Gregory S. Lichtv.Beach Foot International Pty Ltd

Trademark Trial and Appeal Board

Jul 15, 2010

No. 91186089 (T.T.A.B. Jul. 15, 2010)

Mailed:
July 15, 2010
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Gregory S. Licht

v.

Beach Foot International Pty Ltd
_____

Opposition No. 91186089 to application Serial No. 77423312
filed on March 17, 2008
_____

Robert A. Johnson of Robert Johnson Law Corporation for
Gregory S. Licht.

Beach Foot International Pty Ltd, pro se.1
______

Before Walters, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant, Beach Foot International Pty Ltd, an
Australian corporation, seeks registration on the Principal

1 Darren S. Rimer of Rimer & Mathewson LLP initially represented
applicant; however, after the filing of applicant’s answer, Mr.
Rimer withdrew his representation “pursuant to the applicant’s
express request.” The withdrawal of representation (filed on
December 12, 2008, in the USPTO database TICRS) is, in essence, a
revocation of authority, under Rule 2.19. We further note that
Mr. Rimer makes representations that are in compliance with
Section 10.40 (withdrawal of representation), namely, that he
undertook reasonable steps to avoid prejudice to applicant.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91186089

2
Register of the mark shown below for “towels; bath towels;
beach towels” in International Class 24.2

The mark is described in the application as
“consist[ing] of an image of a surfer running on the beach
carrying a surfboard with the words BEACHFOOT in stylized
font written below.” Color is not claimed as a feature of
the mark.
Opposer Gregory S. Licht, an individual, has filed an
opposition to registration of applicant's mark. In his
notice of opposition, opposer pleaded ownership of two
registrations for the following mark

on “sandals” (Registration No. 1410644)3 and “sports

2 Application Serial No. 77423312, filed March 17, 2008, is based
on an allegation of a bona fide intent to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
3 Issued September 23, 1986, renewed. An assignment from joint
owner, Dorothy E. Licht, to opposer was recorded on December 22,
1988.
Opposition No. 91186089

3
clothing; namely, swim wear, jackets, pants, shorts, T-
shirts, socks, caps, hats, coats and footwear” (Registration
No. 1734926).4 Opposer alleges that “[b]ecause of the
nature of the products of the parties, the opposer’s being
primarily beach sandals and footwear sold principally in
surf shops and sporting goods stores and the applicant’s
primarily beach towels and other towels, and the similarity
of the marks, applicant’s mark...is likely to cause
confusion, mistake and deception,” under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d).5 Opposer requests that
registration therefore be refused.
Applicant filed an answer to the notice of opposition
denying the salient allegations contained in the notice of
opposition.
The record consists of the pleadings and the file of
the involved application. In addition, opposer filed the
deposition testimony of himself, with exhibits, as well as
the deposition testimony of Mr. Manuel Osorio, owner of BC
Surf Shop, with exhibits. The exhibits attached to
opposer’s deposition include, inter alia, opposer’s pleaded
registrations.6 Applicant did not take testimony or offer

4 Issued November 24, 1992, renewed.
5 Opposer also cites to Section 2(a), but does not set forth a
legally cognizable claim under that section. Furthermore,
opposer only argues the ground of priority and likelihood of
confusion in his trial brief.
6 The pleaded registrations are of record by virtue of opposer
submitting copies of the registrations obtained from the TESS
Opposition No. 91186089

4
any evidence during its assigned trial period. Opposer
filed a trial brief and applicant did not.
Standing and Priority
Because opposer properly made his pleaded registrations
of record, opposer has established his 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). The
pleaded registrations of record also serve to establish
opposer’s Section 2(d) priority of use. King Candy Co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
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).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

database of the USPTO. Research In Motion Ltd. v. NBOR Corp., 92
USPQ2d 1926, 1928 (TTAB 2009).

Opposition No. 91186089

5
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
With respect to the parties’ marks, we find the literal
elements of both marks, BEACHFOOT and BEACH FEET, to be very
similar despite the letter stylization differences.[but if
you’re talking about the “literal” portion, you’re talking
about the words without stylization, aren’t you? The
stylization is quite different, although neither is highly
distinctive, and the differences are certainly outweighed by
the similarities in the wording itself.] To the extent that
both marks suggest beach-related goods, they essentially
have the same connotation, but for applicant’s mark being in
the singular. We do not disregard the additional matter in
the marks and, as required, we consider the parties’ marks
in their totality. However, as to the design features in
the marks, we have often stated that a design portion in the
mark is usually accorded less weight than the literal
element(s) because it is the word portion of the mark that
consumers use to request and to identify a party’s products
or services. In re Dakin's Miniatures Inc., 59 USPQ2d 1593,
1596 (TTAB 2001); In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). In any event, we
find that to the extent the design portions in the marks
Opposition No. 91186089

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contribute to the overall commercial impressions of the
marks, they complement the literal elements. That is, while
the fanciful design of a surfer running in applicant’s mark
is clearly different (visually) from the curly wave designs
in opposer’s mark, each design is suggestive of a beach
atmosphere when viewed together with the literal portions of
the mark.
Ultimately, when considered in their totality, we find
the parties’ marks are highly similar. Accordingly, the du
Pont factor involving the level of similarity of the marks
weighs heavily in favor of opposer and finding a likelihood
of confusion.
This brings us then to our consideration of the
relationship, if any, between opposer's and applicant's
goods. Here, the identified goods of opposer and applicant
do not appear to be closely related at first impression, but
opposer has testified that both his particular “sandals” and
various items of “sports clothing” and applicant’s beach
towels will be found in a specific type of store, namely,
surf shops. In particular, opposed testified that his goods
are sold on the retail level through “surf shops or surf
apparel shops, footwear stores, department stores.” Licht
depos., p. 11. He further testified that the surf shops
that sell his goods will also sell “hard goods like
surfboards [and] beach towels.” Id. at 12. Opposer also
Opposition No. 91186089

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testified that he researched applicant’s company and was
able to obtain materials from their website that show that
applicant currently markets its towels through “surf-
oriented retailers in Australia” (Id. at 15) and that
applicant’s “target demographic” is similar to opposer’s,
namely, “young-minded people in a casual surf lifestyle – of
a casual surf lifestyle.” Id. at 16 (referencing Exhibits
6-8). In particular, opposer points to applicant’s website
that mentions applicant’s “large beach towels for young-
minded people” and that its brand “represents a casual surf
lifestyle driven form a board riding heritage.” Id.,
referencing Exhibit 8. Mr. Osorio, an owner of a surf shop
in California, corroborates opposer’s testimony to the
extent that he testified that his store actually carries
opposer’s BEACH FEET (and design) brand goods for sale in
addition to also selling beach towels. Osorio depos., p. 8-
9. Mr. Osorio also testified that his “primary” consumers
are “14 to 45-year-old men and women.” Id. at p. 8.
It bears repeating that applicant did not submit any
testimony or otherwise introduce any evidence. Thus,
opposer’s evidence has not been rebutted at any level by
applicant. And, at the very least, the record before us
shows that the parties’ goods are likely to be sold in the
same type of small retail stores, namely, surf shops, and
that the goods may be marketed to the same class of
Opposition No. 91186089

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consumers, that is, teens and younger adults interested in
surfing or the associated lifestyle. Ultimately, based on
the record before us, we find that consumers who are
familiar with opposer’s BEACH FEET (and design) on sandals,
swim wear and other sports clothing are likely to be
confused as to source upon encountering applicant's similar
mark, BEACHFOOT (and design), when used on “towels; beach
towels; bath towels.”
Decision: The opposition is sustained and registration
to applicant is refused.