Gap (Apparel), LLCv.Gap One Enterprises, LLC

Trademark Trial and Appeal Board

Jul 28, 2008

No. 91172505 (T.T.A.B. Jul. 28, 2008)

Mailed:
July 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Gap (Apparel), LLC
v.
Gap One Enterprises, LLC
_____

Opposition No. 91172505
to application Serial No. 78683999
filed on August 2, 2005
_____

Linda K. McLeod of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P. for Gap (Apparel), LLC.

Marie Breaux of Milling Benson Woodward LLP for Gap One
Enterprises, LLC.
______

Before Seeherman, Quinn and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Gap One Enterprises, LLC (“applicant”) filed a use-
based application for the mark GAP ONE, in standard
character format, for “general business merchandising
services, namely, marketing,” in Class 35 (Serial No.
78683999). As discussed more fully below, applicant is an
independent sales agent that renders marketing services,
including arranging for the sale of promotional products,
such as shirts, hats, jackets, and coffee mugs, etc. that
display the customer’s logo or trademark.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91172505
2
Gap (Apparel), LLC (“opposer”) filed a notice of
opposition against the registration of applicant’s mark on
the grounds of priority of use and likelihood of confusion,
and dilution. Sections 2(d), 13(a), and 43(c) of the
Trademark Act of 1946, 15 U.S.C. §§1052(d), 1063(a), and
1125(c). Specifically, opposer alleges that it is “one of
the world’s leading consumer retail stores featuring a wide
variety of clothing, shoes, clothing accessories, jewelry,
bags, personal care products, toys, paper products, bed and
bath linens, and other merchandise”; that it has used the
marks GAP and THE GAP in connection with retail clothing
store services, clothing and related accessories since at
least as early as 1969; that the GAP marks became famous
prior to applicant’s first use of the mark GAP ONE; and that
applicant’s use of the mark GAP ONE in connection with
“general business merchandising services, namely marketing”
is likely to cause confusion and dilution with opposer’s GAP
marks. In addition, opposer made the following allegation:
7. In connection with its products and
services offered under the GAP marks,
Opposer has marketed and sold corporate
gift cards since at least as early as
1996, and has marketed and sold
corporate apparel with customized
embroidery and silk screening (including
t-shirts, button-down shirts,
sweatshirts, fleece jackets, pullovers,
and hats) and accessories (including
leather cardholders, travel cases,
Opposition No. 91172505
3
frames, and desk accessories) since at
least as early as April 2005.1

Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
A. Opposer’s evidence.
1. The testimony deposition of Julie Alonso, Senior
Director of Public Relations and Buzz Marketing for Gap,
Inc., with attached exhibits;2
2. A notice of reliance with copies of opposer’s
pleaded registrations prepared by the U.S. Patent and
Trademark Office showing the current status and title of
opposer’s pleaded registrations. Those registrations
include, but are not limited to, the mark THE GAP, in typed
drawing form, for retail clothing store services
(Registration No. 0944941) and the mark GAP, in typed
drawing form, for clothing (Registration No. 1129294), tote
bags and hand bags (Registration No. 1752562), sunglasses
and eye glass cases (Registration No. 1912356), stationery,

1 Amended notice of opposition, ¶7.
2 Opposer is a wholly-owned subsidiary of Gap, Inc. (Alonso
Dep., p. 10).
Opposition No. 91172505
4
pencils, and note books (Registration No. 2138241), watches
(Registration No. 2146558), blankets, sheets, linens,
quilts, and comforters (Registration No. 2341527), cosmetics
(Registration No. 2532258), and luggage, purses, book bags,
wallets and umbrellas (Registration No. 2527652);
3. A notice of reliance consisting of unsolicited
articles and stories from printed publications and wire
services available to the general public that opposer
asserts recognize the fame of opposer’s GAP marks;
4. A notice of reliance consisting of articles and
stories from printed publications and wire services
available to the general public that mention the GAP marks;
5. A notice of reliance consisting of advertisements
featuring the GAP marks that appear in printed publications
available to the general public;
6. A notice of reliance consisting of certified
copies of form 10-K for Gap, Inc. filed with the U.S.
Securities and Exchange Commission for fiscal years 1997-
2006;
7. A notice of reliance on applicant’s responses to
opposer’s first and third sets of requests for admission;
8. A notice of reliance on applicant’s responses to
opposer’s first and second sets of interrogatories;
9. A notice of reliance on applicant’s responses to
opposer’s second set of requests for admission;
Opposition No. 91172505
5
10. A notice of reliance on excerpts from the
discovery deposition of George A. Peterson, the founder and
owner of applicant;
11. A notice of reliance on records from Board
proceedings in which opposer asserted its rights in the GAP
marks against third-parties;3 and,
12. A notice of reliance on articles and stories
available to the general public that opposer asserts
demonstrate that it sells products displaying the logos and
trademarks of its customers.
B. Applicant’s evidence.
1. A notice of reliance on the entire discovery
deposition of George Peterson, with exhibits;4
2. A notice of reliance on printouts of third-party
registrations and applications from the electronic records
of the Trademark Office;5

3 Opposer submitted an additional opposition record through a
notice of reliance filed during its time for rebuttal.
4 When, as here, opposer has introduced excerpts from applicant’s
discovery deposition, applicant is entitled to introduce by
notice of reliance any other portions of the deposition that are
necessary to present a fair representation of the entire
testimony. Trademark Rule 2.120(j)(ii)(4). In such
circumstances, applicant’s notice of reliance must explain why it
needs to rely on the additional parts of the discovery
deposition. Id. Applicant did not include such a statement in
its notice of reliance. However, because opposer noted
applicant’s notice of reliance in its brief and did not object to
it, we deem opposer to have stipulated to the admission of the
entire deposition.
5 Although the Board has received applicant’s notice of reliance,
our records do not include copies of the registrations and
applications. However, because opposer has treated the evidence
as being of record by referencing it in its brief and reply
Opposition No. 91172505
6
3. A notice of reliance on opposer’s responses to
applicant’s first set of interrogatories and requests for
admission; and,
4. A notice of reliance on documents produced by
opposer during discovery.6
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority

Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case vis-à-vis
the goods and services identified in the registrations.

brief, and because applicant provided a table, in its brief,
listing the third-party registrations, the marks and the goods
and services, we will consider the third-party registrations for
whatever probative value they may have. The only probative value
that applications may have is to show that the applications were
filed.
6 A party that has obtained documents in response to a request
for production of documents may not introduce those documents
into evidence through a notice of reliance unless they are
admissible pursuant to Trademark Rule 2.122(e). Trademark Rule
2.120(j)(3)(ii). However, because opposer has also introduced
these documents into evidence through a notice of reliance
(Document Nos. 3568-3651) and through the Alonso deposition
(Document Nos. 3484-3567 as Alonso Dep. Exhibit 28), we deem
opposer to have stipulated to the admission of applicant’s
documents.
Opposition No. 91172505
7
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Opposer’s witness Julie Alonso testified that since at
least as early as 1996, opposer has been selling
personalized apparel and accessories such as bags, wallets,
frames and credit card holders, displaying customers’ logos
and trademarks.7 These corporate or bulk sales are made
through Gap, Inc. Business Direct.8
Q. Now, what is the history of this
Gap Business Direct program? When
did it start?

A. I believe in 1996. However, since
I’ve been here in 1992, companies
have called for bulk sales of
specific items.

Q. But the formal program started in
1996?

A. As a formal program.

But earlier, movie studios and
others would call for bulk items to
then logo the merchandise.

Q. And it has been continuous use for
that service since then?

Was there ever a time when it was
discontinued?

7 Alonso Dep., pp. 102, and 106-111; Exhibit 28 (Corporate
Apparel and Gift Catalog, Spring/Summer 2006). The catalog
displays the GAP trademark. See also BrilliantResults magazine
(January 2006) (Opposer’s notice of reliance (A-12 supra)) with a
feature story regarding opposer’s customized promotional apparel
sales. We reference this article only for the fact that it was
written, and not to prove the facts set forth therein.
8 Alonso Dep., pp. 108; Exhibit 28.
Opposition No. 91172505
8
A. It’s always on the table. Bulk
sales and big merchandise sales are
always on the table as something
that we consider.9

On the other hand, applicant’s earliest date of first
use of its mark in connection with applicant’s services is
July 1997.10 Accordingly, opposer has established prior use

9 Alonso Dep., pp. 109-110.
10 Peterson Dep., p. 64; applicant’s answer to Interrogatory
No. 2. Mr. Peterson also testified that applicant may have
used GAP ONE as early as 1996. (Peterson Dep., pp. 65-68).
If an applicant wishes to claim a first use date prior to
that set forth in its application (January 13, 1999), the
evidence must be clear and convincing. Hydro-Dynamics, Inc.
v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773
(Fed. Cir. 1987) (the date asserted in the application is
considered to be an admission against interest at the time
the time the application was filed, and applicant’s change
of position “requires enhanced substantiation”). Here, Mr.
Peterson’s testimony on this point was not clear and
convincing and it was contradicted by his other testimony
and evidence. See National Bank Book Co. v. Leather Crafted
Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a
party’s mark when it is based on personal knowledge, it is
clear and convincing, and it has not been contradicted);
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ
305, 316 (TTAB 1979) (oral testimony may be sufficient to
establish both prior use and continuous use when the
testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its
probative value); GAF Corp. v. Anatox Analytical Services,
Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may
establish prior use when the testimony is clear, consistent,
convincing, and uncontradicted). In view of the uncertainty
of Mr. Peterson’s testimony and lack of documentation, we
conclude that applicant’s date of first use can be no
earlier than July 1997. See EZ Loader Boat Trailers, Inc.
v. Cox Trailers, Inc., 213 USPQ 597, 598 n.5 (TTAB 1982)
(documentary evidence showed first use in 1977, the month
and day were unknown, therefore, the Board could not presume
any date earlier than the last day of the proved period).
See also Osage Oil & Transportation, Inc. v. Standard Oil
Co., 226 USPQ 905, 911 n.22 (TTAB 1985) (evidence
Opposition No. 91172505
9
of the mark GAP in connection with the sale of personalized
apparel and accessories.11
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 issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). The relevant du Pont factors
are discussed below.
A. Fame.
We turn first to the factor of fame because this factor
plays a dominant role in cases featuring a famous or strong
mark. Kenner Parker Toys Inc. v. Rose Arts Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Famous marks are accorded more protection precisely because
they are more likely to be remembered and associated in the
public mind than a weaker mark. Id. Indeed, “[a] strong
mark . . . casts a long shadow which competitors must

established first use in 1968-1969, therefore December 31,
1969 is date of first use).
11 Applicant asserts that opposer has ended its Gap, Inc. Direct
Business sales of personalized apparel and accessories, citing
Investor Information at www.gapinc.com – 10-K annual report filed
with the SEC April 2, 2007, p. 18, note 3 and page 19, note 3.
(Applicant’s Brief, p. 17). However, that 10-K annual report was
not introduced into evidence, and may not be given any
consideration
Opposition No. 91172505
10
avoid.” Id. A famous mark is one “with extensive public
recognition and renown.” Id. See also Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
In addition to applicant’s admission in its answer to
opposer’s amended notice of opposition that opposer’s GAP
marks have become famous,12 applicant’s owner testified that
opposer’s GAP marks are famous.
Q. Do you think that Gap is famous for
their name for a company?

A. The Gap is famous for the name of a
retail store.

Q. And what retail store is that?

A. The Gap.

Q. The party involved in this
proceeding?

A. Correct.13

* * * *

Q. - - was Gap famous to you at the
time you filed your application?

A. I don’t know if they were as famous
then as they are know.14

* * * *

Q. Do you see there at the bottom of
page 2, the “Request for Admission
No. 8,” the answer to admit that

12 Opposer’s amended notice of opposition, ¶¶9 and 16. Applicant
also acknowledged that opposer is “the owner of an admittedly
famous family of marks” in its brief. (Applicant’s Brief, p. 1).
13 Peterson Dep., p. 123.
14 Peterson Dep., p. 124.
Opposition No. 91172505
11
Opposer’s Mark - - in this case Gap
- - was famous for clothing prior
to the day of the filing of your
trademark application?

A. (Views document.) Yes.

Q. And you see on page 3 that it says,
“Admitted”?

A. (Views document.) Correct.

Q. Okay. Was it famous at the time
you picked “GAP One Enterprises” -
- the name of your company?

* * * *

A. Yeah, I guess so. I guess it was
famous at that time.15

See also Applicant’s answers to opposer’s second set of
requests for admission.
REQUEST FOR ADMISSIONS NO. 7:
Admit that Opposer’s Mark is well
known to the general public in
connection with clothing.

ANSWER TO REQUEST FOR ADMISSSIONS NO. 7:
Admitted.
REQUEST FOR ADMISSIONS NO. 8:
Admit that Opposer’s mark was
famous in connection with clothing prior
to the filing date of Application Serial
No. 78/683,999.

ANSWER TO REQUEST FOR ADMISSSIONS NO. 7:
Admitted.

15 Peterson Dep., p. 125.
Opposition No. 91172505
12
Opposer also introduced other evidence to demonstrate
that its GAP marks are famous. For example, opposer
introduced testimony and evidence regarding its sales
revenues and advertising expenditures. While this evidence
was introduced under seal, we can report that those figures
are substantial under any standard. In addition, opposer
introduced numerous news articles and stories referring to
the GAP mark as famous or well-known, including the
following articles and stories:16
The Gap, Business Week, p. 58 (March 9,
1992).

Millard S. Drexler, 47, has turned The
Gap into the most popular and profitable
specialty clothing chain in American
retailing today.

The World According To Gap, The Sunday
Oregonian (September 13, 1992).

As ubiquitous as McDonald’s, as
centrally managed as the former Soviet
Union, and as American as Mickey Mouse,
Gap, Inc. has you covered from the
cradle to at least 50.

* * *

Last year, Gap-labeled clothes became
the second-largest selling brand name in
the United States, after Levi Strauss.

* * *

Check it out:

16 The probative value of the news articles is that they show how
the third parties perceive, or refer to, opposer’s marks.
Opposition No. 91172505
13
When Kelly, a character from “Beverly
Hills, 90210,” shows up on “Melrose
Place,” she is seen shopping at The Gap
for something to captivate a 24-year old
older man.

When speechwriter Peggy Noonan decries
the sameness of the Democrats and
Republicans, she writes that we are all
becoming “Gapped, linened and Lancomed.”

In Fashion, The Atlanta Journal and
Constitution (October 10, 1993).

Famous for jean (sic) and T-shirts, The
Gap is out to convince consumers that
the “Gap Look” includes stretch pants
and leather vests.

Runways Aglow With Mary Janes’ Return,
Pittsburgh Post-Gazette (May 11, 1994).

Gap Shoes - - the San Francisco chain
famous for real clothes for real people
– - has introduced two spring tributes
to the Mary Jane.

1997 NRF Gold Medal Award Winner Donald
G. Fisher Chairman of The Gap Inc.,
Stores Magazine (1997).

The Gap brand is synonymous with casual
American sportswear, and Gap is regarded
as one of the nation’s top specialty
retail chains. The Gap brand is second
only to Levi Strauss in the number of
units its sells, and the “Gap look” –
characterized by khaki pants, denim
jeans, woven denim shirts and the
ubiquitous one-pocket T-shirt – has
become an icon of American style.

The World According To Gap, Business
Week (January 27, 1997).

After all, Gap may be opening a lot of
new stores, but it isn’t just a retailer
anymore. Unless you think that Coca-
Cola just makes soda pop.
Opposition No. 91172505
14
European Makeup Sensation Lands Fans In
U.S., The Commercial Appeal (March 12,
2000).

He wants Sephora to be a well-known
brand like the Gap, which consumers
trust for trendy, good quality
merchandise that’s constantly changing,
drawing shoppers back again and again.

Preview 2004: Retail – Bay Area retail
has much more in store, San Francisco
Business Times (January 2, 2004).

Two of the city’s most famous brand
names, Gap Inc. and Levi Strauss & Co.,
are both in the midst of radical
makeovers.

Gap, Old Navy generate industry buzz
with Staton agreement, Wearables
Business (February 1, 2006).

The greatest buzz at both the ASI Show
in Orlando and the PPAI EXPO in Las
Vegas last month was the breaking news
that styles from the famous retailers
The Gap and Old Navy are being offered
to the corporate/promotional marketplace
through venerable wholesaler Staton
Corporate & Casual.

In view of the foregoing, opposer has established that
its GAP trademarks are famous and thus entitled to a broad
scope of protection.
B. The number and nature of similar marks in use on
similar goods.

Applicant contends that opposer’s GAP marks are
entitled to only a narrow scope of protection because the
fame and strength of opposer’s marks persist in a crowded
field of “Gap” marks. In other words, opposer is not the
only company that uses the word “Gap” as a part of its
Opposition No. 91172505
15
mark.17 The basis for this argument is the third-party
registrations consisting in part of the word “Gap” for a
wide variety of products and services. These third-party
registrations have little value in determining the issue of
likelihood of confusion before us because they do not prove
that the registered marks are in commercial use or that the
public is familiar with them. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQQ 268, 269 (CCPA
1973); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786 (TTAB 1993). Accordingly, there is no evidence of
record to demonstrate that the public is so conditioned to
the use of the word “Gap” in connection with any goods and
services, let alone clothing, retail clothing services, and
marketing services, that consumers will be able to
distinguish the marks based on the additional word “One” in
applicant’s mark.
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. In re E. I. Du Pont de Nemours & Co., 177 USPQ
at 567. In a particular case, any one of these means of
comparison may be critical in finding the marks to be

17 Applicant’s Brief, pp. 14-16 and 20-21.
Opposition No. 91172505
16
similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB
1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1988). In comparing the marks, we are mindful that the test
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 so that confusion as to the source of
the goods offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). In this regard, when, as here, an opposer’s mark
is famous, the degree of similarity between the marks need
not be as great as when the opposer’s mark is obscure or
weak. Kenner Parker Toys Inc. v. Rose Arts Industries,
Inc., 22 USPQ2d at 1456. See also Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1284 (Fed. Cir. 1984) (“less care may be taken in purchasing
a product under a famous name”). In other words,
there is “no excuse for even approaching
the well-known trademark of a competitor
. . . and that all doubt as to whether
confusion, mistake, or deception is
likely is to be resolved against the
newcomer, especially where the
established mark is one which is famous.
. . .”

Opposition No. 91172505
17
Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, 889 F.2d 1070,
12 USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting Planter’s Nut
& Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916, 134
USPQ 504, 511 (CCPA 1962).
With these principles in mind, we begin our analysis of
the marks by noting that, although likelihood of confusion
must be determined by analyzing the marks 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.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). In this case, the word
“Gap” is the dominant element of applicant’s mark GAP ONE.
It is the first word of the mark. Presto Products Inc. v.
Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“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, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005)(“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the
mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of America, supra (upon
Opposition No. 91172505
18
encountering the marks, consumers must first notice the
identical lead word).
In addition, the way in which applicant uses the mark
GAP ONE emphasizes the dominance of the word “Gap.” All of
the sample advertising featuring applicant’s mark display
the word “Gap” in a larger font, as shown below, thus
directing the consumer’s attention to the word “Gap.”18

Applicant also uses the advertising tagline, “Let us fill in
the gap for you!” (with the word “Gap” emphasized).19
Thus, it is not surprising that George Peterson,
applicant’s owner, testified that the word “Gap” is the
dominant part of applicant’s mark.
Q. And that “gap” is the dominant part
of the mark.

A. (Views document).20 Yes.

Q. Okay. And that you consider the
“gap” part of the mark to be the
unique part of the mark?

A. (Views document). Yeah. Because
that’s George A. Peterson - -

Q. Okay.

18 Peterson Dep., Exhibits 11, 12, and 17. See also the specimens
submitted as part of the application.
19 Id.
20 Exhibit 11.
Opposition No. 91172505
19
A. - - “gap.”21

In comparing the two marks, we note that the
applicant’s mark GAP ONE contains Opposer’s entire mark
(i.e., GAP). Likelihood of confusion is often found where
the entirety of one mark is incorporated within another.
Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d
556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER and design for
club soda, quinine, water and ginger ale is likely to cause
confusion with BENGAL for gin); Lilly Pulitzer, Inc. v.
Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE
LILLY for dresses is likely to cause confusion with LILLI
ANN for dresses); Johnson Publishing Co. v. International
Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for
cosmetics and EBONY DRUM for hairdressing and conditioner);
In re Cosvetic, 202 USPQ 842 (TTAB 1979) (HEAD START
COSVETIC and design for vitamins for hair conditioning, hair
shampoo and hair conditioner is likely to cause confusion
with HEADSTART for after-shave lotion).
Not only is the dominant part of the marks identical,
but the additional word “One” in applicant’s mark does not
serve to distinguish the marks because it has a suggestive
laudatory significance.22 See Hoover Co. v. Royal Appliance

21 Peterson Dep., pp. 177-178.
22 Also, Mr. Peterson testified that it was his understanding that
GAP ONE was too close opposer's marks, and therefore he named his
company GAP ONE ENTERPRISES to avoid a conflict. (Peterson Dep.,
pp. 13-15 and 124). Mr. Peterson further testified that he
Opposition No. 91172505
20
Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720, 1722 (Fed.
Cir. 2001) (“Number One In Floor Care” is a generally
laudatory phrase); General Mills Inc. v. Health Valley
Foods, 24 USPQ 1270, 1277 (TTAB 1992) (when used in
opposer’s mark FIBER ONE, the word “One,” has a laudatory
meaning), citing Hertz System, inc. v. A-Drive Corporation,
222 USPQ 625, 630 n.14 (TTAB 1984) (the number “1” is widely
used to indicate superiority); Maine Savings Bank v. First
Banc Group of Ohio, Inc., 220 USPQ 736, 739 (TTAB 1983)
(opposer's mark THE ONE may be suggestive of superiority).
Accordingly, we find that in terms of appearance and sound
the marks are similar.
Applicant argues that the marks of the parties have
different meanings, and therefore engender different
commercial impressions because the “Gap” part of applicant’s
mark GAP ONE was derived from Mr. Peterson’s initials (i.e.,
George A. Peterson).23 A fundamental problem with
applicant’s argument that its mark is an acronym derived

always uses GAP ONE ENTERPRISES, that he never uses just GAP ONE,
and that he has no intention of ever using just GAP ONE without
the word “Enterprises.” (Peterson Dep., pp. 58-59, 66-67, and
127). Applicant filed the application for GAP ONE, rather than
GAP ONE ENTERPRISES, based on advice of counsel. Apparently,
“the word ‘Enterprises may have been - - not - - not be able to
be trademarked of part of a trademark.” (Peterson Dep., pp. 126-
127).
23 Peterson Dep., p. 11-13. As indicated above, Mr. Peterson
recognized the similarity of his mark with opposer’s marks and
testified that he named his company GAP ONE ENTEPRISES to avoid
confusion with THE GAP stores. (Peterson Dep., p. 13).
Opposition No. 91172505
21
from Mr. Peterson’s initials is that consumers are not
likely to understand this from looking at the mark alone.
Applicant has not depicted its mark with any periods,
hyphens, or spaces between the letters in the word “Gap.”
Thus, when looking at the mark, there is no way for
consumers to know that the word “Gap” in the mark GAP ONE is
an acronym or initials. Even though Mr. Peterson testified
that he always tells customers that “GAP ONE Enterprises
means George A. Peterson,”24 we may not consider applicant’s
sales pitch when we compare the marks because what applicant
tells its customers is not part of applicant’s mark. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981) (“No consideration can
be given to allegedly distinguishing features which are not
part of the mark sought to be registered”).
Also, it is not clear how adding the word “One” to
applicant’s mark leads consumers to interpret the word “Gap”
as an acronym or initials. When considering applicant’s
mark in its entirety, GAP ONE is the combination of the
words “Gap” and “One,” without any indication that the word
“Gap” is an acronym or that it is derived from initials.
It appears that applicant’s use of the mark “Gap” is
intended to reference an opening or an empty space in one’s
marketing program. On the other hand, opposer derived its
GAP marks from the term “generation gap,” referencing a

24 Peterson Dep., p. 116.
Opposition No. 91172505
22
divergence or difference in attitudes, perceptions, and
character among generations.25 However, to the extent that
the meaning of opposer’s GAP marks once referenced a
generation gap, that meaning has long since ceased inasmuch
as opposer is now a leading, national retailer that sells to
every demographic.26
Q. Who are the consumers for your
products?

A. Everyone.

Q. All ages?

A. All ages.

We have products for newborn babies
and we have products that people
could wear well into their
retirement years and all of the
years in between.

Q. Do you have any business customers
for your products?

A. Yes.27

The word “Gap” in opposer’s marks now engenders the
same ordinary meaning of the word “Gap” as does applicant’s
mark (e.g., an opening or empty space), as illustrated by
the “Fall Into The Gap” advertisements shown below. 28
Accordingly, the marks have similar meanings.

25 Alonso Dep., p. 16.
26 Alonso Dep., p. 101-102.
27 Id.
28 Alonso Dep., pp. 65-66; Exhibit 8 (e.g., Document Nos. 4322,
4141, 4143).
Opposition No. 91172505
23

Likewise, the commercial impression engendered by the
marks is similar.
While the marks of the parties are not identical, we
find that they are similar in appearance, sound, meaning and
commercial impression, and that this du Pont factor favors
opposer.
D. The similarity or dissimilarity and nature of the goods
or services.

Applicant is seeking to register its mark for “general
business merchandising services, namely, marketing.”
Applicant acts as a middleman or broker between
vendors/suppliers and customers who want, among other
things, personalized merchandise displaying trademarks and
logos. George Peterson described applicant as “an
Opposition No. 91172505
24
independent sales organization”29 and “a commissioned sales
agent.”30
GAP One Enterprises did not - - does not
provide apparel. We provide the service
of getting logo-imprinted items for the
- - company or entities that provide
those services.31

As shown below, applicant’s telephone directory
advertisement and its advertising flyers promote applicant’s
ability to provide personalized clothing.32

29 Peterson Dep., p. 67.
30 Peterson Dep., p. 71.
31 Peterson Dep., pp. 81-82.
32 Peterson Dep., Exhibits 10 and 11.
Opposition No. 91172505
25
On the other hand, while opposer has registered its
marks for, inter alia, retail clothing store services,
clothing, tote bags, and bath linens (all products that
applicant will broker), opposer also sells personalized
apparel and accessories such as bags, wallets, frames and
credit card holders, displaying customers’ logos and
trademarks.33 Accordingly, applicant’s marketing services
and opposer’s sales of personalized products are essentially
identical, or at least very highly related: applicant is a
commissioned sales agent for personalized products,
including, but not limited to, apparel and other products,
and opposer is a vendor of personalized apparel and
accessories.
The fact that clothing products are only one of many
products that applicant will broker does not diminish the
relatedness of applicant’s services and opposer’s goods and
services. See Tuxedo Monopoly, Inc. v. General Mills Fund
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to
be confusion with respect to any item that comes within the
identification of goods or services in the application).
Applicant argues, in essence, that marketing services
per se and clothing are not related. However, applicant

33 Alonso Dep., pp. 102-103, and 106-111; Exhibit 28 (Corporate
Apparel and Gift Catalog, Spring/Summer 2006).
Opposition No. 91172505
26
ignores the fact that it will arrange for the sale of
personalized apparel while opposer sells personalized
apparel. Presumably, the reason applicant ignores this fact
is because it asserts that opposer has abandoned its sale of
personalized clothing and accessories. Unfortunately, for
applicant, this argument is unsupported by any evidence or
testimony, and therefore may not be given any
consideration.34
Even assuming, arguendo, that opposer no longer sells
personalized apparel and accessories, when a famous mark is
part of the equation in determining the issue of likelihood
of confusion, “special care is necessary to appreciate that
products not closely related may nonetheless be confused as
to source by the consumer because of the fame of the mark.”
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1310 (Fed. Cir. 2002). Thus, a consumer is
likely to believe that opposer, whose GAP marks are famous
for clothing and retail store services in the field of
clothing, is the source of GAP ONE marketing services that
include personalized apparel and other related products.
E. The similarity or dissimilarity of established, likely-
to-continue trade channels and classes of consumers.

Because applicant’s marketing services and opposer’s
sales of personalized apparel are essentially the same, or
very highly related, we must presume that the channels of

34 See the discussion regarding priority and footnote 11 supra.
Opposition No. 91172505
27
trade and purchasers would be the same (i.e., applicant
renders its marketing services to the same consumers to whom
opposer will sell its personalized apparel). 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”). See also 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 purchaser through
the same channels of trade”).
F. The conditions under which and buyers to whom sales are
made, i.e. “impulse” vs. careful, sophisticated
purchasing.

Applicant argues that consumers exercise a high degree
of care in deciding to use its marketing services: “The
decision to engage in merchandising is itself a
sophisticated act.”35 “Merchandising is not an ‘impulse’ or
even an ‘instant’ purchase.”36
Typically, applicant makes a sale when Mr. Peterson
calls the person at a company empowered to buy corporate
apparel or logo-imprinted products. Initially, Mr. Peterson

35 Applicant’s Brief, p. 18.
36 Applicant’s Brief, p. 18.
Opposition No. 91172505
28
makes an appointment to meet the customer representative to
determine whether the company has a marketing need applicant
can satisfy.37 During the initial sales presentation, Mr.
Peterson always tells the customer representative the
following:
GAP One Enterprises means George A.
Peterson, one man enterprise. I’ve
been doing this for ten years. And we
just fill in the - - we’re here to fill
in the gap for you. Whatever you need,
we can do.38

Once Mr. Peterson finds out what the customer wants in
terms of corporate apparel or imprinted merchandise, he
contacts a supplier to get a price which he forwards to the
customer.39 The majority of applicant’s customers are bars
and restaurants, pool leagues, and dart leagues.
Essentially, applicant’s customers are businesses that want
to buy shirts for their employees or sell them to
customers.40
Applicant is simply Mr. Peterson’s alter ego.
Applicant’s sales of personalized apparel and imprinted
merchandise are made through personal sales calls by Mr.
Peterson where customers meet “applicant.” So long as
applicant remains a “one man enterprise,” the conditions

37 Peterson Dep., pp. 113-114.
38 Peterson Dep., p. 116.
39 Peterson Dep., pp. 116-117.
40 Peterson Dep., pp. 101-103.
Opposition No. 91172505
29
under which applicant’s sales are made weigh against finding
that there is a likelihood of confusion.
However, we do not rest our analysis of the conditions
of purchase on the manner in which applicant currently
offers its services, but on how such services may be offered
in the future, as defined by the identification in the
application. Thus, even if the personal sales calls element
were missing, applicant’s services are still directed toward
businesses that intend to order “logoed” merchandise to
promote their businesses or organizations as part of their
own marketing efforts. Presumably, these customers will
exercise a high degree of care in making their purchases
because applicant’s services (and the logoed products it
brokers) are for promoting the customers’ businesses.
Accordingly, this factor favors applicant.
F. The nature and extent of any actual confusion.
While there have been no reported instances of actual
confusion,41 we do not find this fact particularly
compelling. Applicant has promoted its services through
“word of mouth” and by a listing in the New Orleans East
telephone directory.42 Applicant has not done any

41 Opposer’s responses to Interrogatory Nos. 2 and 3.
42 Peterson Dep., p. 106. As part of its “word of mouth
advertising,” Mr. Peterson has spoken to people at trade shows
that he has attended related to his other businesses. (Peterson
Dep., p. 108).
Opposition No. 91172505
30
newspaper, magazine, radio or television advertising.43
Applicant has not been an exhibitor at any trade shows.44
Applicant is a “one man business,”45 and applicant’s
principal, Mr. Peterson, has devoted most his energies to
building the other businesses that he is involved in.46
Under these circumstances, applicant has failed to show that
it has made even a minimal impact in the market, and
therefore there has not been an opportunity for actual
confusion to have occurred. This factor is therefore
neutral.
G. Balancing the factors.
When, as here, the opposer’s trademark is a strong,
famous mark, it can never be of “little consequence”.
Specialty Brands v. Coffee Bean Distributors, 223 USPQ at
1284 (“The fame of a trademark may affect the likelihood
purchasers will be confused inasmuch as less care may be
taken in purchasing a product under a famous name”).
Therefore, a famous trademark is entitled to a broad scope
of protection or exclusivity of use. In view of the facts
that the applicant’s services and opposer’s clothing and
retail clothing store services are related, as well as the
fact that opposer also sells clothing personalized with

43 Peterson Dep., pp. 106-107.
44 Peterson Dep., p. 108.
45 Peterson Dep., p. 110.
46 Peterson Dep., p. 100.
Opposition No. 91172505
31
company logos and trademarks, that the goods and services of
the parties must be deemed to move in similar channels of
trade and be offered to the same consumers, and that the
marks are similar, opposer has shown that applicant’s use of
the mark GAP ONE in connection with “general merchandising
services, namely marketing,” is likely to cause confusion
with opposer’s GAP trademarks. In reaching this decision,
we note that there is “no excuse for even approaching the
well-known trademark of a competitor . . . and that all
doubt as to whether confusion, mistake, or deception is
likely is to be resolved against the newcomer, especially
where the established mark is one which is famous.” Nina
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 12 USPQ2d at
1904, quoting Planter’s Nut & Chocolate Co. v. Crown Nut
Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962).
Because we have found that there is a likelihood of
confusion, we do not reach the issue of dilution.
Decision: The opposition is sustained and
registration to applicant is refused.