Jacques Moret, Inc.v.Wilson Bright

Trademark Trial and Appeal Board

Mar 23, 2006

No. 91154648 (T.T.A.B. Mar. 23, 2006)

nlc Mailed:
March 23, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
______

Trademark Trial and Appeal Board
______

Jacques Moret, Inc.

v.

Wilson Bright
______

Opposition No. 91154648
to application Serial No. 76404402
filed on April 30, 2002
______
Alan H. Levine and Howard F. Mandelbaum of Levine &
Mandelbaum for Jacques Moret, Inc.

Wilson Bright, pro se.
______

Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Jacques Moret, Inc. has opposed the application of
Wilson Bright, an individual, to register DRY-X for
“waterproof fabric for the further manufacture of
clothing.”1 As grounds for the opposition, opposer has

1 Application Ser. No. 76404402, filed April 30, 2002, based on
an asserted intention to use the mark in commerce under Section
1(b) of the Trademark Act.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91154648
2
alleged that it has used the mark DRY F-X for apparel, and
the fabric incorporated therein, since 1999; that it owns a
registration for DRY F-X for “wearing apparel, namely,
leggings and tops”; and that applicant’s goods are so
closely related to opposer’s wearing apparel, and the
fabric of which the apparel is made, that applicant’s use
of his mark is likely to cause confusion or mistake or to
deceive.
Applicant has admitted that it seeks registration of
DRY-X for “waterproof fabric for the further manufacture of
clothing,” but otherwise has denied the salient allegations
of the notice of opposition.2
The record includes the pleadings; the testimony
deposition, with exhibits, of opposer’s witness Lisa
Konorty, vice president of sales support for Jacques Moret,
Inc.; and applicant’s responses to interrogatory numbers 1
and 15 in opposer’s first set of interrogatories, submitted
by opposer under notice of reliance. Applicant filed no
evidence and took no testimony.
The parties have fully briefed this proceeding. The
parties did not request an oral hearing.

2 Applicant also asserted that opposer failed to state a claim
upon which relief can be granted, but did not pursue this defense
during the course of the proceeding.
Opposition No. 91154648
3
Facts
The evidence shows that since 1999 opposer has used
the DRY F-X trademark to identify the source of various
types of workout apparel, including leggings, sports bras,
exercise tops, and shorts (Konorty deposition, pp. 6, 11-
12). The evidence also shows that the mark is used on hang
tags for the apparel to identify the fabric that opposer
uses to make this finished apparel,3 which is designed to
draw sweat away from the skin of the wearer to the outside
of the fabric (Konorty deposition, pp. 6, 11). However,
there is no evidence in the record concerning the precise
date opposer’s mark was first used to identify the fabric
in its apparel. Before opposer ships its DRY F-X brand
apparel to its only client, the mass marketer Target,
opposer attaches an adhesive backed label bearing the DRY
F-X mark to the apparel (Konorty deposition, pp. 7-9, 13).
Opposer also attaches a folded hang tag to the apparel
before shipment: the inside of the hang tag includes the
DRY F-X mark with a design and wording indicating that the
fabric transports moisture away from the wearer’s body
(Konorty deposition, pp. 9-11).

3 There is no evidence that opposer sells this fabric to third
parties.
Opposition No. 91154648
4
As to channels of trade, as stated above, the evidence
shows that opposer’s only client for its DRY F-X apparel is
Target. All of Target’s retail stores sell DRY F-X
apparel, and Target has stores in most states of the United
States (Konorty deposition, pp. 7, 13-14). Sales of DRY F-
X apparel from 2002 to 2004 totaled approximately $30
million wholesale, or approximately $60 million retail
(Konorty deposition, pp. 12-13).
Turning to applicant’s use of the DRY-X mark, the
information we have is rather limited, since the evidence
has all been submitted by opposer. The evidence shows that
applicant uses the DRY-X mark to identify the source of its
woven fabric which has a waterproof coating. Applicant
sells the fabric to apparel manufacturers and fabric stores
in the United States and abroad (applicant’s response to
opposer’s interrogatory number 1). The apparel
manufacturers usually attach to apparel made from
applicant’s fabric hang tags with the DRY-X mark on them to
“promote the quality” of the fabric from which the garments
are made, and the hang tags remain on the garments at the
point of sale (applicant’s response to opposer’s
interrogatory number 15).
Opposition No. 91154648
5
Standing
We find that opposer has, as a seller of apparel under
the mark DRY-F-X, established its standing.
Priority
Although opposer alleged ownership of a registration for
DRY F-X for “apparel, namely, leggings and tops” in its notice
of opposition, it did not attach a status and title copy of
the registration thereto as would have been required to make
it of record, see Trademark Rule 2.122(d)(1), nor did opposer
file a notice of reliance with a status and title copy of the
pleaded registration, see Trademark Rule 2.122(d)(2). Ms.
Konorty in her testimony deposition identified a “soft copy”
of Reg. No. 2422256 (Exhibit B) and testified as to opposer’s
ownership of the registration (Konorty deposition pp. 5-6) but
not as to the registration’s status. Nor did opposer make the
registration of record in any other acceptable manner, see
TMBP §704.03(b)(1) (2d ed. rev. 2004). Accordingly, opposer
failed to make the pleaded registration of record.
In view of the above, opposer must rely on its common
law rights in the DRY F-X mark as a basis for its claim of
priority. Ms. Konorty’s testimony establishes that opposer
has used DRY F-X continuously on workout apparel since 1999
(Konorty deposition, pp. 6, 11-12). There is no evidence
in the record concerning the precise date opposer’s mark
Opposition No. 91154648
6
was first used to identify the fabric in its apparel, but
the record is clear that opposer has used and continues to
use the mark in this manner.
Because the application at issue is based on an intent
to use the mark in commerce, and there is no evidence
regarding when applicant began using the mark DRY-X, the
earliest date on which applicant can rely is his April 30,
2002 filing date. Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991). Thus, in
spite of opposer’s failure to make its registration for DRY
F-X of record, opposer has demonstrated that it has
priority based on its common law rights in the mark.
Likelihood of Confusion
This brings us to a consideration of the issue of
likelihood of confusion. Our determination 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 Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). While we have
concentrated our discussion on the factors brought up by
the parties, we have considered all the factors on which
there is evidence.
Opposition No. 91154648
7
Turning first to the goods, we must consider the
similarity or dissimilarity of opposer’s workout apparel
and applicant’s “waterproof fabric for use in the further
manufacture of clothing.” The Board has often found
clothing and fabric to be related goods. In re Crompton
Co., Inc., 221 USPQ 471 (TTAB 1983) (confusion found likely
in the contemporaneous use of “REGENCY” for textile fabrics
and “REGENCY” for women’s sportswear; confusion also found
likely in the contemporaneous use of “SPORTEEN” for textile
fabrics and “SPORTEENS” for various items of clothing);
Warnaco Inc. v. Adventure Knits, Inc., 210 USPQ 307 (TTAB
1981) (confusion found likely in the contemporaneous use of
“LUV TOUCH” for fabric and “LOVE TOUCH” for brassieres).
The relatedness of clothing and fabric is demonstrated
by the facts in this case. Opposer uses its fabric to
manufacture finished apparel. At the point of sale, labels
and hang tags bearing opposer’s DRY F-X mark identify both
the source of opposer’s fabric and its finished apparel.
Further, applicant’s fabric is sold to third parties who
use it to manufacture finished apparel. Hang tags on that
apparel bear the trademark for applicant’s fabric which has
been incorporated into the apparel. There is also clearly
a relatedness between the fabric that is used in opposer’s
workout apparel and applicant’s waterproof fabric, in that
Opposition No. 91154648
8
both have moisture resistant qualities. Moreover,
applicant’s fabric could be used to manufacture workout
apparel such as running jackets. In view of the foregoing,
we find that opposer’s workout apparel and applicant’s
fabric are related goods, and that this factor favors a
finding of likelihood of confusion.
We turn now to the Du Pont factor of the similarity or
dissimilarity of established, likely-to-continue channels
of trade. The record shows that opposer’s DRY F-X workout
apparel is sold in Target stores throughout the United
States to the public at large. The record also shows that
applicant sells its DRY-X fabric to apparel manufacturers
and fabric stores.4 Thus, apparel made from applicant’s
fabric (and which bears labeling identifying the trademark
for the fabric) could be sold in stores such as Target, and
could be sold to the general public. As a result, finished
apparel bearing applicant’s DRY-X fabric mark could be sold
in the same channels of trade as opposer’s DRY F-X exercise
garments, and the same classes of consumers could encounter
apparel bearing opposer’s mark, and apparel bearing
applicant’s fabric mark, when they are sold in these

4 Although applicant has claimed an intent-to-use filing basis,
his responses to interrogatories 1 and 15 concerning his use of
DRY-X indicate that the mark is already in use on textiles, i.e.,
“…Wilson Bright sells textiles to Manufactures [sic] and fabric
stores…”

Opposition No. 91154648
9
channels of trade. Thus, opposer’s and applicant’s trade
channels must be considered to overlap. In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). In view of the
foregoing, we find that both parties’ goods could be sold
in the same channels of trade, and that this factor also
favors a finding of likelihood of confusion.
We turn next to the conditions under which and the
buyers to whom sales are made, i.e., the level of care
exercised by purchasers of opposer’s workout apparel, and
by the purchasers of the apparel into which applicant’s
fabric is incorporated. Workout apparel such as leggings,
sports bras, exercise tops, and shorts, by its very nature,
is not likely to be purchased with a great deal of care.
Further, opposer’s goods are marketed through Target
stores, a mass merchandiser that caters to the general
public, and the goods are therefore sold to the public at
large, rather than to consumers with a particular expertise
or sophistication. Applicant’s fabric, too, can be used to
manufacture a wide variety of clothing items, including
relatively inexpensive goods whose purchase would not be
subject to a great deal of care. The buyers of this
apparel, like opposer’s, would include the general public,
rather than sophisticated purchasers. This factor thus
favors a finding of likelihood of confusion.
Opposition No. 91154648
10
We now turn to the similarity or dissimilarity of
applicant’s DRY F-X mark as compared with opposer’s DRY-X
mark. The marks are similar in appearance and sound: both
begin with DRY and end in –X. The fact that opposer’s mark
has the additional letter “F” is a minor difference that
does not obviate the marks’ similarity in appearance or
sound.
Furthermore, we find that the connotations and general
commercial impressions of the marks are similar. Both
suggest that the wearer of opposer’s apparel, or of
garments made from applicant’s fabric, will remain dry when
wearing the clothing.
In reaching our conclusion that the marks are similar,
we have considered applicant’s argument that the element
“–X” will bring to mind “Generation X” and thus distinguish
applicant’s mark from opposer’s in terms of connotation.
We are not persuaded by this argument. We see no basis for
applicant’s claim that this is the connotation that its
mark will have because of this element. Rather, we
consider it much more likely that consumers will look to
the initial element, DRY, which is the same in both marks,
as the connotation of marks which are used for waterproof
fabric or apparel made from fabric that draws moisture away
from the skin. Accordingly, we find that the marks are
Opposition No. 91154648
11
similar in appearance, sound, connotation and commercial
impression, particularly since, when evaluating the
similarity or dissimilarity of marks, the question is not
whether they can be distinguished when subjected to a side-
by-side comparison. Under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. Puma-Sportschuhfabriken
Rudolf Dassler KG v. Roller DerbySkate Corporation, 206
USPQ 255, 259 (TTAB 1980); Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). Therefore, this
factor favors a finding of likelihood of confusion.
With respect to the two du Pont factors regarding
actual confusion, the record does not contain any evidence
of actual confusion. However, there is likewise no
evidence about the extent of applicant’s use of his mark,
and therefore we cannot assume that there has been an
opportunity for confusion to occur, or conclude from the
lack of evidence of actual confusion that confusion is not
likely to occur. We find this du Pont factor to be
neutral.
Turning to the factor of fame, opposer has not
actually asserted that its mark is famous. In its brief,
opposer summarized the sales figures for its DRY F-X
Opposition No. 91154648
12
apparel, and asserted that these figures and the length of
use of the mark have resulted in “significant penetration”
of the mark in the market place. While the record shows
that opposer’s retail sales of its DRY F-X workout apparel
totaled approximately $60 million over the period 2002-
2004, opposer has provided no context for these figures.
For example, there is no evidence about the total U.S.
general or workout apparel market which might allow us to
evaluate opposer’s market share, or whether this amount of
sales is significant. Furthermore, opposer has presented
no evidence regarding advertising expenditures in support
of its DRY F-X workout apparel. Thus, on the record we
cannot find that opposer’s mark is famous, and we find this
du Pont factor to be neutral.
Turning to the issue of the number and nature of
similar marks in use on similar goods, we agree with
opposer that there is no evidence in the record on this
issue. Therefore, we find this du Pont factor to be
neutral, or to slightly favor opposer in terms of
indicating the strength of its mark.
Having considered all of the relevant evidence as it
pertains to the du Pont factors, we find that applicant’s
use of DRY-X for “waterproof fabric for the further
Opposition No. 91154648
13
manufacture of clothing” is likely to cause confusion as to
source with opposer’s mark DRY F-X for workout apparel.
Decision: The opposition is sustained.