H.D. Lee Company, Inc.v.Dragon Sourcing, LLC

Trademark Trial and Appeal Board

Apr 20, 2010

No. 91180251 (T.T.A.B. Apr. 20, 2010)

Mailed: April 20, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The H.D. Lee Company, Inc.
v.
Dragon Sourcing, LLC
_____

Opposition No. 91180251
to application Serial No. 77056429
filed on December 4, 2006
_____

Paul J. Kennedy and J. Anthony Lovensheimer of Pepper
Hamilton LLP for The H.D. Lee Company, Inc.

Daniel E. Bruso and Curtis Krechevsky of Cantor Colburn LLP
for Dragon Sourcing, LLC.
______

Before Hairston, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Dragon Sourcing, LLC, seeks registration of
the standard character mark BOSS OF THE ROAD for goods
ultimately identified in the application as “bootwear;
headwear, namely, hats, caps, visors, skull caps; clothing,
namely beachwear, belts, suspenders, gloves, sweatbands,
wristbands, head scarves, head sweatbands, boxer shorts,
briefs, underwear, sports bras, socks, shirts, jerseys, t-
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91180251
2
shirts, tank tops, sweatshirts, hooded sweatshirts,
sweaters, vests, jackets, coats, fleece, pullovers, warm up
suits, wind jackets, foul weather gear, rainwear, shorts,
sweatpants, pants, trousers, jeans, overalls, skirts,
uniforms” in International Class 25. The application, filed
on December 4, 2006, is based on an allegation of a bona
fide intention to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. §1051(b).1
Opposer, The H.D. Lee Company, Inc., opposed
registration of applicant’s mark on the grounds that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used mark BOSS OF THE ROAD for men’s
jeans as to be likely to cause confusion, to cause mistake,
or to deceive under Trademark Act Section 2(d), 15 U.S.C.
§1052(d). Notice of Opposition ¶¶ 1, 7, 9 and 10.
Applicant filed an answer by which it denied the
salient allegations and asserted the affirmative defense
that opposer “abandoned its rights in the BOSS OF THE ROAD
Mark prior to the commencement of the instant proceeding.”2
THE RECORD
The evidence of record consists of the pleadings
herein; the file of the opposed application; the testimony

1 In addition, applicant has disclaimed the word BOSS.

2 Applicant’s allegations in the other “affirmative defenses”
essentially allege another type of abandonment, i.e., failure to
police.
Opposition No. 91180251
3
declarations (with exhibits) submitted by opposer of
Elizabeth Cahill, opposer’s Vice President of Marketing, and
Jennifer Wade, a Merchandising Assistant for Lee Apparel
Corp., a division of opposer.3 In addition, opposer
submitted a notice of reliance upon applicant’s discovery
responses and printed publications. Applicant submitted a
notice of reliance on opposer’s discovery responses, various
official records from the USPTO electronic database,
including the subject application, and the notice of
opposition.4
EVIDENTIARY OBJECTIONS
Within its main brief applicant objected to certain
printed publications submitted by opposer under notice of
reliance in Exh. Nos. B1, B2, B3 and B5. Applicant argues
that in its Request for Documents No. 52 applicant requested
“[d]ocuments referring or relating to any press release,
newspaper articles, or other publication that mentions
Opposer, Opposer’s Mark, or the product(s) or service(s)
sold under Opposer’s Mark in the United States.” Opposer
responds that it provided a representative sampling in
response to that request, and while it did not provide the

3 The parties stipulated to submission of testimony and exhibits
by declaration.

4 We note it was unnecessary for applicant to submit copies of
the subject application file and notice of opposition inasmuch as
under the Trademark Rules these documents are automatically of
record. Trademark Rule 2.122(b)(1).
Opposition No. 91180251
4
publications in Exh. Nos. B1, B2 and B3, those specific
publications were not in its custody and control, but rather
were publicly available. Further, opposer argues that Exh.
No. B5 is simply an earlier edition of the publication
produced by applicant to opposer. We begin by noting, that
this case has been litigated under the old Trademark Rules
inasmuch as it commenced prior to November 3, 2007.
Therefore, opposer did not need to specify in detail all the
evidence it intended to present. See TBMP §414 (2d ed. rev.
2004); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d
1197, 1201 (TTAB 1993), aff’d, Brunswick Corp. v. British
Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994).
While these are not the same publications provided in the
representative sampling, they are all publicly available
documents and, in one case, simply the earlier edition of a
publication provided by applicant. In view thereof,
applicant’s objection is overruled. We note, however, that
our determination herein does not rely on these documents.
Applicant also objected to Exh. L submitted under Ms.
Cahill’s testimony declaration. This exhibit consists of a
sales report for opposer’s Gold Label Collection. Applicant
argues that opposer did not provide this report during
discovery and it is encompassed by Document Request No. 2
which requests “[a]ll documents and things that refer or
relate to the sales by Opposer of goods or services
Opposition No. 91180251
5
displaying Opposer’s Mark in any form within the United
States” and Interrogatory No. 6 which requested that opposer
“[s]tate the monthly sales volume, in United States Dollars
and units, of all goods or services that have been sold
under Opposer’s Mark, since the date of first use and
continuing through and including the date that Opposer
responds to these interrogatories.” Opposer responds that
it interpreted these requests as being limited to refer only
to sales of the specific BOSS OF THE ROAD jeans and did not
include sales of other styles of jeans under the Gold Label
Collection that were also sold with material that displayed
the mark BOSS OF THE ROAD. More significantly, opposer
points out that applicant had this report in its possession
because it was an exhibit submitted in support of an earlier
summary judgment motion. Opposer argues that under Vignette
Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005), this
submission should be considered a supplementation of its
document production. The exhibit is a compilation of sales
data created as an exhibit for the summary judgment motion.
Thus, applicant received it at the time it was created.
Inasmuch as applicant was in receipt of this exhibit prior
to the opening of trial, we overrule the objection and
accept this exhibit as part of the record. Again, we add
that we do not rely on this particular exhibit for our
determination.
Opposition No. 91180251
6
In addition, applicant objected to certain statements
in the Wade and Cahill Testimony Declarations on the basis
of hearsay in view of the declarants’ lack of personal
knowledge. Specifically, applicant argues they lack
personal knowledge:
...because Ms. Cahill and Ms. Wade were not
employed by Opposer for all of the time set forth
in their respective Declarations. Since they
cannot testify as to their personal knowledge
regarding events that occurred before they joined
Opposer, significant portions of their
Declarations are inadmissible hearsay.

App. Br. p. 18.

Applicant objects to paragraphs 10, 12, 13 and 15 in
Ms. Cahill’s testimony and paragraphs 9, 10 and 11 in Ms.
Wade’s testimony.
Ms. Cahill’s Testimony
Applicant’s objection is sustained as to the first
sentence in paragraph 10 and overruled as to the remainder
inasmuch as the statement is supported by business records
(opposer’s file copies of its expired registrations). See
Fed. R. Evid. 803(6) (business records exception to
hearsay). The objection as to paragraph 12 is overruled,
inasmuch as Ms. Cahill was employed by opposer at the time
one of the Registrations was renewed and, therefore, was
there at the time any decision to cease using the mark was
made and any intention to renew use was maintained. The
objection as to paragraph 13 is overruled inasmuch as much
Opposition No. 91180251
7
of the testimony is directed to the time in which she was
employed by opposer and the first sentence is more in the
nature of opinion and of little to no probative value. The
objection as to paragraph 15 is overruled. Again she was
there when the decision not to renew was made and may
testify as to the reasons for that decision.
Ms. Wade’s Testimony
As to paragraphs 9 and 10, applicant’s objection is
sustained as to the testimony regarding the cessation of
sales and overruled as to the testimony regarding the third-
party vintage clothing market, the decision not to renew one
of opposer’s registrations and the activities to launch a
Boss of the Road collection in 2004, as those events
occurred while Ms. Wade was employed by opposer and are
supported by documents.
STANDING
As discussed below, opposer has shown that it used the
mark BOSS OF THE ROAD in connection with men’s jeans and has
demonstrated a real interest in preventing registration of
the proposed mark. See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021 (Fed. Cir. 1987); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Thus,
opposer has established its standing. We add that applicant
Opposition No. 91180251
8
“does not contest whether opposer has standing.” App. Br.
p. 41.
LIKELIHOOD OF CONFUSION/PRIORITY
The goods in issue are, at least in part, legally
identical inasmuch as applicant’s “jeans” encompass
opposer’s “men’s jeans” and the marks, BOSS OF THE ROAD, are
identical. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) (it is
sufficient for a determination of likelihood of confusion if
the relatedness is established for any item encompassed by
the identification of goods in the application). Thus,
there can be no dispute that a likelihood of confusion
exists and, indeed, the parties do not dispute this. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) (two key
considerations are the similarities between the marks and
the similarities between the goods).
We turn then to the question of priority. Because
opposer has not pleaded any active registrations, opposer
must prove common law rights prior to applicant’s priority
date. Hydro-Dynamics Inc. v. George Putnum and Company
Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987).
Under the rule of Otto Roth, a party opposing registration
of a trademark due to a likelihood of confusion with his own
Opposition No. 91180251
9
unregistered term cannot prevail unless he shows that his
term is distinctive of his goods, whether inherently or
through the acquisition of secondary meaning or through
‘whatever other type of use may have developed a trade
identity.’” Towers v. Advent Software Inc., 913 F.2d 942,
16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing, Otto Roth &
Co. v. Universal Food Corp., 640 F.2d 1317, 209 USPQ 40, 43
(CCPA 1981). Because applicant did not submit evidence of
use, applicant’s priority date is the application filing
date, December 4, 2006.
Thus, in order to prevail, opposer must establish that
it acquired trademark rights in the mark BOSS OF THE ROAD,
that it is distinctive, either inherently or through
acquired distinctiveness, and that its use predates
applicant’s filing date of December 4, 2006.
Opposer’s position is that BOSS OF THE ROAD “has been
an iconic brand in the history of America’s denim industry”
and opposer used this mark since its acquisition of it in
1952 until at some point it suspended manufacturing the
original BOSS OF THE ROAD jeans and did not renew its BOSS
OF THE ROAD and design registrations in 1998 and 2004
respectively. See Br. pp. 9-10. Opposer relies on its
“renewed” use in 2006 to establish priority over the subject
application.
Opposition No. 91180251
10
In defense of its position, applicant has asserted that
opposer abandoned any rights it may have had in the mark
BOSS OF THE ROAD and any use in 2006 was not sufficient to
establish priority, either as new use or to rebut
presumptive abandonment to show an intention to resume use.
Findings of Fact
In support of its position that it began use of the
BOSS OF THE ROAD mark prior to applicant’s filing date,
opposer submitted, inter alia, the following:5
1) A pocket stuffer in the nature of a brochure
included with each pair of jeans sold under the overarching
Gold Label Collection that includes the following under a
picture of one style of jeans in the collection:
6

2) Testimony that this pocket stuffer accompanied each
pair of jeans sold under opposer’s Gold Label Collection

5 Certain testimony and exhibits were designated as confidential
and we will discuss those portions of the record in general
terms.

6 Cahill Test. ¶23, Exh. G.

Opposition No. 91180251
11
which includes a variety of styles, including the B.O.T.R.
BOSS OF THE ROAD jeans;7
3) An advertisement from the August 2006 edition of a
nationally distributed magazine titled “Stuff” that includes
the following next to a picture of various jeans:
;8

4) An excerpt from opposer’s website that includes the
following under a picture of a pair of jeans:

;9

7 Cahill Test. ¶23.

8 Cahill Test. ¶25, Exh. I. The pertinent text reads: LEE JEANS
B.O.T.R. (Boss of the Road) jeans, $200.

9 Wade Test. ¶19, Exh. E.

Opposition No. 91180251
12
5) Testimony that this appeared on opposer’s website
since October 2006;10
6) Testimony and documentary evidence that the first
sales of jeans in connection with the BOSS OF THE ROAD mark
were in April 2006 to retailers followed by shipments of
product to retailers with the pocket stuffers depicting the
BOSS OF THE ROAD mark beginning on August 15, 2006;11 and
7) Testimony that the mark continues to be used in
connection with jeans and documentary evidence of sales
through 2007.12
Considering the evidence as a whole, we find:
1) Opposer began use of the mark BOSS OF THE ROAD, at
least as early as, August 15, 2006;
2) Opposer made continuing commercial use of the mark
thereafter;
3) There is no evidence in the record or argument that
BOSS OF THE ROAD is not inherently distinctive, thus, we
find BOSS OF THE ROAD to be inherently distinctive.
Analysis
Because opposer used the inherently distinctive
designation BOSS OF THE ROAD as a mark to indicate source
beginning on August 15, 2006, the earliest date of shipment

10 Wade Test. ¶19.

11 Cahill Test. ¶28, Exh. J; Wade Dec. ¶18, Exh. D.

12 Cahill Test. ¶28, Exh. J.
Opposition No. 91180251
13
based on orders made in April of 2006, opposer has proven
use prior to applicant’s filing date. In particular, the
pocket stuffer sold with each pair of jeans, which serves as
a hybrid of a tag and point of sale display, is sufficient,
at least for purposes of establishing priority, to support
use.
In view of these findings, we do not reach the
questions of abandonment, residual goodwill, intent to
resume use or use analogous to trademark use. Our decision
herein is based solely on opposer’s trademark use in 2006.
Applicant argues that:
Opposer’s only sales in 2006 were to retail
stores.... Opposer’s 2006 dealer catalog uses the
B.O.T.R. Mark, not the BOSS mark. Thus, while
Opposer can establish sales under the B.O.T.R.
Mark, it cannot establish a single sale associated
with the BOSS Mark.... Even if Opposer’s sales
prior to December 4, 2006 are deemed to be use of
the BOSS Mark, Opposer is not entitled to priority
because its 2006 sales were de minimis.

App. Br. p. 46.
Applicant discounts the pocket stuffer by stating that:
...it refers to the B.O.T.R. mark and describes
the B.O.T.R. jeans using the same narrative
description appearing on documents HDL00028 and
HDL00030 [opposer’s website]. Once again, the
Board should recognize that this does not
constitute Opposer’s use of the BOSS Mark. The
“pocket stuffer” also has little relevance to
Opposer’s use of the BOSS Mark. Opposer has
provided no evidence to show that consumers were
even aware of the pocket stuffer when they
purchased Opposer’s Gold Label BOTR products.
Obviously consumers could not possibly have seen
the pocket stuffer for products purchased online.
Moreover, opposer produces no evidence that
Opposition No. 91180251
14
consumers in stores looked at the pocket stuffer
when they elected to purchase Opposer’s Gold Label
products, and produces no evidence that consumers
ever looked at it even after purchase.

App. Br. p. 32.
The documents numbered HDL000028 and HDL000030 are
printouts from opposer’s website and the “narrative
description” reads: “Alright, because we know you’re
wondering, the B.O.T.R. stands for ‘Boss of the Road.’”
This is, in fact, different from what appears on the pocket
stuffer: “Inspired by 30’s workwear garments from the Lee
label ‘Boss Of The Road.’” The lack of evidence as to what
consumers actually looked at is not dispositive here. The
Trademark Act prohibits registration of a mark that
“consists of or comprises a mark which so resembles a mark
…previously used in the United States by another...as to be
likely, when used on or in connection with the goods of the
applicant, to cause confusion...” 15 U.S.C. §1052(d). To
be considered use as a mark the Trademark Act defines a
trademark as “The term ‘trademark’ includes any word...used
by a person...to identify and distinguish his or her
goods...from those manufactured or sold by others and to
indicate the source of the goods, even if that source is
unknown.” 15 U.S.C. §1127. Based on the statutory
definition it is not necessary to provide evidence that
consumers looked at the trademark on a tag, point of sale
display, brochure or catalog prior to purchase. It is
Opposition No. 91180251
15
sufficient to show use of the designation to indicate
source. Opposer’s use of the phrase BOSS OF THE ROAD in the
pocket stuffer, “from the Lee label ‘Boss Of The Road,’” is
used in a manner to identify and distinguish its goods.
As to the assertion that the use is de minimis
applicant relies on Zazu Designs v. L’Oreal, S.A., 979 F.2d
499, 503 (7th Cir. 1992), and S Industries, Inc. v. Diamond
Multimedia Systems, Inc., 991 F. Supp. 1012, 45 USPQ2d 1705
(N.D. Ill. 1998). In Zazu, the Court found that plaintiff
had not made sufficient use of the mark to establish
priority. There, prior to the defendant’s application
filing date, the plaintiff had only shipped a few bottles,
not labeled for sale, to two separate friends and “sold to
customers of the salon in plain bottles to which he taped
the salon’s business card.” Zazu, 979 F. Supp. at 502.
This is very different from the record in this case where
opposer sold and shipped the jeans to retailers across the
country. In S Industries, the volume of sales was also much
lower and limited, and the reliability of the evidence was,
in general, brought into question. S Industries, 45 USPQ2d
at 1709.
Inasmuch as applicant’s mark BOSS OF THE ROAD is
identical to opposer’s mark BOSS OF THE ROAD and the goods
are legally identical, there is a likelihood of confusion.
Further, opposer has established priority of use. In view
Opposition No. 91180251
16
thereof, opposer has proven its claim under Section 2(d) of
the Trademark Act.
Decision: The opposition is sustained on the claim
under Section 2(d).