Fruit of the Loom, Inc.v.Thomas Riley, David Saulters and Peter Dragon

Trademark Trial and Appeal Board

May 7, 2012

No. 91182644 (T.T.A.B. May. 7, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: May 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Fruit of the Loom, Inc.
v.
Thomas Riley, David Saulters and Peter Dragon
_____

Opposition No. 91182644
to application Serial No. 77177120
_____

Carrie A. Shufflebarger and Louis K. Ebling of Thompson Hine
LLP for Fruit of the Loom, Inc.

Thomas Riley, David Saulters and Peter Dragon, pro se.
______

Before Holtzman, Cataldo and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Thomas Riley, David Saulters and Peter Dragon,
(hereinafter, collectively, “applicant”) applied to register
in standard characters on the Principal Register the mark
BODY FRUIT based upon an allegation of a bona fide intent to
use the mark in commerce for “footwear; headwear; jackets;
pants; shirts; shorts; sweat shirts; undergarments; coats;
tank tops” in International Class 25.1

1 Application Serial No. 77177120 was filed on May 9, 2007.
Opposition No. 91182644
2
Registration has been opposed by Fruit of the Loom,
Inc. (“opposer”). In its amended notice of opposition,
opposer asserts that it is the owner of numerous famous
marks, previously used and registered on the Principal
Register, including FRUIT OF THE LOOM (typed or standard
characters2) for “apparel for men, women and children;
namely, underwear, lingerie, shirts, tee shirts, tank tops,
long sleeve tee shirts, sweatshirts, sweatpants, socks,
hosiery leotard tights, shorts, brassieres, panties” in
International Class 25.3 In addition to its standing,
opposer asserts as grounds for opposition claims of priority
and likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d); and dilution under
Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).
Opposer further asserts a claim that at the time the
involved application was filed, applicant lacked a bona fide
intent to use the applied-for mark in commerce as required
by Trademark Act Section 1(b), 15 U.S.C. § 1051(b), thereby
rendering the application void ab initio.
Applicant's amended answer consists of a general denial
of the allegations in the amended notice of opposition.4

2 Trademark Rule 2.52(a) was amended in 2003 to refer to “typed
drawings” as “standard character” drawings. See Trademark Rule
2.52(a); 37 C.F.R. 2.52(a).
3 Registration No. 1876708 issued on January 31, 1995. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
4 In addition, applicant asserted certain affirmative defenses,
but did not pursue them by motion or at trial. Accordingly, they
Opposition No. 91182644
3
Description of the Record
The record in this case consists of the pleadings and
the file of the involved application. During its assigned
testimony period, opposer filed a notice of reliance upon
the following: status and title copies of nine of its
pleaded registrations, including Registration No. 1876708
discussed above; copies of advertisements for opposer’s
goods featuring its FRUIT OF THE LOOM and other related
marks; trade journal and general circulation magazine
articles discussing opposer’s FRUIT OF THE LOOM brand;
applicant’s responses to opposer’s discovery requests and
printed TARR copies of applications for other marks filed by
applicant.
Applicant did not take testimony or offer any other
evidence during its assigned testimony period.5 Only
opposer filed a brief on the case.
Opposer’s Standing
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of

are deemed waived. Applicant also asserted certain “affirmative
defenses” that are more in the nature of amplifications of its
denial of the salient allegations of the amended notice of
opposition and are so construed.
5 The parties were advised in the Board’s February 25, 2010
decision (page 6, footnote 4) denying opposer’s summary judgment
motion that evidence submitted in connection therewith is not of
record at trial.

Opposition No. 91182644
4
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
We turn then to opposer’s claim of priority and
likelihood of confusion.
Priority of Use
Because nine of opposer’s pleaded registrations are of
record, Section 2(d) priority is not an issue in this case
as to the marks and goods covered thereby. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue, even those not specifically discussed in
this decision. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Opposition No. 91182644
5
For purposes of our likelihood of confusion
determination, we will concentrate our discussion on
opposer’s pleaded Registration No. 1876708 for the mark
FRUIT OF THE LOOM for “apparel for men, women and children;
namely, underwear, lingerie, shirts, tee shirts, tank tops,
long sleeve tee shirts, sweatshirts, sweatpants, socks,
hosiery leotard tights, shorts, brassieres, panties.” If
our analysis of the du Pont factors leads to a finding of
likelihood of confusion with the mark and goods in this
pleaded registration, it will be unnecessary to consider
opposer’s other pleaded registrations. Conversely, if
likelihood of confusion is not found with the mark and goods
in this pleaded registration, it also will not be found with
the marks and goods in opposer’s other pleaded
registrations.
Fame of Opposer’s Mark
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s mark and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Opposition No. 91182644
6
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.”

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Upon careful review of the record in this case, we are
not persuaded that opposer’s mark is famous. It is the duty
of a plaintiff asserting that its mark is famous to clearly
prove it.
By its notice of allowance, opposer has introduced
evidence that it has advertised its FRUIT OF THE LOOM brand
in periodical and trade magazines since at least 1937.6
These include Dry Goods Journal; Women’s Wear Daily; Good
Housekeeping; Apartment Life; Chain Store Age; New York
Times Magazine; Redbook; Cosmopolitan; Ladies’ Home Journal;
Rolling Stone; Men’s Fitness; Family Circle; Ebony; Elle;
Seventeen; Sports Illustrated; Woman’s World; and Women’s
Health. Opposer further has introduced evidence that in

6 We observe that certain advertisements submitted by opposer
contain notations written in pen or pencil indicating earlier
dates. However, there is no testimony or evidence of record to
substantiate these asserted earlier dates.
Opposition No. 91182644
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2008, DNR magazine voted opposer’s Fruit of the Loom brand
the best-known men’s clothing brand in the United States.
In addition, opposer introduced evidence that in 2005,
Women’s Wear Daily voted opposer’s Fruit of the Loom brand
the 9th most recognized clothing brand in the United States.
Opposer made of record by notice of reliance further
evidence that various publications have ranked its Fruit of
the Loom brand as a highly valuable and recognized brand.
Finally, opposer cites to cases in various courts in which
its Fruit of the Loom brand or marks have been found famous.
This evidence demonstrates that opposer has engaged in
extensive print advertisement of its goods under the Fruit
of the Loom brand and also enjoyed recognition of its
clothing goods so branded. However, such evidence falls
short of demonstrating the extent to which such activities
and achievements translate into widespread recognition
either of opposer’s FRUIT OF THE LOOM mark or any of its
other pleaded marks among the general public. Specifically,
opposer’s evidence of media recognition consistently
discusses recognition of the Fruit of the Loom brand but
does not indicate to which of its marks such recognition
inures. As a result, such evidence does not establish that
opposer’s marks are widely recognized by the consuming
public. Furthermore, we are not privy to the evidence made
of record in the court cases noted by opposer in which its
Opposition No. 91182644
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brand or marks were found famous. Simply put, we cannot
determine in this case the evidentiary bases for the courts
findings.
We note that opposer has not made of record any
testimony or evidence regarding or any sales or advertising
figures for its goods under the FRUIT OF THE LOOM or other
marks. Cf., for example, Motion Picture Association of
America, Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555
(TTAB 2007) (opposer’s members annually spent 4 billion
dollars on advertisements and promotion). More importantly,
opposer provides no context by which we may ascertain
opposer’s market share vis a vis other manufacturers of the
goods identified in its pleaded registrations. As a result,
it is impossible to determine, for example, how its sales or
advertising expenditures compare to those of its competitors
such that we may conclude therefrom that opposer’s pleaded
marks are famous. See Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Accordingly, we are constrained to find on this record
that the evidence falls short of establishing that any of
opposer’s pleaded marks is famous for purposes of our
likelihood of confusion determination. Nonetheless, the
record supports a finding that opposer’s marks, including
its FRUIT OF THE LOOM mark, are strong, to the extent we
must recognize that they are inherently distinctive in view
Opposition No. 91182644
9
of their registration on the Principal Register, opposer’s
examples of advertising and the absence of evidence of
third-party uses of record.
The Goods
We turn then to our consideration of the similarities
or dissimilarities between the parties’ goods. The issue
remains, of course, not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion
as to the source thereof. In re Rexel Inc., 223 USPQ 830
(TTAB 1984). Likelihood of confusion is determined on the
basis of the identification of goods in the application at
issue vis-à-vis the identification of goods in opposer’s
registration. See Octocom Systems, Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); and Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987).
In this case, both applicant’s identification of goods
and that of registrant include “shirts,” shorts,”
“sweatshirts,” “tank tops,” and “underwear” or
“undergarments.” Given that these goods are identified
without any limitation as to type, they must be presumed to
be legally identical. Likelihood of confusion may be found
based on any item that comes within the identification of
goods in the involved application. Tuxedo Monopoly, Inc. v.
Opposition No. 91182644
10
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981). Further, and in any event, the remaining
clothing items identified in the involved application appear
closely related to several of the clothing items listed in
opposer’s registration (e.g., tee shirts, long sleeve tee
shirts, sweatpants, socks).
The du Pont factor of the identity between the goods,
at least in part, weighs heavily in favor of a finding of
likelihood of confusion.
Channels of Trade and Classes of Purchasers
Because the goods identified in the application and the
cited registration are in part identical and otherwise
related, we must presume that the channels of trade and
classes of purchasers are the same. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); and In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Opposition No. 91182644
11
Thus, this du Pont factor also favors a finding of
likelihood of confusion.
The Marks
We turn then to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
See Palm Bay Imports, Inc. v. Veuve Clicquot, supra. The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result.
In this case, opposer’s FRUIT OF THE LOOM mark is
similar to applicant’s BODY FRUIT mark in that both share
the identical word FRUIT. We find that the word FRUIT,
being the first term opposer’s mark, is the dominant feature
in the commercial impression created thereby. See Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988)(“…[it is] a matter of some importance since
it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered.”).
See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin,
supra, (“Veuve” is the most prominent part of the mark VEUVE
Opposition No. 91182644
12
CLICQUOT because “veuve” is the first word in the mark and
the first word to appear on the label). Furthermore,
opposer’s FRUIT OF THE LOOM mark suggests that its clothing
goods are the result, or fruit, of its labors. Likewise,
the word FRUIT in applicant’s mark refers back to, and
reinforces, BODY, suggesting that its goods are fruit to be
worn on or emanating from the body. Thus, both marks as a
whole suggest that the parties’ clothing products under
their marks are fruit produced to be worn on the body.
In terms of appearance, sound, connotation and overall
commercial impression, we find that the similarities between
the parties’ marks which result from the prominence of the
term FRUIT in both outweigh the dissimilarities resulting
from the different terms comprising the marks. Further,
with regard to the similarities between the marks, we note
that, "[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." See Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992),
cert. denied, 506 U.S. 1034 (1994). See also ECI Division
of E-Systems, Inc. v. Environmental Communications Inc., 207
USPQ 443, 449 (TTAB 1980).
Thus, when viewing the marks in their entireties, we
find that as applied to good that are in part identical, the
Opposition No. 91182644
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marks are more similar than dissimilar for purposes of our
likelihood of confusion determination, and this du Pont
factor also favors a finding of likelihood of confusion.
Summary
In view of the in part identical nature of the goods,
trade channels and classes of consumers, and the similar
nature of the marks, we find that consumers encountering
opposer’s goods under its FRUIT OF THE LOOM mark who then
encounter applicant’s in part identical goods under its BODY
FRUIT mark, are likely to experience confusion as to the
source of the parties’ goods
Dilution
Because we have found above that opposer has not met
its burden of demonstrating that its FRUIT OF THE LOOM mark,
or any of its other marks, is famous for purposes of our
likelihood of confusion determination, opposer cannot
prevail on this record on its claim of dilution which
requires a stronger showing of fame. See, e.g., The Toro
Company v. ToroHead, 61 USPQ2d 1164 (TTAB 2001).
DECISION: Opposer has demonstrated its standing to
bring this opposition proceeding. The opposition is
sustained on the ground of priority and likelihood of
confusion, and registration to applicant is refused on that
ground.
The opposition is dismissed on the ground of dilution.
Opposition No. 91182644
14
Further, because opposer has prevailed on its claim of
priority and likelihood of confusion, we need not also reach
its claim that at the time applicant filed the involved
application it lacked a bona fide intent to use the mark in
commerce.