B.V.D. Licensing Corporationv.Florencio Rodriguez

Trademark Trial and Appeal Board

Feb 21, 2007

No. 91157529 (T.T.A.B. Feb. 21, 2007)

Mailed:
February 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The B.V.D. Licensing Corporation
v.
Florencio Rodriguez
_____

Opposition No. 91157529
to application Serial No. 76298187
filed on August 10, 2001
_____

William H. Hollander and Matthew Williams of Wyatt, Tarrant
& Combs, LLP for The B.V.D. Licensing Corporation.

Florencio Rodriguez, pro se. 1
______

Before Seeherman, Rogers and Kuhlke,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Florencio Rodriguez (applicant) has applied to register
the mark shown below as a trademark for clothing items.

1 By a filing mailed November 26, 2005, applicant referred to
Oswald & Yap as applicant's "former law firm" and stated that the
firm had been "released." A brief on the merits was filed
electronically under applicant's own signature on February 10,
2006, but the cover page lists applicant's former law firm in the
correspondence address section. On August 29, 2006, by an
electronic filing made not with the Board but through TEAS (the
office's filing system for trademark applications), John Tran
revoked a power of attorney granted to himself and William Buus,
both of Oswald & Yap, and appointed Carol A. Gefis of the same
firm as applicant's attorney. Under the circumstances, the Board
has sent copies of this order to both applicant and Ms. Gefis of
Oswald & Yap.
This Opinion is a
Precedent of the TTAB
Opposition No. 91157529
2

The application is based on applicant's asserted use of
the mark in commerce, with August 17, 1999 asserted as the
date the mark was first used and first used in commerce.
The goods identified in the application, as amended, are:

Clothing, namely, shirts, golf shirts, knit
shirts, nightshirts, poloshirts, sport shirts,
sweatshirts, halter tops, vests, t-shirts and
undershirts; pants, trousers, jeans, slacks, sweat
pants, overalls and pantsuits; shorts, Bermuda
shorts, boxer shorts, gym shorts and sweat shorts;
skirts; dresses and gowns; jackets, blazers,
raincoats and overcoats; socks; suits, bathing
suits, gym suits, jogging suits, jumpsuits, sweat
suits, warm-up suits and track suits; underwear,
panties, bras, boxer shorts and briefs; bikinis;
and infantwear

The B.V.D. Licensing Corporation (opposer) has opposed
issuance of a registration to applicant on two grounds.
First, relying on Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), opposer asserts that there is a likelihood
that consumers will be confused, mistaken or deceived as to
the source of applicant's goods and those marketed by
opposer under its various BVD marks, registered for various
clothing items, in view of the similarity of the respective
Opposition No. 91157529
3
marks. Second, relying on Section 43(c) of the Trademark
Act, 15 U.S.C. § 1125(c), opposer asserts that its BVD marks
became famous long before applicant filed for registration
of its BHD and design mark, and that use by applicant of his
mark will dilute the distinctive quality of opposer's marks,
by "blurring the unique association which has heretofore
existed between" opposer, its marks and its goods.
Applicant, in an answer to the notice of opposition,
denied all its allegations, save for those related to the
filing by applicant of the involved application and the
eventual publication of the mark for opposition. In
applicant's brief, however, applicant admits that opposer
has a family of BVD marks. Brief, p. 5.
Opposer alleged in the notice of opposition that it has
"been engaged in the manufacture and sale, and in licensing
the manufacture and sale, of an extensive line of clothing
under the trademark BVD, in various styles." Notice, ¶ 1.
In its pleading, opposer relies on six registrations for its
marks (shown below) and, during trial, opposer filed notices
of reliance on certified copies showing status of and its
title to each registration. Office records acknowledge the
filing of a Section 15 affidavit for the last five
registrations.

Opposition No. 91157529
4
Reg. No. Mark Goods Status
49,931 B.V.D. (typed
form)
"undershirts
and under-
drawers"
Issued
2/27/1906;
renewed
5/3/2006
367,184

"underwear,
shirts,
shorts,
pajamas and
union suits"
Issued
5/9/1939;
renewed
7/22/1999
546,353

"hose for
men"
Issued
8/7/1951;
renewed
5/11/2001
764,348 B.V.D. (typed
form)
"men's and
boys' t-
shirts,
underwear
Issued
2/4/1964;
renewed
3/20/2004
1,506,049 "men's and
boy's
underwear"
Issued
9/27/1988;
Section 8
affidavit
accepted
8/25/1994
1,506,054 (This mark
"…is lined to
designate the
color red.")
"men's and
boy's
underwear"
Issued
9/27/1988;
Section 8
affidavit
accepted
6/30/1994

In its brief, opposer listed a seventh registration,
but it was not pleaded and a copy was not made of record by
notice of reliance (NOR) or through testimony, so it has not
been considered.
Also offered into the record by opposer is a notice of
reliance on applicant's supplemental responses to discovery
requests, "in particular, on Applicant's Response to
Opposition No. 91157529
5
Interrogatory No. 3, in which Applicant produced a catalog
of products upon which the Applicant's mark is used."
Seventh NOR, p. 1. Applicant's catalog, produced in lieu of
an interrogatory response, is therefore permissibly made of
record by opposer's notice of reliance. See TBMP Section
704.10 (2d ed. Rev. March 2004).
Opposer's eighth and final notice of reliance
introduces reprints of information from USPTO databases
showing that opposer opposed an application by a third party
to register the mark BHD (in typed format), for "hats, tee-
shirts, sweatshirts and bandanas," and that when that
applicant withdrew the application, the opposition was
sustained. While such a judgment would be relevant to any
argument for res judicata (claim preclusion) by opposer in a
subsequent proceeding against the same applicant, res
judicata is not applicable when the adverse party is
different, as in this case. Also, as no issues were tried
and no opinion issued in the other case, there is no basis
for arguing that collateral estoppel (issue preclusion)
applies in this case. Thus, while the evidence has properly
been made of record pursuant to Trademark Rule 2.122(e) as a
copy of an official record of the USPTO, the only relevance
of this material is to show that opposer once challenged an
attempt to register a mark consisting of the letter portion
of the involved mark.
Opposition No. 91157529
6
In addition to opposer's notices of reliance, opposer
filed the transcript of the testimony of Scott Greene, vice
president of the "men's and boys' marketing team" for Union
Underwear Company, opposer's parent and the licensee of the
BVD marks. The testimony was used to introduce 19 exhibits.
[Hereafter may be referred to as "Greene test."]
Applicant apparently filed a notice of reliance during
his testimony period but, if the Board received it, it was
not entered into the record of this proceeding. However,
opposer subsequently filed a copy of that notice of
reliance. Applicant stated in his notice that he was
relying on his own responses and supplemental responses to
opposer's first set of discovery requests, on opposer's
responses to applicant's first set of interrogatories and
requests for production, opposer's supplemental responses to
the requests for production, and the deposition of Scott
Greene (opposer's witness).
Applicant need not have stated his reliance on the
Greene testimony or applicant's supplemental responses to
opposer's discovery requests, as once these items were made
of record by opposer, either party was free to present
arguments based on them. Applicant could not normally rely
on his own responses to opposer's discovery requests.2

2 Trademark Rule 2.121(j)(5) provides an exception to this
general rule: If fewer than all of the answers to
interrogatories, or fewer than all of the admissions, are offered
Opposition No. 91157529
7
Further, applicant could not normally put into the record by
notice of reliance the documents produced by opposer in
response to applicant's requests for production. See
Trademark Rule 2.121(j)(3)(ii). However, as noted, opposer
provided the Board with a copy of applicant's notice of
reliance and did not at that time object to any portion of
it. In addition, opposer did not raise any objections to
applicant's notice of reliance in its brief and, in its
statement of the record, referenced all items submitted by
applicant with its notice of reliance. Accordingly, we deem
opposer to have stipulated this evidence into the record and
we have considered the entirety of applicant's notice of
reliance.3

Findings of Fact

Based on the evidence of record, we make the following
findings of fact. In these findings, references to opposer
should be read as references to opposer or its licensee, the
Union Underwear Company, and predecessors:

in evidence by the inquiring party, the responding party may
introduce under a notice of reliance any other answers to
interrogatories, or any other admissions, which should in
fairness be considered so as to make not misleading what was
offered by the inquiring party.
3 The copies of applicant's initial responses to opposer's
interrogatories do not include responses to interrogatories one
or two. Further, because the response to interrogatory 19
incorporates by reference the response to interrogatory two, we
do not have an effective response to interrogatory 19.
Opposition No. 91157529
8
Opposer's six pleaded registrations are valid and owned
by opposer.
Opposer has made continuous use of the BVD mark,
primarily for men's underwear, including undershirts, briefs
and boxers, since 1876.4
Opposer also uses its mark for pocket T-shirts.
Opposer does not appear to be manufacturing or
marketing clothing items for women.5
Opposer's mark is placed on packages for its garments
and the garments themselves, usually inside the neck or on a
care label, in the case of tops, sometimes inside a
waistband for woven boxers, "[b]ut on most bottoms, you will
have it on the outside" of the waistband because of a
fashion trend whereby pants and shorts are worn "lower to
the body" and waistbands are "becoming more and more of a
fashion statement."6
Opposer's products are available nationwide in 850
retail stores of J.C. Penney and through that chain's
website, in the Northeast and Southeast through 150 B.J.'s

4 Greene test. pp. 12-13.
5 In contrast, when the decision issued in B.V.D. Licensing Corp.
v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed.
Cir. 1988), the Federal Circuit noted that opposer's
registrations then also covered clothing items for "the opposite
sex." While the identifications in the two oldest of opposer's
six pleaded registrations may arguably encompass certain items
for women, there was no testimony from opposer's witness about
current use of the marks for women's clothing items.
6 Greene test. pp. 16-17.
Opposition No. 91157529
9
Wholesale Club stores, and on the internet through
HosieryStreet.com and AmericanIntimate.com.7
Opposer's underwear is "a top ten brand" and opposer
has sold billions of dollars of underwear over many years.8
Opposer has spent millions of dollars advertising and
promoting its BVD brand.9
Over the years, opposer has placed ads in newspapers,
on television, and in national magazines.10
In 2003, opposer employed 26 different advertising
insertions, with the goal of delivering 83 million consumer
impressions.11
In tracking studies among consumers, "BVD has always
registered in excess of 90 percent awareness."12
Opposer's marketing efforts target males aged 25-49 but
opposer's products are bought by both males and females, the
latter primarily "for their husbands, boyfriends, or for
their sons."13
Opposer's BVD trademark is derived from the first
letters of the last names of the three founders but BVD,
with or without periods, has always been the trademark.14

7 Greene test. pp. 19-25.
8 Greene test. pp. 18-19.
9 Greene test. p. 35.
10 Greene test. pp. 35-36.
11 Greene test. pp. 46-48.
12 Greene test. pp. 26-28.
13 Greene test. p. 29.
14 Greene test. p. 68; and opposer's response to applicant's
interrogatory number 3, introduced by applicant's notice of
reliance.
Opposition No. 91157529
10
Opposer's BVD mark has been listed in numerous
dictionaries as a trademark.15
Opposer's "attitude and usage studies" of consumers of
men's underwear reveal that 75 percent of purchasers of
basic styles (e.g., a basic white brief or t-shirt) will
plan their purchases, while half the purchases of fashion
styles will be made on impulse.16
A package of opposer's briefs will sell for $13, a
package of undershirts for $16-17, and a pocket t-shirt for
$7-12.17
Opposer is not aware of any instances of actual
confusion.18
Applicant began selling his products in 1999.19

15 Greene test. p. 28 and associated exhibit (BVD production
numbers 00001-00003; also introduced by applicant's notice of
reliance.) In addition, we take judicial notice, see University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), of the following entries spanning nearly 20 years:
"B.V.D., Trademark. a brand of men's underwear. Also, BVD's," at
p. 287, The Random House Dictionary of the English Language (2d
ed. 1987) and at p. 287 Random House Webster's Unabridged
Dictionary (2d ed. 2001);
"B.V.D. trademark – used for underwear," p. 306, Webster's Third
New International Dictionary (1993);
"BVDs plural n. trademark a type of boxer shorts," p. 237, The
New Oxford American Dictionary (2d ed. 2005); and
"BVD A trademark used for undershirts and underpants worn by men
and boys. This trademark sometimes occurs in print with a final
's: 'He will be under constant scrutiny, right down to his BVD's
(Los Angeles Times)'," p. 255, The American Heritage Dictionary
of the English Language (4th ed. 2006).
16 Greene test. p. 30; these studies are not limited to opposer's
brand or any particular brands.
17 Greene test. pp. 53-54.
18 Greene test. pp. 77-78.
19 Applicant's response to opposer's interrogatory no. 4.
Opposition No. 91157529
11
Applicant's goods are not sold in stores but, rather,
directly through "www.badhombre, 800-badhombre, mail-order
catalogues, trade shows."20
The letters BHD in applicant's mark stand for Bad
Hombre Designs.21
Applicant's target customers are men of all ages and
education levels, and 80 percent of his customers are men.22

Opposer's Standing and Priority

Because opposer has properly made its six pleaded
registrations of record, opposer has established its
standing to oppose registration of applicant’s mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Moreover, because opposer’s pleaded registrations are
of record, priority is not an issue in regard to opposer's
claim under Section 2(d), as to the mark and goods covered
by said registrations. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In
any event, opposer has proven continuous use of its BVD
marks since well prior to any date on which applicant may
rely.

20 Applicant's responses to opposer's interrogatory nos. 7 and 8.
21 Applicant's response to opposer's interrogatory no. 9.
22 Applicant's responses to opposer's interrogatory nos. 14 and
15.
Opposition No. 91157529
12

Likelihood of Confusion
We now turn to the question of 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 likelihood of confusion issue.
See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); see also, In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In the analysis of likelihood of confusion presented by this
case, key considerations are the similarities of the marks
and the fact that the parties' respective goods are in part
the same and otherwise closely related. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks”).
The fame of opposer's BVD marks also is critical in
this case. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000) (The "fame of the prior
mark, when present, plays a 'dominant' role in the process
of balancing the du Pont factors" and famous marks therefore
"enjoy a wide latitude of legal protection"). See also,
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303 (Fed. Cir. 2002) (WAVE and ACOUSTIC WAVE marks
Opposition No. 91157529
13
found to be famous and entitled to a broad scope of
protection). Opposer has used one or more of its registered
BVD marks for more than 125 years, a very significant period
of use. It has sold billions of dollars of its branded
goods, which is particularly significant in view of the
relatively low cost of the goods. Opposer has spent
millions of dollars advertising its brand and its goods are
available nationwide. It is also significant that opposer's
BVD mark repeatedly has been recognized in dictionary
entries. B.V.D. Licensing v. Body Action Design, supra, 6
USPQ2d at 1720 ("When a trademark attains dictionary
recognition as a part of the language, we take it to be
reasonably famous").
In a typical Board inter partes case wherein the
plaintiff is asserting the fame of its mark, the plaintiff
usually will provide detailed sales and advertising figures,
broken out by year or in some other manner that is
sufficient to illustrate regular sales and advertising over
a long period of time. In this case, opposer did not
provide such information. We caution that non-specific
testimony about sales and advertising might not be
sufficient to demonstrate the fame of a mark in the typical
case. In this case, however, when the non-specific
testimony is joined with the numerous dictionary entries
recognizing BVD as a trademark, as well as the extremely
Opposition No. 91157529
14
long period of use, we find that the totality of the
evidence is sufficient to establish that BVD is a famous
mark. In short, the fame factor weighs heavily in opposer's
favor.
We next consider the goods, and note that the
identification of goods in the involved application includes
"t-shirts and undershirts," "socks," "underwear," and "boxer
shorts and briefs." These are identical to goods covered by
opposer's registrations ("socks" would include "hose for
men") and on which opposer uses its mark. Closely related
items include applicant's "nightshirts" and opposer's
"pajamas."
In regard to applicant's other goods, we note that
there are reported cases that found underwear and other
clothing items to be related items. See, e.g., Jockey
International Inc. v. Mallory & Church Corp., 25 USPQ2d
1233, 1236 (TTAB 1992) (opposer provided evidence that a
number of different companies market under the same
trademarks both underwear and neckties and opposer's
underwear and applicant's neckties were found by both
majority and concurring opinions to be related goods for
likelihood of confusion purposes). There is no per se rule,
however, that such goods must be considered related. See In
re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). Nor
will the Board take judicial notice that items of outerwear
Opposition No. 91157529
15
and undergarments are related items for likelihood of
confusion purposes. See In re Sears, Roebuck & Co., 2
USPQ2d 1312 (TTAB 1987). In this case, opposer has not
provided any evidence that its undergarments must be
considered related to those clothing items in applicant's
identification of goods that are not identical or virtually
identical to opposer's goods. We therefore have focused our
analysis only on the identical goods. Nonetheless, if we
find there is a likelihood of confusion as to those goods,
then applicant's application must be refused as to the
entire class of goods. See Baseball America Inc. v.
Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)
and cases cited therein. In sum, while there is no evidence
that opposer's goods are related to many of applicant's
identified clothing items, the fact that even some of
applicant's goods are identical to opposer's goods means the
similarity of the goods is a factor that favors opposer.
Similarly, because some of the goods are identical and
because there are no restrictions in applicant's
identification, we must assume that the common goods of
opposer and applicant are marketed to overlapping classes of
consumers. See Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir.
1990) ("an application with an identification of goods
having no restriction on trade channels obviously is not
Opposition No. 91157529
16
narrowed by testimony that the applicant's use is, in fact,
restricted to a particular class of purchasers"). Even
without the requirement that we make such assumptions
regarding classes of customers, the record in this case
shows that both parties target men as a primary class of
customer. This, then, is another factor favoring opposer.
Applicant does not attempt to reach the parties' common
customers through the same retail stores or websites that
opposer utilizes. In fact, applicant does not appear to
utilize retailers as a trade channel and its website sales
appear to be limited to its own website. However, because
the parties do not limit the channels of trade in their
respective identifications, we must assume that they could
use the same channels of trade for these legally identical
goods even if they are not now doing so. Kangol Ltd. v.
KangaROOS U.S.A., Inc. 974 F.2d 161, 23 USPQ2d 1945, 1946
(Fed. Cir. 1992) ("There is no evidence that opposer's and
applicant's goods are currently being sold in the same
channels of trade. Yet, in neither the applicant's
application nor the opposer's registrations are the trade
channels in any way restricted. The issue of likelihood of
confusion is resolved by considering the 'normal and usual
channels of trade and method of distribution.'") (citations
omitted). Thus, we must consider, for purposes of the
likelihood of confusion analysis, that applicant could sell
Opposition No. 91157529
17
his goods in retail department stores such as J.C. Penney’s
and warehouse stores such as BJ’s, or through websites such
as HosieryStreet.com and AmericanIntimate.com, i.e., the
outlets through which opposer’s goods are sold. The
presumptive common channels of trade is a factor that weighs
in opposer's favor.
The relatively low cost of the involved clothing items
and the fact that they may frequently be purchased on
impulse is another factor that increases the likelihood of
confusion. See Recot, supra, 54 USPQ2d at 1899 ("When
products are relatively low-priced and subject to impulse
buying, the risk of likelihood of confusion is increased
because purchasers of such products are held to a lesser
standard of purchasing care")(citations omitted). This,
too, favors opposer.
We turn now to the marks. To determine whether the
marks are similar for purposes of assessing the likelihood
of confusion, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In a particular case, any one of these means of
comparison may be critical in finding marks to be similar.
In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988); see
also, In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
Opposition No. 91157529
18
1988). In addition, it is a well-established principle
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, while the marks are
compared in their entireties, “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 consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.” In re National Data Corp., 732 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
In analyzing the involved marks, we find that the BHD
portion of applicant's mark is the dominant portion. It is
the visually dominant portion because it is at the top of
the mark and is the same size or larger than the image of
the man framed by an oval carrier.23
Comparing the marks as to appearance, we note that
opposer's marks are the letters BVD, presented with or
without periods, in upper case, sometimes with color or in a
particular font. However, two of the pleaded registrations
are for opposer's mark in typed form, meaning we must

23 Plain geometric designs, such as the oval carrier or frame for
the design of a man wearing a sombrero would not be seen by
consumers as a particularly distinctive element of applicant's
mark. In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988)
(“In particular, common geometric shapes such as circles, ovals,
triangles, diamonds and stars, when used as backgrounds for the
display of word or letter marks, are not regarded as trademarks
for the goods to which they are applied absent evidence of
distinctiveness of the design alone”).
Opposition No. 91157529
19
consider the possibility of this mark being presented in any
reasonable form of display. See Cunningham, supra, 55
USPQ2d at 1847-48, and Jockey, 25 USPQ2d at 1235. It would
certainly be reasonable for opposer to use the same font as
is employed for the letters BHD in applicant's mark, or to
utilize a larger middle letter, as applicant has done.
Thus, we must assume that opposer's BVD mark and the BHD
portion of applicant's mark could have very similar
appearances.
In articulating or speaking the marks, they would be
similar in sound insofar as the first and last letters would
be pronounced the same and because the design in applicant's
mark would not be articulated. Moreover, we agree with the
statement of opposer's witness that "with BHD and BVD, as
three letters, because you don't have a vowel, you have to
identify each individual letter. Neither one can be spoken
as a word." Greene test. pp. 52-53. The different middle
letter in the marks, and the need for those speaking the
marks to speak each letter results in some difference in
pronunciation, but that difference is not sufficient to
outweigh the overall similarity in the structure of the
letters and, as discussed below, the likelihood that
consumers will view the letter combinations as arbitrary.

Opposition No. 91157529
20
Turning to the connotations of opposer's BVD mark and
applicant's BHD and design mark, it has been noted that the
derivations of letter marks and acronyms are of no
particular significance. See B.V.D. Licensing Corp., supra,
6 USPQ2d at 1723 (dissenting opinion, J. Nies) citing
Aerojet-General Corp. v. Computer Learning & Sys. Corp., 170
USPQ 358, 362 (TTAB 1971) (fact that acronyms are derived
from different words unimportant because average purchaser
probably unaware of derivation); and 1 J. Gilson Trademark
Protection & Practice §5.02, at 5-18 (1987). See also,
authorities collected in Edison Brothers Stores, Inc. v.
Brutting E.B. Sport-International GmbH, 230 USPQ 530, 533
(TTAB 1986) ("It should be noted that the lettered marks in
almost all of the cited decisions were, as in the case
before us, derived from the trade or corporate names of the
involved parties, but these facts had no negative influence
upon the likelihood of confusion conclusions which were
reached."). Moreover, in this case, the record is clear
that opposer does not promote the derivation of its mark and
consumers would be likely to view the letters BVD as
arbitrary in relation to opposer's goods.
While applicant sometimes utilizes the words BAD HOMBRE
DESIGNS in combination with the mark in the involved
application, any registration that would issue from the
application would not include those words and applicant
Opposition No. 91157529
21
would not be required to use them. Thus, we assess the
connotation of applicant's mark from the perspective that
consumers will see only that which applicant seeks to
register. See Jockey, 25 USPQ2d at 1236 ("applicant's
argument that we must compare its mark ELAAN (stylized) with
ELANCE plus JOCKEY because 'ELANCE always appears with the
Jockey name' is likewise misplaced"); and Blue Cross and
Blue Shield Association v. Harvard Community Health Plan
Inc., 17 USPQ2d 1075, 1077 (TTAB 1990) ("The problem that we
have with applicant's argument is that applicant is not
seeking to register a service mark slogan containing its
trade name"). Some consumers might wonder what the letters
in applicant's mark stand for, but there is nothing to
indicate that, absent some other prompt such as use of the
words BAD HOMBRE DESIGNS, consumers would routinely
understand the letters to have a particular connotation. We
therefore conclude that most consumers would think of the
letters in applicant's mark as arbitrary, in the same way
that the letters in opposer's mark would be perceived as
arbitrary. The presence of the image of the hatted man
contributes to the connotation of the mark as a whole, and
certainly lends something to applicant's mark that is not
present in opposer's mark. However, the letters in
applicant's mark dominate and any contribution of the design
to the connotation and overall commercial impression of
Opposition No. 91157529
22
applicant's mark would be outweighed by the dominant
letters. See Chemetron Corporation v. NRG Fuels
Corporation, 157 USPQ 111 (TTAB 1968), which sustained an
opposition to registration of the mark NRG, with a flame
design, set in a circle carrier, in view of opposer's prior
registrations of NCG per se or with other design elements.
In sum, while the marks have some differences, the
overall commercial impressions are very similar.
Several cases state that marks involving letter
combinations are likely to be inherently difficult to
remember and, therefore, consumers are more susceptible to
confusion or mistake than with word marks. See Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and Alberto-Culver Co. v.
F.D.C. Wholesale Corp., 16 USPQ2d 1597 (TTAB 1990) and cases
cited therein. Confusion of letter combinations is a
concern even when the prospective purchasers of the goods
are sophisticated purchasers. See Weiss, supra, and
Chemetron, supra; Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
("Human memories even of discriminating purchasers...are not
infallible."). It is an even greater concern when the
relevant class of prospective purchasers consists of members
of the general public, as in the Alberto-Culver case, supra,
and in the case at hand. See Spoons Restaurants, Inc. v.
Opposition No. 91157529
23
Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991) ("The
proper emphasis is thus on the recollection of the average
customer, who normally retains a general rather than a
specific impression of trademarks or service marks.")
(citations omitted), aff’d. No. 92-1086 (Fed. Cir. June 5,
1992); and In re Steury Corporation, 189 USPQ 353 (TTAB
1975). The slight difference in letter combinations may not
even be noticeable when, as here, the goods are the subject
of impulse purchasing and, because of the fame of the BVD
mark for underwear, the expectation of the consumer in
seeing a three-letter mark with the initial letter B and the
final letter D used on such goods is that the mark will be
BVD.
Finally, we note “[w]hen marks would appear on
virtually identical goods or services, the degree of
similarity [of the marks] 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).
In this case, because of the fame of opposer's mark,
the overlapping identifications of goods, the common classes
of consumers and channels of trade, the likelihood of
impulse purchases, and the similarities in the marks, we
find that there is a likelihood of confusion among
consumers. The opposition therefore is sustained as to
Opposition No. 91157529
24
opposer's claim under Section 2(d) of the Trademark Act.
Because we sustain the opposition on that claim, we need not
and do not reach opposer's claim of dilution.
Decision: The opposition is sustained and registration
to applicant is refused.