Kenneth Cole Productions (LIC), Inc.v.Andrew Craig

Trademark Trial and Appeal Board

Mar 23, 2010

No. 91161781 (T.T.A.B. Mar. 23, 2010)

Oral Hearing: Mailed:
December 10, 2009 March 23, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Kenneth Cole Productions (LIC), Inc.

v.

Andrew Craig
_____

Opposition No. 91161781
to application Serial No. 75730916
filed on June 17, 1999
_____

Cathy E. Shore-Sirotin of Lackenbach Siegel LLP for Kenneth
Cole Productions (LIC), Inc.

Ernest I. Gifford of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski, P.C. for Andrew Craig.1
______

Before Cataldo, Taylor, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Kenneth Cole Productions (LIC), Inc. (hereinafter,
“opposer” or “KC”) has opposed the application of Andrew
Craig to register LE TIGRE, in standard character format,
for “writing instruments namely fountain pens, ball point
pens, felt and fiber tip pens and markers” in International

1 At oral hearing, applicant was represented by Mark Schneider.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91161781
2
Class 16; and “small leather goods, namely, cases for
diaries and daily planners; and brief case type portfolios”
in International Class 18.2
As a preliminary matter, we address the status of the
party opposer(s) in this proceeding. As originally filed,
the notice of opposition identified Le Tigre, LLC and LT2,
LLC as joint opposers. On December 11, 2007, these joint
opposers filed a motion, with applicant’s consent, to
substitute KC as the sole party opposer or, in the
alternative, to join KC as a joint opposer. On the
following day, the Board issued an order granting the motion
to the extent that KC was substituted for Le Tigre, LLC, and
that LT2, LLC remained of record as a joint opposer.
However, upon further review of the consented motion that
resulted in the Board order, we note that counsel for
opposers represented that KC “is now the real party in
interest and the proper opposer” and that “upon further

2 Application Serial No. 75730916, based on Section 1(b)(intent
to use). The application contains a statement that the English
translation of the mark is “the tiger.”
On June 1, 2006 and after commencement of this opposition,
applicant filed a proposed amendment to both classes of goods to
add the following language at the end of the present
identification, “all the foregoing goods not relating to baseball
or softball or a baseball or softball team.” Opposer did not
consent to this proposed amendment and, in its trial brief,
specifically states that the proposed amendment is “improper and
should be denied.” Brief, p. 4. We note that for purposes of
this opposition, the proposed amendment is irrelevant inasmuch as
the amendment does not change in any meaningful way the degree of
relatedness between the parties’ respective goods. Accordingly,
our decision herein is not affected by this proposed amendment
and, as a result, it has been given no further consideration.
Opposition No. 91161781
3
information and belief, Le Tigre was dissolved, and no
longer exists as an entity.” Based on this information and
the fact that the record in this proceeding does not
establish that LT2, LLC is an ongoing entity or continues to
have an interest in this proceeding, we deem KC to be the
sole opposer and the caption for this proceeding has been
amended accordingly (as shown above).
As grounds for opposition to the registration of
applicant’s mark in both classes of goods, opposer alleged
that it is the owner of the registration for the trademark:

(hereinafter, “LeTIGRÉ (stylized)”) for “men's, women's and
children's apparel-namely, sweaters, shirts, jackets, sport
coats, all-weather coats, raincoats, slacks, jeans, shirts,
swim trunks, gym trunks, headwear and robes” in
International Class 25;3 that opposer, and its predecessors-
in-interest, have used the mark LE TIGRE “and variations
thereof” for “a wide variety of products falling within
International Class 25” since “at least as early as
September 25, 1979”; that opposer’s “Le TIGRE marks are
famous trademarks pursuant to Section 43(c) (15 U.S.C.

3 Registration No. 1186863 issued on January 19, 1982; renewed.
On November 13, 2007, an assignment of ownership of the
registration was recorded with the USPTO from Le Tigre, LLC to
opposer, Kenneth Cole Productions (LIC), Inc. (recorded at reel
3659, frame 0949). The registration contains a statement that
“the words ‘Le Tigre’ mean ‘The Tiger’.”
Opposition No. 91161781
4
1125(c)) of the Trademark Act”; that applicant’s applied-for
mark is “identical” to opposer’s registered mark and “covers
goods which are confusingly similar to [opposer’s] goods”;
that “in view of applicant’s claim to such exclusive rights
[in the applied for trademark], members of the trade and
public familiar with [opposer’s] use of [the registered
trademark] would be likely to believe...that applicant’s
goods originate from opposer, or from an entity in some way
associated with or related to [opposer]”; and that
“registration and use of applicant’s purported mark will
cause dilution of...[opposer’s mark].”4
In his answer, applicant denied all salient allegations
in the notice of opposition.
The record includes the pleadings and the file of the
opposed registration, by operation of Trademark Rule
2.122(b)(1).
Opposer filed the deposition testimony, with exhibits,
of the following individuals: Andrew Craig, applicant;5

4 On September 8, 2008, opposer moved to amend the notice of
opposition under Fed. R. Civ. P. 15(a) and (b) to assert a
separate and new claim of fraud. In an order dated November 21,
2008, the Board denied the motion to the extent it was based on
Rule 15(a), but deferred consideration of the Rule 15(b) basis
for the motion. Opposer, however, did not argue this ground in
its trial briefs or otherwise reference the outstanding motion.
Accordingly, and in light of opposer’s failure to even argue a
fraud ground in its trial briefs, we find a lack of interest and
construe the motion to amend the notice of opposition, under Rule
15(b), as effectively withdrawn. We therefore do not give
consideration to any fraud ground in our determination herein.
5 Deposition taken on April 21, 2008.

Opposition No. 91161781
5
Sharon Seelig, Group Vice President of Licensing at Kenneth
Cole Productions, Inc.; and Leah Caras, Trademark and
Licensing Manager at Kenneth Cole Productions, Inc.
During its testimony period, opposer also introduced,
under its first notice of reliance, a status and title copy
of the pleaded registration, namely, Registration No.
1186863 for LeTIGRÉ (stylized as shown above); status and
title copies other registrations owned by opposer; copies of
registrations owned by third-parties for purposes of showing
a relationship between the parties’ respective goods;
printouts from USPTO databases involving applications owned
by opposer; a copy of a New York Times article; and copies
of self-described “unsolicited press coverage reflecting
KC’s predecessors-in-interest’s exploitation of the Le TIGRE
mark.” Under a second notice of reliance, opposer
introduced copies of articles and photographs from various
periodicals that opposer describes as “unsolicited press
coverage”; and a copy of an article entitled, “Licensing
Seen as Key to Strong Brand Presence.”
Applicant filed the deposition testimony, with
exhibits, of the following individuals: Shannon Jennings,
litigation paralegal for the law firm representing
applicant; and Andrew Craig, applicant.6

6 Deposition taken on July 28, 2008.
Opposition No. 91161781
6
Applicant also introduced, under a notice of reliance,
copies of third-party registrations for marks that contain
the term “Tiger”; and printouts from the USPTO electronic
database “TESS” listing the status of various applications
and registrations for marks that contain the term “Tiger.”
Opposer and applicant have filed trial briefs.
Objections to Evidence
In its trial brief, opposer raised various objections
to certain evidence and testimony offered by applicant.
(a) Exhibit 390 to Applicant’s Notice of Reliance
Opposer has objected to this exhibit, consisting of
search result printouts from the USPTO’s electronic database
TESS, on the basis that such materials are not “official
records” or otherwise appropriate for submission solely by
notice of reliance. This objection is overruled inasmuch as
this same exhibit is also attached to Ms. Jennings’
testimony deposition wherein she testified how and when she
accessed the materials.7 Accordingly, it has been
authenticated.
(b) Exhibits 1-390 to Applicant’s Notice of Reliance

7 In any event, the Board recently ruled that “if a document
obtained form the Internet identifies its date of publication or
date it was accessed and printed, and its source (e.g., the URL),
it may be admitted into evidence pursuant to a notice of reliance
in the same manner as a printed publication in general
circulation in accordance with Trademark Rule 2.122(e).” . See
Safer, Inc. v. OMS Investments, Inc., ___ USPQ2d ___ (TTAB,
Opposition No. 91176445, February 23, 2010).

Opposition No. 91161781
7
Opposer objects to these exhibits because the notice of
reliance does not contain a statement as to why applicant
believes they are relevant and, opposer argues, the
documents should have been produced by applicant in response
to opposer’s discovery request.
Objections to notices of reliance on procedural
grounds, such as not indicating the general relevance of the
submitted documents, ordinarily should be raised promptly by
way of a motion to strike if the defect is one that can be
cured. See TBMP § 707.02 (2d ed. rev. 2004). Here, had
opposer promptly raised this objection, applicant could have
cured the defect by providing the relevance statement (as
they did in their trial brief). Accordingly, opposer’s
objection to the notice of reliance for failing to include a
general relevance statement is untimely and thus overruled.
As to opposer’s objection based on its contention that
these documents should have been produced earlier in
response to discovery requests, we consider this objection
to have been waived inasmuch as it was not timely raised at
trial. We further note that during the testimony deposition
of Ms. Jennings, when these same documents were being
introduced as exhibits, opposer’s counsel also failed to
raise this objection.
(c) Exhibits to the Testimony of Shannon Jennings
Opposition No. 91161781
8
Opposer objects to all exhibits, except Exhibit 1, to
Ms. Jennings testimony deposition because, opposer argues,
the exhibits should have been produced by applicant in
response to opposer’s discovery requests and they were not.
Again, because it was not raised at trial, we consider this
objection to be untimely and thus waived.
(d) Exhibit 1 to the Testimony of Andrew Craig
Opposer objects to Exhibit 1 to Mr. Craig’s testimony
deposition on the basis that it consists of a final version
of a settlement agreement versus the draft version that was
produced in response to opposer’s discovery requests.
Opposer argues that the final version contains material
changes to the draft version and that it should have been
produced earlier. Opposer promptly raised this objection
during Mr. Craig’s deposition. This objection is sustained.
To the extent the settlement agreement is relevant, we only
have considered the draft version; thus, should there be any
reliance or argument based on provisions or language not
contained in the draft version, it will not be given
consideration.
(e) Testimony of Shannon Jennings
Opposer objects to the submission of Ms. Jennings
testimony deposition because “she was never identified as a
person with knowledge or a potential witness in this case”
and applicant was required to do so in response to opposer’s
Opposition No. 91161781
9
discovery requests. Specifically, opposer points to
Interrogatory 18 requesting applicant to “identify all
witnesses whom you expect to call during this proceeding” in
addition to other information regarding the witness.
Applicant’s response was “Applicant has not yet determined
who its witnesses will be.”
This objection is overruled. The Board has long held
that a party need not, in advance of trial, identify the
witnesses it intends to call, except that the names of
expert witnesses intended to be called are discoverable.
See TBMP § 414 (note 7) (2d ed. rev. 2004) and cases cited
therein.
(f) Other Objections
As to opposer’s objections to the introduction of the
testimony depositions of Mr. Craig and Ms. Jennings based on
applicant’s failure to file copies showing that they were
signed under penalty of perjury, these objections were not
timely raised and are thus waived. As with opposer’s
objection to the notice of reliance, an objection to a
testimony deposition must be raised promptly if the defect
is one that can be obviated or removed, failing which it is
waived. See TBMP § 707.03(a) (2d ed. rev. 2004). We find
that opposer waived this objection by not raising it earlier
and thus permitting applicant a chance to cure this defect
by filing a signature copy page.
Opposition No. 91161781
10
Opposer’s objections based on the lack of relevance of
the testimony and/or exhibits are overruled. Nevertheless,
we note that many of the documents submitted by applicant
have little, if any, probative value. For example, opposer
is correct in noting that applicant’s introduction of a TESS
database list of registration numbers does not make any of
the identified registrations of record. See TBMP § 704.03
(2d ed. rev. 2004). Moreover, even for the copies of third-
party registrations which have been properly made of record,
their probative value is limited, particularly when, as in
this case, the issue to be determined is likelihood of
confusion. This is because the registrations, by
themselves, are not evidence of actual use of the mark shown
in the registration. Id.
Opposer also raised several objections as to the
clarity or legibility of certain documents. Opposer timely
raised these objections during Ms. Jennings deposition.
These objections are sustained to the extent that the Board
will give no consideration to any document containing
illegible wording or that is not sufficiently clear such
that any reference thereto cannot be easily viewed and
understood by the Board.
Standing and Priority
Opposer has established its standing in this proceeding
through its registration, which is of record, for the mark
Opposition No. 91161781
11
LeTIGRÉ (stylized). Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Also, because opposer’s pleaded
registration is of record, Section 2(d) priority is not an
issue in this case as to the mark and the goods covered by
the registration vis-à-vis applicant’s mark and goods. King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974).
Opposer also alleged common law use, through its
predecessors-in-interest, of a LE TIGRE mark on goods other
than those identified in the pleaded registration. However,
opposer did not establish its priority of use with respect
to any common law use on these goods.8 Accordingly, we
limit our likelihood of confusion analysis to opposer’s mark
and goods covered by the pleaded registration vis-à-vis
applicant’s mark and goods identified in the application.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion 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

8 Although Ms. Seelig testifies in her deposition that opposer
has used the “Le Tigre” mark on other goods, and there are
exhibits showing such use, there is no testimony or other
evidence to establish that such use began before the filing date
of the subject application.
Opposition No. 91161781
12
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Accordingly, we turn first to the first du Pont factor,
which requires us to determine the similarity or
dissimilarity of the marks when viewed in their entireties
in terms of appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). Here, we find that applicant’s mark
LE TIGRE (in standard character form) and opposer’s
registered mark LeTIGRÉ (stylized) are nearly identical in
terms of appearance, sound, connotation and commercial
impression. Although the registered mark appears in
stylized lettering, it is only minimally so and the rather
ordinary upper and lower case lettering employed does not
sufficiently distinguish the two marks. In any event,
because applicant’s mark appears in standard character
format in the application, we must consider that it may
Opposition No. 91161781
13
reasonably be displayed in the same stylized lettering form
as opposer’s mark. See, e.g., Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000) (typed drawings are not limited to any particular
rendition of the mark). See also Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).
As to the accent mark appearing above the last letter
“e” in opposer’s mark, but not present in applicant’s mark,
we acknowledge that this may result in slightly different
pronunciations of the marks; however, it does very little to
distinguish the marks visually. And, insofar as connotation
or commercial impression is concerned, the presence or
absence of the accent mark does not affect the meaning or
perception of the term “LE TIGRE.” Indeed, both the subject
application and opposer’s pleaded registration contain a
translation statement to the effect that their marks are
translated into English as “the tiger.” Consequently, to
the extent that persons are familiar with this translation
and encounter the marks, the marks convey the same
connotation and commercial impression. Even for those
unfamiliar with the translation of the term, they will
perceive the marks to create the same impression, e.g.,
that LE TIGRE (with or without the accent) is a coined term
or a foreign word, even if the meaning is unknown.
Opposition No. 91161781
14
Because of the near identity of the marks, this du Pont
factor weighs heavily in favor of opposer and a finding of
likelihood of confusion.
We next consider the arguments put forth by the parties
regarding the du Pont factors of the alleged fame of
opposer’s prior mark and the number and nature of any third-
party similar marks in use. Specifically, opposer argues
that its LeTIGRÉ (stylized) mark is “clearly well-known, and
likely famous, entitling it to a broad scope of protection.”
Brief, p. 23. It also argues that the mark is “arbitrary
and thus a strong mark.” Id. at 25. Applicant, on the
hand, disputes that opposer’s mark is famous and contests
the overall strength of the mark because “the mark is used
by others on similar goods.” Brief, p. 14.
When fame is present it plays a dominant role in the
determination of likelihood of confusion. See Bose Corp. v.
QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). However, it is the duty of a
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposition No. 91161781
15
Based on the record before us, opposer has not
established that its pleaded mark LeTIGRÉ (stylized) is
famous. Opposer relies heavily upon the fact that the
pleaded registration is now over 28 years old and that the
mark has received what opposer characterizes as “enormous
unsolicited publicity and media attention,” including
evidence that mark has been featured in news articles and
persons wearing clothing bearing opposer’s mark has been
featured on magazine covers. In addition, there is evidence
that certain celebrities have worn clothing with the LeTIGRÉ
(stylized) brand. While this evidence may be impressive, it
does not suffice for purposes of proving that the mark is
famous under the du Pont factor. Indeed, noticeably absent
from the record are any actual dollar figures for opposer’s
(or its predecessors-in-interest’s) sales and advertising of
clothing bearing opposer’s LeTIGRÉ (stylized) mark. Without
this type of evidence, it is nearly impossible to gauge the
level of success of the mark or the degree of exposure the
general public has had to the mark. Further, without these
numbers and those of competitors, it is difficult to place
any success or relative fame into context. In other words,
it is impossible to ascertain from this record the extent to
which consumers have been exposed to opposer’s goods under
its mark vis-à-vis their competitors, and, thus, whether
opposer’s evidence of media exposure translates into fame of
Opposition No. 91161781
16
its pleaded mark. Ultimately, opposer’s evidence falls
short of establishing that the LeTIGRÉ (stylized) mark is
famous. See Leading Jewelers Guild Inc., 82 USPQ2d at 1904.
Although, on this record, we have found that opposer’s
mark is not famous, the evidence shows that it is certainly
a strong mark for clothing. That is, opposer’s LeTIGRÉ
(stylized) mark has achieved a level of recognition as
demonstrated in numerous magazines and has been regarded in
article excerpts as a well-known brand of clothing.
Moreover, opposer’s mark is intrinsically strong inasmuch as
it is an arbitrary term in the context of the parties’
identified goods. While “le tigre” may be translated into
English as “the tiger,” there is no evidence showing the
mark or its English equivalent has any special meaning with
respect to the clothing, writing instruments, small leather
goods or briefcase-type portfolios.
Accordingly, the du Pont factor of fame is neutral;
however, our finding that opposer’s mark is strong and
distinctive weighs in opposer’s favor.
As to applicant’s argument that opposer’s mark is
somehow weak based on third-party use of the same or similar
marks on similar goods, we initially note that the bulk of
his evidence consists of third-party registrations for marks
containing the term “tiger.” As the Board has oft-stated,
registrations are not evidence of actual use of similar
Opposition No. 91161781
17
marks for similar goods. See In re Hub Distributing, Inc.,
218 USPQ 284 (TTAB 1983) and National Aeronautics and Space
Administration v. Record Chemical Co., 185 USPQ 563 (TTAB
1975)(third-party registrations are not evidence of what
happens in the marketplace or that the public is familiar
with the use of those marks); see also Olde Tyme Foods, Inc.
v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed.
Cir. 1992)(third-party registrations are not entitled to any
weight when evaluating the strength of plaintiff’s marks).
We are also not persuaded by applicant’s argument that
opposer’s mark is weak or should be entitled to a narrower
scope of protection based on internet printouts of purported
third-party use of the same or similar marks. First, nearly
all of this internet evidence shows use the term “tiger,”
and not the marks at issue. Applicant argues that this
evidence is still relevant because the marks may be
translated to “the tiger.” However, we find little, if any,
relevance to this type of evidence because in order to show
how purchasers will be able to distinguish between the two
parties’ marks, the evidence should demonstrate that the
common element (in this case, nearly the entire marks) have
been so extensively used by others that purchasers will rely
on other elements of the marks to distinguish source. Carl
Karcher Enterprises Inc. v. Stars Restaurant Corp., 35
USPQ2d 1125, 1131 (TTAB 1995). See also NCTA v. American
Opposition No. 91161781
18
Cinema Editors, 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed.
Cir. 1991). In other words, it is applicant’s burden to
show how purchasers will perceive “Le Tigre” by showing some
measurable or intense exposure to that term in the context
of the parties’ goods. In re The Clorox Co., 578 F.2d 305,
198 USPQ 337, 343 (CCPA 1978). See also Carl Karcher
Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d at
1131; Tiffany & Co. v. Classic Motor Carriages, 10 USPQ2d
1835, 1840-1841 (TTAB 1989). In this regard, we note that
the only evidence of actual third-party use of the term “Le
Tigre” were a few internet printouts that reference a
musical band by that name, including use of the band’s name
on shirts, and a company that renders “business and
technology integration” services under that name. See
Jennings deposition, Exhibit 2. This hardly amounts to the
intense or extensive exposure envisioned whereby we could
find that opposer’s mark may be considered weak or only
entitled to limited protection.
Accordingly, the du Pont factor involving third-party
use of the same or similar marks on similar goods is
neutral.
We now consider the du Pont factor involving the
similarity or dissimilarity of opposer’s clothing apparel
and applicant’s goods, namely, the writing instruments and
“small leather goods, namely, cases for diaries and daily
Opposition No. 91161781
19
planners; and brief case type portfolios.” While it is
clear that, on their face, the goods are different, it is
also settled that it is not necessary that these respective
goods be identical or even competitive in order to find that
they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers would
confuse the goods themselves, but rather whether they would
be confused as to the source of the goods. See In re Rexel
Inc., 223 USPQ 830 (TTAB 1984). The goods need only be
sufficiently related that consumers would be likely to
assume, upon encountering the goods under similar marks,
that the goods originate from, are sponsored or authorized
by, or are otherwise connected to the same source. See In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). In addition,
“the greater the degree of similarity in the marks, the
lesser the degree of similarity that is required of the
products or services on which they are being used in order
to support a holding of likelihood of confusion.” In re
Concordia International Forwarding Corp., 222 USPQ 352, 356
(TTAB 1983). See also, In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993) [Contemporaneous use
of identical or nearly identical marks can lead to the
Opposition No. 91161781
20
assumption that there is a common source “even when [the]
good or services are not competitive or intrinsically
related”].
Based on the record, we are able to find that it would
not be uncommon for consumers to encounter the same
trademark being used as a source identifier for clothing
apparel as well as accessory items that would include
applicant’s identified goods, e.g., pens and small leather
goods such as daily planners, diaries and portfolios. Leah
Caras, a trademark and licensing manager for Kenneth Cole
Productions, Inc., testified to such use and the exhibits
attached to her deposition include examples of several
“high-end” brands being used in this manner: the COACH
trademark being used on daily planners, pens, and sweaters
(Caras dep., 8:16 to 10:14, Exhibits 42-45); the LUIS
VUITTON trademark being used on a pen, a shirt and a daily
planner (Caras dep., 10:16 to 13:5, Exhibits 46-49); the
KATE SPADE trademark being used on a leather daily planner
and a blouse (Caras dep., 13:10 to 15:8, Exhibits 50-52);
and the EMILIO PUCCI trademark being used on a pen, a
sweater(Caras dep., 15:11 to 18:14, Exhibits 53-55). Ms.
Caras’ testimony also includes several examples of similar
use of “mid to high-end” brands being used on the same
aforementioned goods. Ms. Caras also testified:
Opposition No. 91161781
21
Q. …Based on your shopping experience, did you find
that clothing, writing items and portfolios were
frequently sold in the same stores?
A. Yes.
Q. Was this true for high end goods?
A. Yes.
Q. And was this true for mid to low end goods?
A. Yes
(Caras dep., beginning at 40:13).

Ms. Caras’ testimony is corroborated by the testimony
by Sharon Seelig, vice-president of licensing for Kenneth
Cole Productions, Inc. Based on her eighteen years of
experience as a retail buyer within apparel or accessories,
she provided uncontroverted testimony that it is common for
clothing apparel companies to also sell pens and small
leather goods, such as those identified in the subject
application, under the same trademark.
Q. Is it common for companies in this industry to sell
goods under the same trademark in both the clothing
apparel category and the handbag category?
A. Yes.
Q. Is it common for those companies to sell clothing
and small leather goods?
A. Yes.
Q. Under the same mark?
A. Yes.
Q. Is it common for them to sell pens and pencils and
small leather goods?
A. Yes.
Q. Under the same mark? Sorry.
A. Yes.
Q. Is it common for them to sell, I guess, clothing
and pens and pencils and small leather goods?
A. Yes.
(Seelig depos., beginning at 30:23)

Ms. Seelig further testified to specific examples of
trademarks, including KC’s own use of marks other than its
pleaded mark, being used on apparel as well as writing
Opposition No. 91161781
22
instruments and small leather goods, including portfolio
briefcases.
Opposer’s introduction of a number of third-party
registrations, in addition to those owned by opposer for
other marks,9 further suggests that applicant's goods, on
the one hand, and clothing apparel, on the other hand, are
of a type which may emanate from a single source and would
thus be related in the mind of the public. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988), aff'd
(unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988).
On this record, we find that the goods listed in the
subject application and the pleaded registration are
related; accordingly, this factor weighs in favor of
opposer.
With respect to trade channels and classes of
purchasers for the parties’ goods, it is well settled that
the question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
application vis-à-vis the goods identified in opposer’s
pleaded registration. Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). And

9 For sake of clarity, opposer’s registrations (for the marks
KENNETH COLE NEW YORK, KENNETH COLE and KENNETH REACTION) are
only being considered in the same manner as the other third-party
registrations; that is, KC is one entity that has registered
Opposition No. 91161781
23
where there is an absence of any restrictions in the
application at issue and/or in the pleaded registration as
to the channels of trade and no limitation as to the classes
of purchasers, it is presumed that in scope the
identification of goods encompasses not only all the goods
of the nature and type described therein, but that the
identified goods are offered in all channels of trade which
would be normal therefore, and that they would be purchased
by all potential buyers thereof. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
In the present case, both the identifications of goods
in the application and the opposer’s registration have no
restrictions relating to trade channels or classes of
purchasers. Thus, we must take into consideration that the
clothing items identified in opposer’s registration may be
sold in the stores that carry “high-end” brands and in the
stores that carry “low-end” brands. This would include
boutiques as well as a variety of other retail stores that
sell clothing, e.g., The Gap, Bloomindale’s, Neiman Marcus,
Sears, Wal-Mart, etc. Likewise, we must consider that
applicant’s writing instruments and “small leather goods,
namely, cases for diaries and daily planners; and brief case
type portfolios” will be offered in all price-ranges and
encountered in all the normal trade channels for such goods.

three marks that each cover some of the same goods contained in
Opposition No. 91161781
24
Based on the record, there is clearly some overlapping in
the trade channels of the parties’ goods. At least with
respect to the “high end” brands of clothing, the record
shows that goods such as pens, daily planners and portfolios
are offered for sale in the same commercial establishment as
the “high-end” apparel.
In sum, when we consider the evidence of record in
light of the relevant du Pont factors, we conclude that
there is a likelihood of confusion. Although opposer’s mark
is not truly famous, it is strong and nearly identical to
applicant’s proposed mark, the respective goods are related,
and the trade channels and classes of purchasers are
potentially overlapping. If prospective purchasers were to
encounter the mark LE TIGRE on applicant’s writing
instruments and “small leather goods, namely, cases for
diaries and daily planners; and brief case type portfolios,”
they would be likely to believe that these products come
from, are sponsored by or associated with the source of the
LeTIGRÉ (stylized) clothing.10
Decision: The opposition is sustained.

the pleaded registration and the subject application.
10 Because we sustain the opposition on the priority and
likelihood of confusion ground, we need not consider the dilution
ground. However, because we have found that opposer’s mark is
not famous for purposes of the likelihood of confusion analysis,
it stands to reason that opposer cannot prevail on the dilution
ground which requires an even stronger showing of fame.