Board of Trustees of the University of Arkansasv.B & J's, Inc.

Trademark Trial and Appeal Board

Sep 16, 2015

No. 91209309 (T.T.A.B. Sep. 16, 2015)

Faint

Mailed: September 16, 2015

Opposition No. 91209309
Board of Trustees of the University of
Arkansas

v.
B & J's, Inc.

Before Quinn, Bergsman and Adlin,
Administrative Trademark Judges.

By the Board:

Applicant seeks to register the mark SOOIE-T in standard character form for
clothing items in Class 25.1 Opposer filed its opposition to registration of Applicant’s
mark on the grounds of likelihood of confusion and dilution on February 13, 2013.2
On July 19, 2013, Opposer filed an application to register the mark WOOO PIG

1 Application Serial No. 85628816, filed May 17, 2012 pursuant to Trademark Act § 1(b) for
“apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets;
aprons; athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic
uniforms; bathing suits; belts; boxer briefs; caps; children's and infant's apparel, namely,
jumpers, overall sleepwear, pajamas, rompers and one-piece garments; earbands; gift
packages sold as a unit consisting primarily of a sweatshirt and also including a photo
frame, a coffee mug, and a tote bag; gloves; gloves for apparel; hats; headbands; jackets;
pants; scarves; shirts; shoes; shorts; socks; suspenders; sweaters; sweatshirts; tee shirts;
ties; tops; underwear; wristbands.”

2 In the ESTTA cover sheet attached to its original pleading, Opposer also alleges false
suggestion of a connection, which the Board addresses later in this order.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
Opposition No. 91209309

2
SOOIE in standard character form for clothing items in Class 25 and registration
issued on December 31, 2013.3 Opposer also filed an application on July 26, 2013 to
register a sensory mark described as, “the mark consists of a crowd cheering the
following words ‘Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Woooooooo. Pig.
Sooie! Razorbacks!’” for “providing collegiate athletic and sporting events” in Class
41.4 Registration for this mark issued on July 1, 2014.
Opposer filed its first amended notice of opposition on September 18, 2014
claiming ownership of its subsequently registered registrations and alleging
common law rights in its SOOIE marks. The Board issued an order on February 2,
2015 granting in part as conceded Opposer’s motion to strike Applicant’s affirmative
defenses. Applicant otherwise denied the salient allegations in the complaint.
Opposer’s testimony period was scheduled to open on May 12, 2015.
This case now comes up on Opposer’s second amended motion, filed May 12,
2015, for summary judgment on the grounds of likelihood of confusion and dilution.
With its response, Applicant cross-moved for summary judgment on the same
grounds. The cross motions are fully-briefed.
A. Timing of Cross Motion for Summary Judgment
We turn first to a procedural point. Opposer’s original motion for summary
judgment was filed May 11, 2015. The same day, Opposer filed its first amended

3 Registration No. 4459297 for “clothing, namely, hats, caps, t-shirts, sweat shirts, skirts,
shorts, baby bibs not of paper, and tank tops,” claiming dates of first use anywhere of
December 31, 1929 and first use in commerce of December 31, 1988.

4 Registration No. 4558864 claiming dates of first use anywhere and in commerce of
December 31, 1929.

Opposition No. 91209309

3
motion for summary judgment. The next day, May 12, 2015, Opposer filed its second
amended motion for summary judgment. By its order of June 12, 2015, the Board
ordered this case suspended as of the filing of the original motion for summary
judgment on May 11, 2015. The Board also ordered that Opposer’s notice of reliance
filed June 10, 2015 was filed outside the testimony period and would not be
considered and set Applicant’s time to file its response to Opposer’s motion for
summary judgment as June 16, 2015. Applicant’s response and cross motion was
filed and served on June 16, 2015.
In its brief in reply and response, filed June 26, 2015, Opposer argues
Applicant’s cross motion is untimely as it was filed after the opening of Opposer’s
testimony period. This argument is in direct contradiction to the Board’s June 12,
2015 order. If the Board were to credit Opposer’s argument, then Opposer’s second
amended motion for summary judgment would also be untimely. In any case, it is
within the Board’s discretion to consider even an untimely motion for summary
judgment. See Trademark Rule 2.127(e)(1) (Board in its discretion may deny an
untimely motion for summary judgment). As proceedings were suspended as of May
11, 2015, Opposer’s testimony period has not yet opened, and Applicant’s response
and cross-motion was timely filed under Fed. R. Civ. P. 56(b) and Trademark Rule
2.127(e)(1).
In view thereof, the Board has considered Applicant’s response and cross-
motion for summary judgment.
Opposition No. 91209309

4
B. Cross-Motions for Summary Judgment
Summary judgment is only appropriate when there is no genuine dispute as to
any material fact and the moving party is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(a). The Board may not resolve issues of material fact; it may
only ascertain whether a genuine dispute regarding a material fact exists. See
Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 766, 25 USPQ2d 2027, 2029
(Fed. Cir. 1993); Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 200, 22
USPQ2d 1542, 1542 (Fed. Cir. 1992). A factual dispute is genuine if, on the evidence
of record, a reasonable fact finder could resolve the matter in favor of the
nonmoving party. Opryland USA, Inc. v. Great Am. Music Show, Inc., 970 F.2d 847,
23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, 961 F.2d at 200, 22
USPQ2d at 1544. Merely because both parties have moved for summary judgment
does not necessarily mean that there are no genuine disputes of material fact, and
does not dictate that judgment should be entered. See Univ. Book Store v. Univ. of
Wis. Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
C. Standing and Priority
Opposer requests summary judgment with regard to its standing and priority. In
its original notice of opposition, Opposer pleaded its belief in damage and common
law rights in its WOOO PIG SOOIE and “calling the hogs” marks. See Jewelers
Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490; 2 USPQ2d 2021
(Fed.Cir.1987) (plaintiff must plead facts sufficient only to show personal interest in
outcome). Opposer’s amended pleading alleges ownership of its subsequently
Opposition No. 91209309

5
applied-for and registered marks in addition to its common law rights. Opposer has
submitted evidence of its common law use of its WOOO PIG SOOIE and “calling the
hogs” marks in connection with athletic events and clothing as a competitor of
Applicant. See Harris affidavit. 24 TTABVUE 22 (May 11, 2015). Thus, Opposer has
proven its standing.
With respect to priority, Opposer submitted status and title copies of its two
pleaded registrations with its motion for summary judgment. Because Opposer's
pleaded registrations are of record, Opposer’s priority under Trademark Act § 2(d) is
not an issue in this proceeding as to Opposer's registered marks and the goods and
services covered by the registrations. See King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Accordingly, Opposer’s motion for summary judgment on standing and
priority is granted. We hasten to add, however, that Opposer's standing must
persist throughout trial.
D. Likelihood of Confusion and Dilution
Opposer argues there is no genuine dispute of material fact that its marks are
strong and famous, Applicant was aware of Opposer’s marks when it filed its
application, the marks and goods are similar and the trade channels are the same.
In support of its arguments, Opposer submitted the affidavits of Michael Harris,
Director for Licensing and Revenue Generation for the University, and its attorney
Harold J. Evans. The Harris affidavit avers that the WOOO PIG SOOIE mark,
“calling the hogs,” and Opposer’s common law mark SOOIE Arkansas Razorbacks
Opposition No. 91209309

6
and design are in use and point uniquely to Opposer. Attached to the affidavit is a
photograph of a t-shirt displaying the words WOOO PIG SOOIE with a design of a
razorback hog. The Evans affidavit introduces copies of eighteen news articles
purportedly showing “20 Plus Years of The Hog Call” to show that WOOO PIG
SOOIE is the dominant portion of the hog call and as evidence that WOOO PIG
SOOIE and the “hog call” are famous marks.
In response, Applicant argues the marks are not similar, the commercial effect of
Opposer’s and Applicant’s marks is drastically different because of the differences in
their appearance, sound and meaning, and the marks have coexisted in the United
States for at least five years without any evidence of actual confusion.
Upon careful consideration of the arguments and evidence presented by the
parties, we find that there are genuine disputes of material fact with regard to
Opposer's asserted claims of likelihood of confusion and dilution which preclude
disposition of this case by way of summary judgment. At a minimum, we find that
genuine disputes of material fact exist as to the similarities between the parties'
respective marks for likelihood of confusion purposes, in particular the visual and
aural similarities between the marks, as well as the connotation and commercial
impression conveyed by the parties' respective marks.
With respect to Opposer's dilution by blurring claim, there are genuine
disputes as to whether Opposer’s mark is famous for purposes of dilution and the
degree of similarity between the parties' marks.5

5 Fame for likelihood of confusion and dilution is not the same. Fame for dilution requires a
more stringent showing. Palm Bay Imps. Inc. v. Veuve Clicquot, 396 F.3d 1369, 73 USPQ2d
Opposition No. 91209309

7
In view thereof, Opposer's motion for summary judgment is granted in part
with regard to Opposer's standing and priority of use. The parties’ cross-motions for
summary judgment are denied on Opposer’s asserted claims of likelihood of
confusion and dilution by blurring.6
E. Opposer’s Claim of False Suggestion of a Connection
To the extent Opposer seeks to assert a claim of false suggestion of a
connection under Trademark Act § 2(a), the claim is stricken.
Trademark Act Section 2(a) provides in pertinent part:
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration on the principal register on account of its nature
unless it —

1689, 1694 (Fed Cir. 2005); Coach Servs. Inc. v. Triumph Learning LLC, 96 USPQ2d 1600,
1610 (TTAB 2010), aff’d., 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Toro Co. v.
ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). Likelihood of confusion fame “varies
along a spectrum from very strong to very weak” while dilution fame is an either/or
proposition — it either exists or it does not exist. Id.; see also Carefirst of Md., Inc. v.
FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1507 (TTAB 2005) (likelihood of
confusion “[f]ame is relative … not absolute”). A mark, therefore, may have acquired
sufficient public recognition and renown to be famous for purposes of likelihood of confusion
without meeting the more stringent requirement for dilution fame. Toro Co., 61 USPQ2d at
1170, citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st
Cir. 1998) (“[T]he standard for fame and distinctiveness required to obtain anti-dilution
protection is more rigorous than that required to seek infringement protection”).

6 The parties should note that the evidence submitted in connection with the cross-motions
for summary judgment on the claims of likelihood of confusion and dilution is of record only
for consideration of those cross-motions. To be considered at final hearing, any such
evidence must be properly introduced during the appropriate trial period. See Land O’
Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.7 (TTAB 2008); Univ. Games Corp. v.
20Q.net Inc., 87 USPQ2d 1465, 1468 n.4 (TTAB 2008); Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 28 USPQ2d 1464 (TTAB 993)(declaration of witness submitted in
connection with summary judgment motion was part of record for trial where witness
identified and attested to accuracy of it during applicant’s testimony period). Furthermore,
the fact that we have identified certain genuine disputes of material fact sufficient to deny
the motions should not be construed as a finding that these are necessarily the only issues
which remain for trial.
Opposition No. 91209309

8
(a) Consists of or comprises … matter which may … falsely
suggest a connection with persons, living or dead … .

15 U.S.C. § 1052(a).
To properly plead a Section 2(a) claim of false suggestion of a connection, a
plaintiff must allege the following:
1. defendant’s mark is the same or a close approximation of plaintiff's name or
identity;

2. defendant’s mark would be recognized as such by purchasers, in that the
mark points uniquely and unmistakably to the person or institution named or
identified;

3. plaintiff is not connected with the goods sold or activities performed by the
defendant under the mark; and

4. plaintiff’s name or identity is of sufficient fame or reputation that when the
defendant’s mark is used in connection with its goods or services, a
connection with the plaintiff would be presumed.

In re Nieves & Nieves, LLC, 113 USPQ2d 1629, 1632-33 (TTAB 2015) (citing inter
alia, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372,
217 USPQ 505, 509 (Fed. Cir. 1983) and Bd. of Trs. v. Pitts, 107 USPQ2d 2001, 2025
(TTAB 2013)). Fundamental to a pleading of false suggestion of a connection under
Trademark Act § 2(a) is the “initial and critical requirement” that the identity being
appropriated is unmistakably associated with the plaintiff. Springs Indus., Inc. v.
Bumblebee Di Stefano Ottina & C.S.A.S., 222 USPQ 512, 514 (TTAB 1984) (quoting
Univ. of Notre Dame, 217 USPQ at 509).
Nowhere in the pleading does Opposer allege that its marks are its name or
identity, a “key factor” in the false suggestion of a connection analysis. Bd. of Trus.
Opposition No. 91209309

9
of Univ. of Ala. v. Pitts, 107 USPQ2d 2001, 2025 (TTAB 2013) (opposed mark must
do more than simply “bring to mind” Opposer’s mark).
F. Proceeding Resumed
Proceedings are resumed. As the cross-motions for summary judgment were
submitted just prior to the opening of trial, and the Board has carefully considered
those motions and the evidence submitted, the parties may not submit additional
motions for summary judgment.
Dates are reset as set out below.
Discovery Closes Closed
Plaintiff's Pretrial Disclosures Due 10/12/2015
Plaintiff's 30-day Trial Period Ends 11/26/2015
Defendant's Pretrial Disclosures Due 12/11/2015
Defendant's 30-day Trial Period Ends 1/25/2016
Plaintiff's Rebuttal Disclosures Due 2/9/2016
Plaintiff's 15-day Rebuttal Period Ends 3/10/2016
In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
oral hearing will be set only upon request filed as provided by Trademark Rule
2.129.
***