

Clothing, namely, parkas, jackets,
sweatshirts and shorts5

BABY BEAR

Clothing, namely, footwear, shirts,
hats, pants, socks, gloves, mittens,
scarves and caps6

Clothing, namely, parkas, shirts,
hats, sweatshirts, jackets, pants,
shorts, socks, gloves, mittens,
scarves and caps7

(USA disclaimed)

All purpose athletic, sport and duffel
bags8
(USA disclaimed)

Parkas and jackets9
(USA disclaimed)

Clothing, namely parkas and jackets10

4 Registration No. 2191596, issued September 22, 1998; Section 8
affidavit accepted.
5 Registration No. 2286759; Section 8 & 15 affidavits accepted
and acknowledged.
6 Registration No. 2559155, issued April 9, 2002. Section 8 & 15
affidavits were filed on October 8, 2008. They have not yet been
acted on by the USPTO.
7 Registration No. 2556355, issued April 2, 2002. Section 8 & 15
affidavits were filed o October 2, 2008. They have not yet been
acted on by the USPTO.
8 Registration No. 2559096, issued April 9, 2002. Section 8 & 15
affidavits were filed on October 8, 2008. They have not yet been
acted on by the USPTO.
9 Registration No. 2700829, issued March 25, 2003.
10 Registration No. 2997379, issued September 20, 2005.
Opposition No. 91176592
4

All purpose athletic sport and duffel
bags; clothing, namely sweaters,
gloves, headbands and footwear,
including shoes and boots11
(USA disclaimed)

Clothing, namely, parkas, jackets,
sweaters, sweatshirts, t-shirts,
pants, jeans, shorts, socks hats,
caps, gloves and headbands12

BEAR MOUNTAIN

Clothing, namely parkas and vests13

Applicant did not submit any evidence in its behalf,
and only opposer filed a trial brief.
The evidence of record shows that opposer was formed in
1994. It designs, manufactures, imports and sells apparel
and accessories. Since 1994 it has used various BEAR
trademarks for its products. The products include
outerwear, such as insulated and non-insulated jackets,
parkas and coats; sportswear which includes t-shirts,
women’s shirts, and sweatshirts; footwear items and
accessories, which includes hats, caps, headbands and
gloves. Among the first products it sold were a vest and a
parka with the mark BEAR MOUNTAIN. Subsequently marks such
as BEAR USA, BEAR per se and BEAR with the design of a bear
were used.

11 Registration No. 2623471, issued September 24, 2002.
12 Registration No. 2691242, issued February 25, 2003.
13 Registration No. 2384568, issued September 12, 2000; Section 8
& 15 affidavits accepted and acknowledged.
Opposition No. 91176592
5
Opposer sells its products in department stores such as
Macy’s, Bloomingdale’s and Nordstrom, regional chain stores
such as Modell’s Sporting Goods, and independently family-
owned (mom and pop) specialty stores throughout the country.
Although the products originally had their strongest appeal
to the urban consumer, their appeal now is primarily
mainstream to both genders and various races in the 18-35
year old category. The retail prices for outerwear jackets
range from $70-$250, while the sportswear products are in
the $60-$80 range, and accessories such as hats would be in
the $20-$30 range. Since the company started it has sold
about $110 million in the United States, with more than
twice that in global sales.
Opposer advertises its goods in fashion and consumer
magazines, such as “Stuff,” “FHM” and “Blender,” and has
promoted them through product placement in television shows
such as “Fresh Prince of Bel-Air,” and through cooperative
or cross-marketing advertising, including contests and
events. Opposer has also been involved in community service
activities, including donating its BEAR USA brand jackets to
needy children in New York City, for which it has received
press coverage. Since the inception of the company it has
spent over $7 million on advertising and promotion. In
addition, opposer’s products have been featured by magazine
fashion editors in fashion editorials.
Opposition No. 91176592
6
Opposer has demonstrated its standing by virtue of its
registrations and use of various BEAR marks. See Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Further, because opposer’s
registrations are of record, priority is not in issue. King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).
This brings us to the issue of likelihood of confusion.
Our determination of this issue is based on an analysis of
all of the probative facts in evidence that are 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 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 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
Because opposer’s registration for BEAR for parkas,
jackets, shirts, hats, headbands and footwear is the most
similar to applicant’s mark and goods, we will confine our
discussion to this registration.
Opposition No. 91176592
7
Opposer’s and applicant’s goods are identical in part,
and otherwise closely related. In particular, applicant’s
identification of goods includes jackets, hats, headbands
and t-shirts, which are either identical to or encompassed
by opposer’s identified jackets, shirts, hats, headbands and
footwear. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to
be confusion with respect to any item that comes within the
identification of goods in the application). Because these
goods are legally identical, they must be deemed to be sold
in the same channels of trade. Both of these du Pont
factors--the similarity of the goods and the channels of
trade--favor a finding of likelihood of confusion.
When marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Here the marks are BEAR
and PINK BEAR. Although applicant’s mark has the additional
word PINK, the word BEAR retains its identity and to this
extent the marks are identical in appearance, pronunciation
and connotation. The adjective PINK merely provides some
additional information about the color of the BEAR, but BEAR
is still the dominant part of the mark. See In re National
Opposition No. 91176592
8
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (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 short, the additional word PINK in
applicant’s mark is insufficient to distinguish its mark
from opposer’s mark BEAR, and the marks convey similar
commercial impressions. See Coca-Cola Bottling Co. v.
Joseph E. Seagram & Sons, Inc., 526 F.2d 556 188 USPQ 105
(CCPA 1975) (source of BENGAL LANCER for mixers likely to
be confused with source of BENGAL for gin, since goods are
sold to same class of purchasers and used together); In re
West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558,
559 (CCPA 1972) (WEST POINT PEPPERELL and design for woven
and non-woven fabrics not registrable in view of registered
mark WEST POINT for woolen piece goods).
The du Pont factor of the similarity of the marks also
favors a finding of likelihood of confusion.
With respect to the factor of the conditions of
purchase, the goods at issue are general consumer goods, and
the customers cannot be treated as particularly
sophisticated or knowledgeable. Further, many of the items
can be relatively inexpensive, e.g., caps and headbands, and
are likely to be purchased on impulse and without a great
Opposition No. 91176592
9
deal of care. This factor, too, favors a finding of
likelihood of confusion.
With respect to the factor of fame, we reject opposer’s
position that its mark is famous. Opposer has used the
general term “Bear marks” to refer to its marks, without
separating out the use or advertising of particular BEAR
marks, so we cannot ascertain the sales and advertising for
the mark BEAR per se. Even if we were to assume that the
testimony and exhibits apply to the mark BEAR, these figures
are not of the level that is normally required for us to
find a mark to be famous. Opposer has not given us any
basis to compare its sales and advertising figures, or to
indicate its market share, but total sales of $110 million
and advertising expenditures of $7 million in a 14-year
period (1994 to 2008) does not appear to be especially
large. Compare Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir.
1984), where in 1984 the plaintiff had annual sales of $25
million and total advertising expenditures exceeding $3
million. Certainly comparable figures almost 25 years
later would be significantly higher, but opposer’s annual
sales would not even match the annual sales of that earlier
time.
Although we do not find opposer’s mark to be famous, we
must consider it to be a strong mark, in that BEAR is an
Opposition No. 91176592
10
arbitrary mark for clothing, and is therefore distinctive.
Moreover, there is no evidence in the record of third-party
use of BEAR marks.
We consider the remaining du Pont factors to be
neutral. Although there is no evidence of actual confusion,
there is no information in this record that applicant has
even begun using its mark. As a result, the lack of
evidence of actual confusion does not suggest that confusion
is not likely to occur.
After considering all of the relevant du Pont factors,
we find that opposer has demonstrated that applicant’s mark,
if used on its identified goods, is likely to cause
confusion.
Decision: The opposition is sustained.