Joseph J. Jurasv.Kent Christopher Lyons

Trademark Trial and Appeal Board

Mar 13, 2001

No. 91113737 (T.T.A.B. Mar. 13, 2001)

03/13/01
Paper No. 21
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Joseph J. Juras
v.
Kent Christopher Lyons
_____
Opposition No. 113,737
to application Serial No. 75/374,625
filed on October 16, 1997
_____
James E. Shlesinger of Shlesinger, Arkwright & Garvey, LLP
for Joseph J. Juras.
Timothy J. Humphrey of Owen, Wickersham & Erickson, PC
for Kent Christopher Lyons.
______
Before Hairston, Wendel and Holtzman, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Kent Christopher Lyons filed an application to register
the mark YELLOW DOG SPORT for “men’s, women’s and children’s
clothing, namely, shirts, sweatshirts, pants, jackets, hats,
caps and active wear.”1
1 Serial No. 75/374,625, filed October 16, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
A disclaimer has been entered of the word SPORT.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,737
2
Joseph J. Juras filed an opposition to registration of
the mark on the ground of priority of use and likelihood of
confusion under Section 2(d) of the Trademark Act. Opposer
alleges that, since prior to applicant’s filing date,
opposer has used the mark YELLOW DOG, either alone or in
combination with other words, for T-shirts; that he has sold
YELLOW DOG T-shirts since at least as early as July 1997;
that applicant’s YELLOW DOG SPORT mark is confusingly
similar to opposer’s mark; that use of applicant’s mark in
connection with his goods is likely to cause confusion; and
that opposer filed an application for the mark YELLOW DOG
NANTUCKET for T-shirts and other clothing items on June 30,
1998 which has been refused registration under Section 2(d)
over applicant’s pending application.
Applicant, in his answer, denied the salient
allegations of the notice of opposition and set forth the
affirmative defense of unclean hands.2
The Record
The record consists of the file of the involved
application; opposer’s trial testimony deposition, with
accompanying exhibits, of Joseph J. Juras; certain of
applicant’s discovery responses made of record by opposer’s
notice of reliance and certain of opposer’s discovery
2 Applicant has failed to pursue this affirmative defense and
accordingly we have given no consideration thereto.
Opposition No. 113,737
3
responses made of record by applicant’s notice of reliance.3
Both opposer and applicant have filed briefs but an oral
hearing was not requested.
Opposer initiated his first activities with respect to
the sale of T-shirts bearing the mark YELLOW DOG NANTUCKET
in May 1997 when he had twelve white T-shirts and two rugby
shirts printed for him by College Corner in Potsdam, New
York. (Invoice for T-shirts Exhibit 2 and sale receipt for
rugby shirts Exhibit 3). He set up an additional telephone
line in New York State in June 1997 for voice mail box
messages with respect to sale of his T-shirts. (Exhibit 4).
Opposer testified that after the first twelve T-shirts were
shipped to him, he shipped some to Nantucket for sale,
“right after they were produced in May or June of 1997.”
(Deposition p. 11). He described this shipment and
subsequent receiving of funds as his first sale. Upon
cross-examination, more particulars were given as to the
sale of these twelve T-shirts. Opposer testified that he
approached the retailer Gazebo Outfitters in Nantucket in
June 1997 who agreed to purchase eight T-shirts for sale at
their retail location; that the T-shirts were sold; and that
opposer was given money for the T-shirts in July 1997.
(Deposition p. 55-57). Opposer further testified that the
3 We note that Exhibits 46, 48 and 49 which accompanied opposer’s
trial testimony deposition automatically became of record for all
Opposition No. 113,737
4
remaining four T-shirts were sold by him directly to
individuals residing in Nantucket, naming three of the four
persons. When questioned as to the date of these sales,
opposer first stated “June and July” but subsequently
identified the time of his first sale as the weekend of the
Fourth of July. (Deposition p.65-67). Opposer made no more
sales in 1997.
In May-July 1998 opposer had several orders of T-shirts
produced for him by the Holy Shirt Company, and these T-
shirts were subsequently sold at retail outlets in
Nantucket. (Exhibits 7-17). In 1999 T-shirts were similarly
produced for opposer and subsequently sold in the summer
months in retail outlets in both Nantucket and Skaneateles,
New York.4 (Exhibits 18-45). Opposer has also sold to
individuals contacting him via the Internet. Opposer
testified that he sold approximately 4000 T-shirts in 1998
and 2000 T-shirts in 1999.
Opposer identified a handbill (Exhibit 48) which he
stated was posted on message boards advertising his T-shirts
in June 1997 directing persons to Gazebo Outfitters to
purchase his YELLOW DOG NANTUCKET T-shirts and an
advertisement (Exhibit 49) which was sent in the summers of
purposes and there was no need for applicant to make the same of
record by means of his notice of reliance.
4 The shirts sold in Skaneateles were printed with the
designation YELLOW DOG SKANEATELES.
Opposition No. 113,737
5
1997-1999 to various retail outlets soliciting the purchase
of T-shirts.
Applicant filed his intent-to-use application on
October 16, 1997. Applicant has filed no evidence of actual
use of his mark, although in an interrogatory response he
gave a date of first use of December 15, 1997.
The Opposition
The primary issue in this opposition is that of
priority. Applicant, by the filing of his application is
entitled to a constructive use date of October 16, 1997.
Opposer, in his notice of opposition, has alleged a first
use date of July 1997. The burden of proof upon opposer as
to a priority date of July 1997 is that of a preponderance
of the evidence. See Hydro-Dynamics Inc. v. George Putnam &
Company, 811 F.2d 1470,1 USPQ2d 1772 (Fed. Cir. 1987).
Although applicant contends that opposer is under the
heavier burden of clear and convincing evidence, we do not
find this to be the case. Such a standard is appropriate
when an applicant is attempting to prove a date earlier than
that alleged in its application. Here, although opposer has
a pending application, the first use date alleged therein is
July 3, 1997. As stated above, opposer alleges a date of
July 1997 in the notice of opposition. Although there may
be some testimony as to first sales in June, no date earlier
than a time in July 1997 is needed to establish use prior to
Opposition No. 113,737
6
applicant’s filing date. Accordingly, the heavier burden of
clear and convincing evidence of prior use is not applicable
here.
The next matter of contention is the nature of the
evidence upon which opposer is relying. Applicant strongly
argues that the oral testimony of opposer as to his first
sales with little or no documentary evidence as support is
insufficient to establish priority. The oral testimony of a
single witness may suffice, however, in proving priority, if
sufficiently probative. The determinative factor is whether
the testimony of this one witness is not characterized by
contradictions, inconsistencies, and indefiniteness, but
rather carries a conviction of accuracy and applicability.
In re B. R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ
232 (CCPA 1945).
Applicant maintains that the oral testimony of Joseph
Juras, opposer’s only witness is in fact characterized by
contradictions, inconsistencies and indefiniteness.
Applicant points in particular to variations in opposer’s
testimony as to the exact date of first sale from June 1997
to the weekend of the Fourth of July. While we agree that
some inconsistencies do appear in this testimony, we do not
consider these more than minor in nature. Whether opposer
made his first individual sale in June or early July, and
whether he approached Gazebo Outfitters to sell his T-shirts
Opposition No. 113,737
7
in June or the Fourth of July weekend is of little
consequence. The evidence clearly shows that opposer had
YELLOW DOG NANTUCKET T-shirts produced for him by June 1997
and that he received payment for the eight T-shirts turned
over to Gazebo Outfitters for sale by July 1997. Whether
the four additional individual sales were in June or not
until early July and whether at least one was to a friend is
insignificant. Opposer’s testimony and accompanying
evidence is sufficiently probative to show sales of T-shirts
by at least July 1997, a date well prior to the constructive
use date upon which applicant may rely. It is the evidence
as a whole, rather than any one particular piece, which must
be looked at in determining prior use. See West Florida
Seafood Inc. v Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d
1660 (Fed. Cir. 1994).
Applicant further challenges both the lack of
documentary evidence to support this testimony and the
accuracy of opposer’s testimony with respect to the
advertising materials which were introduced. While the
documentary evidence is minimal with respect to the first
sales, we find the oral testimony sufficient to overcome
this paucity of documentary evidence. The fact that there
are apparent contradictions in at least the advertising
material of Exhibit 49 which would make distribution of this
material in the summer of 1997 unlikely is immaterial to
Opposition No. 113,737
8
opposer’s proof of first use by at least July 1997. Opposer
is not relying on this advertising to support any analogous
use theory as would make the authenticity of the material
and time of distribution essential. Furthermore, even
though the handbill of Exhibit 48 bears a local
Massachusetts telephone number, rather than the New York
number opposer had allegedly set up for this purpose, we
cannot totally disregard opposer’s testimony that this
handbill was posted during the summer of 1997.
In addition, applicant has challenged the volume of the
1997 sales, arguing that the sale of twelve T-shirts, even
if proven, is de minimis and does not constitute adequate
use for purposes of priority. What is “de minimis” must be
considered, however, in terms of the nature of the items and
the industry in question. Here we are concerned with T-
shirts which were being sold either at a retail outlet in
Nantucket or individually. Opposer was an individual
entrepreneur. Under these circumstances, we find the sale
of twelve T-shirts in the first year sufficient to establish
prior use. See Brewski Beer Co. v. Brewski Brothers Inc.,
47 USPQ2d 1281 (TTAB 1998) (sale by business consisting of
three persons of two or three dozen shirts in the year of
1986, some of which were to other than family and friends,
sufficient to establish use commencing as early as 1986).
Opposition No. 113,737
9
We find the subsequent evidence thoroughly convincing
as to opposer’s continued use of its YELLOW DOG mark on T-
shirts. The documentary evidence fully supports the
production and sale of T-shirts in the summer months of both
1998 and 1999, with increasing sales figures. While
applicant argues that there is no evidence of opposer’s
intent to continue his business in the period from the
summer of 1997 until May 1998, we do not find evidence of
this nature necessary. As pointed out by the court in West
Florida Seafood Inc. v. Jet Restaurants Inc., supra, 31
USPQ2d at 1665, Section 2(d) does not speak of continuous
use but rather whether the mark has been “previously used in
the United States by another and not abandoned.” Here there
is no question of abandonment. Opposer resumed his business
activities in the summer of 1998 and again in the summer of
1999. The business was clearly seasonal in nature and
opposer merely followed a reasonable pattern.5
Accordingly, we find the evidence of record fully
adequate to establish by a preponderance of the evidence
opposer’s prior use of the mark YELLOW DOG NANTUCKET for T-
shirts.
Thus, we turn to the issue of likelihood of confusion,
making our determination on the basis of those of the
5 We note that on cross-examination, opposer testified that
Nantucket was a “seasonal” island; that businesses only operate
from Memorial Day through Labor Day. (Deposition p. 97).
Opposition No. 113,737
10
du Pont6 factors which are relevant in view of the evidence
of record. Two key considerations in any analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods with which the
marks are being used. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).
Looking first to the marks YELLOW DOG NANTUCKET7 and
YELLOW DOG SPORT, we find the dominant portion in each to be
the term YELLOW DOG. While marks must be considered in
their entireties in determining likelihood of confusion, it
is well established that there is nothing improper in giving
more or less weight to a particular portion of a mark. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Although disclaimed or descriptive matter
cannot be ignored, the fact remains that consumers are more
likely to rely upon the non-descriptive portion of a mark as
an indication of source. See Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993). Here consumers would be much more likely to look to
the YELLOW DOG portion of the respective marks as an
6 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
7 While opposer frequently refers to his YELLOW DOG mark, the
mark for which prior use has been established is YELLOW DOG
Opposition No. 113,737
11
indication of source, rather than the disclaimed word SPORT
in applicant’s mark or the geographically descriptive term
NANTUCKET in opposer’s mark. Although there are obvious
differences in the appearance and sound of the marks as a
whole, the overall commercial impressions are highly
similar.
Although applicant argues that consideration must be
given to the differences in the visual elements which
accompany the marks, we must point out that applicant is
seeking to register the mark YELLOW DOG SPORT in block
letters, with no accompanying design features. While
opposer’s use of its mark YELLOW DOG NANTUCKET on T-shirts
is in the presence of a dog figure, applicant’s mark, as
sought to be registered, is unrestricted as to any
accompanying visual elements. There is no evidence of
record of any use by applicant of his mark, much less of the
manner of use. By seeking registration of his mark in a
typed drawing form, applicant is free to adopt a
presentation identical to opposer’s. See Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983).
Turning to the goods at hand, we find that the T-shirts
of opposer are fully encompassed by the “shirts” of
applicant. Furthermore, since there are no limitations in
the identification of goods in the application as to any
NANTUCKET. Thus, our analysis of likelihood of confusion has
Opposition No. 113,737
12
particular channels of trade, we must assume that
applicant’s goods would travel in all the normal channels of
trade and be sold to all the usual purchasers for goods of
this nature. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). As
such, the potential purchasers and the retail outlets for
applicant’s clothing items, including shirts, must be
presumed to be the same as those for opposer's T-shirts.
Both being relatively inexpensive items which would be
purchased without great care, confusion is highly likely
when the similar marks involved here are used thereon.
Although applicant also raises the factor of the
strength of the parties’ marks, applicant has failed to
introduce any evidence whatsoever to substantiate its
argument that “color DOG” marks are widely used on clothing
items. Hence, we must accord no less than full protection
to opposer’s mark.
Accordingly, we find the relevant du Pont factors to
weigh heavily in opposer’s favor on the issue of likelihood
of confusion.
Decision: The opposition is sustained and registration
is refused to applicant.
been made on the basis of use of this mark.