C. & J. Clark International Limitedv.Unity Clothing Inc.

Trademark Trial and Appeal Board

Apr 24, 2013

No. 92049418 (T.T.A.B. Apr. 24, 2013)

Hearing

Stephen
for C
Vonn R.
for U

Before B
Adm

Opinion
C. &
Registra
: February
UNIT
P. McNam
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inistrative
by Wellin
J. Clark
tion No. 3
P
26, 2013
ED STAT
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THIS OPI
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Unity
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inistrative
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NION IS N
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on No. 920
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ncel
Cancellation No. 92049418

2

for goods now identified as “Athletic footwear; Bathing trunks; Beach footwear;
Bermuda shorts; Blouses; Board shorts; Boxer shorts; Camp shirts; Capri pants;
Children’s headwear; Denim jackets; Denims; Dress shirts; Dresses; Fishermen's
jackets; Footwear; Golf shirts; Gym shorts; Headwear; Jackets; Jogging pants; Knit
shirts; Long jackets; Pants; Shirts; Shorts; Skirts; Slacks; Sport shirts; Sports
shirts; Sports shirts with short sleeves; Sweat pants; Sweat shirts; Sweat shorts;
Sweaters; Swim trunks; Swim wear; Swim wear for gentlemen and ladies;
Swimming costumes; Swimming trunks; T-shirts; Trunks; Waterproof jackets and
pants; Wind shirts; Wind-jackets” in Class 25.1
The five listed goods that appear above in strike-through font were covered by
the registration when it originally issued, but have since been deleted. Specifically,
on December 19, 2007, and prior to the filing of the petition for cancellation, Unity
filed a Section 7 amendment to delete “athletic footwear ... beach footwear ...
children’s headwear ... [and] headwear.” On December 15, 2009, and subsequent to
commencement of this proceeding, Unity filed a motion to amend the registration to
further delete “footwear” from the identification of goods. Clark stated that it had
no objection to this second amendment and the Board, by way of order dated
January 14, 2010, granted Unity’s motion and the amendment to delete “footwear”
from the registration was entered.

1 Issued on March 13, 2007, and based on use in commerce under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), in which August 30, 2003 was alleged to be the date of first use of
the mark anywhere and the date of first use of the mark in commerce. Affidavits under
Sections 8 and 15 filed.
Cancellation

In i
Unity’s
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Cancellation No. 92049418

4

Unity filed an answer denying the salient allegations to Clark’s fraud claim,
asserted various defenses titled “affirmative defenses,”3 and filed a counterclaim to
cancel a registration owned by Clark.
As to the counterclaim, Unity seeks to cancel Clark’s Registration No. 3305964
for the mark:

for “footwear, namely, shoes, boots and sandals” in International Class 25.4 In its
counterclaim, Unity alleges, inter alia, that Clark’s registered mark “infringes upon
[Unity’s] registration no. 3217678 and [Unity’s] Common Law Rights”; that Clark
should “not have been granted registration because its registration is likely to be
confused with [Unity’s mark] by registration and by Common Law Rights”; and that
“if [Clark’s] registration no. 3305964 is not cancelled, it will continue to cause
confusion.”
Clark has denied all counterclaim allegations that may be construed as setting
forth a claim of likelihood of confusion.

3 With regard to Unity’s asserted “affirmative defenses,” to the extent they constitute
proper affirmative defenses they were not pursued at trial or argued in the trial briefs.
4 Registration No. 3305964 issued on October 9, 2007. Affidavits pursuant to Sections 8
and 15 were filed by Clark and accepted by the Office. However, the Section 15 affidavit
(declaration of incontestability) has been withdrawn by Clark in light of its failure to note
the counterclaim involving the registration in this proceeding. On February 11, 2013, the
Office accepted the withdrawal of the Section 15 affidavit.
Cancellation No. 92049418

5

The Record
By rule, the record for the initial claim and the counterclaim includes the
involved registration files. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). The
pleadings are also automatically of record.
In addition, opposer has submitted the testimony of Margaret Newville, Vice
President of Marketing for Clark’s Companies, with attached exhibits.
The following materials are also of record via notices of reliance filed by the
parties:
1. Copy of a letter dated December 10, 2007, from Clark’s counsel
addressed to Mr. Raymond Hwang, Unity Clothing, Inc.;5

2. Copy of Clark’s first set of requests to admit served on Unity, effectively
and deemed admitted by Unity;6 and

3. Copy of the file history of Clark’s application Serial No. 77226882.

In its trial brief, Unity relies on statements made by its principal, Mr. Hwang,
in the motion to amend to delete “footwear” in the registration. See Unity Brief, p.
7. For sake of clarity, any statements made by Unity or its principal in filings, such
as the motion, cannot act as a substitute for testimony. In other words, while we
acknowledge the motion has been filed (and granted), the reasoning offered by Mr.
Hwang regarding why the terms are being deleted is not of record and is given no
further consideration.

5 Although this letter is generally not appropriate matter for introduction by notice of
reliance, it was submitted by Unity and was agreed to by Clark as “in evidence.” Clark
brief, p. 7.
6 See Board order dated March 3, 2010, deeming the requests admitted pursuant to Fed. R.
Civ. P. 36(a).
Cancellation No. 92049418

6

We now address the substance of the claim and counterclaim in turn below;
however, we first address standing.
Standing
Clark and Unity, as individual plaintiffs in the initial claim and counterclaim,
respectively, must each establish standing. To establish standing, Clark must show
a real interest in the initial cancellation and Unity must show a real interest in the
counterclaim cancellation. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999).
Clark has established its standing with regard to the initial cancellation
proceeding through its pleaded application which is of record and has been refused
registration based on a likelihood of confusion with Unity’s registered mark. See
Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914
(TTAB 2007) (“petitioner has standing to bring the petition for cancellation based on
the fact that its application to register [its mark] was refused registration by the
office under Section 2(d) based on a likelihood of confusion with respondent's
previously registered mark”).
Unity, on the other hand, may rely on its registration that Clark seeks to cancel
to establish its standing in the counterclaim. Although Unity seeks to cancel a
registration that was not pleaded or otherwise relied upon by Clark in the initial
claim, Unity’s registration and its position as defendant in the cancellation, proves
that it is more than just a mere “intermeddler.” See Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 1028-29, 213 USPQ 185, 189 (CCPA 1982) (“purpose in
Cancellation No. 92049418

7

requiring standing is to prevent litigation where there is no real controversy
between the parties, where a plaintiff, petitioner or opposer, is no more than an
intermeddler”).
Both parties having established their respective standing, we now turn to the
merits of the claims.
Clark’s Fraud Claim
In order to prove fraud in a Board inter partes proceeding, as set forth by the
Court of Appeals for the Federal Circuit in In re Bose Corp., 580 F.3d 1240, 91
USPQ2d 1938 (Fed. Cir. 2009), a showing of the following four elements is required:
(1) applicant/registrant made a false representation to the USPTO;
(2) the false representation is material to the registrability of the mark;
(3) applicant/registrant had knowledge of the falsity of the representation;
and
(4) applicant/registrant made the representation with intent to deceive the
USPTO.
Id. at 1941.
Clark relies exclusively on requests for admission it served on Unity, now
deemed admitted, to establish its fraud allegation. In particular, through these
admissions, Clark asserts the following three facts have been conclusively
established:
(1) [Unity] has not made use of the [registered mark] on beach footwear,
athletic footwear, or footwear ...; (2) the claims of use in commerce and
alleged dates of first use in commerce were false statements ... ; and (3)
Unity Clothing’s representative, Raymond Hwang, who executed the
Cancellation No. 92049418

8

application, knew at that time that Unity Clothing had not used [the mark]
in commerce on beach footwear, athletic footwear, or footwear.

Brief, pp. 5-6 (bold emphasis in original and citation to particular admissions
omitted).
A fair reading of the Unity’s admissions does indeed support the conclusions of
fact as characterized by Clark above. That is, we find that Unity has admitted that
it falsely stated that it was using its mark on the identified footwear-related goods
at the time of filing the underlying application and that Unity knew at that time
that it was not using its mark on said goods. Thus, the first and third elements for
finding fraud are clearly present. Furthermore, there is no real dispute that a
party’s affirmative statement of use on goods or services, at a point whereby the
Office relies upon such statement for issuance or maintenance of a registration,
constitutes a material representation. See Herbaceuticals, Inc. v. Xel
Herbaceuticals, 86 USPQ2d 1572 (TTAB 2008). Accordingly, the third requisite
fraud element has also been established.
Thus the sole remaining element for finding fraud in this proceeding involves a
determination whether Unity possessed an intent to deceive the Office when it
made the false representation. Clark asserts that the “admitted facts directly
establish an intent to make a false statement to the USPO ... [and] indirectly
establish an intent to obtain a registration to which Mr. Hwang knew Unity
Clothing was not entitled.” Brief, p. 14 (italics for emphasis in original). Unity, on
the other hand, argues that “none of the [admissions] addresses whether or not
Unity acted with the intent to deceive the [Office]” and Unity “rather acted under a
Cancellation No. 92049418

9

mistaken belief that it was proper to list related goods that were as yet unused
together with related goods that were already in use.” Brief, p. 6. Unity also points
to its “Section 7 Request to remove ‘athletic footwear’ and ‘beach footwear’ from [its]
registration, filed mere days after learning that inclusion of these items on its
registration was improper” and its motion to amend the registration, filed during
the course of this proceeding “as soon as Unity learned that it had inadvertently
failed to include ‘footwear’ in its Section 7 [amendment]” to the registration. Id. at
9.
Upon consideration of all evidence of record, we do not find by a preponderance
of the evidence that Unity had the requisite intent to deceive the Office when it
made its false and material representation. Rather, on this record, Unity’s
explanation is plausible in that it mistakenly believed that it could list goods for
which it was not using its mark already so long as it was making use of its mark on
other goods identified in the application at the time. We do not have clear and
convincing evidence to suggest the false statements were the result of a fraudulent
intent rather than Unity’s principal, Mr. Hwang, simply misunderstanding the
requirement that all, and not just some, identified goods must be used in commerce
at the time of filing a use-based application. While the admissions are certainly
relevant, applicant has not admitted that its false statement entitled it to a
registration that it did not otherwise deserve. Reviewing the record in its entirety,
we do not find sufficient evidence demonstrating any deceitful intent on Unity’s
behalf in this regard.
Cancellation No. 92049418

10

While not conclusive, we see some probative value in Unity’s actions and
reactions upon being informed about the impropriety of not using its mark on goods
identified in the registration. Unity’s Section 7 amendment to delete “beach
footwear” and “athletic footwear” was filed within nearly one week of the letter from
Clark’s counsel asserting that the inclusion of goods in the registration that are not
in use “constitutes fraud.” The fact Unity did not delete “footwear” in this
amendment was somewhat nonsensical since this term clearly encompasses the
previous two deleted types of footwear. In other words, the fact that Unity later
moved during this proceeding to delete “footwear” is somewhat consistent with
Unity’s explanation and the result of an oversight. Certainly, we can envision the
possibility that principals of companies, and indeed counsel therefor, may overlook
or misinterpret all of the averments in declarations or affidavits filed with the
Office. In this vein, we note Clark rescinded an averment it made in its filing of a
Section 15 declaration of incontestability in connection with the registration subject
of the counterclaim (see footnote 3). Without more, we do not find a fraudulent
intent simply based on such mistakes or oversights.
In view of the above, Clark’s fraud claim fails because it has not met its burden
of proof in showing that Unity committed fraud in the procurement of its
registration.

Cancellation No. 92049418

11

Unity’s Likelihood of Confusion Counterclaim
We now address Unity’s counterclaim to cancel Clark’s registration. For the
following reasons, the counterclaim is dismissed.
Priority
In a counterclaim cancellation proceeding, where both parties own registrations,
such as this counterclaim, the plaintiff asserting a claim under likelihood of
confusion, Section 2(d) of the act, must not only plead but also prove priority of use.
See Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281 (TTAB 1998). As
to pleading priority, Unity did not explicitly plead its own priority of use in the
“counterclaim” section of its answer; however, in the same paper identified as
“affirmative defenses,” Unity asserts that “[Clark] being a junior user of a mark
identical or highly similar to Respondent’s registered mark...should not be awarded
by its Petition for Cancellation against [Unity’s] prior used and registered mark.”
Affirmative Defense 9.
At trial, Unity did not offer any evidence regarding dates of first use of its mark.
Rather, in its trial brief, it argues that it “has priority in both ownership and use”
and points to the respective filing dates of the underlying applications for its
Registration No. 3217678 and Clark’s Registration No. 3305964, as well as the
alleged dates of first use specified in the registrations.
In its brief responding to the counterclaim, Clark does not address the issue of
priority.
Cancellation No. 92049418

12

Based on the above, we find that the issue of priority has been tried by implied
consent and conceded in this proceeding. Fed. R. Civ. P. 15(b). Even if we were to
find that Clark has not conceded the issue of priority, we find in favor of Unity on
this issue based on the record before us. That is, Unity may rely upon the
constructive use date that comes with the filing of the application that matured into
a registration, which was on May 9, 2006. See Trademark Act Section 7(c), 15
U.S.C. § 1057 (c). See also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995) (parties may rely on these constructive use (filing) dates for
purposes of priority). Clark’s constructive use filing date for its registration, on the
other hand, is January 10, 2007, and it has not submitted evidence establishing an
earlier date of first use.7
Likelihood of Confusion
Our determination of the issue of likelihood of confusion 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).
It is Unity, as plaintiff in this counter-claim, which bears the responsibility of
proving the likelihood of confusion ground by a preponderance of the evidence.
Unity falls woefully short in carrying its burden. It did not take any testimony or

7 To the extent that Unity seeks to rely upon the alleged dates of first use recited in its
underlying application, we point out that this is not evidence of use or priority. Trademark
Rule 2.122(b)(2).
Cancellation No. 92049418

13

otherwise submit evidence relating to the similarity of the parties’ respective goods
and marks. Rather, in its trial brief, Unity merely asserts that its goods are similar
to those of Clark and cites to previous decisions where the Board has found a
likelihood of confusion involving these goods. These prior cases involved different
parties, different marks and certainly had different records than what we have
before us in this counterclaim. Accordingly, said decisions cannot be used by Unity
as a substitute for a record establishing a likelihood of confusion in the
counterclaim.
To the contrary, the record includes a series of admissions made by Unity that
are extremely detrimental, if not fatal, to any possible finding of likelihood of
confusion. Specifically, Unity has admitted that:8
• UNSTRUCTURED is not confusingly similar to UN (Admission No. 24);

• No actual confusion has arisen between [Clark’s] UNSTRUCTURED mark as
represented in Registration No. 3305964 and [Unity’s] UN & design mark
(Admission No. 25);

• The goods identified in [Clark’s] Registration No. 3305964 [and] for the goods
identified in that registration travel in different channels of trade than
Registrant’s UN & design goods (Admission No. 27).

In sum, based on the lack of evidence in support of it claim and in light of its
admissions, we do not find that there is a likelihood of confusion between Unity’s

8 Unity contends that the admissions constitute conclusions of law and thus it would be
improper to consider them as admissions of fact. We disagree, except with respect to
Admission No. 26 (essentially calling for an admission that there is no likelihood of
confusion between parties’ marks and goods). Admission No. 26 clearly calls for a combined
admission of fact and law; and requests for admission cannot be used to elicit admissions as
to the questions of law. Harco Laboratories, Inc. v. The Decca Navigator Co. Ltd., 150 USPQ
813 (TTAB 1966). This admission was therefore not considered in our likelihood of
confusion analysis.
Cancellation No. 92049418

14

registered mark and Clark’s registered mark, as used on the
goods identified in the respective registrations.
Decision: Clark’s petition for cancellation on the ground of fraud is dismissed.
Unity’s counterclaim for cancellation on the ground of priority and likelihood of
confusion is also dismissed.