Converse, Inc.v.Worldwide Kids Associates, Ltd.

Trademark Trial and Appeal Board

May 8, 2000

No. 91103997 (T.T.A.B. May. 8, 2000)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/8/00
Pologeorgis
Opposition No. 103,997
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB MAY 8, 00
Converse, Inc.
v.
Worldwide Kids
Associates, Ltd.
Before Quinn, Rogers and McLeod, Administrative Trademark
Judges.
By the Board:
Converse, Inc. (“opposer”) has filed an opposition
against Worldwide Kids Associates, Ltd.’s (“applicant”)
intent-to-use application to register the mark “TEXAS KIDS”
and design, as shown below, with the words “TEXAS KIDS”
being disclaimed apart from the mark as shown, for
“footwear, headwear, and clothing for children, women, and
men, namely, pants, shorts, shirts, blouses, skirts,
jackets, overalls, warm-up suits, sweatshirts, socks, hats,
leotards, and dresses.”1
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 103,997
2
As grounds for the opposition, opposer alleges that it
has previously used and registered a series of marks
containing a five-pointed star design in connection with
shoes, clothing, sporting goods, bags and related articles.
Opposer’s pleaded registrations are for the following marks:
U.S. Registration No. 741,662, issued December 4, 1962,
for “canvas-topped, rubber-soled, athletic shoes.”
U.S. Registration No. 924,169, issued November 23, 1971,
as amended, for “golf shoes, track shoes, wrestling shoes,
baseball shoes, football shoes, skate scabbards, ankle
supports, teeth guards, hockey pucks, air floats, air
mattresses, hunting boots, fishing boots, industrial boots,
rubber boots, tennis shoes, basketball shoes, boat shoes,
general purpose athletic sneakers, casual shoes, wading
sandals, jackets, trousers, parkas, shirts, overalls, hats,
raincoats, and suspenders.”

1 Application Serial No. 74/632,112, filed February 9, 1995,
alleging a bona fide intent to use the mark in commerce.
Opposition No. 103,997
3
U.S. Registration No. 1,053,338, issued November 23, 1976,
for “canvas and imitation leather topped soft sole athletic
shoes and casual shoes.”
U.S. Registration No. 1,708,480, issued November 29, 1977,
for “footwear.”
U.S. Registration No. 1,078,481, issued November 29, 1997,
for “footwear.”
U.S. Registration No. 1,116,665, issued April 17, 1979,
for “footwear, shirts, socks and warm-up suits.”
Opposition No. 103,997
4
U.S. Registration No. 1,138,468, issued August 5, 1980,
for “footwear.”
U.S. Registration No. 1,138,469, issued August 5, 1980,
for “footwear.”
U.S. Registration No. 1,146,876, issued February 10, 1981,
for “footwear.”
U.S. Registration No. 1,490,262, issued May 31, 1988, for
“athletic footwear.”
Opposition No. 103,997
5
U.S. Registration No. 1,521,010, issued January 17, 1989,
for “footwear.”
U.S. Registration No. 1,632,413, issued January 22, 1991,
for “footwear, socks and warm-up suits.”
U.S. Registration No. 1,654,951, issued August 27, 1991,
for “clothing, namely, footwear.”
U.S. Registration No. 1,789,476, issued August 24, 1993,
for “footwear.”
Opposition No. 103,997
6
U.S. Registration No. 1,868,414, issued December 20, 1994,
for “footwear.”
Opposer further alleges that it has promoted and sold
its goods in interstate commerce under its five-pointed star
design since long prior to any alleged use by applicant of
the mark for which it seeks registration; and that
applicant’s mark so resembles opposer’s registered marks as
to be likely to cause confusion, or to cause mistake or to
deceive.
Applicant has filed an answer denying the salient
allegations in the notice of opposition.
This case now comes up on applicant’s motion for summary
judgment and opposer’s cross-motion for summary judgment, both
on opposer’s pleaded claim under Section 2(d) of the Trademark
Act. The parties have fully briefed the motions.2
In support of its motion for summary judgment, applicant
argues, among other things, that, because of the dissimilarity
in the marks of the parties and the absence of any actual
confusion, applicant is entitled to entry of judgment in its
favor on the issue of likelihood of confusion. In particular,
applicant argues that the star design in applicant’s mark is

2 The Board has considered applicant’s reply brief on its motion
for summary judgment. See Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
Opposition No. 103,997
7
merely a background element and is simply incidental to the
dominant words “TEXAS KIDS.” Further, applicant maintains
that the design component of its mark contains multiple
elements, which clearly distinguishes its mark from opposer’s
marks, i.e., the stylized acronym TK and the overall Western
cattle brand motif. Applicant also argues that the five
pointed star design contained in its mark was selected because
of its connotation relating to the State of Texas and in order
to link the name “TEXAS KIDS” to the image of the Lone Star
State embodied in the five-pointed star in the Texas state
flag. Finally, applicant argues that the co-existence of a
large number of third-party registrations for marks which
contain five-pointed stars for footwear demonstrates that the
star design is weak for such goods.
As evidence in support of its motion, applicant has
submitted: (1) the declaration of Marilynn Wohlstadter,
applicant’s president, and accompanying exhibits, illustrating
use of applicant’s mark and explaining why applicant chose a
five-pointed star design to be part of the design element of
its mark; excerpts from the 1996-97 Texas Almanac
demonstrating how the five-pointed star is used to refer to
the state of Texas and/or the Lone Star State; and copies of
third-party registrations containing a five-pointed star
design to support applicant’s claim that star designs are
widely used by third parties in connection with footwear.
Opposition No. 103,997
8
In its response and cross-motion for summary judgment,
opposer argues that there are no genuine issues of material
fact and that opposer is entitled to judgment as a matter of
law because the marks in their entireties are confusingly
similar, the goods of the parties are the same in part and are
otherwise highly related, that the channels of trade and
potential consumers are the same, and that opposer’s five-
pointed star design as displayed in the marks of its pleaded
registrations is famous. Specifically, opposer argues that
the prominent five-pointed star within a circle contained in
applicant’s mark is identical in sound, appearance and
commercial impression to the marks in several of opposer’s
cited registrations, and wholly incorporates the entire mark
in several of opposer’s pleaded registrations. Furthermore,
opposer claims that the descriptive wording “TEXAS KIDS”
contained in applicant’s mark does nothing to distinguish
opposer’s marks from the applicant’s mark. Moreover, opposer
maintains that it owns a family of well-known marks for
footwear whose common identifier is a prominent five-pointed
star and such ownership decreases the effectiveness of any
distinguishing characteristics contained in applicant’s mark.
In support of its arguments, opposer has submitted the
following: (1) the declaration of Rebecca Culbertson-Booma,
opposer’s advertising manager, attesting to the fame of
opposer’s family of five-pointed star marks and to the amount
Opposition No. 103,997
9
of advertising conducted by opposer in promoting its family of
five-pointed star marks, (2) the declaration of Robert Savoca,
a buyer of footwear for Endicot Johnson Retail Corporation, a
well-known retailer of footwear, attesting that the relevant
public is likely to believe that applicant’s mark is merely a
member of opposer’s family of five-pointed star marks; (3)
copies of opposer’s pleaded registrations; (4) selected
newspaper and magazine articles and advertisements
illustrating opposer’s advertising and promotional efforts;
(5) a list of celebrities who have endorsed opposer’s goods
sold under its family of five-pointed star marks; and (5) a
copy of a federal court decision, Starter v. Converse, 1997 WL
391266 (S.D.N.Y. July 11, 1007), where the court entered a
declaratory judgment on the jury’s verdict which found that
Starter’s Corporation’s marks, which contained a five-pointed
star, when used on athletic footwear, would infringe upon
opposer’s family of five-pointed star marks for the same
goods.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there are
no genuine issues of material fact in dispute, thus leaving
the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). The fact that both parties have moved for
summary judgment on the same issue, i.e. opposer’s claim
that applicant’s mark is confusing similar to the marks in
Opposition No. 103,997
10
its pleaded registrations, does not, in itself, mean that no
genuine issues of material fact remain. See University Book
Store v. University of Wisconsin Board of Regents, 33 USPQ2d
1385 (TTAB 1994). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993).
The determination of whether a likelihood of confusion
exists is made by evaluating and balancing the du Pont
evidentiary factors shown to be applicable to a particular
case and for which evidence has been made of record. As
noted in the du Pont decision itself, different factors may
play a dominant role in any particular case. In re E. I. du
Pont de Nemours, 476 F.2d 1357, 1361, 177 USPQ 563, 567
(CCPA 1973). Indeed, our principal reviewing court and this
Board have repeatedly held that, in an appropriate case, a
single du Pont factor may be dispositive in the likelihood
of confusion analysis. See, e.g., Kellogg Co. v. Pack’Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990); aff’d, 951
F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991)
(dissimilarity of the marks under the first du Pont factor
held dispositive); Keebler Co. v. Murray Bakery Products,
866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989) (dissimilarity
of the marks dispositive); Sears Mortgage Corp. v. Northeast
Opposition No. 103,997
11
Savings F.A., 24 USPQ2d 1227 (TTAB 1992) (dissimilarity
between the marks dispositive).
We believe that the first du Pont factor, namely, the
dissimilarity between the marks, is dispositive of this
case. Considering the marks in their entireties, we are of
the opinion that they differ so substantially in appearance,
sound and connotation that there is no likelihood of
confusion as a matter of law. Here, the applicant’s five-
pointed star design is merely background for the prominent
wording, TEXAS KIDS. Moreover, the wording, TEXAS KIDS,
assists in distinguishing the parties’ marks and must be
considered, despite applicant’s disclaimer of the same.
Finally, applicant’s five-pointed star design is part of the
overall cattle brand motif contained in applicant’s mark.
This Western motif connotes the State of Texas which in turn
assists in linking the wording, TEXAS KIDS, to the image of
the Lone Star State embodied in the five-pointed star in the
Texas State flag. In view of such distinguishing
characteristics, there can be no likelihood of confusion
between the parties’ marks as a matter of law. We would be
of this opinion even if opposer offered evidence at trial
that it has made prior and continuous use of its marks on
its goods, that the goods move in the same channels of trade
to the same classes of purchasers, that the involved goods
are purchased casually rather than with care, and/or that
Opposition No. 103,997
12
opposer’s five-pointed star design is a well known or famous
mark. In this case, the first du Pont factor simply
outweighs all the other factors which might be pertinent.
Accordingly, we find that there are no genuine issues
of material fact as to likelihood of confusion, and that
applicant is entitled to judgment as a matter of law.
Applicant’s motion for summary judgment is hereby granted,
opposer’s cross-motion for summary judgment is denied, and
the opposition is dismissed with prejudice. See Fed. R.
Civ. P. 56(c) and (e). The application file shall be
forwarded to registration in due course.3
T. J. Quinn
G. F. Rogers
L. K. McLeod
Administrative Trademark Judges
Trademark Trial and Appeal Board

3 In light of the instant order, applicant’s alternative request
for continuance under Fed. R. Civ. P. 56(f) is deemed moot.