Gulfstream Aerospace Corporationv.Gulfstream Unsinkable Boats, LLC

Trademark Trial and Appeal Board

Oct 21, 2019

92065548 (T.T.A.B. Oct. 21, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 21, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Gulfstream Aerospace Corporation
v.
Gulfstream Unsinkable Boats, LLC
_____

Opposition No. 91233257
Cancellation No. 92065548
_____

Roger P. Furey, Terence P. Ross and Michael R. Justus of Katten Muchin Rosenman
LLP for Gulfstream Aerospace Corporation.

Dean A. Kent of Trenam Law
for Gulfstream Unsinkable Boats, LLC.
_____

Before Kuhlke, Cataldo and Kuczma,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Gulfstream Unsinkable Boats, LLC (Defendant) seeks registration on the
Principal Register of the standard character marks GULFSTREAM YACHTS
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(YACHTS disclaimed)1 and GULF STREAM YACHTS (YACHTS disclaimed)2 both
for “boats,” in International Class 12.
In addition, Defendant owns a registration on the Principal Register of the
standard character mark GULFSTREAM UNSINKABLE BOATS (UNSINKABLE
BOATS disclaimed) for “boats,” in International Class 12.3
Gulfstream Aerospace Corporation (Plaintiff) filed a notice of opposition to the
registration of Defendant’s applications and a petition to cancel Defendant’s
registration on the ground that, as used in connection with Defendant’s goods, the
marks so resemble Plaintiff’s previously used and registered marks discussed below
for aircraft and related products and services, as to be likely to cause confusion under
Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).4 Amended Not. of Opp. and
Amended Pet. Canc., 14 TTABVUE.5 Proceedings were consolidated after the original
answers were filed. 5 TTABVUE.

1 Application Serial No. 87097061 filed on July 8, 2016 under Section 1(a), 15 U.S.C.
§ 1051(a), based on allegations of first use and use in commerce on June 13, 2016.

2 Application Serial No. 87099004 filed on July 11, 2016 under Section 1(b), 15 U.S.C.
§ 1051(b), based on an allegation of a bona fide intention to use the mark in commerce.

3 Registration No. 5118181 filed on May 9, 2016, under Section 1(a), 15 U.S.C. § 1051(a),
based on allegations of first use and use in commerce on May 6, 2016, issued on January 10,
2017.

4 Plaintiff also pleaded claims of dilution, lack of use, lack of bona fide intent to use, and
fraud; however, the likelihood of confusion claim has been bifurcated as discussed below.

5 Citations are to the Board’s online docketing system TTABVUE in Opposition No. 91233257
unless otherwise noted. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014).
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Plaintiff pleaded and attached to both its Notice of Opposition and Petition for
Cancellation Trademark Status & Document Retrieval (“TSDR”) printouts of the
following registrations:
Registration No. 1162644 for the typed6 mark
GULFSTREAM for “airplanes,” in International Class 12,
issued on July 28, 1981, renewed;
Registration No. 2297843 for the typed mark
GULFSTREAM for “berets, caps, cardigans, hats, knit shirts,
neckties, raincoats, rainwear, sport shirts, sweaters, T-shirts,
visors, wind resistant jackets,” in International Class 25,
issued on December 7, 1999, renewed;
Registration No. 2297845 for the typed mark
GULFSTREAM for “albums for photographs, ball-point
pens, banners made of paper, guide books in the field of
airplanes and aviation, reference books in the field of
airplanes and aviation, bumper stickers, calendar desk
pads, calendars, greeting cards, note paper, coasters made
of paper, color prints, diaries, gift cards, gift wrapping
paper, lithographs, magazines featuring airplanes and
aviation, paper napkins, paintings, pens, postcards, rubber
stamps,” in International Class 16, issued on December 7,
1999, renewed;
Registration No. 2305715 for the typed mark
GULFSTREAM for “beverage glassware, coffee cups,
plastic cups,” in International 21, issued on January 4,
2000, renewed;
Registration No. 2313514 for the typed mark
GULFSTREAM for “model airplanes, stuffed toy animals,
golf bag tags,” in International Class 28, issued on
February 1, 2000, renewed;
Registration No. 4295794 for the standard character mark
GULFSTREAM for “aircraft manufacturing, repair,
refurbishment and maintenance services,” in International

6 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (October
2018).

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Class 37, “flight safety, aircraft maintenance and technical
training classes related to aircraft,” in International Class
41, “aircraft inspection services,” in International Class 42,
issued on February 26, 2013, Sections 8 and 15 combined
declaration accepted and acknowledged;
Registration No. 4373063 for the standard character mark
GULFSTREAM FAST for “Field and airborne support
services for private jets, namely, providing information and
advice in the field of aircraft maintenance and repair,” in
International Class 37, issued on July 23, 2013, Sections 8
and 15 combined declaration accepted and acknowledged;
and
Registration No. 4450312 for the standard character mark
GULFSTREAM A GENERAL DYNAMICS COMPANY
(COMPANY disclaimed) for “aircraft repair, refurbishment
and maintenance,” in International Class 37, issued on
December 17, 2013.
In each of the consolidated proceedings Applicant admits that:
• The web domain www.gulfstream.com is associated with Plaintiff;
• Plaintiff’s social media accounts appear to exist and have followers;
• Defendant is a limited liability company of Florida;
• Defendant’s photo specimens were taken at a warehouse; and
• Defendant was represented by counsel.
Amended Answer ¶¶ 9, 10, 23, 30, 31, 22 TTABVUE 3-4; see also Pet. Canc. 92065548,
7 TTABVUE.
Applicant denies the remaining salient allegations.
I. Bifurcation and Accelerated Case Resolution (“ACR”)
After discovery closed, Plaintiff filed a motion for summary judgment, which was
denied. 49 TTABVUE. On March 12, 2019, the Board held a teleconference with the
parties’ counsel wherein the parties “agreed to convert their earlier summary
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judgment briefs and evidence submitted therewith into a bifurcated final decision on
the likelihood of confusion claim through ACR.” 52 TTABVUE 1. The parties allowed
for and filed supplemental briefs with additional exhibits and testimony by affidavit
or declaration (subject to cross-examination or objection by the non-offering party).
See TRADEMARK TRIAL AND APPEAL BOARD MANUAL FOR PROCEDURE (“TBMP”)
§§ 702.04 and 705. The parties further stipulated that the “Board may resolve any
genuine disputes of material fact presented by the summary judgment record and
supplemental briefs or which may be discovered by the panel considering the case.”
52 TTABVUE 2. See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d
1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (“In
order to take advantage of any form of ACR, the parties must stipulate that the Board
may resolve any genuine disputes of material fact in the context of something less
than a full trial.”). See also Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602
(TTAB 2018) (describing summary judgment ACR model); TBMP §§ 528.05(a)(2),
702.04, 705. As in a traditional Board proceeding, the burden of proof remains with
Plaintiff, which must establish its case by a preponderance of the evidence. TBMP §
702.04(a).
II. Evidentiary Issues
Plaintiff renewed and expanded its objections to the Keegan and Flannery reports.
We maintain the evidentiary rulings in the order denying the initial motion for
summary judgment as set forth below:
With respect to [Plaintiff’s] objection to the reports of
[Defendant’s] witnesses, Mark Keegan and Paul Flannery,
the objection is sustained to the extent either witness has
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given his opinion on the ultimate question of whether there
is a likelihood of confusion in this case. … [W]e have given
no weight to Mr. Keegan’s conclusion that [Plaintiff’s]
Eveready survey findings “do not provide any evidence
upon which likelihood of confusion can be evaluated in this
matter.” The Eveready model survey is “a widely used and
well-accepted format for surveys.” We treat technical
defects, such as the sample size, as affecting the probative
weight of the survey, rather than its admissibility. …
[Plaintiff’s] objection to the Flannery report is overruled to
the extent that Mr. Flannery has provided his opinion
regarding subsidiary factual questions such as the nature
of the yacht market, the yacht buying process, and the
degree of care exercised in purchasing the goods. It is
within the Board’s discretion to consider such information
from a witness with specialized knowledge or experience in
the industry. … We also note that [Defendant] attacks
[Plaintiff’s] web page “printouts from brokers offering both
boats and airplanes under the same mark” as hearsay.
However, the documents are admissible and probative for
what they show on their face, not for the truth of what is
printed therein.
49 TTABVUE 10-12 (citations omitted).
We further note that we have given the testimony and accompanying evidence
their due weight, keeping in mind any objections. Luxco, Inc. v. Consejo Regulador
del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017).
III. RECORD
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. §2.122(b), the files of the applications subject to the notice of opposition and
registration subject to the petition for cancellation. Pursuant to the ACR Stipulation,
the parties also admitted the following evidence from their respective briefs on
Plaintiff’s motion for summary judgment and from their ACR Supplemental Briefs.
Plaintiff’s Testimony and Evidence:
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Declaration of Jeannine Haas, Opposer’s Senior Vice
President and Chief Marketing Officer, and accompanying
exhibits, including 10-K filings, excerpts from JetNet IQ
survey reports, excerpt from online publications, awards
from the Federal Aviation Administration and U.S.
National Aeronautic Association, printouts from the
Internet Movie Plane Database, printouts of lyrics from
songs from online sources, excerpts from the book The King
of Torts, excerpt from Britannica Concise Encyclopedia,
excerpts from national publications and magazines
showing unsolicited coverage and advertisements,
photographs of racecars branded with the mark
GULFSTREAM, photographs of signage with
GULFSTREAM, screenshots from Plaintiff’s Instagram,
Facebook, and Twitter accounts, Plaintiff’s online store
offering GULFSTREAM branded goods, photographs from
yacht shows;7
Declaration of Renee Lessner, a paralegal for Plaintiff’s
outside counsel, and accompanying exhibits, including
printouts of excerpts from online publications, an excerpt
from Urban Dictionary, screenshot of a music video, expert
report of Hal Poret, expert report of Paul Flannery,
excerpts from Huntington James’ discovery deposition,
excerpts from Mark Keegan’ discovery deposition, excerpts
of Defendant’s website, excerpts from the website of
Plaintiff’s parent company General Dynamics Corporation,
printouts from third-party websites promoting and offering
for sale boats and private aircraft or cross promoting such
goods, excerpts from online publications;8
Declaration of Lisa Hoffman, a paralegal for Plaintiff’s
outside counsel, and accompanying exhibits, consisting of
USPTO Trademark Electronic Search System (TESS)
printouts of third-party use-based registrations that cover
aircraft and watercraft;9

7 37, 38, 39, 44 TTABVUE. 25-31 TTABVUE confidential.
8 40, 41 TTABVUE; 48 TTABVUE 14-54. 32, 33 TTABVUE confidential.
9 42 TTABVUE. 34 TTABVUE confidential.
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Declaration of Ricardo Strul, Vice President and CFO of
Show Management, an event production company, and
accompanying exhibits;10 and
Declaration of Joni Jones, legal executive assistant for
Plaintiff’s outside counsel, and accompanying exhibits
consisting of TESS printouts of third-party use-based
registrations that cover watercraft and one or more of other
goods, including clothing, glassware and stickers, and
printouts of third-party websites promoting and offering
for sale both watercraft and clothing, related accessories,
or glassware.11
Defendant’s Testimony and Evidence:
Expert Report of Mark Keegan;12
Expert Report of Paul Flannery;13
Discovery deposition of Huntington James, Applicant’s
owner, President and CEO;14 and
Jeannine Haas discovery deposition.15
The Board notes that the parties have designated some submissions of testimony
and evidence as confidential and filed under seal. We discuss only in general terms
the relevant evidence submitted under seal, when necessary. However, to the extent
any testimony and evidence is improperly designated as confidential, the Board will
disregard the confidential designation when appropriate. See Trademark Rule
2.116(g), 37 C.F.R. § 2.116(g).

10 43 TTABVUE. 35 TTABVUE confidential.
11 53 TTABVUE 29-204. 54 TTABVUE.
12 47 TTABVUE 17-41.
13 47 TTABVUE 42-48.
14 47 TTABVUE 49-228.
15 56 TTABVUE. 55 TTABVUE confidential.
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IV. STANDING AND PRIORITY
Plaintiff’s pleaded and proven registrations in these consolidated proceedings,
establish its standing. In addition, with regard to the Opposition proceeding priority
is not in issue with respect to the marks and goods in Plaintiff’s registrations. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982);
and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974).16
With regard to the cancellation proceeding, priority is at issue and Plaintiff has
the burden of proving its priority. See Brewski Beer Co. v. Brewski Bros., Inc., 47
USPQ2d 1281 (TTAB 1998). Under Section 7(c) of the Trademark Act, 15 U.S.C.
§ 1057(c), a party may rely upon the filing date of the application underlying its
registration for purposes of priority as its constructive use date. See Cent. Garden &
Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Brewski Beer, 47
UPSQ2d at 84, Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844
(TTAB 1995) (parties may rely on the constructive use i.e. filing dates for purposes of
priority). The filing dates of the underlying applications of Petitioner’s pleaded
registrations, precede the May 9, 2016 filing date of the underlying application of

16 In an opposition, introduction of an opposer’s pleaded registration does not prove priority;
it eliminates the need to prove priority with respect to the mark and goods in the registration.
See King Candy, 182 USPQ at 110.
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Defendant’s subject registration. Defendant has not submitted any evidence
demonstrating use of its mark prior to May 9, 2016. Accordingly, Plaintiff has
established its priority of use against the subject registration.
Defendant does not dispute Plaintiff’s standing or priority of use. 47 TTABVUE 6.
V. LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). Two key considerations are the similarities between the marks and the
similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). In addition to the similarities
or dissimilarities of the marks and goods, the parties also presented evidence and
argument on the strength of Plaintiff’s mark, channels of trade, purchasing
conditions, variety of Plaintiff’s goods, actual confusion and bad faith.
For purposes of our likelihood of confusion analysis, we focus our analysis on
Plaintiff’s mark in pleaded and proven Registration No. 1162644, summarized above.
Cf. In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Strength of Plaintiff’s Mark
Before we compare the marks, we address the fifth and sixth du Pont factors to
determine the strength of the marks. In the likelihood of confusion context, “fame”
under the fifth du Pont factor “varies along a spectrum from very strong to very
weak.” Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046,
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103 USPQ2d 1435, 1440 (Fed. Cir. 2012) (quoting Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005)). A famous mark is one that has extensive public recognition and renown.
Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002). Fame, if it exists, plays a dominant role in the likelihood of confusion
analysis. Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). In view of the extreme deference that is accorded to a
famous mark in terms of the wide latitude of legal protection it receives, and the
dominant role fame plays in the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to prove it clearly. The commercial strength
of a mark “may be measured indirectly, among other things, by the volume of sales
and advertising expenditures of the goods or services traveling under the mark, and
by the length of time those indicia of commercial awareness have been evident.” Bose
Corp. v. QSC Audio Prods., Inc., 63 USPQ2d at 1305. Under the sixth du Pont factor,
a mark’s commercial strength may be curtailed by third-party use of similar marks
with similar goods or services. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674-75 (Fed. Cir. 2015).
GULFSTREAM is arbitrary for use in connection with Plaintiff’s goods, and
therefore constitutes a conceptually strong mark, see Palm Bay, 73 USPQ2d at 1692
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(“VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus
conceptually strong as a trademark”).
Turning to the commercial strength of the GULFSTREAM mark, Plaintiff and its
predecessor have used GULFSTREAM for aircraft since 1959 and since the 1970’s
Plaintiff has expanded its use to other related products and services. Haas Dec. ¶¶ 2-
3, 37 TTABVUE 3. Plaintiff owns many federal trademark registrations for the mark
GULFSTREAM, several of which are incontestable. Plaintiff’s revenue and
advertising figures have been submitted as confidential, suffice it to say they are
substantial. Id. ¶¶ 8-9, 37 TTABVUE 4; 25 TTABVUE. Plaintiff also owns a large
share of the private jet market. Id. ¶ 7, 27 TTABVUE 4. Plaintiff’s GULFSTREAM-
branded aircraft and other products and services are the subject of unsolicited media
coverage, including The New York Times, The Wall Street Journal, Forbes, Business
Insider and The Washington Post. Lessner Dec. ¶ 2-3, 40 TTABVUE 3-5; Haas Dec.
¶ 22, 37 TTABVUE 7. GULFSTREAM aircraft have also been featured in movies,
television shows, books, and popular songs for many years. GULFSTREAM aircraft
are reported as owned and touted by celebrities. Lessner Dec. ¶ 7, 40 TTABVUE 10-
11. The GULFSTREAM products have received several awards. It holds the
Guinness World Record for “Fastest civil aircraft” (relating to the GULFSTREAM
G650 in 2010) and for the “Largest single e-commerce transaction” (relating to Mark
Cuban’s purchase of a GULFSTREAM V aircraft on eBay in 1999). Haas Dec. ¶ 16
Exh. 7, 37 TTABVUE 7, 179-185. The GULFSTREAM has received several annual
“Best of the Best” awards from the Robb Report (a luxury lifestyle publication on jets,
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yachts, high fashion) and was awarded the “Private Jet Design” from The
International Yacht & Aviation Awards in 2017 and 2018. Id. at ¶¶ 11, 12, 37
TTABVUE 5. Plaintiff also holds “dozens of ‘city-pair’ speed records” and is a “two-
time winner (2003 and 2014) of the prestigious Robert J. Collier Trophy awarded by
the U.S. National Aeronautic Association.” Id. at ¶ 14, 37 TTABVUE 6. Plaintiff has
received numerous FAA Diamond Certificates of Excellence by the Federal Aviation
Administration. Id. ¶ 13, 37 TTABVUE 6. It has a high brand awareness based on
quarterly industry surveys from 2011-2017. Id. ¶ 10, 37 TTABVUE 5. Plaintiff also
engages in sponsorships and endorsements (NASCAR team, golfer Adam Scott, co-
branding of events during yacht shows). Id. ¶¶ 24-25, 37 TTABVUE 10. Plaintiff
maintains aircraft service and support facilities and prominently displays its
GULFSTREAM mark on signage in high traffic airports such as Dallas, Texas; Las
Vegas, Nevada; Long Beach, California; and West Palm Beach, Florida. Id. ¶ 26, 37
TTABVUE 11. Plaintiff widely licenses its GULFSTREAM mark to third-parties for
GULFSTREAM branded promotional items sold on its online store. Id. ¶ 28, 37
TTABVUE 11. Plaintiff also maintains an active and ongoing enforcement program
to protect its trademark rights. Id. ¶ 29, 37 TTABVUE 11.
Defendant seeks to narrow Plaintiff’s scope of protection based on the declaration
of Paul Flannery. Mr. Flannery is the Director of Sales for a yacht brokerage company
and is the President of the International Yacht Brokers Association. Flannery Dec.
¶¶ 2, 5, 47 TTABVUE 42. Mr. Flannery’s reference to his awareness of a handful of
boats “offered for sale under a name that includes the word ‘Gulfstream’ or some
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variant of that word” has very little probative weight. Flannery Rept. ¶ 22, 47
TTABVUE 45. In addition, the examples of a handful of boats offered for sale on one
website is minimal and inconsequential. This evidence does not serve to shrink the
scope of protection to be accorded Plaintiff’s mark. We find Plaintiff’s mark is famous
in the aircraft industry and this factor weighs heavily in favor of Plaintiff.
B. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We now consider the similarity or dissimilarity of Defendant’s marks
GULFSTREAM YACHTS, GULF STREAM YACHTS and GULFSTREAM
UNSINKABLE BOATS, and Plaintiff’s mark GULFSTREAM compared in their
entireties in terms of appearance, sound, connotation and commercial impression. In
re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). “The
proper test is not a side-by-side comparison of the marks, but instead whether the
marks are sufficiently similar in terms of their commercial impression such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). Finally, “[a]s a mark’s fame
increases, the [Lanham] Act’s tolerance for similarities in competing marks falls.”
Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 22 USPQ2d at 1456 (“A strong mark
… casts a long shadow which competitors must avoid.”).
The first and prominent word(s) in Defendant’s marks is GULFSTREAM and
GULF STREAM. Palm Bay, 73 USPQ2d at 1692 (presence of the “strong distinctive
term [VEUVE] as the first word in both parties’ marks renders the marks similar”).
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Defendant acknowledges this fact. 56 TTABVUE 9. These terms are identical to the
entirety of Plaintiff’s mark GULFSTREAM. The space between GULF and STREAM
in the mark in Application Serial No. 87099004 does not create a different sound,
meaning or commercial impression and the slight difference in appearance does not
serve to distinguish the marks. Gastown Inc. of Delaware v. Gas City, Ltd., 187 USPQ
760 (TTAB 1975) (GAS CITY, with “GAS” disclaimed, likely to be confused with
GASTOWN); Seaguard Corp. v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB
1984) (SEA GUARD and SEAGUARD are “essentially identical”) and In re Best
Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be
little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically
identical”). The additional wording, YACHTS and UNSINKABLE BOATS, in
Defendant’s marks is generic or highly descriptive for the identified goods, “boats.” In
re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“[I]n
articulating reasons for reaching a conclusion on the issue of confusion, 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.”); see also In re Detroit Athletic Co., 128
USPQ2d at 1050 (affirming TTAB’s finding that the marks DETROIT ATHLETIC
CO. and DETROIT ATHLETIC CLUB are similar, and noting that “the non-source
identifying nature of the words ‘Co.’ and ‘Club’ and the disclaimers thereof constitute
rational reasons for giving those terms less weight in the analysis.”) Although, this
wording, having to do with boats, adds to the connotation of Defendant’s marks, and
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may underscore the association with the Gulf Stream ocean current,17 the common
term GULFSTREAM could evoke the same idea even with airplanes because it has
no other meaning. Overall, we find the marks to be very similar in appearance, sound,
connotation and commercial impression, and this du Pont factor weighs in favor of
likelihood of confusion.
C. Relatedness of the Goods and Services, Channels of Trade, Classes of
Purchasers
The goods and/or services do not have to be identical or even competitive in order
to find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498,
1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB
2009). We must consider not whether the actual goods and services are literally the
same, but rather whether the public will be confused as to their source. See Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the
goods in question are different from, and thus not related to, one another in kind, the
same goods can be related in the mind of the consuming public as to the origin of the
goods. It is this sense of relatedness that matters in the likelihood of confusion
analysis.”); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993);
Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA

17 We take judicial notice of the dictionary definition for GULFSTREAM, “a warm ocean
current flowing N from the Gulf of Mexico, along the E coast of the U.S., to an area off the SE
coast of Newfoundland, where it becomes the western terminus of the North Atlantic
Current.” Dictionary.com (www.dictionary.com) based on the Random House Unabridged
Dictionary (2019). The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed
format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

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1975); In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1270 (TTAB 2007). See also In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984). The nature and scope of a party’s goods or services must be determined on the
basis of the goods or services recited in the application or registration. See, e.g., In re
Detroit Athletic Co., 128 USPQ2d at 1052; Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Coach Servs.,
Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Sys., Inc.
v. Hous. Comps. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Defendant’s goods are “boats.” Plaintiff’s registrations are for “airplanes” “berets,
caps, cardigans, hats, knit shirts, neckties, raincoats, rainwear, sport shirts,
sweaters, T-shirts, visors, wind resistant jackets,” “albums for photographs, ball-
point pens, banners made of paper, guide books in the field of airplanes and aviation,
reference books in the field of airplanes and aviation, bumper stickers, calendar desk
pads, calendars, greeting cards, note paper, coasters made of paper, color prints,
diaries, gift cards, gift wrapping paper, lithographs, magazines featuring airplanes
and aviation, paper napkins, paintings, pens, postcards, rubber stamps,” “beverage
glassware, coffee cups, plastic cups,” “model airplanes, stuffed toy animals, golf bag
tags,” “aircraft manufacturing, repair, refurbishment and maintenance services,”
“flight safety, aircraft maintenance and technical training classes related to aircraft,”
“aircraft inspection services,” “field and airborne support services for private jets,
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namely, providing information and advice in the field of aircraft maintenance and
repair,” and “aircraft repair, refurbishment and maintenance.”
To demonstrate how their goods are related Plaintiff submitted several third-
party registrations for “boats” and “airplanes” (nearly 100), or some of Plaintiff’s other
registered goods such as clothing (over 60), under the same mark. For example, Reg.
No. 2788897 for the mark LOCKHEED MARTIN for jet aircraft and commercial and
military ships; Reg. No. 3716974 for the mark GO FAST for automobiles, airplanes,
boats, personal watercraft; Reg. No. 4119744 for the mark DORNIER and design for
seaplanes, airplanes, and boats; and Reg. No. 4635642 for the mark SPYDER
MOTORSPORTS and design for airplanes, boats. 42 TTABVUE 37-72. Plaintiff also
submitted website printouts from ten third-parties offering boats and airplanes for
sale. 40 TTABVUE 965-1074. In addition, Plaintiff submitted printouts from several
websites showing airplane and boat manufacturers who have partnered together to
cross-promote each other’s products to their overlapping customer bases. 40
TTABVUE 1075-1077; 41 TTABVUE 2-12.
Plaintiff’s goods ranging from aircraft to clothing and golf bag tags, are related to
Defendant’s boats in view of the circumstances surrounding the marketing of
Plaintiff’s and Defendant’s goods and the fame of Plaintiff’s mark which supports the
conclusion that purchasers would perceive that the parties’ goods are related. We find
these facts similar to those presented in Tiffany & Co. v. Classic Motor Carriages Inc.,
10 USPQ2d 1835 (TTAB 1989) where the Board found the defendant’s automobiles
to be related to the plaintiff’s jewelry. Here, the marketing to potential purchasers
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for Defendant’s boats and Plaintiff’s airplanes is focused on the luxury lifestyle aspect
of these goods and is directed to wealthy individuals. This association with a luxury
lifestyle pertains to both parties’ goods. In view of the fame of Plaintiff’s mark and its
association with a luxury lifestyle, consumers are likely to believe that Defendant’s
boats are associated with or sponsored by Plaintiff. This finding of relatedness is
further bolstered by Plaintiff’s extensive licensing program for use of its mark on a
variety of goods. See In re Sloppy Joe’s Int’l, Inc., 43 USPQ2d 1350, 1356 (TTAB 1997)
(“[T]he licensing of the names and/or likenesses of well known persons for use on
various goods and services is a common practice.”); In re Phillips-Van Heusen Corp.,
228 USPQ 949, 951 (TTAB 1986) (“The licensing of commercial trademarks for use
on ‘collateral’ products (such as clothing, glassware, linens, etc.), that are unrelated
in nature to those goods or services on which the marks are normally used, has
become a common practice in recent years.”).
With regard to the channels of trade and classes of consumers, because there are
no limitations as to these factors in the identifications in the applications and
registrations we must presume that they move in all normal channels of trade, and
that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v.
Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir.
2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no
authority to read any restrictions or limitations into the registrant’s description of
goods.”) The evidence shows that private airplanes and boats are advertised in the
same magazines and at the same trade shows and marketed to the same consumer
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group. Mr. James stated in his discovery deposition that he has seen aircraft
companies exhibiting at boat shows. 40 TTABVUE 684.
In view of the above, the du Pont factors of the similarity of the goods, the channels
of trade and classes of purchasers favor a finding of likelihood of confusion as between
the marks in Defendant’s applications and Plaintiff’s registrations.
D. Purchasing Conditions
In considering this factor, we must look at the goods as identified and base our
determination on the least sophisticated consumer. Stone Lion Capital Partners, LP
v. Lion Capital LLP, 110 USPQ2d at 1163 cited in In re FCA US LLC, 126 USPQ2d
1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based on the
least sophisticated potential purchasers.”). Although Defendant’s and Plaintiff’s
identifications of goods are unrestricted, the nature of Defendant’s goods “boats” and
Plaintiff’s “airplanes” would tend to indicate purchasers would exercise higher care
in their purchasing decisions. That said, much of Defendant’s argument and evidence
pertaining to a complex process to purchase its custom yachts, does not address all
types of boat purchasing conditions that are covered by its unlimited identification of
boats. This unlimited identification thus includes general consumers. The class of
purchasers is not restricted to persons possessing special knowledge or expertise,
including those purchasing any type of boat at a store, or post sale confusion.
Moreover, even sophisticated purchasers are not immune from trademark confusion.
Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011); In
re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983).
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Plaintiff argues that despite the high price of the goods, purchasers would still be
initially confused in what is otherwise a careful purchasing decision. The Board has
recognized the initial interest confusion theory as a form of likelihood of confusion
which is actionable. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d
1819 (TTAB 1989), aff’d on other grounds, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (Board found that the likelihood of initial interest, pre-sale confusion overcame
the sophisticated purchaser defense; on appeal, the Federal Circuit expressly avoided
reaching the issue of initial interest confusion). See generally J. T. McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 23:6 (5th ed. 2019). “The
sophistication of the purchasers in the purchasing scenario involved in this case is
not enough to overcome the likelihood that these purchasers will be confused at an
early stage in the buying decision.” Hrl Associates v. Weiss Associates, 12 USPQ2d at
1823. Thus, even if, as Defendant argues, purchasers would be informed during the
purchasing process that the boats are not manufactured or sponsored by Plaintiff, the
damage from likely confusion has already occurred.
As is the case in any inter partes proceeding involving likelihood of confusion, the
plaintiff has the burden of proof to show by a preponderance of the evidence that it is
entitled to prevail on its claim. Initial interest confusion, even when the marks are
similar, will not be assumed, but rather must be proven by the evidence. Here, as
discussed above, these goods are promoted at the same trade shows, in the same
publications and are linked as a mode of transportation for wealthy consumers. We
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find the evidence sufficient to establish likely initial confusion. In addition, these
goods are also susceptible to post sale confusion for the same reasons.
On this record, on balance we conclude that Defendant’s customers are not less
likely to be confused as a result of any higher level of care associated with boat or
airplane purchases. Accordingly, we conclude that the evidence bearing on the
sophistication of the potential purchasers fails to indicate a diminished likelihood of
confusion. This factor is neutral.
E. Variety of Goods and Services with which Plaintiff’s Mark is Used
The record establishes that Plaintiff has used and registered the GULSTREAM
mark with a wide variety of goods and services, including aircraft, clothing, toys,
glassware, providing aircraft repair, etc. While Plaintiff’s core goods and services are
airplanes and related airplane services, and the other goods are collateral goods
primarily sold in connection with Plaintiff’s airplane business and services related to
their repair and maintenance, we find this factor weighs slightly in its favor.
F. Actual Confusion
Plaintiff argues that actual confusion has occurred. Plaintiff points to the
following testimony from the discovery deposition of Mr. Huntington James:
A. I have and maybe four people out of, you know, 1,000
plus people I’ve talked to ask if there was any, you know,
relationship.
Q. Okay. Was that at boat shows?
A. I think a couple were at boat shows and a couple on the
phone.
Q. Okay. Were all four of those specifically to you or would
it have been to your other employee?
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A. Me.
Q. Okay. What specifically did the people say?
A. I don’t remember specifically, but it was along the lines
of is there any relationship.
Q. Okay. And were these individual customers or corporate
customers or military government-type customers?
A. Individual and one was an individual that said they
were calling on behalf of someone else, but it was kind of
suspicious since it was a call on my way to the – watch the
deposition of Mr. Flannery last week.
Q. It was last week?
A. Yes.
Q. And that was a phone call to you?
A. Yes.
Q. Okay. And do you recall what specifically that person
said last week?
A. They had a very fake-sounding foreign accent and they
asked if – I don’t remember the exact verbiage, but they
essentially asked do we also build a plane.
Q. That’s all they said? They called you up and said, do you
build a plane?
A. That’s why I said it seemed like a pretty suspicious call.
Q. Well, it wasn’t me, I’ll tell you that.
40 TTABVUE 713-715.
Defendant responds of the four instances one was “suspicious” and goes on to
undermine the remaining three instances by arguing that “[e]ven with any alleged
initial interest in actual consumer confusion, Applicant contends that there is no
actual likelihood of confusion based on the dissimilarity of the parties products, the
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number of similar marks in use for boating products, and the high degree of care
utilized by purchasers of custom yachts as set forth above.” 47 TTABVUE 14.
We do not consider Defendant’s argument “even with any alleged initial interest
confusion” to be a concession as to such confusion. While initial interest confusion
also supports a finding of likely confusion, this minimal and somewhat vague
testimony does not present instances upon which to base a finding of actual confusion.
We note however that evidence of actual confusion is not necessary to establish a
likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002). We find this factor to be neutral.
In connection with this factor, Plaintiff submitted the report and testimony of its
expert witness Hal Poret who conducted an “Eveready”18 survey on likelihood of
confusion. Lessner Dec. Exh. 9, 40 TTABVUE 500-648. We find that Mr. Poret is
qualified to conduct the survey as an expert in this case and the survey follows the
Eveready survey format, a widely used and well-accepted format for likelihood of
confusion surveys. Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., 115 USPQ2d
1816 (TTAB 2015). We find that it is reliable and has probative value on the issue of
likelihood of confusion and, as discussed above, we give no credit to Mr. Keegan’s
conclusions. Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006).
Mr. Poret’s report shows the results of his survey indicating that 16% to 19% percent
of the survey respondents expressed a belief that Defendant was associated with
Plaintiff or also made airplanes. This level of confusion is legally significant and

18 Named for a case in which it was used with approval, Union Carbide Corp. v. Ever-Ready,
Inc., 531 F.2d 366, 188 USPQ 623 (7th Cir. 1976), cert. denied, 191 USPQ 416 (1976).
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supports a finding of likely confusion. Anheuser-Busch v. Innovapak, 115 USPQ2d at
1832 (citing James Burrough, Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 192
USPQ 555, 565 (7th Cir. 1976)).
G. Bad Faith
Plaintiff argues Defendant was “well aware of [Plaintiff] and its GULFSTREAM
products many years prior to [Defendant’s] adoption of its virtually identical
GULFSTREAM and GULF STREAM marks” and that “jets and yachts are promoted
side-by-side at boat shows and in boat publications.” 36 TTABVUE 29. Plaintiff also
points to the timing of Defendant’s rebranding to the mark GULFSTREAM when it
began offering larger boats and promoting them as “the ultimate multipurpose yacht
tender.” Id. at 30. Plaintiff concludes that Defendant “made a deliberate choice to
reposition its business to penetrate the luxury market by adopting marks virtually
identical to [Plaintiff’s] famous mark for luxury aircraft sold in overlapping trade and
marketing channels to overlapping customers.” Id.
Bad faith, or intent to confuse, falls under the thirteenth du Pont factor “any other
established fact probative of the effect of use.” L.C. Licensing Inc. v. Berman, 86
USPQ2d 1883, 1890 (TTAB 2008). “[A] party which knowingly adopts a mark similar
to one used by another for related goods should not be surprised to find scrutiny of
the filer’s motive.” L’Oreal S.A. and L’Oreal USA, Inc. v. Marcon, 102 USPQ2d 1434,
1442 (TTAB 2012). “[W]hen there is evidence of an applicant’s intent to adopt a mark
that suggests to purchasers a successful mark already in use by another, the Board
may, and ought to, take into account that intent when resolving the issue of likelihood
of confusion when that issue is not free from doubt.” First International Services Corp.
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v. Chuckles Inc., 5 USPQ2d 1628, 1633 (TTAB 1988). However, “an inference of ‘bad
faith’ requires something more than mere knowledge of a prior similar mark.” Sweats
Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1565, 4 USPQ2d 1793 (Fed.
Cir. 1987). A finding of bad faith must be supported by evidence of an intent to
confuse, rather than mere knowledge of another’s mark or even an intent to copy.
E.g., Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769,
1782 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is a
considerable difference between an intent to copy and an intent to deceive.’” (quoting
J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:113
(4th ed. 2012))).
We find the mere knowledge of Plaintiff’s mark and the “timing coincidence” too
speculative to make a finding of bad faith intent. Proving intent to confuse or deceive
is subject to a high evidentiary bar that has not been met here. See, e.g., L’Oreal v.
Marcon, 102 USPQ2d at 1442. We find this factor to be neutral.
H. Balancing of the Factors
We have considered all of the evidence pertaining to the relevant du Pont factors,
as well as the parties’ arguments with respect thereto. In balancing the relevant
factors, we conclude that because Plaintiff’s mark is famous and the marks are
similar, the goods are related, and the trade channels and classes of customers
overlap, confusion is likely.
In view of our determination on the likelihood of confusion claim, Plaintiff’s
bifurcated claims of dilution, lack of use, lack of bona fide intent to use, and fraud are
dismissed as moot. Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126
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USPQ2d 1526, 1540 n.52 (TTAB 2018) (Board has “‘discretion to decide only those
claims necessary to enter judgment and dispose of the case,” as our “determination of
registrability does not require, in every instance, decision on every pleaded claim.’”)
(quoting Multisorb Tech., Inc. v. Pactive Corp., 109 USPQ2d 1170, 1171-72 (TTAB
2013)).
Decision: The opposition is sustained and the petition to cancel is granted.