GTFM, Inc.v.Fresh Body, LLC

Trademark Trial and Appeal Board

Jan 2, 2015

No. 91209621 (T.T.A.B. Jan. 2, 2015)

jk Mailed: January 2, 2015

Opposition No. 91209621
GTFM, Inc.
v.
Fresh Body, LLC

Before Cataldo, Wellington and Gorowitz.
Administrative Trademark Judges.

By the Board:
Fresh Body, LLC (“Applicant”) filed an application to register the mark
FRESH BODY FB and design (shown below; FRESH and BODY disclaimed) for
the following goods in International Classes 3 and 25, respectively:
non-medicated skin care preparations, namely, lotions;

clothing, namely, shirts, pants, shorts, sweatshirts, sportswear, in the
nature of sweat pants and tank tops.1

GTFM, Inc. (“Opposer”) filed a notice of opposition wherein it asserts 1)
likelihood of confusion pursuant to Trademark Act § 2(d), and 2) dilution

1 Application Serial No. 85451172, filed October 19, 2011, alleging a bona fide intent
to use the mark in commerce pursuant to Trademark Act § 1(b). The application
includes the following description of the mark: “The mark consists of the stylized
letters F and B inside two circles placed in between the words FRESH and BODY.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
Opposition No. 91209621

2
pursuant to Trademark Act § 43(c).2 Opposer alleges common law rights in
the marks “‘FB FUBU and Design’ and ‘FB’ in connection with “the design,
sale and distribution of clothing, footwear and headwear products” (Not of
Opp. para. 1-2), and alleges common law use prior to Applicant’s filing date
as follows (Not. of Opp., para. 4):
(S)ince prior to the filing date of Application Serial No. 85/451172
Opposer and its predecessor did use and have continuously used in
interstate commerce the mark FB and variations thereof in connection
with [clothing, footwear and headwear products].

Opposer also pleads ownership of a registration for the mark FB (standard
characters) for the following goods in International Class 25: footwear;
headwear; pants; shirts.3
In its answer, Applicant denied the salient allegations in the notice of
opposition, but admitted the portion of Paragraph 5 wherein Opposer alleges:
Both Applicant’s mark and Opposer’s mark contain the letters FB.
Opposer filed a motion for summary judgment with respect to
likelihood of confusion, and dilution.
By operation of the Board’s June 27, 2014 order granting the parties’
June 4, 2014 stipulated motion, the due date for Applicant to file its brief in

2 Opposer lists on the ESTTA filing cover sheet the claim of false suggestion of a
connection under § 2(a), but does not allege in its pleading the required elements of
the claim. A party may not obtain summary judgment on an issue that has not been
pleaded. See TBMP § 528.07 (2014). Accordingly, we construe the cross-motions as
concerning only the pleaded grounds. Any arguments directed toward the elements
of this unpleaded claim have been given no consideration except to the extent that
they also address the pleaded claims of likelihood of confusion and dilution.

3 Registration No. 3955072, issued May 3, 2011, asserting a date of first use
anywhere and date of first use in commerce of September 30, 1992.
Opposition No. 91209621

3
response to Opposer’s motion for summary judgment was reset to June 15,
2014. Applicant filed its brief in response on August 8, 2014, along with a
cross-motion on likelihood of confusion, and a motion for summary judgment
on Opposer’s standing. Opposer did not object to Applicant’s brief as
untimely, but instead responded to it on the merits. The Board will exercise
its discretion to give consideration to Applicant’s response and cross-motion.4
Accordingly, this proceeding is before the Board for consideration of the
cross-motions, which are fully briefed.5
ANALYSIS
Summary judgment is appropriate where the movant shows that there
is no genuine dispute as to any material fact and that it is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). A party asserting that a
fact cannot be true or is genuinely disputed must support its assertion by
either 1) citing to particular parts of materials in the record, or 2) showing
that the materials cited do not establish the absence or presence of a genuine
dispute, or that an adverse party cannot produce admissible evidence to
support the fact. See Fed. R. Civ. P. 56(c). A factual dispute is genuine if, on

4 Applicant must note, however, that the Board requires the parties to adhere to all
deadlines in this proceeding. Applicant should not expect the Board to entertain
untimely filings as a matter of course.

5 Applicant’s arguments in opposition to Opposer’s motion for summary judgment in
its October 2, 2014 reply brief (partially captioned “Applicant’s Reply in Further
Support of Applicant’s Brief (1) in Opposition to Opposer’s Motion for Summary
Judgment…”), constitute an impermissible surreply and have been given no
consideration. See Trademark Rules 2.127(a) and (e)(1).
Applicant’s substitute power of attorney, filed October 28, 2014, is noted.
Opposition No. 91209621

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the evidence of record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir.
1992).
The party seeking judgment in its favor carries the burden of proof.
See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). Merely because
both parties have moved for summary judgment does not necessarily mean
that there are no genuine disputes of material fact, and does not dictate that
judgment should be entered. See University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).
Evidence on summary judgment 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. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472.
The Board may not resolve genuine disputes as to material facts; it may only
ascertain whether genuine disputes as to material facts exist. See Lloyd’s
Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544. See
TBMP § 528.01 (2014), and cases cited therein.
Applicant’s Cross-Motion on Opposer’s Standing
To prevail on summary judgment or at trial, Opposer must establish
that it has a “real interest,” i.e., a direct and personal stake, in the outcome of

Opposition No. 91209621

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the proceeding, as well as a “reasonable basis” for its belief of damage. See
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185 (CCPA 1982). The Court of Appeals for the Federal Circuit has
enunciated a liberal threshold for determining standing. See Ritchie v.
Simpson, supra at 1030. See also Jewelers Vigilance Committee Inc. v.
Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988).
Opposer did not make its pleaded Registration No. 3955072 of record
with its notice of opposition pursuant to Trademark Rule 2.122(d)(1).
However, with its summary judgment motion, Opposer attached the
declaration of its General Counsel and President of the International
Division, Lawrence Blenden, that includes, as an exhibit, a photocopy of the
original registration certificate for its pleaded registration. Mr. Blenden
attests that the pleaded registration “remains valid, subsisting, and
uncancelled” (Blenden decl., para. 7, Exh. D). Mr. Blenden also attests to
Opposer’s ownership (and includes printouts from TESS6) of the following
three unpleaded registrations for goods in International Class 25:
1) Registration No. 2065987, issued May 27, 1997, for the mark FB
FUBU (stylized; shown below) for “men's, women's and children's
clothing, namely, sweatshirts, shirts, jeans, jackets, coats,
sweatpants, slacks, suits, hats, headbands, visors, caps, dresses,
shoes, sneakers, boots, wristbands, socks, T-shirts, belts,
undergarments, neckties, dress shirts, collared shirts, rugby shirts,
knit shirts, shorts and sandals” (Blenden decl., para. 4, Exh. A);

6 TESS is the Office’s Trademark Electronic Search System. See TBMP § 317 (2014).
Opposition No. 91209621

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2) Registration No. 2374472, issued August 8, 2000, for the mark FB
(stylized; shown below) for “clothing, namely, shirts, caps, pants,
and footwear” (Blenden decl., para. 5, Exh. B); and

3) Registration No. 4053456, issued November 8, 2011, for the mark
FB LEGACY (standard characters) for “pants; shirts” (Blenden
decl., para. 6, Exh. C).

Although Opposer’s pleaded registration has not been properly
introduced, Mr. Blenden’s declaration, including Exhibit D (the certificate for
Opposer’s pleaded registration) may be considered for purposes of standing.
The declaration, with exhibits that also include the three unpleaded
registrations for marks that include “FB” and cover clothing goods, suffice to
establish Opposer’s standing to bring this proceeding. See, e.g., Lipton
Industries, Inc. v. Ralston Purina Company, 213 USPQ at 185 (CCPA 1982).7

7 Applicant argues that Opposer cannot demonstrate a reasonable belief of damage
because 1) Opposer cannot show that its FB mark is famous, 2) Opposer’s alleged
rights do not relate to Class 3 goods, 3) Applicant already has a registration for the
FB portion of its FRESH BODY FB mark, and 4) there has been no actual confusion
and Opposer has not alleged actual confusion. (Applicant’s brief, p. 6). However,
none of Applicant’s arguments negate Opposer’s basis for its standing to bring this
proceeding.
In particular, we note Applicant’s argument that Opposer lacks standing because
Applicant owns Registration No. 3939616 for the mark FB for “non-medicated
skin lotion” in International Class 3. In its answer Applicant did not plead the
affirmative defense of a prior registration. See Morehouse Mfg. Corp. v. J. Stricklend
and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969). Applicant did not move to
Opposition No. 91209621

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In view of these findings, summary judgment is granted in favor of
Opposer with respect to Opposer’s standing.
Cross-Motions on Opposer’s § 2(d) claim
Priority
As noted above, Opposer’s submission of a declaration that includes a
photocopy of the original registration certificate of its pleaded registration
(Blenden decl., para. 7, Exh. D) does not properly make the pleaded
registration of record for purposes of summary judgment. See Trademark
Rule 2.122(d)(1); TBMP § 528.05(d) (2014). Unless and until Opposer makes
the registration of record, it cannot rely on any rights it may have based on
its pleaded ownership. For example, had Opposer properly made the pleaded
registration of record, this would remove priority as an issue to be proved
with respect to the goods covered in the pleaded registration vis-à-vis those
identified in the involved application. See Syngenta Crop Protection Inc. v.
Bio-Chek LLC, 90 USPQ2d 1112, 1118-19 (TTAB 2009), citing King Candy
Co. v. Eunice King’s Kitchen, Inc., 182 USPQ 108 (CCPA 1974).8

amend its answer to allege the affirmative defense, and Opposer did not respond on
the merits to Applicant’s reference to the registration.
A party may not defend against a motion for summary judgment by asserting an
unpleaded claim or defense. See Blansett Pharmacal Co. v. Carmrick Laboratories
Inc., 25 USPQ2d 1473, 1477 (TTAB 1992). Accordingly, we have given no
consideration to Applicant’s reliance on its earlier registration. In any event, such
reliance does not defeat Opposer’s showing of standing.

8 At trial, if Opposer relies on its pleaded registration to prove priority, Opposer
must prove its ownership thereof by making its pleaded registration properly of
record, that is, by establishing both the current status of and title to the registration
during its assigned testimony period in one of the manners set forth in Trademark
Opposition No. 91209621

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With respect to Opposer’s asserted common law rights in the marks
“‘FB FUBU and Design’ and ‘FB’ in connection with “the design, sale and
distribution of clothing, footwear and headwear products,” it must prove
priority. In his declaration, Mr. Blenden asserts that “[S]ince at least
September, 1992, if not before, GTFM or its predecessors have used the FB
FUBU and FB marks in connection with the sale and advertising of its
products” (Blenden decl., para. 2). This single statement, without more
specificity and/or corroborating materials, is insufficient to find common law
priority as a matter of law.
In view of the findings above, Opposer’s motion for summary judgment
is denied to the extent that its pleaded registration is not properly of record
and it has not established priority with respect to its asserted common law
rights.
Likelihood of confusion
For either party to prevail on summary judgment, there must be a
demonstration that there is no genuine dispute with respect to whether the
contemporaneous use of the parties' respective marks on their respective
goods would be likely to cause confusion, mistake or to deceive consumers
regarding the source of the goods. See Hornblower & Weeks, Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
Consideration of this issue in the context of summary judgment motions

Rules 2.122(d)(1) and (d)(2). See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc.,
182 USPQ at 110. See also TBMP § 704.03(b)(1)(A) (2014).
Opposition No. 91209621

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involves an analysis of all of the probative facts in evidence that are relevant
to the thirteen factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont factors”). See also, M2
Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1946 (Fed. Cir. 2006); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 UPSQ2d 1201,
1203 (Fed. Cir. 2003).
We look to whether there are genuine disputes with respect to any of
these factors which would be material to a decision on the merits. Two key
factors are the degree of similarity of the parties’ marks and the degree to
which their respective goods are related. See In re Viterra Inc., 101 USPQ2d
1905, 1908 (Fed. Cir. 2012).
Regarding the appearance and commercial impression of the marks,
Opposer argues that FB is dominant and significant in both parties’ marks,
that the stylization of Applicant’s mark draws attention to the FB element
therein, and that FRESH BODY is merely Applicant’s company name.
For its part, Applicant argues that consumers perceive FRESH BODY
as the dominant and immediately discernible feature of its mark, that the
marks are phonetically different because FB is unpronounceable, and that
consumers see FB as the initials for FRESH BODY (Applicant’s brief, p. 17-
19).
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On this record, neither party has carried its burden of demonstrating
that there is no genuine dispute with respect to the similarity or dissimilarity
in the marks. At a minimum, there is a genuine dispute as to whether the
marks create the same or different overall commercial impressions in the
minds of consumers for the goods.
With respect to the relatedness of the goods, Opposer relies on 38
third-party registrations (TESS printouts) that cover clothing in Class 25 and
lotions in Class 3, to show that these goods are related and may emanate
from a single source (Blenden decl., para. 19, Exh I).
Regarding this du Pont factor, Applicant relies on a misplaced
argument that it has priority for the Class 3 goods (Applicant’s brief, p. 19).9
On this record, and comparing Applicant’s goods as they are identified
in its application, and Opposer’s goods as identified in its pleaded
registration, neither party has carried its burden of demonstrating a lack of
genuine dispute. At a minimum, the record reflects that a genuine dispute
exists regarding the material issue of whether Applicant’s International
Class 3 goods and Opposer’s clothing goods are related such that confusion as
to source is likely.
For completeness, we note that there are genuine disputes that remain
for trial with respect to the other du Pont factors on which the parties set
forth arguments. Of particular note, inasmuch as Applicant repeatedly

9 In adjudicating a § 2(d) claim, the issue of likelihood of confusion is separate and
distinct from the issue of priority.
Opposition No. 91209621

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argues that Opposer has not demonstrated actual confusion, we stress that
Opposer is not required to prove actual confusion in order to show that there
is no genuine dispute as to likelihood of confusion. See Hunter Indus., Inc. v.
Toro Co., 110 USPQ2d 1651 (TTAB 2014); Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983).
Similarly, at trial the Board will view the absence or presence of actual
confusion as one of several du Pont factors relevant to likelihood of confusion.
See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d
1375, 1380 (Fed. Cir. 2002).
In view of these findings, the cross-motions for summary judgment
are denied with respect to likelihood of confusion.10
Cross-Motions on Opposer’s Dilution Claim
Our primary reviewing court, the Court of Appeals for the Federal
Circuit, has set forth the following four elements a plaintiff must prove in
order to prevail on a claim of dilution by blurring in a Board proceeding:
1) that plaintiff owns a famous mark that is
distinctive;
2) the defendant is using a mark in commerce that
allegedly dilutes the plaintiff's famous mark;

10 Applicant argues that there is no likelihood of confusion because the examining
attorney approved its mark for publication (Applicant’s brief, p. 20). The point lacks
merit. The Board is not bound by the decisions of examining attorneys during ex
parte examination of an application. See, e.g., West Florida Seafood, Inc. v. Jet
Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1664 (Fed. Cir. 1994); Cineplex Odeon
Corp. v. Fred Wehrenberg Circuit of Theatres Inc., 56 USPQ2d 1538, 1541 (TTAB
2000).

Opposition No. 91209621

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3) the defendant's use of its mark began after the
plaintiff's mark became famous; and
4) the defendant's use of its mark is likely to cause
dilution by blurring.
Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1723-4 (Fed. Cir. 2012). In this case, because the application is based
Applicant’s allegation of a bona fide intent-to-use the mark in commerce,
Opposer’s burden is to show that its mark became famous prior to the filing
date or constructive use date of Applicant’s application. See Toro Co. v.
ToroHead Inc., 61 USPQ2d 1164, 1174 (“We hold that in the case of an
intent-to-use application, an owner of an allegedly famous mark must
establish that its mark had become famous prior to the filing date of the
trademark application or registration against which it intends to file an
opposition or cancellation proceeding.”). See also Midwestern Pet Foods Inc.
v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439
(Fed. Cir. 2012).
Accordingly, to prevail on summary judgment, a party must
demonstrate that there is no genuine dispute as to the four elements set forth
above.
Arguing that its mark is famous and was famous prior to October 19,
2011, Opposer’s declarant provides, inter alia, gross retail sales in the United
States of its FUBU, FUBU FB and FB branded goods for 1998 through 2004,
approximate United States retail sales of goods bearing the FB mark for 1994
through 2012, and worldwide promotion expenditures for goods bearing the
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FB mark for 1994 through 2010, of which 80% for each year was for the FB
brand in the United States (Blenden decl., para. 8-11), the two-page entry for
FUBU from Wikipedia (Blenden decl., para. 16, Exh G), and information
concerning celebrities who wear and promote Opposer’s clothing (Blenden
decl., para. 17-18).11
Applicant argues that Opposer’s declaration and evidence are unclear
as to whether its figures regarding use, promotion and sales relate to the FB
mark, and not FUBU, FB FUBU, or FB in combination with other terms. It
argues that the sales evidence is insufficient to prove fame, and that
Opposer’s sales and promotional expenditures have consistently decreased
over time. To show that Opposer cannot show fame because it cannot claim
exclusive rights in its FB mark, Applicant introduces the TESS printouts for
50 third-party registrations for the mark FB which cover a wide array of
goods and services in various international classes (Applicant’s brief, p. 8,
Exh. B).
On this record, there is a genuine dispute with respect to whether
Opposer’s pleaded mark, FB, is famous. At a minimum, there is a dispute

11 Opposer argues that in unrelated Opposition No. 91124582 the Board held that
FUBU is a strong and famous mark. The point is inapposite. In that opposition, the
Board adjudicated only a § 2(d) claim. Fame for likelihood of confusion purposes and
fame for dilution purposes are distinct concepts. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1694, citing The Toro
Co. v. ToroHead, Inc., 61 USPQ2d at 1170. In addition, a plaintiff asserting that a
pleaded mark is famous must make a showing of fame on the record of that case,
and may not rely upon the Board’s finding of fame in another proceeding involving a
different defendant.

Opposition No. 91209621

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regarding whether Opposer’s mark FB, in particular, has achieved fame in
the United States such that it is widely recognized by consumers as a
designation of Opposer as the source of its clothing products.
In view of these findings, the cross-motions for summary judgment
with respect to dilution are denied.12
Schedule
Proceedings are resumed. Remaining trial dates are reset as follows:
Plaintiff's 30-day Trial Period Ends 3/9/2015
Defendant's Pretrial Disclosures due 3/24/2015
Defendant's 30-day Trial Period Ends 5/8/2015
Plaintiff's Rebuttal Disclosures due 5/23/2015
Plaintiff's 15-day Rebuttal Period Ends 6/22/2015

In each instance, a copy of the transcript of testimony, together with copies
of documentary exhibits, must be served on the adverse party within thirty days
after completion of the taking of testimony. Trademark Rule 2.125. Briefs shall
be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing
will be set only upon request filed as provided by Trademark Rule 2.129.

12 The evidence submitted in connection with the motions for summary judgment is
of record only for consideration of those motions. To be considered at final hearing,
any such evidence must be properly introduced in evidence during the appropriate
trial period. See, e.g., Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433,
1438 n.14 (TTAB 2007); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28
USPQ2d 1464 (TTAB 1993).
Also, the fact that we have identified certain issues that are in dispute should not
be construed as a finding that these are necessarily the only issues which remain for
trial.